Ex Parte Yadav

Patent Trial and Appeal Board

Feb 20, 2018

14572945 (P.T.A.B. Feb. 20, 2018)

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.
14/572,945 12/17/2014 Shailendra Yadav 83488396 7968
121691 7590 02/22/2018
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
EXAMINER
MCNICHOLS, ERET C
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
02/22/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
u spto @ iplaw 1. net
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAILENDRA YADAV
Appeal 2017-0065921
Application 14/572,9452
Technology Center 3600
Before KENNETH G. SCHOPFER, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1, 2, and 4-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Oct. 3, 2016)
and Reply Brief (“Reply Br.,” filed Mar. 20, 2017), and the Examiner’s
Answer (“Ans.,” mailed Jan. 19, 2017) and Final Office Action (“Final
Act.,” mailed May 5, 2016).
2 According to Appellant, the real party in interest is Ford Global
Technologies, LLC. Appeal Br. 3.
Appeal 2017-006592
Application 14/572,945
BACKGROUND
According to Appellant, the Specification “relates generally to clips
for mounting cables wires, tubes and pipes to a support structure such as a
motor vehicle body.” Spec. ^ 1.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative of the appealed claims and recites:
1. A wire harness clip, comprising:
an elongated wire support;
a plurality of wire retainers provided at spaced locations
on said elongated wire support, wherein at least one wire
retainer of said plurality of wire retainers includes opposed
flexible flanges, wherein each of the opposed flexible flanges
include a base at said elongated wire support, and wherein
opposed bases are separated by a distance Di; and
a mounting stud projecting from said elongated wire
support.
Appeal Br. 17 (Claims App’x).
REJECTIONS
1. The Examiner rejects claims 1, 2, 4-10, and 12-20 under 35 U.S.C.
§ 103(a) as unpatentable over Brightwell.3
2. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as unpatentable
over Brightwell in view of Alloway.4
3. The Examiner rejects claims 1, 2, 4, 5, 7-10, 12-16, and 18-20 under
35 U.S.C. § 103(a) as unpatentable over Warrens.5
3 Brightwell, US 4,805,479, iss. Feb. 21, 1989.
4 Alloway et al., US 2007/0082541 Al, pub. Apr. 12, 2007.
5 Warrens et al., US 2,495,995, iss. Jan. 31, 1950.
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Application 14/572,945
DISCUSSION
Obviousness over Brightwell
Appellant raises separate arguments with respect to claims 1,7, 12,
and 18. See Appeal Br. 9-12. We address each of these claims separately
below.
Claim 1
With respect to claim 1, the Examiner finds that Brightwell discloses a
wire harness clip as claimed including opposed flexible flanges 12, 14 with
bases (i.e., where 12, 14 meet channel 16 at ribbed portion 18) separated by
a distance Di. Final Act. 4; see also Ans. 4 (Ann. Fig. A). Further, the
Examiner states:
the base limitation of the claimed invention appears to simply
be the point at which the flanges are coupled to the elongated
wire support. Examiner contends that Brightwell also discloses
a point where the flanges are coupled to the elongated wire
support, which is what is being interpreted as the base. . . .
Moreover, the cross-sectional view of Brightwell shows that
there is a distance between the bases.
Id. at 4. The Examiner also concludes that one of ordinary skill in the art
would “understand that the structural elements disclosed by Brightwell
implicitly teach and therefore obviously show the limitations of the claim.”
Id.
With respect to claim 1, Appellant argues only that Brightwell
discloses flanges with a unitary base and not opposed bases separated by a
distance as claimed. Appeal Br. 10. We are not persuaded of reversible
error for the reasons discussed below.
We determine the scope of the claims in patent applications by giving
them their broadest reasonable interpretation consistent with the
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Application 14/572,945
Specification. See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Here, Appellant does not point to, and we do not see, a
limiting definition for the term “base” in the Specification. Rather, the
Specification and claims indicate only that the base is the portion or point of
the flange where the flange is connected to the wire support structure. See,
e.g., claim 1; Spec. ^ 8, 21. We agree with the Examiner that it is
reasonable to construe the claimed base to include the point where
Brightwell’s flanges connect to the ribbed portion of the wire support
structure, which may be interpreted to be the point where they cease to be
flanges and become support members for the base of the wire. See
Brightwell Fig. 1. Furthermore, we agree with the Examiner that one of
ordinary skill in the art would have found the claim limitations obvious in
view of Brightwell because Brightwell implicitly teaches the structure
elements claimed, i.e. Brightwell’s unitary structure forms essentially the
same structure as that which is claimed. We note that the decision to make
an assembly from multiple separate but connected structures, i.e. separate
flanges attached to a support structure, rather than a single integral structure
is a matter of obvious design choice that does not confer patentability on an
otherwise unpatentable structure. See In re Larson, 340 F.2d 965, 968
(CCPA 1965) (“[T]he use of a one piece construction instead of the structure
disclosed in [the prior art, which comprised ‘several parts, . . . rigidly
secured together’] would be merely a matter of obvious engineering
choice.”).
For these reasons, we are not persuaded of reversible error with
respect to the rejection of claim 1. Accordingly, we sustain the rejection of
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Application 14/572,945
claim 1. We also sustain the rejection of dependent claims 2 and 4-6, which
depend from claim 1 and were not separately argued.
Claim 7
Claim 7 requires that “opposed tips [on the flanges] are separated by a
distance D2 where Di > D2.” Appeal Br. 17 (Claims App’x). The Examiner
finds that Brightwell discloses this limitation. Final Act. 5. Appellant first
relies on arguments raised with respect to claim 1, which we also find
unpersuasive here. Second, Appellant argues “the Examiner improperly
cites a non-tip portion of the flanges for establishing a distance D2.” Appeal
