Ex Parte Doorhy et al

Patent Trial and Appeal Board

Oct 21, 2016

13541892 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/541,892
32915 7590
PANDUIT CORP.
FILING DATE
07/05/2012
10/25/2016
18900 Panduit Drive
TINLEY PARK, IL 60487
FIRST NAMED INVENTOR
Michael V. Doorhy
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.
LCB465-2-CON-4 5407
EXAMINER
FIGUEROA, FELIX 0
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
10/25/2016 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):
patents@panduit.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL V. DOORHY, MASUD BOLOURI-SARANSAR,
SATISH I. PATEL, and DAVID A. DYLKIEWICZ
Appeal2015-001838
Application 13/541,892
Technology Center 2800
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
LILAN REN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner rejecting claims 1-5 in the Office Final Action mailed December
18, 2013. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a).
Appeal2015-001838
Application 13/541,892
Claim 1 illustrates Appellants' invention of a wire containment cap:
1. A wire containment cap comprising:
a first face;
a second face;
a pair of substantially planar side walls extending from the first
face to the second face;
a substantially planar top wall and a substantially planar bottom
wall, each connected to both side walls and also extending from the
first face to the second face, the top wall having at least one pair of
upper wire retainers at the first face of the wire containment cap and
the bottom wall having at least one pair of lower wire retainers at the
first face of the wire containment cap, wherein the at least one pair of
upper wire retainers and the at least one pair of lower wire retainers
are double walled retainers; and
a spine extending from the top wall to the bottom wall wherein
the top wall, bottom wall, and side walls define an opening and the
spine divides the opening into two sections.
The Examiner, Answer 2, maintains the following rejections under
35 U.S.C. § 103(a) from the Final Office Action:
Claims l and 2 rejected under 35 U.S.C. § 103(a) as unpatentable
Mossner et al. (US 6,953,362 B2, issued Oct. 11, 2005) ("Mossner") and
Abel et al. (US 6,767,241 Bl, issued July 27, 2004) ("Abel"). Claims 3-5
rejected under 35 U.S.C. § 103(a) as unpatentable over Mossner and Abel in
view ofNozick (US 6,267,617 Bl, issued July 31, 2001). (Final Act. 3-22).
Appellants, in the Appeal Briefs, have limited their arguments to
independent claim 1. Appellants have also limited their arguments to the
combination of Mossner and Abel. Appellants have not separately
addressed claims 2-5. (App. Br. 5). We select claim 1 as representative.
Thus, we decide this appeal based on independent claim 1, representing the
grounds of rejections, to the extent argued in the Briefs. 37 C.F.R.
§ 41.37( c )(1 )(vii).
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Appeal2015-001838
Application 13/541,892
We affirm the decision of the Primary Examiner.
OPINION
The dispositive issue raised by the positions of Appellants and the
Examiner is whether the combination of Mossner and Abel would have led
one of ordinary skill in the art to forming a wire containment cap comprising
a substantially planar top wall and a substantially planar bottom wall. 1
Appellants argue there is no motivation to combine the references
because Mossner does not need the planar walls of Abel. (App. Br. 4--5).
Appellants argue the Examiner fails to cite any source that demonstrates a
wire cap such as Mossner would not have a sufficiently stable seating area.
Appellants also argue that because the planar surfaces of Abel would not
enhance the seating of Mossner, the only reason left that one would combine
Abel with Mossner is through impermissible hindsight. (Id. at 5).
Appellants' arguments do not persuade us of reversible error in the
Examiner's rejection. In assessing the obviousness of the subject matter
recited in the claims on appeal, "[o]ften, it will be necessary for ... [us] to
look to interrelated teachings of [the] multiple [prior art references relied
upon by the Examiner] ... in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed .... " KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). These prior art references must be read in context, taking into
account "demands known to the design community," "the background
1 Appellants have limited their arguments to the substantially planar
characteristic of the top and bottom walls. Appellants have not presented
arguments directed to other features of the wire containment as specified by
independent claim 1.
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Appeal2015-001838
Application 13/541,892
knowledge possessed by a person having ordinary skill in the art," and "the
inferences and creative steps that a person of ordinary skill in the art would
employ." KSR, 550 U.S. at 418; see also In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) ("[A] prior art reference must be 'considered together with
the knowledge of one of ordinary skill in the pertinent art."') (quoting In re
Samour, 571F.2d559, 562 (CCPA 1978)). The background knowledge
attributable to one of ordinary skill in the art includes what was admittedly
known in the art at the time of the invention. Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness."); In re
Nomiya, 509 F.2d 566, 570-71(CCPA1975) (holding that admitted prior art
in applicant's specification may be used in determining the patentability of a
claimed invention.); In re Fout, 675 F.2d 297, 301(CCPA1982) ("It is not
unfair or contrary to the policy of the patent system that appellants'
invention be judged on obviousness against their actual contribution to the
art.") (footnote omitted).
In the present case, considering the collective teachings of Mossner
and Abel from the perspective of one of ordinary skill in the art, we
determine that a person of ordinary skill in the art would have had sufficient
skill to select known shapes for exterior walls of the wire containment caps.
It is not disputed that the substantially planar exterior walls for wire
containment caps was known to persons of ordinary skill in the art. (See
Abel). Appellants have not refuted the Examiner's position that the use of
substantially planar walls, such as described by Abel, would have simplified
the shape of the cap. (Final Act. 3).
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Appeal2015-001838
Application 13/541,892
Further, Appellants' arguments for patentability are limited to features
that are considered a matter of design choice to modify the relied-upon prior
art (to the extent necessary) such that a wire containment cap comprises
substantially planar exterior walls because the argued claim limitations have
not been shown to (1) solve a stated problem, (2) result in a difference in
function, or (3) provide unexpected results, as compared to the relied-upon
prior art. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that the
use of the claimed feature "would be an obvious matter of design choice"
when it "solves no stated problem" and "presents no novel or unexpected
result" over the disclosed alternatives); In re Rice, 341 F.2d 309, 314 (CCPA
1965) (stating that "Appellants have failed to show that the change in the
[aspects at issue as compared to the prior art] result in a difference in
function or give unexpected results" and stating that "[s]uch changes in
design of the various features are no more than obvious variations consistent
with the principles known in that art").
For the reasons stated above and those presented by the Examiner, we
affirm the 35 U.S.C. § 103(a) rejections over the combination Mossner and
Abel.
ORDER
The rejections of claims 1-5 under 35 U.S.C. § 103(a) are 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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