Galamba, Steven M.

Patent Trials and Appeals Board

Mar 3, 2020

15224348 - (D) (P.T.A.B. Mar. 3, 2020)

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.
15/224,348 07/29/2016 Steven M. Galamba SY-50402-5/710240-8163 2905
59582 7590 03/03/2020
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
VARGHESE, ROSHN K
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
DWPatents@dickinson-wright.com
tgood@dickinsonwright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN M. GALAMBA
____________

Appeal 2019-001354
Application 15/224,348
Technology Center 2800
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 6–10, and 13–21 under 35 U.S.C. § 103.3 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE.

1 Our Decision refers to the Specification (“Spec.”) filed July 29, 2016,
Appellant’s Appeal Brief (“Appeal Br.”) filed May 30, 2018, the Examiner’s
Answer (“Ans.”) dated Sept. 13, 2018, and Appellant’s Reply Brief (“Reply
Br.”) filed Nov. 13, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Federal-Mogul Powertrain LLC as
the real party in interest. Appeal Br. 1.
3 The Examiner indicates claims 4, 5, 11, and 12 include allowable subject
matter. Final Office Action (“Final Act.”) dated Jan. 4, 2018, 8. The
Examiner’s provisional nonstatutory obviousness-type double patenting
rejection is withdrawn. Ans. 16.
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STATEMENT OF THE CASE
The invention “relates generally to tubular sleeve assemblies that
provide thermal protection to an electronic object contained therein.”
Spec. ¶ 2. The Specification discloses protective sleeves are used to cover
sensors mounted within an automotive vehicle’s engine compartment.
Id. ¶ 3. According to the Specification, however, it is typically difficult to
assemble the sleeve in a manner that allows the sleeve to be reliably secured,
maintained in a desired position, and readily removable to service the sensor.
Id. ¶ 4. In view of this, the Specification discloses a thermal sleeve for
protecting an electronic member connected to a wiring harness. Id. ¶ 5. The
tubular member includes, among other things, an inner layer of insulative
material, an outer layer of reflective material, and a plurality of slits that
extend lengthwise through one end of the tubular member to form a plurality
of fingers that extend radially inwardly to form an opening for receipt of the
wiring harness. Id.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative (formatting added).
1. A thermal sleeve for protecting an electronic
member operably connected to an elongate wiring harness,
comprising:
a tubular member including an inner layer of insulative
material and an outer layer of reflective material,
said tubular member extending along a central
longitudinal axis between opposite ends,
a plurality of slits extending lengthwise through one of
said ends of said inner layer of insulative material and said outer
layer of reflective material to form a plurality of fingers of said
inner layer of insulative material and said outer layer of reflective
material,
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Application 15/224,348
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said fingers extending radially inwardly toward said
central longitudinal axis and forming an opening for receipt of
the wiring harness therethrough.
Independent claims 8 and 16 include limitations similar to claim 1.
Claim 8 is directed to a thermal sleeve in combination with a wiring harness.
Claim 16 is directed to a method of constructing a sleeve for protecting an
electronic member connected to a wiring harness. The remaining claims on
appeal depend directly or indirectly from claims 1, 8, and 16.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After considering
the positions of both the Examiner and Appellant, we are persuaded the
Examiner reversibly erred for the reasons set forth in Appellant’s briefs and
discussed below.
Rejection 1: Obviousness of Claims 1–3, 6–10, and 13–18
The Examiner rejects claims 1–3, 6–10, and 13–18 under 35 U.S.C.
§ 103 as being unpatentable over Fryberger, Jr.4 in view of Moisson.5 Final
Act. 9–20; Ans. 2–13.

4 US 2006/0054763 A1, published Mar. 16, 2006 (“Fryberger, Jr.”).
5 US 4,380,686, issued Apr. 19, 1983 (“Moisson”).
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Fryberger, Jr.’s Figure 1 is reproduced below.

Figure 1 is an exploded sectional view of Fryberger, Jr.’s assembly. See
Fryberger, Jr. ¶ 7.
Fryberger, Jr.’s Figure 1 shows positioning device assembly 10 used
to affix protective sensor sleeve 12 over sensor 14. Id. ¶ 10. Sensor sleeve
12 includes elongated tube 18 having damping layer 22 and outwardly
facing reflective layer 24. Id. Assembly 10 further includes harness sleeve
28 and positioning device 32 that is moved to be received within bore 20 of
elongated tube 18. Id. ¶ 12. Fryberger, Jr. discloses an embodiment in
which positioning device 32 includes fingers 38. Id. ¶ 15. Fryberger, Jr.
teaches that positioning device 32 engages harness sleeve 28. Id. ¶ 12.
Figure 1 depicts fingers 38 engaging harness sleeve 28. Id. ¶ 13.
Claim 1
Regarding claim 1, the Examiner finds Fryberger, Jr. discloses a
thermal sleeve including an inner layer of insulative material and an outer
layer of reflective material, citing Fryberger, Jr.’s damping layer 22 and
reflective layer 24. Ans. 2. The Examiner also finds Fryberger, Jr. discloses
a plurality of slits that form a plurality of fingers that extend radially inward
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to form an opening, citing the fingers 38 of Fryberger, Jr.’s positioning
device 32. Id. at 2–3.
The Examiner finds Fryberger, Jr. does not disclose a plurality of slits
extending lengthwise through ends of the inner layer and outer layer of the
tubular member to form the plurality of slits claim 1 requires. Id. at 3. The
Examiner finds Moisson discloses a sleeve including a tubular member that
has an inner layer of insulative material, an outer layer of reflective material,
and a plurality of slits extending lengthwise through an end of the inner layer
and outer layer to form a plurality of fingers that extend radially inward to
form an opening. Id. Moisson’s Figure 1 is reproduced below.

