Ex Parte Siragusa

Patent Trial and Appeal Board

May 23, 2017

13382785 (P.T.A.B. May. 23, 2017)

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.
13/382,785 01/06/2012 George Siragusa 22805 (713-2412) 7993
27889 7590 05/23/2017
ILLINOIS TOOL WORKS INC.
PATENT DEPARTMENT
155 HARLEM AVENUE
GLENVIEW, IL 60025
EXAMINER
MORRIS, TAYLOR L
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
05/23/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE SIRAGUSA1
Appeal 2016-008306
Application 13/382,785
Technology Center 3600
Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and
JOHN D. HAMANN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20. We have jurisdiction over the appeal of these
claims pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Illinois Tool Works, Inc. as the real party in interest
(App. Br. 4).
Appeal 2016-008306
Application 13/382,785
STATEMENT OF CASE2
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter added]:
The claims remain unchanged from the last submission:
1. A self-centering strap, comprising;
[a] a pedestal;
[b] a bed having a surface for receiving an item held by
the self-centering strap;
[c] a cinch strap having a proximal end secured to an end
of said pedestal;
[d] a strap-receiving aperture in said pedestal for
receiving said strap; and
[e] an abutment finger having a surface against which the
item is urged, said abutment finger having an end coinciding
with said surface of said abutment finger such that said end is
connected to said bed so as to not extend beyond said bed and a
distal end extending away from and beyond said bed from a
vertical side of said pedestal opposite from said proximal end of
said strap, said finger extending above and outwardly of a plane
defined by said surface of said bed.
REJECTIONS
Claims 1—4, 8—13, and 16—18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takagi (US 4,875,647, Oct. 24, 1989) in view of
Bulanda (US 4,191,334, Mar. 4, 1980). Final Act. 3—10.
2 Our Decision will make reference to the Final Office Action (“Final Act.,”
mailed June 18, 2015), Appellant’s Appeal Brief (“App. Br.,” filed Dec. 21,
2015), the Examiner’s Answer (“Ans.,” mailed Aug. 5, 2016), and
Appellant’s Reply Brief (“Reply Br.,” filed Aug. 30, 2016).
2
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Application 13/382,785
Claims 5—7, 14, 15, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Takagi in view of Bulanda, and further in view of
Igarashi (US 7,143,480 B2, Dec. 5, 2006). Final Act. 10-12.
ANALYSIS
Issue on Appeal: Did the Examiner err in combining Takagi and
Bulanda to teach or suggest all the limitations of claims 1—20 because the
references are not properly combinable?
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. See App. Br. 11—21; Reply Br. 2—
4. Further, we have reviewed the Examiner’s response regarding claims 1—
20 to the arguments presented by the Appellant.3
We disagree with Appellant’s 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 Appellant’s Appeal Brief. Ans. 5—9.
We concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
The Examiner finds that Takagi teaches elements [a] through [d] of
exemplary claim 1 (Final Act. 3—6; Takagi Figures 1—3) and Bulanda
teaches element [e] (Final Act. 3—6; Bulanda Figures 2—3).
3 Separate patentability is not argued for claims 2—20. Although separate
headings are provided for independent claims 10 and 16, the discussions
therein merely repeat or reference the arguments directed to claim 1. Except
for our ultimate decision, these claims are not discussed further herein.
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Application 13/382,785
Appellant’s arguments with respect to the Examiner’s obviousness
rejection of claims 1—20 mainly focus on whether Takagi and Bulanda are
combinable. App. Br. 11—21; Reply Br. 2-A.
Appellant contends,
The upper member 3 of Takagi. . . would be either
eliminated entirely or not functional if the leg members 66 of
Bulanda are substituted in place of the side members 5 of
Takagi. That is, by modifying Takagi to include the leg
members 66, the upper member 3 would not have any surface
that would be capable of receiving an item, as the leg members
66 would, instead, contact the item as shown in Figure 5 of
Bulanda. See Bulanda at Figures 3 and 5. As shown in Figures
3 and 5, the leg members 66 are of sufficient size and shape
such that they would prevent an item from contacting the upper
member 3 of Takagi, if such reference was modified by
Bulanda. . . . Accordingly, the proposed combination of Takagi
and Bulanda does not describe, teach, or suggest a “bed having
a surface for receiving an item held by the self-centering strap,”
as the leg members 66 of Bulanda eliminate such a bed, or at
the very least prevent the upper member 3 from receiving the
item.
App. Br. 14 (emphasis omitted).
Appellant also contends,
However, as shown in Figures 3 and 5 of Bulanda, in
order for the edge surfaces 76 to receive an item in the context
of the device of Takagi when used to replace the side members
5 of Takagi, the associated leg members 66 would necessarily
have to be turned upside down. Compare Takagi at Figure 3
and Bulanda at Figure 5. In particular, the side members 5 of
Takagi are configured to receive a structure on interior surfaces,
while the edge surface 76 of the leg members 66 of Bulanda
