Ex Parte Whipple et al

Patent Trial and Appeal BoardApr 4, 2016

12888493 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/888,493 09/23/2010 83544 7590 04/06/2016 Snyder, Clark, Lesch and Chung, LLP 950 Herndon Parkway Suite 365 Herndon, VA 20170 FIRST NAMED INVENTOR Charles E. Whipple 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0067-0032 4543 EXAMINER DAZ, MUHAMMAD ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 04/06/2016 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): PTO@SnyderLLP.com docket@snyderllp.com pto.archive@sclclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES E. WHIPPLE, MARK R. DRANE, ANDREW COLE, and JOEY MAGN0 1 Appeal2014-002835 Application 12/888,493 Technology Center 3600 Before WILLIAM A. CAPP, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Charles E. Whipple et al. ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-22. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART and designate a NEW GROUND OF REJECTION. 1 According to Appellants, the Real Party in Interest is Thomas & Betts Corporation. Appeal Br. 3. Appeal2014-002835 Application 12/888,493 CLAIMED SUBJECT MATTER The invention concerns a cable hanger. Spec., Abstract. Claims 1, 10, 18, and 21 are independent claims. Claims 1 and 21 are illustrative of the subject matter on appeal, and recite: 1. A cable hanger comprising: a first latch configured to engage a strut to suspend the cable hanger from the strut; a second latch configured to engage the strut to suspend the cable hanger from the strut, wherein the cable hanger is configured to suspended [sic] from the strut by the first latch engaging the strut without the second latch engaging the strut, and configured to suspend from the strut by the first latch engaging the strut and the second latch engaging the strut; a cable saddle to hold one or more cables, wherein when the cable hanger is suspended by the first latch engaging the strut without the second latch engaging the strut, a gap is formed between the cable hanger and the strut such that the cable saddle is configured to receive the one or more cables through the gap; and wherein when the cable hanger is suspended by the first latch engaging the strut and the second latch engaging the strut, the gap is closed between the cable saddle and the strut to secure the one or more cables. 21. A cable hanger, comprising: a latch including a first flange and a second flange, wherein the latch is configured to pass in a first direction through a hole in a base portion of a strut for suspending the cable hanger from the strut, wherein the hole in the base portion of the strut is substantially rectangular, wherein the first flange and the second flange prevent the latch from moving in a second direction 2 Appeal2014-002835 Application 12/888,493 opposite the first direction after passing through the hole in the base portion of the strut; and a cable saddle to hold one or more cables, wherein when the cable hanger is suspended by the latch, the cable saddle is configured to receive the one or more cables through a gap. Appeal Br. 19, 23, Claims App. (emphases added). Independent claims 10 and 18 contain similar language to that emphasized above in claim 1. Id. at 20-22, Claims App. REJECTIONS The claims stand rejected as follows: 2 I. Claims 1-9 under 35 U.S.C. Â§ 102(b) as unpatentable over Tsai (US 6,257,530 Bl, iss. July 10, 2001). 3 II. Claims 10-17 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsai and Sedlmeier (US 5,927 ,041, iss. July 27, 1999). 4 III. Claims 18-20 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsai and Laughlin (US 6,959,898 Bl, iss. Nov. 1, 2005). IV. Claims 21-22 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsai. 2 Appellants seek review of the Examiner's objection to the drawings. Appeal Br. 8-9. However, a drawing objection is reviewable by petition under 37 C.F.R. Â§ 1.181, not appeal. See Ans. 2; Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). Therefore, we do not consider this argument. 3 Although the heading of the rejection identifies claims 1-8 as rejected, the body of the rejection treats claims 1-9. See Final Act. 8-9; see also Appeal Br. 9 (showing Appellant's understanding that claim 9 is rejected); Ans. 2. 4 Although the heading of the rejection identifies claims 21-22 as part of this ground of rejection, the Examiner's Answer indicates that claims 21-22 are not so rejected. Compare Final Act. 10, with Ans. 6. 