Ex Parte O et al

Patent Trial and Appeal BoardJan 31, 2018

13762762 (P.T.A.B. Jan. 31, 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. 13/762,762 02/08/2013 Timothy J. O'Regan 5179.112325 6244 24978 7590 02/02/2018 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 EXAMINER TROY, ABIGAIL E ART UNIT PAPER NUMBER 3677 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): ptomail @ gbclaw. net docket @ gbclaw. net verify @ gbclaw. net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY J. O'REGAN, FRANK J. WOLFARD, and TIMOTHY M. O'REGAN Appeal 2016-001321 Application 13/762,762 Technology Center 3600 Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—3, 5, 9, and 10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-001321 Application 13/762,762 STATEMENT OF THE CASE Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Apparatus for engaging and fixedly positioning plural elongated members in lengthwise alignment, said apparatus comprising: a flexible elongated band having first and second opposed ends and first and second opposed outer surfaces and adapted for positioning about and engaging the plural aligned elongated members; first plural teeth disposed in a spaced manner along the first outer surface of said band; a housing formed integrally with, and disposed on the second end of said band and extending outwardly relative to said elongated band in the direction of its second outer surface, said housing having plural inner surfaces defining a single elongated slot in said housing and adapted to receive the first end of said band in sliding engagement when said band is looped back upon itself; and plural resilient first cross members forming a first portion of the housing's slot and aligned in a spaced manner along the length of said slot, with each of said first cross members having a respective generally flat outer surface and a respective inner surface whereon are disposed respective sets of plural second teeth for engaging said first plural teeth on said band, wherein said spaced first cross members provide flexibility to said housing to facilitate insertion of the band into the housing's slot; and plural resilient second cross members forming an opposed second portion of the housing’s slot and aligned in a spaced manner along the length of the slot, wherein each of said plural second cross members includes a respective inner surface adapted to engage the second outer surface of said band to maintain said first and second plural teeth in intimate mutual engagement, and wherein each of the first and second cross members is tapered such that its inner surface forming a portion of said slot is greater in size than its outer surface to provide 2 Appeal 2016-001321 Application 13/762,762 increased housing flexibility and an increased number of second teeth engaging said first teeth; wherein each of said adjacent first and second teeth arranged in abutting contact includes a respective tapered edge portion, and wherein adjacent tapered edge portions of abutting first and second teeth extend in opposing directions and are arranged in an overlapping manner with one another along the length of said band to provide increased coupling strength engagement between adjacent abutting teeth for maintaining the plural elongated members in fixed position and lengthwise alignment relative to one another. THE REJECTIONS Claims 1—3, 5, and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Denemark et al. (US 4,951,362; issued Aug. 28, 1990), Khokhar et al. (US 6,076,234; issued June 20, 2000), and Litwin (US 3,257,694; issued June 28, 1966). Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Denemark, Khokhar, Litwin, and Meyer (US 3,471,109; issued Oct. 7, 1969). ANALYSIS Appellants argue the Examiner erred by relying on improper combinations of prior art. Specifically, Appellants argue the Examiner relied on nonanalogous art because, according to Appellants, “Denemark is directed to a vacuum cleaner bag clamp for positioning on vacuum cleaner tubing for attaching a bag thereto” and Litwin is directed to a self-locking tamper proof strap designed for attachment to a person’s wrist for use in a hospital setting. Appeal Br. 17; see also Reply Br. 2-4. According to Appellants, “[t]he Litwin tamperproof strap and the Denemark bag clamp 3 Appeal 2016-001321 Application 13/762,762 involve flexible elongated self-locking restraining arrangements, however, they individually are directed to fundamentally different and non-analogous applications.” Reply Br. 2. The Examiner responds that, contrary to Appellants’ arguments, Denemark and Litwin are within Appellants’ field of endeavor—flexible plastic straps. Ans. 2—3. A reference is analogous art to the claimed invention if: “(1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, the Specification describes Appellants’ field of endeavor as a bundle fastener or cable tie, such as those “in the form of an elongated, flexible strap typically comprised of a synthetic plastic material having on a first end thereof a housing with a slot therein which is adapted to receive a second, opposed end of the strap.” Spec. 2. We agree with the Examiner that Denemark and Fitwin are within Appellants’ field of endeavor because both references disclose flexible plastic straps having similar structures and functions to those of Appellants’ invention. Compare, e.g., Spec. Figs. 1—4, with Denemark Figs. 1—4 and Fitwin Figs. 1—5. Under the heading “The Prior Art References When Combined Must Teach or Suggest All the Claimed Fimitations for Prima Facie Obviousness” (Appeal Br. 17 (emphasis omitted; capitalization altered)), Appellants’ Appeal Brief includes descriptions of the cited references and purports to identify differences between the individual references and Appellants’ invention (Appeal Br. 17—22). Similarly, Appellants’ Reply Brief describes differences between individual references and Appellants’ invention in a 4 Appeal 2016-001321 Application 13/762,762 section titled “Primary Improvements of Claimed Invention Are Neither Disclosed Nor Suggested In Prior Art” (Reply Br. 4 (emphasis omitted; capitalization altered)). These arguments are unpersuasive of Examiner error, however, because Appellants do not substantively address the combined teachings of the prior art nor specifically identify claim limitations missing from the combination of references. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (holding that nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures). Appellants next argue the Examiner erred because “the prior art as a whole must ‘suggest the desirability’ of the claimed subject matter.” Appeal Br. 22 (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). As explained by the Examiner, however, Appellants’ argument misapplies controlling law, and we agree with the Examiner’s conclusion that the claimed invention requires only combining prior art elements according to known methods to yield predicable results. See Ans. 7—8 (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)). Finally, Appellants argue the claimed invention recites “resilient” first and second cross members but Denemark merely discloses “deformable” members. Appeal Br. 23. The Examiner responds, and we agree, that Denemark’s disclosure of “elastically deformable” plastic members teaches or suggests the claimed “resilient” limitations. See Ans. 8 (citing Denemark 3:61-62,5:9-10,5:25-29). Accordingly, having considered the Examiner’s rejections in light of each of Appellants’ arguments, we disagree with Appellants and sustain the Examiner’s rejections of claims 1—3, 5, 9, and 10. 5 Appeal 2016-001321 Application 13/762,762 DECISION For the above reasons, we affirm the Examiner’s rejections of claims 1—3, 5, 9, and 10. No time period for taking any subsequent action in connection with this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6