Ex Parte Jackson et alDownload PDFPatent Trial and Appeal BoardAug 12, 201612179725 (P.T.A.B. Aug. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/179,725 07/25/2008 28289 7590 08/16/2016 THE WEBB LAW FIRM, P,C ONE GATEWAY CENTER 420 FT. DUQUESNE BL VD, SUITE 1200 PITTSBURGH, PA 15222 FIRST NAMED INVENTOR Michael Jackson 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 4171-074506 8626 EXAMINER AKBASLI, ALP A ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 08/16/2016 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): patents@webblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL JACKSON and RAMESH RAJAGOP AL Appeal2014-007792 Application 12/179,725 1 Technology Center 3600 Before JENNIFER D. BAHR, WILLIAM A. CAPP, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael Jackson and Ramesh Rajagopal (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-16.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Robroy Industries, Incorporated. Appeal Br. 3 (filed October 9, 2013). 2 Claims 17-19 have been withdrawn from consideration. Final Act. 1. Appeal2014-007792 Application 12/179,725 INVENTION Appellants' "invention relates to hole plugs and, more particularly, to a fiberglass hole plug for sealing holes in electrical enclosures." Spec. i-f 1. Claims 1 and 10 are the only independent claims. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A hole plug for plugging a hole in a panel, said hole plug comprising: a cover having a first side and a second side and defining a peripheral edge; a threaded member having a first end and a second end, said second end of said threaded member attached to said second side of said cover and axially extending in a direction away from said cover, wherein a radial distance between said threaded member and the peripheral edge on said second side of said cover is less than or equal to one-half inch; and a fastener threadably attached to said threaded member, whereby rotation of said fastener adjusts a longitudinal distance between said fastener and said second end of said threaded member. Appeal Br. 15 (Claims App.) (emphasis added). REJECTIONS I. The Examiner rejected claims 1-13 under 35 U.S.C. § 103(a) as unpatentable over Baughman (US 4,588,103, iss. May 13, 1986). II. The Examiner rejected claims 14--16 under 35 U.S.C. § 103(a) as unpatentable over Baughman and Jackson (US 2004/0083593 Al, pub. May 6, 2004). 2 Appeal2014-007792 Application 12/179,725 Claims 1-7 and 9-13 ANALYSIS Rejection I Independent claims 1 and 10 require a hole plug with a cover and threaded member, "wherein a radial distance between said threaded member and the peripheral edge on said second side of said cover is less than or equal to one-half inch." Appeal Br. 15-16 (Claims App.). Appellants contend, "the Examiner failed to allege a prima facie case of obviousness of at least this feature of claims 1and10." Id. at 10. Dependent claims 2-7, 9, and 11-13 are allowable, according to Appellants, "by virtue of their dependency from claims 1 and 10." Id. at 12. Because the above limitation, which is common to both independent claims 1 and 10, is the only limitation relied upon by Appellants to argue patentability of claims 1-7 and 9-13, we select claim 1 as representative of the group, and claims 2-7 and 9-13 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). The Examiner relies on Figure 1 of Baughman, reproduced below, to show how the illustrated closure device discloses elements of claim 1. 3 Appeal2014-007792 Application 12/179,725 The above figure illustrates an exploded view of the Baughman closure device and its cooperating plug, which the Examiner annotated to identify and label specific parts. Final Act. 2; Ans. 2-3. The Examiner finds A, B, P, C, D, and 20 in the above figure disclose the elements of claim 1, except the figure "fails to disclose [a] specific radial distance X between said threaded member and said peripheral edge equating to one-half, [or less,] of an inch." Final Act. 2. Nevertheless, the Examiner concludes selecting a radial distance of "X" that is less than one-half of an inch would have been obvious to a skilled artisan at the time of the invention because the general conditions of the plug of claim 1 are disclosed in the prior art and discovering an optimum or workable range involves only routine skill in the art. Id. Appellants argue that the Examiner's obviousness conclusion is flawed "because the Examiner failed to show that the claimed feature of 'a radial distance between said threaded member and the peripheral edge' was recognized as a result-effective variable." Appeal Br. 10. We disagree because the Examiner states, "the radial distance is merely a variable that achieves a recognized result, such as a desired force required for a user to plug a hole .... " Final Act. 5. Baughman discloses the use of a gasket 38 disposed directly beneath the radial portion (see id. at 2) and implicitly teaches using the radial portion to apply a force to the gasket to create a seal: a rubber gasket (seal) 38 of an annular ring configuration is disposed directly beneath top portion 36. This seal provides a liquid-tight interface between the closure plug and the top surface of the metal boss. 4 Appeal2014-007792 Application 12/179,725 Baughman 5:47-51. As