10889720 (B.P.A.I. Sep. 9, 2009)

Ex Parte Sahlin et al

Board of Patent Appeals and InterferencesSep 9, 2009

10889720 (B.P.A.I. Sep. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JENNIFER J. SAHLIN, STEVEN R. VANHOOSE, KENNETH D. WANNED, and STEPHEN M. RANDALL ____________ Appeal 2009-002533 Application 10/889,720 Technology Center 2800 ____________ Decided: September 9, 2009 ____________ Before EDWARD C. KIMLIN, CHARLES F. WARREN, and MARK NAGUMO, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: Appeal 2009-002533 Application 10/889,720 1. A support channel for light fiber, said channel comprising: a fiber support member, said fiber support member being designed to partially circumscribe a light fiber; and a mounting member designed to engage said fiber support member, such that when said mounting member engages said fiber support member partially circumscribing said light fiber, said fiber support member is able to slide along said mounting member. The Examiner relies upon the following references as evidence of obviousness (Ans. 3): Seckerson 3,807,675 Apr. 30, 1974 Sugiyama 6,278,827 Aug. 21, 2001 Appellants’ claimed invention is directed to a support channel for light fiber. The channel comprises a fiber support member that partially circumscribes a light fiber and a mounting member which engages the fiber support member. The fiber support member can slide along the mounting member when the support member partially circumscribes the light fiber. Appealed claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Seckerson. Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Seckerson in view of Sugiyama. Appellants do not separately argue any particular claim on appeal. Also, Appellants do not present a separate, substantive argument against the § 103 rejection of claims 9-12. Accordingly, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary 2 Appeal 2009-002533 Application 10/889,720 skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. There is no dispute that Seckerson, like Appellants, discloses a support channel for light fiber comprising a fiber support member that is engaged to a mounting member. As recognized by the Examiner, Seckerson does not teach that the fiber support member is able to slide along the mounting member when the support member partially circumscribes the light fiber. Appellants emphasize that Seckerson, rather than teaching that the support member slides along the mounting member, discloses that the fiber support member is mounted on stud 23 of the mounting member such that the support member is securely clamped onto the stud. Appellants also emphasize that the reference teaches that once the rod of the fiber is inserted between the arms 12 and 13 of the support member, the support member is securely clamped on the stud and cannot be easily removed therefrom until the rod has been removed from the support (col. 3, ll. 17-21). Therefore, Appellants contend that “it cannot be reasonably be said that Seckerson’s disclosure appears to be sufficient to support the functionality of sliding” of the support member on the mounting member (Br. 4, second para.). We are not persuaded by Appellants’ argument. Even though Seckerson teaches that the support member is securely clamped onto the mounting member, we agree with the Examiner that it is reasonable to conclude that Seckerson’s support member will slide along the mounting member when sufficient force is applied thereto. The claims on appeal do 3 Appeal 2009-002533 Application 10/889,720 not recite any specific force that is necessary to slide the support member along the mounting member. Furthermore, the appealed claims do not define the support channel in combination with the light fiber but only recite a function that “when said mounting member engages said fiber support member partially circumscribing said light fiber, said fiber support member is able to slide along said mounting member”. Therefore, the appealed claims do not require any particular relationship between the support member and the light fiber such that a snug fit results when the support member partially circumscribes the fiber. Hence, the appealed claims encompass a support member having a channel much larger than the diameter of the fiber that it partially circumscribes, thereby allowing the fiber to be supported in the channel without a close fit. Consequently, the support channel depicted in Figure 1 of Seckerson meets the claim requirement when an appropriately sized fiber rests in the channel and allows arms 12 and 13 to be pinched and the support to slide along the mounting member. We also concur with the Examiner that “[t]he fastener of Seckerson’s is capable of performing the recited function of sliding, at least in the embodiments of Figures 7 and 8, when sufficient lateral force is applied onto the side surface of the faster [sic], even though the fastener is securely clamped” (Ans. 7, last para.). As a final point, we note that Appellants base no argument upon objective evidence of non-obviousness, such as unexpected results. In conclusion, based on the foregoing, the Examiner’s decision rejecting the appealed claims 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) (2008). 4 Appeal 2009-002533 Application 10/889,720 AFFIRMED ssl 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 5