Br. 11. Appellant asserts that the tip is the point at the end of the flanges in
Brightwell and not the mid-section of the flanges identified by the Examiner.
Id.
We are not persuaded and agree with the reasoning and response
provided by the Examiner. Ans. 17. First, we note that claim 4 requires that
arcuate flanges include a gap therebetween and claim 6 requires that each
flange “includes a tip adjacent said gap.” Appeal Br. 17 (Claims App’x).
Thus, the claims require only that the flanges include a tip adjacent a gap
between opposed flanges and do not expressly require that the claimed tip be
at the end of the flange. We also see no indication in the Specification that
the claimed tip must be interpreted to be the end of the flange. Thus, the
broadest reasonable interpretation of the claim may include any tip that is
adjacent a gap between opposed flanges. We find that Brightwell’s
barbs 42, which are relied upon by the Examiner, are tips adjacent to the gap
between opposed flanges of the device according to the broadest reasonable
interpretation of the claim.
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Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 7. Accordingly, we sustain the rejection.
We also sustain the rejection of dependent claims 8-10, which depend from
claim 7 and were separately argued.
Claim 12
With respect to claim 12, the Examiner finds that Brightwell
discloses, inter alia, an elongated wire support having a longitudinal axis
extending between opposed sidewalls, as claimed. Final Act. 7 (citing
Brightwell, Fig. I6). Appellant argues only that “as plainly shown in Figures
1 and 2 [of Brightwell], Brightwell fails to disclose that the elongated wire
support has opposed sidewalls along the length of the elongated wire
support.” Appeal Br. 11-12. Appellant’s argument does not apprise us of
reversible error in the rejection of claim 12 particularly because Appellant
does not explain why the sidewalls identified by the Examiner in Brightwell
may not be the claimed sidewalls. Further, we are not persuaded of error to
the extent Appellant argues that “the small section in Brightwell cited as the
claimed opposed sidewalls does not extend along the longitudinal axis of the
elongated wire support.” Reply Br. 4. Appellant interprets the claim to
require that the sidewalls run along the entire length of the entire structure.
However, the claim requires only that the support has “a longitudinal axis
extending between opposed sidewalls.” We agree with the Examiner that
because the identified sidewalls run along some portion of the longitudinal
axis, they may be considered sidewalls as claimed. See Ans. 17-18.
6 We note that the Examiner provides an annotated Figure 1 labeled as
“Annotated Fig. B.”
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Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 12. Accordingly, we sustain the rejection of
claim 12. We also sustain the rejection of dependent claims 13-17, which
depend from claim 12 and for which Appellant does not provide separate
arguments.
Claim 18
Appellant argues that claim 18 is not obvious over Brightwell because
“the Examiner has failed to show that Brightwell discloses ‘opposed bases’
separated by any distance whatsoever” and the distance between the alleged
bases “is clearly not greater than the distance between the opposed tips in
Brightwell.” Appeal Br. 12. However, we are not persuaded of error by
these arguments for the same reasons discussed above with respect to
claims 1 and 7. Accordingly, we sustain the rejection of claim 18. We also
sustain the rejection of claims 19 and 20, which depend from claim 18 and
for which Appellant does not present separate arguments.
Obviousness over Brightwell in view of Alloway
Claim 11 requires that the “mounting stud includes a series of aligned
firustoconical ribs.” Appeal Br. 18 (Claims App’x). The Examiner
acknowledges that “Brightwell discloses resilient prongs but does not
disclose a series of firustoconical ribs.” Final Act. 14. However, the
Examiner finds that Alloway teaches a wire clip with a mounting stud
including a series of aligned firustoconical ribs. Id. The Examiner concludes
that “[i]t would have been obvious to a person having ordinary skill... to
modify the apparatus of Brightwell, by using ribs similar to that taught by
Alloway to provide a mounting stud that would have a more secure and sure
fit in a mounting hole.” Id.
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Application 14/572,945
Appellant argues that the rejection “fails to provide any reason based
on a rational underpinning for combining the references.” Appeal Br. 14.
Appellant asserts that the Examiner’s conclusion is not supported and “at
best, the statement simply makes unfounded, conclusory statement about the
potential benefits of the proposed combination.” Id. at 15. Appellant also
asserts that Brightwell is silent regarding the need for a more secure mount
and that Alloway does not teach that the disclosed retainer provides a more
secure and sure fit. Id. at 15-16. Thus, Appellant indicates that the
combination is based on hindsight. Id. at 16.
We are not persuaded of reversible error. We agree with the
Examiner’s response regarding this argument. See Ans. 19-20.
Specifically, we note that the motivation for a combination need not be
expressly found in the references relied upon and may be found in the
knowledge of one of ordinary skill in the art. We agree with the Examiner
that one of ordinary skill in the art would have found it obvious that the use
of multiple layers of ribs of Alloway’s mount would provide a more secure
mount than the single set of prongs provided in Brightwell. Furthermore, we
find that this advantage would have been readily recognized by one of
ordinary skill in the art, and we are not persuaded that the rejection is based
on hindsight. Accordingly, we sustain the rejection of claim 11.
Obviousness over Warrens
Because we sustain the rejections discussed above, which are
dispositive of all claims on appeal, we do not reach the alternate rejection
over Warrens.
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Application 14/572,945
CONCLUSION
We AFFIRM the rejection of claims 1, 2, 4-10, and 12-20 over
Brightwell. We AFFIRM the rejection of claim 11 over Brightwell in view
of Alloway. We do not reach the rejection over Warrens.
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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