Ex Parte Barlow et al

Patent Trial and Appeal Board

May 11, 2016

12584809 (P.T.A.B. May. 11, 2016)

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
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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,
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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
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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
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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
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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").
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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
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