Ex parte Rinderer

Board of Patent Appeals and Interferences

Apr 23, 2001

08871923 (B.P.A.I. Apr. 23, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ERIC R. RINDERER
_____________
Appeal No. 2000-1651
Application No. 08/871,923
______________
ON BRIEF
_______________
Before CALVERT, MCQUADE, and LAZARUS, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
32, all the claims in the application.
The claims on appeal are drawn to a support for
electrical cable (claims 1 to 14), a rack for supporting
electrical cable (claims 15 to 26), a method of constructing a
Appeal No. 2000-1651
Application No. 08/871,923
1 In reviewing the specification, it appears that on page
13, line 12, "have" should be --has--, and "greater" should be
--smaller--.
2
support for electrical cable (claims 27 to 30), and a method
of supporting electrical cable (claims 31 and 32). They are
reproduced in the appendix of appellant's brief.1
The references applied in the final rejection are:
Bergquist 2,891,750 Jun.
23, 1959
Burke 3,406,932 Oct. 22,
1968
Mason 3,948,473 Apr. 6,
1976
Dooley 5,465,929 Nov. 14,
1995
The appealed claims stand finally rejected under 35
U.S.C.
§ 103(a) as follows:
(1) Claims 1 to 26, 31 and 32, unpatentable over Burke in view
of Dooley and Mason.
(2) Claims 27 to 30, unpatentable over Bergquist in view of
Burke.
Rejection (1)
We will first consider this rejection as it applies to
claim 15. The structure recited in claim 15 differs from that
Appeal No. 2000-1651
Application No. 08/871,923
3
disclosed by Burke in that, inter alia, the claimed lower and
upper longitudinal members each comprise a metal tube "of
circular cross-section," whereas the lower and upper
longitudinal hollow members 10, 12, 22, 24 of Burke each are
disclosed as having a rectangular cross-section. The examiner
takes the position that (answer, page 6):
It would have been an obvious matter of design
choice to have modified Burke in view of Dooley to
have made the upper and lower member comprising a
metal tube having a circular cross section since
such a modification is merely a change in shape and
is generally recognized as being within the level of
one skilled in the art. In re Dailey et al., [357
F.2d 669, 672-73,] 149 USPQ 47[,50 (CCPA 1966)].
After fully considering the record in light of the
arguments presented in appellant's brief and reply brief, and
in the examiner's answer, we conclude that the rejection is
not well taken.
In the Dailey case cited by the examiner, the Court held
the claimed device to be obvious over a patent to Matzen,
stating (357 F.2d at 672-73, 149 USPQ at 50):
Appellants have presented no argument which
convinces us that the particular
configuration of their container is
significant or is anything more than one of
numerous configurations a person of
ordinary skill in the art would find
Appeal No. 2000-1651
Application No. 08/871,923
4
obvious for the purpose of providing mating
surfaces in the collapsed container of
Matzen.
In the present case, appellant argues that the circular cross-
section of the longitudinal members is significant in that
(brief, page 9):
The circular shape allows the use of standard
electrical conduit (which is circular) and standard
conduit fittings. The use of standard electrical
conduit has a number of important advantages. For
example, standard conduit is relatively inexpensive
to fabricate and/or purchase. Further, electrical
conduit is easy to handle, assemble and bend on the
job site using existing tools. Also, circular-
section conduit can be threadably connected, thereby
eliminating the need for screw fasteners as used in
the prior art. Thus, appellant's system is
economically fabricated and is readily modified and
installed on the job site without the need for
special equipment.
In response to this argument, the examiner contends (answer,
pages 9 and 10):
the reasoning behind the applicant's use of a
tubular member having a circular cross-section is
for the purpose of allowing the members to be
threadably connected or made of standard electrical
conduit however; [sic] the applicant does not claim
these limitations within the scope of the claim
language. These limitations may be improved
advantages over the prior art however, without the
applicant specifically claiming these limitations
within the claims the examiner is obligated to
examine the claims as presented without reading the
specification into the claim.
Appeal No. 2000-1651
Application No. 08/871,923
2 "A rejection based on section 103 must rest on a factual
basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art." In re
GPAC, Inc., 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed.
Cir. 1995).
5
This argument by the examiner is not persuasive. In order to
distinguish the claims over the prior art, an applicant is not
required to recite the advantages flowing from the claimed
invention; rather, the claims must include the structure which
provides those advantages. Cf. In re Peterson, 390 F.2d 735,
741-42, 156 USPQ 504, 509 (CCPA 1968) (claims not patentable
