Ex Parte Dufourg

Board of Patent Appeals and Interferences

Sep 17, 2008

10606040 (B.P.A.I. Sep. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PIERRE-STEPHANE DUFOURG
____________

Appeal 2008-2070
Application 10/606,040
Technology Center 3600
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Decided: September 17, 2008
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pierre-Stephane Dufourg (Appellant) seeks our review under
35 U.S.C. § 134 of the final rejection of claims 1-6. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
Appeal 2008-2070
Application 10/606,040

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The claimed invention relates to a support constructed from
latticework in the form of a bracket to hold a plurality of piping or cabling.
Figure 1 is representative of the subject matter on appeal. Appellant’s
Figure 1 is reproduced below:

Appellant’s Figure 1 depicts the Appellant’s claimed subject matter of a
support constructed from latticework in the form of a bracket to hold a
plurality of piping or cabling.

1 Our decision will refer to Appellant’s Appeal Brief (“App. Br.,” filed Aug.
28, 2006), Reply Brief (“Reply Br.,” filed Jan. 15, 2007), and the
Examiner’s Answer (“Answer,” mailed Nov. 13, 2006).
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THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Hatch US 1,559,695 Apr. 4, 1925
Yake US 4,046,261 Sep. 6, 1977
Simon US 5,531,410 Jul. 2, 1996

THE REJECTIONS
The following rejections are before us for review:
Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over in Simon and Hatch.
Claims 4-6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simon, Hatch, and Yake.
The Examiner’s findings to support the rejections are on pages 3
through 6 of the Answer.
Against the rejections, the Appellant presents a number of arguments.
For claims 1-3, the Appellant argues that “there is no teaching,
suggestion or incentive to combine Simon and Hatch.” (App. Br. 7.) The
Appellant also argues that Hatch’s teachings are not applicable to the
concerns of the present invention. (Id.) The Appellant further argues that
the Examiner has used hindsight. (App. Br. 8.) For claims 4-6, the
Appellant argues that there “is no teaching or motivation to combine Yake
with the other references and, in fact, it [Yake] teaches away from the
claimed invention as the longitudinal members 4,9 are not in the same plane
as the traverse members 12-20.” (App. Br. 9)(emphasis original.)
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In addition for claim 4, the Appellant argues that “the prior art does
not teach or suggest a cable conduit having bends in a lengthwise wires
having a width, measured in the first directions, that substantially
corresponds to the thickness of a crosswire wire.” (App. Br. 9.)
In addition for claims 5 and 6, the Appellant argues:
the prior art does not teach or suggest a cable conduit having
bends in the lengthwise wires having a width, measured in
the first direction, that is greater than twice the thickness of
a crosswire. ... Yake[’s] wires [] do not lie in substantially
the same plane, but are offset from one another, it is
respectfully submitted that there is no teaching, suggestion
or motivation in the references themselves, or in the
knowledge of one of ordinary skill in the art, to combine the
references.

(Id.)(emphasis original.)
In the Reply Brief, when responding to the Examiner’s remarks on
pages 7-11, the Appellant reiterates the contentions made in the Appeal
Brief and offers additional ones for us to consider. The Appellant adds that
it is not well known in the art to eliminate protuberances and bumps in
supports composed of trellis works. (Reply. Br. 5.) The Appellant argues;
however, that if it was well known to eliminate such protuberances and
protrusions associated with transverse or crosswire wires in a trellis works,
“the fact that there is no prior art of record that teaches the claimed subject
matter ... implies that the claimed subject matter is, in fact, not obvious.”
(Reply Br. 6)(emphasis original.) The Appellant argues that “as clearly
shown in Figure 2, Simon actually introduces, rather that eliminates,
protuberances and nodes by bending or folding the ends of the transverse
wires.” (Id.) As such, the Appellant argues that Simon “actually teaches
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away from Appellant’s invention by introducing additional protuberances.”
(Id.) The Appellant additionally argues one skilled in the art “would not
have considered placing bends in the longitudinal wires at the time of the
present invention because, when the latticework trunking is placed on the
ground or other flat surface, it decreases the contact area with the surface in
which the latticework trunking rests.” (Id.) The Appellant further argues
that one skilled in the art would not look to the teaching of Hatch to modify
Simon to get the claimed subject matter because Hatch is directed to a bottle
carrier and the present invention is directed to flexible objects rather than
rigid objects. (Reply Br. 7.) The Appellant also argues that Hatch and Yake
are non-analogous art, thus no motivation to combine them with Simon.
(Reply Br. 8.)
The Appellant argues claims 1-3 as a group. We select claim 1 as
representative of this group. Claims 2 and 3 will stand or fall with claim 1.
The Appellant argues claim 4 separately. The Appellant argues claims 5-6
as a group. We select claim 5 as representative of this group. Claim 6 will
stand or fall with claim 5. 37 C.F.R. § 41.37(c)(1)(vii) (2007).

