Ex Parte Carlson et al

Patent Trial and Appeal Board

Nov 14, 2017

14456594 (P.T.A.B. Nov. 14, 2017)

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.
14/456,594 08/11/2014 John R. Carlson SW-07-0591.USI2/51.6USI2 1066
113720 7590 11/14/2017
Hartman & Citrin LLC
2401 Macy Drive
Roswell, GA 30076
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
11/14/2017 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 DAVID A. COOPER, DAVID MERCIER,
PHILIP SASSE, ALLAN W. DANIEL, TIMOTHY M. ANDREA,
JUAN ALBERTO GALINDO GONZALEZ, and
TIMMOTHY R. BARDIN1
Appeal 2017-001866
Application 14/456,594
Technology Center 3600
Before ERIC S. FRAHM, MICHAEL J. STRAUSS, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
1 This paper is captioned by inventor name according to our pre-AIA
convention. The Applicant/Appellant and real party in interest is Southwire
Company, LLC. (See App. Br. 3.)
Appeal 2017-001866
Application 14/456,594
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1, 3, 4, 6, 7, 21—23, and 29-37. Claims 8 and 14—16 are
allowed and claims 24—28 have been withdrawn. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.
THE INVENTION
The application is directed to “[pjulling eyes . . . with integrated
wiring systems suitable for installing conductors or cables.” (Abstract.)
Claims 1 and 29, reproduced below, exemplify the subject matter on appeal:
1. A pulling eye comprising:
an end; and
a body portion defining an interior cavity sized to engage a
conductor and to be deformably crimped onto the conductor, the
body portion comprising a first indicia at a first position on the
body portion and further comprising a second indicia at a second
position on the body portion, the first indicia and the second in­
dicia indicating a sequential order for applying a plurality of
crimps to the body portion, wherein the first indicia indicates that
a first crimp of the plurality of crimps be applied to the first po­
sition before a second crimp of the plurality of crimps is applied
to the second position, and wherein the second indicia indicates
that the second crimp of the plurality of crimps be applied to the
second position after the first crimp of the plurality of crimps is
applied to the first position.
29. A pulling eye comprising:
a body portion defining an interior cavity sized to engage a
conductor and to be deformably crimped onto the conductor, the
body portion comprising a first indicia indicating a position of
applying a first crimp to the body portion; and
a head portion joined to the body portion.
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Application 14/456,594
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schork US 1,830,411 Nov. 3, 1931
DeGrado US 4,002,817 Jan. 11, 1977
Smith US 4,337,923 July 6, 1982
Holliday US 7,044,771 B2 May 16, 2006
THE REJECTIONS2
1. Claims 29, 32, and 36 stand rejected under 35 U.S.C.
§§ 102(a)(1) and (a)(2) as anticipated by DeGrado. (See Final Act. 8—9.)
2. Claims 1, 3—4, 6—7, 21—23, 31, and 33 stand rejected under 35
U.S.C. § 103(a) as unpatentable over DeGrado and Schork. (See Final Act.
9-15.)
3. Claims 30 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over DeGrado. (See Final Act. 15—16.)
4. Claim 34 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over DeGrado and Holliday. (See Final Act. 16—17.)
5. Claim 37 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over DeGrado, Schork, and Smith. (See Final Act. 17—18.)
2 A rejection of claim 30 for failing to comply with the written description
requirement has been withdrawn. (See Ans. 13.) Pending objections to the
drawings and specification (see Final Act. 5—6) are not part of this appeal.
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ANALYSIS
Anticipation of Claims 29, 32, and 36
Appellant argues the anticipation rejection is flawed because
“DeGrado fails to teach, suggest, or describe a pulling eye comprising a
body portion comprising a first indicia indicating a position of applying a
first crimp to the body portion.” (App. Br. 12.) We do not agree.
DeGrado’s Figure 1 shows “light knurls” used to “facilitate the
equispacing of the crimps” and Figure 10 shows the crimps after having
been placed between the knurls. (See DeGrado 2:50-55 & 3:57—60.) We
agree with the Examiner that each light knurl is “a first indicia” that
indicates “a position of applying a first crimp to the body portion,” as
claimed. For example, the rightmost knurl 16 in Figure 1 indicates that the
crimp is to be applied immediately to its left. Anticipation is not avoided by
the fact that a second knurl also helps to indicate the position of the crimp,
particularly given than the claim is drafted using the open-ended
“comprising” transition.
The Section 102 rejection of claims 29, 32, and 36 is sustained.
