Volvo Group Canada Inc.

Patent Trials and Appeals Board

Dec 2, 2021

2021001533 (P.T.A.B. Dec. 2, 2021)

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.
16/313,419 12/26/2018 Yves Laine 3100-023-US 6618
27820 7590 12/02/2021
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC 27511
EXAMINER
PAGHADAL, PARESH H
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YVES LAINE, FRANÇOIS MATTE, and GUILLAUME HUPPE1
____________

Appeal 2021-001533
Application 16/313,419
Technology Center 2800
____________

Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–13 and 16. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
The subject matter on appeal relates to devices “for carrying and
sealing cables penetrating a wall of an electrical junction box for a vehicle.”
E.g., Spec. 1; Claim 1. Claim 1 is reproduced below from page 15 (Claims
Appendix) of the Appeal Brief:

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Volvo Group Canada Inc.
Appeal Br. 1.
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Application 16/313,419

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1. A cable sealing device for an electrical junction box, comprising:
a centering frame mountable at a hole in a wall of the electrical
junction box, the centering frame including a first rim and a
flange defining a first seat, an edge of the flange defining a
central opening;
a first clamping plate having a plurality of cable passage holes,
the first clamping plate being disposed on a first side of the
centering frame within the first seat;
a second clamping plate having a plurality of cable passage holes
corresponding to the plurality of cable passages holes of the first
clamping plate, the second clamping plate being disposed on a
second side of the centering frame opposite the first side wherein
the plurality of cable passage holes of the first clamping plate are
aligned with the plurality of cable passage holes of the second
clamping plate to define a plurality of cable passages extending
through the central opening of the centering frame; and
a sealing membrane disposed between the first clamping plate
and the flange of the centering frame, wherein portions of the
sealing membrane are exposed at the plurality of cable passages
and wherein at least one exposed membrane portion has a
perforation to accept a cable.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1–5, 7–9, 12, and 13 over Ance (US 3,569,608, issued
Mar. 9, 1971) and Tramzal (FR 2699752, dated June 24, 1994).
2. Claim 6 over Ance, Tramzal, and Krasemann (DE 202014104367,
dated Oct. 21, 2014).
3. Claims 10 and 11 over Ance, Tramzal, and Burke (US
2013/0014974 A1, published Jan. 17, 2013).
4. Claim 16 over Cole (US 918,969, issued Apr. 20, 1909) and Ance.
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Application 16/313,419

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ANALYSIS
Claim 1 requires, inter alia, that “portions of the sealing membrane
are exposed at the plurality of cable passages” and that “at least one exposed
membrane portion has a perforation to accept a cable.” An embodiment of
those claim requirements is depicted in Figure 2, reproduced below.

Figure 2, above, depicts sealing membrane 50 with perforations 52. Portions
of sealing membrane 52 are “exposed” in that cable passage holes 32 and 42
in clamping plates 30 and 40 are larger than perforations 52 in sealing
membrane 50, resulting in portions of the surfaces of sealing membrane 50
being “exposed at the plurality of cable passages,” as recited by claim 1. See
Spec. 4, Fig. 2. Perforations 52 are located in the “at least one exposed
membrane portion,” as required by claim 1. See id.
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Application 16/313,419

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In determining that the prior art teaches or suggests a sealing
membrane within the scope of claim 1, the Examiner relies principally on
Figure 7 of Ance. Figures 5 and 7 of Ance are reproduced below.

Figure 5 depicts “discs 15 and 16, containing complementary holes of
varying sizes 18 and 19.” Ance at 7:30–32. Figure 7 depicts Ance’s sealing
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Application 16/313,419

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composite, including discs 15 and 16, with cables 5 extending through holes
18. Id. at 9:3–10, 35–36. Figure 7 also depicts “packing material” 21(a).
Id. at 8:37.
In the Final Action, the Examiner finds that either disc 15 or packing
material 21(a) corresponds to the claimed “sealing membrane.” Final Act. 4.
The Examiner finds that portions of disc 15 and/or packing material 21(a)
are exposed at “the paths of passages of cables 5,” and that the exposed
membrane portion has a perforation to accept a cable. Id.
In the Appeal Brief, the Appellant argues that the holes in Ance’s disc
15 and packing material 21(a) are the same size as the holes in what the
Examiner identifies as Ance’s clamping plates and, therefore, “[n]either the
‘disc 15’ nor the ‘packing material 21a’ has portions that are exposed at the
plurality of cable passages.” Appeal Br. 8.
In the Answer, the Examiner does not dispute that the holes in Ance’s
disc 15 or packing material 21(a) are the same size as the holes in Ance’s
clamping plates, or that surface portions of Ance’s disc 15 or packing
material 21(a) are therefore not exposed at the cable passages. See Ans. 5–6.
Instead, the Examiner finds that the “peripheral walls of the holes are
exposed” (emphasis added), which, according to the Examiner, falls within
the scope of the term “portions of the sealing membrane are exposed at the
plurality of cable passages.” Id. Thus, in rejecting claim 1, we understand
the Examiner to be relying on the side walls of the holes in Ance’s disc 15 or
packing material 21(a) as corresponding to “portions of the sealing
membrane are exposed at the plurality of cable passages.” See id.
The Examiner’s rationale is unpersuasive because claim 1 also
requires that “at least one exposed membrane portion has a perforation to
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Application 16/313,419

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accept a cable.” The side walls of Ance’s holes do not have perforations to
accept a cable. See, e.g., Ance Fig. 5. Thus, even accepting that the side
walls of Ance’s holes constitute exposed portions of the sealing membrane,
the Examiner has not persuasively shown that Ance’s structure falls within
the scope of claim 1. Accordingly, we reverse the Examiner’s rejection of
claim 1.
Because all claims on appeal include the sealing membrane
requirements discussed above, and the Examiner’s analysis of those claims
does not remedy the error identified above, we likewise reverse the
Examiner’s rejections of claims 2–13 and 16.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § References Affirmed Reversed
1–5, 7–9, 12, 13 103 Ance, Tramzal 1–5, 7–9, 12, 13
6 103 Ance, Tramzal, Krasemann 6
10, 11 103 Ance, Tramzal, Burke 10, 11
16 103 Cole, Ance 16
Overall
Outcome 1–13, 16

REVERSED