14068886 (P.T.A.B. Feb. 4, 2019)

Ex Parte O et al

Patent Trial and Appeal BoardFeb 4, 2019

14068886 (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/068,886 10/31/2013 Timothy M. O'Regan 24978 7590 02/06/2019 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5179.114930 1069 EXAMINER GONZALEZ, HIRAM E ART UNIT PAPER NUMBER 2848 NOTIFICATION DATE DELIVERY MODE 02/06/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ptomail@ gbclaw. net docket@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY M. O'REGAN, TIMOTHY J. O'REGAN, FRANK J. WOLFARD, and MICHAEL F. O'REGAN Appeal2018-004517 Application 14/068,886 Technology Center 2800 Before BEYERL YA. FRANKLIN, MICHELLE N. ANKENBRAND, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134 from a rejection2 of claims 1, 2, 5, 6, 8, 9, 11-14, 17-29. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The real party in interest is identified as "Electrical Materials Company." Appeal Brief of June 13, 2017 ("Br."), 3. 2 Final Office Action of January 23, 2017 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of December 19, 2017 ("Ans."). No Reply Brief was filed. Appeal2018-004517 Application 14/068,886 CLAIMED SUBJECT MATTER The claims are directed to an electrical cable support arrangement. More particularly, the invention seeks to "provide for the fixed, secure positioning and support of one or more electrical cables in an underground manhole." Spec. 3: 19-21. 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electrically insulated saddle arrangement for maintaining one or more electrical utility power distribution cables in fixed position on a support member, said saddle arrangement comprising: a housing comprised of a high strength, lightweight plastic and having an upper recessed curvilinear portion adapted for receiving one or more electrical cables, wherein said upper recessed portion of said housing is defined by a flat inner portion for receiving and supporting one or more electrical cables and first and second opposed, upwardly extending outer lateral portions each disposed on an upper portion of said housing and including one or more respective aligned apertures; a tie arrangement including an elongated, flexible tie member attached to said aligned apertures in said first and second opposed, upwardly extending outer lateral portions of said housing for retaining said elongated, flexible tie member, said tie member spanning the housing's upper recessed curvilinear portion for engaging and maintaining the one or more electrical cables in fixed position on said housing; and a retaining arrangement disposed on a lower portion of said housing and including first and second slots aligned transverse to one another, wherein said first slot is adapted to receive the support member and a moveable member disposed in said second slot and adapted for positioning across said first slot and in engagement with the support member for fixedly attaching said housing to the support member while allowing 3 Electrical Cable Support Arrangement, Application No. 14/068,886 ("Spec."). 2 Appeal2018-004517 Application 14/068,886 the one or more electrical cables to move in a sliding manner along their respective lengths in the housing's upper recessed curvilinear portion. Br. D-1 (Claims Appendix). REFERENCES The Examiner relied up the following prior art references in rejecting the claims on appeal: Thoms Meyer Logsdon Murphy Geiger Hajduch us 2,050,510 us 3,471,109 us 4,768,741 us 4,899,963 US 6,533,226 B2 US 8,991,774 B2 REJECTIONS Aug. 11, 1936 Oct. 7, 1969 Sept. 6, 1988 Feb. 13, 1990 Mar. 18, 2003 Mar. 31, 2015 Claims 1, 5, 6, 8, 9, 11-14, 17-23, and 25-27 are rejected under pre- AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Thoms in view of Geiger and Hajduch. Final Act. 6. Claims 2 and 29 are rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Thoms in view of Logsdon. Id. at 16. Claim 24 is rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Thoms in view of Murphy. Id. at 17. Claim 28 is rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Thoms in view of Geiger, Hajduch, and Meyer. Id. OPINION 3 Appeal2018-004517 Application 14/068,886 Obviousness Rejection of Claim 1 Appellants argue that the Examiner reversibly erred in rejecting claim 1 4 for failure to show that the combined prior art teaches or suggests a housing ... having an upper recessed curvilinear portion adapted for receiving one or more electrical cables, wherein said upper recessed portion of said housing is defined by a flat inner portion for receiving and supporting one or more electrical cables and first and second opposed, upwardly extending outer lateral portions each disposed on an upper portion of said housing and including one or more respective aligned apertures and "a tie arrangement including an elongated, flexible tie member attached to said aligned apertures ... , said tie member spanning the housing's upper recessed curvilinear portion for engaging and maintaining the one or more electrical cables in fixed position on said housing." Br. 13. More specifically, while not disputing the Examiner's finding that Thoms teaches various structural components recited in claim 1 ( compare Br. 14--19, with Final Act. 6-7), Appellants argue that Thoms dates back to 1933 and "it is highly unlikely that anyone at the time of the Thoms patent" would have used the Thoms cable saddle in "highly energized electric ... cable[]" applications. Br. 14, 16. Appellants also argue that Thoms does not teach or suggest "the capability to deal with or accommodate the current environment and high electrical load conditions of high voltage and high current electric power distribution cables." Id. at 15. In support, Appellants present a sketch labeled FIG. 1 said to show that the cables at the time of 4 Appellants do not present separate arguments for independent claim 1 7 or dependent claims 5, 6, 8, 9, 11-14, 18-23, and 25-27. Br. 13-26. Those claims, therefore, stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). 