Ex Parte O et al

Patent Trials and Appeals Board

Feb 4, 2019

14068886 - (D) (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/068,886 10/31/2013 Timothy M. O'Regan
24978 7590 02/06/2019
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
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.
5179.114930 1069
EXAMINER
GONZALEZ, HIRAM E
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
02/06/2019 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):
ptomail@ gbclaw. net
docket@gbclaw.net
verify@gbclaw.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY M. O'REGAN, TIMOTHY J. O'REGAN,
FRANK J. WOLFARD, and MICHAEL F. O'REGAN
Appeal2018-004517
Application 14/068,886
Technology Center 2800
Before BEYERL YA. FRANKLIN, MICHELLE N. ANKENBRAND, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1, 2, 5, 6, 8, 9, 11-14, 17-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "Electrical Materials Company."
Appeal Brief of June 13, 2017 ("Br."), 3.
2 Final Office Action of January 23, 2017 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of December 19, 2017 ("Ans."). No
Reply Brief was filed.
Appeal2018-004517
Application 14/068,886
CLAIMED SUBJECT MATTER
The claims are directed to an electrical cable support arrangement.
More particularly, the invention seeks to "provide for the fixed, secure
positioning and support of one or more electrical cables in an underground
manhole." Spec. 3: 19-21. 3 Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An electrically insulated saddle arrangement for
maintaining one or more electrical utility power distribution
cables in fixed position on a support member, said saddle
arrangement comprising:
a housing comprised of a high strength, lightweight
plastic and having an upper recessed curvilinear portion adapted
for receiving one or more electrical cables, wherein said upper
recessed portion of said housing is defined by a flat inner
portion for receiving and supporting one or more electrical
cables and first and second opposed, upwardly extending outer
lateral portions each disposed on an upper portion of said
housing and including one or more respective aligned apertures;
a tie arrangement including an elongated, flexible tie
member attached to said aligned apertures in said first and
second opposed, upwardly extending outer lateral portions of
said housing for retaining said elongated, flexible tie member,
said tie member spanning the housing's upper recessed
curvilinear portion for engaging and maintaining the one or
more electrical cables in fixed position on said housing; and
a retaining arrangement disposed on a lower portion of
said housing and including first and second slots aligned
transverse to one another, wherein said first slot is adapted to
receive the support member and a moveable member disposed
in said second slot and adapted for positioning across said first
slot and in engagement with the support member for fixedly
attaching said housing to the support member while allowing
3 Electrical Cable Support Arrangement, Application No. 14/068,886
("Spec.").
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Appeal2018-004517
Application 14/068,886
the one or more electrical cables to move in a sliding manner
along their respective lengths in the housing's upper recessed
curvilinear portion.
Br. D-1 (Claims Appendix).
REFERENCES
The Examiner relied up the following prior art references in rejecting
the claims on appeal:
Thoms
Meyer
Logsdon
Murphy
Geiger
Hajduch
us 2,050,510
us 3,471,109
us 4,768,741
us 4,899,963
US 6,533,226 B2
US 8,991,774 B2
REJECTIONS
Aug. 11, 1936
Oct. 7, 1969
Sept. 6, 1988
Feb. 13, 1990
Mar. 18, 2003
Mar. 31, 2015
Claims 1, 5, 6, 8, 9, 11-14, 17-23, and 25-27 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Thoms in view of Geiger
and Hajduch. Final Act. 6.
Claims 2 and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Thoms in view of Logsdon. Id. at 16.
Claim 24 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Thoms in view of Murphy. Id. at 17.
Claim 28 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Thoms in view of Geiger, Hajduch, and Meyer. Id.
OPINION
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Appeal2018-004517
Application 14/068,886
Obviousness Rejection of Claim 1
Appellants argue that the Examiner reversibly erred in rejecting claim
1 4 for failure to show that the combined prior art teaches or suggests
a housing ... having an upper recessed curvilinear portion
adapted for receiving one or more electrical cables, wherein
said upper recessed portion of said housing is defined by a flat
inner portion for receiving and supporting one or more
electrical cables and first and second opposed, upwardly
extending outer lateral portions each disposed on an upper
portion of said housing and including one or more respective
aligned apertures
and "a tie arrangement including an elongated, flexible tie member attached
to said aligned apertures ... , said tie member spanning the housing's upper
recessed curvilinear portion for engaging and maintaining the one or more
electrical cables in fixed position on said housing." Br. 13.
More specifically, while not disputing the Examiner's finding that
Thoms teaches various structural components recited in claim 1 ( compare
Br. 14--19, with Final Act. 6-7), Appellants argue that Thoms dates back to
1933 and "it is highly unlikely that anyone at the time of the Thoms patent"
would have used the Thoms cable saddle in "highly energized electric ...
cable[]" applications. Br. 14, 16. Appellants also argue that Thoms does not
teach or suggest "the capability to deal with or accommodate the current
environment and high electrical load conditions of high voltage and high
current electric power distribution cables." Id. at 15. In support, Appellants
present a sketch labeled FIG. 1 said to show that the cables at the time of
4 Appellants do not present separate arguments for independent claim 1 7 or
