Ex Parte Malloy et al

Patent Trials and Appeals Board

May 28, 2019

13952441 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/952,441 07/26/2013
59582 7590 05/30/2019
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
Cassie M. Malloy
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.
710240-6574/S Y-42465 1084
EXAMINER
BLADES, JOHN A
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
D WPatents@dickinson-wright.com
tgood@dickinsonwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CASSIE M. MALLOY, JEAN FERRAND,
DANNYE. WINTERS, and TIANQI GAO
Appeal2018-008189
Application 13/952,441
Technology Center 1700
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1-3, 5, 8, 9, and 21. 3 We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
1 In this Decision, we refer to the Specification filed July 26, 2013 ("Spec.");
Final Office Action dated December 12, 2017 ("Final Act."); Appeal Brief
filed May 14, 2018 ("Appeal Br."); Examiner's Answer dated June 11, 2018
("Ans."); and Reply Brief filed August 13, 2018 ("Reply Br.").
2 Appellant is the Applicant, Federal-Mogul Powertrain, Inc. (Bib. Data
Sheet 1 ), which is also identified as the real party in interest (Appeal Br. 1 ).
3 According to the Appeal Brief, claims 4, 10-14, and 22-24 are canceled
and claims 6, 7, and 15-20 withdrawn. Appeal Br. 1-2.
Appeal2018-008189
Application 13/952,441
The Claimed Subject Matter
Appellant's disclosure relates to protective sleeves for providing
protection to elongate members contained therein, and more particularly to
wrappable protective sleeves and to their methods of construction and use.
Spec. ,r,r 1, 4; Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A wrappable protective sleeve for providing protection to
at least one elongate member contained therein, comprising:
a flexible textile wall having opposite inner and outer faces
bounded by opposite edges and opposite ends, said opposite
edges extending lengthwise generally parallel to one another
between said opposite ends;
a pair of adhesive layers bonded to said inner face in
spaced relation from one another, said adhesive layers extending
along said opposite edges between said opposite ends adjacent
said opposite edges; and
wherein said wall is reverse folded into a pre-use tubular
configuration with said inner face facing radially outwardly, and
a release paper is adhered to said pair of adhesive layers on said
inner face to maintain said wall in a pre-use state, wherein said
opposite ends, extending between said release paper, are devoid
of adhesive and said release paper is selectively removable to
wrap said wall into an in-use state about the at least one elongate
member with said inner face facing radially inwardly toward the
at least one elongate member.
Claims Appendix (Exhibit A, first page).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Alvarado us 4,581,027 Apr. 8, 1986
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Application 13/952,441
Oha
Miller
Clougherty
us 5,185,501
us 5,278,356
US 2007 /0295795 Al
The Rejections
Feb.9, 1993
Jan. 11, 1994
Dec. 27, 2007
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1-3, 5, 8, 9, and 21 are rejected under 35 U.S.C. § 103
as being unpatentable over Miller in view of Oha and further in view of
Alvarado ("Rejection 1 "). Final Act. 2.
2. Claims 1-3, 5, 8, 9, and 21 are rejected under 35 U.S.C. § 103
as being unpatentable over Miller in view of Oha and further in view of
Clougherty ("Rejection 2"). Final Act. 4.
OPINION
Reiection 1
The Examiner determines that the combination of Miller, Oha, and
Alvarado suggests a wrappable protective sleeve satisfying all of the
limitations of claim 1 and, thus, concludes the combination would have
rendered claim 1 obvious. Final Act. 2-3 ( citing Miller, Abstract, 2:53---60,
3:1-3, 3:54--57, Figs. 1--4; Oha, Figs. 7-9; Alvarado, Abstract, Figs. 1-8).
Appellant argues that the Examiner's rejection should be reversed
because Alvarado is non-analogous art. Appeal Br. 7-9; Reply Br. 5---6. In
particular, Appellant argues that Alvarado is not from the same field of
endeavor as the claimed wrappable protective sleeve because Alvarado is
directed to sanitary napkins and its teachings "center around improvements
to a sanitary napkin." Appeal Br. 7.
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Application 13/952,441
Appellant also argues that Alvarado is not reasonably pertinent to the
particular problem with which the inventors are involved because, among
other reasons, Alvarado is concerned with improving the ability to dispose
of a sanitary napkin (see Alvarado, 1: 12-28), which is "in no way similar" to
the problems in which the inventors are concerned (Appeal Br. 8).
