Ex parte Jones

Board of Patent Appeals and Interferences

Jul 31, 2001

08541135 (B.P.A.I. Jul. 31, 2001)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MICHAEL G. JONES
________________
Appeal No. 1999-0431
Application 08/541,135
________________
ON BRIEF
________________
Before THOMAS, KRASS and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-21, which constitute
all the claims in the application.
The disclosed invention pertains to a protective cover
for a cable connector. More particularly, the protective
cover uses a material which is expandable by contact with an
Appeal No. 1999-0431
Application 08/541,135
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expanding chemical and shrinkable upon removal of the
chemical.
Representative claim 1 is reproduced as follows:
1. A protective cover for a cable connector, said
connector being affixed to an end of a cable and having an
outside diameter greater than an outside diameter of said
cable, said cover comprising:
an outer elongated annular sleeve formed from a material
expandable by contact with an expanding chemical and
shrinkable upon removal of said contact with said chemical;
an inner elongated annular sleeve formed from a material
expandable by contact with an expanding chemical and
shrinkable upon removal of said contact with said chemical,
said inner elongated annular sleeve disposed within said outer
sleeve;
said cover with said sleeves in chemically expanded state
being moveable into disposition covering said connector and a
portion of said cable attached thereto, with said inner sleeve
covering at least said portion of said cable but not said
connector;
whereby when said cover is so disposed over said
connector and said portion of said cable and removed from
contact with said chemical, said chemical evaporates from said
sleeves and said sleeves thereupon shrink to diameters wherein
wall thickness of said inner sleeve fills the space between
the outside diameters of said connector and said attached
portion of said cable sufficiently to permit shrinkage of said
outer sleeve to form a tightly fitted and substantially
immovable covering secured around said connector and at least
a portion of said inner sleeve, thereby preventing said
connector from coming into contact with adverse ambient
components.
The examiner relies on the following references:
Appeal No. 1999-0431
Application 08/541,135
Although the “Issues” section of the examiner’s answer1
has moved claim 14 from the second group of claims to the
first group of claims, the “Grounds of Rejection” section of
the answer rejects the claims as indicated in this decision.
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Clemence et al. (Clemence) 4,419,322 Dec. 06, 1983
Guzay, Jr. (Guzay) 4,506,430 Mar. 26, 1985
Feitzelmayer 4,976,796 Dec. 11, 1990
Claims 1-21 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Guzay in view of
Clemence with respect to claims 1-11, and Feitzelmayer is
added with respect to claims 12-21 . 1
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
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Application 08/541,135
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It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 1-21. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
Appeal No. 1999-0431
Application 08/541,135
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664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
We consider first the rejection of claims 1-11 based
on the teachings of Guzay and Clemence. These claims stand or
fall together as a single group [brief, page 7]. With respect
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Application 08/541,135
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to representative, independent claim 1, the examiner cites
Guzay as teaching an elastic cover for a cable connector which
has an inner sleeve and an outer sleeve. The examiner notes
that Guzay does not teach the sleeves being expandable by
contact with an expanding chemical and shrinkable upon removal
of the chemical. The examiner cites Clemence as teaching the
cold shrinking of elastomeric materials by allowing a swelling
agent to vaporize. The examiner finds that it would have been
obvious to the artisan to apply the sleeves of Guzay to a
cable connection using a volatile swelling agent and allowing
its evaporation to shrink the sleeves because Clemence teaches
this technique for adhering a cover to a cable connection
[answer, pages 4-5].
Appellant argues that the examiner has selectively
chosen portions from Guzay and Clemence and ignored the
complete teachings of these references. Appellant argues that
the teachings of Guzay and Clemence are incompatible because
Guzay relates to mechanical or physical stretching of material
while Clemence relates to a chemical swelling process.
Appellant argues that combining the teachings of Guzay and
Clemence would render both covers ineffective for their
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Application 08/541,135
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intended uses [brief, pages 8-14]. The examiner disagrees
with these arguments [answer, pages 6-7].
We agree with the position argued by appellant.
Although Guzay recognizes that covers using physical
elasticity may have uses in common with elastic sleeves which
are chemically shrinkable, we can find no reason why the
artisan would start with the two sleeves of Guzay if the
covering were to be done using a chemical shrink. The cover
in Guzay uses an inner sleeve and an outer sleeve only to
permit the outer sleeve to be pulled relative to the inner
sleeve to achieve its final form. This final form does not
have two sleeves. There would be no point to starting with
two sleeves in Guzay if the sleeves are not going to be pulled
relative to each other. Since a chemical shrink cover would
have no use for the sleeves of Guzay, we can find no reason
for using the two sleeves of Guzay in the manner proposed by
the examiner. The most that might be suggested by Guzay and
Clemence is that a single sleeve of shrinkable material could
be used in place of Guzay’s sleeve 12 in its final form as
shown in Figures 8 and 11.
Thus, we agree with appellant that the invention of
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Application 08/541,135
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claim 1 can only result from the teachings of Guzay and
Clemence if one is attempting to reconstruct the claimed
invention in hindsight. Such a hindsight reconstruction of
the invention is improper. Therefore, we do not sustain the
rejection of claims 1-11 as formulated by the examiner.
We now consider the rejection of claims 12-21 based on
the teachings of Guzay, Clemence and Feitzelmayer. These
claims stand or fall together as a single group [brief, page
7]. The examiner cites Feitzelmayer to teach certain details
of the claimed inner and outer sleeves. The examiner
acknowledges that Feitzelmayer was not cited to overcome any
deficiencies in the combination of Guzay and Clemence.
Appellant argues that Feitzelmayer has no relationship to the
claimed invention and does not overcome the deficiencies in
the basic combination of Guzay and Clemence.
We agree with appellant. Since Feitzelmayer does not
overcome the basic deficiencies in the combination of Guzay
and Clemence discussed above, we do not sustain the rejection
of claims 12-21 for the same reasons discussed above with
respect to claim 1.
In summary, we have not sustained either of the
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Application 08/541,135
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examiner’s rejections of the appealed claims. Therefore, the
decision of the examiner rejecting claims 1-21 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
ERROL A. KRASS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JERRY SMITH )
Administrative Patent Judge )
Appeal No. 1999-0431
Application 08/541,135
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Brown, Martin, Haller and McClain
1660 Union Street
San Diego, CA 92101
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