Ex Parte Vogel et al

Board of Patent Appeals and Interferences

Feb 4, 2008

10440995 (B.P.A.I. Feb. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK O. VOGEL, CHRISTOPHER P. GEMME,
MARK E. ALRUTZ, and MARTIN B. LEE
____________

Appeal 2007-4361
Application 10/440,995
Technology Center 3600
____________

Decided: February 4, 2008
____________

Before WILLIAM F. PATE, III, TERRY J. OWENS, and JOHN C. KERINS,
Administrative Patent Judges.

PATE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-40, all the claims currently pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART and REMAND.

THE INVENTION
Appellants claimed invention is directed to a cable deployment and storage
system (Spec. 2:31-34). Claims 26 and 32, reproduced below, are representative of
the subject matter on appeal.
26. A cable reel comprising:
a hub having an outer surface for receiving a length of cable thereon;
a pair of inner end flanges carried by respective opposing ends of said
hub and extending radially outwardly from the outer surface of said hub;
a pair of removable outer end flanges carried by respective inner end
flanges and extending radially outwardly therefrom, each removable outer
end flange having an inner circumferential edge spaced radially outwardly
from the outer surface of said hub by a respective one of said inner end
flanges; and
a length of cable carried on said hub between said pair of inner end
flanges and said pair of removable outer end flanges.

32. A method for deploying and storing a length of cable on a cable
reel comprising a hub having an outer surface for receiving the length of the
cable thereon, a pair of inner end flanges carried by respective opposing
ends of the hub and extending radially outwardly from the outer surface of
the hub, and a pair of removable outer end flanges carried by respective
inner end flanges, each removable outer end flange having an inner
circumferential edge spaced radially outwardly from the outer surface of the
hub by a respective one of the inner end flanges, the method comprising:
rotably mounting the cable reel;
deploying the length of cable from the cable reel; and
removing the outer end flanges after deploying so that the inner end
flanges remain extending radially outwardly from the outer surface of the
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hub to store any remaining length of cable therebetween and to reduce a
radial size of the cable reel.

THE REJECTIONS
The Examiner relies upon the following evidence in the rejections:
Ruesing, Jr. US 929,790 Aug. 3, 1909
Beck US 2,000,372 May 7, 1935
Morris US 3,033,489 May 8, 1962
Bopst, III US 4,295,921 Oct. 20, 1981
Cooke US 4,756,488 Jul. 12, 1988
Holliday US 5,692,701 Dec. 2, 1997
The following rejections are before us for review.
1. Claims 1, 2, 5, 7, 8, 11, 13, 16, 17, 20-23, 26-28, 31-33, 37 and 38
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Beck and Applicant’s
Admitted Prior Art (“APA”).
2. Claims 3, 14, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Beck, APA, and Bopst.
3. Claims 4, 15, and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Beck, APA, and Ruesing.
4. Claims 6 and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Beck, APA, and Holliday.
5. Claims 9, 18, 24, 29, and 39 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Beck, APA, and Morris.
6. Claims 10, 12, 19, 25, 30, and 40 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Beck, APA, and Cooke.
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ISSUES
Appellants contends that “there is no proper motivation provided by the
Beck patent, the admitted prior art, or by Official Notice to wind cable on a cable
reel with inner flanges and removable outer flanges and then mount the wound
cable on a mounting device for deployment” (Br. 10). The Examiner found that
the structural limitations of the apparatus of claims 1 and 26 are met by the applied
combination.
The issues before us are:
1. Whether Appellants have shown that the Examiner erred in rejecting
claims 1, 2, 5, 7, 8, 11, 13, 16, 17, 20-23, 26-28, 31-33, 37 and 38 as unpatentable
over Beck and APA.
2. Whether Appellants have shown that the Examiner erred in rejecting
claims 3, 14, and 34 as unpatentable over Beck, APA, and Bopst.
3. Whether Appellants have shown that the Examiner erred in rejecting
claims 4, 15, and 35 as unpatentable over Beck, APA, and Ruesing.
4. Whether Appellants have shown that the Examiner erred in rejecting
claims 6 and 36 as unpatentable over Beck, APA, and Holliday.
5. Whether Appellants have shown that the Examiner erred in rejecting
claims 9, 18, 24, 29, and 39 as unpatentable over Beck, APA, and Morris.
6. Whether Appellants have shown that the Examiner erred in rejecting
claims 10, 12, 19, 25, 30, and 40 as unpatentable over Beck, APA, and Cooke.