3 Appeal2014-002835 Application 12/888,493 ANALYSIS Anticipation by Tsai- Claims 1-9 The Examiner finds that Tsai discloses a cable hanger comprising first and second latches 231, as shown in Figure 1. Final Act. 8. The Examiner finds that Tsai's cable hanger is capable of being suspended from strut 10 by first latch 231 without second latch 231 engaging the strut. Id.; Ans. 3. The Examiner finds that when suspended by a single latch 231, "the suspension may or may not be strong enough to bear the impact of external forces," but the Examiner finds that the cable hanger "will not fall off until the external force is applied against its point of contact." Ans. 3.5 The Examiner finds that when Tsai' s cable hanger is suspended in this manner, a gap is inherently formed between the cable hanger and the strut, due to a shift in the cable hanger's center of gravity. Final Act. 8, Ans. 4--5. The Examiner finds that the cable saddle is configured to receive one or more cables through the gap. Final Act. 8. Appellants contend that Tsai does not disclose a cable hanger configured to suspend from a strut by a single latch. Appeal Br. 10-12. Specifically, Appellants contend that Tsai discloses a device in which both legs 231 must engage bracket 10 together. Id. at 11-12 (citing Tsai, Figs. 3- 5). Appellants argue that without both legs 231 engaged, the cable holder would simply fall away from bracket 10. Id. at 10. Appellants also contend that because Tsai does not disclose a cable hanger configured to suspend 5 The Examiner cites no support for the statement that "a rib or slot can be provided in the strut," from which a first latch could suspend. Ans. 3. Tsai does not disclose a rib or slot and, therefore, cannot anticipate on this basis. 4 Appeal2014-002835 Application 12/888,493 from a strut by a single latch, Tsai does not disclose a gap between the cable hanger and the strut, configured for receiving cables therethrough. Id. at 12- 13. Although it is a close case, we are persuaded by Appellant's argument. Even granting that claim 1 requires only a structure that is capable of performing the recited functional limitations (see, e.g., Final Act. 3), the Examiner's finding that Tsai is so capable is not supported by a preponderance of the evidence of record. Claim 1 requires that the cable hanger be capable of suspending from the strut by a single latch and, when so suspended, the cable hanger must also be capable of "receiv[ing] the one or more cables through the gap." The Examiner provides no evidence or persuasive explanation to support the finding that Tsai' s cable hanger is configured to receive cables through the gap, when the cable hanger is suspended by a single latch. See, e.g., Ans. 4-- 5 (discussing that a gap is formed inherently when the hanger is suspended by a single latch, but not discussing whether or how the gap is capable of receiving cables in such a configuration), Final Act. 8; cf Appeal Br. 12-13. Furthermore, the findings that the Examiner has made on the record suggest that when Tsai' s device is suspended by a single latch 231, it would be incapable of receiving cables through the gap because "external forces" would be transferred to cable hanger, causing the cable hanger to "fall off' the strut. Ans. 3. Therefore, on this record, we cannot sustain the Examiner's rejection of independent claim 1, or claims 2-9, which depend therefrom. 5 Appeal2014-002835 Application 12/888,493 Obviousness over Tsai and Sedlmeier - Claims 10--17 Claim 10 recites limitations similar to those recited in claim 1. Appeal Br. 20-21, Claims App. (reciting a cable hanger "configured to [be] suspended from the strut by the first hook engaging the strut without the second hook engaging the strut" and, when so suspended, "a gap is formed between the cable saddle and the strut such that the cable saddle is configured to receive the one or more cables through the gap"). The Examiner finds that Tsai discloses a cable hanger capable of being suspended by a single hook, and, when so suspended, configured to receive cables through a gap formed between the cable saddle and strut. Final Act. 10-11. For reasons similar to those discussed above with respect to claim 1, we do not sustain the Examiner's finding that Tsai' s cable hanger is capable of performing the recited functional limitations. The Examiner does not rely on Sedlmeier to cure these deficiencies. Id. at 11. Therefore, on this record, we cannot sustain the Examiner's rejection of independent claim 10, or claims 11-17, which depend therefrom. Obviousness over Tsai and Laughlin - Claims 18-20 Claim 18 is a method claim that recites limitations similar to those recited in claim 1. Appeal Br. 22, Claims App. (reciting steps of "hooking a cable hanger by a first hook," "placing a cable into the cable saddle ... through a gap formed between the strut and the cable hanger," and "hooking the cable hanger by a second hook onto the strut after placing the cable"). The Examiner finds that Tsai discloses hooking a cable hanger onto a strut, 6 Appeal2014-002835 Application 12/888,493 wherein the cable hanger includes a