Ex Parte 9022076 et al

Patent Trial and Appeal Board

Aug 30, 2017

96000126 (P.T.A.B. Aug. 30, 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.
96/000,126 08/25/2015 9022076 TRSP-009-501 3731
28120 7590 08/31/2017
ROPES & GRAY LLP
IPRM Docketing - Floor 43
PRUDENTIAL TOWER
800 BOYLSTON STREET
BOSTON, MA 02199-3600
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/31/2017 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 Ragner Technology Corp.
____________________

Appeal 2017-005464
Application 96/000,126
Patent US 9,022,076 B21
Technology Center 3900
____________________

Before JAMES T. MOORE, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

1 Issued to Gary Dean Ragner et al. on May 5, 2015 and assigned to Ragner
Technology Corp. (hereinafter the ’076 patent).
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STATEMENT OF CASE
The Patent Owner appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b). We
are informed that the ’076 patent is subject to numerous district court
litigations in the Districts of New Jersey and Delaware. App. Br. 12.
We REVERSE.

THE INVENTION
The Patent Owner’s claims are directed generally “to hoses having a
retractable and extendable means built into the hose itself.” Spec. col. 1, ll.
27–28. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hose comprising:
(a) a flexible elongated outer tube having a first end and a
second end, an interior of said outer tube being substantially
hollow;
(b) a flexible elongated inner tube formed of an elastic
material and having a first end and a second end, an interior of
said inner tube being substantially hollow;
(c) a first coupler secured to said first end of said inner and
said outer tubes;
(d) a second coupler secured to said second end of said
inner and said outer tubes; and
(e) said first coupler adapted to couple said hose to a
source of pressurized fluid, said second coupler adapted to
couple said hose to a fluid flow restrictor, whereby said fluid
flow restrictor is adapted to create an increase in fluid pressure
between said first coupler and said second coupler within said
hose to expand said elongated inner tube longitudinally along a
length of said inner tube and laterally across a width of said inner
tube thereby substantially increasing a length of said hose to an
expanded condition and wherein said hose is adapted to contract
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to a substantially decreased or relaxed length when there is a
decrease in fluid pressure between said first coupler and said
second coupler;
wherein the flexible elongated inner tube provides a
biasing force sufficient to retract the hose from the expanded
condition to the relaxed length when fluid pressure between said
first coupler and said second coupler is equal to or less than
ambient pressure.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Berardi US 8,291,941 B1 Oct. 23, 2012

Complaint filed in Telebrands Corp. v. Ragner Technology
Corporation et al., (D. N.J.) No. 2:15cv3163 (“Telebrands Complaint”).
Letter to Judge Esther Salas on behalf of Defendants National
Express, Inc. et al. regarding Tristar Products, Inc. et al. v. National
Express, Inc. et al., (D. N.J.) No. 2:13cv7752.

REJECTIONS
The Examiner made the following rejections:
Claims 1–18 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Ans. 12.
Claims 1–18 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Ans. 16.
Claims 3 and 6 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Ans. 17.

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Claims 1, 2, 4, 5, and 7–18 stand rejected under 35 U.S.C.
§ 135(b)(1) as not being made prior to one year from the date on which
Berardi was granted. Ans. 8.
Claims 1, 2, 4, 5, and 7–18 stand rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Berardi. Ans. 10.

ADDITIONAL BACKGROUND
“A patent owner may request supplemental examination of a patent in
the Office to consider, reconsider, and correct information believed to be
relevant to the patent.” 35 U.S.C. § 257 (a) (2011). Appellant was served
with a declaratory judgment action in New Jersey, styled Telebrands Corp.
v. Ragner Technology Corporation and Tristar Products, Inc., Civil Action
No. 2:15-cv-03163-MCA-LDW. Appellant seeks to have the Patent Office
conduct supplemental examination to address those issues. Req. Supp. Ex.
5.
Only some of those issues can be considered, reconsidered, or
corrected by the instant Supplemental Examination. For example, the
Examiner has asserted numerous grounds of rejection in the examination,
based upon the information contained in the petition. Ground 1, which
addresses the issue of whether there is a bar under 35 U.S.C. § 135(b)(1)
over US Patent 8,291,941 B1 is considered, as are Ground 2 (anticipation),
Ground 3 (written description), Ground 4 (enablement), and Ground 5
(indefiniteness). Fin. Rej. 11–20.

