Ex Parte Winn

Patent Trial and Appeal Board

Oct 18, 2013

12319836 (P.T.A.B. Oct. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte RICHARD GREGG WINN
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Appeal 2011-012831
Application 12/319,836
Technology Center 3600
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Before: GAY ANN SPAHN, JOHN W. MORRISON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012831
Application 12/319,836
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
4, 6-8, and 10-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED INVENTION
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A cable tray comprising:
a plurality of U-shaped transverse members connected to
a plurality of longitudinal members to be in the general shape of
a channel capable of supporting a plurality of electrical system
conductors within an inside portion of the channel, wherein
each of the plurality of U-shaped transverse members has a
cross-sectional shape that is one of either elliptical, extreme
elliptical, obround, semi-circular, semi-elliptical, or rectangular
with rounded corners.

REFERENCES
Zweig
Morini
US 6,138,961
US 6,870,102 B2
Oct. 31, 2000
Mar. 22, 2005
Immerman US 2008/0185353 A1 Aug. 7, 2008

REJECTIONS
Claims 1-4, 8, 10, and 11 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Morini.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morini, Zweig, and Immerman.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zweig and Immerman.
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ANALYSIS
Anticipation by Morini or Alternatively Obviousness over Morini
The central issue in this rejection is the cross sectional shape of U-
shaped members 3 used as transverse members in a cable tray as recited in
independent claims 1 and 11. For the anticipation portion of the rejection,
the Examiner finds that Morini discloses, as required by independent claims
1, and 11, “a cross sectional shape of a rectangle with rounded corners or
even a semi-elliptical shape (half ellipse). The claim[s are] not limiting in
that [they do] not state that all corners must be rounded.” Ans. 6. As
support for this finding, the Examiner explicitly quotes Morini’s statement
that “‘central wall 4 and/or also possibly side walls 5 have internal edges 14
that are rounded so at to favo[]r sliding of the cables along the path during
laying in place.’” Id. (citing Morini, col. 5, ll. 8-11).
Appellant argues that “Morini fails to specifically disclose the use of
any U-shaped transverse member hav[ing] a cross section that is either
‘elliptical, obround, semi-circular, semi-elliptical or rectangular with
rounded corners’ as now expressly called for by amended claims 1 and 11.”
App. Br. 20.
First, we note that while the Examiner finds that the claims are not
limited to all corners being rounded, it is limited to a rectangle with rounded
corners. See App. Br., Clms. App’x. Therefore, at least two corners must be
rounded. Morini’s disclosure only expressly supports that a single corner,
i.e., the corner along edge 14, may be rounded. See Morini, col. 5, ll. 8-11.
Thus, the Examiner has not shown by a preponderance of the evidence that
Morini discloses its U-shaped transverse members 3 to have a rectangular
cross-section shape with rounded corners as required by claims 1 and 11.
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Second, Morini does not provide a cross-sectional drawing or other
unambiguous disclosure that would enable one skilled in the art to discern
the exact cross-sectional shape of the U-shaped transverse member.
Therefore, the Examiner’s finding that Morini discloses U-shaped transverse
members 3 with a cross-sectional shape that is either a rectangle with
rounded corners or semi-elliptical is not supported by a preponderance of the
evidence. Accordingly, we do not sustain the rejection of independent
claims 1 and 11, and claims 12-4, 8, 10, and 110 dependent thereon, under
35 U.S.C. § 102(b) as being anticipated by Morini.
Addressing the alternative obviousness portion of the rejection, the
Examiner finds
one having ordinary skill in the art at the time of the invention
would have . . . simply rounded all of the corners noting this
would achieve the same advantages desired by Morini of
favoring sliding of the cables and was already considered by
Morini, quoted above. This would disclose a rectangular with
rounded corner shape.
Ans. 6. One of ordinary skill in the art would agree that the Examiner’s
proposed modification is reasonable and satisfies the Examiner’s initial
burden to set forth the basis for the rejection—the so-called “prima facie
case.” Thus, the Examiner has shifted the burden to Appellant, and
Appellant presents no arguments to counter the obviousness portion of the
rejection. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992), As such,
we sustain the rejection of claims 1-4, 8, 10, and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Morini.

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Obviousness over Morini, Zweig, and Immerman
Addressing claims 6 and 7, the Examiner finds that Morini “does not
teach transverse members (3) having elliptical or obround cross-sections.”
Ans. 7. The Examiner then finds
Zweig teaches a similar Wire Cable Tray to that of Morini
comprising circular cross-sectional wires (Col. 2, Lines 40-41).
However, Zweig teaches using differing diameter wires (Col. 1,
Lines 51-55). He also teaches that the “cross-section of the
wires employed is not necessarily circular” (Col. 4, Lines 44-
45).

