Ex Parte Ehmann et al

Board of Patent Appeals and Interferences

Mar 18, 2010

10149090 (B.P.A.I. Mar. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRUNO EHMANN and DETLEV BETHKE
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Appeal 2009-000178
Application 10/149,090
Technology Center 3600
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Decided: March 18, 2010
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Before LINDA E. HORNER, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE
Bruno Ehmann and Detlev Bethke (Appellants) seek our review under
35 U.S.C. § 134 (2006) of the Examiner’s decision rejecting claims 19-21,
23-29, and 31-35, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b) (2006).
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SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellants’ claimed invention is to a cable grommet that is used to
attach a wire through a connector. Spec. 1, para. 0001. Claim 19,
reproduced below, is representative of the subject matter on appeal.
19. A cable grommet, comprising:
a frame including first and second housing portions
connectable to one another, at least one of said first and second
housing portions including at least one opening having
opposing, substantially straight sides;
at least one flexible strain relief member including a
periphery, a cable opening adapted to receive one or more
cables, and a slit connecting at least a portion of said periphery
with said cable opening whereby one or more cables may be
inserted through said slit and into said cable opening;
each said strain relief member insertable into a respective
said opening in a friction-fit manner with at least a portion of
said periphery of said strain relief member engaging said sides
of said opening to retain each said strain relief member within a
respective said opening, said second housing member
subsequently attachable to said first housing member to capture
each said strain relief member therebetween:
whereby because the opposing sides of the opening are
straight, they will exert a friction lock on the strain relief
member even when the strain relief member is only partially
seated in the opening.
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THE EVIDENCE
The Examiner relies upon the following evidence:
Morehouse US 2,417,260 Mar. 11, 1947
Magnussen, Jr. US 4,199,070 Apr. 22, 1980
Funk ‘202 (as translated) DE 44 34 202 A1 Sep. 21, 1995
Funk ‘747 (as translated) WO 99/06747 Feb. 11, 1999

THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 19-21, 23-26, and 31-35 under
35 U.S.C. § 103(a) as being unpatentable over Funk ‘747, Morehouse,
and Magnussen.
2. The Examiner rejected claims 27-29 under 35 U.S.C. § 103(a) as
being unpatentable over Funk ‘747, Morehouse, Magnussen, and
Funk ‘202.
ISSUE
The Examiner found Funk ‘747 discloses all the limitations of the
cable grommet of claims 19 and 34 except that it does not disclose the strain
relief member having a slit and the frame with at least one opening having
opposing substantially straight sides. Ans. 4-5. The Examiner found that
Morehouse teaches it was known to have a strain relief member having a
slit. Ans. 5-6. The Examiner further found that Magnussen teaches that it
was known to have a frame member having first and second housing
portions with at least one opening having opposing substantially straight
sides, and concluded that it would have been obvious to have modified Funk
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to make the frame openings with opposing substantially straight sides “since
changing the shape of a component is well known in the art without
destroying the function of the invention or producing any unexpected
results.” Ans. 6. The Examiner further found that Magnussen provides the
motivation for such a modification by stating “a square cross section tube
132 or other article, may be closely received in two interface openings 130
and 131.” Ans. 6.
Appellants contend that the combination of Funk ‘747, Morehouse,
and Magnussen would not result in the claimed cable grommet, in which the
opposing, substantially straight sides in the opening of the frame would exert
a friction lock on the strain relief member even when the strain relief
member is only partially seated in the opening. App. Br. 11. In particular,
Appellants argue that the field of modular storage racks discussed in
Magnussen is not analogous art to the field of cable grommets and that
neither Magnussen nor Funk ‘747 provides a motivation to combine the
devices disclosed therein. App. Br. 12.
The issue presented by this appeal is:
Would the combination of Funk ‘747, Morehouse, and Magnussen
have led one having ordinary skill in the art at the time of the invention to a
cable grommet having an opening in one portion of a frame, where the
opening has opposing, substantially straight sides that will exert a friction
lock on the strain relief member even when the strain relief member is only
partially seated in the opening, as called for in independent claims 19 and
34?
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FINDINGS OF FACT
We find that the following enumerated findings 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).
1. Funk ‘747 discloses an assembly 10 for guiding cables or lines
through walls, the assembly 10 consisting of a body 8 with two
parts 12, 14, each part having four semi-circular halves of openings
20, 22, 24, 26. Funk ‘747, p. 6, ll. 19-22; figs 2, 3.
2. Funk ‘747 discloses four rubber elements 40, 42, 44, 46 are
arranged in the body 8 and provide a connection of the cables to
the body 8. Funk ‘747, p. 7, ll. 1-4.
3. Funk ‘747 discloses that each rubber element 40, 42, 44, 46 has
two end parts 90, 92, which are configured as unions 89, 91, 93, 95
with radially-outwardly open grooves 70, 72. Funk ‘747, p. 9, ll.
15-16; p. 10, ll. 3-4; fig. 3.
4. Funk ‘747 discloses that each rubber element “can be friction-
locked and/or form-fittingly clamped between the two parts and
can thus be fixed in its position.” Funk ‘747, p. 4, ll. 17-20.
5. The semi-circular halves of each opening 20, 22, 24, 26 do not
have opposing, substantially straight sides.
6. Magnussen discloses modular rack components that may be
interconnected to form openings to receive and support elongated
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articles, such as tubes and other members, in a number of different
arrangements. Magnussen, col. 1, ll. 9-14.
7. Magnussen discloses one embodiment of modular rack
components having openings adapted to receive and support a
square cross section tube. Magnussen, col. 3, ll. 39-50; figs. 5, 6.
8. Magnussen does not disclose a strain relief member insertable into
the openings of the modular rack components.

