Ex Parte Zerfas

Patent Trial and Appeal Board

Feb 22, 2013

11741142 (P.T.A.B. Feb. 22, 2013)

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.
11/741,142 04/27/2007 Gerald Bernard Zerfas ZMA001 P304A 2414
277 7590 02/25/2013
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
BASTIANELLI, JOHN
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
02/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GERALD BERNARD ZERFAS
____________

Appeal 2010-012102
Application 11/741,142
Technology Center 3700
____________

Before WILLIAM V. SAINDON, BENJAMIN D. M. WOOD, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Gerald Bernard Zerfas (“Appellant”) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-5, 7-15, and 17-23. We
have jurisdiction under 35 U.S.C. § 6(b).

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Application 11/741,142

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The Claimed Subject Matter
Claims 1 and 18 are illustrative of the claimed subject matter and are
reproduced below.
1. A pinch clamp comprising:
a support leg member comprising a coupling
leg member facing surface and an outer surface;
a coupling leg member comprising a support
member facing surface and an external surface,
wherein the coupling leg member is capable of
moving between an open position and at least one
closed position and vice versa, wherein the
coupling and support leg members are
substantially parallel when the coupling leg
member is in at least one of the closed positions
and wherein at least the coupling leg member or
the support leg member further comprises a pinch
portion;
a curved portion interconnecting the support
leg member and the coupling leg member to form
a substantially U-shaped clamp body and
comprising a curved portion opening;
an upwardly extending anchor portion
comprising a base portion, a distal end portion, a
curved portion facing surface and a surface facing
away from the curved portion, at least one
anchoring flange, and an anchor portion opening
having a perimeter on the surface facing away
from the curved portion;
the anchor portion extending upwardly from
the support leg member;
the at least one anchoring flange faces the
curved portion, is positioned at least proximate to
the distal end portion of the anchor portion, and
has a top surface having a coupling leg facing edge
and an opposite edge;
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the coupling leg facing edge and the
opposite edge of the top surface of the anchor
portion define a first plane;
the anchor portion being capable of retaining
the coupling leg member when the coupling leg
member is in the at least one closed position; and
a pair of finger actuated tabular members
each having a length engaged with the surface
facing away from the curved portion of the anchor
portion, with the tabular members extending away
from the curved portion, and with the pair of finger
actuated tabular members being adapted to be
actuated by applying forces to each of the tabular
members, thereby causing the anchor portion to
bend away from the coupling leg member and
disengaging the coupling leg member from the at
least one anchoring flange when the coupling leg
member is in the closed position;
the pair of finger actuated tabular members
including an upper finger actuated tabular member
adjacent the distal end portion of the anchor
portion and a lower finger actuated tabular
member adjacent the base portion of the anchor
portion;
wherein a second plane is defined by a
portion of the perimeter around the surface facing
away from the curved portion of the anchor portion
opening; and
wherein the length from the coupling leg
facing edge to where the first and second planes
intersect is less than the length of the lower finger
actuated tabular member.

18. A method of using a pinch clamp
comprising the steps of:
providing a pinch clamp comprising:
a support leg member comprising a
coupling leg member facing surface and an outer
surface;
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Application 11/741,142

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a coupling leg member comprising a
support leg member facing surface and an external
surface, the coupling leg member being moveable
between an open position and at least one closed
position, the coupling and support leg members
being substantially parallel when the coupling leg
member is in at least one closed position, and at
least the coupling leg member or the support leg
member further comprises a pinch portion;
a curved portion interconnecting the
support leg member and the coupling leg member,
the curved portion comprising an opening;
an upwardly extending anchor portion
comprising a base portion, a distal end portion, at
least one anchoring flange, and an anchor portion
opening, the upwardly extending anchor portion
having a curved portion facing surface and a
surface facing away from the curved portion
wherein the anchor portion extends upwardly from
the support leg member, the at least one anchoring
flange facing the curved portion is positioned at
least proximate to the distal end portion of the
anchor portion and is capable of retaining the
coupling leg member when the coupling leg
member is in the at least one closed position, and
the uppermost anchoring flange has a top surface
with a curved portion facing end and an opposite
end defining a top surface length therebetween,
with the opposite end being defined by where the
plane defined by a perimeter of the anchor portion
opening along the surface facing away from the
curved portion intersects the top surface; and
at least one tabular member engaged
with the anchor portion and extending outwardly
away from the curved portion, with one tabular
member engaging the base portion of the anchor
portion and having a length;
wherein the base portion of the anchor
portion and the tabular member are interconnected
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when the coupling leg member is in the open
position;
wherein the surface length is less than
the length of the tabular member engaged to the
base portion of the anchor portion; and
actuating the coupling member to thereby
engage at least one anchoring flange; and
applying a force to the distal end of the
anchoring portion and a force to the one tabular
member engaging the base portion of the anchor
portion to thereby release the coupling leg member
from the anchoring flange and allow the coupling
member to return to the open.