ISSUES
The first issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-3 under 35 U.S.C. § 103(a) as being
unpatentable over Simon and Hatch. The second issue before us is whether
the Appellant has shown that the Examiner erred in rejecting claims 4-6
under 35 U.S.C. § 103(a) as being unpatentable over Simon, Hatch, and
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Yake. Both issues turn on whether the Appellant has shown error in the
Examiner’s prima facie case of obviousness.

FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
Scope and content of the prior art
1. Figure 1 of Simon describes a trelliswork constructed from a plurality
of lengthwise wires and crosswise wires.
Simon’s Figure 1 is reproduced below:

Simon’s Figure 1 is said to depict a trelliswork constructed from plurality
of lengthwise wires and crosswise wires.
2. The Appellant does not dispute Simon describes a trelliswork that
substantially encompasses the claimed limitations of claim 1 less the
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bends in the lengthwise wires that are designed to accommodate the
base portions of the crosswise wires such that the longitudinal
portions of the lengthwise wire lie at substantially the same level as
the crosswise wires.
3. Hatch describes, in a support structure for bottles, bends in the
latticework’s (trelliswork’s) wires to accommodate the diameter of the
wires perpendicular to the wires that have the bend 7 in them in order
to permit the bottles to lay flat on the bottom latticework’ wires.
Hatch’s Figure 2 shows this feature.
Hatch’s Figure 2 is reproduced below:

