Ex parte HawkingsDownload PDFBoard of Patent Appeals and InterferencesOct 10, 199708059043 (B.P.A.I. Oct. 10, 1997) Copy Citation Application for patent filed May 7, 1993.1 1 THIS OPINION WAS NOT WRITTEN FOR PUBLICATION The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board. Paper No. 14 UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte ROBERT M. HAWKINGS __________ Appeal No. 96-0043 Application 08/059,0431 __________ ON BRIEF __________ Before CALVERT, CAROFF and PAK, Administrative Patent Judges. CALVERT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 2, Appeal No. 96-0043 Application 08/059,043 A translation of this reference, prepared for the2 Patent and Trademark Office, is enclosed herewith. 2 5 to 10 and 12 to 14, all of the claims remaining in the application. Claim 1 defines the subject matter in issue as: 1. A heat recoverable pre-formed article comprising: a substantially hollow enlarged section for receiving a wire bundle to be sealed, said enlarged section having a slit therein; a pair of tab portions disposed adjacent to each other and extending outwardly from said slit so as to be substantially aligned with each other; wherein said tab portions are biased toward each other such that upon insertion of the wire bundle into said enlarged section, said tab portions are spread apart and return to their original adjacent, biased position upon snapping of the wire bundle into said enlarged section. The references relied upon by the examiner in the final rejection are: Kunze 4,280,258 Jul. 28, 1981 Peacock 4,900,596 Feb. 13, 1990 German patent (Sachsse) 4,032,376 Apr. 16, 19922 Appeal No. 96-0043 Application 08/059,043 3 Two additional references applied below in rejections pursuant to 37 CFR § 1.196(b) are: Cook et al. (Cook) 3,086,242 Apr. 23, 1963 Ellis 3,455,336 Jul. 15, 1969 Claims 1, 2, 5-10 and 12-14 stand finally rejected under 35 U.S.C. § 103 as unpatentable over Peacock alone, or in view of Kunze or Sachsse. Considering first the rejection of claim 1 as unpatentable over Peacock, the examiner finds that Peacock discloses (answer, pages 3 and 4): a heat recoverable pre-formed article comprising a substantially hollow enlarged section for receiving a wire bundle, with this enlarged section having a slit therein. See Figures 1, 3, and 11. As shown in Figure 1, the article includes a pair of tab portions disposed adjacent each other and extending outwardly from the slit so as to be aligned with each other. The shape of the article inherently biases the tabs toward one another in the manner claimed, although the reference does not discuss this. The Peacock article is formed of a cross linked polymer which can have its interior surface coated with a hot melt or other suitable adhesive. At column 9, lines 47 to 49 the reference appears to teach that the slit open composite can have its edge structure formed into a variety of conventional shapes, such as are claimed here. Appeal No. 96-0043 Application 08/059,043 4 Appellant's only argument with regard to this rejection is that the edges of the Peacock article are not biased toward each other, mechanical joining means being required to hold the edges together. We agree with the examiner that the fact that Peacock discloses mechanical joining means (e.g., channel 3) does not mean that edges 2 of Peacock's sleeve are not “biased toward each other,” as claimed, since the claim language “does not preclude the presence of a mechanical fastener” (answer, page 5). Also, we agree with the examiner that “the term bias[ed] means only that the edges or tabs tend toward each other” (id.), this interpretation being consistent with the definition of this term at page 2, lines 17 to 19 of the specification (emphasis added): The term “biased” as used herein merely implies a tendency of the planar sections to return to their position adjacent to each other. Our agreement with the examiner notwithstanding, however, we will not sustain the rejection of claim 1, for it does not appear that the edges 2 of the Peacock sleeve would be biased towards each other at all. The reason for this finding is the fact that Peacock's sleeve is not made from an article having Appeal No. 96-0043 Application 08/059,043 5 any kind of preformed tubular shape, but rather is made from a fabric. The fabric would have no tendency of its own to assume a circular shape (i.e., to bias the edges toward each other), but rather is a flexible, flat material which is wrapped around the pipe or cable