Obviousness of Claim 1
The Examiner finds
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the light knurls of
DeGrado by substituting the information conveyed—namely,
that of a sequence—as taught by Schork in order to convey
desired information to the user, such as the specific length of the
crimped sections because doing so would indicate to a later user
the precise size of the crimped product.
(Final Act. 10.) Regarding the claim limitations concerning the “indicia”
providing a sequence, the Examiner further observes that “patentable
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Application 14/456,594
novelty cannot be principally predicated on mere printed matter and
arrangements thereof, but must reside basically in physical structure. {Id. at
11, citing In re Montgomery, 102 USPQ 248 (CCPA 1954).)
Appellant, citing MPEP § 2144(111), asserts that “there can only be
reliance on In re Montgomery if the facts of the case are sufficiently similar
to the case at hand” and “the Examiner provides no comparison between the
facts of [that case] and the facts of the current application to explain how the
holding of In re Montgomery applies to the pending claims of the current
application.” (App. Br. 16.) This argument is misplaced because the cited
section of the MPEP concerns the use of legal precedent to provide a
rationale (e.g., a motivation) in an obviousness rejection, not citation to
authority concerning the substantive law of obviousness.
Appellant additionally argues that “the subject invention is not merely
the inclusion of printed matter” because “the first and second indicia of
claim 1 provide a specific purpose of indicating a sequential order of
applying crimps to the body portion of the pulling eye.” (App. Br. 17.) We
are not persuaded. The claimed markings do not change the nature of the
claimed pulling eye; instead, they amount to instructions for use of the
device, indicating that the first crimp should be applied at first place and a
second crimp should be applied at a second place. Recitations concerning
instructional information such as this, which does not have a structural or
functional relationship with the physical substrate, are not entitled to
patentable weight. See, e.g., AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042,
1048 (Fed. Cir. 2010). We note that the contents of the indicia, relating to a
desired sequencing of the crimps, could be conveyed separately, such in
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Application 14/456,594
written instructions, without any material change to the pulling eye itself or
how it is used.
We accordingly sustain the Section 103 rejection of claim 1, as well
as the same rejection of claims 6 and 7, for which no other arguments are
offered.
Obviousness of Claim 3
Claim 1 recites “a body portion ... to be deformably crimped onto [a]
conductor” and claim 3 adds that “deformably crimped onto the conductor
comprises crimped onto the conductor by a plurality of successive crimps
each . . . applied at a separate location on the body portion adjacent to a
previous crimp” where “at least two of the . . . crimps . . . has a differing
rotational alignment relative to one another.”
Appellant argues that “none of [DeGrado’s] bands has a differing
rotational alignment relative to another of the bands.” (App. Br. 18.) We
are not persuaded that fact distinguishes the claim over the reference because
the claims do not positively recite the crimps as part of the claimed structure.
Instead, claim 1 is to an apparatus that is “to be crimped” and claim 3
provides details regarding the crimping that might take place in the future.
The successive/adjacent/rotational crimp limitations of claim 3 thus do not
actually limit the structure of the apparatus of claim l.3
Because we conclude that the subject matter of claim 3 is not recited
in a manner that distinguishes the claim over the prior art, we sustain the
Section 103 rejection.
3 In the event of further prosecution, the Examiner may wish consider
whether claim 3 complies with 35 U.S.C. § 112(d) (“a claim in dependent
form shall. . . specify a further limitation of the subject matter claimed”).
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Obviousness of Claim 4
Claim 4 adds to claim 1 that the first indicia has a first rotational
alignment, the second indicia has a second rotational alignment, and the
rotational alignments are different.
Appellant argues, with respect to claim 4, that “[a]s illustrated in
Figure 1 of DeGrado, both the light knurls 16 and the non-knurled portions
in between the light knurls extend circumferentially around the shell
member 10.” (App. Br. 18.) The Examiner responds that “Appellant has not
defined “differing rotational alignment”—or “rotational orientations”, as in
the specification—in a way that cannot be reasonably broadly interpreted to
mean spaced along a pulling eye” and that “[s]uch a “rotational alignment,
absent a more strict re-definition, can be defined by the spacing of indicia
along a longitudinal axis, which is clearly accomplished by the spaced
knurls of DeGrado.” (Ans. 9.)
We do not agree with the Examiner that the claimed “rotational
alignment” of the indicia,4 even interpreted as broadly as is reasonable, is
met by the longitudinal spacing of DeGrado’s indicia. We accordingly do
not sustain the rejection of claim 4.
