Ex Parte Bates et al

Patent Trial and Appeal Board

Oct 10, 2014

12186150 (P.T.A.B. Oct. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALLEN K. BATES, DANIEL J. WINARSKI, and
GEORGE G. ZAMORA
____________

Appeal 2012-007791
Application 12/186,150
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, JAMES P. CALVE, and
TIMOTHY J. GOODSON, Administrative Patent Judges

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants Allen K. Bates, Daniel J. Winarski, and George G. Zamora
appeal under 35 U.S.C. § 134(a) from the rejection of claims 1–4, 7–13, and
16–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to cable supports and methods of retaining a
cable. Claim 1 illustrates the subject matter on appeal and is reproduced
below:
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Application 12/186,150

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1. An apparatus to support a cable, the apparatus
comprising:
a channel shaped track, in which the cable is retained,
which is formed to define a plurality of pairs of holes on
opposing sides of the track at substantially equal intervals and
slots that each extend from respective tops of each of the holes
to an exterior surface of the track; and
a plurality of support members, each of which includes a
side and a second side that are respectively received in adjacent
pairs of holes via corresponding ones of the slots of the adjacent
pairs of holes such that the support member extends across the
track and between at least a portion of the adjacent pairs of the
holes, to thereby be respectively positioned to prevent the cable
from propagating toward the exterior surface of the track, and,
the support members are configured to interfere with
respective opposite sides of the adjacent pairs of the holes to
thereby inhibit displacement of the respective opposite sides
relative to one another at a bend in the track.

PRIOR ART
The Examiner relies on the following evidence:
Crown
Peterson
Wehler
US 3,023,692
US 5,516,986
US 6,708,480 B1
Mar. 6, 1962
May 14, 1996
Mar. 23, 2004

GROUNDS OF REJECTION
1. Claims 1–4, 10–13, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wehler in view of Crown. Ans. 58.
2. Claims 7–9, 16–18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wehler in view of Crown and Peterson.
Ans. 810.

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OPINION
Claims 1–4 and 10–13
Appellants argue claims 14 and 1013 as a group. App. Br. 8–10;
Reply Br. 1–6. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). The remaining claims stand or fall therewith.
The Examiner finds that Wehler teaches a channel shaped track as
recited in claim 1, but does not teach a plurality of support members.
Ans. 5. The Examiner finds that Crown teaches a plurality of support
members having the features recited in claim 1. Id. at 6. The Examiner
determines that it would have been obvious to use Crown’s support member
in Wehler’s track in order to securely bind the cables to the bottom surface
of the track. Id.
Appellants argue that the Examiner’s modification would defeat the
intended purpose of Wehler, because adding Crown’s elastic band would
inhibit bending and increase bending stresses in Wehler’s strand. App. Br.
8–9. The Examiner responds that at the bending area in Wehler’s Figure 5,
the segments 2 separate from each other. The distance from one hole to the
next across a single segment 2 does not change, “rather the opposite sides of
a single hole displace relative to each other upon bending of the track.” Ans.
11. Thus, the Examiner finds that “if an elastic band 40 as taught by Crown
straddled a single segment 2 across the track, the bending would not be
affected at all. . . .” Id. at 12. The Examiner also finds that the tightness of
the elastic band 40 would remain constant during bending, and therefore it
would not increase the bending stresses in Wehler’s track. Id. We discern
no error in these findings of the Examiner. Accordingly, Appellants
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argument that the combination would defeat Wehler’s purpose is not
persuasive.
For the first time in their Reply Brief, Appellants present several
additional arguments based on an annotated version of Wehler’s Figure 5.
See Reply Br. 1. Appellants do not explain why they did not present these
arguments in the Appeal Brief. See Ex Parte Borden, 93 U.S.P.Q.2d 1473
(BPAI 2010) (informative).1 Nevertheless, we have considered the new
arguments and find them unpersuasive. Appellants argue that “the addition
of Crown’s elastic band to Wehler is completely unnecessary” because the
cover wall portions 8 would already contain the lines within the channels 21
without the addition of the elastic band. Reply Br. 2. Appellants do not
support this assertion with any citation to Wehler’s disclosure, and it appears
from Wehler’s Figure 5 that some sizes of lines would fit through the
openings in the cover wall portions 8. Further, the Examiner’s stated reason
for modifying Wehler to include Crown’s elastic bands is “to securely bind
the cables to the bottom surface of the track in order to prevent the cables
from propagating toward the exterior surface of the track and possibly being
damaged.” Ans. 6 (emphasis added). We are not convinced that the cover