cable saddle for holding one or more cables. Final Act. 13. The Examiner finds that Tsai does not explicitly disclose the method of retaining an object as claimed, but finds that Laughlin discloses as much, and concludes that it would have been obvious "to make Tsai with these aforementioned teachings of utilizing the cable hanger the motivation would have been to provide ease of use for the object as evidenced by [Laughlin]." Id. at 13-14. The Examiner also states that "Laughlin is used to show the teaching of method/steps of how cable hangers can be used. There is no structural modification [to Tsai] required." Ans. 8. For reasons similar to those discussed above with respect to claim 1, we do not sustain the Examiner's findings that Tsai's cable hanger, which is unmodified in the Examiner's rejection (see Ans. 8), is capable of hooking to a strut by a first hook, placing a cable through a gap between the strut and the cable hanger, and, after placing the cable, hooking to a strut by a second hook. Because we find that Tsai' s structure is not capable of performing these steps, we do not agree with the Examiner's conclusion that it would have been obvious to have used Tsai's device in the method taught by Laughlin. See also Appeal Br. 15-17. Therefore, on this record, we cannot sustain the Examiner's rejection of independent claim 18, or claims 19 and 20, which depend therefrom. Obviousness over Tsai- Claims 21-22 Claim 21 differs from claims 1, 10, and 18 in that it does not require that the cable hanger be capable of suspending from the strut by a single 7 Appeal2014-002835 Application 12/888,493 latch. Appeal Br. 23, Claims App. However, claim 21 is similar to claims 1, 10, and 18 in that it recites a cable saddle configured to receive cables through a gap. Appellants argue that when Tsai's cable hanger is suspended from bracket 10, a gap is not present to receive cables. Id. at 14, 17. We agree with the Examiner's conclusion that Tsai renders obvious the cable hanger of claim 21. Specifically, we agree with the Examiner's findings that Tsai discloses a cable hanger comprising a latch (231) including a first flange (24) and a second flange (24), wherein the latch is configured to pass in a first direction (left, in Figure 1) through a hole (13) in a base portion of a strut ( 10) for suspending the cable hanger from the strut, wherein the first flange (24) and the second flange (24) prevent the latch from moving in a second direction (right, in Figure 1) opposite the first direction after passing through the hole (13) in the base portion of the strut (10). See Final Act. 14--15; Tsai, Fig. 1. We also agree with the Examiner's undisputed conclusion that it would have been obvious to modify the hole taught by Tsai to include "any old and well known shape." Final Act. 15. Although the Examiner finds that Tsai' s cable hanger includes a cable saddle configured to receive one or more cables through a gap, the Examiner does not make any findings as to where the gap is located or how it is capable of receiving cables. Id. at 14--15. However, when Tsai's cable hanger is attached to strut 10 by both latches 231, a gap is present in the center chamber 26 ofTsai's cable hanger. See Tsai, 2:13-15; see id., Fig. 1. This gap is capable of receiving one or more cables, inserted longitudinally therethrough, after the cable hanger has been attached to the strut by latches 231. See id. 8 Appeal2014-002835 Application 12/888,493 For these reasons, we concur with the Examiner's obviousness conclusion with respect to claim 21. Notwithstanding our agreement with the conclusion, we designate our affirmance as a new ground of rejection under 37 C.F.R. Â§ 41.50(b), because our affirmance is based upon rationale that differs from that of the Examiner. This new rationale does not apply to claim 22 and, therefore, we reverse the rejection of that claim. DECISION The Examiner's rejection of claims 1-9 under 35 U.S.C. Â§ 102(b) as unpatentable over Tsai is REVERSED. The Examiner's rejection of claims 10-17 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsai and Sedlmeier is REVERSED. The Examiner's rejection of claims 18-20 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsai and Laughlin is REVERSED. The Examiner's rejection of claim 21 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsai is AFFIRMED. The Examiner's rejection of claim 22 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsai is REVERSED. This decision contains a new ground of rejection pursuant to 37 CPR Â§ 41.50(b). 37 CPRÂ§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 CPRÂ§ 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 9 Appeal2014-002835 Application 12/888,493 ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED-IN-PART; 37 C.F.R. Â§ 41.50(b) 10