Ex Parte Eisenhut et al

Patent Trial and Appeal Board

Dec 27, 2012

11294332 (P.T.A.B. Dec. 27, 2012)

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.
11/294,332 12/06/2005 Eric D. Eisenhut NSR-002 3864
21884 7590 12/27/2012
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
OCHYLSKI, RYAN M
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
12/27/2012 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 ERIC D. EISENHUT and BENJAMIN J. ACHE
______________

Appeal 2011-010238
Application 11/294,332
Technology Center 1700
_______________

Before CHARLES F. WARREN, JEFFREY T. SMITH and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2011-010238
Application 1//294,332

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Appellants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-20 in the Office Action mailed July 7,
2010. We have jurisdiction under 35 U.S.C. § 6.
We reverse the decision of the Primary Examiner.
Appellants request review of the rejection of claims 1-5, 7 and 15
which stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Finn (US 3,134,008 issued May 19, 1964), the Potting Solutions webpage
(hereinafter webpage) (Potting Solutions, UL Potting System,
http://web.archive.org/web/20030201 061241
/http://www.pottingsolutions.com/my+site/Suppliers/EP+low+cost.htm) and
Osterwalder (US 6,102,696 issued Aug. 15, 2000), advanced on appeal by
the Examiner. App. Br. 7; Ans. 5. Appellants also request review of the
separate rejections of claims 3 and 7 under 35 U.S.C. § 103(a) based on
Finn, the webpage, Osterwalder and Bilanin (US 6,835,679 B2 issued Dec.
28, 2004); of claims 6 and 8 under 35 U.S.C. § 103(a) based on Finn, the
webpage, Osterwalder and Mason (US 3,940,884 issued Mar. 2, 1976); of
claims 9-13, 19 and 20 under 35 U.S.C. § 103(a) based on Finn, the
webpage, Osterwalder and Rechmann (US 6,065,965 issued May 23, 2000),
of claims 14, 16 and 17 under 35 U.S.C. § 103(a) based on Finn, the
webpage, Osterwalder and Rosenfeld (US 5,856,425 issued Jan. 5, 1999)
and of claim 18 under 35 U.S.C. § 103(a) based on Finn, the webpage,
Osterwalder, Rosenfeld and Catena (US 6,541,537 B1 issued Apr. 1, 2003).
App. Br. 7; Ans. 8-11.

Appeal 2011-010238
Application 1//294,332

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OPINION
We agree with Appellants that the Examiner erred in maintaining the
rejection of representative claim 1 under § 103(a) over Finn, the webpage
and Osterwalder on the basis that Finn does not disclose the basic steps of
forming an end cap on a conduit as required by the subject matter of
independent claim 1. App. Br. 10.
Appellants argue, and we agree, that Finn does not disclose the step of
cleaning an inside surface of an exposed end of a conduit upon which the
end cap will be formed. App. Br. 10. The Examiner has not identified a
section of Finn that supports the position (Ans. 14) that inserting a flexible
retaining washer and/or introducing the potting compound resin into the
metal sleeve meets the claimed step of cleaning the inside surface of an
exposed end of a conduit. The Examiner’s position is speculative at best.
We also agree with Appellants that Finn’s metal sleeve is not a
conduit. Id. Appellants describe the conduits as carrying various types of
cables that run through the exterior of a building. Spec. 2. Contrary to the
Examiner’s reasoning (Ans. 13), Finn’s metal sleeve cannot be considered a
conduit in this context.
In view of the above, we are of the opinion the Examiner has not
adequately explained how a method of forming a resinous material around a
capillary tube is applicable or relevant to a method of making an end cap.
Thus, the Examiner has not carried the burden of establishing a prima facie
case of obviousness in the first instance and, accordingly, we reverse the
rejections of claims 1-20 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED
Appeal 2011-010238
Application 1//294,332

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