Application of Caveney

• Decision Date: 24 November 1967
• Docket Number: Patent Appeal No. 7780.
• Citation: 386 F.2d 917
• Parties: Application of Jack E. CAVENEY.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

386 F.2d 917 (1967)

Application of Jack E. CAVENEY.

Patent Appeal No. 7780.

United States Court of Customs and Patent Appeals.

November 24, 1967.

Petherbridge, O'Neill & Aubel, Chicago, Ill. (Roy E. Petherbridge, Chicago, Ill., of counsel), for appellant.

Joseph Schimmel, Washington, D. C. (S. Wm. Cochran, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, RICH, SMITH and ALMOND, Judges, and WILLIAM H. KIRKPATRICK.^*

RICH, Judge.

This appeal is from a decision of the Patent Office Board of Appeals,¹ adhered to on reconsideration, affirming the examiner's final rejection of claims 1, 5, 6, 8, and 10-14 of application serial No. 325,203, filed November 13, 1963, entitled "Wiring Duct." No claim has been allowed.

The wiring duct of the invention is depicted in Fig. 1.

It is chiefly characterized by the flat fingers 6 which are solid pieces the width of which is several times greater than the thickness. The construction makes the fingers quite flexible in the lateral direction, permitting easy and convenient insertion of the wires into the slots 8. It also ensures rigidity in the longitudinal direction, allegedly preventing accidental removal of the wires, once inserted. Each finger is enlarged at its free end so that the open ends of the slots 8 are too constricted for passage of the wires. Wires can be inserted only by lateral deflection of the fingers as shown at 17 in dotted lines.

Claim 1 is illustrative.

1. A channel-shaped wiring duct, formed of a base and two upstanding sidewalls separated into ribbon-like deflectable fingers, for conveying electrical wire conductors along a predetermined path and allowing distribution of the conductors to a plurality of locations along such path by the lateral deflection of selected ones of said fingers out of the planes of the sidewalls, each of said sidewalls being made of flat thin-walled nonconductive material and having a plurality of parallel slits for receiving the wire conductors, the slits extending from the free edge of the sidewalls toward said base to divide the sidewalls into a plurality of solid ribbon-shaped fingers, side edges on each of said fingers which are substantially parallel throughout the major portion of the finger length, the width of each ribbon-shaped finger in the plane of its sidewall being less than the finger length but several times greater than the finger thickness as measured in a plane transverse to the plane of its sidewall, each of said fingers being substantially rigid to displacement in the plane of its sidewall but exhibiting a leaf-spring action so as to be readily deflectable laterally out of the plane of its sidewall to accommodate the insertion of the conductors into said slits and their removal therefrom, a projection in the plane of the sidewall extending from at least one of the parallel edges of each finger near its free end, a succession of restricted throats formed by said projections each located at the entrance of one of the slits, said projections serving to tend to block the passage of wire conductors having a diameter larger than the throat width until an adjacent finger is deflected laterally out of the plane of its sidewall.

The examiner cited the following patents:²

                  Cruser         2,082,099        June 1, 1937
                  Walch          3,024,301        Mar. 6, 1962
                                                   (filed 10-5-55)
                

Walch describes the wiring support shown below. Slots 22 are formed between flexible wire loops 17.

Walch discloses that his loops prevent accidental displacement:

In accordance with my invention, the arms 17 are so located that the distance between adjacent loop portions 20 is less than the diameter of the circuit wires in the bundle. As a result, the circuit wires are effectively retained in the space 22 and prevented from being accidentally displaced therefrom during the wiring operation. The segments 19 have a moderate degree of resilience so that wires leading off from the bundle can be slipped between the loop portions 20 and into the space 22 if sufficient force is applied to the wire to displace the loops, or if the loops are otherwise displaced. Permitting the wires to enter the space 22 in this manner is especially advantageous in that it obviates the need for threading wires through the opening, which, as previously stated, is a tedious, time-consuming process. Threading is also disadvantageous because it tends to abrade the insulation of the circuit wires.

The Walch patent and a parent of the application on appeal were in an interference. Walch was awarded priority.

Cruser shows wire supports in his Figs. 4 and 5, reproduced below, the throats (E, El, E2) of which do not inhibit removal or insertion of wiring as do those of Walch or appellant.

