Ex Parte Reibel et al

Board of Patent Appeals and Interferences

Jun 19, 2012

10515086 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DENIS REIBEL and HORST KOBER
____________________

Appeal 2009-015403
Application 10/515,086
Technology Center 2800
____________________

Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015403
Application 10/515,086

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STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a non-final
rejection of claims 14-21, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellants invented a flexible ribbon or flat cable composed of at
least one signal lead that is embedded between at least two layers of
nonwoven fabric. Specification ¶ 0001.
An understanding of the invention can be derived from a reading of
exemplary claim 14, which is reproduced below [bracketed matter and some
paragraphing added]:
14. A flexible ribbon or flat cable comprising:
[1] at least two layers of nonwoven fabric, the nonwoven
fabric made of fibers including at least one of polyester,
polyamide, polyolefin, syndiotactic polystyrene, polysulphone
and glass bonded together using a bonding agent; and
[2] at least one electric conductor having an insulation layer
and embedded between the at least two layers of nonwoven
fabric.

REFERENCES
The Examiner relies on the following prior art:
Marshall
Brorein
Nguyen

US Re. 31,477
US 4,468,089
US 5,276,759

Dec. 7, 1983
Aug. 28, 1984
Jan. 4, 1994

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 28, 2009) and Reply Brief (“Reply Br.,” filed July 10, 2009),
and the Examiner’s Answer (“Ans.,” mailed June 26, 2009), and Non-Final
Rejection (“Non-Final Rej.,” mailed Dec. 21, 2007).
Appeal 2009-015403
Application 10/515,086

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REJECTIONS
Claims 14, 16-18, and 21 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Brorein and Nguyen. Ans. 5-7.
Claim 15 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Brorein, Nguyen, and Marshall. Ans. 7-8.
Claims 19-20 stand rejected on the ground of nonstatutory
obviousness-type double patenting. Ans. 8.

ISSUES
The issue of whether the Examiner erred in rejecting claims 14, 16-18,
and 21 under 35 U.S.C §103(a) as being unpatentable over Brorein and
Nguyen turns on whether the combination of Brorein and Nguyen teaches or
suggests “at least one electric conductor having an insulation layer and
embedded between the at least two layers of nonwoven fabric” and whether
Brorein and Nguyen are combinable.
The issue of whether the Examiner erred in rejecting claim 15 under
35 U.S.C. § 103(a) as unpatentable over Brorein, Nguyen, and Marshall
turns on whether the Appellants’ arguments provided in support of claim 14
are found to be persuasive.
The issue of whether the Examiner erred in rejecting claims 19-20 on
the ground of nonstatutory obviousness-type double patenting turns on
whether the Appellants provide an argument to illustrate how the claimed
invention is distinguished from US 6,965,082 B2 and Brorein.
Appeal 2009-015403
Application 10/515,086

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ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ contentions that the Examiner has erred.
We disagree with the Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments.

Claims 14, 16-18, and 21 rejected under 35 U.S.C §103(a) as being
unpatentable over Brorein and Nguyen
The Appellants first contend that the combination of Brorein and
Nguyen fails to teach or suggest “at least one electric conductor having an
insulation layer and embedded between the at least two layers of nonwoven
fabric,” as required by claim 14. App. Br. 9-10 and Reply Br. 2. We
disagree with the Appellants. As found by the Examiner, Brorein describes
two layers of fabric and an embedded electric conductor having an insulation
layer. Ans. 6 and 10-11. The Examiner relied on Nguyen to describe a
nonwoven fabric including at least one of polyester, polyamide, polyolefin,
syndiotactic polystyrene, polysulphone and glass bonded together using a
bonding agent. Ans. 6 and 10. The Appellants’ specific arguments are
directed towards deficiencies of each individual reference, and do not
address what the combination of Brorein and Nguyen teaches or suggests.
Nonobviousness cannot be established by attacking the references
Appeal 2009-015403
Application 10/515,086

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individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). As such, the Appellants’ contention does not persuade us that the
Examiner erred in rejecting the claims.
The Appellants further contend that Brorein and Nguyen are not
properly combinable. App. Br. 9-10 and Reply Br. 2-3. We disagree with
the Appellants. The Examiner found that both Brorein and Nguyen are
directed towards flat cables embedded and fabrics and the combination of
the references would have been obvious to a person with ordinary skill in the
art. Ans. 6 and 11. The Appellants have not provided any persuasive
evidence or rationale to rebut the Examiner’s findings and to illustrate why
the combination of the cited prior art would have resulted in anything more
than predictable results. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). As such, we sustain the Examiner’s rejection against these
claims.
The Appellants additionally contend that the combination of Brorein
and Nguyen fails to teach or suggest “wherein the at least one electrical
conductor includes at least two electric conductors configured at a pitch of
1.25, 1.27, 2.5, or 2.54mm,” as recited by claim 17. App. Br. 10. We
disagree with the Appellants. The Examiner found that Brorein and Nguyen
teach insulated conductors and a person with ordinary skill would choose a
suitable distance between the insulated conductors for a desired pitch as a
matter or design choice. Ans. 11. The Appellants fail to provide any
persuasive argument or evidence to rebut the Examiner’s findings. As such,
we sustain the Examiner’s rejection of claim 17.

Appeal 2009-015403
Application 10/515,086

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Claim 15 rejected under 35 U.S.C §103(a) as being unpatentable over
Brorein, Nguyen, and Marshall
The Appellants contend that Marshall does not cure the deficiencies of
the combination Brorein and Nguyen as argued in support of claim 14. App.
Br. 11. We disagree with the Appellants. The Appellants’ arguments in
support of claim 14 are not found to be persuasive for the reasons discussed
supra and are not persuasive for the same reasons here. As such, we sustain
the Examiner’s rejection of claim 15.

Claims 19-20 rejected on the ground of non-statutory obviousness
type double patenting
The Appellants contend that US Patent 6,965,082 B2 fails to describe
“at least one electric conductor having an insulation layer,” as recited by
claims 19 and 20. App. Br. 11. We disagree with the Appellants. The
Appellants restate the claim language and a generally allege that the cited art
fails to describe the recited features. This statement is not considered to be
an argument. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”). As such, we sustain the Examiner’s
rejection of claims 19 and 20 on the ground of nonstatutory obviousness-
type double patenting.
Appeal 2009-015403
Application 10/515,086

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CONCLUSIONS
The Examiner did not err in rejecting claims 14, 16-18, and 21 under 35
U.S.C §103(a) as being unpatentable over Brorein and Nguyen.
The Examiner did not err in rejecting claim 15 under 35 U.S.C §103(a)
as being unpatentable over Brorein, Nguyen, and Marshall.
The Examiner did not err in rejecting claims 19-20 on the ground of
nonstatutory obviousness-type double patenting.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 14, 16-18, and 21 under 35 U.S.C §103(a) as
being unpatentable over Brorein and Nguyen is sustained.
 The rejection of claim 15 under 35 U.S.C §103(a) as being
unpatentable over Brorein, Nguyen, and Marshall is sustained.
 The rejection of claims 19-20 on the ground of non-statutory
obviousness type double patenting is sustained.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

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