Ex Parte O et al

Patent Trial and Appeal Board

Jan 31, 2018

13762762 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/762,762 02/08/2013 Timothy J. O'Regan 5179.112325 6244
24978 7590 02/02/2018
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
TROY, ABIGAIL E
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. O'REGAN, FRANK J. WOLFARD, and
TIMOTHY M. O'REGAN
Appeal 2016-001321
Application 13/762,762
Technology Center 3600
Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—3, 5, 9, and 10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-001321
Application 13/762,762
STATEMENT OF THE CASE
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. Apparatus for engaging and fixedly positioning plural
elongated members in lengthwise alignment, said apparatus
comprising:
a flexible elongated band having first and second opposed
ends and first and second opposed outer surfaces and adapted for
positioning about and engaging the plural aligned elongated
members;
first plural teeth disposed in a spaced manner along the
first outer surface of said band;
a housing formed integrally with, and disposed on the
second end of said band and extending outwardly relative to said
elongated band in the direction of its second outer surface, said
housing having plural inner surfaces defining a single elongated
slot in said housing and adapted to receive the first end of said
band in sliding engagement when said band is looped back upon
itself; and
plural resilient first cross members forming a first portion
of the housing's slot and aligned in a spaced manner along the
length of said slot, with each of said first cross members having
a respective generally flat outer surface and a respective inner
surface whereon are disposed respective sets of plural second
teeth for engaging said first plural teeth on said band, wherein
said spaced first cross members provide flexibility to said
housing to facilitate insertion of the band into the housing's slot;
and
plural resilient second cross members forming an opposed
second portion of the housing’s slot and aligned in a spaced
manner along the length of the slot, wherein each of said plural
second cross members includes a respective inner surface
adapted to engage the second outer surface of said band to
maintain said first and second plural teeth in intimate mutual
engagement, and wherein each of the first and second cross
members is tapered such that its inner surface forming a portion
of said slot is greater in size than its outer surface to provide
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Application 13/762,762
increased housing flexibility and an increased number of second
teeth engaging said first teeth;
wherein each of said adjacent first and second teeth
arranged in abutting contact includes a respective tapered edge
portion, and wherein adjacent tapered edge portions of abutting
first and second teeth extend in opposing directions and are
arranged in an overlapping manner with one another along the
length of said band to provide increased coupling strength
engagement between adjacent abutting teeth for maintaining the
plural elongated members in fixed position and lengthwise
alignment relative to one another.
THE REJECTIONS
Claims 1—3, 5, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Denemark et al. (US 4,951,362; issued Aug. 28,
1990), Khokhar et al. (US 6,076,234; issued June 20, 2000), and Litwin (US
3,257,694; issued June 28, 1966).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Denemark, Khokhar, Litwin, and Meyer (US
3,471,109; issued Oct. 7, 1969).
ANALYSIS
Appellants argue the Examiner erred by relying on improper
combinations of prior art. Specifically, Appellants argue the Examiner
relied on nonanalogous art because, according to Appellants, “Denemark is
directed to a vacuum cleaner bag clamp for positioning on vacuum cleaner
tubing for attaching a bag thereto” and Litwin is directed to a self-locking
tamper proof strap designed for attachment to a person’s wrist for use in a
hospital setting. Appeal Br. 17; see also Reply Br. 2-4. According to
Appellants, “[t]he Litwin tamperproof strap and the Denemark bag clamp
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Application 13/762,762
involve flexible elongated self-locking restraining arrangements, however,
they individually are directed to fundamentally different and non-analogous
applications.” Reply Br. 2. The Examiner responds that, contrary to
Appellants’ arguments, Denemark and Litwin are within Appellants’ field of
endeavor—flexible plastic straps. Ans. 2—3.
A reference is analogous art to the claimed invention if: “(1) the
reference is from the same field of endeavor as the claimed invention (even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention).” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). Here, the Specification describes Appellants’ field of
endeavor as a bundle fastener or cable tie, such as those “in the form of an
elongated, flexible strap typically comprised of a synthetic plastic material
having on a first end thereof a housing with a slot therein which is adapted to
receive a second, opposed end of the strap.” Spec. 2. We agree with the
Examiner that Denemark and Fitwin are within Appellants’ field of
endeavor because both references disclose flexible plastic straps having
similar structures and functions to those of Appellants’ invention. Compare,
e.g., Spec. Figs. 1—4, with Denemark Figs. 1—4 and Fitwin Figs. 1—5.
Under the heading “The Prior Art References When Combined Must
Teach or Suggest All the Claimed Fimitations for Prima Facie Obviousness”
(Appeal Br. 17 (emphasis omitted; capitalization altered)), Appellants’
Appeal Brief includes descriptions of the cited references and purports to
identify differences between the individual references and Appellants’
invention (Appeal Br. 17—22). Similarly, Appellants’ Reply Brief describes
differences between individual references and Appellants’ invention in a
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Application 13/762,762
section titled “Primary Improvements of Claimed Invention Are Neither
Disclosed Nor Suggested In Prior Art” (Reply Br. 4 (emphasis omitted;
capitalization altered)). These arguments are unpersuasive of Examiner
error, however, because Appellants do not substantively address the
combined teachings of the prior art nor specifically identify claim limitations
missing from the combination of references. See In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (holding that nonobviousness cannot
be established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures).
Appellants next argue the Examiner erred because “the prior art as a
whole must ‘suggest the desirability’ of the claimed subject matter.” Appeal
Br. 22 (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). As
explained by the Examiner, however, Appellants’ argument misapplies
controlling law, and we agree with the Examiner’s conclusion that the
claimed invention requires only combining prior art elements according to
known methods to yield predicable results. See Ans. 7—8 (citing KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)).
Finally, Appellants argue the claimed invention recites “resilient” first
and second cross members but Denemark merely discloses “deformable”
members. Appeal Br. 23. The Examiner responds, and we agree, that
Denemark’s disclosure of “elastically deformable” plastic members teaches
or suggests the claimed “resilient” limitations. See Ans. 8 (citing Denemark
3:61-62,5:9-10,5:25-29).
Accordingly, having considered the Examiner’s rejections in light of
each of Appellants’ arguments, we disagree with Appellants and sustain the
Examiner’s rejections of claims 1—3, 5, 9, and 10.
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DECISION
For the above reasons, we affirm the Examiner’s rejections of claims
1—3, 5, 9, and 10.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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