Ex Parte Caveney

Board of Patent Appeals and Interferences

Dec 12, 2007

10613062 (B.P.A.I. Dec. 12, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACK E. CAVENEY
____________

Appeal 2007-2478
Application 10/613,062
Technology Center 3600
____________

Decided: December 12, 2007
____________

Before WILLIAM F. PATE III, MURRIEL E. CRAWFORD, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 7-12, 20-24. We have jurisdiction under 35 U.S.C.
§ 6(b). (2002).
Appeal 2007-2478
Application 10/613,062

2
This appeal arises from the Examiner’s Final Rejection, mailed
September 15, 2005. The Appellant filed an Appeal Brief in support of the
appeal on February 21, 2006. An Examiner’s Answer to the Appeal Brief
was mailed on November 2, 2006. A hearing was held on November 14,
2007.

SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a cable tie which is said to have improved tensile
strength. (Specification 1: [0002], [0004]).
Claim 7, reproduced below, is representative of the subject matter
on appeal.
7. A cable tie, comprising:

an elongate metallic strap having a first end and a second end opposite
the first end, a hooked portion formed integral with the first end and a return
loop connecting the first end to the hooked portion, wherein the return loop
includes at least one rib disposed thereon;

a metallic locking head secured to the first end of the strap for
receiving the second end of the strap, the head comprising a strap entry face,
a strap exit face, and a strap-receiving aperture extending therebetween, the
head further comprising a floor and a roof which diverge in the direction of
the exit face; and

Appeal 2007-2478
Application 10/613,062

3
metallic roller means for lockingly engaging the strap, the head
comprising retention means disposed adjacent the exit face for captively
holding the roller means within the head,

the roller means being movable between a threading position wherein
the roller means is disposed adjacent the exit face and the retention means,
and a locking position wherein the roller means is closer to the entry face.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:

Thurston US RE. 25,769 Apr. 27, 1965
Sauer US 4,300,270 Nov. 17, 1981
Blanks US 5,732,446 Mar. 31, 1998
Andersen US 6,035,495 Mar. 14,2000

The following rejections are before us for review.
1. Claims 7-9, 11-12 and 20-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Blanks in view of Andersen and Sauer.
2. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blanks in view of Andersen and Sauer, and further in
view of Thurston.
ISSUE
The first issue before us is whether the Appellant has sustained its
burden of showing that the Examiner erred in rejecting the claims on appeal
Appeal 2007-2478
Application 10/613,062

4
as being unpatentable under 35 U.S.C. § 103(a) over the prior art of record.
Specifically, Appellant contends: 1) that Blanks, Andersen, Sauer and
Thurston taken alone or in combination, fail to disclose “a cable tie having a
return loop connecting one end of a strap to an integral hooked portion, with
the return loop including at least one rib disposed thereon” (Br. 8); and 2)
that this combination is improper because the Examiner has failed to look at
the invention “as a whole” (Br. 9).
The second issue before us is whether Blanks discloses a locking head
having a lead-in portion.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that “Blanks discloses all the limitations of
applicants claimed invention except for a rib disposed along the return loop
and indentations in the opposite sides of the head” (Final 2).

2. The Examiner found that “Blanks discloses a metal cable tie with a
return loop (28) that connects the hook (26) to the tie strap (27, figure 2).
Blanks doesn't show a stiffening rib on the return.” (Answer 7)

3. Blanks discloses a head which has a strap receiving passage 21
extending through the head front to rear into which passage the end A of the
strap is inserted at the front F of the head. (Blanks, col. 2, ll. 55-58, col. 3,
ll. 39-42).
Appeal 2007-2478
Application 10/613,062

5
4. The Examiner found “Andersen discloses using a reinforcing rib
(13) on a return loop (12', figure 1) and Sauer discloses the use of a plurality
of indentations (49, 49a) on the housing of a hose clamp. Both the
reinforcing rib and indentations strengthen the clamps. Also, Sauer discloses
that the use of a plurality of reinforcing indentations further increases the
strength of the clamp” (Final 2).

5. Andersen discloses a clamp defined generally by a band 12
(Andersen col. 2 ll. 6-7) and the Specification similarly describes the cable
tie 22 as being defined by an elongate strap (Specification 1: [0029]).

6. Andersen discloses that a reinforcing rib 13 is formed on one end of
the band 12 adjacent a juncture 12’ (Andersen col. 2, ll. 10-12).

7. We find that the clamp in Andersen is sufficiently similar to the tie
in Blanks to warrant improving the tie in the same way that the clamp in
Andersen is improved by the stiffening rib 13.

PRINCIPLES OF LAW
Under 35 U.S.C. § 103, a claimed invention is unpatentable if the
differences between the subject matter sought to be patented and the prior art
are “such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art.”
Appeal 2007-2478
Application 10/613,062

6
KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1734, (2007); Graham v. John
Deere Co., 383 U.S. 1, 13-14 (1966).

In Graham, the Court held that that the obviousness analysis is
bottomed on several basic factual inquiries: “[(1)] the scope and content of
the prior art are to be determined; [(2)] differences between the prior art and
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill
in the pertinent art resolved.” 383 U.S. at 17. See also KSR, 127 S.Ct. at
1734.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill. Sakraida and Andersen's-Black Rock are
illustrative-a court must ask whether the
improvement is more than the predictable use of
prior art elements according to their established
functions.
KSR, 127 S. Ct. at 1740.