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FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).
1. Beck teaches a flanged spinning bobbin where one or both flanges
includes one or more detachable rings permitting reduction of the diameter of the
upper flange when the thread has been partly drawn off (Beck, col. 1, ll. 8-12).
2. As illustrated in Fig. 1, the flanged bobbin comprises spindle a having
bore g, a lower flange b, and an upper flange c, f (Beck, col. 2, ll. 6-7).
3. The detachable ring f is attached by a screw thread, a bayonet-catch or
the like e to the flange c and is placed on a polished pad d (Beck, col. 2, ll. 7-11).
4. Cooke teaches a reel core for winding lengths of wire, cord, tubing, or
similar rope-like articles thereon to be stored (Cooke, col. 1, ll. 5-7).
5. The reels may ranges in size from several feet in diameter and
weighing several hundred pounds for use in holding coils of steel suspension or
electrical cable, down to fraction of an inch in diameter and fractions of an ounce
in weight for holding thread, ribbon, or tape (Cooke, col. 1, ll. 12-16).
6. Cooke teaches that the reel is designed so that a user may alternately
choose to deploy the rope-like product by placing the reel core on an axle and
rotating the hub, or by removing the product from the side the hub without
interference from the flange (Cooke, col. 2, ll. 46-50).
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7. The reel core 10 includes a central hub section 12 and one or more
flange assemblies 14. The hub section 12 has an axis of rotation 16 and an axle
bore 18 extending entirely through the hub section 12. The axle bore 18 has a
diameter sufficient to receive and accommodate an axle 24 upon which the reel
core 10 would be rotated (Cooke, col. 4, ll. 31-33 and 40-50).
8. The reel core 10 has a mounting rim 34 located at each of the ends 20,
22 of the hub section 12. The mounting rims 34 are each comprised on an inner
rim wall 36 and an outer rim wall 38 which extend radially outward from the barrel
surface 26 generally parallel to one another, and around the barrel surface 26 of the
hub section 12 (Cooke, col. 5, ll. 23-29).
9. Cooke does not teach that the outer flanges 40 has an inner
circumferential edge spaced radially outwardly from the outer surface of the hub
by a respective one of the inner end flanges.
10. Ruesing, Morris, Bopst, and Holliday each fail to teach a cable reel
comprising a pair of removable outer end flanges.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
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subject matter and the prior art, and (3) the level of skill in the art. Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court in
Graham further noted that evidence of secondary considerations “might be utilized
to give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739,
and discussed circumstances in which a patent might be determined to be obvious.
In particular, the Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR,
127 S.Ct. at 1739 (citing Graham, 383 U.S. at 12 (emphasis added)), and
reaffirmed principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
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Id. at 1740. The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements according to
their established functions.” Id.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained,
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of
demands known to the design community or present in
the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent
reason to combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis should
be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”)). However, “the
analysis need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.
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ANALYSIS
Rejection of claims 1, 2, 5, 7, 8, 11, 13, 16, 17, 20-23, 26-28, 31-33, 37 and 38 as
unpatentable over Beck and Applicant’s Admitted Prior Art (“APA”)
Appellants argue claims 1, 2, 5, 7, 8, 11, 13, 16, 17, 20-23, 32, 33, 37, and
38 as a group (Br. 10). As such, we select claim 1 as a representative claim and the
remaining claims of the group stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
In rejecting claim 1, the Examiner held it “would have been obvious to a
person having ordinary skill in the art to rotatably mount the spool [of Beck] to
facilitate unwinding” and “to wind cable with connectors on the spool of Beck”
(Answer 3-4). Appellants contend that “the Examiner provides no motivation as to
why an artisan would wind cable on a cable reel with inner flanges and removable
outer flanges and the mount the wound cable reel on a mounting device for
deployments based upon the disjoint teachings in the textile area of a thread bobbin
with a removable flange at its upper end” (Br. 10). We agree with Appellant.
Although the Examiner is not required to seek out precise teachings directed
to the specific claimed subject matter, rejections based on obviousness cannot be
supported by mere conculsory statements. KSR, 127 S.Ct. at 1740-41. The Court
noted that “[t]o facilitate review, this analysis should be made explicit.” Id. (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)). In the present case, the Examiner merely states it
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would have been obvious to modify the thread bobbin of Beck to include the
various missing elements because those elements are well known in the art without
providing any rationale as to how or why one skilled in the art would modify the
thread bobbin as taught by Beck to be used as a cable reel in a cable deployment
and storage system as recited in claim 1. As such, we reverse the Examiner’s
rejections of claims 1, 2, 5, 7, 8, 11, 13, 16, 17, 20-23, 32, 33, 37, and 38 as
unpatentable over Beck and the APA.
Appellants argue claims 26-28 and 31 as a group (Br. 11). As such, we
select claim 26 as a representative claim and the remaining claims of the group
stand or fall with claim 26. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellants contend that the “Examiner fails to provide a proper prior art
motivation to combine disjoint teachings from current cable technology and textile
technology from 1935” (Br. 11). More specifically, Appellants contend that “the
Examiner fails to cite disclosure in the references to support his assertion, or to
provide a convincing line of reasoning as to why an artisan would have found the
claim recitations to be obvious in light of the teachings of the cited references”
(Id.). We agree with Appellants for those reasons presented supra with respect to
claim 1. As such, we cannot sustain the Examiner’s rejection of claims 26-28 and
31 as unpatentable over Beck and the APA.

