Ex Parte Hoyl et al

Board of Patent Appeals and Interferences

Jan 13, 2009

09812247 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRADLEY S. HOYL, CARL G. HARRISON, and
MAURICE ROBERTSON
____________

Appeal 2008-5180
Application 09/812,247
Technology Center 3600
____________

Decided: January 13, 2009
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and
STEFAN STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Bradley S. Hoyl et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-6, 11-16, 20-23, and 31-37.
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Claims 7-10, 17-19, 24-30, and 38 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellants’ invention is drawn towards a device and a method for
supporting cables using a hook and loop type releasable engagement (Spec.
2, ll. 9-10). The device includes a frame 506, a substrate 502 coupled to the
frame 506, and a cable fastener 504 that is capable of releasable engagement
with the substrate 502 using a “hook and loop” mechanism (Spec. 6, ll. 21-
23 and 31-32; Spec. 7, ll. 8 and 25-29; and fig. 5).
Claim 1 is representative of the claimed invention and reads as
follows:

1. An apparatus comprising:

a rigid frame, wherein the rigid frame comprises at least
one substantially planar surface;

a substrate having a first surface and a second surface
substantially opposite the first surface, wherein the first
surface of the substrate comprises a first plurality of
fasteners of one of a plurality of hook and loop
mechanisms and the second surface of the substrate is
coupled to the substantially planar surface of the rigid
frame; and

a cable fastener comprising a second plurality of
fasteners of the one of the plurality of hook and loop
mechanisms that covers at least all of one side
of the cable fastener, wherein the second plurality of
fasteners is configured to engage the first plurality of
fasteners, the cable fastener is completely detachable
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from the substrate, and the second plurality of
fasteners is configured not to engage any portion of the
cable fastener,

wherein the cable fastener is further shaped to define:

a variable-width opening,

an elongated body having a predetermined width,

a head portion at one end of the body, the head
portion having a width greater than the
predetermined width and having a size
substantially similar to a size of the variable-width
opening, the head defining an opening through
which the elongated body of the cable fastener
may pass.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Delk US 5,292,312 Mar. 8, 19941
Delk US 5,300,037 Apr. 5, 19942
Lutz US 5,666,265 Sep. 9, 1997

The following rejections are before us for review:
The Examiner rejected claims 1-6, 11-16, 20-23, and 31-37 under
35 U.S.C. § 103(a) as unpatentable over Lutz in view of Delk ‘312 and
further in view of Delk ‘037.

1 Hereafter Delk ‘312.
2 Hereafter Delk ‘037.
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The Examiner rejected claims 1-6, 11-16, 20-23, and 31-37 under
35 U.S.C. § 103(a) as unpatentable over Lutz in view of Delk ‘037.

THE ISSUE
Have the Appellants shown that the Examiner erred in combining the
teachings of Lutz, Delk ‘312, and Delk ‘037 or Lutz and Delk ‘037 to arrive
at the claimed invention? The issues turn on whether one of ordinary skill in
the art would have found it obvious to combine the teachings of Lutz, Delk
‘312, and Delk ‘037 or Lutz and Delk ‘037 to arrive at an apparatus
including a cable fastener having means for releasable engagement (i.e.,
hook and loop) to a substrate such that, (1) the means for releasable
engagement is configured to not engage with any portion of the cable
fastener, and (2) is “completely detachable” from the substrate.

SUMMARY OF DECISION
We REVERSE and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
.
FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 848 F. 2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Lutz discloses a Velcro® cord wrapping system 280 for
securing a plurality of cables and cords 507 using a Velcro® patch
281 and an elongate Velcro® strip 282 (col. 8, ll. 43-48 and fig. 7a).
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2. Lutz further discloses that the elongate Velcro® strip 282
includes female Velcro® surface 283 on one side and male Velcro®
surface 284 on the other side (col. 8, ll. 51-53 and fig. 7a).
3. Figure 7b of Lutz is reproduced below.