Obviousness of Claims 21—23
Claims 21 and 23 recite indicia that “indicate” rotational alignments
for positioning a crimping tool. Claim 22 recites that “the first indicia
comprises a first element of a mnemonic device and the second indicia
comprises a second element of the mnemonic device.”
4 See Spec. 1170 & Fig. 23.
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We agree with the Examiner that the subject matter of these claims,
which limits the nature of the printed matter in various ways, does not
provide a patentable distinction over the cited art, for the reasons articulated
in connection with claim 1, and, therefore, sustain the Section 103 rejection
of claims 21—23.
Obviousness of Claim 31 and 33
Claim 31 recites that “the first indicia extends around only a portion
of a circumference of the body portion.” Claim 33 recites that “the first
indicia and the second indicia extend around only a portion of a
circumference of the body portion.”
Appellant argues DeGrado’s knurls “extend around the entire
circumference of the shell member 10.” (App. Br. 21.) Appellant further
argues that because “Schork fails to teach, suggest, or describe a first indicia
indicating a position of applying a first crimp to a body portion of a pulling
eye . . . Schork fails to teach, suggest, or describe a first indicia indicating a
position of applying a first crimp to a body portion of a pulling eye, where
the first indicia extends around only a portion of a circumference of the body
portion of the pulling eye.” (Id.)
We are not persuaded of error because Appellant argues the references
separately, where the Examiner relies on a combination, specifically, the
indicia of DeGrado as modified by Schork’s teaching of a “marking which
extends around only a limited portion in a precise area of an annular
surface.” (Ans. 19.)
We accordingly sustain the rejections of claims 31 and 33.
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Obviousness of Claims 30 and 35
Claim 30 depends from claim 29 and adds that “the body portion
further comprises the first crimp positioned on at least a portion of the first
indicia, wherein the first crimp extends around only a portion of a
circumference of the body portion.” Claim 35 depends from claim 34 and
similarly recites that “the body portion further comprises the first crimp
positioned on at least a portion of the first indicia and the second crimp
positioned on at least a portion of the second indicia.”
The Examiner finds that it would have been obvious to place crimps
on the indicia instead of next to or between indicia, as in DeGrado, because
“the mere reversal or rearrangement of indicia and crimp location does not
add patentable distinctness to the claimed invention, and because it has been
held that rearranging parts of an invention involves only routine skill in the
art.” (Final Act. 16, citing In re Japikse, 86 USPQ 70.)
We agree with the Examiner’s findings and conclusion of obviousness
with regard to claim 35, which only requires that the crimps be positioned on
portions of the indicia. Absent some teaching that the arrangement of the
crimps relative to the indicia makes a structural or functional difference, the
relative positioning of crimps and indicia would have been an obvious
matter of design choice. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)
(holding that the particular placement of a contact was an obvious matter of
design choice within the skill in the art); In re Japikse, 181 F.2d at (CCPA
1950) (holding the specific positioning of a starting switch unpatentable
because shifting the position of the starting switch would not have modified
the operation of the device).
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Claim 30, however, requires that the crimp “extends around only a
portion of a circumference of the body portion.” The Examiner fails to
establish obviousness of this claim because the findings are limited to
“indicia around only a portion” (see Non-Final Act. 16; Ans. 10) and
because the Examiner has not identified in the art of record a crimp that
extends around only a portion of a circumference of a body.
The Section 103 rejection of claim 35 is sustained, but the same
rejection of claim 30 is not sustained.
Obviousness of Claim 34
Claim 34 recites “wherein the first indicia and the second indicia have
a color in contrast to the body portion.” Appellant argues this claim is
patentable for the reasons claim 29 is patentable. (App. Br. 23.) As stated
above, however, we do not agree that claim 29 is patentable and, therefore,
sustain the rejection of claim 34.
Obviousness of Claim 3 7
Claim 37 recites that “the end defines a first aperture for receiving a
pulling member and a plurality of second apertures, each of the plurality of
second apertures for receiving a fastener to secure the end to the body
portion.” Appellant argues this claim is patentable for the reasons claim 1 is
patentable. (App. Br. 24.) Because, as stated above, we do not agree that
claim 1 is patentable, we sustain the rejection of claim 37.
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DECISION
The rejection of claims 29, 32, and 36 under 35 U.S.C. § 102 is
affirmed. The rejections of claims 1, 3, 6, 7, 21—23, 31, 33—35, and 37 under
35 U.S.C. § 103 are affirmed. The rejections of claims 4 and 30 under 35
U.S.C. § 103 are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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