Ex Parte Bing

Patent Trial and Appeal Board

Jun 8, 2016

12145195 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/145,195 06/24/2008 Kenneth Garry Bing
277 7590 06/10/2016
PRICE HENEVELD LLP
695 KENMOOR SE
PO BOX 2567
GRAND RAPIDS, MI 49501
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
BIN004 P301 2880
EXAMINER
DRIGGERS, GWENDOLYN YVONNE
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
06/10/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptomail@priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH GARRY BING
Appeal2014-007038
Application 12/145,195
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenneth Garry Bing (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-3 and 8-19. 1 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Claims 4--7 and 20 are canceled. Jan. 10, 2013 Amendment at 3, 6.
Appeal2014-007038
Application 12/145,195
SUMMARY OF INVENTION
Appellant's invention is directed to "conduits for electrical wiring,
telecommunications cables, and optical fiber data cables." Spec. i-f 2. Claim
1, reproduced below from page 2 of the January 10, 2013 Amendment,2 is
illustrative of the claimed subject matter:
1. A conduit body for a flexible conductor comprising:
a chamber defining at least a partial enclosure, the
chamber having openings defining passageways
communicating with the chamber and a side wall,
the openings into the chamber comprising a first hub, a
second hub, and an inlet,
the inlet comprising an outer edge extending outwardly
relative the chamber of the body to form an outwardly
extending curved lip having a continuous arcuate surface
between the outer edge and the chamber to facilitate
manipulation of a wire or cable relative to the conduit body the
chamber further comprising a cable guide surface, the cable
guide surface forming an arch relative the side wall, the arch
being raised in the direction of the inlet, \'I/herein the raised arch
and the cable guide surface provide a curved surface for a cable
placed through the first hub, through the chamber, over the arch
of the cable guide surface, and through the second hub to have a
minimum radius of curvature,
wherein the inlet becomes wider from the chamber
towards the periphery;
wherein the first hub comprises an inseparable elongated
cylinder;
wherein the second hub comprises an inseparable
elongated cylinder; and
2 Claim 1 is reproduced incorrectly in the Claims Appendix to the Appeal
Brief. Claim 1 reads "between the outer edge and the chamber" and not
"between the outer edge of the chamber," as indicated in the Claims
Appendix. See Jan. 10, 2013 Amendment at 2 (emphasis added); App. Br.
20 (emphasis added).
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Application 12/145,195
wherein the inseparable elongated cylinder of each of the
first hub and the second hub extends away from the chamber
and the wire or cable freely moves through each of the
elongated cylinders of the first and second hub.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Church us 934,995 Sept. 28, 1909
Wium us 4,801,118 Jan.31, 1989
Bing US 6,580,029 B 1 June 1 7, 2003
Pyron US 7,582,835 B2 Sept. 1, 2009
REJECTIONS
Claims 1, 2, 8-12, 14, and 16-19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pyron and Church.
Claims 3 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pyron, Church, and Wium.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Pyron, Church, and Bing.
ANALYSIS
Independent Claims
Appellant argues independent claims 1, 9, and 19 together. App. Br.
15. We select claim 1 as representative, treating claims 9 and 19 as standing
or falling with representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/145,195
Regarding claim 1, the Examiner finds that Pyron discloses the
invention substantially as claimed, including a cable guide surface and a
chamber inlet opening with an edge forming a lip, but does not disclose a
curved lip or an inlet that becomes wider from the chamber toward the
periphery. Final Act. 2-3. The Examiner relies on Church to teach a curved
lip that becomes wider from the chamber towards the periphery and
concludes that it would have been obvious to a skilled artisan "to modify the
conduit body in Pyron to include a tapering chamber as taught by Church in
order to minimize the size of the chamber to facilitate placement of the box
in a wall or ceiling." Id. at 4 (citing Church 2, 11. 7-19; Fig. 1).
