Ex Parte Pangallo

Board of Patent Appeals and Interferences

Aug 14, 2006

10386855 (B.P.A.I. Aug. 14, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER M. PANGALLO
____________

Appeal No. 2006-1431
Application No. 10/386,855
Technology Center 3677
____________

ON BRIEF
____________

Before OWENS, CRAWFORD, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 9-16. Claims 1-8 and 20 stand allowed.
Claims 17-19 have been cancelled (brief, page 1).

We REVERSE.

BACKGROUND
The appellant's invention relates to a cinch strap
(specification, page 1).
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Application No. 10/386,855

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Claim 9 is representative of the invention, and is reproduced as
follows:
9. A cinch strap comprising:

a latch block defining first and second substantially
parallel apertures therethrough;

an elongated flexible strap extending from said latch block
in a substantially perpendicular relationship to said apertures,
said strap having first and second strap segments; and

said strap segments and said apertures being configured for
said second strap segment to pass through both said apertures and
for said first strap segment to enter only said first aperture
and not said second aperture.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Litwin 3,257,694 Jun. 28, 1966
Iscovich 5,395,343 Mar. 7, 1995

Heaton GB 2,243,401 Oct. 30, 1991
(United Kingdom)

Claims 9-14 and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Litwin in view of Heaton.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Litwin in view of Heaton and Iscovich.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (mailed August 24,
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Application No. 10/386,855

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2005) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed June 8, 2005) and reply brief
(filed September 8, 2005) for the appellant's arguments
thereagainst.
Only those arguments actually made by the 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 § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, 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,
appellant’s arguments set forth in the briefs along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We begin with the rejection of
claims 9-14 and 16 under 35 U.S.C. § 103(a) as being unpatentable
over Litwin in view of Heaton.
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Application No. 10/386,855

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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. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); 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. See id.; In re Hedges, 783 F.2d 1038, 1039,
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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).
The examiner's position (answer, page 4) is that Litwin does
not disclose the strap to extend from the latch block in a
substantially perpendicular relationship to the apertures in the
latch block. To overcome this deficiency of Litwin, the examiner
turns to Heaton for a teaching of the desirability of extending
the strap from the latch block in a substantially perpendicular
relationship to the parallel apertures so as to provide a tamper
resistant strap useful for securement around a bag.
Appellant’s position (brief, page 5) is that the creation of
a second loop in Litwin would destroy its purpose and function.
It is argued (id.) that “[t]here is no disclosure in either
Litwin or Heaton that would suggest or motivate one skilled in
the self-locking strap art to modify Litwin in the manner
proposed by the Examiner.” It is further argued (brief, page 6)
that because of the importance of the locking means and its
associated structure, Litwin is not concerned with two loops for
securing two objects, and that the creation of a second loop
would teach away from Litwin’s purpose and function of designing
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a self-locking tamper proof strap for the securement of a single
object.
The examiner responds (answer, page 6) that “[b]oth Litwin
and Heaton are utilizing tamper resistant straps and Heaton would
suggest modifying the strap of Litwin so that the apertures are
oriented perpendicular to the strap extending from the locking
block.” With respect to appellant’s assertion (brief, page 5)
that modifying Litwin to provide a second loop would destroy the
function and purpose of Litwin, the examiner asserts that
appellant’s argument is not pertinent because the claims on
appeal do not recite forming two loops or having the capability
of securing two objects. The examiner argues (id.) to the effect
that Heaton shows it to be desirable to have the strap extend
perpendicular to the apertures, and that Heaton’s structure would
provide broader utility to the strap of Litwin so as to hold a
cash bag. The examiner adds (id.) that Litwin will function in
the same fashion if the strap extended perpendicular to the
apertures in the locking block.
In the reply brief, appellant asserts (pages 2 and 3) that
since Litwin is only concerned with creation of a single loop, an
artisan would not think to modify the latch block as suggested by
Heaton because there is no reason to do so. Appellant adds
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(reply brief, page 3) that the focus of the analysis should not
be the fact that claim 9 does not recite forming two loops or
securing two objects, but rather whether an artisan would look to
Heaton for the purpose of modifying the latch block of Litwin.
It is additionally argued (id.) that the location of the
apertures in the locking block in relation to the strap is
significant in order for the device to function as intended.
Changing the location of the apertures in the locking block in
relation to the strap would adversely affect the locking means of
Litwin.
From the disclosure of both Litwin and Heaton, we find that
both references are directed to a single piece tie or strap that
is self locking and tamper resistant (Heaton, page 1, line 3 and
page 5, line 32 through page 6, line 7; and Litwin col. 1, line
63 and col. 2, lines 27-29). From these disclosures we agree
with the examiner that an artisan would have been motivated to
modify the tie strap of Litwin to provide the increased
capability of securing more than one object (or more than one
bundle of objects) with the tie strap as taught by Heaton.
However, for the reasons which follow, we find that the resultant
structure would not meet all of the limitations of independent
claim 9. Upon modifying Litwin as taught by Heaton, we find that
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the strap of Litwin would be extended in the area between
juncture 32 and locking face 57 of teeth 55, which would result
in the strap having the ability of securing more than one object.
However, we find no suggestion for changing the orientation of
the strap as it extends from the buckle portion 3 (latch block)
so as be perpendicular to the apertures of the latch block absent
the teachings of appellant’s disclosure. “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed.
Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir.
1983)). “It is impermissible to use the claimed invention as an
instruction manual or ‘template’ to piece together the teachings
of the prior art so that the claimed invention is rendered
obvious.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992)(citing In re Gorman, 933 F.2d 982, 987, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991)).
From all of the above, we find that the examiner has failed
to establish a prima facie case of obviousness of independent
claim 9. Accordingly, the rejection of claim 9 under 35 U.S.C.
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§ 103(a) as being unpatentable over Litwin in view of Heaton is
reversed, along with claims 10-14 and 16, which depend from
claim 9.
We turn next to the rejection of claim 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Litwin in view of Heaton and
Iscovich. We reverse the rejection of claim 15 because Iscovich
does not make up for the deficiencies of the basic combination to
Litwin and Heaton.

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CONCLUSION
To summarize, the decision of the examiner to reject claims
9-16 under 35 U.S.C. § 103 is reversed.

REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2006-1431
Application No. 10/386,855

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PAUL F. DONOVAN
ILLINOIS TOOL WORKS INC.
3600 WEST LAKE AVENUE
GLENVIEW, IL 60025

SL/ki
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