Rejection of claims 3, 14, and 34 as unpatentable over Beck, APA, and Bopst
Claims 3, 14, and 34 each recite either a cable reel or method of using a
cable reel comprising a pair of removable outer end flanges as recited in claim 1.
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Bopst fails to teach a cable reel comprising a pair of removable outer end flanges
(Finding of Fact 10). Accordingly, we cannot sustain the Examiner’s rejection of
claims 3, 14, and 34 as unpatentable over Beck, APA, and Bopst for the same
reasons presented, supra, with respect to claim 1.

Rejection of claims 4, 15, and 35 as unpatentable over Beck, APA, and Ruesing
Claims 4, 15, and 35 each recite either a cable reel or method of using a
cable reel comprising a pair of removable outer end flanges as recited in claim 1.
Ruesing fails to teach a cable reel comprising a pair of removable outer end flanges
(Finding of Fact 10). Accordingly, we cannot sustain the Examiner’s rejection of
claims 4, 15, and 35 as unpatentable over Beck, APA, and Ruesing for the same
reasons presented, supra, with respect to claim 1.

Rejection of claims 6 and 36 as unpatentable over Beck, APA, and Holliday
Claims 6 and 36 each recite either a cable reel or method of using a cable
reel comprising a pair of removable outer end flanges as recited in claim 1.
Holliday fails to teach a cable reel comprising a pair of removable outer end
flanges (Finding of Fact 10). Accordingly, we cannot sustain the Examiner’s
rejection of claims 6 and 36 as unpatentable over Beck, APA, and Holliday for the
same reasons presented, supra, with respect to claim 1.

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Rejection of claims 9, 18, 24, 29, and 39 as unpatentable over Beck, APA, and
Morris
Claims 9, 18, 24, 29, and 39 each recite either a cable reel or method of
using a cable reel comprising a pair of removable outer end flanges as recited in
claim 1. Morris fails to teach a cable reel comprising a pair of removable outer end
flanges (Finding of Fact 10). Accordingly, we cannot sustain the Examiner’s
rejection of claims 9, 18, 24, 29, and 39as unpatentable over Beck, APA, and
Morris for the same reasons presented, supra, with respect to claim 1.

Rejection of claims 10, 12, 19, 25, 30, and 40 as unpatentable over Beck, APA, and
Cooke
In rejecting claims 10, 12, 19, 25, 30, and 40, the Examiner found that
Cooke teaches a “spool/reel in which removable outer flanges are provided to
reduce the size of the reels”, the outer flanges having different shapes, e.g., a
square, and “markings, designations, or patterns for identification purposes”
(Answer 6). Cooke further teaches that the spool/reel may range in size from
several feet in diameter for holding steel suspension or electrical cable, down to
fractions of an inch in diameter for holding thread, ribbon, or tape (Finding of Fact
5). Cooke still further teaches that a user may vary the overall size of the reel (i.e.,
interchange the removable flanges) to accommodate the amount of product
remaining on the reel as the product is depleted or refilled (Finding of Fact 6).
Cooke does not teach that the outer flanges 40 has an inner circumferential edge
spaced radially outwardly from the outer surface of the hub by a respective one of
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the inner end flanges as claimed (Finding of Fact 9). Beck, however, teaches a
spool/reel for storing thread which includes outer removable flanges f having an
inner circumferential edge spaced radially outwardly from the outer surface of the
hub by a respective one of the inner end flanges (Finding of Facts 1-3). Therefore,
the combination of Beck and Cooke is merely the substitution of one known
structure for mounting the removable flanges of Cooke with another structure as
taught by Beck.
Where, as here “[an application] claims a structure already known in the
prior art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result,” KSR,
127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S.
50-51, 148 USPQ 479, 483 (1966)). Appellants have provided no evidence that
replacing the removable flange of Cooke with the removable flange as taught by
Beck yields an unexpected result or was uniquely challenging or difficult for one
of ordinary skill in the art. To the contrary, Appellants merely contend that the
Examiner has not provided a connection between the “teachings from current cable
technology and textile technology from 1935” (Br. 11). Cooke teaches the field of
spools/reel spans from large steel or electrical cable reels to small thread or ribbon
reels (Finding of Fact 5). As such, we sustain the Examiner’s rejection of claims
10, 12, 19, 25, 30, and 40 as unpatentable over Beck, APA, and Cooke.