Figure 7b of Lutz depicts the Velcro® cord wrapping system 280
when in use.
4. The elongate strip 282 of Lutz is wrapped around the cables
507 and back onto itself with the female Velcro® surface 283 on the
outside, such that a portion is formed where the inside male Velcro®
surface 284 becomes attached to the outside female Velcro® surface
283 (col. 8, ll. 53-55 and fig. 7b).
5. The wrapped bundle is attached to the male Velcro® patch 281
(col. 8, ll. 55-57 and fig. 7b).
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6. Delk ‘312 discloses a tube holder 10 for medical tubing, fluid
tubing, electronic wiring, or fiber optics including a strap portion 30
(cable fastener) and a base plate 20 (substrate) (col. 5, ll. 51-56; col. 6,
ll. 3-4; fig. 1).
7. The top surface of the strap portion 30 (cable fastener) includes
smooth outer regions 31 and 33 and a high friction central region 35
(col. 7, ll.13-15 and 19-21 and fig. 5).
8. The bottom surface of the strap portion 30 (cable fastener)
includes hook type Velcro® outer regions 32 and 34 and a central,
smooth region 36 (col. 7, ll. 15-17 and 22-24 and fig. 6).
9. The purpose of the central, smooth portion 36 is to eliminate
unwanted snagging on other objects in the environment (col. 7, ll. 60-
63).
10. Delk ‘037 discloses a holder 10 for medical tubing, fluid
tubing, electronic wiring, or fiber optics (col. 6, ll. 40-45 and fig. 1).
11. Delk ‘037 discloses a cable fastener including a strap portion 30
(cable fastener) ultrasonically bonded to a base plate 20 (substrate)
(col. 6, ll. 60-61; col. 8, ll. 30-33; and figs. 1 and 5).
12. The strap portion 30 of Delk ‘037 includes a plurality of
fasteners (hook type) on a first side 41 and a smooth backing 43 on
the opposite, second side 43 (col. 8, ll. 3-7 and 14-15 and figs. 3 and
4).
13. The strap portion 30 of Delk ‘037 further includes a wide end
33 and a narrow end 34 (col. 7, ll. 63-64 and figs. 3 and 4).

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PRINCIPLES OF LAW
Indefiniteness
A specification must conclude with claims "particularly pointing out
and distinctly claiming the subject matter which the applicant regards as his
invention." 35 U.S.C. § 112, ¶ 2 (2000). The essence of the requirement
under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is
that the language of the claims must make it clear what subject matter the
claims encompass. In re Hammack, 427 F.2d 1378 (CCPA 1970).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe. All Dental Prodx, LLC v. Advantage Dental
Prods'., 309 F.3d 774, 779-80 (Fed. Cir. 2002)

Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S. Ct. at 1734 ("While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.")
The Examiner has the initial burden of showing a prima facie case of
obviousness, and the Appellant has the burden on appeal to the Board to
demonstrate error in the Examiner's position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) ("[t]o reject claims in an application under section
103, an examiner must show an unrebutted prima facie case of
obviousness .... On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.") (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

Teaching Away
Where the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tec Air Inc. v. Denso Mfg.
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Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984). "A reference may be said to teach away
when a person of ordinary skill, upon [examining] the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

