Ex Parte Feiner

Patent Trial and Appeal Board

Jan 9, 2018

13205188 (P.T.A.B. Jan. 9, 2018)

United States Patent and Trademark Office
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.
13/205,188 08/08/2011 Brian A. Feiner 262-10915 1446
77741 7590 01/11/2018
Rrannnn Sowers; Rr rYarraft PP
EXAMINER
47 South Meridian Street PAGHADAL, PARESH H
Suite 400
Indianapolis, IN 46204 ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
01/11/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket @ bscattorney s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN A. FEINER
Appeal 2017-003899
Application 13/205,188
Technology Center 2800
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 8—12 and 24—30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Specification filed August 8, 2011
(“Spec.”), the Final Office Action mailed July 2, 2015 (“Final Act.”), the
Appeal Brief filed November 30, 2015 (“Br.”), and the Examiner’s Answer
to Appeal Brief mailed November 3, 2016 (“Ans.”).
2 Appellant identifies the real party in interest as Brian A. Feiner. Appeal
Br. 3.
Appeal 2017-003899
Application 13/205,188
The subject matter on appeal relates to a bi-directional cable guide.
Spec. 3; Fig. 1A of Appellant’s application. Claim 8, reproduced below
from the Claims Appendix of the Appeal Brief, is illustrative of the claims
on appeal.
8. A cabling and wire guiding device comprising:
an elongated structural member defining a first surface and
a second spaced, generally parallel surface;
a generally toroidal aperture extending through the
elongated structural member and having a first end and an
oppositely disposed second end;
wherein the generally toroidal aperture further comprises:
a first rounded end portion connecting a first end of the
aperture to the first surface;
a second rounded end portion connecting a second end of
the aperture to the second surface; and
a generally cylindrical central portion connected to the
first and second rounded ends;
wherein any cable extending through the generally
toroidal aperture may move freely back and forth therethrough;
and
wherein any cable extending through the aperture is
supported by the central portion.
Br. 18 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 8, 9, 11, 12, 24—26, and 28—30 under pre-AIA
35 U.S.C. § 102(b) as anticipated by Loveall et al. (US 6,119,305, issued
September 19, 2000) (“Loveall”);
2
Appeal 2017-003899
Application 13/205,188
Rejection 2: Claim 10 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Loveall; and
Rejection 3: Claim 27 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Loveall in view of Trimble et al. (US 3,518,359, issued
June 30, 1970) (“Trimble”), and Van Pelt et al. (US 7,786,391 Bl, issued
August 31, 2010) (“Van Pelt”). Final Act. 2—8.
DISCUSSION
Rejection 1
The dispositive issue for this appeal is: Did the Examiner reversibly
err in finding that Loveall’s device, which includes a metal insert having a
toroidal aperture, allows a cable to freely move therethrough such that it
would be capable of performing all the functions listed in claims 8, 24, and
26? See claim 8 (requiring that any cable extending through the toroidal
aperture “may move freely back and forth therethrough”), claim 24
(requiring that a cable may “freely move through the aperture”), and
claim 26 (requiring that the at least one toroidal aperture “allows cables to
pass back and forth therethrough”). We answer this question in the negative.
After review of the respective positions provided by Appellant and the
Examiner, we disagree with Appellant that the Examiner has not met the
burden of establishing anticipation in this case for the following reasons.
Appellant does not dispute the Examiner’s finding that Loveall
discloses the structural limitations of claim 8, 24, and 26. See generally
Br. 10-16. Loveall discloses sealing elements, such as grommets, that
maintain electrical conductivity between a tube or cable and a structure
through which the tube or cable passes, such as a metal plate or bulkhead.
3
Appeal 2017-003899
Application 13/205,188
Loveall 1:11—19. One embodiment of Loveall’s grommet 102 is depicted in
Figure 8, reproduced below.
Figure 8 is a cross-section of a grommet according to one embodiment
of Loveall’s invention incorporating slope outer 104 and inner surface 106.
Grommet 102 depicted in Loveall’s Figure 8 includes metal
insert 138, which is also shown in Loveall’s Figure 11, depicted below.
FIG.il
Figure 11 is a cross section view of metal insert 138 for use with
Loveall’s grommet 102 depicted in Loveall’s Figure 8.
4
Appeal 2017-003899
Application 13/205,188
The Examiner principally relies on Loveall’s Figure 11 as disclosing a
guiding device as recited in claims 8, 24, and 26. The Examiner finds, and
Appellant does not dispute, that LovealTs Figure 11 depicts:
(1) elongated structural member 138 defining first surface 138 and
second spaced, generally parallel surface 124;