References
The Examiner relies upon the following prior art references:
Utterberg US 5,951,519 Sept. 14, 1999
Schnell et al. US 6,113,062 Sept. 5, 2000
Balbo WO 00/77428 A2 Dec. 21, 2000
Utterberg US 6,196,519 B1 Mar. 6, 2001
Rejections
The Examiner makes the following rejections:
I. Claims 1-5, 7-15, and 17-23 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement;
II. Claims 1, 2, 5, 8-13, 15, and 17-23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over U.S. Patent No. 5,951,519
(“Utterberg ’1519”) and U.S. Patent No. 6,196,519 (“Utterberg
’6519”);
III. Claims 1-5, 8-15, 17-20, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Schnell and Utterberg ’6519;
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IV. Claims 12, 14, 15, 17, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Balbo and Utterberg ’6519;
V. Claims 4, 7, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Utterberg ’1519, Utterberg ’6519, and Balbo;
VI. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schnell, Utterberg ’6519, and Balbo; and
VII. Claims 1-5, 7-15, and 17-22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Balbo, Utterberg ’6519, and
Utterberg ’1519.

SUMMARY OF DECISION
We REVERSE.

OPINION
Rejection I – Written Description
The Examiner rejected claims 1-5, 7-15, and 17-221 as failing to
comply with the written description requirement because the Specification
states that the tabular members may be of “any desired length depending on
the preference of the user, industry, or both” whereas the claims require that
the tabular members be longer than either “the length from the coupling leg
facing edge to where the first and second planes intersect” (as required by
claim 1 and the claims depending therefrom) or “the top surface length” (as
required by claim 12 and the claims depending therefrom).2 See Ans. 3-4.

1 The Examiner originally rejected claim 23 as well, but noted claim 23 was
erroneously included in this rejection. See Ans. 14.
2 Independent claims 18 and 20 similarly restrict the possible lengths of the
tabular members in relation to the surface length.
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Appellant asserts that the Specification provides adequate written
description support for the claims. See, e.g., App. Br. 13-14. In particular,
Appellant contends that the figures illustrate clamps having the arrangement
required by the claims. App. Br. 13.
We agree with Appellant that the claimed relationship describing the
lengths of the tabular members is supported by the figures. The Examiner
does not address this disclosure and thus has not satisfied the initial burden
of explaining why a person of ordinary skill in the art would not recognize in
the disclosure a description of the invention defined in the claims.
Accordingly, we do not sustain Rejection I.
Rejection II – Utterberg ’1519 and Utterberg ’6519
The Examiner determined that the subject matter of claims 1, 2, 5,
8-13, 15, and 17-23 would have been obvious to one of ordinary skill in the
art in light of the combined teachings of Utterberg ’1519 and Utterberg
’6519. Ans. 4-7. The Examiner relied upon Utterberg ’1519 as disclosing
most of the elements of the claims. The Examiner, however, found that
Utterberg ’1519 fails to disclose:
wherein a second plane is defined by a portion of the perimeter
around the surface facing away from the curved portion of the
anchor portion opening; and wherein the length from the
coupling leg engaging edge to where/the [sic] line the first and
second planes intersect is less than the length of at least one of
the finger actuated release tabs.

