Ex Parte Ferris et al

Board of Patent Appeals and Interferences

Jun 21, 2012

11382341 (B.P.A.I. Jun. 21, 2012)

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.
11/382,341 05/09/2006 Matthew D. Ferris 02316.1687USD2 5918
23552 7590 06/21/2012
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
TAOUSAKIS, ALEXANDER P
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
06/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte MATTHEW D. FERRIS and ALEX WATTS
____________________

Appeal 2010-004469
Application 11/382,341
Technology Center 3700
____________________

Before: STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004469
Application 11/382,341

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STATEMENT OF CASE
Appellants seek review of the Examiner’s rejection of claims 14-16
under 35 U.S.C. § 102(e) as anticipated by Bernard (US 6,450,458 B1; iss.
Sep. 17, 2002), and alternatively under 35 U.S.C. § 103(a) as unpatentable
over Bernard.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellants’ claimed invention “relates to a system for the
management and routing of telecommunication cables, and, more
particularly, to a coupler for joining two or more trough members.” Spec.
1:7-9. Independent claim 14, reproduced below, is representative of the
claimed subject matter (emphasis added):
14. A method for using a coupler and a trough member, the
method comprising steps of:
providing a first terminal end of the trough member
coupled to the coupler, wherein the first terminal end was
inserted in a longitudinal direction into a spacing defined by the
coupler, the longitudinal direction extending along the trough
member from the first terminal end to a second opposite
terminal end;
sliding a spring release in the longitudinal direction to
disengage a spring from portions of the trough member
defining a slot; and
removing the first terminal end of the first trough
member from the spacing.

1 The Examiner cancelled claims 17-21 because Appellants elected not to
pursue these claims on appeal. Office Communication dated Sep. 29, 2009;
see also Br. 5 (acknowledging claims 14-21 stand rejected and pursuing
appeal for claims 14-16). Further, the Examiner withdrew the non-statutory
double patenting rejection of claims 14-16. Ans. 2.
Appeal 2010-004469
Application 11/382,341

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OPINION
The Specification describes that as spring release 220A slides
longitudinally from a locked position to an unlocked position, fingers 224,
226 compress spring arms 211 and 212 towards each other, releasing the
spring arms 211 and 212 from engagement with the opposing portions 315,
316 of the trough member 300A. Spec. 7:23-8:13; 11:22-12:3; figs. 9
(spring release 220a in locked position on the right of figure, and spring
release 220B in unlocked position on left of figure), 23 (left side locked,
right side unlocked).
The Examiner’s determination of anticipation and conclusion of
obviousness are each based upon the finding that Bernard’s detents are
positioned adjacent retention clip 300 and comprise elements to move spring
arms 310 out of engagement by forcing arms 310 towards the base of
retention clip 300, which “must involve movement of the detents in the
longitudinal direction (i.e. from the left and right sides of Figure 5) such that
the detents engage with the spring arms 310 and flex the spring arms 310
away from the trough member 200.” Ans. 6; see also Ans. 3-7. This finding
is not supported by the reference.
Bernard discloses a coupler (cable raceway duct coupler 100) and a
spring (retention clip 300) for retaining and locking the trough sections
(cable raceway duct sections 200) against the coupler (cable raceway duct
coupler 100). Col. 1, ll. 6-7; col. 2, ll. 55-60; fig. 1. The spring (retention
clip 300) includes arms 310 that bend inward, and is attached to the coupler
(duct coupler 100) at clip mount 180 by fastener 400. Col. 3, ll. 34-39; fig.
4. When the spring (retention clip 300) is fully mounted on clip 180, its
arms 310 are positioned within receiving space 150 so that a trough member
Appeal 2010-004469
Application 11/382,341

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(cable raceway duct sections 200) may be easily inserted, and while in such
position, the arms 310 also provide a retention force on the attachment ends
of the trough member (cable raceway duct sections 200) to resist
disassembly. Col. 3, ll. 40-51.
Bernard discloses that fastener 400 may removably or permanently
attach the spring (retention clip 300) to mounting clip 180 of the coupler
(duct coupler 100). When fastener 400 is removable, the retention force
applied by the spring (retention clip 300) may be removed by loosening
fastener 400 sufficiently so that arms 310 of the spring (retention clip 300)
are no longer within receiving space 150. Col. 4, ll. 24-33; fig. 5. When
loosened, fastener 400 moves in a direction perpendicular to the length of
trough (cable raceway duct sections 200), and consequently the spring
(retention clip 300), to include arms 310, withdraws from the receiving
space 150 in a perpendicular direction. Fig. 5. When fastener 400 is
permanently affixed, it may be provided with detents that allow the spring
(retention clip 300) to move between an inserted and a withdrawn position.
Col. 4, ll. 24-37. Bernard does not further describe the location or operation
of these detents, nor are these detents depicted. Bernard, passim.
In light of these disclosures, when fastener 400 is removably attached,
Bernard’s spring (retention clip 300) disengages by sliding in the
perpendicular direction. When fastener 400 is permanently attached,
Bernard’s detents permit the spring (retention clip 300) to disengage.
However, Bernard does not disclose the position of these detents, nor does
Bernard disclose that the detents operate by forcing the arms 310 towards
the body of the spring (retention clip 300). Bernard, passim. Given this
absence of information, the Examiner’s finding that the detents are adjacent
Appeal 2010-004469
Application 11/382,341

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the spring (retention clip 300) and that the spring (retention clip 300)
disengages from portions of the trough member (cable raceway duct sections
200) by arms 310 moving towards the body of the spring (retention clip 300)
is not supported by a preponderance of the evidence. Because the
Examiner’s determination of anticipation and conclusion of obviousness are
each based upon this insufficient finding, we cannot sustain the rejection of
independent claim 14 and its dependent claims 15 and 16.

DECISION
We reverse the Examiner’s decision to reject claims 14-16.

REVERSED

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