Timothy D. Sellis et al.

Patent Trials and Appeals Board

Apr 24, 2020

14847706 - (D) (P.T.A.B. Apr. 24, 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.
14/847,706 09/08/2015 Timothy D. Sellis SY-40018-2/710240-7683 1941
59582 7590 04/24/2020
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
WUJCIAK, ALFRED J
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
04/24/2020 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 TIMOTHY D. SELLIS, DAVID A. HARRIS,
KENNETH C. UPTON, DANNY E. WINTERS,
and SAMUEL B. FRYBERGER JR.
____________

Appeal 2019-002304
Application 14/847,706
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

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Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–13 and 23–27. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellant’s claimed invention relates to “a device for positioning and
maintaining a protective sleeve or other elongated item at a predetermined
position covering a sensor or other object” (Spec. ¶ 2).
Claim 1, reproduced below with indentation and emphasis added, is
the sole independent claim, and representative of the subject matter on
appeal:
1. An assembly for protecting a sensor, comprising:
a tube extending longitudinally along an axis between
opposite open ends; and
an end cap disposed over one of said open ends, said end
cap including at least one finger that extends radially inward
generally toward said axis;
said at least one finger being resiliently flexible in
opposite axial directions.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed May 30, 2018), Reply Brief (“Reply Br.,” filed
October 22, 2018), and Supplemental Reply Brief (“Supp. Reply Br.,” filed
March 20, 2019), and the Examiner’s Answer (“Ans.,” mailed August 21,
2018), Supplemental Answer (“Supp. Ans.,” mailed January 24, 2019), and
Final Office Action (“Final Act.,” mailed February 12, 2018). Appellant
identifies Federal Mogul World Wide Inc. as the real party in interest
(Appeal Br. 1).
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REJECTIONS2
Claims 1–3, 5, and 11–13 are rejected under 35 U.S.C. § 102(b) as
anticipated by Marshall (US 3,429,596, issued Feb. 25, 1969).
Claims 1, 2, 5, 8, 11–13, and 23–25 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Feith (US 2005/0285400 A1, published Dec. 29,
2005).
Claims 1–3, 5, 11–13, and 25–27 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Matthysse (US 3,019,284, issued Jan. 30, 1962).
Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Marshall and Eaton (US 4,751,350, issued June 14, 1988).3
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Marshall and Weakly (US 6,267,871 B1, issued July 31, 2001).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Marshall and Feith.
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Marshall, Feith, and Chickvary (US 3,065,292, issued Nov. 20, 1962).
Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Marshall and Matthysse.
Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Feith and Matthysse.

2 Although the Supplemental Answer only lists the rejections based on
Matthysse, neither the Answer nor the Supplemental Answer indicates that
any rejections have been withdrawn.
3 The Final Office Action rejected claim 4 alone as obvious over Marshall
and Eaton. See Final Act. 4. In the Answer, claim 3 is also rejected as
obvious over Marshall and Eaton. See Ans. 5.
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Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Matthysse and Eaton.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Matthysse and Weakly.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Matthysse and Chickvary.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Matthysse and Feith.
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Matthysse, Feith, and Chickvary.
Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Matthysse and Ziebart et al. (US 6,958,449 B1, issued
Oct. 25, 2005).
ANALYSIS
Anticipation
Rejection of Claims 1–3, 5, and 11–13 as Anticipated by Marshall
The law is well settled that to establish a prima facie case of
anticipation, each and every element of the claimed invention, arranged as
required by the claim, must be found in a single prior art reference, either
expressly or under principles of inherency. See, e.g., Diversitech Corp. v.
Century Steps, Inc., 850 F.2d 675, 677–78 (Fed. Cir. 1988); Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).
We are persuaded here by Appellant’s argument that the Examiner
erred in rejecting independent claim 1 as anticipated by Marshall at least
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because Marshall does not disclose at least one finger that is “resiliently
flexible in opposite axial directions,” as recited in claim 1 (Appeal Br. 6–7).
In rejecting independent claim 1 as anticipated by Marshall, the
Examiner finds that Marshall teaches “a tube (1) extending longitudinally
along an axis between opposite open ends and an end cap (8) disposed over
one of the open ends”; that the end cap includes “at least one finger (32) that
extends radially inward generally toward the axis”; and that the “at least one
finger” is “resiliently flexible in an opposite axial direction” (Final Act. 2;
see also Ans. 11 (“[C]olumn 3, lines 9–19 and column 4, lines 35–51 from
Marshall’s specification state[ ] the fingers being plastic which is known as
being flexible and are movable, therefore they have the ability of moving in
any axial directions.”4)).
We have reviewed the cited portions of Marshall on which the
Examiner relies, and we find no disclosure there that Marshall’s
segments 32, which the Examiner equates to the claimed “at least finger,”
are “resiliently flexible in opposite axial directions,” as called for in claim 1.
Marshall is directed to “a quick-connect, positive-lock coupling for
pipes and tubes formed of any conventional material” (Marshall, col. 1:30–
32), and discloses, with reference to Figure 1, that the coupling comprises a
cylindrical body member 1, an end cap 8 housing a flange 11, a thrust-seal
ring 14, and a locking ring 16 (id. at col. 2:37–72). Locking ring 16 is
comprised of an outer annular peripheral area 28 having an inner peripheral
edge that merges into a frusto-conical central area 32 bounded by a