Appellant makes several arguments regarding the proposed
combination of Pyron and Church. First, Appellant argues that "Church's
flat flange 2, which is the closest structure to the claimed 'lip' at the outer
edge, is simply not arcuate." App. Br. 6. We are not persuaded by this
argument. Claim 1 requires a "curved lip having a continuous arcuate
surface between the [inlet] outer edge [and] the chamber." Id. at 20
(emphasis added). We note that Appellant used the adjective "continuous,"
which modifies the noun "surface," rather than the adverb "continuously,"
which would modify the adjective "arcuate." We therefore construe claim 1
to require a surface that is arcuate, or curved, and that extends continuously
from the outer edge of the inlet to the chamber, but not to require a surface
that is continuously arcuate from the outer edge to the chamber. As noted by
the Examiner, Church's flange 2 is arcuate and extends continuously from
the outer edge of the outlet/junction box inlet to the chamber. Ans. 11
(citing Church Fig. 1 ). We note that Church Fig. 1 shows a curved transition
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Application 12/145,195
between the sidewall of box 1 and the flat portion of flange 2. Appellant's
argument does not apprise us why the Examiner's reading is unreasonable.
Next, Appellant makes arguments regarding Pyron's curved surface
40. App. Br. 6-7, 9-12. Appellant argues that the proposed combination of
Pyron and Church is improper because: 1) Pyron discloses an "'inwardly
extending wall portion 40' ... [that] forms a sharp lip," and including the
curved lip of Church "would require that a 'feature of the present invention'
of Pyron be ignored and, in fact, reversed" (id. at 7 (citing Pyron col. 3, 11.
56-58)); 2) the
cited teaching of Church, whereby the outlet box 1 is intended
to be seated in the wall or ceiling so that it will be flush
therewith (Church, Col. 2, 11. 7-9), is simply insufficient to
cause one having ordinary skill in the art to select the flat flange
2 of Church and remove the inwardly extending wall portion 40
of Pyron, a disclosed "feature of the invention" of Pyron
(id. at 9); and 3) "[t]he Examiner has taken bits and pieces of the prior art,
and combined the same in a manner which could only have been
accomplished with the benefit of Applicant's own invention" (id. at 11) and
"[t]he fact that the edges of Pyron extend inwardly and are, thus, contrary to
facilitating manipulation of a wire or cable, as claimed herein, cannot be
ignored" (id. at 12).
We are not persuaded by these arguments. Initially, we note that
Pyron includes curved surface 40 to facilitate smooth pulling of cable
through and out of the conduit body (see Pyron col. 3, 1. 56-col. 4, 1. 5;
Fig. 2), so it is unlikely that the surface "forms a sharp lip" as suggested by
Appellant. Moreover, the Examiner does not propose to remove the curved
surface in the combination of Pyron and Church, but, rather, proposes to
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Application 12/145,195
modify the Pyron conduit body to also include Church's curved flange-
which would seem to alleviate problems presented by any "sharp lip" in
Pyron. As the Examiner notes, "the curved surface ( 40) is a feature of the
[Pyron] invention because it facilitates 'easy movement of a wire' through
the hub (24)," and "[t]his feature would be present ... whether the wall at 40
in figure 4 were curved further outward at 16 as proposed by the
modification of Church." Ans. 14. Appellant has not apprised us why
adding Church's curved flange 2 would require removal of Pyron' s curved
surface 40.
Next, Appellant argues that the proposed combination of Pyron and
Church is improper because it fails to disclose a "cable guide surface [that]
forces a cable placed through the first hub, through the chamber, over the
arch of the cable guide surface, and through the second hub over an
outwardly curved lip defining a continuous arcuate surface." App. Br. 13
(emphasis added). We are not persuaded by this argument. Pyron includes
curved (that is, arched) guide surfaces 34 that provide a minimum bend
radius for cables passing through the conduit body. See Pyron col. 3, 11. 47-
55; Fig. 2; see also Ans. 18. As addressed above, Pyron's curved surface 40
facilitates smooth pulling of cable through and out of the conduit body.