The examiner rejected appellant's claims as obvious within the meaning of 35 U.S.C. § 103 in view of Walch and Cruser:

To form the fingers * * * of Walch * * * of solid cross section as suggested by Cruser in Figure 5 would be obvious. Cruser teaches that the sidewalls through which the wire emerges may be formed of wire loops (Fig. 4) or solid cross section (Fig. 5). In view of this teaching of Cruser, it is submitted that it would be obvious to form the fingers of Walch of solid cross section. Walch clearly discloses * * * that his loops 20 prevent accidental displacement of the wires during the wiring operation. Thus, if there is any difference in the hold power of the fingers defined in the appealed claims, it is a difference in degree rather than kind.

Appellant submitted his own affidavit and that of one of his customers attesting to the unobviousness and commercial success of his invention. The affidavits describe the methods of wiring control panels before appellant's invention. These included the "flat wiring" method in which the electrical wire conductors were routed to have a minimum of cross-overs and to lie flat beside each other on a supporting surface, the "bundling" method in which the wires were gathered together in a bundle and laced with twine, and the method of running wires along troughs or raceways and threading the wires through holes in the troughs. The disadvantages of each of these are outlined. Appellant's affidavit, for instance, stated:

* * * in the "flat wiring" method a large amount of space was needed to position the wires and the initial position of the wires had to be carefully planned to assure a minimum number of crossovers, and if one or more wires were incorrectly routed a total rearrangement of the wire routing was often necessary. In the "bundling" method the lacing could not be done until the entire wiring operation was completed, and bundles of loose wires were difficult to work with. When using the troughs, the wires had to be threaded through the holes in the troughs and the insertion and removal of the wires was time consuming.

Commercial acceptance was described as almost immediate. Appellant listed sales data for the first three years in which his invention was marketed:

                  1956         (9 months)        $ 14,800
                  1957         (full year)       $ 99,000
                  1958         (full year)       $170,000
                

Both customer and appellant gave as their opinion that the references of record did not make the invention obvious.

Appellant also introduced the affidavit of Walch,³ the inventor of the principal reference. Walch recounts that his thoughts, during the development of his wiring support, did indeed touch lightly on the use of solid fingers, but, being cognizant of a number of disadvantages associated with solid fingers, he refused to be distracted from his open-work grill. He further averred:

THAT, prior to the time of filing my application I was aware of Cruser patent No. 2,082,099, and that I could see no reason to alter or modify the structure of my application in view of Cruser; * * *.

The examiner seemed to feel that the opinions on unobviousness in each of the affidavits could safely be ignored. He dismissed the evidence of commercial success with the shibboleth that such evidence may be used only to resolve a doubt about patentability and not to create one.

The board generally agreed with the examiner, adding only the comments that the Walch affidavit did not allege any knowledge of the Cruser disclosure and that all of the affidavits had been considered as evidence of unobviousness but were surely not conclusive on the point.⁴

Appellant's argument is twofold. He argues first that Walch is not a proper prior art reference. He must, of course, recognize that the Walch filing date is earlier than his own. But he bases his argument on the fact that he is able to prove a date of invention earlier than the Walch filing date. However, he did not do so.⁵ Appellant feels he should be excused from making his proof since, in this case, it would have been futile. The Patent Office, appellant argues, would merely have cited the line of cases holding the disclosure of the prevailing patent⁶ to be prior art against the losing party and would have ignored whatever affidavits he submitted. In appellant's opinion, the Patent Office would have been correct in so doing until the Supreme Court, in Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 86 S.Ct. 335, 15 L.Ed.2d 304 (1965), forbade the use of any patent as prior art until its filing date.

This case must be decided on the record appellant chose to make. He has, in effect, asked us to reverse the Board of Appeals for an error he assures us it would have made had he only given it the opportunity. Our jurisdiction does not extend so far. The Walch reference is good prior art even under appellant's view of Hazeltine.

We do not mean to imply that we see any merit in appellant's analysis of Hazeltine. The Court there examined the interplay between sections 102(e) and 103 of the patent statute and determined that, for the purposes of section 103, a patent is effective as a prior art reference...