Ex Parte Waszak et al

Board of Patent Appeals and Interferences

Nov 28, 2011

10970566 (B.P.A.I. Nov. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS J. WASZAK and ROBERT NICOLI
____________

Appeal 2009-014867
Application 10/970,566
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 30, 32, 33, 35-49, and 51-56. Claims 1-29,
31, 34, and 50 have been cancelled. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). The Appellants’ representative presented oral
argument for this appeal on October 20, 2011.

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We sustain the rejections of claims 38-45. We do not sustain the
rejections of claims 30, 32, 33, 35-37, 46-49 and 51-56.
THE INVENTION
Claims 30, 38, and 46 are independent. Claim 38 is illustrative of the
claims on appeal. Claim 38, with italics added, recites:
38. A barb assembly for coupling a first cable duct section to a
second cable duct section, the barb assembly comprising:
a barb comprising a body and at least one barb arm, the
barb to engage at least one of the first and second cable duct
sections; and
at least one barb arm support positioned to engage the at
least one barb arm to increase the ability of the barb assembly
to oppose removal of the cable duct section from the cable duct
component.
Claim 30 recites a barb assembly for coupling a first cable duct
section to a second cable duct section including “at least one barb arm
support comprising a surface positioned to contact a portion of the barb
between the bent portion and the terminal end when a pull-out force is
applied to at least one of the first and second cable duct sections, wherein the
at least one barb arm support decreases a moment arm between a force
resulting from an attempted removal of at least one of the first and second
cable duct sections and a point about which the force acts.” (Italics added).
Claim 46 recites a barb assembly for coupling a first cable duct
section to a second cable duct section including “a barb arm support
comprising a first surface and a second surface, the first surface comprising
a curvilinear surface positioned to engage the at least one barb arm to
increase the ability of the barb assembly to oppose removal of the cable duct
section from the cable duct component.” (Italics added).
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THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. claims 30, 32, 33, 35, 36, and 38-45 under 35 U.S.C.
§ 102(e) as being anticipated by Ferris (US 6,709,186 B2, issued Mar.
23, 2004);1
2. claims 38-45 under § 102(e) as being anticipated by
Bernard (US 6,450,458 B1, issued Sep. 17, 2002);
3. claims 46-49, and 51-55 under 35 U.S.C. § 103(a) as
being unpatentable over Ferris; and
4. claims 37, 45, and 56 under § 103(a) as being
unpatentable over Ferris and Bernard.
OPINION
Ferris’ Guiding Member 101, as Depicted in Figure 7, Does Not Anticipate
the At Least One Barb Arm Support as Recited in Claims 30 and 38
Ferris discloses a coupler 100 including a first guiding surface 101, a
second guiding surface 102, and a space 103 between the guiding surfaces
101, 102 to receive trough members 201, 202. Ferris, col. 5, ll. 64-67, col. 6,
ll. 1-5. Ferris also discloses springs 120, 121, which are adjacent to side
walls 104, 105 of the first guiding surface 101. Ferris, col. 6, ll. 12-17, 22,
and Figs 6, 7, 13. Springs 120 have first and second arms 161, 162, which
are biased against and resist pull out of trough members 201, 202. Ferris,
col. 6, ll. 48-51. More specifically, the spring arms 161, 162 have ends 191