Moreover, claim 1 does not require a cable guide surface that forces a cable
"over an outwardly curved lip defining a continuous arcuate surface."
Next, Appellant argues that because "Church teaches the use of a
strain relief bushing within the hub to prevent, not facilitate, manipulation of
a wire or cable relative to the conduit body, combining Church with Pyron
will result in an inoperative structure." App. Br. 9. Appellant further
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Application 12/145,195
contends that "the feature of the bushing 9 of Church ... is central to the
disclosure of Church and ought to be included in any combination thereof."
Reply Br. 3. We are not persuaded by this argument. As discussed above,
the Examiner proposes to modify Pyron's conduit body to include Church's
curved flange. The Examiner has not proposed to modify Pyron's conduit
body to include Church's bushing, nor has Appellant provided any reasoning
as to why inclusion of Church's flange would require the bushing to also be
included.
Finally, Appellant argues that the declaration under 37 C.F.R. § 1.132
of Kenneth Bing (Appellant) dated May 16, 2012 (the "Declaration"), which
generally asserts commercial success, "has not been fully considered or
discussed." App. Br. 13. In particular, Appellant alleges that the Examiner
did not sufficiently consider the "evidence of praise in the industry that
specifically relates to features of the patented invention" provided in the
Declaration. Id. at 14. We are not persuaded by Appellant's allegation that
the Examiner did not give adequate and proper consideration to the
Declaration. Instead, we agree with the Examiner's determinations that
"Appellant has failed to establish a nexus between the claimed invention and
the revision of the industry standard" and "even if the change to the standard
were based on Mr. Bing's efforts, the claimed arch was disclosed in the 2003
patent." Ans. 19. Thus, we are not apprised of Examiner error in this
regard.
In particular, evidence of commercial success "is only significant if
there is a nexus between the claimed invention and the commercial success."
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006).
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However, "if the feature that creates the commercial success was known in
the prior art, the success is not pertinent." Id. at 1312; see also In re Kao,
639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of"whether
the commercial success of the embodying product resulted from the merits
of the claimed invention as opposed to the prior art or other extrinsic
factors"). Here, the document accompanying the Declaration discusses
"minimum bend radius requirements when cables are installed into a conduit
system and conduit bodies are used to change direction." Declaration 3.
Appellant interprets this language as "the standard directly link[ing] the
desirability of the claimed features of my invention with the reason for its
recommendation in the standard." Id. at 2. However, Appellant sets forth
that it is "[t]he flexible conductor guide surface 76 [that] provides a
minimum radius of curvature to a flexible conductor 22 entering first hub 30,
traveling through chamber 20, over the flexible conductor guide surface 76,
and exiting second hub 32" and that "[a] full description of the flexible
conductor guide surface and the benefits of such are set forth in United
States Patent No. 6,580,029 Bl (issued June 17, 2003)." Spec i-f 40. Thus,
any evidence of commercial success, or other secondary consideration,
provided in the Declaration is not pertinent, as such evidence is due to the
cable guide surface, a feature known in the prior art.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 1 as being unpatentable over Pyron and Church. We
likewise sustain the rejection of claims 9 and 19, which fall with claim 1.
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Application 12/145,195
Dependent Claims
Claims 2, 8, 10--12, 14, and 16--18
With respect to the rejection of claims 2, 8, 10-12, 14, and 16-18,
Appellant expressly relies on arguments advanced with respect to the
Examiner's combination of Pyron and Church previously discussed. App.
Br. 15. For the reasons stated above, Appellant's arguments do not apprise
us of error in the Examiner's conclusions, and the rejection of these claims is
likewise sustained.
