Ex Parte Sweigard

Board of Patent Appeals and Interferences

Apr 26, 2011

10509928 (B.P.A.I. Apr. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL J. SWEIGARD
____________

Appeal 2009-009535
Application 10/509,928
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Daniel J. Sweigard (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 1-
4, 6-12, and 14 as unpatentable over Appellant’s Admitted Prior Art
(hereafter “AAPA”) (Spec. 1, ll. 23-28 and figs. 1A and 1B) and Imura (US
5,248,119, issued Sep. 28, 1993) and claims 5, 13, and 15-20 as unpatentable
over AAPA, Imura, and Tabor (US 3,710,674, issued Jan. 16, 1973). We
have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to mounting clips for fire detector wires
in an aircraft. Spec. 1, ll. 3-4 and fig. 2.
Claim 11 is representative of the claimed invention and reads as
follows:
11. A clip for mounting a fire detector to a structure, the clip
comprising:
a clip member defining a channel; and
an anti-friction insert member disposed in the channel and
adapted to carry the fire detector wire.

SUMMARY OF DECISION
We REVERSE and ENTER a NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

ANALYSIS
Each of independent claims 1, 11, and 15 requires an “anti-friction
insert member.” App. Br. , Claims Appendix. The Examiner found that
AAPA fails to disclose an “anti-friction insert member.” Ans. 4. The
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Examiner further found that the member 4 of Imura constitutes an “anti-
friction insert member” because Imura discloses that member 4 is a
“resinous or rubber elastic member.” Ans. 4, 6. According to the Examiner:
It is well known that "a resinous" member would
include "plastic material" which provides anti-
friction characteristics inherently as supported by
example within Tabor 3,710,674 which proves that
is well known and conventional to have a "sleeve
44 is constructed of a suitable anti-friction plastic
material, such as the materials known as Teflon or
Nylon, each of which has low friction
characteristics but each of which is sufficiently
rigid and resilient to function as the split sleeve of
the present invention".
Ans. 6. Emphasis added.
It appears that the Examiner is relying on a theory of inherency to
establish that because a “resinous” material includes a “plastic” material and
Tabor discloses that plastic materials such as Nylon® and Teflon® have
anti-friction properties, then the “resinous” material of Imura’s member 4
also has anti-friction properties. However, in relying upon the theory of
inherency, the Examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). In this case, the
question raised is whether the “resinous” material of Imura’s member 4
necessarily has anti-friction properties so as to constitute an “anti-friction”
insert member.
While the Examiner correctly points out that Tabor discloses Nylon®
and Teflon® as known anti-friction materials, this in no way demonstrates
that all “resinous” materials have “anti-friction” properties, as the Examiner
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contends. Just because Nylon® and Teflon® constitute “resinous” materials
that are plastic materials with anti-friction properties does not necessarily
mean that all resinuous/plastic materials have anti-friction properties. For
example, it is known that the plastic material ethylene vinyl acetate (EVA)
has a high friction coefficient and as such lacks anti-friction properties. See
e.g., U.S. Patent No. 3,866,245, issued Feb. 18, 1975, col. 2, ll. 14-16.
Hence, although Imura discloses a “resinous” member, it does not
necessarily mean that the “resinous” member of Imura has anti-friction
properties so as to constitute an “anti-friction insert member.” Therefore,
the Examiner’s finding that the “resinous” member of Imura has anti-friction
properties so as to constitute an “anti-friction insert member” is mere
speculation and conjecture based on an unfounded assumption that all
“resinous” materials, i.e., plastic materials, necessarily have anti-friction
properties.
Since speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independent claims 1 and 11 and dependent
claims 2-4, 6-10, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over
AAPA and Imura cannot be sustained. See In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988) (If an independent claim is nonobvious under 35 U.S.C. §
103, then any claim dependent therefrom is nonobvious).
With respect to claims 5, 13, and 15-20, the addition of Tabor does
not remedy the deficiencies of AAPA and Imura as described above.
Accordingly, the rejection of claims 5, 13, and 15-20 under 35 U.S.C. §
103(a) as unpatentable over AAPA, Imura, and Tabor likewise cannot be
sustained.

Appeal 2009-009535
Application 10/509,928

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NEW GROUNDS OF REJECTION
We make the following new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
Claims 11 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over AAPA, Imura, and Tabor.
AAPA discloses a clip for mounting a fire detector to a structure
including a base portion 13 and a clamp portion 11 upraised from the base
portion at an angle of about 155º and having fingers 21, 23, and 25 that
define a channel 27. Spec. 1, ll. 23-28 and figs. 1A and 1B. AAPA does not
disclose an anti-friction insert member. Imura discloses a clamp body for
fixing a pipe P to an automobile structure so as to eliminate frictional flaws
caused by vibrations (excitations) of the automobile. Imura, col. 1, ll. 27-32
and 48-52. Imura further discloses a resinous member 4 (plastic member)
having an elongated shaft and flanges on the ends for holding pipe P. Imura,
col. 3, ll. 9-13 and fig. 1. Therefore, it would have been obvious for a
person of ordinary skill in the art to have provided the resinous member
(plastic member) of Imura to hold the detector wire in the fire detector of
AAPA because Imura specifically discloses that it would eliminate frictional
flaws caused by vibrations (excitations) of the structure to which the fire
detector is mounted. Tabor discloses Nylon® and Teflon® as plastic
materials that have anti-friction properties. Tabor, col. 4, ll. 38-41. It would
have been obvious for a person of ordinary skill in the art to have used
Nylon® or Teflon® as taught by Tabor to make the resinous member
(plastic member) of AAPA and Imura because anti-friction properties would
allow the resinous member to slide within the clamp of AAPA and Imura
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and hence, further prevent frictional flaws caused by vibrations (excitations)
of the structure to which the fire detector is mounted.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP §
1213.02.

SUMMARY
The decision of the Examiner to reject claims 1-20 is reversed.
We enter a new ground of rejection of claims 11 and 14 under 35
U.S.C. § 103(a) as unpatentable over AAPA, Imura, and Tabor.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that, TO AVOID TERMINATION
OF THE APPEAL AS TO THE REJECTED CLAIMS, Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
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(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

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