receive the wire 22 on exterior (upper as shown in Figure 5 of
Bulanda) surfaces.
. . . Moreover, attempting to modify Takagi in such a
manner changes the principle of operation of Takagi, as Takagi
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Application 13/382,785
discloses interior surfaces of the side members 5 contacting a
structure, but not exterior surfaces.
App. Br. 15.
In response, the Examiner finds:
Takagi supports an item on the bed (Fig. 2-3, Element 3)
and finger (Fig. 2-3, Element 5) surfaces of a pedestal (Fig. 2-3,
Element 4) and secures that item to these surfaces via a strap
(Fig. 2-3, Element 1) that extends from the rear of the pedestal.
The location of the strap is the critical difference between
Takagi and Bulanda and as this location was not modified in
any way through the combination the bed surface of Takagi
would remain functional even with the finger structure taught
by Bulanda. More specifically, Figure 5 of Bulanda shows that
its strap attaches to a receiving aperture located in the center of
an entrance surface (Fig. 5, Element 72) and as such it interacts
with the circular cross section of the supported item, preventing
it from resting on surface (72). Takagi, on the other hand, has a
strap which does not obstruct its bed surface 3 as it protrudes
from the rear of the pedestal (4). Therefore, the addition of the
finger structure from Bulanda would allow for larger elements
to be supported on the bed surface (3) and the fingers
simultaneously as there is no interaction with a strap surface to
prevent it.
In regards to Appellant’s argument regarding the bed
surface of Takagi being removed entirely, the fingers of
Bulanda are being used to modify the structure of the fingers in
Takagi. Replacing finger elements (5) in Takagi with the
structure of the fingers in Bulanda would not remove the bed
(3) as the finger elements protrude from the bed.
Ans. 5—6.
The Examiner also finds:
One of ordinary skill in the art would find the
modification of the fingers in Takagi with the upwardly curving
finger structure from Bulanda to be obvious, including and how
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Application 13/382,785
this specific modification was to be made. This is due to the
comparison of how Takagi and Bulanda are intended to support
their respective items. . . . The references both disclose straps
that wrap around a supported item, forming a loop with the item
inside the loop, and then attach to a receiving aperture which
enables a user to tighten the loop around the item. A person
having ordinary skill in the art who is modifying the fingers in
Takagi with the structure from Bulanda would use this
similarity to indicate how the fingers should be modified, as it
is obvious that the curved surface of the fingers in Bulanda is
intended to face in the direction which the securing loop is
located.
Additionally, as Bulanda does not teach that its finger
structure is rendered nonfunctional when supporting an item
from below, as that would severely limit the orientation that the
items could be placed in, they can be used to modify Takagi
with an upwardly curving finger structure.
Ans. 8—9.
We agree with the Examiner because Appellant’s arguments do not
take into account what the collective teachings of the prior art would have
suggested to one of ordinary skill in the art and are therefore ineffective to
rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” (citations omitted)). This reasoning is
applicable here.
We further note that the Examiner has found actual teachings in the
prior art and has provided a rationale for the combination (see Ans. 5—9).
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We note that the above-noted teachings suggest that the combination
involves the predictable use of prior art elements according to their
established functions, i.e., supporting larger elements on a strap designed to
hold a bundle of wires. There is no requirement that the problem solved by
the secondary reference be discussed by the primary reference to apply the
teachings of the secondary reference in a rejection under 35 U.S.C. § 103.
The Supreme Court has held that in analyzing the obviousness of combining
elements, a court need not find specific teachings, but rather may consider
“the background knowledge possessed by a person having ordinary skill in
the art” and “the inferences and creative steps that a person of ordinary skill
in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions,” id. at 417, and the basis for an obviousness rejection must
include an “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Id. at 418 (citation omitted). Here, the
Examiner has provided a rationale for the combination. Accordingly, we
find that the Examiner has provided sufficient motivation for modifying
Takagi with the teachings of Bulanda.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art, or in the proper combinability
of the prior art references as suggested by the Examiner. Therefore, we
sustain the Examiner’s obviousness rejection of claims 1—20.
Consequently, we conclude there is no reversible error in the
Examiner’s rejections of claims 1—20.
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DECISION
The Examiner’s decision rejecting claims 1—20 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)(l)(iv).
AFFIRMED
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