Hatch’s Figure 2 is said to depict the features of a latticework’s wires
bend to accommodate the diameter of wire perpendicular to the wires that
have the bend in them.
4. Yake teaches in the bottom of a latticework (trelliswork) support
structure transversing wires 12-20 having a bend width greater than
twice the width of the wires 4 and 9 that rests in the bend. (Yake,
Figs. 1 and 3.)
Differences between the claimed subject matter and the prior art
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5. The claimed invention combines elements separately disclosed in the
Simon, Hatch, and Yake.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘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 to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court in
Graham further noted that evidence of secondary considerations “might be
utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
For claims 1-3
The Examiner finds the combination of Simon and Hatch describes
the elements of claim 1 and states a reason to combine Simon and Hatch.
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(Answer 3-5.) We find likewise that the combination of Simon and Hatch
describes the elements of claim 1. (Facts 1-3.) We also find the Examiner
has articulated an apparent reason with logical underpinning for combining
Simon and Hatch.
In our view, the difference between the claimed invention and the
combination of Simon and Hatch is that the claimed invention combines the
elements separately disclosed in Simon and Hatch. (Fact 5.) Accordingly,
the elements of claim 1 appear to be a combination of elements described in
Simon and Hatch. We see no unpredictable results from combining these
prior art elements and the Appellant has not come forward with sufficient
evidence showing the combination to yield a result that would have been
unpredictable to one of ordinary skill in the art. Under these circumstances,
the combination would have been obvious. See KSR at 1740 (“Finally, in
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S. Ct. 1532, 47 L.Ed.2d 784
(1976), the Court derived from the precedents the conclusion that when 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. Id., at 282,
96 S.Ct. 1532.”)
Concluding the establishment of a prima facie case of obviousness by
the Examiner, we turn now to the Appellant arguments against the prima
facie case of obviousness.
We are not persuaded by the Appellant’s arguments there is no
motivation to combine Simon and Hatch and accordingly the Examiner has
used hindsight to combine. (App. Br. 7-8.) The Examiner stated a
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motivation to combine Simon and Hatch: so items may lie flat on both
lengthwise and crosswise wires of the trelliswork “as taught to be desirable
by Hatch” (Answer 5). In our view, this is ample motivation to combine
Simon and Hatch without resorting to hindsight. In addition, there is
nothing in Simon or Hatch that would discourage a person of ordinary skill
in the art from providing bends on the lengthwise wires to accommodate the
crosswires.
We are not persuaded by the Appellant’s arguments: 1) that Hatch’s
teachings are not applicable to the concerns of the present invention (App.
Br. 7), or 2) that that one skilled in the art would not look to the teaching of
Hatch to modify Simon to get the claimed subject matter because Hatch is
directed to a bottle carrier and the present invention is directed to flexible
objects rather than rigid objects (Reply Br. 7). We understand these
arguments to mean that Hatch’s teachings are not directed to same problems
the Appellant is trying to solve. However, the Appellant is focusing the
problem to be solved too narrowly in order to show an error in the
Examiner’s prima facie case of obviousness. The problem to be solved is
how to make items stored in trelliswork to lay flat; not just to make cables
stored in trelliswork lay flat as Appellant argues. To this end, Hatch
teachings a solution to the problem of making items stored in a trelliswork
lay flat: provide bends in the crosswires. Accordingly, Hatch’s teachings are
applicable to the concerns of the Appellant’s invention and one of ordinary
skill in the art would look to Hatch’s teachings to try to solve the problem of
making items stored in a trelliswork lay flat.
We are not persuaded by the Appellant’s arguments: 1) that it is not
well known in the art to eliminate protuberances and bumps in supports
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composed of trellis works (Reply Br. 5), and 2) that one skilled in the art
“would not have considered placing bends in the longitudinal wires at the
time of the present invention because, when the latticework trunking is
placed on the ground or other flat surface, it decreases the contact area with
the surface in which the latticework trunking rests” (Reply Br. 6). The
Appellant has not provided evidence that to one of ordinary skill in the art it
is not well known to eliminate protuberances and bumps in supports
composed of trelliswork or that one of ordinary skill in the art would not
have considered placing bends on lengthwise wires. Appellant’s attorney’s
arguments in a brief do not take the place of evidence in the record. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); Meitzner v. Mindick, 549 F.2d 775 (CCPA 1977),
cert. denied, 434 US 854 (1977), and In re Schulze, 346 F.2d 600, 602
(1965). Moreover, the evidence in the record supports the opposite
positions. Hatch is a support for bottles and the support is composed of
trelliswork (latticework). Hatch also places the bends on the lengthwise
wires.
We are not persuaded by the Appellant’s contention that because no
one piece of prior art teaches the claimed combination of elements in claim
1, then the claimed subject matter is obvious. (Reply Br. 6.) The rejection is
based on a combination of references and one cannot prove unobviousness
by arguing that one reference does not teach the claimed subject matter.
We also are not persuaded by the Appellant’s contention that Simon
teaches away from the invention. (Reply Br. 6.) The Appellant directs our
attention to Simon’s Figure 2 to support this contention. Simon’s Figure 2 is
directed to the prior art. (Simon, col. 2, ll. 22-32.) Simon’s Figure 3 is
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directed to Simon’s invention that the Examiner used to reject the claim.
(Answer 3.) As such, the Appellant is not viewing the portion of the
reference the Examiner used in making the rejection.
Accordingly, we will sustain the Examiner’s rejection of claims 1-3.
Claim 4
Claim 4 depends from claim 1. The Examiner finds Yake teaches a
bend width greater than twice the width of the wire that runs across the bend
and provides a reason to combine Yake with Simon and Hatch. (Answer 5-
6.) We likewise find Yake teaches a bend width greater than twice the width
of the wire that runs across the bend. (Fact 4.) We also find that the
Examiner has articulated an apparent reason with logical underpinning for
combining Yake with Simon and Hatch.
Concluding the establishment of a prima facie case of obviousness by
the Examiner, we turn now to the Appellant arguments against the prima
facie case of obviousness.
In addition to our reason supra with respect to claim 1, we are not
persuaded by the Appellant’s arguments that there “is no teaching or
motivation to combine Yake with the other references and, in fact, it [Yake]
teaches away from the claimed invention as the longitudinal members 4, 9
are not in the same plane as the traverse members 12-20” (App. Br.
9)(emphasis original) and that Hatch and Yake are non-analogous art, thus
no motivation to combine them with Simon (Reply Br. 8). The Examiner
has articulated a reason to combine Simon and Hatch with Yake: to facilitate
stability (Answer 5). KSR only requires the Examiner to articulate an
apparent reason with logical underpinning for modifying the Simon and
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Hatch with Yake. KSR at 1740-41. In our view, The Examiner has
articulated an apparent reason to combine Simon and Hatch with Yake. In
addition, there is nothing in Simon, Hatch, or Yake that would discourage a
person of ordinary skill in the art from providing bends on the lengthwise
wires twice the width of the crosswires.
In addition, we are not persuaded by the Appellant’s contention that
the prior art does not suggest a cable conduit having bends in lengthwise
wires whereby these bends correspond to the thickness of the crosswires.
(App. Br. 9.) The rejection is based on a combination of references and one
cannot prove unobviousness by arguing that one reference does not teach the
claimed subject matter.
Accordingly, we will sustain the Examiner’s rejection of claim 4.
Claims 5 and 6
Claim 5 depends from claim 1 and the Examiner found Yake teaches
providing the bends in the lengthwise wires have a width greater than twice
the thickness of the crosswire wires and provides a reason to combine Yake
with Simon and Hatch. (Answer 5-6.) We agree with the Examiner finding.
(Fact 4.) We also find that the Examiner has articulated an apparent reason
with logical underpinning for combining Yake with Simon and Hatch.
Concluding the establishment of a prima facie case of obviousness by
the Examiner, we turn now to the Appellant arguments against the prima
facie case of obviousness.
In addition to our reasons supra with respect to claims 1 and 4, we are
not persuaded that Yake’s wires not laying in substantially the same plane
shows an error in the Examiner’ rejection. (See App. Br. 9.) While it is true
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that Yake’s lengthwise wires do not lie in substantially the same plane, a
limitation of “substantially the same plane” is not claimed. As such, the
argument is not commensurate in scope to what is claimed and the argument
argues Yake individually instead of what the combination of Simon, Hatch,
and Yake teach to one skilled in the art.
Accordingly, we will sustain the Examiner’s rejection of claims 5 and
6.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-3 as being unpatentable over Simon and Hatch.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 4-6 as being unpatentable over Simon, Hatch, and
Yake.
DECISION
The Examiner’s decision to reject claims 1-3 as being unpatentable
over Simon and Hatch is affirmed.
The Examiner’s decision to reject claims 4-6 as being unpatentable
over Simon, Hatch, and Yake is affirmed.
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) (2007).
AFFIRMED

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JRG

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