Ex Parte Trueb et al

Board of Patent Appeals and Interferences

Jan 30, 2012

11395436 (B.P.A.I. Jan. 30, 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.
11/395,436 03/31/2006 Thomas W. Trueb 049213.310065 1204
826 7590 01/30/2012
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
BRINSON, PATRICK F
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
01/30/2012 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 THOMAS W. TRUEB and STEVEN R. TRUEB
____________________

Appeal 2010-000236
Application 11/395,436
Technology Center 3700
____________________

Before JENNIFER D. BAHR, KEN B. BARRETT, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000236
Application 11/395,436

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STATEMENT OF THE CASE
Thomas W. Trueb and Steven R. Trueb (Appellants) appeal under 35
U.S.C. § 134(a) from a rejection of claims 11-14 and 17-20 under 35 U.S.C.
§ 103(a) as unpatentable over Lechuga (US 7,100,633 B2; iss. Sep. 5, 2006)
and Kacalieff (US 4,597,594; iss. Jul. 1, 1996).1 (App. Br. 3). Claims 1-10
were cancelled. (Id. at 2). We have jurisdiction over this appeal under 35
U.S.C. § 6(b). We reverse.

THE INVENTION
Claim 11, reproduced below, is representative of the appealed claims
(paragraphing added):
11. A cover assembly comprised of a cover
member made of resiliently yieldable material and
having adjacent portions that are to be secured to
one another, and a plurality of rigid fasteners;
at least one of adjacent portions of said
cover member having formed thereinto a plurality
of recesses of generally circular cross section, each
said recess comprising an inner section of
relatively small effective inside diameter and an
adjacent outer section of relatively large effective
inside diameter,
each of said fasteners being of generally
cylindrical form and having opposite end portions,
at least one of said end portions being a double-
effect engagement portion comprised of an axially
outward end section, having a first effective
outside diameter, and an axially adjacent inward

1 The Examiner objected to claims 15 and 16 as being dependent upon a
rejected claim, but containing allowable subject matter. (Final Rejection
dated Apr. 15, 2008 at 4; App. Br. 2). We do not consider claims 15 and 16
in this appeal.
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Application 11/395,436

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section having a second effective outside diameter
substantially larger than said first diameter,
each of said sections of said engagement
portion being comprised of plurality of
circumferentially extending, mutually adjacent
retaining elements engageable in a corresponding
section of said recess formed into said one adjacent
portion of said cover member,
said inner and outer sections of said recess
being configured to engage said retaining elements
of said outward end section and said inward
section of said fastener engagement portion,
respectively,
said retaining elements of said outward end
section of said engagement portion being of said
first diameter and said retaining elements of said
inward section being of said second diameter, said
first and second diameters being substantially
equal to said relatively small diameter and said
relatively large diameter, respectively, of said
recess sections,
whereby said engagement portion of said
fastener can be matingly engaged in light
interengagement and in semi-permanent
interengagement in said recess of said cover
member adjacent portion.

ANALYSIS
The Examiner found Lechuga discloses a cover member having
recesses (i.e., apertures 90, 92) and rigid fasteners (i.e., locking pins 98).
(Ans. 4; see also Lechuga, col. 10, ll. 50-56; Figs. 7, 9, 10). The Examiner
found that the recesses each comprise an inner section (i.e., channel 102) of
relatively small inside diameter, and an adjacent outer section (i.e., enlarged
chamber 106) of relatively large inside diameter. (Ans. 4; see also Lechuga,
col. 10, ll. 61-64; Fig. 8). The Examiner also found each of Lechuga's
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Application 11/395,436

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fasteners has engagement portions (i.e., enlarged ends 112) (Ans. 4, 6), and
that each engagement portion can be received in a recess to hold the halves
together in light or semi-permanent interengagement. (Id. at 6-7; see also
Lechuga, Fig. 9). The Examiner acknowledged Lechuga does not disclose
that the fasteners include "mutually adjacent retaining elements on opposing
sides of the fastener member." (Id. at 5, 7).
The Examiner found Kacalieff discloses a connector having opposite
ends each including circumferentially extending, mutually adjacent retaining
elements (i.e., barb rings 12, 13, 14) to engage recesses. (Ans. 5, 7; see also
Kacalieff, col. 2, ll. 17-21; Fig. 1). The Examiner concluded that it would
have been obvious in view of Kacalieff to modify Lechuga's fasteners to
have a plurality of mutually adjacent retaining elements to fit into the
plurality of recesses to improve gripping of the fasteners to the recesses and
thereby provide for both light and semi -permanent interengagement. (Ans.
5).
Appellants contend that the Examiner did not provide a reason to
combine the teachings of Lechuga and Kacalieff. (App. Br. 5). We agree
with Appellants that the Examiner did not articulate an adequate reason why
one skilled in the art would have looked to Kacalieff which discloses hose
connectors designed to connect the ends of flexible hoses, for a different
fastener structure to use with Lechuga's pipe cover which includes fasteners
designed for use in apertures having the structure shown in Figure 8.
Appellants contend that Lechuga's fasteners are specifically suited for the
jacket 40 to hold its edges together. (Id.). The following description in
Lechuga supports this contention (col. 11, ll. 2-6) (italics added):
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Application 11/395,436