and its free edges, containing closure members 5, are then secured together by a channel 3 or other means. The lack of bias is illustrated by Peacock's disclosure that the sleeves may be produced from the (flat) fabric as it comes off the loom (see Fig. 4 and column 15, lines 44 to 66). The examiner refers to column 9, lines 47 to 49, as appearing to teach forming the edge structure of “the slit open composite” into a variety of shapes. We do not find any such teaching in these lines, which constitute part of a disclosure of various means (such as stitches or staples) for joining the edges. In particular, we find no disclosure of a “slit open composite;” while there is reference to making complex tubular articles from simple tubular articles, this would appear to describe the use of a flattened tube, as disclosed at column 11, lines 2 to 9, and shown in Fig. 6. Appeal No. 96-0043 Application 08/059,043 6 The secondary references disclose sleeves of shrinkable material with projection-and-recess means to join the free edges of the sleeve. We do not find any disclosure in these references which would suggest to one of ordinary skill in the art such a modification of Peacock as would meet all the limitations of claim 1. The rejection of claim 1 will therefore not be sustained. Likewise, the rejection of claims 2, 5 to 10 and 12 to 14, all of which are more limited in scope than claim 1, will not be sustained. Rejections Pursuant to 37 CFR § 1.196(b) Pursuant to 37 CFR § 1.196(b), we enter the following rejections: 1. Claims 1, 2 and 6 to 10 are rejected under 35 U.S.C. § 102(b) as anticipated by Ellis. The Ellis patent discloses a sleeve for a cable or pipe. Referring particularly to Figs. 6 and 7, sleeve 50 is made from a molded tube of heat recoverable material having a circular enlarged section and a rail 58 which is split longitudinally at 62, thus forming two outwardly extending tab portions. Since the sleeve is made from a preformed tube of the same material as that disclosed Appeal No. 96-0043 Application 08/059,043 7 by appellant, and the rail is cut or slit along its length (column 2, line 69; column 3, line 5), similar to the manner in which appellant's sleeve may be made (as disclosed at page 6, lines 4 to 7 of the specification), the tabs of Ellis would be inherently “biased toward each other” as recited in claim 1. As discussed previously, the term “biased” is broadly defined in the specification; it does not exclude the presence of some additional means for holding the tabs together, such as channel 60 of Ellis, but merely that the tabs have a “tendency ... to return to their position adjacent to each other” (page 2, lines 18 and 19). As for claim 2, tabs 58 of Ellis have a portion, next to the enlarged section, which is “substantially planar.” The adhesive recited in claim 7 and crosslinked polymer recited in claim 8 are disclosed by Ellis at column 5, lines 35 to 37, and column 2, lines 50 to 53, respectively. 2. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Ellis in view of Cook. Ellis discloses at column 2, lines 47 to 50, that examples of heat recoverable materials usable for his invention may be found in the Cook patent. It therefore would have been obvious for one of ordinary skill in Appeal No. 96-0043 Application 08/059,043 8 the art to make the Ellis sleeve out of a polyolefin material as disclosed by Cook at column 1, lines 17 to 29. Conclusion The examiner's decision to reject claims 1, 2, 5 to 10 and 12 to 14 is reversed. Claims 1, 2 and 6 to 9 are rejected pursuant to 37 CFR § 1.196(b). Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date of the decision. 37 CFR § 1.197. Should appellant elect to have further prosecution before the examiner in response to the new rejections under 37 CFR § 1.196(b) by way of amendment or showing of facts, or both, not previously of record, a shortened Appeal No. 96-0043 Application 08/059,043 9 statutory period for making such response is hereby set to expire two months from the date of this decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR § 1.136(a). REVERSED, 37 CFR § 1.196(b) IAN A. CALVERT ) Administrative Patent Judge) ) ) ) MARC L. CAROFF ) BOARD OF PATENT Administrative Patent Judge) APPEALS AND ) INTERFERENCES ) ) CHUNG K. PAK ) Administrative Patent Judge) Appeal No. 96-0043 Application 08/059,043 10 Sheri M. Novack Raychem Corporation Mail Stop 120/6600 300 Constitution Drive Menlo Park, CA 94025 Copy with citationCopy as parenthetical citation