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The Supplemental Examination Request also includes, however, the
allegation in the Complaint that “it was not disclosed to the [P]atent [O]ffice
that claims 9–11 and 13–18 which were originally filed in the ’108
Application were copied from claims 1–3, 10, 11, 13, 15, 18 and 22 of
Berardi.” Req. Supp. Ex. 5. We expressly observe that this portion of the
Request cannot be “considered, reconsidered, or corrected” at this time, as
the Patent Office no longer has jurisdiction to conduct an interference once
the patent issued. Our reasoning follows.
Application 14/262,108 was filed by Appellant on April 24, 2014.
When filed, it contained claims copied from US Patent 8,291,941 B1, which
issued October 23, 2012. Suppl. Exam. Req. 5; Fin. Rej. 3–4; Ex. Ans. 2–3.
For a specific example, see claim 1 of US 8,291,941 B1, col. 13. l. 48–col.
14, l.6. Claim 1 is reproduced exactly in the ’108 specification as claim 9 on
pages 74–75. The copying is very complete – such that even the
paragraphing and indenting match precisely.
Although the as-filed claim was copied word-for-word, and others
almost exactly word-for-word, we are unable to find mention of US
8,291,941 in the as-filed ’108 specification. An information disclosure
statement was filed with the Patent Office in the ’108 application filed on the
same day as the ’108 application. It listed approximately 50 US patents, 12
foreign references, and 13 additional documents. While the ’941 patent is
listed numerically towards the end of the US patent list on the second page,
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again, no effort to draw attention to the sole reference from which claims
were copied is visible to us.2
This pattern continued in prosecution. For example, we are unable to
find a single instance where the ’941 patent is mentioned by the prosecuting
attorney during prosecution or the fact that claims were copied from it. As a
consequence, it is reasonable to conclude that the Examiner was unaware of
the potential 35 U.S.C. § 102(g) (1999) art, when it was included with
dozens of other references.
Knowledge of an issued US patent containing identical claims, or at
least claims that interfere with a pending application having allowable
claims, would likely have resulted in the Examiner determining that the
application should be submitted to the Board for potential declaration of an
interference.3 See 35 U.S.C. § 135(a) (1999). In this instance, now that the
potential 35 U.S.C. § 102(g) art has been brought to the Examiner’s
attention, the Examiner found that the present claims are directed to the
same subject matter. See Fin. Rej. 12, Ground 2.
Under these circumstances, an interference would have been declared
and conducted between the ’108 application and the ’941 patent to determine
the scope of the interfering subject matter, issues of patentability, and which
inventor was the first to invent. See MPEP 2300 generally. But now, as
both applications are patents, the Board cannot take that action. Nor can a

2 We do not opine as to whether such conduct violates 37 C.F.R. § 1.56 Duty
of Disclosure.
3 37 C.F.R. §11.303(d) states that “In an ex parte proceeding, a practitioner
shall inform the tribunal of all material facts known to the practitioner that
will enable the tribunal to make an informed decision, whether or not the
facts are adverse.”
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patent owner initiated interference occur in United States District Court with
the repeal of 35 U.S.C. § 291 (1952) (concerning interfering patents).
As noted above, we take certain actions regarding the grounds of
rejection below based upon the record and rejections made in this ex parte
proceeding. We note, however, that one “correction” we would choose to
undertake at this time would be the declaration of an interference to the
extent there is interfering subject matter. We observe that that standard for
that is much different from the bar of 35 U.S.C. §135(b)(1) presently at issue
in this appeal. We would then have available the thorough record developed
in that proceeding between inventors in an inter partes proceeding to make a
determination as to whether there was 35 U.S.C. § 102(g) art.
Consequently, while we may reverse the specific rejections made
below, it appears to us that the current inability to conduct interference
proceedings and the loss of potential 35 U.S.C. § 102(g) art is incapable of
being corrected through a Supplemental Examination Request. Thus, this
decision should be understood as only reaching the issues specifically
addressed below, and should not be construed as addressing the potential
interference and 35 U.S.C. § 102(g) issues.