Id. The Examiner next finds that “Immerman et al. teaches the use of
supporting rods that are oval (elliptical) in cross-sectional shape ‘providing
an advantageous force distribution over rods with circular cross-section’
(Abstract, Lines 1-4).” Id. at 8. The Examiner also finds that Immerman
teaches the use of obround cross sections. Id. (citing Immerman, figs. 3 and
4). The Examiner then concludes that:
[i]t would have been obvious to . . . modify the basic cross-
sectional shape of the transverse members (3) of Morini with
elliptical or obround cross-sections as taught by Immerman et
al. in terms of the elliptical and obround cross sections (with the
larger diameter parallel to the cables) and as taught by Zweig
regarding the use of non-circular cross-sections because the
elliptical cross section provides an advantageous force
distribution.
Ans. 8.
Appellant argues that “Zweig does not suggest or disclose, expressly
or inherently, that the transverse wires be made of wire having cross sections
that are non-circular that are specifically oriented for the purpose of reducing
damage to electrical conductors.” App. Br. 22-23. However, the Examiner
also relies on Immerman, not merely Zweig, for the teaching of non-circular
Appeal 2011-012831
Application 12/319,836
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wires since Immerman is relied on to teach the claimed language of the
cross-sectional shape being elliptical or obround. One cannot show
nonobviousness by attacking references individually where the rejections are
based on a combination of references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Therefore, Appellant’s argument is not persuasive.
Addressing Immerman, Appellant argues “Immerman notes that
elliptical wires are used primarily to overcome problems that are not related
to the damage of electrical conductors in wire trays from excessive point
loading caused by materials whose cross-section include sharp corners and
vertices.” App. Br. 23. As for the use with electrical conductors argued by
Appellant, the Examiner relies on Morini, not Immerman for the teaching of
a tray for holding electrical connectors. Once again, one cannot show
nonobviousness by attacking references individually where the rejections are
based on a combination of references. In re Merck & Co., 800 F.3d at 1097.
As for the point loading argued by Appellant, Immerman is replete with
references supporting that wide surfaces are to prevent damage to articles
being supported by the elliptical support member. For example, the wide
surfaces are used “to prevent narrow surfaces from inadvertently damaging
the clothing.” Immerman, para. [0025]; see also, e.g., id. at paras. [0026],
[0201]. Appellant fails to provide any evidence or argument that the
advantageous force distribution which decreases damage to supported items
does not reduce the point loading on the supported item. As such, we are not
persuaded by Appellant’s argument that the advantageous force distribution
of Immerman would not also prevent excessive point loading on an item
being supported.
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Moreover, it is immaterial if the Examiner’s reason to modify Morini
based on Immerman—i.e., to provide advantageous force distribution—is
made explicit in Immerman (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
419 (Fed. Cir. 2007) (“The obviousness analysis cannot be confined by . . .
overemphasis on the important of published articles and the explicit content
of issued patents.”)), so long as the reason has rational underpinnings.
Next Appellant argues that Immerman is non-analogous art because
an “artisan would NOT have been able to identify Immerman (entitled
“Utility items made with rods of oval construction”) as in a field related of
cable trays.” App. Br. 24. The analogous art test requires that a reference is
either in the field of the applicant’s endeavor or is reasonably pertinent to the
problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992). A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem. In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992). Even assuming arguendo that Immerman is not in
Appellant’s field of endeavor, Appellant fails to explain why Immerman is
not reasonably pertinent to the problem with which the inventor was
concerned. We note that one problem with which Appellant’s invention is
concerned is reducing the probability and frequency of high stress points
when an item is resting on support rods. See Spec, paras. [0008]-[0009].
The support rods of Immerman are used to produce an advantageous force
distribution while supporting various items. Thus, Immerman would
logically commend itself when considering problems regarding supports,
such as Morini’s U-shaped members used to support electrical conductors.
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Appellant further argues “[w]hile Immerman notes in passing that elliptical
shapes can effect distribution of forces, the intent of the Immerman
embodiments focuses exclusively on enhancing the strength and stability of
the embodiments made from materials having an elliptical cross section.”
Reply Br. 11. Once again, Immerman is replete with references that wide
surfaces are to prevent damage to articles being supported by the elliptical
support member. Thus, we are not persuaded that the advantageous force
distribution is unrelated to reducing forces that may damage the item being
