Ex Parte Barlow et alDownload PDFPatent Trial and Appeal BoardMay 11, 201612584809 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/584,809 09/11/2009 Van Barlow 42754 7590 05/11/2016 Nields, Lemack & Frame, LLC 176 E. Main Street Suite #5 Westborough, MA 01581 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 510P004CD 8621 EXAMINER BATSON, VICTORD ART UNIT PAPER NUMBER 3677 MAILDATE DELIVERY MODE 05/11/2016 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 VAN BARLOW, ONNO BOSWINKEL, ROBERT HA YNES, and RICHARD GOLD Appeal2014-004673 Application 12/584,809 Technology Center 3600 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Van Barlow et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1 and 4-10 under 35 U.S.C. § 103(a) as unpatentable over Noiles (US 4,275,813, iss. June 30, 1981) and Florez (US 4,655,222, iss. Apr. 7, 1987). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Appeal2014-004673 Application 12/584,809 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A cohered core of staples, comprising: a plurality of staples for fastening a high speed transmission multimedia cable or wire, or a non-metallic building wire, each staple being formed from a wire having a uniform cured coating thereon over its entire length, each of said plurality of staples being interconnected in side-by-side relation to form said cohered core of staples, whereby upon separation of any one of said plurality of staples from said cohered core, said coating on said separated one of said plurality of staples remains on said separated one of said plurality of staples; and wherein each of said staples comprises a bight portion and a pair of legs extending from said bight portion, each leg terminating in a free end, and wherein each of the respective legs and bight portion of each of said staples is dimensioned to surround said high speed transmission multimedia cable or wire, or a non-metallic building wire on three sides, when said high speed transmission multimedia cable or wire, or a non-metallic building wire, is fastened to said substrate. DISCUSSION Appellants group claims 1 and 4--10 in contesting the rejection of these claims as unpatentable over Noiles and Florez. Br. 5-17. We decide the appeal of this rejection on the basis of claim 1, and claims 4--10 stand or fall with claim 1. The Examiner found that Noiles discloses a cohered core of staples with a cured coating as called for in claim 1, except that "N oil es does not explicitly disclose that the coating is uniform or over the entire length of the staple." Final Act. 2-3. The Examiner noted, however, that "Noiles suggests that the 'coating 14 need not cover the entire staple'" and found 2 Appeal2014-004673 Application 12/584,809 that "[t]his suggestion ... implies that a coating which covers the entire length of each staple is well within the scope of [Noiles's] disclosed invention." Id. at 3 (quoting Noiles, col. 3, 11. 8-10). The Examiner found that "Florez teaches a cured coating which is uniformly coated over the entire length of each staple." Id. at 3 (citing Florez, col. 3, 11. 10-20). According to the Examiner, Florez's "disclosure of coating by immersion followed by curing at high temperature achieves a uniform, or smooth, cured coating over the entire staple." Id. The Examiner also found that "Florez further teaches that coating the staple on the legs and crown, which is the entire length as best understood, results in advantages such as preventing jamming of the stapler, improved penetration of the staples, and ease of removal." Id. (citing Florez, col. 2, 11. 15-31 ). Based on these findings, the Examiner determined that it would have been obvious to modify Noiles's cohered core of staples so that the coating is uniform and covers the entire length of the staples as taught by Florez "in order to achieve staples which adhere to one another but which are also entirely covered with coating to prevent jamming and improve penetration and removal of the staples." Id. at 3--4. Appellants argue that Noiles and Florez are non-analogous art. Br. 6- 14. In particular, Appellants assert that neither reference is in the same field of endeavor as Appellants' invention because both references relate to surgical staples used to close wounds and have nothing to do with fastening high-speed multimedia cable or wire, or non-metallic building wire, to a substrate. Id. at 7, 11. Further, Appellants argue that Noiles is not concerned with the problem confronting Appellants-"addressing the issue of staples penetrating, damaging or deforming the item ... being fastened, 3 Appeal2014-004673 Application 12/584,809 and to insure that the metal of the staple does not come in contact with the metal in the cables or the wires, resulting in an electrical short circuit." Id. at 9; see also id. at 12-13. The Federal Circuit has explained that "[t]he analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill." Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). Criteria for determining whether prior art is analogous may be summarized as "( 1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." Id. at 1359 (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Appellants' argument that N oiles and Florez are non-analogous art to Appellants' invention is not convincing because the references are indeed in the same field of endeavor as the claimed invention, namely, coated staples and staple-driving tools. See Noiles, col. 1, 11. 6-8 (stating that the invention "relates to a coherent array of surgical staples formed when the staples are bonded together by a biodegradable, absorbable plastic"); Florez, col. 1, 11. 