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In accordance with this construction, . . . the
enlarged ends 112, and particularly, abutment
shoulders 114 thereof, will be located in the
chambers 104 and 106, and bear against ends
thereof, so as to lockably hold the pin within the
elongate channel 102.
Kacelieff does not disclose that the barb rings engage with existing
recess structure. Rather, Kacelieff teaches that the hose connector is inserted
into an end of a flexible hose to "indent into the interior surface of a hose
having a flexible wall and form a labyrinth type seal." (Col. 2, ll. 29-34)
(emphasis added). As such, the Examiner has not adequately explained why
one skilled in the art would have been prompted to modify Lechuga's
locking pins with Kacalieff's barb ring structure.
In the claimed cover member, the engagement portion of the fastener
can be matingly engaged in "light interengagement" and in "semi-permanent
interengagement" in a recess. Appellants' Specification describes "light
interengagement" produces a "holding power that may be barely measurable
but sufficient to avoid inadvertent disengagement." (See Spec. 11:4-6; Fig.
9). Appellants correctly point out that Lechuga and Kacalieff both disclose
connectors that form a secure engagement with structures. (App. Br. 6-7).
Lechuga describes "the enlarged ends 112 . . . lockably hold the pin within
the elongate channel 102" (col. 11, ll. 2-6) (emphasis added); "pairs of
aligned apertures along the slit for receiving a highly effective fastener
arrangement, which allows for securement of the jacket in a generally
tamper proof manner" (col. 3, ll. 45-51); and "if vandal proof type locking is
required, then . . . the pin arrangement of FIG. 10[] can be used" (col. 11, ll.
34-36) (emphasis added). Kacalieff describes that the barb rings form a seal
which establishes "a secure connection to resist detachment." (Col. 2, ll. 29-
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34) (emphasis added). Lechuga and Kacalieff do not disclose that the
locking pins and barb rings produce an engagement that may reasonably be
considered to be a "light interengagement" as this claim term would be
understood by one of ordinary skill in the art in light of Appellants'
Specification. Hence, the Examiner has not provided an adequate reason
why one skilled in the art would have been prompted to combine the
teachings of Lechuga and Kacalieff in the manner advanced by the Examiner
to attempt to result in the claimed cover assembly.
Moreover, neither Lechuga nor Kacalieff teaches all of the structural
limitations for the retaining elements called for in claim 11 which appear to
afford the possibility of both light interengagement and semi-permanent
interengagement. Claim 11 calls for "each of said sections of said
engagement portion being comprised of plurality of circumferentially
extending, mutually adjacent retaining elements engageable in a
corresponding section of said recess formed into said one adjacent portion of
said cover member," and "said retaining elements of said outward end
section of said engagement portion being of said first diameter and said
retaining elements of said inward section being of said second diameter."
Accordingly, claim 11 requires the outward end section to comprise more
than one retaining element of the first diameter, and the inward section to
comprise more than one retaining element of the second diameter. In
contrast, each of the barb rings of the series of barb rings shown in Figure 1
of Kacalieff appears to have a different diameter. As such, even if the
teachings of Lechuga and Kacalieff were combined, the combined teachings
would not meet all of the limitations called for in claim 11. Thus, we do not
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Application 11/395,436

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sustain the rejection of claim 11, and claims 12-18 which depend directly or
ultimately from claim 11, as being unpatentable over Lechuga and Kacalieff.
Independent claim 19 is directed to a cover assembly and recites
(emphasis added):
the difference between said first and second
dimensions of said sections of said engagement
portion of said each fastener, and the difference
between said relatively small and relatively large
dimensions of said sections of said each recess in
said cover member portion, being such that said
outward end section of said fastener engagingly
fits relatively loosely in said outer section of said
recess but with a degree of mechanical
interference sufficient to avoid inadvertent
disengagement.
For reasons similar to those discussed supra with respect to claim 11,
we agree with Appellants that Lechuga and Kacalieff fail to teach the
dimensional relationship between the recesses of the cover member and the
fasteners that provides loose engagement as called for in claim 19. (See
Reply Br. 3). Hence, we also do not sustain the rejection of claim 19, and
claim 20 which depends therefrom.

DECISION
The rejection of claims 11-14 and 17-20 under 35 U.S.C. § 103(a) as
unpatentable over Lechuga and Kacalieff is REVERSED.

REVERSED

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