ANALYSIS OF THE GROUNDS OF REJECTION
Although the Examiner has maintained five rejections, two based on
prior art and three under 35 U.S.C. § 112, the issues in four of the five
rejections hinge on the propriety of the rejections under § 112. Specifically,
the prior art rejections rely upon art that would be unavailable based on date
if the Examiner’s rejections under § 112 are reversed. The crux of the
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Examiner’s position is that the Specification of the ’076 patent fails to
support various limitations found in the claims, and as such, is not entitled to
the benefit of an earlier filing date of U.S. Patent No. 8,776,836, and the
effective filing date of the ’076 patent is the actual filing date of the
application that issued as the ’076 patent. The Examiner finds that the ’076
patent fails to support the following limitations:
a) The requirement that the first coupler is secured to the
first end of both the inner tube and the outer tube, and that the
second coupler is secured to the second end of both the inner
tube and the outer tube (see claim 1, ll. 8-11; claim 7, ll. 9-12;
claim 15, ll. 9-12).
b) The requirement that the inner and outer tubes are
unsecured to each other between their first and second ends (see
claim 2; claim 7, ll. 12-13; claim 15, ll. 13-15), and the
requirement that the inner tube moves freely with respect to the
outer tube when there is no fluid pressure differential (see claim
15, ll. 29-31).
c) The requirement that the elastic inner tube provides a
biasing force sufficient to retract the hose from the expanded
condition to the relaxed length when fluid pressure is equal to
or less than ambient pressure, or is decreased or removed (see
claim 1, ll. 25-29; claim 7, ll. 27-31; claim 15, ll. 32-36).
d) The requirement that the outer "tube" is a hybrid
tension wave spring (see claim 3) in combination with the
requirement that the elastic inner tube provides a biasing force
sufficient to retract the hose from the expanded condition to the
relaxed length when fluid pressure is equal to or less than
ambient pressure (see claim 1, 11. 25-29).
e) The requirement of a spring disposed between the
inner and outer tubes (see claim 6) in combination with the
requirement that the elastic inner tube provides a biasing force
sufficient to retract the hose from the expanded condition to the
relaxed length when fluid pressure is equal to or less than
ambient pressure (see claim 1, 11. 25-29).
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f) The requirement that the outer tube is made from a
material which will not stretch longitudinally or laterally when
a force is applied to its interior (see claim 8).
g) The requirement that the outer tube is non-elastic (see
claim 15, 11. 2-3).
Ans. 12–13. The Patent Owner is of a different view, and provides
declaration testimony from Richard M. Leuptow to the contrary. (App. Br.,
Ex. 1010).
The main point urged in relation to the prior art based rejections is
whether the Specification adequately discloses a hose wherein the hose
body/material itself provides the biasing force necessary to retract the hose
from an expanded position. Mr. Leuptow asserts that:
Other claimed aspects of the hose, such as the materials to be used, the
layering of the hose or the characteristics of the couplers are, in my
opinion, supplementary to the key inventive principle of using biasing
structures and controlled fluid pressure to retract and extend the hose,
and would certainly have been known to a person of skill in the art by
the time of filing of the '836 patent.

Ex. 1010 ¶ 29.

According to the Examiner, “the disclosure fails to describe a specific
embodiment” of the concept “of relying only on the hose body itself to
provide the biasing force that retracts the hose.” Ans. 30. As the Patent
Owner points out, however, “that is not the correct standard for written
description” and “‘[t]he relevant inquiry is whether a claim not limited to a
[certain embodiment] is described.” Reply Br. 3–5 (citing Anheuser-Busch
Cos. v. Crown Cork & Seal Techs. Corp., 121 Fed. App’x 388, 394 (Fed.
Cir. 2005).
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While the feature of biasing being accomplished by the hose itself,
i.e., without a biasing spring element, is not a feature of any specific
embodiment, the ’076 patent makes clear “the hose may obtain substantially
all its biasing force from the cover material, and not need a separate metal or
composite spring at all.” Spec. col. 10, ll. 49–52; ’836 patent, col. 10, ll. 66
–col. 11, l. 12. This is not merely an aspirational goal as suggested by the
Examiner (Ans. 30), but is a feature that inures from the materials from
which the hose is made. For example, the Specification teaches “[l]ayer
136c can be composed of any of a number of resilient and flexible polymers,
such as, vinyl, urethane, etc.” Spec. col. 21, ll. 34–38; ’836 patent col. 22, l.
66–col. 23, l. 1).
The Specification also teaches that the fluid transport channel
“comprises a resilient polymer and covers the entire inner surface of the
hose channel to prevent the fluid from escaping through the sides of the
hose.” Spec. col. 14, ll. 9–16, ’836 patent col. 12, l. 64 – col. 13, l. 4. Based
on these disclosures Dr. Lueptow concludes that “a POSITA would have
understood ‘resilience’ as the property of some elastomeric materials to be
stretched repeatedly to several times their original length and still return to
their original shape.” Lueptow Dec. ¶ 78.4