Id. at 5. The Examiner relied upon Utterberg ’6519 as disclosing “the length
from the coupling leg engaging edge to where the first and second planes
intersect is less than the length of at least one of the finger actuated release
tabs.” Id. The Examiner concluded that it would have been obvious to one
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of ordinary skill in the art at the time of invention to “make the finger
actuated release tabs of Utterberg [’1519] longer than the length of the
coupling leg engaging edge as disclosed by Utterberg [’6519] as this would
provide more room for the user’s finger to actuate the tab.” Id. at 5-6.
Appellant contends that Utterberg ’6519 “does not include any lower
finger actuated tabular member.” App. Br. 20. Appellant also asserts that if
Utterberg ’1519 were “modified in order to ‘provide more room for the
user’s finger to actuate the tab,’ no lower finger actuated tabular member
would be lengthened. The ‘tab’ that is actuated is element 22 of [Utterberg
’1519].” Id.
We agree with Appellant. Utterberg ’1519 discloses a clamp body 20,
a first latch 22, and a pivotable clamp pressure member 26, which has a
second latch 30 that latches to first latch 22. See Utterberg ’1519, col. 3, ll.
41-49. Utterberg ’1519 also discloses that “[f]irst latch 22 may be manually
pivoted out of engagement with second latch 30, to open the clamp.” Id. at
col. 3, ll. 52-54. While the Examiner identified the outer portion of 22 and
the outer portion of 20 as “a pair of finger actuated tabular members,” Ans.
5, the Examiner does not explain how Utterberg ’1519 teaches or suggests
that the outer portion of 20 is a finger actuated tabular member or that a user
would place a finger there to actuate the clamp.3
Utterberg ’6519 discloses a clamp 10 with a finger actuated tabular
member 22 that may enter into a snap-locking relationship with 20 (an end
of the clamp). See Utterberg ’6519, col. 4, ll. 7-11. Utterberg ’6519,

3 Even if we assume that the undisclosed purpose of the grooves shown in
the bottom surface of clamp body 20 were intended to provide additional
friction for contact with a user’s finger, the Examiner focused on the outer
portion of 20, and not the portion containing the grooves.
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however, does not disclose a “lower finger actuated tabular member” as
required by claim 1 and the claims dependent therefrom. While we agree
with the Examiner that one of ordinary skill in the art would have been
motivated to make the finger actuated release tab of Utterberg ’1519 longer,
as shown by Utterberg ’6519, such motivation would have directed the
reasonably skilled artisan to modify latch 22 of Utterberg ’1519, which is
taught to be an actuated release tab, not the outer portion of clamp body 20,
which is not disclosed as an actuated release tab. The Examiner has not
explained the basis for concluding that one of ordinary skill would have
likewise extended the lower tab in view of Utterberg ’6519. Since the
claimed relationship is based on the length of the lower finger actuated
tabular member (as reflected in claim 1 and the claims dependent
therefrom), the Examiner has not persuaded us that one of ordinary skill in
the art would combine the teachings of Utterberg ’1519 and Utterberg ’6519
in such a manner as to render the subject matter of the claims obvious.4
Accordingly, we do not sustain Rejection II as applied to claims 1, 2,
5, 8-13, 15, and 17, and 20-22.
Method claims 18, 19, and 23 require a step of applying a force to
“the one tabular member engaging the base portion of the anchor portion”
(as recited in claim 18), “each tabular member” (as recited in claim 19), or
“a bottom of the lower tabular member” (as required by claim 23) to open
the clamp. Utterberg ’1519 and Utterberg ’6519, however, do not disclose

4 Claim 12 and the claims dependent therefrom require that the first tabular
member be “engaged with the base portion of the anchor portion of the
clamp portion” and hence is generally synonymous with the location of the
lower tabular member required by claim 1.
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applying a force to a tabular member engaging the base portion of the anchor
portion.5
Accordingly, we do not sustain Rejection II as applied to claims 18,
19, and 23.
Rejection III – Schnell and Utterberg ’6519
The Examiner determined that the subject matter of claims 1-5, 8-15,
17-20, and 23 would have been obvious to one of ordinary skill in the art in
light of the combined teachings of Schnell and Utterberg ’6519. Ans. 7-10.
As was the case with Utterberg ’1519 in the context of Rejection II, the
Examiner found that Schnell fails to disclose
wherein a second plane is defined by a portion of the perimeter
around the surface facing away from the curved portion of the
anchor portion opening; and wherein the length from the
coupling leg engaging edge to where/the [sic] line the first and
second planes intersect is less than the length of at least one of
the finger actuated release tabs.
Ans. 8. Also similar to Rejection II, the Examiner relied upon Utterberg
’6519 as generally showing the claimed length relationship and the
determination that it would have been obvious to one of ordinary skill in the
art “to make the finger actuated release tabs of Schnell longer than the length
of the coupling leg engaging edge . . . [to] provide more room for the user’s
finger to actuate the tab.” Id. at 9.
Appellant asserts that the teachings of Schnell and Utterberg ’6519 do
not render the claimed subject matter obvious for reasons similar to
Appellant’s arguments directed to Rejection II. See App. Br. 26-29.

5 Claim 23 similarly requires “a pair of tabular members engaged with the
anchor portion.”
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Just as Utterberg ’1519 failed to disclose a lower tabular member or
tabular member engaging the base portion of the anchor portion, so too does
Schnell fail to disclose such member. The Examiner pointed to 54 and 44 as
disclosing “a pair of finger actuated tabular members,” Ans. 8, but 44 is
described as simply a “wider strip portion” of the clamp, whereas second
projection 54 is described as facilitating clamp opening (i.e., similar to a
function of a tabular member). Compare Schnell, col. 3, ll. 49-52
(describing wider strip portion 44); with id. at col. 4, ll. 6-10 (“second end
18 of clamp 10 can carry a second projection 54, which extends outwardly
from second end 18 . . . to facilitate clamp opening”).
Further, the Examiner has not pointed to a teaching or suggestion in
Schnell of applying a force to a lower tabular member or tabular member in
the lower position to open the clamp.
Accordingly, for the reasons explained herein and the reasons
explained with respect to Rejection II, we do not sustain Rejection III.

Rejection IV – Balbo and Utterberg ’6519
The Examiner determined that the subject matter of claims 12, 14, 15,
17, and 18 would have been obvious to one of ordinary skill in the art in
light of the combined teachings of Balbo and Utterberg ’6519. Ans. 10-11.
The Examiner, however, found that Balbo lacked the same claim elements
described in Rejections II and III with respect to Utterberg ’1519 and
Schnell. See id. The Examiner also relied on Utterberg ’6519 to fill the
gaps in Balbo to the same extent as the Examiner relied upon Utterberg
’6519 in Rejections II and III. See id.
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Appellant generally argues the same deficiencies with respect to this
rejection as argued with respect to Rejections II and III.
Balbo, similar to Utterberg ’1519 and Schnell, fails to disclose a
tabular member engaging the base portion of the anchor portion. Balbo
similarly fails to disclose a method of applying a force to such non-existent
tabular member.
Accordingly, for the reasons explained herein and the reasons
explained with respect to Rejections II and III, we do not sustain Rejection
IV.
Rejection V – Utterberg ’1519, Utterberg ’6519, and Balbo
The Examiner determined that the subject matter of claims 4, 7, and
14 would have been obvious to one of ordinary skill in the art in light of the
combined teachings of Utterberg ’1519, Utterberg ’6519, and Balbo.
Ans. 12. The Examiner, however, did not make any additional findings
directed to a lower tabular member or tabular member engaging the base
portion of the anchor portion of the clamp. See id.
Claims 4 and 7 depend from claim 1 and claim 14 depends from claim
12. Accordingly, for the reasons expressed with respect to Rejections II and
IV, we do not sustain Rejection V.
Rejection VI – Schnell, Utterberg ’6519, and Balbo
The Examiner determined that the subject matter of claim 7 would
have been obvious to one of ordinary skill in the art in light of the combined
teachings of Schnell, Utterberg ’6519, and Balbo. Ans. 12. The Examiner,
however, did not make any additional findings directed to a lower tabular
member or tabular member engaging the base portion of the anchor portion
of the clamp. See id.
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Claim 7 depends from claim 1. Accordingly, for the reasons
expressed with respect to Rejections II, III, and IV, we do not sustain
Rejection VI.
Rejection VII – Balbo, Utterberg ’6519, and Utterberg ’1519
The Examiner determined that the subject matter of claims 1-5, 7-15,
and 17-22 would have been obvious to one of ordinary skill in the art in light
of the combined teachings of Balbo, Utterberg ’6519 and Utterberg ’1519.
Ans. 13. The Examiner, however, did not make any additional findings
directed to a lower tabular member or tabular member engaging the base
portion of the anchor portion of the clamp. See id.
Accordingly, for the reasons expressed with respect to Rejections II
and IV, we do not sustain Rejection VII.

DECISION
We reverse the Examiner’s decision rejecting claims 1-5, 7-15, and
17-23.

REVERSED

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