Appeal 2007-2478
Application 10/613,062

7

ANALYSIS
We sustain the rejection of claim 7 under 35 U.S.C. § 103 (a) over
Blanks in view of Andersen and Sauer. The Appellant does not provide a
substantive argument as to the separate patentability of claims 81, 11, 12 and
20-24 that depend from claim 7, which is the sole independent claim from
which these claims depends. Therefore, claims 8, 11, 12, 20-24 fall with
claim 7. See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
We also affirm the rejection of dependent claim 10 since Appellant
has not challenged such with any reasonable specificity (See In re Nielson,
816 F.2d 1567, 1572, (Fed. Cir. 1987)).
Appellant asserts error on the part of the Examiner in regard to the
rejection of claim 7 under 35 U.S.C. § 103(a) based on the combination of
Blanks, Andersen and Sauer in that these references when “taken alone or in
combination, [do not] disclose a cable tie having a return loop connecting
one end of a strap to an integral hooked portion, with the return loop
including at least one rib disposed thereon” (Br. 8). We disagree. The
combination of at least Blanks and Andersen meets the requirements of
claim 7.
The Examiner found “Blanks discloses all the limitations of
Appellant’s claimed invention except for a rib disposed along the return loop

1 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See,
37 C.F.R. § 41.37 (c)(1)(vii) (2004)
Appeal 2007-2478
Application 10/613,062

8

and indentations in the opposite sides of the head” (FF 1). The Examiner
further found that “Blanks discloses a metal cable tie with a return loop (28)
that connects the hook (26) to the tie strap (27, figure 2). Blanks doesn't
show a stiffening rib on the return. (FF 2). These findings are not contested
by Appellant. In order to show that stiffening ribs on loop connectors were
known by a person with ordinary skill in the art, the Examiner relies on
Andersen which discloses using a reinforcing rib on a return loop of a clamp
(FF 4). Hence, the combination of Andersen and Blanks includes all the
features of claim 7. We therefore reject Appellant’s contention that the
requirements of claim 7 are not met by the combination of Blanks and
Andersen and Sauer2.
Appellant next asserts that the Examiner erred in finding that “it
would have been obvious to one of ordinary skill in the art to add
strengthening ribs to Blanks' metal tie band, to increase the strength of the
tie band and to improve the reliability of the tie band” (Br. 8, 9) by using the
reinforcing rib (13) formed on a return loop (12') in Andersen on the
corresponding return loop in Blanks (Br. 8, 9). In support of this contention,
Appellant asserts that “it appears that the Examiner is not looking at the
invention ‘as a whole’, but instead is improperly focusing on the differences
between the claims and the references …” (Br. 9), and that “one of ordinary

2 Sauer was cited for the teaching of indentations on the tie head as required
by claims 20-24. Since claims 20-24 have not been argued separately, we
consider Sauer cumulative to the combination under 35 U.S.C. § 103(a).
Appeal 2007-2478
Application 10/613,062

9
skill in the cable tie art would not be motivated by any teachings of a one-
piece, circular hose clamp, when determining how to improve cable tie
performance” (Br. 10). We disagree.
We consider the circular clamp in Andersen to be a device similar to
the tie of Blanks, and thus conclude that a technique, such as using a
stiffening rib 13 on the return loop 12’ of Andersen, would be recognized by
a person of ordinary skill in the art to improve similar devices in the same
way. KSR, 127 S. Ct. at 1740. Both devices in Blanks and Andersen are
similar in that each wraps an item(s) within the circular confines of the band
(FF 2, 5). Both the circular clamp and the tie have a locking mechanism
which holds the tightened loop against circumferential forces acting on the
band, and each such locking mechanism is capable of selectively adjusting
the diameter of the loop. We thus conclude that the clamp in Andersen is
sufficiently similar to the tie in Blanks to warrant improving the tie in the
same way that the clamp in Andersen is improved by the stiffening rib 13
(FF 7).
Finally, Appellant argues that no lead-in portion at the entry face of
the head in Blanks, as required by claim 9, has not been identified by the
Examiner in the Final Office Action dated September 15, 2005, and thus the
35 U.S.C. § 103(a) rejection of that claim is error. However, we find that
Blanks discloses a head which has a strap receiving passage 21 extending
through the head front to rear, and into which passage the end A of the strap
is inserted at the front F of the head (FF 3). Claim 9 sets forth no details as
Appeal 2007-2478
Application 10/613,062

10
to the specific structure of the lead-in portion except that it is located at the
lead-in portion of the head. The entrance to the passage 21 at the front F of
the head 10 in Blanks meets this limitation because it is the immediate
opening to the passage 21, and thus is the lead-in portion to the passage.
Therefore, we sustain the rejection of claim 9 under 35 U.S.C. § 103(a)
based on the combination of Blanks and Andersen and Sauer.

CONCLUSIONS OF LAW
We conclude Appellant has not shown that the Examiner erred in
rejecting claims 7-9, 11-12, 20-24 under 35 U.S.C. § 103(a) over Blanks in
view of Andersen and Sauer.
2. We conclude Appellant has not shown that the Examiner erred in
rejecting claim 10 under 35 U.S.C. § 103(a) over Blanks in view of
Andersen and Sauer, and further in view of Thurston.

DECISION
The decision of the Examiner to reject claims 7-12, and 20-24 is
affirmed.
Appeal 2007-2478
Application 10/613,062

11
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)(1)(iv) (2006).
AFFIRMED

vsh

PANDUIT CORP.
LEGAL DEPARTMENT - TP12
17301 SOUTH RIDGELAND AVENUE
TINLEY PARK IL 60477