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., 550 U.S. 398, 406
(2007).
In KSR, the Supreme Court emphasized that “the principles laid down
in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
KSR, 550 U.S. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court explained:
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
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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.
Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.

ANALYSIS
Funk ‘787 discloses strain relief members 40, 42, 44, 46 that fit into
semicircular openings 20, 22, 24, 26 in each part 12, 14 of a body 8 and “can
be friction-locked and/or form-fittingly clamped between the two parts [12,
14] and can thus be fixed in its position” (Facts 1-4). The semi-circular
halves of each opening 20, 22, 24, 26 do not have opposing, substantially
straight sides (Fact 5). While Magnussen discloses a modular rack
component having an opening with opposing, substantially straight sides,
Magnussen is related to modular racks adapted for supporting elongated
articles, such as tubes, of various shapes, and does not disclose inserting a
strain relief member into the openings of the modular rack components
(Facts 6-8). Further, while Magnussen discloses one embodiment of
modular rack components having openings adapted to receive and support a
square cross section tube (Fact 7), this disclosure is merely teaching that one
can make the opening in the same shape as the tube to be supported. As
such, the function of the square openings in Magnussen’s modular rack
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components is to support a square cross section tube, and not to engage a
strain relief member. Thus, the Examiner’s proposed use of Magnussen’s
square openings in place of Funk’s circular openings is more than merely the
predictable use of prior art elements according to their established functions.
Absent hindsight, we fail to see how the disclosure of square openings in the
modular rack components of Magnussen would have motivated one having
ordinary skill in the art of cable grommets to modify the shape of the
openings in Funk ‘747 to have opposing, substantially straight sides, as
claimed.
CONCLUSION
The combination of Funk ‘747, Morehouse, and Magnussen would
not have led one having ordinary skill in the art at the time of the invention
to a cable grommet having an opening in one portion of a frame, where the
opening has opposing, substantially straight sides that will exert a friction
lock on the strain relief member even when the strain relief member is only
partially seated in the opening, as called for in independent claims 19 and
34.
DECISION
The decision of the Examiner to reject claims 19-21, 23-29, and 31-36
is REVERSED.
REVERSED

Vsh

Appeal 2009-000178
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