Claims 3 and 13
Each of claims 3 and 13 requires that the curved lip be "detachably
coupled with the conduit body." Id. at 20, 22. The Examiner relies on
Wium to teach "a cable protection system wherein the curved lip ( 10) is
detachably coupled with the conduit body" (Final Act. 10 (citing Wium
Abstract)), and concludes that it would have been obvious to a skilled artisan
"to modify the conduit body of the combination of Pyron and Church to
include a removable lip as taught by Wium in order to provide a cable guard
which is field installable, removable, and reusable" (id. (citing Wium col. 1,
11. 53-54)).
Appellant makes a number of arguments regarding the proposed
combination of Pyron, Church, and Wium. First, Appellant argues that
because the proffered Pyron-Church combination already includes a curved
lip, "there would be no reason to add a curved cable guard as allegedly
disclosed in Wium because the flat flange 2 [of Church] supposedly also has
a curved surface." App. Br. 16. We are not persuaded by this argument.
The Examiner does not propose to replace Church's flange 2 with Wium's
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cable guard 10, but, rather, proposes to modify Church's flange in the Pyron-
Church combination to be removable. As noted by the Examiner, this would
allow "one of ordinary skill to provide a removable lip where it is desirable
to reuse or install the lip in the field." Ans. 20. Appellant's argument does
not apprise us why the Examiner's modification is unreasonable.
Next, Appellant argues that the proposed combination of Pyron,
Church, and Wium is improper because " [ w] ithout the flat flange 2 [of
Church], the box falls to the ground. With nothing to hold the box in its
intended place, the purpose of the outlet box would be completely
frustrated." App. Br. 16. We are not persuaded by this argument. As
discussed above, the Examiner proposes to make Church's flange 2
removable, not to eliminate the flange. See Ans. 20. With the flange in
place on the conduit body, it would function as disclosed in Church to allow
the user to retain the conduit body in place.
Next, Appellant argues that the proposed combination of Pyron,
Church, and Wium is improper because "there would be no way to attach the
curved cable guards ofWium to the outlet box of Church." App. Br. 17.
We are not persuaded by this argument. As noted by the Examiner, "[a]
person having ordinary skill in the art would have the knowledge to
incorporate the teachings of the prior art into various known embodiments
since a person of ordinary skill is deemed to also have ordinary creativity,
and is not an automaton." Ans. 21 (citing KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398 (2007)). Furthermore,
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
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Application 12/145,195
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F .2d 413, 425 (CCP A 1981 ). Wium teaches a removable
cable guard, and Appellant has provided no convincing reason why a skilled
artisan, using ordinary creativity, would not be able to incorporate this
teaching into the Pyron-Church conduit body.
Finally, Appellant argues that the proposed combination of Pyron,
Church, and Wium is improper because:
the combination fails to teach a chamber comprising a cable
guide surface forming a raised arch relative the side wall,
wherein the cable guide surface provides a curved surface for a
cable placed through the first hub, through the chamber, over a
raised the [sic] arch of the cable guide surface, and through the
second hub having a minimum radius of curvature, where the
inlet has an outer edge extending outwardly relative the
chamber of the body to form an outwardly extending curved lip
having a continuous arcuate surface between the outer edge and
the chamber to facilitate manipulation of a wire or cable relative
to the conduit body.
App. Br. 18. We find this argument to be unpersuasive. As discussed
above, the Examiner has set forth a proper prima facie rejection, and
Appellant's argument does not apprise us why the Examiner's analysis is
unreasonable.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claims 3 and 13 as being unpatentable over Pyron, Church, and
Wium.
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Claim 15
With respect to the rejection of claim 15, Appellant expressly relies on
arguments advanced regarding the Examiner's combination of Pyron and
Church previously discussed. App. Br. 19. For the reasons stated above,
Appellant's arguments do not apprise us of error in the Examiner's
conclusions, and the rejection of this claim is likewise sustained.
DECISION
The Examiner's decision to reject claims 1-3 and 8-19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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