Ex parte Hawkings

Board of Patent Appeals and Interferences

Oct 10, 1997

08059043 (B.P.A.I. Oct. 10, 1997)

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not binding precedent of the Board.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
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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
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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
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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
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Sheri M. Novack
Raychem Corporation
Mail Stop 120/6600
300 Constitution Drive
Menlo Park, CA 94025