Ex Parte Daume

Patent Trial and Appeal Board

Aug 26, 2013

10950503 (P.T.A.B. Aug. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/950,503 09/28/2004 Britta Daume 6884-1 6910
39196 7590 08/27/2013
SHLESINGER, ARKWRIGHT & GARVEY LLP
5845 Richmond Highway, Suite 415
ALEXANDRIA, VA 22303
EXAMINER
CHIN SHUE, ALVIN C
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
08/27/2013 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 BRITTA DAUME
____________________

Appeal 2011-010905
Application 10/950,503
Technology Center 3600
____________________

Before: JAMES P. CALVE, SCOTT A. DANIELS, and
NEIL T. POWELL, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010905
Application 10/950,503
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The claims are directed to a device for electrically contacting
cylindrical bodies such as cables, pipes or tubes. Spec. 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A grounding clamp for grounding the outer conductor of
a coaxial cable to an electrical ground device, said grounding
clamp comprising:
a) a base structure adapted to be tensioned around a coaxial
cable in the manner of a clamp, said base structure having an
interior surface, an exterior surface and an electrically
conductive support element firmly connected thereto, said base
structure is formed from an elastic material;
b) elastic sealing lips formed from said elastic material and
integral with said base structure, said elastic sealing lips
extending from said base structure interior surface, said sealing
lips for providing a seal between said base structure and a
coaxial cable when said base structure is tensioned therearound;
c) an electrical contact member, said electrical contact
member operatively associated with said base structure
for providing an electrically conducting connection between the
outer conductor of a coaxial cable to be grounded and the
electrical ground device;
d) said elastic material comprising at least one thermoplastic
elastomer having at least one physical property selected from
the group consisting of a shore hardness A between about 35 to
about 85 A, a compression set less than about 40%, a tensile
strength higher than about 6 Mpa, a tear elongation higher than
about 300%, a cold standard lower than about degrees Celsius,
a change in shore hardness over time that does not exceed about
3 A, a change in tensile strength over time no larger than about
Appeal 2011-010905
Application 10/950,503
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15%, and a change in tear elongation over time no higher than
about 20%.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ellinwood
Stack
Sherman
Cauderay

US 2,310,622
US 4,850,483
US 4,997,148
EP 0 744 788 B1

Feb. 9, 1943
Jul. 25, 1989
Mar. 5, 1991
May 10, 1996

REJECTIONS
The Examiner made the following rejections:
Claims 1-19 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Cauderay, Sherman, and Stack.1 Ans. 3-4.

ANALYSIS
Claims 1-10 and 13-19 as unpatentable over Cauderay, Sherman, and Stack
Appellant argues claims 1-10 and 13-19 as a group, where claim 1 is
the only independent claim, and presents separate arguments as to dependent
claims 11 and 12. App. Br. 6; Reply Br. 2. We initially select claim 1 as
representative for the group 1-10 and 13-19, where claims 2-10 and 13-19
stand or fall with claim 1. See 37 C.F.R. 41.37(c)(1)(vii) (2011).
The Examiner found that the combination of Cauderay, Sherman and
Stack discloses all the features of Appellant’s claimed invention. Ans. 4.
Specifically, the Examiner determined that it would be obvious to form
Cauderay’s grounding clamp from an injection molded thermoplastic