4--8 (stating that "[t]he invention relates to the use of a low molecular weight fluorocarbon polymer as a coating for a metallic surgical staple [and] to the use of the coated staple in a stapler"); Spec. 1 (stating that the invention "is directed towards a coated staple and a staple gun or fastener driving or applying tool for driving such staples into surfaces"). Appellants argue that "[e]ven ifNoiles and Florez are analogous, there is no motivation to modify Noiles in view of Florez" as proposed by 4 Appeal2014-004673 Application 12/584,809 the Examiner. Br. 14 (emphasis omitted). In particular, Appellants assert that one having ordinary skill in the art would not have modified N oiles as proposed by the Examiner "without using inappropriate hindsight reasoning and simple [sic] picking and choosing the desired elements based on [Appellants'] own teachings." Id. at 15. Rejections on obviousness grounds must be suppmi.ed by "some articulated reasoning with some rational underpinning" to combine the known elements in the manner required in the claim at issue. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner articulates a reason for the proposed modification (i.e., "to prevent jamming and improve penetration and removal of the staples") (Final Act. 3--4), and Appellants do not point out any specific flaws in the Examiner's reasoning. Moreover, Appellants do not identify any knowledge relied upon by the Examiner that \Vas gleaned only from Appellants' disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellants' assertion of hindsight. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Appellants argue that N oiles does not disclose staples used "for fastening a high speed transmission multimedia cable or wire, or a non- metallic building wire." Br. 16. In particular, Appellants assert that "[t]he surgical staples ofNoiles are used for ligating blood vessels, joining tissues within the body, or joining disunited skin or fascia," rather than for fastening an object to a substrate. Id. This argument is not convincing because it is directed to the intended use (i.e., "for fastening a high speed transmission multimedia cable or wire, or a non-metallic building wire") of the claimed cohered core of coated staples. See In re Schreiber, 128 F.3d 1473, 1477 5 Appeal2014-004673 Application 12/584,809 (Fed. Cir. 1997) ("It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable."). The Examiner found that Noiles's staples are capable of being used to fasten a high speed transmission multimedia cable or wire, or a non- metallic building wire (Final Act. 2), and Appellants do not contest this finding. See Br. 16 (arguing that Noiles does not expressly disclose or suggest such use, but presenting neither factual evidence nor persuasive technical reasoning to rebut the Examiner's finding ofNoiles's capability for such fastening). Appellants also argue that neither Noiles nor Florez discloses that "the dimensions of the legs and bight portions of the staples should be such that the staple surrounds the cable or wire on three sides when fastened to a substrate" as claimed. Id. We are not persuaded by these arguments because the claims and Specification do not structurally define any particular dimensions for the legs and bight portions of the staples, and, thus, the claim recitation cited above does not present meaningful structural limits on the claimed cohered core of staples. Appellants argue that Florez "nowhere discloses or suggests that the staples in the stack are in any way cohered to one another." Id. This argument is not persuasive because Appellants essentially address Florez in isolation, rather than considering the combined teachings of the cited references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures). The Examiner did not rely on Florez for teaching cohered staples~ but, rather, relied on Nofles for teaching this feature. See Final Act 6 Appeal2014-004673 Application 12/584,809 2 (citing Noiles, Fig. l); see also Noiles, col. l, 11. 6----8; col. 2, 11. 13----17; coL 3, lL 3----6. The Examiner relied on Florez only for teaching a uniform coating of the entire length of a staple. Final Act. 3 (citing Florez, col. 3, 11. 10-20). Appellants argue that the Examiner's finding that Florez discloses a uniform coating is based on "mere conjecture" and that "[t]here is no disclosure that the coating is uniform." 1 Br. 16-17. This argument is not convincing because Florez teaches that a "coating can be applied by immersing the staple in the dispersion, by spraying, or by any other convenient method," followed by air drying and heating to "smooth[] out the coating." Florez, col. 3, 11. 10-16. The Examiner found that "coating by immersion followed by curing at high temperature achieves a uniform, or smooth, cured coating over the entire staple." Final Act. 3. This finding appears reasonable on its face, and, moreover, is consistent with Appellants' Specification, which describes that the coating "can also be applied by spraying, dipping or other processes well known to those versed in the art of wire coating." Spec. 9; see also id. at 8 (describing the coating as preferably uniform). Thus, the Examiner's finding that Florez discloses a unifonn coating is supported by a preponderance of the evidence. In view of the foregoing, Appellants fail to apprise us of error in the Examiner's rejection of claim 1. Accordingly, we sustain the rejection of claims 1 and 4--10 as unpatentable over Noiles and Florez. 1 We note that Appellants also appear to concede that Florez discloses a uniform coating. See Br. 17 (referring to "the uniform cured coating of Florez"). 7 Appeal2014-004673 Application 12/584,809 DECISION The Examiner's decision rejecting claims 1 and 4--10 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation