Ex Parte Cole

Board of Patent Appeals and Interferences

Aug 24, 2007

11141758 (B.P.A.I. Aug. 24, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL T. COLE
____________

Appeal 2007-1972
Application 11/141,758
Technology Center 2800
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Decided: August 24, 2007
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Before JAMES D. THOMAS, LEE E. BARRETT,
and HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-7, 9-18, and 20-25, the only claims
pending in this application. We have jurisdiction under 35 U.S.C. §§ 6(b),
134(a).
Appeal 2007-1972
Application 11/141,758

INTRODUCTION
The claims are directed to an in-floor fitting that is adapted to be
inserted within an opening in a floor. The fitting includes at least five signal
connection devices, and a cover including doors over access paths to the
signal connection devices. The doors are configured to be moved between
open and closed positions. (Abstract.) Claim 1 is illustrative:
1. A fire-rated in-floor poke-thru fitting configured to be mounted
within an opening in a concrete floor or steel deck, comprising:

at least five signal connection devices;

an intumescent insert; and

a cover comprising doors over access paths to said at least five signal
connection devices, wherein said doors are configured to be moved between
open and closed positions, wherein said at least five signal connection
devices are accessible when said doors are in the open position, and wherein
said at least five signal connection devices are protected from an external
environment when said doors are in the closed position,

wherein the fire-rated in-floor poke-thru fitting is to be secured into
the concrete floor or steel deck.

The Examiner relies on the following prior art references to show
unpatentability:
Castellani US 4,770,643 Sept. 13, 1988
Hadfield US 4,883,924 Nov. 28, 1989
Bambardekar US 6,175,078 B1 Jan. 16, 2001
Bonilla US 6,551,130 B2 Apr. 22, 2003

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Appeal 2007-1972
Application 11/141,758

The rejections as presented by the Examiner are as follows:
1. Claims 1-6, 12-17, and 23-25 are rejected under 35 U.S.C § 103(a) as
unpatentable over Bambardekar and Bonilla.
2. Claims 7, 9, 11, 18, 20, and 22 are rejected under 35 U.S.C § 103(a)
as unpatentable over Bambardekar, Bonilla, and Castellani.
3. Claims 10 and 21 are rejected under 35 U.S.C § 103(a) as
unpatentable over Bambardekar, Bonilla, and Hadfield.

OPINION
The Examiner applies the teachings of Bambardekar and Bonilla
against claims 1-6, 12-17, and 23-25 in a § 103 rejection. We note, initially,
that Appellant’s Specification (¶ 5) cites the Bonilla patent, which discloses
eight telecommunication jacks in a poke-thru fitting, and alleges that the
telecommunication jacks in the described fitting are open to the external
environment. The Specification at paragraph 2, however, reports that
proposed certification standards require that such fittings keep scrub water
out of the portion of the fitting that houses the electrical outlet and
communication/data receptacles or jacks. Moreover, as noted in the
Specification (¶ 2), it is desirable that poke-thru fittings be designed to
prevent moisture infiltration from above the floor. The Specification does
not allege that Appellant was the one who discovered that water or excessive
moisture is detrimental to the proper functioning of electronic receptacles or
jacks.

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Appeal 2007-1972
Application 11/141,758

The foregoing considerations should be sufficient to demonstrate the
unpatentability of claims of the scope of instant claim 1 (requiring “a cover
comprising doors over access paths” to “at least five” signal connection
devices), or even broader claim 12 (requiring “a door” positioned over “at
least one” of the five signal connection devices).
Perhaps in an abundance of caution, the Examiner provides a
reference showing doors over access paths to telecommunication jacks in a
poke-thru fitting (Bambardekar). The Examiner finds that all elements of
instant claim 1 (and claim 12) are found in Bambardekar and Bonilla, and
concludes that the teachings of the references considered together show that
the artisan would have found the claimed subject matter as a whole to be
obvious.
A person having ordinary skill in the art uses known elements for their
intended purpose. Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.,
396 U.S. 57 (1969) (radiant-heat burner used for its intended purpose in
combination with a spreader and a tamper and screed). “[W]hen a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex,
Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1395-96 (2007) (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
Appellant argues, in defense of claim 1, that “[a]ttempting to add
additional jacks from Bonilla to Bambardekar would render Bambardekar
inoperable for its intended purpose.” (Appeal Br. 7.) Appellant’s position
reflects a misapprehension (or mischaracterization) of the rejection applied
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Appeal 2007-1972
Application 11/141,758