(2) a generally toroidal aperture around axis 158 extending through
elongated structural member 138 and having a first end (first end
of feed through hole at top surface of 138) and an oppositely
disposed second end (second end of feed through hole at surface of
124);
(3) the generally toroidal aperture further comprises: (a) a first
rounded end portion connecting a first end of the aperture to the
first surface (first rounded end at first end of feed through hole at
top surface of 138), a second rounded end portion connecting a
second end of the aperture to the second surface (second rounded
end at second end of feed through hole at 124), and a generally
cylindrical central portion connected to the first and second
rounded ends (cylindrical portion between first end of feed through
hole at top surface of 138 and second end of feed through hole at
124); and
(4) any cable extending through the aperture is supported by the
central portion.
Compare Final Act. 2 m?<2Foveall 11:43—67, 12:65—67, Fig. 11 with Br. 10-
16. Additionally, with regard to claim 26, the Examiner finds, and
Appellant does not dispute, that Foveall discloses that the second (rounded)
5
Appeal 2017-003899
Application 13/205,188
end portion is “free to deform.” Compare Final Act. 5 and Loveall 8:26—27,
11:43—67, and Fig. 11 with Br. 10—16.
In addition to the above structural limitations, claims 8, 24, and 26
include a functional limitation regarding a cable moving freely through the
claimed aperture. See claim 8 (requiring that any cable extending through
the toroidal aperture “may move freely back and forth therethrough”),
claim 24 (requiring that a cable may “freely move through the aperture”),
and claim 26 (requiring that the at least one toroidal aperture “allows cables
to pass back and forth therethrough”). With regard to this functional
limitation, the Examiner finds that because Loveall’s device includes all the
claimed structural limitations, it would inherently be capable of performing
the functional limitations required by claims 8, 24, and 26, i.e., allowing a
cable to move freely through the aperture. Final Act. 3—5; Ans. 4. We
discern no error in the Examiner’s findings.
To satisfy the functional limitations in an apparatus claim, the prior art
apparatus must be capable of performing the claimed function. See, e.g.,
In re Schreiber, 128 F.3d 1473, 1477—78 (Fed. Cir. 1997). The Examiner’s
findings that Loveall discloses claims 8, 24, and 26’s structural limitations is
supported by a preponderance of the evidence. See Loveall 8:7—37, 10:35—
40, 11:43—67, 12:65—67; Figs. 8, and 11. Appellant does not argue that
Loveall’s grommet, which can include a metal insert as depicted in Figures 8
and 11 shown above, has any obstruction that would prevent a cable from
freely moving through its central bore 112. Compare Loveall 8:7—37,
10:35—40, 11:43—46; Figs. 8, 11 with Br. 10—16. Absent an obstruction, the
question of whether a cable may freely move through an aperture depends
on the size of the cable. The Examiner and Appellant do not identify any
6
Appeal 2017-003899
Application 13/205,188
disclosure in Loveall that requires a particular sized cable. Thus, on this
record, we are not persuaded that the Examiner erred in finding that a cable,
for example a cable with a diameter smaller than the diameter of the central
bore of Loveall’s grommet (Fig. 8, 112), would be capable of moving freely
back and forth therethrough.
Based on the foregoing, the weight of the evidence supports the
Examiner’s finding of anticipation. Therefore, the 35 U.S.C. § 102(b)
rejection based on Loveall is sustained.
Rejections 2 & 3
Claim 10 depends from independent claim 8, and claim 27 depends
from independent claim 26. Appellant does not present any additional
arguments as to separately rejected claims 10 and 27, and essentially argue
that none of the cited references disclose the claimed rounded ends allowing
a cable to freely move back and forth therethrough. See Br. 14—15.
As with Rejection 1, the Examiner finds, and Appellant does not
dispute, that Loveall discloses all the structural limitations recited in
independent claims 8 and 26. Compare Final Act. 2—6; Loveall 8:7—37,
10:35—40, 11:43-67, 12:65-67; Figs. 8, and 11 with Br. 10-16. The
Examiner finds that because Loveall’s device includes all the claimed
structural limitations, it would inherently be capable of performing the
functional limitations required by claims 10 and 27, i.e., allowing a cable to
move freely through the aperture. See Final Act. 2—6. For the reasons
discussed above with respect to Rejection 1, we discern no error in the
Examiner’s findings. Therefore, the 35 U.S.C. § 103(a) rejections over
Loveall alone and further in view of Trimble and Van Pelt are sustained.
7
Appeal 2017-003899
Application 13/205,188
DECISION
For the above reasons, the rejections of claims 8—12 and 24—30 are
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).
AFFIRMED
8