TYCO ELECTRONICS CORPORATION

Patent Trials and Appeals Board

Sep 25, 2020

2020002295 (P.T.A.B. Sep. 25, 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.
14/950,806 11/24/2015 Paul Craig Tally AD-00450 -US 7135
75750 7590 09/25/2020
The Whitaker LLC
4550 Linden Hill Road
Suite 140
Wilmington, DE 19808
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
09/25/2020 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 PAUL CRAIG TALLY, THOMAS D. RATZLAFF, and
NICHOLAS JOHN SWATKO
____________

Appeal 2020-002295
Application 14/950,806
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 11 and 20–24, which constitute all the claims before
us for review. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies “TE CONNECTIVITY SERVICES GMBH” as
the real party in interest. Appeal Br. 2.
Appeal 2020-002295
Application 14/950,806

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STATEMENT OF THE CASE
Appellant’s invention “relates generally to clamping devices (or
clamps) that are configured to hold one or more longitudinal elements, such
as wires, cables (e.g., electrical or optical), tubes, or pipes.” Spec. ¶ 1.
SOLE INDEPENDENT CLAIM
11. A clamping device comprising:
a first clamp section having a joint end and a coupling end;
a second clamp section having a joint end and a coupling
base, wherein the joint ends of the first and second clamp
sections are movably coupled to each other such that the first and
second clamp sections are movable between an open
configuration and a closed configuration, the coupling end of
the first clamp section and the coupling base of the second clamp
section engaging each other in the closed configuration to
provide a clamp frame for holding at least one longitudinal
element, wherein portions of the joint ends of the first and second
clamp sections form a pinching gap therebetween when the first
and second clamp sections are in the open configuration, the
portions of the joint ends moving away from each other as the
first and second clamp sections move toward the open
configuration, the portions of the joint ends moving toward each
other as the first and second clamp sections move toward the
closed configuration; and
an elastic inner layer that is coupled to and extends along
the first and second clamp sections, the inner layer being secured
to the first clamp section and the second clamp section in the
open configuration and in the closed configuration and while the
first and second clamp sections move to the closed configuration,
the inner layer configured to engage the at least one longitudinal
element, wherein the inner layer stretches over the pinching gap
and provides, when stretched over the pinching gap, a retracting
force that facilitates moving the first and second clamp sections
toward the closed configuration.

Appeal Br. 31–32 (Claims App.).
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Application 14/950,806

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REJECTIONS2
Claims 11 and 20–23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ungeheuer (EP 0703394 B1, pub. Mar. 25, 1995).
Claim 24 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Ungeheuer and Jorgensen (US 1,971,488, iss. Aug. 28, 1934).
OPINION
In rejecting claims 11 and 20–23 as unpatentable over Ungeheuer, the
Examiner relies solely on Ungeheuer’s Figure 1 reproduced below:

Figure 1 shows a pipe clip with annular clip body (2) that is “composed of
two semicircular brackets (6, 7) which are connected with each other in the

2 The Examiner withdrew the rejections of claims 1, 5, 6, 8, 9, 16, and 26–
31. Answer 7–8.
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Application 14/950,806

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manner of a hinge by means of a plug connection (8).” Ungeheuer 6:16–20.
Ungeheuer is a foreign reference, a translation of which the Examiner did
not provide with the rejection, so the only disclosure in English is of claims
1–7 provided in the EPO publication. See Ungeheuer 5:33–6:40. The
Examiner rejects claim 11’s limitation
portions of the joint ends of the first and second clamp sections
form a pinching gap therebetween when the first and second
clamp sections are in the open configuration, the portions of the
joint ends moving away from each other as the first and second
clamp sections move toward the open configuration, the
portions of the joint ends moving toward each other as the first
and second clamp sections move toward the closed
configuration
by annotating Figure 1 of Ungeheuer reproduced below:

