Ex Parte Nark et al

Patent Trial and Appeal Board

Jun 17, 2016

12915344 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/915,344 10/29/2010
26250 7590 06/21/2016
FRANCIS EDWARD MARINO
394 MEREDITH NECK ROAD
MEREDITH, NH 03253
FIRST NAMED INVENTOR
Malcolm Brent Nark
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.
HE-05 7448
EXAMINER
MICHENER, JOSHUA J
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
frank@marinopatents.com
patenter@metrocast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MALCOM BRENT NARK,
BRONSON RUMSEY, and EDWIN H. PETERSON
Appeal2014-002250
Application 12/915,344
Technology Center 3600
Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-20. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-002250
Application 12/915,344
CLAIMED SUBJECT MATTER
Claims 1 and 10 are independent. Claim 1 is reproduced below.
1. A method comprising:
providing a roof having a raised seam;
extending a first run of cable in a direction generally
parallel to the raised seam;
accessing a cover having an channel dimensioned to
receive at least a portion of the cable therein;
installing the cover on the roof at the raised seam; and
securing the cable in the channel of the cover against the
roof in a manner such that the cable is partially exposed and
visible from a position adjacent the channel.
REJECTIONS
Claims 1--4 and 6-8 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Hawley (US 4,189,881; iss. Feb. 26, 1980).
Claims 5 and 9-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hawley.
ANALYSIS
Claims 1--4 and 6--8 as anticipated by Hawley
Appellants argue claims 1--4 and 6-8 as a group. Appeal Br. 10-12.
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 2-
4 and 6-8 stand or fall with claim 1.
The Examiner found that Figures 2--4 of Hawley discloses a method
of running a cable (wire or cable conduit 21, electrical conduit 57) generally
parallel to a raised seam (upstanding lips 6, 7), installing a cover (batten 5)
at the raised seam 6, 7, and securing cable 21, 57 in a channel of cover 5 so
that cable 21, 57 is partially exposed and visible from a position adjacent the
channel. Final Act. 2-3.
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Appeal2014-002250
Application 12/915,344
Appellants raise a number of arguments. First, Appellants argue that
claim 1 requires the cable to be secured in the channel when the cover is
applied to the raised seam of the roof and Appellants' Specification discloses
embodiments where a cover channel is dimensioned to fit both cables and all
of the raised seam and maintain the cables in abutting contact with the raised
seam. Appeal Br. 10-11. Appellants argue that Hawley places a cover over
loose wiring, cables, or conduit but the cover lacks a channel dimensioned to
receive the cable and secure the cable in the channel as claimed. Id. at 11.
The Examiner has established by a preponderance of evidence that
Hawley discloses installing a cover on a roof to secure a cable in the channel
of the cover. Hawley's cover (batten 5) forms a channel that secures cable
conduit 21 therein when batten 5 is installed at raised seam 6, 7. Hawley,
1:55-2:2, Figs. 2, 4; see Ans. 3. Batten 5 secures cable conduit 21 so cable
conduit 21 cannot be removed therefrom and is against the roof as shown in
Figure 2. Appellants' argument that the cover channel must be dimensioned
to contact the cable to conduct heat from the cable to the cover (Appeal Br.
11, 13) is not commensurate with the scope of claim 1, which does not
require the cover channel to contact the cable or transfer heat from the cable.
See Ans. 2. Appellants disclose covers 3340 with channels that exceed the
dimensions of cables 3320, 3320A, 3320B, yet secure the cables against the
roof or its raised seam, as claimed. See Spec., Figs. 8F, 8G, 8H, 81.
Appellants also argue that Hawley's cover does not leave the cable
partially exposed and visible from a position adjacent the channel, as
claimed. Appeal Br. 11-12. Appellants further argue that Hawley discloses
the cover as completely covering the loose wiring making it not visible from
a position adjacent the cover. Id. at 12.
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Appeal2014-002250
Application 12/915,344
These arguments are not persuasive. We agree with the Examiner that
Figure 4 of Hawley discloses the ends of cables 53, 58 as being exposed and
visible from a position at the edge of the cover, as claimed. Ans. 3. In this
regard, Appellants discloses embodiments with cables 3320, 3320A, 3320B
that are covered completely by cover 3340 so that the cables are visible only
at the ends of the cover channel. Figs. 8F, 8G, 81. Claim 1 does not require
the cable to be exposed or visible along the entire length of the cable.
Thus, we sustain the rejection of claim 1 and claims 2--4 and 6-8,
which fall with claim 1.
Claims 5 and 9-20 as unpatentable over Hawley
Appellants argue claims 5 and 9-20 as a group. Appeal Br. 12-15.
We select claim 10 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 5,
9, and 11-20 stand or fall with claim 10.
Claim 10 recites a method with similar steps to claim 1 but including
first and second cable runs rather than a single cable as recited in claim 1.
The Examiner found that Hawley teaches the steps of claim 10 as discussed
above for claim 1 and that it would have been obvious to provide a second
cable to provide greater capacity for power exchange across multiple panels
of Hawley. Final Act. 5.
Appellants argue that claim 10 requires the cable to be secured in the
channel of the cover so the cable contacts the cover and raised seam and heat
is conducted from the cable to the cover and raised roof seam. Appeal Br.
13, 15. Appellants argue that Hawley discloses a cable placed loosely under
a cover rather than in contact with the cover, and there is no suggestion to
arrange the cable to touch a roof seam. Id. at 14--15. Appellants also argue
that it would not have been obvious to make the cable visible. Id. at 15.
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Appeal2014-002250
Application 12/915,344
Appellants arguments are not persuasive for the reasons discussed
above for claim 1 in that they are not commensurate with the scope of
claim 10, which does not require the first or second cable runs to contact the
cover or cover channel. We decline to read unclaimed features into the
claims, particularly where Appellants disclose embodiments with cover
channels that do not contact cables or fit tightly against cables as discussed
above. We also agree with the Examiner that Hawley discloses a cable
partially exposed and visible from a position adjacent the channel for the
reasons discussed above for the claim 1.
Thus, we sustain the rejection of claim 10 and claims 5, 9, and 11-20,
which fall with claim 10.
DECISION
We AFFIRM the rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
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