Ex Parte Harris

Patent Trial and Appeal Board

Nov 18, 2014

12481670 (P.T.A.B. Nov. 18, 2014)

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.
12/481,670 06/10/2009 David A. Harris SY-41231/710240-4729 5652
59582 7590 11/19/2014
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
KASHNIKOW, ERIK
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
11/19/2014 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 DAVID A. HARRIS
____________

Appeal 2013-003351
Application 12/481,670
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–3 and 5–20.1 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 In the Answer, the Examiner indicated that the subject matter of claim 4
was allowable (Ans. 8).
Appeal 2013-003351
Application 12/481,670

2
Claim 1, the sole independent claim, is illustrative of the claimed
subject matter:
1. A self-wrapping, non-woven sleeve for routing and protecting
elongate members, comprising:
a single non-woven elongate thermoplastic wall having inner and
outer surfaces with opposite sides extending along a longitudinal axis of said
sleeve, said sides being self-wrapped about said longitudinal axis to provide
a tubular cavity bounded by said inner surface in absence of an externally
applied force, said sides being extendable away from one another under an
externally applied force to expose said cavity for insertion of the elongate
members, said sides returning to their self-wrapped configuration upon
removal of the externally applied force; and
an outer reflective layer attached to said outer surface of said wall.

The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
1) claims 1–3, 5–8, 10, 11, and 13–19 as unpatentable over the
applied prior art of Gladfelter (US 6,309,721 B1, issued Oct. 30,
2001) and Yamaguchi (US 2008/0006432 A1, issued Jan. 10,
2008), and
2) claims 9 and 12 over the combined prior art of Gladfelter,
Yamaguchi, and Sellis (US 2004/0219846 A1, published Nov. 4,
2004).
Appellant’s argument focuses on independent claim 1 (App. Br. 3–6).
Appellant relies upon these arguments for all the claims on appeal and did
not present any separate arguments for any of the remaining dependent
claims (id. at 5–6).

Appeal 2013-003351
Application 12/481,670

3
ANALYSIS
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claim 1 is unpatentable under
§ 103(a) in view of the applied prior art. Accordingly, we will sustain the
Examiner’s prior art rejections, and we add the following primarily for
emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
Appellant’s main argument is that there is no reason to combine the
teachings of Gladfelter and Yamaguchi, since Gladfelter already is a self-
wrapping sleeve via its support layer 11 (App. Br. 4; Reply Br. 2). This
argument is not persuasive as it fails to consider the prior art as a whole.
It is well established that in evaluating references it is proper to take
into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Appellant has not provided persuasive reasoning or credible evidence
why one of ordinary skill in the art would not have, using no more than
ordinary creativity, predictably used a known non-woven self-wrapping
Appeal 2013-003351
Application 12/481,670

4
sleeve configuration, such as exemplified by Yamaguchi, as a known
alternative to the support body 11 with its nonwoven layer of Gladfelter
(e.g., Ans. 5, 8; generally App. Br.; Reply Br.). See KSR, 550 U.S. at 421
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
Furthermore, one of ordinary skill would have immediately
appreciated that the addition of a known outer reflective layer for its known
advantages on a self-wrapping sleeve as taught by Gladfelter (e.g., col. 1,
ll. 55–60) onto the known self-wrapping sleeve of Yamaguchi is also no
more than the predictable use of a known prior art element for its known
function.
Therefore, we affirm the Examiner’s § 103 rejections of all the claims
on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

cdc