4 More particularly, Marshall discloses that “coupling body 1, thrust-seal
ring 14 and cap 8 may be cast of brass or other metal, or, moulded of a
suitable high impact plastic” (Marshall, col. 4:47–49).
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relatively sharp inner peripheral edge 34 (id. at col. 3:5–10); a plurality of
V-shaped slits extend inwardly from edge 34 and “divide the frusto-conical
portion of the ring into . . . a plurality of individually movable segments,”
which are preferably evenly distributed around area 32 “to assure equal
action of each segment when the coupling is used” (id. at col. 3:11–19).
Describing the action of segments 32 when the coupling is tightened,
Marshall discloses that
due to the deformable nature and comparative thinness of the
frusto-conical area 32 of locking ring 16 and the force couple
being exerted thereon by flange 11 of cap 8 and their engagement
with the beveled edge 24 of the thrust-spacer ring 14, the
individual segments begin to bend and straighten toward the
plane of the annular peripheral area 28 of the ring to thus reduce
the effective diameter of edge 34 with the result that these edges
bite into and grip the outer surface of the pipe or tube T
(id. at col. 4:9–18) (emphasis added). Marshall also discloses that when a
tube is removed from the coupling, “because of the characteristics of the
material from which it is made[,] the toggle or locking ring 14 returns to its
original shape as the segments 32 are moved away from edge 24 of ring 14”
(id. at col. 4:35–44). But, we find nothing in the cited portions of Marshall
that discloses that the individually movable segments of Marshall’s frusto-
conical central area 32 are “resiliently flexible in opposite axial directions.”
Instead, the cited disclosure indicates that the bending of the segments is in a
radial direction, rather than an axial direction, as claimed.
To the extent the Examiner’s rejection is based on the view that
Marshall inherently discloses the claim limitation (i.e., because “being
plastic which is known as being flexible and are movable, . . . [Marshall’s
segments] have the ability of moving in any axial directions (Ans. 11)),
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more than speculation is required. In particular, the Examiner must provide
evidence and/or technical reasoning, which is not present here, that make
“clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill.” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264,
1268 (Fed. Cir. 1991). “Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” Id. at 1269 (quoting In
re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Marshall.
For the same reasons, we also do not sustain the Examiner’s rejection of
dependent claims 2, 3, 5, and 11–13 as anticipated by Marshall.5
Rejection of Claims 1, 2, 5, 8, 11–13, and 23–25 as Anticipated by Feith
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 as anticipated by Feith at least because Feith
does not disclose “at least one finger being resiliently flexible in opposite
axial directions,” as recited in claim 1 (Appeal Br. 7–8).
In rejecting independent claim 1 as anticipated by Feith, the Examiner
finds that Feith teaches “a tube (12) extending longitudinally along an axis
between opposite open ends and an end cap (32) disposed over one of the