dependent claims 5, 6, 8, 9, 11-14, 18-23, and 25-27. Br. 13-26. Those
claims, therefore, stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv)
(2013).
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Application 14/068,886
Thoms are different (i.e., much smaller) from the modem day cables. Id. at
16-19.
Appellants' argument does not identify reversible error because
"apparatus claims cover what a device is, not what a device does."
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Absent structural differences, any "recitation of a new intended
use for an old product does not make a claim to that old product patentable."
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Furthermore, as the
Examiner points out, Appellants' argument is not commensurate in scope
with the language of claim 1, which lacks features such as "high current
electric power distribution cables." Ans. 3--4.
Appellants next argue that Thoms and Geiger teach away from one
another because Thoms describes a cable saddle that allows the cable to
move, whereas Geiger describes a confining wire tie. Br. 20 ( citing Thoms
1 :23-26, Geiger 1 :9-21 ). As the Examiner points out, however, when read
as a whole, Thoms does not require the cable to be retrained without any
movement and combining these known structures is within the knowledge
and technical grasp of a skilled artisan. Ans. 4 ( citing Thoms 1 :23-26);
Ans. 8. Appellants do not dispute this finding or identify any reversible
error.
Appellants also argue that the Examiner reversibly erred in finding
that Geiger teaches or suggest the recited "opposed, upwardly extending
outer lateral portions." Br. 20. Appellants, however, do not address the
Examiner's finding that element 7 6 of Geiger's Figure 16b teaches or
suggests the limitation at issue. Id. Appellants instead direct their
arguments to saddle mount 16 (which has arched surface 36a) and cable
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Application 14/068,886
bundle 8. Id. Without addressing the Examiner's finding with regard to this
limitation and without providing structural distinction over the prior art,
Appellants' argument is unpersuasive of reversible error.
Appellants also argue that the Examiner reversibly erred in finding
that Geiger teaches or suggest the recited "flat inner portion." In particular,
Appellants argue that the prior art component is "not adapted, nor intended,
for supporting multiple cable bundles." Br. 22. Appellants, however, fail to
structurally distinguish the prior art component. See id. Appellants'
argument does not identify reversible error because, as explained above,
"apparatus claims cover what a device is, not what a device does." Hewlett-
Packard, 909 F.2d at 1468.
Finally, Appellants argue that neither Geiger nor Hajduch is capable
of operating in certain environmental conditions ( e.g., those that apply to an
electric power distribution network). Br. 23-25. We are not persuaded. We
again note that claim 1 is an apparatus claim whose patentability "depends
on the claimed structure, not on the use or purpose of that structure."
Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed.
Cir. 2002).
Obviousness Rejection of Claims 2 and 29
Dependent claims 2 and 29 additionally recite "wherein said housing
is comprised of acrylonitrile butadiene styrene (ABS)." Appellants do not
dispute the Examiner's finding that Logsdon teaches ABS plastic is a known
material. Compare Br. 26, with Final Act. 16. Rather, Appellants argue that
the Examiner erred in rejecting claims 2 and 29 because the apparatus in
Logsdon is used in a plumbing application with a different configuration
than that of Thoms. Br. 26. All of the features of the secondary reference
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need not be bodily incorporated into the primary reference, and the skilled
artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment. See
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). To
the extent that Appellants' argument is that Logsdon is non-analogous art,
Appellants do not adequately explain why the Examiner reversibly erred in
finding that Logsdon's teaching of the use of ABS plastic in tubing
applications is reasonably pertinent to the material selection of the recited
"housing" of a cable. See Ans. 5---6. "Under the correct analysis, any need
or problem known in the field of endeavor at the time of the invention and
addressed by the patent [ or application at issue] can provide a reason for
combining the elements in the manner claimed." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). Appellants fail to identify reversible error
with regard to the rejection of claims 2 and 29.
Obviousness Rejection of Claim 24
Appellants argue that the Examiner reversibly erred in rejecting claim
24 without providing a sufficient explanation as to why. Br. 27 (merely
asserting that "element 20 in Murphy is not one of the 'apertures' recited in
claim 24"). "[M]ere statements of disagreement ... do not amount to a
developed argument." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1320 (Fed. Cir. 2006). Accordingly, Appellants do not identify a
reversible error.
Obviousness Rejection of Claim 28
Appellants argue that the Examiner reversibly erred in rejecting claim
28 because the device in Meyer differs in how it is used. Br. 27. As
previously explained, the patentability of apparatus claim 28 "depends on
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Application 14/068,886
the claimed structure, not on the use or purpose of that structure." Catalina,
289 F .3d at 809. We are, therefore, unpersuaded that the Examiner
reversibly erred in finding that the recited structure is not patentably
distinguished from those of the prior art.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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