1 The Examiner provides two distinct rationales rejecting independent claim
38 under § 102(e) as being anticipated by Ferris. The Examiner rejects some
of claim 38’s dependent claims in a first rationale and all of claim 38’s
dependent claims in an alternative rationale. More specifically, the first
rationale rejects claims 38, 39, and 40-44, and the alternative rationale
rejects claims 38-45.
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and 192, respectively, to grip trough members 201, 202, respectively. Ferris,
col. 8, ll. 35-39.
The Examiner finds that the guide member 101 in Figure 72
corresponds to “at least one barb arm support” as called for in claim 38. It is
notable that for Ferris’ guide member 101, as depicted in Figure 7, to be
positioned to engage the spring arm 161, the application of a pull out force is
required to flex the spring arm 161 to bend through an arc. This assumes
that spring 120 is made of a material that can flex through that arc, and that
the end 191 of the spring arm 161 will not lose its grip of the trough
members 201, 202. Ferris, col. 8, ll. 35-39. However, Ferris does not
disclose the material of the spring and does not disclose the magnitude of
forces applied to the structural components of Figure 7.
The Appellants correctly contend that there is not sufficient evidence
that guiding surface 101, as depicted in Figure 7, is capable of engaging
spring arm 161 upon application of a pull out force via trough members 201,
202. See App. Br. 13. The Appellants’ contention is supported by the
possibility that bending the spring arm 161 towards the guiding member
101, as depicted in Figure 7, would likely break spring 120, or render
coupler 100 inoperable by failing to serve its intended purpose of coupling