against claim 1, which the Examiner makes clear is not based on the
incorporation of specific doors depicted in Bambardekar with specific poke-
thru fittings depicted in Bonilla, or incorporation of the “additional jacks” of
Bonilla into the poke-thru fittings of Bambardekar. As the Examiner
indicates, the test for obviousness is not whether the features of one
reference may be bodily incorporated into the structure of another reference.
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). It is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review. In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385,
389 (Fed. Cir. 1983).
Appellant’s response to the legal principle that a conclusion of
obviousness does not require a showing of “bodily” incorporating elements
in the prior art: “the claimed combination cannot change the principle of
operation of the primary reference or render the reference inoperable for its
intended purpose.” (Reply Br. 5.) That argument is based, in turn, on the
maxim that the references must be considered in their entirety. Appellant
does not explain how considering references in their entirety -- which we
acknowledge as a requirement in an obviousness inquiry -- somehow means
that the inventions of the references have to be shown physically
combinable. Appellant does, however, frequently cite to Manual of Patent
Examining Procedure (MPEP) § 2141.02 as support for Appellant’s
position.
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Appeal 2007-1972
Application 11/141,758

MPEP § 2141.02, under heading VI, relates to prior art references.
The section instructs the reader that a prior art reference must be considered
in its entirety, including portions that would lead away from the claimed
invention. Support for the reminder is identified in W.L. Gore & Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 220 USPQ 303, 312 (Fed. Cir.
1983) (prior art plastics processing taught that unsintered
polytetrafluoroethylene (PTFE) should be stretched slowly, thus teaching
away from claimed rapid stretching).
“A reference may be said to teach away when a person of ordinary
skill, upon [examining] the reference, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1090, 37 USPQ2d 1237, 1241 (Fed. Cir.
1995) (quoting In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131
(Fed. Cir. 1994)).
The “teaching away” that Appellant alleges with respect to the
references, however, is that Bambardekar teaches away from poke-thru
fittings that cannot be positioned in a floor opening more than four inches in
diameter. We can assume, for purposes of this appeal, that Bambardekar
“teaches away” in the manner alleged by Appellant. As the Examiner
indicates (Answer 6), instant claim 1 does not place a limitation on the
dimensions of the poke-thru fitting. Appellant has not identified anything in
the references that would warn the artisan against covering access paths to
signal connection devices in a poke-thru fitting, or more specifically placing
a cover comprising doors over access paths to at least five signal connection
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Appeal 2007-1972
Application 11/141,758

devices. Moreover, the artisan is presumed to have at least common sense.
See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985)
(argument presuming that element, if not wanted, would not be removed by
a skilled worker presumes stupidity rather than skill). Even with some
degree of “bodily” incorporation of the structures described by the
references, simply removing one or two electrical power receptacles from
the combined fitting would provide sufficient space for at least five signal
connection devices and sliding doors. (Answer 6.) Claim 1 does not
address how many, if any, electrical receptacles are required.
In response to the rejection of claims 10 and 21 under 35 U.S.C §
103(a) as unpatentable over Bambardekar, Bonilla, and Hadfield, Appellant
submits that the acknowledged teaching of a tab and a notch by Hadfield is
not part of an intumescent insert and the tab is not received within a notch in
the first plate to align an intumescent insert with a plate. (Appeal Br. 16.)
Neither we nor the Examiner disagree with the assessment. However,
nonobviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d at 425, 208 USPQ at 881
(CCPA 1981)). As the Examiner indicates (Answer 7), Hadfield was cited
to show that the use of a tab and a notch for aligning two objects was well
(and widely) known. Yet, Appellant has provided no evidence tending to
show that the inclusion of a tab on an intumescent insert and a notch on a
plate to align the insert in relation to the plate was “uniquely challenging or
difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
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Appeal 2007-1972
Application 11/141,758

Fisher-Price, Inc., 485 F.3d 1157, 1162, 82 USPQ2d 1687, 1692 (Fed. Cir.
2007) (citing KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396).
We have considered claims 1 and 10 as representative in our review of
the rejections, based on Appellants’ remarks in the Brief, but are not
persuaded of error. We sustain the rejection of claims 1-6, 10, 12-17, 21,
and 23-25. Because Appellant relies on the arguments presented for claim 1
in response to the § 103 rejection of claims 7, 9, 11, 18, 20, and 22, we also
sustain the rejection of those claims. See 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION
In summary, the rejection of claims 1-7, 9-18, and 20-25 under 35
U.S.C. § 103 is affirmed.

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Appeal 2007-1972
Application 11/141,758

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).

AFFIRMED

pgc

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