Ex Parte Edge

Patent Trial and Appeal Board

Sep 25, 2013

12283580 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/283,580 09/12/2008 Richard A. Edge EDGR25A 7921
41681 7590 09/25/2013
Richard L. Miller
12 Parkside Drive
Dix Hills, NY 11746-4879
EXAMINER
NGUYEN, PHUONGCHI T
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
09/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD A. EDGE
____________________

Appeal 2011-001663
Application 12/283,580
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001663
Application 12/283,580

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellant’s Disclosed Invention
The disclosed invention is a rubber boot that allows two electrical
cords plugged together to be inserted into a coupling body with a central
cavity for receiving the cords (see Figs. 2 and 3; Abs.).
Exemplary Claims
Exemplary claims 1 and 4 under appeal, with emphases added to
disputed portions of the claims, read as follows:
1. A coupler for holding a socket and plug of two
electrical cords together, which comprises:
a body fabricated out of a resilient material having a
central cavity with two end bores;
wherein each bore of said end bores extending from an
opposite side of said body into said central cavity, and a
longitudinal axial slit extending along said body; and
wherein when said body is twisted, said longitudinal
axial slit opens to allow the socket and plug connected together
to be inserted into said central cavity of said body, with each of
the two electrical cords extending outwardly from each of said
two end bores of said body, respectively, whereby the socket
and plug of the two electrical cords are maintained in
intimate contact with each other within said central cavity of
said body.
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4. The coupler as recited in Claim 1, wherein said
resilient material of said body comprises a bright color
composition, so as to be easily visible.
The Examiner’s Rejections
(1) The Examiner rejected claims 1-3 under 35 U.S.C. § 102(b) as
being anticipated by Bird (US 3,059,209).1 Ans. 2-4.
(2) The Examiner rejected dependent claim 4 as being unpatentable
under 35 U.S.C. § 103(a) over Bird. Ans. 4.
Appellant’s Contentions
Appellant contends (Br. 4-10) that the Examiner erred in rejecting (a)
claims 1-3 under 35 U.S.C. § 102(b), (b) claim 4 under § 103(a) over Bird
for numerous reasons, including:
(1) “Bird does not appear to teach that ‘when said body is twisted, said
longitudinal axial slit opens to allow the socket and plug connected
together to be inserted into said central cavity of said body’” (Br.
5)(emphasis omitted), as recited in claim 1; and
(2) Based on In re Ahlert, 165 USPQ 418, 520 (CCPA 1970),
Appellant contends with regard to claim 4 that the Examiner has
failed to support (by citation to a reference work recognized as
standard in the pertinent art which is in an area of esoteric
technology) the assertion of the technical fact that bright colors are
easier to see (Br. 9).

1 Separate patentability is not argued for claims 2 and 3, and Appellant
presents arguments only for independent claim 1 (see generally Br. 4-7). In
view of the foregoing, we select claim 1 as representative of the group of
claims consisting of claims 1-3.
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Reply Brief
No Reply Brief has been presented. Therefore, Appellant has not
disputed the Examiner’s articulated reasoning and findings found at pages 5-
8 of the Answer.
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Br. 4-10), the
following principal issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1-3 as being anticipated
by Bird because Bird fails to disclose that “when said body is twisted, said
longitudinal axial slit opens to allow the socket and plug connected together
to be inserted into said central cavity of said body,” as recited in independent
and representative claim 1?
(2) Did the Examiner err in rejecting claim 4 as being obvious because
Bird, along with the knowledge available to a person of ordinary skill in the
art, fails to teach or suggest the “bright color composition” limitation at issue
in claim 4?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief that the Examiner has erred. We disagree
with Appellant’s conclusions. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Ans. 2-4), and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 5-8) in response to Appellant’s Appeal Brief.
We concur with the conclusions reached by the Examiner.

