Ex Parte Malloy et al

Patent Trial and Appeal Board

Oct 17, 2013

12553231 (P.T.A.B. Oct. 17, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/553,231 09/03/2009 Cassie Malloy SY-41129/701240-4785 6180
59582 7590 10/18/2013
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
PATEL, VISHAL I
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
10/18/2013 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 CASSIE MALLOY and RAMESH R. AVULA
____________
Appeal 2012-008649
Application 12/553,231
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1-10 as obvious under 35 U.S.C. § 103(a)
over Rodriques (US 2008/0124976 A1, published May 29, 2008) in view of
Martucci (US 5,124,878 issued June 23, 1992). We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).

Appeal 2012-008649
Application 12/553,231

2
Claim 1 is illustrative of the claimed subject matter:
l. A self-wrapping, textile sleeve for routing and protecting elongate
members, comprising:
an elongate wall constructed from interlaced yarns having interstices
between adjacent yarns, at least one of said yarns being heat formed at one
temperature to bias said wall into a self-wrapping wall about a longitudinal
axis of said sleeve, said wall having an inner surface providing a generally
tubular cavity in which the elongate members are received and an outer
surface; and
a layer of cured liquid coating on said outer surface of said wall, said
liquid coating being curable at said one temperature and filling said
interstices to provide said wall as impervious to liquid.

Appellants mainly argue the claims as a group, but present separate
arguments for claims 2 and 3 (App. Br. 6-10). Accordingly, we select claim
1 as representative, and also address claims 2 and 3.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims 1 and 2 is unpatentable over the applied prior art. We
sustain the above rejection for substantially the same reasons presented by
the Examiner in the Answer. On the other hand, we agree with Appellants
that the combined prior art does not show that the inner layer of the textile
fabric is “substantially free of said [coating] layer” as recited in claim 3, and
we reverse the Examiner’s rejection as to claim 3 (App. Br. 5; Reply Br. 2,
3).
We add the following for emphasis.
Appeal 2012-008649
Application 12/553,231

3
It is well established that a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the art,
including non-preferred embodiments. Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
It is also well established that ordinary creativity is presumed on the
part of one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
Appellants’ argument that it would not have been obvious to apply the
coating of Martucci to the textile substrate 11 of Rodriquez because “a
coating material would more likely than not compromise the ability of the
electrical continuity to be maintained” because the coating material would
partially bond about the electrically conductive material 12 (App. Br. 4, see
also Reply Br. 2) is unavailing. A preponderance of the evidence supports
the Examiner’s determination that, one of ordinary skill in the art, using no
more than ordinary creativity, would have found it obvious to use a coating
material, as exemplified in Martucci, to improve the abrasion resistance of
the textile fabric 11 of Rodriquez. (e.g., Ans. 5). See KSR, 550 U.S. at 416
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
The analysis need not seek out precise teachings directed to the specific
subject matter of the claim, for it is proper to take account of the inferences
and creative steps that a person of ordinary skill in the art would employ. Id.
at 418. As the Examiner points out, claim 1 is directed to the article of a
textile sleeve (Ans. 7). Appellants have not shown through any persuasive
technical reasoning or evidence that one of ordinary skill in the art would not
Appeal 2012-008649
Application 12/553,231

4
have readily determined how to apply the coating of Martucci to the textile
substrate 11 of Rodriquez so as to not interfere with the electrically
conductive material 12 of Rodriquez.
With respect to claim 2, even Appellants agree that the coating of
Martucci completely coats the outer periphery of each fiber of its braided
layer 13 (see App. Br. 5, in the remarks stating that such a coating means
that the inner surface is not substantially free of the coating layer as required
in claim 3). Claim 2 does not specify how far the coating extends radially
outwardly from the outer surface. Accordingly, the coating that covers the
outer yarns de facto “extends radially outwardly” to at least the extent of the
depth of the coating layer on each fiber. Accordingly, Appellants have not
shown reversible error on the Examiner’s determination that the combined
prior art suggests this feature as recited in claim 2.
The Examiner’s § 103 rejection is sustained as to claims 1, 2, and 4-
10, but reversed as to claim 3.
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

sld