Answer 9. We note that this annotation of Ungeheuer’s Figure 1 was not
provided to support the rejection in the Final Office Action. See Final Act.
5–13.
Appellant argues that Ungeheuer does not describe or suggest that
portions of joint ends form a pinching gap when the two clamp section are in
an open configuration and where portions of the joint ends move away from
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each other as the first and second clamp sections move toward the open
configuration, as required by claim 11. Appeal Br. 24.
The Examiner responds that
the location of the gap-less engaging surface [(see annotation of
Fig. 1, arrow pointing to inner layer 3)] that prevents pinching
of the at least one longitudinal element is located on the joint
ends of element 8 which explains where the portions of the joint
ends move away from each other as the first and second clamp
section[s] move toward an open configuration therefore
showing where the area of the pinching gap is located on the
Ungeheuer device and meeting the appellant’s claimed
invention.
Answer 9–10 (emphasis added).
Appellant argues that the Examiner’s annotation enlarges Figure 1 of
Ungeheuer to allegedly show a pinching gap, yet the English version of
claim 3 that characterizes the relevant portion “does not explicitly describe
the alleged gap or even mention that a gap exists.” Reply Br. 2 (citing
Ungeheuer 6:16–20). Rather, “claim 3 characterizes these two brackets as
connected in a hinge like manner by a ‘plug connection (8)’ . . . [such that
h]inge portion of bracket 7 is stacked over hinge portion of bracket 6.” Id. at
4. “As such, the hinge portions do not move toward and away from each
other, at least where the gap is allegedly found. Instead, they rotate like two
stacked parts of a hinge, probably about an axis defined by the ‘plug
connection.’” Id. According to Appellant, the Examiner “assumes that
these and other features are supported by a mere existence of the gap” (id. at
2), because “Figure 1 must clearly show that the alleged gap is formed
between two joint ends and that the two portions of the joint ends that define
the pinching gap are movable away from each other and toward each other
as the device opens and closes. Figure 1 of Ungeheuer simply does not show
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this amount of detail.” Id. at 3. Based on the evidence of record, we find
Appellant has the better position.
The Examiner’s position appears to be based on conjecture and
unfounded assumptions. A rejection based on § 103 clearly must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The
Examiner has the initial duty of supplying the factual basis for the rejection
and may not resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in its factual basis. Id. Although not
required to be provided by the Examiner here, the record may have benefited
from an English translation of Ungeheuer especially when the Examiner is
relying solely on a schematic drawing. Nevertheless, we acknowledge that
drawings in a utility patent can be cited against claims of a utility patent
application, and the drawings are evaluated on the basis of what they
reasonably disclose and suggest to a skilled artisan. See In re Aslanian, 590
F.2d 911, 913–14 (CCPA 1979). Indeed, “a claimed invention may be
anticipated or rendered obvious by a drawing in a reference, whether
the drawing disclosure be accidental or intentional.” In re Meng, 492 F.2d
843, 847 (CCPA 1974) (citation omitted). However, the caveat is “that
things patent drawings show clearly” are not to be disregarded. In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (emphasis added).
We are persuaded that Figure 1 of Ungeheuer does not fairly show all
the features the Examiner relies upon to reject independent claim 11.
Although claim 11 does not recite the mechanism by which the joint ends of
the clamp sections are coupled together, but the claim requires that “portions
of the joint ends of the first and second clamp sections form a pinching gap
therebetween.” Appeal Br. 32, Claims App. Even if we accept the
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Examiner’s position that the small opening in Figure 1 of Ungeheuer is a
gap, the structural features that form that gap as required by the claim are not
clearly shown. Claim 11 also requires that “the portions of the joint ends
moving away from each other as the first and second clamp sections move
toward the open configuration, the portions of the joint ends moving toward
each other as the first and second clamp sections move toward the closed
configuration” (see id.), and these functional features in relation to the joint
ends shed light on the configuration of their coupling mechanism.
As Appellant points out, Figure 1 and claim 3 of Ungeheuer suggest
that bracket 7 is stacked over hinge portion of bracket 6, and, as such, those
portions would not be able to move toward and away from each other in the
location the Examiner identifies as the pinching gap. Therefore,
Ungeheuer’s drawing cannot reasonably convey to a skilled artisan that “the
joint ends of element 8” (Answer 9) are capable of performing the function
of “moving away from each other as the first and second clamp sections
move toward the open configuration, and moving toward each other as the
first and second clamp sections move toward the closed configuration,”
given that Ungeheuer’s drawing shows the semicircular bracket 7 positioned
over the semicircular bracket 6 in a stacked configuration and does not
clearly show the location in which they are joined together. On this record,
the preponderance of the evidence weighs in favor of Appellant’s position
and against the Examiner’s conclusion of obviousness based on Figure 1 of
Ungeheuer.
For these reasons, we do not sustain the rejection of independent
claim 11 and dependent claims 20–23 as unpatentable over Ungeheuer. We
also do not sustain the rejection of dependent claim 24 because the Examiner
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does not rely on Jorgensen to remedy the deficiency in Ungeheuer as to
independent claim 11.
CONCLUSION
The Examiner’s decision to reject claims 11 and 20–24 is reversed.
Decision summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 20–23 103 Ungeheuer 11, 20–23
24 103 Ungeheuer,
Jorgensen
24
Overall
Outcome
11, 20–24

REVERSED