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Appellant’s argument (Br. 4-7) that Bird fails to disclose “when said
body is twisted, said longitudinal axial slit opens to allow the socket and
plug connected together to be inserted into said central cavity of said body”
is not persuasive. Appellant’s assertion that Bird’s rubber body 12 must be
excessively twisted to allow insertion (Br. 7) is not commensurate in scope
with the language of representative claim 1, which only requires twisting
and what amount of twisting constitutes excessive twisting is purely
subjective.
At issue is the meaning of “twisting” as that term is used in the claims
and as defined by Appellant’s Specification (Spec. 13:18 to 14:7; see
twisting of body 20shown in Figs. 3, 4, and 5). Appellant’s Specification
discloses that “when the body 20 is twisted the longitudinal axial slit 30 will
open to allow the socket 12 and plug 14 connected together to be inserted
into the central cavity 24 with each of the two electrical cords 16, 18” (Spec.
13:24 to 14:3).
In this light, Appellant’s contention that Bird’s twisting is not the
same as the twisting recited in claims 1-3 is not persuasive because
Appellant’s arguments improperly narrow the definition of twisting.
Further, we note that both Appellant’s coupler body 20 (made of resilient
material 22) and Bird’s case 12 made of rubber are composed of resilient
materials and have slits in them for allowing insertion of the cords. We
agree with the Examiner (Ans. 5-7) that Bird’s resilient body 12 can be
twisted and meets the language of claim 1.
Additionally, while features of an apparatus or system may be recited
either structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function. In
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re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). “[A]pparatus claims
cover what a device is, not what a device does.” Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Appellant has
failed to structurally distinguish the prior art’s electrical cord protective
cover from the electrical cord coupler recited in representative claim 1.
And, the function of “when said body is twisted” a slit opens to allow the
socket and plug of the two electrical cords plugged together to be inserted
into the body as recited in independent claim 1 does not serve to distinguish
Appellant’s invention from Bird’s disclosure. Schreiber, 128 F.3d at 1477-
78. Therefore, Appellant’s contention relating to the function of Bird’s
device (that Bird’s rubber case 12 is not resilient enough and must be
excessively twisted to allow insertion) are not persuasive (see Br. 5-7).
Appellant’s contention (Br. 9) that selecting a color for visibility is an
assertion of a technical fact in an area of esoteric technology that must be
supported by citation to a reference work in the pertinent art is not
persuasive. There is nothing unexpected about choosing a color for
visibility. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” (citation and quotation omitted)). Choosing a color for visibility is
a generic skill, not a specialized skill, and certainly does not involve an
esoteric technology. And, choosing a color for visibility of an electrical cord
coupler would be an obvious expedient to make it easier to find the
connection in a run of electrical cord where two cords are coupled together,
and would have been prima facie obvious. See KSR, 550 U.S. at 417 (“[A]
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court must ask whether the improvement is more than the predictable use of
prior art elements according to their established functions.”)(citation
omitted); Leapfrog, 485 F.3d at 1162.
We are not persuaded that choosing a color for visibility was
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellant’s invention (see Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).
Appellant’s arguments to the contrary (Br. 8-10) do not convince us
otherwise. We agree with the Examiner (Ans. 7) that “even young children
understand” the concept of visibility using bright colors, and notably
Appellant does not dispute this fact by way of Reply Brief or other rebuttal.
In view of the foregoing, we sustain the rejection of representative
claim 1 as well as claims 2 and 3 grouped therewith as being anticipated by
Bird. We also sustain the rejection of claim 4 for similar reasons as
provided for claim 1 from which claim 4 depends, and because we agree
with the Examiner that it would have been an obvious design choice to
choose a color based on the need for visibility in order to more easily find
the coupler.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-3 as being
anticipated under 35 U.S.C. § 102(b).
(2) The Examiner did not err in rejecting claim 4 as being
unpatentable under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejections of claims 1-4 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)(1)(iv).

AFFIRMED

Vsh