1 Addressing the version of the regulations that were effective at the time the
Notice of Appeal in this case was filed, Borden concluded that in the
absence of a showing of good cause, the Board was not required to consider
arguments that could have been presented in the Principal Brief on Appeal,
but were instead presented in the Reply Brief. 93 U.S.P.Q.2d at 1473.
Similarly, under regulations that became effective on January 23, 2012,
“[a]ny argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”
37 C.F.R. § 41.41(b)(2) (2012).
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wall portions 8 of Wehler’s Figure 5 would necessarily achieve that
objective without the Examiner’s proposed addition of elastic bands. As
such, Appellants do not persuade us that the elastic bands 40 would be
viewed as entirely unnecessary due to the presence of the cover wall
portions 8.
Appellants state that “Wehler is silent as to the size and shape of the
lines,” but Appellants argue that under various scenarios of line thicknesses,
the elastic band would not prevent floating of the line or would “bisect” the
lines. Reply Br. 3–5. These arguments ignore that Crown’s band 40 is
elastic. See Crown col. 2, l. 37. Appellants do not explain, and we are not
aware of any reason, why an elastic band could not stretch to accommodate
various sizes of lines. Appellants further argue that “Crown’s elastic band
could itself be large enough so that it does not fit tightly around the holes in
the side wall portions 3 of Wehler,” in which case the lines would be
allowed to float within the channel. Reply Br. 6. This argument is not
persuasive because it depends on Appellants’ unsupported speculation that
Crown’s elastic band may be too large. Thus, Appellants’ new arguments in
the Reply Brief also do not apprise us of any error in the Examiner’s
findings or determinations concerning claim 1.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–4 and 10–13.
Claims 7–9 and 16–18
Appellants’ argument against the rejection of these claims relies on
the arguments discussed above with reference to claim 1. App. Br. 11. As
discussed above, these arguments are not persuasive. Thus, we sustain the
Examiner’s rejection of claims 7–9 and 16–18.
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Claim 19
Appellants argue that Crown does not teach inserting a support
member in the manner recited in claim 19. App. Br. 10.2 Appellants assert
that in Crown, “the elastic band 40 is passed over the wires of the harness
and over two tabs 42, 44,” which is different from the insertion techniques
recited in claim 19. Id. (citing Crown, col. 2, ll. 3738). The Answer
further clarifies the Examiner’s findings and determinations underpinning
the rejection of claim 19. Ans. 13. The Examiner finds that the holes on
either side of tabs 42, 44 in Crown’s Figure 5 correspond to the claimed
holes. The Examiner further finds that Crown does not teach corresponding
slots, but determines that “it would be obvious to one of skill in the art that
since the support member of Crown is being combined with the track of
Wehler, the support member would have to enter the adjacent holes through
the corresponding slots, just as the band 40 of Crown enters the adjacent
holes through the entrance to the holes.” Id. Appellants do not persuade us
of any error in the Examiner’s findings or determinations. The Examiner
has established that the subject matter of claim 19 would have been obvious
in view of the teachings of Crown and Wehler. Thus, we sustain the
Examiner’s rejection of claim 19.
Claim 20
Appellants’ argument against the rejection of claim 20 relies on the
arguments discussed above with reference to claim 19. App. Br. 11. As

2 Appellants also argued against the rejection of claim 19 for the reasons
discussed above with respect to claim 1. App. Br. 8–10. These arguments
are not persuasive for the reasons discussed above.
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discussed above, these arguments are not persuasive. Thus, we sustain the
Examiner’s rejection of claim 20.

DECISION
We affirm the Examiner’s rejection of claims 1–4, 10–13, and 19
under 35 U.S.C. § 103(a) as being unpatentable over Wehler in view of
Crown.
We affirm the Examiner’s rejection of claims 7–9, 16–18, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Wehler in view of
Crown and Peterson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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