supported. Therefore, we are not persuaded by Appellant’s argument that
Immerman is not analogous art.
Next, Appellant argues that the Examiner fails to provide reasoning
with a rational underpinning to combine the references. More particularly,
Appellant argues that the Office Action “discloses no rational and articulated
reason why that use of elliptical wire [for wire cable trays] is absent from the
prior art.” App. Br. 25. This is not correct inquiry; rather, the correct
inquiry is whether or not the Examiner’s reasoning of providing an
advantageous force distribution has a rational underpinning. Since
Immerman does disclose elliptical wire, Appellant provides no persuasive
argument that the Examiner’s reasoning does not have a rational
underpinning. Thus, we find no error in the Examiner’s articulated reason
to combine the references as it reasonably appears to have a rational
underpinning. For the reasons above, we sustain the rejection of claims 6
and 7 under 35 U.S.C. § 103(a) as unpatentable over Morini, Zweig, and
Immerman.
Appeal 2011-012831
Application 12/319,836
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Obviousness over Zweig and Immerman
Addressing claim 12, the Examiner finds that Zweig discloses “a
cable tray having a plurality of U shaped members comprising circular
cross-sectional wires.” Ans. 8 (citing Zweig, col. 2, ll. 40-41). The
Examiner then finds that Immerman discloses elliptical and obround cross
sectional shaped wires. Ans. 8. The Examiner then concludes that:
[i]t would have been obvious to . . . modify the basic
cross-sectional shape of the transverse members (3) of Zweig
with elliptical cross-sections as taught by Immerman et al. in
terms of the elliptical (with the larger diameter parallel to the
cables) as taught by Zweig regarding the use of non-circular
cross-sections because the elliptical cross section provides an
advantageous force distribution.
Ans. 9.
First, Appellant argues “while Immerman does indeed disclose the use
of material having an elliptical cross section, Immerman does not disclose
the specific geometric orientation of those elliptical shapes that would
reduce loading stresses on electrical conductors in a cable tray.” App. Br.
25, Reply Br. 11. We disagree. The embodiments shown in Figures 6 – 6B
of Immerman show that the major diameter of the elliptical support member
is oriented to reduce loading on the item being supported, thus supporting
the Examiner’s conclusion that it would have been obvious for the “larger
diameter [of the elliptical shape to be] parallel to the cables” for
“advantageous force distribution.” See Ans. 9. Thus, Appellant’s argument
is not persuasive.
Next, Appellant argues that the Examiner fails to provide reasoning
with a rational underpinning to combine the references. Appellant
improperly argues that the Office Action “discloses no rational and
articulated reason why that use of elliptical wire is absent from the prior art.”
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App. Br. 25. Once again, this is not the correct inquiry. First, we note that
the prior art, Immerman, does disclose elliptical wire. Second, the correct
inquiry is whether or not the Examiner’s reasoning of providing an
advantageous force distribution has a rational underpinning. Appellant
provides no persuasive argument as to why the Examiner’s articulated
reasoning does not have a rational underpinning. Accordingly, we are not
apprised of Examiner error.
Finally, Appellant argues
when elliptical wires are used, the wires are normally arranged
to provide the greatest strength against the loads anticipated in
the device in which the elliptical wire is being used by orienting
the elliptical shapes such that the long axis of the elliptical
shape is normal to the expected load. In the present application,
the opposite orientation is used. The long axis of the elliptical
shape in the present application is oriented perpendicular to the
load.
App. Br. 25-26, Reply Br. 12. This argument is flawed for two reasons.
First, as discussed above, Immerman teaches the claimed orientation of the
oval wire support with the major diameter parallel to the surface which
supports the item to reduce loading stress on the item being supported.
Second, while the perpendicular orientation proposed by Appellant would
support a greater maximum load, it would provide a less advantageous force
distribution than the orientation disclosed in Immerman. As the Examiner
relies on Immerman for the favorable force distribution and not the
maximum load of the support, we are not persuaded by Appellant’s
argument that an oval support would necessarily be used in a different
orientation than the orientation disclosed by Immerman. For the above
reasons, we sustain the rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Zweig and Immerman.
Appeal 2011-012831
Application 12/319,836
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DECISION
For the above reasons, the Examiner’s decision to reject:
claims 1-4, 8, 10, and 11 under 35 U.S.C. § 102(b) as being
anticipated by Morini is reversed;
claims 1-4, 8, 10, and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Morini is affirmed;
claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over Morini,
Zweig, and Immerman is affirmed; and
claim 12 under 35 U.S.C. § 103(a) as unpatentable over Zweig and
Immerman 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)(1)(iv).

AFFIRMED

JRG