such, a rational connection exists between the Examiner's finding that the radial distance of the cover between said threaded member and the peripheral edge was a recognized means for applying a force to a gasket to create a seal and the Examiner's conclusion discovering an optimum or workable range for that distance involves only routine skill in the art. Appellants also argue that the tests described in the Specification provide evidence of unexpected results sufficient to overcome a prima facie case of obviousness. Appeal Br. 11-12. Appellants assert the testing results show a "substantial improvement in sealing capabilities when hand tightened in contrast to sealing capabilities of the prior art." Id. at 12. The only prior art configuration Appellants' test considers is a configuration similar to the one shown in Jackson. Moreover, rather than attributing the success of Appellants' device to the radial distance of the cover, Appellants attributed the improvement to the combination of using a gasket that extends across the entire surface of the cover's radial lip and the minimal length of that lip. Spec. i-f 3 6. Appellants failed to consider any other sealing configurations in their test, however. For example, Appellants did not consider a sealing configuration similar to the one disclosed in Baughman, which also includes a gasket 38 beneath and covering the underside of the cover's radial lip. See Baughman Figure 1. Furthermore, Appellants' tests also do not consider its own design, but with different covers having varying radial distances between the threaded member and the peripheral edge. Thus, Appellants' tests fail to show any direct correlation between the efficacy of the plug and the size of the cover's radial lip. As a result, the test has little, if any, persuasive value. 5 Appeal2014-007792 Application 12/179,725 Therefore, for the above reasons, we sustain the Examiner's obviousness rejection of claim 1 and, as a result, we also sustain the rejection of claims 2-7 and 9-13. Claim 8 Appellants argue separately for the patentability of dependent claim 8. Appeal Br. 12. Claim 8 requires the hole plug of claim 1 to further have a fastener with "a pair of tabs opposed to each other and integrally attached to both said first surface of said flange and said body, said tabs extending from said first end to said second end of said body and extending radially in a direction away from said center passageway." Id. at 16 (Claims App.). In the Final Office Action, the Examiner finds Baughman discloses the claimed fastener tabs because it teaches "a pair of tabs T opposed to each other in a direction away from the center." Final Act. 3 (referring to "T" in the above annotated Figure 1 of Baughman). Appellants assert the Examiner's rejection of claim 8 is improper because it fails to address how Baughman discloses all of the claimed tabs features. Id. at 12. We agree. In the Answer, the Examiner attempts to correct the deficiency by finding, tabs 'T' as shown in the Figure 1 above are considered opposing one another and integrally attached to first surface of said flange and body, since they extend outward. Furthermore, tabs 'T' from Figure 1 above also show tabs extending from said first end to second end of said body as does in the present invention. The tabs 'T' have a depth and extend from a first end (upper end as described by Appellant[ s]) to a second end (lower end as described by Appellant[ s ]), and that direction is away from the center passageway, since it is on a distal perimeter of the product. Ans. 5. Referring to annotated Figure 1 of Baughman, the Examiner, however, previously identified "E" as first end of the annular body and "F" 6 Appeal2014-007792 Application 12/179,725 as the second end; moreover, "G" was identified as the "first surface" of the flange and "H" as the "second surface." Final Act. 3. Because "T" is shown between and on the periphery of the first and second flange surfaces, and because first flange surface "G" is shown attached to the second end "F" of the annular body, a preponderance of the evidence fails to support the Examiner's finding Baughman discloses the claimed tab features of claim 8. Specifically, the Examiner has not explained clearly how Baughman's fastener discloses "a pair of tabs opposed to each other and integrally attached to both said first surface of said flange and said body, said tabs extending from said first end to said second end of said body." Therefore, we do not sustain the Examiner's rejection of claim 8. Rejection II Appellants argue claims 14--16 are patentable "for at least substantially the same reasons as explained ... with respect to claim 1 O" and because Jackson "fails to remedy the deficiencies of Baughman." Appeal Br. 13. For the reasons discussed above (see supra, Rejection I), we are not persuaded by Appellants' deficiency arguments regarding claim 10. Appellants do not make any other arguments of patentability for claims 14-- 16. Therefore, we sustain the Examiner's obviousness rejection of claims 14--16. SUMMARY We affirm the Examiner's decision to reject claims 1-7 and 9-16. We reverse the Examiner's decision to reject claim 8. 7 Appeal2014-007792 Application 12/179,725 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation