Ex Parte Lambert

Patent Trial and Appeal BoardAug 8, 2017

13946133 (P.T.A.B. Aug. 8, 2017)

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. 13/946,133 07/19/2013 Walter L. Lambert Wilolamb 1 CON 8017 82343 7590 08/08/2017 Scott P. Zimmerman, PLLC - Others P.O. Box 3822 Cary, NC 27519 EXAMINER AVERICK, LAWRENCE ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 08/08/2017 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 WALTER L. LAMBERT Appeal 2015-004490 Application 13/946,133 Technology Center 3700 Before: JOHN C. KERINS, WILLIAM A. CAPP, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on July 20, 2017. We reverse. Appeal 2015-004490 Application 13/946,133 CLAIMED SUBJECT MATTER The claims are directed to a parallel wire cable. Claims 1, 8, and 15 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: A manufacture, comprising: a plurality of wires arranged in a bundle as a structural cable, each wire in the plurality of wires parallel to every other wire in the bundle, and the each wire in the plurality of wires individually pulled to a tension value. REJECTIONS Double Patenting Rejections Claims 1—7 and 15 are provisionally rejected under 35 U.S.C. § 101 for nonstatutory double patenting over claims 1—8 of Appellant’s copending Application No. 13/084,6933 Claim 8 is rejected under 35 U.S.C. § 101 for nonstatutory double patenting over claim 81 2 from the publication (US 2012/0260590 Al, pub. Oct. 18, 2012) of Appellant’s copending Application No. 13/084,693 in view of Percheron (US 5,083,469, iss. Jan. 28, 1992). 35 U.S.C. § 102(b) and 103(a) Rejections Claims 1—3, 6, and 7 are rejected under 35 U.S.C. § 102(b) as being anticipated by Marchetti (US 6,944,550 B2, iss. Sept. 13, 2005). 1 The present application claims priority to Application No. 13/084,693 as a continuation thereof. See, 08/12/2013 Filing Receipt. 2 The rejection lists claim 8 of the ’590 publication, but later refers to claim 15, which later reference is believed to be a typographical error. 2 Appeal 2015-004490 Application 13/946,133 Claims 4, 5, and 8—20 are rejected as being unpatentable under 35 U.S.C. § 103(a) over Marchetti and at least one other reference. In this regard, claim 4 is further rejected over Campbell (US 3,083,817, iss. Apr. 2, 1963); claims 5, 8—10, 12—17, 19, and 20 are further rejected over Percheron; and claims 11 and 18 are further rejected over Percheron and Campbell. OPINION Double Patenting Rejections We conclude that it is premature to address the Examiner’s provisional rejection of claims 1—7 and 15 for nonstatutory double patenting. Ex parte Moncla, No. 2009-006448, 3 (BPAI June 22, 2010). We also determine that it is premature to address the Examiner’s rejection of claim 8 for nonstatutory double patenting, as claim 8 relied on in the rejection from publication (US 2012/0260590 Al, pub. Oct. 18, 2012) of Appellant’s copending Application No. 13/084,693 has been amended since publication. We leave it to the Examiner to determine whether the double patenting rejections are still proper. 35 U.S.C. § 102(b) Rejection The Examiner finds that Marchetti’s teachings concerning a cable made up of a plurality of strands where each strand is individually tensioned anticipates independent claim 1. Final Act. 7—8. The Examiner further finds that the terms “wires and strands are used interchangeably in the [Marchetti] patent.” Id. at 8; see also id. at 2—3. Therefore, Marchetti’s reference to a “strand” is equivalent to the claim’s reference to “each wire.” 3 Appeal 2015-004490 Application 13/946,133 Appellant’s Specification states that “[a] strand, in the art of structural cable, is defined as a group of multiple wires.” Spec. 115. Accordingly, Appellant argues that the Examiner’s position concerning the meaning of the term “strand” is unsupported by Marchetti (Appeal Br. 5—9) and contrary to the meaning as understood by those of skill in the art {id. at 9—11). As noted above, the Examiner found that Marchetti uses the terms “wires and strands . . . interchangeably.” Final Act. 8. In support of this finding, the Examiner cites the abstract of Marchetti, as well as, column 10, lines 8—22 and lines 10-25. Final Act. 2—3, 8; Ans. 8. However, these sections of Marchetti do not support the Examiner’s finding of the interchangeability of the terms “wire” and “strand.” The abstract makes no reference to wires, and column 10, which includes the only reference to a “wire” in Marchetti, refers to “an INVAR® wire” used as part of a measurement system which is completely separate from the cable and strands relied upon by the Examiner in the rejection. Marchetti col. 10:9— 20; see also Appeal Br. 6—9. Marchetti also references the book “‘Cable Structures’ by H. Max Irvine, published in 1981 by The MIT Press Series in Structural Mechanics,” (Marchetti col. 8:10-12), which Appellant states “is considered the authoritative text for cable structures” (Appeal Br. 10). Appellant highlights numerous quotes from the book arguing that one of skill in the structural cable arts would understand that “cables would consist of several strands, each [strand] containing many wires.” Id. (quoting Cable Structures 61). We determine that Appellant’s evidence supports their position that one of skill in the structural cable arts would understand the term “strand” to require a group of multiple wires. Therefore, we do not sustain the 4 Appeal 2015-004490 Application 13/946,133 anticipation rejection as it relies on the unsupported finding that a “strand” in the structural cable arts can be made up of only a single wire. 35 U.S.C. § 103(a) Rejections We do not sustain the obviousness rejections as they also rely on the unsupported finding that a “strand” in the structural cable arts can be made up of only a single wire. DECISION We do not reach the Examiner’s decision to reject claims 1—8 and 15 under nonstatutory double patenting. The Examiner’s rejection of claims 1—3, 6, and 7 as anticipated is reversed. The Examiner’s rejections of claims 4, 5, and 8—20 as obvious are reversed. REVERSED 5