2 It is notable that the referenced structures 101 and 102 depicted in Figure 7
are likely mislabeled. Based on Figures 2, 6, and 13, the structure
referenced in Figure 7 as the first guiding member 101 is likely the second
guiding member 102, and the second guiding member 102 is likely the first
guiding member 101. As such, we understand the Examiner’s finding that
the guide member depicted as 101 in Figure 7 is actually second guide
member 102. However, to be consistent with the Appellants’ Briefs and the
Examiner’s Answer, we maintain reference to 101 of Figure 7 as the
structure identified by the Examiner that corresponds to the “at least one
barb arm support” as recited in claims. See also Tr. of Oral Hr’g at 4.
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trough members 201, 202 together. See App. Br. 13, Reply Br. 6. Likewise,
the Examiner admits that spring arm 161 may break during bending. Ans.
10.
Therefore, the Examiner’s finding that guide member 101, as depicted
in Figure 7, is “positioned to engage the at least one barb arm to increase the
ability of the barb assembly to oppose removal of the cable duct section
from the cable duct component” as recited in claim 38 is incorrect. Without
knowing the magnitude of forces applied to the components shown in Figure
7 of Ferris and the ability of spring 120 to bend through an arc to engage
guiding member 101 with the end 191 of the spring arm 161 not losing its
grip of the trough members 201, 202, we do not find that guiding surface
101, as depicted in Figure 7, is necessarily capable of engaging or contacting
spring arm 161 upon application of a pull out force via trough members 201,
202. “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted). As such, we do not sustain the rejection of
claim 38. Dependent claims 39 and 40-44 fall for the same reason as claim
38, and we also do not sustain the rejection of those claims.
For the same reasons as provided above, the Examiner’s finding that
guide member 101, as depicted in Figure 7 of Ferris, does not correspond to
the “at least one barb arm support comprising a surface positioned to contact
a portion of the barb between the bent portion and the terminal end when a
pull-out force is applied to at least one of the first and second cable duct
sections” as recited in claim 30 is incorrect. As such, we do not sustain the
rejection of claim 30 under § 102(e). Dependent claims 32, 33, 35, and 36
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fall for the same reason as claim 30, and we also do not sustain the rejection
of those claims.
Ferris’ Locking Member 107 Anticipates the At Least One Barb Arm
Support as Recited in Claim 38
The Appellants argue claims 38-45 as a group. App. Br. 12, 14-15.
We select claim 38 as the representative claim, and the remaining claims
stand or fall with claim 38. See 37 C.F.R. § 41.37(c)(1)(vii).
Alternatively, the Examiner provides another rationale rejecting claim
38 as being anticipated by Ferris. Under this rationale, the Examiner finds
that locking element 107 corresponds to the “at least one barb arm support
positioned to engage the at least one barb arm to increase the ability of the
barb assembly to oppose removal of the cable duct section from the cable
duct component” as recited in claim 38. See Ans. 5, 11-12.
The Examiner finds that locking element 107 provides contact support
for the barb arms 161, 162 when a pull out force is applied by trough
members 201, 202. See Ans. 5, 11-12. The Examiner elaborates that when a
force is applied to withdraw the trough members 201, 202, barb arm 161
bends back allowing the withdrawal of a trough member. Ans. 12-13. As
depicted in Ferris’ Figure 7, the barb body associated with barb arm 161 is
adjacent and parallel to locking element 107. When a trough member is
pulled back, a force is applied to end 191. That force includes a horizontal
and a vertical component. The vertical component of the force pushes the
barb body, via the barb arm 161, against the locking element 107. As such,
the locking element 107 applies an equal and opposite force back onto the
barb body and barb arm 161. The force applied back onto the barb body and
barb arm 161 increases the ability of the Ferris’ coupler 100 to oppose
removal of the trough member. Thus, the Examiner finds that locking
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element 107 is positioned to engage barb arm 161, through the barb body,
and that engagement increases the barb assembly’s ability to oppose removal
of the trough member, e.g., trough member 201, from the coupler 100.
The Appellants contend that Ferris’ depictions in Figures 6 and 7 do
not evidence that locking element 107 can engage barb arm 161. App. Br.
15. The Appellants point out that locking element 107 does not come into
contact with the barb arms, “let alone act as a ‘barb arm support’ to engage
barb arms.” App. Br. 14; see also Reply Br. 6. However, as described
above, locking element 107 can engage barb arm 161 without directly
contacting barb arm 161.
The Appellants’ Specification does not include an explicit definition
of the term “engage.” In the absence of an express definition of a claim term
in the specification or a clear disclaimer of scope, the claim term is
interpreted as broadly as the ordinary usage of the term by one of ordinary
skill in the art reasonably would permit. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). The ordinary and customary meaning of “engage” as
directed to the subject of mechanics, (of gears or the like), is “to interlock.”
(DICTIONARY.COM UNABRIDGED, (“engage,” def. 15),
http://dictionary.reference.com/browse/engage (last visited Nov. 14, 2011)).
As depicted in Ferris’ Figure 7, and described above, when a pull-out
force is applied, barb arm (barb arm 161) and barb support (locking element
107) are indirectly engaged, i.e., interlocked, via the barb body associated
with barb arm 161. As such, the Appellants’ contention is not persuasive.
Lastly, the Appellants assert that the Examiner relied on official
notice to reject claim 38 (Reply Br. 6), but the Examiner has not done so.
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Thus, we sustain the rejection of claim 38 and dependent claims 39-