We agree with Appellant's arguments in this regard. Two separate
tests define the scope of analogous prior art: ( 1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 2011)
(citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
We find that Alvarado is not from "the same field of endeavor" as the
claimed invention and thus, does not meet the first test. The claimed
invention is directed to wrappable protective sleeves for providing protection
to straight elongate members, for example, such as a wire harness or pipe.
Spec. ,r,r 1--4, 31, Fig. 1. The Specification discloses that wrappable
protective sleeves are typically fixed about the elongate member by a
separate fastening feature, such as with tape or tie wraps wrapped
circumferentially about the sleeve wall. Spec. ,r 2. The Specification also
discloses "complex" wrappable protective sleeves, which have specialized
configurations and provide protection about a T-shaped union of elongate
members. Id. ,r 3, Fig. 5.
Alvarado, on the other hand, is directed to "improved sanitary
napkins" to address the long-standing problem of disposal of such articles.
Alvarado, 1 :5-21; see also id. at 4: 17-20 ( disclosing that a particular object
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Application 13/952,441
of the invention is to "provide means of disposal suitable for disposing of the
sanitary napkins in trash receptacles and the like"). In particular, Alvarado
discloses sanitary napkins "with a disposal integral means incorporated
[therein] ... for facilitating disposal thereof after use." Id. at 1 :7-10.
Alvarado discloses that the sanitary napkins comprise, among other things, a
wrapper and an impervious barrier, which "enable the sealing of the means
for disposal contained integrally therein, by using standard adhesive bands
for attachment to an undergarment." Id. at 4:29-33.
As Appellant correctly points out (Appeal Br. 7-8), there is no
disclosure or suggestion in Alvarado regarding wrappable protective sleeves
for providing protection for elongate members, as recited in the claims, and
the Examiner does not direct us to persuasive evidence or provide an
adequate technical explanation why one of ordinary skill would have
considered Alvarado's sanitary napkins to be in the same field of endeavor
as Appellant's claimed invention. Bigio, 381 F.3d at 1326 (explaining that
field of endeavor test requires "assessment of the field of invention with
reference to the function and structure of the invention" relative to the
reference's disclosure).
The second test for determining whether a reference is analogous art
asks whether the art is "reasonably pertinent to the particular problem with
which the inventor is involved." Id. at 1325. "A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
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As Appellant notes (Appeal Br. 9), Alvarado is concerned with
solving a problem of improving the ability to dispose of a sanitary napkin
(Alvarado, 1:7-10, 1:12-28) while the claimed invention concerns and
addresses completely different problems, including, for example,
minimizing the amount of adhesive and the amount of release paper used to
cover adhesive layers of the protective sleeve; minimizing the cost
associated with manufacture of the protective sleeve; and minimizing the
envelope of the sleeve for shipping and storage (Appeal. Br. 9; see Spec. ,r,r
33-34).
Thus, for principally the same reasons provided by Appellant at pages
7-9 of the Appeal Brief, we do not find that Alvarado is reasonably pertinent
to the particular problem with which the inventors are involved. In
particular, based on Alvarado's teachings and focus on sanitary napkins with
a disposal means integrally incorporated for facilitating disposal after use,
we are not persuaded that the Alvarado reference would have commended
itself logically to an inventor's attention in considering the problem
addressed by the claimed invention. The Examiner does not persuasively
address Appellant's arguments regarding the differences between Alvarado's
sanitary napkin and the claimed wrappable protective sleeve or provide an
adequate technical explanation for why one of ordinary skill in the art would
have been led to Alvarado. Because Alvarado is not analogous art, it cannot
be treated as prior art against the claimed subject matter. Clay, 966 F.2d at
658 ( explaining that the non-analogous art test considers the threshold
question whether a prior art reference is "'too remote to be treated as prior
art."') (quoting In re Sovish, 769 F.2d 738,741 (Fed. Cir. 1985)).
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The Examiner's assertions that "Applicants have claimed a wrappable
adhesive sleeve for an elongate member - and this is also the invention of
Alvarado" (Ans. 4) and that "Applicant's invention is centered around
improving the particular packaging configuration of an adhesive sleeve" (id.
at 5) are conclusory and, without more, insufficient to sustain the
Examiner's rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(holding "rejections on obviousness grounds cannot be sustained by mere
conclusory statements").
We, therefore, cannot sustain the Examiner's rejection and
determination that it would have been obvious to combine the teachings of
Miller, Oha, and Alvarado to arrive at the claimed subject matter.