4 Appeal2018-004517 Application 14/068,886 Thoms are different (i.e., much smaller) from the modem day cables. Id. at 16-19. Appellants' argument does not identify reversible error because "apparatus 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). Absent structural differences, any "recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Furthermore, as the Examiner points out, Appellants' argument is not commensurate in scope with the language of claim 1, which lacks features such as "high current electric power distribution cables." Ans. 3--4. Appellants next argue that Thoms and Geiger teach away from one another because Thoms describes a cable saddle that allows the cable to move, whereas Geiger describes a confining wire tie. Br. 20 ( citing Thoms 1 :23-26, Geiger 1 :9-21 ). As the Examiner points out, however, when read as a whole, Thoms does not require the cable to be retrained without any movement and combining these known structures is within the knowledge and technical grasp of a skilled artisan. Ans. 4 ( citing Thoms 1 :23-26); Ans. 8. Appellants do not dispute this finding or identify any reversible error. Appellants also argue that the Examiner reversibly erred in finding that Geiger teaches or suggest the recited "opposed, upwardly extending outer lateral portions." Br. 20. Appellants, however, do not address the Examiner's finding that element 7 6 of Geiger's Figure 16b teaches or suggests the limitation at issue. Id. Appellants instead direct their arguments to saddle mount 16 (which has arched surface 36a) and cable 5 Appeal2018-004517 Application 14/068,886 bundle 8. Id. Without addressing the Examiner's finding with regard to this limitation and without providing structural distinction over the prior art, Appellants' argument is unpersuasive of reversible error. Appellants also argue that the Examiner reversibly erred in finding that Geiger teaches or suggest the recited "flat inner portion." In particular, Appellants argue that the prior art component is "not adapted, nor intended, for supporting multiple cable bundles." Br. 22. Appellants, however, fail to structurally distinguish the prior art component. See id. Appellants' argument does not identify reversible error because, as explained above, "apparatus claims cover what a device is, not what a device does." Hewlett- Packard, 909 F.2d at 1468. Finally, Appellants argue that neither Geiger nor Hajduch is capable of operating in certain environmental conditions ( e.g., those that apply to an electric power distribution network). Br. 23-25. We are not persuaded. We again note that claim 1 is an apparatus claim whose patentability "depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Obviousness Rejection of Claims 2 and 29 Dependent claims 2 and 29 additionally recite "wherein said housing is comprised of acrylonitrile butadiene styrene (ABS)." Appellants do not dispute the Examiner's finding that Logsdon teaches ABS plastic is a known material. Compare Br. 26, with Final Act. 16. Rather, Appellants argue that the Examiner erred in rejecting claims 2 and 29 because the apparatus in Logsdon is used in a plumbing application with a different configuration than that of Thoms. Br. 26. All of the features of the secondary reference 6 Appeal2018-004517 Application 14/068,886 need not be bodily incorporated into the primary reference, and the skilled artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). To the extent that Appellants' argument is that Logsdon is non-analogous art, Appellants do not adequately explain why the Examiner reversibly erred in finding that Logsdon's teaching of the use of ABS plastic in tubing applications is reasonably pertinent to the material selection of the recited "housing" of a cable. See Ans. 5---6. "Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [ or application at issue] can provide a reason for combining the elements in the manner claimed." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Appellants fail to identify reversible error with regard to the rejection of claims 2 and 29. Obviousness Rejection of Claim 24 Appellants argue that the Examiner reversibly erred in rejecting claim 24 without providing a sufficient explanation as to why. Br. 27 (merely asserting that "element 20 in Murphy is not one of the 'apertures' recited in claim 24"). "[M]ere statements of disagreement ... do not amount to a developed argument." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). Accordingly, Appellants do not identify a reversible error. Obviousness Rejection of Claim 28 Appellants argue that the Examiner reversibly erred in rejecting claim 28 because the device in Meyer differs in how it is used. Br. 27. As previously explained, the patentability of apparatus claim 28 "depends on 7 Appeal2018-004517 Application 14/068,886 the claimed structure, not on the use or purpose of that structure." Catalina, 289 F .3d at 809. We are, therefore, unpersuaded that the Examiner reversibly erred in finding that the recited structure is not patentably distinguished from those of the prior art. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8