45.
Bernard’s Cover 500 Does Not Anticipate the At Least One Barb Arm
Support as Recited in Claim 38
The Appellants argue claims 38-45 as a group. App. Br. 12, 16-17.
We select claim 38 as the representative claim, and the remaining claims
stand or fall with claim 38. See 37 C.F.R. § 41.37(c)(1)(vii).
Bernard discloses a coupler 100, including a retention clip 300 and
cover 500, to connect duct sections 200. Bernard, col. 2, ll. 55-60, col. 4,
ll. 45-48, and figs. 1, 4, 5. The retention clip 300 includes spring arms 310,
which bend and are able to flex inwardly. Bernard, col. 3, ll. 54-56. The
cover 500 supports retention clip 300 so that the clip 300 does not deform
outward from the coupler. Bernard, col. 4, ll. 45-48. The Examiner finds
that Bernard’s spring arms 310 correspond to the “barb arms” and the cover
500 corresponds to the “at least one barb arm support positioned to engage
the at least one barb arm to increase the ability of the barb assembly to
oppose removal of the cable duct section from the cable duct component” as
recited in claim 38. See Ans. 6, 12-13.
Bernard’s cover 500 is similar in structure and function to Ferris’
locking element 107. See also Tr. of Oral Hr’g at 7. As such, when the duct
section 200 is pulled back, a force is applied to the end of the spring end.
That force includes a horizontal and a vertical component. The vertical
component of the force pushes the spring body, via the spring arm 310,
against the cover 500. As such, the cover 500 applies an equal and opposite
force back onto the spring body and spring arm 161. The force applied back
into the spring body and spring arm 310 increases the ability of the Ferris’
coupler 100 to oppose removal of the trough member.
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The Appellants contend that there is not sufficient evidence that cover
500 is necessarily capable of engaging the arms 310 of Bernard upon the
application of a pull out force of duct sections 200. See Reply Br. 6-8; see
also App. Br. 13. The Appellants point out that cover 500 may contact the
body of the barb assembly, but not the spring arms 310 of the barb assembly.
Reply Br. 8. Whether or not cover 500 directly contacts spring arms 310 is
not dispositive of whether cover 500 is “positioned to engage the at least one
barb arm to increase the ability of the barb assembly to oppose removal of
the cable duct section from the cable duct component” as recited in claim 38.
In this case, the engagement of cover 500 and spring arms 310 is indirect via
the body of spring 300.
Additionally, the Appellants contend that the Examiner’s finding is
not correct because in response to a pull-out force via duct sections 200, the
spring arms 310 would bend back through an arc, perhaps 60-90 degrees, to
contact the curved sidewalls of the cover 500. See Reply Br. 7-8. However,
the Examiner did not find that Bernard’s springs arms are capable contacting
the side walls of the cover, and as such, the Appellants’ contention is not
persuasive.
Lastly, the Appellants assert that the Examiner relied on official
notice or Bernard (US 2002/0096606) to reject claim 38 (Reply Br. 8), but
the Examiner has not done so.
Thus, we sustain the rejection of claim 38 and dependent claims 39-
44.
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Ferris’ Locking Member 107 and Guiding Member 101, as Depicted in
Figure 7, Would Not Have Rendered Obvious the Barb Arm Support as
Recited in Claim 46
The Appellants argue claims 46-49 and 51-55 as a group. App. Br.
17. We select claim 46 as the representative claim, and the remaining claims
stand or fall with claim 46. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 46 recites “a barb arm support comprising a first surface and a
second surface.” The Examiner provides an annotated Figure 7 of Ferris,
and finds that locking element 107 is the first surface and guide member 101
is the second surface of a barb arm support as recited in claim 46. Ans. 6-7.
However, for the reasons provided above, Ferris’ guide member 101 is not a
barb arm support. See also App. Br. 17, Reply Br. 9. As such, we do not
sustain the rejection of claim 46 under § 103(a) as being unpatentable over
Ferris. Dependent claims 47-49 and 51-55 fall for the same reason as claim
46, thus we do not sustain the rejection of those claims as well.
Bernard’s Disclosure Does Not Remedy the Deficiencies of Ferris’
Disclosure With Respect to Claims 37, 45, and 56
Turning to the rejection of dependent claims 37, 45 and 56 under
§ 103(a) as being unpatentable over Ferris and Bernard, the Examiner finds
that “Ferris discloses all of the limitations of the claimed invention except
for a serrated edge.” Ans. 7. The Examiner further finds that Bernard
discloses a barb arm having a serrated edge. Id. The Examiner’s finding
does not remedy the deficiencies of Ferris as pointed out in connection with
the rejections of independent claims 30, 383, and 46, from which claims 37,
45, and 56, respectively, depend. As such, we do not sustain the Examiner’s

3 This reference to the rejection of claim 38 as anticipated by Ferris is
directed to the first rationale where the Examiner incorrectly finds Ferris’
guide member 101 is a barb arm support.
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rejection of claims 37, 45, and 56 under § 103(a) as being unpatentable over
Ferris and Bernard.
Bernard’s Disclosure Does Not Remedy the Deficiencies of Ferris’
Disclosure With Respect to Claims 45
Turning to the rejection of dependent claim 45, which depends from
claim 38, the Appellants rely on the arguments presented for claim 38. See
App. Br. 17, Reply Br. 9. For the reasons given above, regarding claim 38
under § 102(e) as being anticipated by Ferris under the alternative rationale
where locking member 107 corresponds to the “at least one barb arm
support” as recited in claim 38, we sustain the rejection of claim 45.

DECISION
We REVERSE the Examiner’s decision finally rejecting claims 30,
32, 33, 35-37, 46-49 and 51-56.
We AFFIRM the Examiner’s decision finally rejecting claims 38-45.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

Klh/nlk