5 In setting forth the rejection of claims 1–3, 5, and 11–13 as anticipated by
Marshall, the Examiner also includes a discussion of Eaton (Final Act. 2–3).
The Examiner appears to suggest that dependent claims 11–13 are
unpatentable as obvious over the combination of Marshall and Eaton. But
there is no indication of record that any such rejection under 35 U.S.C.
§ 103(a) has been entered.
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open ends”; that the end cap includes “at least one finger (34) that extends
radially inward generally toward the axis”; and that the “at least one finger”
is “resiliently flexible in an opposite axial direction” (Final Act. 3).
Citing paragraph 21 of Feith, Appellant notes that “fingers 34 are
expressly taught as being radially moveable lock fingers, with axially
extending slots 36 intervening between the fingers, such that the fingers can
flex in a radial direction” (Appeal Br. 7). And Appellant argues that the
rejection should be reversed “given the clear, unambiguous teaching of Feith
that the fingers flex radially and not axially” (id. at 8).
Responding to Appellant’s argument, the Examiner notes in the
Answer that Feith discloses, in paragraph 21, that its radially movable lock
fingers “can flex in a radial direction to permit slide-fit reception of tubing
within a range of different diametric sizes” (Ans. 11). The Examiner finds,
“[t]herefore the fingers in Feith’s inventions are ‘resiliently flexible in
opposite axial directions’” (id.). Yet, the difficulty with the Examiner’s
finding, as Appellant observes (Reply Br. 6), is that it ignores the distinction
between fingers that are flexible in axial directions, as required by claim 1,
and fingers that flex in a radial direction, as taught by Feith.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 102(e) as anticipated by Feith.
For the same reasons, we also do not sustain the Examiner’s rejection of
dependent claims 2, 5, 8, 11–13, and 23–25 as anticipated by Feith.
Rejection of Claims 1–3, 5, 11–13, and 25–27 as Anticipated by Matthysse
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 as anticipated by Matthysse at least because
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Matthysse does not disclose “at least one finger being resiliently flexible in
opposite axial directions,” as recited in claim 1 (Reply Br. 1–2).
In rejecting independent claim 1 as anticipated by Matthysse, the
Examiner finds that Matthysse discloses “a tube (405) extending
longitudinally along an axis between opposite open ends and an end cap (1)
disposed over one of the open ends”; that the end cap includes “at least one
finger (11–16) that extends radially inward generally toward the axis”; and
that the “at least one finger” is “resiliently flexible in an opposite axial
direction” (Ans. 8; Supp. Ans. 3–4).
Matthysse is directed to a gripping cup for retaining a conductor in a
connector, and discloses, with reference to the figures, that gripping cup 1
includes a series of slits 2–7 radiating from a center hole 8; the center hole is
of irregular shape having radii of various lengths, which produce a series of
tabs 11–16 of different lengths (Matthysse, col. 1:58–64). Thus, when a
wire is disposed through the gripping cup, shown in Figure 1, tabs 12, 14,
and 16 grasp wires of relatively small diameters, while tabs 11, 12, and 13
grasp and retain wires of relatively large diameters (id. at 1:67–72).
Matthysse teaches that “[t]he gripping cup may be formed by any convenient
method, such as stamping, out of any material having some spring-like
characteristics, such as, sheet metal” (id. at col. 2:54–56).
Matthysse discloses, with reference to Figure 4, that the insulated
connector consists of a malleable metal barrel 401; external and coaxial with
the barrel is a dielectric sleeve 404 which extends beyond the barrel at 405
(id. at col. 2:7–12). A bead 407 is molded on the sleeve exterior to interlock
with a groove 408, which is molded into the interior of an end cap 409
having an orifice 410 through which a wire may be disposed (id.
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at col. 2:15–19). Matthysse discloses that “gripping cup 1 is inserted in the
connector between the sleeve and the end cap . . . so that lip 21 is captured
between the end of sleeve 404 and end cap 409 and is held in place” (id.
at col. 2:19–22). Thus, “[w]hen a wire 410 is disposed through the end cap
and gripping cup, the tabs are deformed and dig into the insulation (411),
preventing subsequent pulling out of the wire,” i.e., “[a]ny tendency of the
wire to pull out causes the tabs to dig in deeper” (id. at col. 2:23–27).
The Examiner takes the position, as described above, that Matthysse
meets the claim language. Yet, we do not see how, and the Examiner does
not adequately explain how, Matthysse’s tabs are resiliently flexible in
opposite axial directions. As Appellant observes (Reply Br. 2), Matthysse
teaches that once tabs 11–16 are deformed in a first axial direction, the tabs
then resist any tendency to be deformed in the opposite axial direction, and
thereby prevent subsequent pulling out of the wire.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by
Matthysse. For the same reasons, we also do not sustain the Examiner’s
rejection of dependent claims 2, 3, 5, 11–13, and 25–27 as anticipated by
Matthysse.6

6 In much the same manner as described above with respect to Marshall, the
Examiner includes a discussion of Eaton in setting forth the rejection of
claims 1–3, 5, 11–13, and 25–27 as anticipated by Matthysse (see Ans. 8;
Supp. Ans. 4). The Examiner appears to suggest that dependent claims 11–
13 are unpatentable as obvious over the combination of Matthysse and
Easton. But there is no indication of record that any such rejection under
35 U.S.C. § 103(a) has been entered.
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Obviousness
Claims 4, 6–10, 23, 24, 26, and 27 depend, directly or indirectly, from
claim 1. The rejections of these dependent claims under 35 U.S.C. § 103(a)
do not cure the deficiencies in the corresponding anticipation rejections of
claim 1. Therefore, we do not sustain the Examiner’s rejections of claims 4,
6–10, 23, 24, 26, and 27 under 35 U.S.C. § 103(a) for the same reasons set
forth above with respect to independent claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 11–
13
102(b) Marshall 1–3, 5, 11–
13
1, 2, 5, 8,
11–13, 23–
25
102(e) Feith 1, 2, 5, 8,
11–13, 23–
25
1–3, 5, 11–
13, 25–27
102(b) Matthysse 1–3, 5, 11–
13, 25–27
3, 4 103(a) Marshall, Eaton 3, 4
6, 7 103(a) Marshall, Weakly 6, 7
9 103(a) Marshall, Feith 9
10 103(a) Marshall, Feith,
Chickvary
10
26, 27 103(a) Marshall,
Matthysse
26, 27
26, 27 103(a) Feith, Matthysse 26, 27
4 103(a) Matthysse, Eaton 4
6, 7 103(a) Matthysse, Weakly 6, 7
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8 103(a) Matthysse,
Chickvary
8
9 103(a) Matthysse, Feith 9
10 103(a) Matthysse, Feith,
Chickvary
10
23, 24 103(a) Matthysse, Ziebart 23, 24
Overall
Outcome
1–13, 23–
27
REVERSED