Accordingly, we reverse the Examiner's rejection of claims 1-3, 5, 8,
9, and 21 under 35 U.S.C. § 103 as obvious over the combination of Miller,
Oha, and Alvarado.
Reiection 2
The Examiner determines that the combination of Miller, Oha, and
Clougherty suggests a wrappable protective sleeve satisfying all of the
limitations of claim 1 and, thus, concludes the combination would have
rendered the claim obvious. Final Act. 4--5 ( citing Miller, Abstract,
2:53---60, 3: 1-3, 3:54--57, Figs. 1--4; Oha, Figs. 7-9; Clougherty ,r,r 2, 23,
Figs. 1-3).
Appellant argues that the Examiner's rejection should be reversed
because Clougherty is non-analogous art. Appeal Br. 12-13. In particular,
Appellant contends that Clougherty is neither within the same field of
endeavor nor reasonably pertinent to the particular problem with which the
inventors are involved. Id. at 12-13.
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Application 13/952,441
We find Appellant's argument persuasive of reversible error in the
Examiner's rejection for reasons similar to those discussed above in
reversing the Examiner's Rejection 1. In particular, on the record before us
and for principally the same reasons provided by Appellant at pages 10-13
of the Appeal Brief and pages 6-7 of the Reply Brief, we are not persuaded
that Clougherty is analogous art to the claimed invention.
Regarding the first test, as Appellant points out (Appeal Br. 12) and in
contrast to the claimed invention, Clougherty is directed to "composite
containers for refrigerated dough products" (Clougherty ,r 1, Abstract). In
particular, Clougherty discloses refrigerated dough containers comprising a
body ply helically wrapped about an axis and incorporate a narrow tear strip
that covers the helical butt joint and is pulled to initiate opening of the
container. Clougherty ,r,r 1, 4, 5, Fig. 1. Clougherty further discloses that the
peel strength between the peel strip and the underlying inner layer of the
label can be closely controlled by suitable formulation of the peelable
adhesive 50. Id. ,r 23, Fig. 1.
Clougherty also discloses that its refrigerated dough container
construction:
provides a significant improvement over existing
composite can constructions in which an attempt to peel
off the entire label from the paperboard can body
substantially in one piece often fails when the label
fragments and it is then difficult to re-grasp the label to
continue peeling.
Id. ,I 23.
There is no disclosure or discussion in Clougherty regarding
wrappable protective sleeves for providing protection for elongate members,
as recited in the claims, and the Examiner does not direct us to persuasive
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evidence or provide an adequate technical explanation why one of ordinary
skill would have considered Clougherty's refrigerated dough containers to
be in the same field of endeavor as Appellant's claimed invention.
Thus, we find that Clougherty is not from the same field of endeavor
as the claimed invention and thus, does not meet the first test for
determining whether a reference is analogous art. Bigio, 381 F.3d at 1325.
Regarding the second test, we do not find that Clougherty is
reasonably pertinent to the particular problem with which the inventors are
involved. In particular, based on Clougherty' s teachings regarding
composite containers for refrigerated dough products (Clougherty ,r 1) and
focus on solving the problem of peeling off the entire label from the
paperboard can body substantially in one piece (id. ,r,r 1, 2, 23), we are not
persuaded that Clougherty logically would have commended itself to an
inventor's attention in considering the problem addressed by the claimed
invention. Clay, 966 F.2d at 659.
Moreover, the Examiner does not meaningfully address Appellant's
arguments (Appeal Br. 12-13) regarding the differences between the
problem in which Clougherty is concerned and the problems addressed by
the claimed invention (see Spec. ,r,r 33-34) or provide an adequate technical
explanation for why one of ordinary skill in the art would have been led to
Clougherty. The Examiner's contention that "the problem with which
Applicant was concerned was retaining the reverse-folded sheet in place
with a single cover strip, and the teachings & suggestions of Clougherty are
reasonably pertinent to this end" (Ans. 7) is conclusory and, without more,
insufficient to sustain the Examiner's rejection. Kahn, 441 F.3d at 988.
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Accordingly, we reverse the Examiner's rejection of claims 1-3, 5, 8,
9, and 21 under 35 U.S.C. § 103 as obvious over the combination of Miller,
Oha, and Clougherty.
DECISION
The Examiner's rejections of claims 1-3, 5, 8, 9, and 21 are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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