OPINION
The obviousness rejection based on Lutz, Delk ‘312, and Delk ‘037
Lutz discloses a Velcro® cord wrapping system 280 for securing a
plurality of cables and cords 507 using a Velcro® patch 281 and an elongate
Velcro® strip 282 (FF 1). However, according to the Examiner, Lutz does
not disclose a cable fastener having a head portion with “a width greater than
a predetermined width” (And. 6). The Examiner determines that it would
have been obvious for a person of ordinary skill in the art to have modified
Lutz by providing the cable fastener of Delk ‘312 as a substitute for the
fastener of Lutz because both Lutz and Delk ‘312 teach cable fasteners for
holding cables/tubular members to substrates (Ans. 6). However, the
Examiner further notes that Lutz in view of Delk ‘312 does not teach that the
hook and loop mechanism covers “at least all of one side of the cable
fastener” (Ans. 6). The Examiner then employs the teachings of Delk ‘037
to show that it would have been obvious for a person of ordinary skill in the
art to have modified Lutz in view of Delk ‘312 by providing the cable
fastener of Delk ‘037 in order to provide a fastener that can hold a variety of
cable sizes (Ans. 7).
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We disagree with the Examiner’s position, because modifying the
cable fastener of Lutz in view of Delk ‘312 to provide a hook and loop
mechanism that covers “at least all of one side of the cable fastener,” as
taught by Delk ‘037, is contrary to the specific teachings of Delk ‘312. That
is, Delk ‘312 specifically teaches a tube holder (cable fastener) having a first
surface including a central, smooth portion 36 located between hook type
Velcro® outer regions 32 and 34 (FF 8). Hence, the hook and loop
mechanism of the fastener of Delk ‘312 does not cover “at least all of one
side of the cable fastener,” as required by the Appellants’ claimed invention.
Moreover, Delk ‘312 specifically teaches that the purpose of the central
smooth portion 36 is to eliminate unwanted snagging of the fastener on other
objects in the environment (FF 9). In contrast to the teachings of Delk ‘312,
Delk ‘037 discloses a tube holder (cable fastener) having a plurality of
fasteners (hook type) on a first side 41 and a smooth backing 43 on the
opposite (FF 10 and 12). Hence, Delk ‘312 specifically teaches away from
the combination of Lutz, Delk ‘312, and Delk ‘037, because although the
hook and loop mechanism of the fastener formed by the combined teachings
of Lutz, Delk ‘312, and Delk ‘037 covers “at least all of one side of the cable
fastener,” the fastener would be prone to snagging on other objects in the
environment, which is in contrast to the purpose and mode of operation of
the fastener of Delk ‘312. Therefore, we find that a person of ordinary skill
in the art would not have combined the teachings of Lutz, Delk ‘312, and
Delk ‘037 as proposed by the Examiner. To do so would render the cable
fastener of Lutz in view of Delk ‘312, as modified by Delk ‘037,
unsatisfactory for its intended purpose. In conclusion, we find that the
modification proposed by the Examiner as evidenced by the combined
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teachings of Lutz, Delk ‘312, and Delk ‘037 would not have been obvious to
the person of ordinary skill in the art.