Figure 1 of Moisson depicts a liner positioned around a cable splice.
Moisson 2:33–34.
Moisson’s Figure 1 depicts liner 1 having folding lines 10 for
increased flexibility to facilitate wrapping liner 1 around a splice in cables 2,
3, 4. Id. at 2:37–39. Slots 8 at the edges of liner 1 permit tapering of the
liner around the spliced cable. Id. at 2:43–45.
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The Examiner concludes it would have been obvious to modify
Fryberger, Jr.’s sleeve in view of Moisson to “provide better support while
maintaining flexibility and facilitation of bending,” “provide a means for
moisture barrier where the fingers extend radially to the wire harness,” and
“provide a harness protection resistant to delamination.” Ans. 3–4.
Appellant contends Fryberger, Jr. discloses a positioning device that
already includes fingers and the rejection does not indicate what becomes of
the positioning device upon modification of Fryberger, Jr.’s sleeve to add or
incorporate Moisson’s liner or slit configuration. Appeal Br. 14. Appellant
asserts there would have been no reason to eliminate the positioning device
and the Examiner has not sufficiently articulated why one of ordinary skill in
the art would have modified Fryberger, Jr. in view of Moisson. Id. at 14–16.
The Examiner responds Fryberger, Jr. “can be modified by Moisson
via multiple means,” such as by replacing Fryberger, Jr.’s positioning device
32 and modifying Fryberger, Jr.’s sleeve 12 to have slits like those disclosed
by Moisson, replacing the material of Fryberger, Jr.’s positioning device 32
with Moisson’s liner material, or replacing Fryberger, Jr.’s sleeve 12 and
positioning device 32 with Moisson’s liner. Ans. 18. The Examiner also
provides reasoning for modifying Flyberger, Jr.’s sleeve based on Moisson’s
disclosures concerning flexibility, moisture permeability, and delamination.
Id. at 19–23.
Appellant’s arguments are persuasive of harmful error. Each of the
ways the Examiner explains to modify Fryberger, Jr. in view of Moisson
involves eliminating Fryberger, Jr.’s positioning device 32 or modifying the
positioning device to use Moisson’s liner material. However, the
Examiner’s explanations do not sufficiently explain why, absent hindsight,
one of ordinary skill in the art would have made any of these modifications.
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Moisson’s disclosure that its fold lines 9, 10 allow the material of Moisson’s
liner 1 to be bent over a cable and its slots 8 permit tapering of the liner 1
around a spliced cable support the Examiner’s first articulated reason to
combine (to “provide better support while maintaining flexibility and
facilitation of bending”). Final Act. 10; Ans. 19–20. However, this
rationale does not explain why one of ordinary skill in the art would have
eliminated Fryberger, Jr.’s positioning device or modified the positioning
device to use Moisson’s liner material when Fryberger, Jr.’s positioning
device already includes fingers 38 that engage with Fryberger, Jr.’s harness
sleeve 28, as discussed above.
The Examiner’s second and third reasons to combine are also
insufficient––to provide a moisture barrier and a barrier resistant to
delamination. Final Act. 10; Ans. 20–22. Moisson’s disclosure teaches that
moisture and delamination result from known liners formed of aluminum
foil sandwiched between two layers of stiff cardboard, which permit the
ingress of moisture along the cardboard. Moisson 1:11–17. The Examiner
fails to explain how Moisson’s moisture or delamination issues would have
been a concern for Fryberger, Jr.’s device.
In view of the above and for the reasons provided in the Appeal Brief
and the Reply Brief, we reverse the Examiner’s rejection of claim 1 over
Fryberger, Jr. and Moisson. We also reverse the Examiner’s rejection of
claims 2, 3, 6, and 7, which depend from claim 1, for the same reasons.
Independent Claims 8 and 16
Similar to claim 1, independent claims 8 and 16 recite a plurality of
slits extending lengthwise through an end of an inner layer of insulative
material and an outer layer of reflective material of a tubular member to
form a plurality of fingers. Appeal Br. Ex. A, 2–4 (Claims Appendix). The
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Examiner’s rejection of claims 8 and 16 is based on the same reasoning for
combining the teachings of Fryberger, Jr. and Moisson discussed above in
connection with claim 1. Final Act. 16, 19; Ans. 18–22. Accordingly, we
do not sustain the Examiner’s rejection of independent claims 8 and 16. We
also reverse the Examiner’s rejection of claims 9, 10, 13–15, which depend
from claim 8, and claims 17 and 18, which depend from claim 16, for the
same reasons.
Rejection 2: Obviousness of Claims 19–21
The Examiner rejects claims 19–21 under 35 U.S.C. § 103 as being
unpatentable over Fryberger, Jr. in view of Moisson and further in view of
Chesnais.6 Ans. 14–15.
The Examiner’s reliance on additional prior art in the rejection of
claims 19–21 does not cure the deficiencies discussed above with regard to
claim 1. Therefore, we do not sustain the Examiner’s rejections of claims
19–21 under § 103.
CONCLUSION
For these reasons and those the Appellant provides, we reverse the
Examiner’s rejections of claims 1–3, 6–10, and 13–21 under 35 U.S.C.
§ 103.

6 US 2011/0005807 A1, published Jan. 13, 2011 (“Chesnais”).
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Application 15/224,348
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
1–3, 6–10,
13–18 103
Fryberger, Jr.,
Moisson
1–3, 6–10,
13–18
19–21 103 Fryberger, Jr., Moisson, Chesnais 19–21
Overall
Outcome
1–3, 6–10,
13–21

REVERSED