because not limited to the structure which will provide
asserted unexpected results). Here, claim 15 is limited to
the structure which provides the asserted advantages over the
prior art, in that it recites that the lower and upper
longitudinal members each comprise a metal tube of circular
cross-section. In the absence of any evidence that the
circular cross-sectional shape of the longitudinal members
would have been obvious, which evidence the examiner has not
cited,2 the asserted advantages resulting from use of a
circular cross-sectional shape preclude the examiner's
implicit conclusion that that shape would have been merely an
Appeal No. 2000-1651
Application No. 08/871,923
6
obvious matter of design choice. Cf. In re Kuhle, 526 F.2d
553, 555, 188 USPQ 7, 9 (CCPA 1975).
The Dooley and Mason references are cited by the examiner
as evidence of the obviousness of providing, respectively,
end-to-end couplings for cable racks and wings on the ends of
a cross or side member. Neither of these references discloses
or suggests longitudinal members having a circular cross-
section, and thus they are not relevant to the above-discussed
question of the obviousness of claim 15 over Burke.
Accordingly, the rejection of claim 15, and of claims 16
to 26 dependent thereon, will not be sustained. We also will
not sustain the rejection of independent claims 1 and 31, and
of their dependent claims 2 to 14 and 32, since claims 1 and
31 also require tubular longitudinal members of circular
cross-section, and thus are considered patentable over the
applied prior art for the same reasons as claim 15.
Rejection (2)
Bergquist discloses a cable support system having racks
11 with upper and lower longitudinal members 13, cross members
14, and side members 17, all of the members being welded
together. The upper and lower longitudinal members of
Appeal No. 2000-1651
Application No. 08/871,923
7
Bergquist are, however, made of wire rather than tubing. The
ends of the racks are coupled together by bolts 21 passing
through eyes 20 at the ends of the longitudinal members.
Where the cable support changes direction (diverges), as at
33, 37 or 38 in Fig. 1, a rack may be bent and its ends
coupled to the ends of the two diverging racks. The examiner
states the basis of the rejection as (answer, page 8):
Burke teaches that it is known to have upper and
lower support members (24 and 25) being metal tubes.
It would have been obvious to one having ordinary
skill in the art at the time of the invention to
have modified Bergquist to have made the upper and
lower support members of metal tubes for purpose of
reducing the amount of material being used
therefore cost effective.
We will not sustain this rejection. In the first place,
Bergquist so emphasizes the advantages of making the rack out
of wire (see, e.g., col. 1, lines 54 to 72, and col. 3, lines
5 to 7) that we do not believe that one of ordinary skill
would have been motivated to substitute tubing for wire.
Moreover, Burke does not disclose bending the tubular
longitudinal members, in fact, it is not clear how Burke's
support system would be routed around a corner, other than by
using a connection as shown in Fig. 4. Also, it is not
Appeal No. 2000-1651
Application No. 08/871,923
8
evident how Burke's supports are connected end-to-end, and it
does not appear that they could use the bolt-and-eye system
disclosed by Bergquist. For these reasons, we do not consider
that one of ordinary skill would have found it obvious to
modify Bergquist in view of Burke.
Rejection Pursuant to 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claims 20, 31 and 32 are
rejected for failing to comply with the second paragraph of
35 U.S.C. § 112, for the following reasons:
(A) Claim 20 is indefinite in that the term "support" in line
1 has no antecedent basis.
(B) In claim 31, appellant recites in lines 1 and 2 "The
method of supporting electrical cable comprising: preparing a
support [etc.]," and then recites in line 21 "the method
comprising:" These two recitations of "method comprising"
render the claim indefinite in that it is not clear whether
the claimed method
includes the step of preparing a support, or only the steps of
laying cable and inserting cable (lines 22 to 27).
Conclusion
The examiner's decision to reject claims 1 to 32 is
Appeal No. 2000-1651
Application No. 08/871,923
9
reversed. Claims 20, 31 and 32 are rejected pursuant to 37
CFR
§ 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. and Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that "[a] new ground of rejection
shall not be considered final for purposes of judicial
review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 2000-1651
Application No. 08/871,923
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)

IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. MCQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD B. LAZARUS )
Administrative Patent Judge )
IAC:lbg
SENNIGER, POWERS, LEAVITT & ROEDEL
Appeal No. 2000-1651
Application No. 08/871,923
11
ONE METROPOLITAN SQUARE, 16TH FLOOR
ST. LOUIS, MO 63102