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REMAND
We remand this application to the Examiner for consideration of whether the
combination of Cooke, Beck, Holliday, and the Admitted Prior Art renders obvious
the subject matter of claims 1, 6-12, 26-32 and 36-40.
Cooke teaches a reel core for winding lengths of wire, cord, tubing, or
similar rope-like articles thereon to be stored (Finding of Fact 4). The reels may
range in size from several feet in diameter and weighing several hundred pounds
for use in holding coils of steel suspension or electrical cable, down to a fraction of
an inch in diameter and fractions of an ounce in weight for holding thread, ribbon,
or tape (Finding of Fact 5). Cooke teaches that the reel is designed so that a user
may alternately choose to deploy the rope-like product by placing the reel core on
an axle and rotating the hub, or by removing the product from the side of the hub
without interference from the flange (Finding of Fact 6). The reel core 10 includes
a central hub section 12 and one or more flange assemblies 14. The hub section 12
has an axis of rotation 16 and an axle bore 18 extending entirely through the hub
section 12. The axle bore 18 has a diameter sufficient to receive and accommodate
an axle 24 upon which the reel core 10 would be rotated (Finding of Fact 7). The
reel core 10 has a mounting rim 34 located at each of the ends 20, 22 of the hub
section 12. The mounting rims 34 are each comprised on an inner rim wall 36 and
an outer rim wall 38 which extend radially outward from the barrel surface 26
generally parallel to one another, and around the barrel surface 26 of the hub
section 12 (Finding of Fact 8).
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Beck teaches a flanged spinning bobbin where one or both flanges includes
one or more detachable rings permitting reduction of the diameter of the upper
flange when the thread has been partly drawn off (Finding of Fact 1). As
illustrated in Fig. 1, the flanged bobbin comprises spindle a having bore g, a lower
flange b, and an upper flange c, f (Finding of Fact 2). The detachable ring f is
attached by a screw thread, a bayonet-catch or the like e to the flange c and is
placed on a polished pad d (Finding of Fact 3). Holliday teaches a cable reel
mounting device including a pair of leg assemblies 14 and a shaft 12 extending
therebetween for supporting a cable reel during deployment (Holliday, Fig. 1).
As such, we remand this application to the Examiner to consider whether it
would have been obvious to one having ordinary skill in the art at the time of the
invention to modify the spool/reel having removable outer flanges of Cooke with
the removable outer flanges of Beck. Additionally, the Examiner should consider
whether a process claim containing limitations directed to mounting a cable reel
on a wall mounting device would have been obvious in the event he or she finds
that it would have been obvious to modify the outer flanges of Cooke with the
removable outer flanges of Beck.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1, 2, 5, 7, 8, 11, 13, 16, 17, 20-23, 26-28, 31-33, 37 and 38 as
unpatentable over Beck and APA, claims 3, 14, and 34 as unpatentable over Beck,
APA, and Bopst, claims 4, 15, and 35 as unpatentable over Beck, APA, and
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Ruesing, claims 6 and 36 as unpatentable over Beck, APA, and Holliday, and
claims 9, 18, 24, 29, and 39 as unpatentable over Beck, APA, and Morris. We
further conclude that Appellants have not shown that the Examiner erred in
rejecting claims 10, 12, 19, 25, 30, and 40 as unpatentable over Beck, APA, and
Cooke.

DECISION
The Examiner’s decision under 35 U.S.C. § 103(a) to reject claims 10, 12,
19, 25, 30, and 40 as unpatentable over Beck, APA, and Cooke is affirmed, and the
Examiner’s decision to reject claims 1, 2, 5, 7, 8, 11, 13, 16, 17, 20-23, 26-28, 31-
33, 37 and 38 as unpatentable over Beck and APA, claims 3, 14, and 34 as
unpatentable over Beck, APA, and Bopst, claims 4, 15, and 35 as unpatentable
over Beck, APA, and Ruesing, claims 6 and 36 as unpatentable over Beck, APA,
and Holliday, and claims 9, 18, 24, 29, and 39 as unpatentable over Beck, APA,
and Morris is reversed.

AFFIRMED-IN-PART and REMANDED

JRG

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