The obviousness rejection based on Lutz and Delk ‘037
The Appellants argue that the combination of Lutz and Delk ‘037
does not teach a cable fastener having means for releasable engagement with
a substrate, i.e., hook and loop mechanism, such that the means for
releasable engagement is (1) configured not to engage with any portion of
the cable fastener and (2) is “completely detachable” from the substrate
(App. Br. 12).
Lutz discloses a Velcro® cord wrapping system 280 for securing a
plurality of cables and cords 507 using a Velcro® patch 281 and an elongate
Velcro® strip 282 (FF 1). Lutz further discloses that the elongate Velcro®
strip 282 includes female Velcro® surface 283 on one side and male
Velcro® surface 284 on the other side (FF 2). When in use, the elongate
strip 282 is wrapped upon itself such that a portion is formed where the
inside male Velcro® surface 284 becomes attached to the outside female
Velcro® surface 283 (FF 3 and 4). In contrast to the Appellants’ claimed
invention, the means for releasable engagement (hooks and loops) in Lutz is
configured to engage with a portion of the cable fastener. Hence, we agree
with the Examiner that Lutz does not teach that the means for releasable
engagement is configured not to engage with any portion of the cable
fastener (Ans. 10). The Examiner asserts that because Delk ‘037 teaches a
strap portion 30 (cable fastener) having a plurality of fasteners (hook type)
on a first side 41 and a smooth backing 43 on the opposite, second side 43
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(FF 11 and 12), the combination of Lutz and Delk ‘037 teaches that the
means for releasable engagement is configured not to engage with any
portion of the cable fastener (Ans. 10-11). Finally, the Examiner concludes
that it would have been obvious for a person of ordinary skill in the art to
have modified Lutz by providing the cable fastener of Delk ‘037 as a
substitute for the fastener of Lutz because both Lutz and Delk ‘037 teach
cable fasteners for holding cables/tubular members to substrates (Ans. 13).
We disagree with the Examiner’s position for the following reasons.
First, we note that the mode of operation of the fastener of Lutz is different
than that of the fastener of Delk ‘037. Specifically, the mode of operation of
the fastener of Delk ‘037 teaches away from the mode of operation of the
fastener of Lutz, hence teaches away from combining the disclosure of Lutz
and Delk ‘037, as suggested by the Examiner. Lutz discloses wrapping the
elongate strip 282 upon itself to form a bundle and releasably attaching the
wrapped bundle to the male Velcro® patch 281 (FF 3). In contrast, Delk
‘037 discloses attaching the tubing C between the ultrasonically bonded
strap portion 30 and the base plate 20 (FF 11). As such, because the strap
portion 30 (fastener) and the base plate 20 (substrate) of Delk ‘037 are
ultrasonically bonded, they are not “completely detachable.” A person of
ordinary skill in the art would not have combined the teachings of Lutz and
Delk ‘037 because the cable fastener of Lutz and Delk ‘037, as proposed by
the Examiner, would not be “completely detachable” from the substrate, as
required by the Appellants’ claimed invention. As such, we find that the
modification proposed by the Examiner, as evidenced by the combined
teachings of Lutz and Delk ‘037, would not have been obvious to the person
of ordinary skill in the art.
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Second, we note that the Examiner has not provided any factual basis
to show that a person of ordinary skill in the art would have readily
substituted the Velcro® strip 282 of Lutz with the strap portion 30 of Delk
‘037. Specifically, the Examiner has not identified a reason that would have
prompted a person of ordinary skill in the art to modify the Velcro® strip
282 of Lutz such that the male Velcro® surface 284 of Lutz would include a
smooth surface, as taught by Delk ‘037 and thus, the Velcro® strip 282 of
Lutz in view of Delk ‘037 would not attach to itself. In conclusion, we find
that the modification proposed by the Examiner of substituting the Velcro®
strip 282 of Lutz with the strap portion 30 of Delk ‘037 would not have been
obvious to the person of ordinary skill in the art.
For the above stated reasons, we conclude that the Examiner has not
discharged the initial burden of establishing a prima facie case of
obviousness of the subject matter of claims 1-6, 11-16, 20-23, and 31-37.
Accordingly, the rejections of claims 1-6, 11-16, 20-23, and 31-37 under
35 U.S.C. § 103(a) as unpatentable over Lutz in view Delk ‘312 and further
in view of Delk ‘037 and alternatively, over Lutz in view of Delk ‘037, are
reversed.
NEW GROUNDS OF REJECTION
We make the following new grounds of rejection pursuant to
37 C.F.R. § 41.50(b).
Claims 1-6 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
invention. Claim 1 recites a cable fastener including a variable-width
opening, an elongated body having a predetermined width, and a head
portion at one end of the body having “a size substantially similar to a size
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of the variable-width opening” (underlining added). As far as we understand,
the above mentioned limitations read on the Appellants’ tie wrap 504 (as
shown in Figure 8 of the Appellants’ drawings) and which includes a body
802 (elongated body having a predetermined width), a head portion 804 that
is wider than the body 802, and a variable-sized opening formed by the tie
wrap 504 when the body 802 is pulled through the interior 806 of the handle
portion 804 to form an encircling structure for a bundle of cables 902 (Spec.
8, ll. 13-20 and figs. 8 and 9 of the Appellants’ drawings). However, the
limitation that the head portion has “a size substantially similar to a size of
the variable-width opening” is indefinite because the size of the head portion
is referenced to an object that is variable, that is, the variable-width opening
which changes according to the number of enclosed cables. In light of the
above, we conclude that claim 1, and claims 2-6 depending from claim 1, are
indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point and distinctly claim the subject matter which the
Appellants regard as the invention.

SUMMARY
The decision of the Examiner to reject claims 1-6, 11-16, 20-23, and
31-37 under 35 U.S.C. § 103(a) as unpatentable over Lutz in view of Delk
‘312 and further in view of Delk ‘037 is reversed.
The decision of the Examiner to reject claims 1-6, 11-16, 20-23, and
31-37 under 35 U.S.C. § 103(a) as unpatentable over Lutz in view of Delk
‘037 is reversed.
We enter new grounds of rejection of claims 1-6 under 35 U.S.C.
§ 112, second paragraph.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

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