1 The Examiner has withdrawn the separate rejection of claim 11 in view of
Cauderay, Sherman, Stack and Ellinwood. Ans. 5.
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elastomer as taught by Sherman, having the thermoplastic elastomer
properties as disclosed by Stack including a durometer of 64 A, which is
within Appellant’s claimed range of about 35 A to 85A. Id. Appellant
argues that Stack is nonanalogous art because Stack relates to a golf ball
holder in which balls are repeatedly inserted and removed, not an electrical
grounding clamp, and that Stack is not pertinent to the problem with which
the claimed invention is concerned because “applicant's device is not
repeated[ly] connected and disconnected.” App. Br. 7.
We agree with the Examiner that Stack is reasonably pertinent to
Appellant’s problem because despite having the purpose of securing golf
balls versus a cable or pipe, Stack indicates that the injection moldable
thermoplastic elastomer solves material product problems relating to ease of
manufacturing and assembly, cost, material compression set, temperature
elasticity and tensile strength, all desirable properties of flexible plastic
products. Stack, col. 3, ll. 40-51; see col. 1, ll. 18-24. Appellant’s
Specification similarly describes the invention as using thermoplastic
elastomers to solve manufacturing complexity and expense problems
because they can be readily injection molded, quickly harden, and
advantageously exhibit, resistance to bending fatigue, impact resistance and
temperature change resistance over time. See Spec. 2, 3 and 15. See In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem.”) (citation omitted).
Appellant’s argument that Stack is related to the problem of lost
elasticity “caused by the repeated insertion and removal of a golf ball from
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Application 10/950,503
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the device” is not persuasive because just as Stack explains that the side
walls of the golf ball holder must be flexible and elastic to securely hold the
golf balls to permit insertion and removal (Stack col. 1, ll. 66-68),
Appellant’s Specification describes that in order to be secured against a
variety of different shaped cables or pipes “the base structure has a
flexibility that matches the surface of the body to be contacted.” Spec. 4.
Moreover, that the same or similar thermoplastic material also is able to be
repeatedly flexed in Stack does not explain why one of skill in the art would
not use it for applications where less repeated flexing is required when its
other properties are desirable for that application.
Stack uses thermoplastic elastomeric polymers to provide
advantageous manufacturing capability, material hardness, resistance to
compression set and low and high temperature elasticity as discussed supra.
See Stack col. 3, ll. 40-51. While Sherman is silent as to specific properties
of thermoplastic elastomeric material, the Examiner cites these advantages
as reasons to apply Stack’s thermoplastic elastomeric material properties,
i.e., a Shore hardness of 64 A durometer, to the thermoplastic elastomer’s
disclosed by Sherman. Ans. 6. The Examiner's reasons for applying
Stack’s material properties as Sherman’s thermoplastic elastomer material
are supported by a rational underpinning. KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007) (when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result).
Accordingly, we sustain the Examiner’s rejection of claims 1-10 and
13-19.

Appeal 2011-010905
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Claims 11 and 12 as unpatentable over Cauderay, Sherman, and Stack
In response to the Examiner’s withdrawal in the Answer of the
rejection of claim 11 in view of Cauderay, Sherman, Stack and Ellinwood,
Appellant argues that Cauderay fails to disclose the claimed electrical
contact member having “at least one contact protrusion constructed from an
electrically conducting material” as called for in claim 11. Reply Br. 2.
Appellant points out that the intermediate piece 9 in Cauderay cited by the
Examiner is a separate element from the electrical conductive support
element 6, whereas Appellant’s claimed contact protrusion is a bulge
extending from the electrically conductive support element 6 itself. Id.
Claim 11 recites that “said electrical contact member includes at least
one contact protrusion constructed from an electrically conducting material.”
Appellant points to the Specification for support that the claimed contact
protrusion is not a separate element from the electrically conductive support
element 6. Reply Br. 2. The Specification explains that different from the
embodiment of Figures 1-3, Figure 5 discloses a further embodiment where
“the contact protrusion 38 and a further contact protrusion 40 are each
formed, in top view, in a circular profile within the support element 6.”
Spec. 16, ll. 4-7 (emphasis added). “During examination, claims are to be
given their broadest reasonable interpretation consistent with the
specification, and claim language should be read in light of the specification
as it would be interpreted by one of ordinary skill in the art.” In re Am.
Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see In re
Bass, 314 F.3d 575, 577 (Fed. Cir. 2002) (“[T]he PTO must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification.”). In light of the plain language of
claim 26 and Appellant’s description of “contact protrusion,” we understand
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Application 10/950,503
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this claim limitation to refer to an element which is not separate from the
electrically conductive support element. We agree that Cauderay fails to
disclose the contact protrusion as recited in claim 11 and neither Sherman
nor Stack remedy this deficiency, and thus we do not sustain the rejection of
claim 11 as unpatentable over Cauderay, Sherman, and Stack. As claim 12
is directly dependent upon claim 11, we also do not sustain the rejection of
claim 12.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-10 and
13-19 is AFFIRMED, and the rejection of claims 11 and 12 is 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)(1)(iv) (2011).

AFFIRMED-IN-PART

JRG/rvb