4 We note that the Examiner states that he has “taken into account the
interest of the expert in the outcome of the case as but one factor weighing
against a finding that the evidence submitted is of sufficient probative value
to overcome the rejections.” Ans. 31–32. The Examiner’s characterization
of Dr. Lueptow’s compensation as being related to the outcome of the case
is, however, factually incorrect as Dr. Lueptow was only compensated for
his time and, as is commonplace for patent experts, his compensation was in
no way tied to the outcome of the case. Reply Br. 7–8. Accordingly, any
weight given to this as a factor in the Examiner’s determination taints the
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Thus, the Specification makes clear that biasing force may be
achieved solely from the cover material without a spring and also
specifically discloses the composition of the cover material itself as well as
other resilient properties within the hose structure. Given this information,
one of ordinary skill in the art would have understood, as Dr. Lueptow
testifies, that a hose cover made of materials disclosed in the Specification
could provide the biasing force claimed. Lueptow Dec. ¶ 83.
The Examiner also appears to place significant weight on the fact that
the Specification discloses a “fairly extreme” degree of retraction in the
range of “9:1 or 10:1 ratio of extended length to retracted length.” Ans. 32.
The examples in the Specification, however, “are merely examples in some
embodiments and are not required by the claims.” Reply Br. 13. The claims
only require that retraction biasing force exists, and as explained above, the
Specification discloses the materials that may be used to make the hose. Dr.
Leuptow’s Declarartion also shows that one of skill in this art would have
understood that the disclosed materials would provide such a biasing force.
Although the spring may be necessary to achieve the disclosed ratios, given
the disclosure of the resilient hose body material properties, even in the
embodiments with springs, some biasing is likely achieved by the hose body
itself. There simply is no requirement that the “extreme” ratios be achieved
by the claimed embodiment and whether a hose without a spring may
achieve those ratios is, contrary to the Examiner’s analysis, irrelevant to the
rejections.

entirety of the Examiner’s analysis as we have no way to determine how
much weight was given to this factor.
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The Examiner also rejects the claims for failing to adequately describe
the claimed couplers because the claim allegedly covers “essentially any and
all coupling structures capable of being secured to respective ends of the
inner and outer tubes.” See Ans. 35. Contrary to this assertion, however, the
Specification explains that “[b]oth faucet connector 152 and nozzle
connector 158 can be standard garden hose type connectors similar to those
presently found on garden hoses.” Spec. col. 27, ll. 33–37, ’836 patent col.
27, ll. 59-65. Accordingly it is not the case that any and all coupling
structures are disclosed, but merely that standard garden connectors are an
example of the claimed coupler, which is sufficient disclosure for the
broader term “coupler.”
Additionally, the Examiner rejects the claims for failure to adequately
describe the feature that the inner and outer tubes are unsecured to each
other. As the Patent Owner points out, however, the Specification discloses
that “bonding of the layers is not critical to the proper function of the hose”
and that “not bonding that woven layer to the other layers can provide
greater flexibility of the hose as a whole.” Spec. col. 15, ll. 8–11, ’836
patent col. 15, ll. 34-37; see also App. Br. 41–42. The Specification also
discloses “[l]ayers 148a-b may be bonded together or allowed to be held
together by just friction contact between them.” Spec. col. 23, ll. 53–55,
’836 patent col. 24, ll. 13-25 and 37-42. Accordingly, we see no basis to
assert that the Specification fails to provide written description for the inner
and outer tubes being unsecured.
Regarding the claimed features that the outer tube be made from a
material that will not stretch longitudinally or laterally or is inelastic, we
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agree with the Patent Owner that the Specification adequately describes
outer cover materials that are flexible, but non-elastic that would meet these
limitations. See App. Br. 56–63; ’836 patent col. 3, ll. 47-50; Spec. col. 3, ll.
35-37.
Given that we disagree with the Examiner regarding the adequacy of
the written description, we do not sustain the Examiner’s written description
rejections. Furthermore, the analysis above also adequately addresses the
Examiner’s enablement rejections, which we also do not sustain.
Regarding the rejection of claims 3 and 6 as indefinite, we do not
agree with the Examiner that these claims “contradict claim 1 from which
they depend.” Ans. 17. As the Patent Owner points out, the disclosure of
the ’076 patent “explains that the material that makes up the hose’s body can
provide some or all of the retracting force.” Reply Br. 18. As such, while
claim 1 clearly recites that the inner tube provides a biasing force sufficient
to retract the hose, this does not preclude other structures that may augment
retraction. We agree with the Patent Owner that nowhere does the ’076
patent “state[] that the springs shown in figures 4B and 11B would have to
be omitted in cases where the material that makes up the hose’s body
provides a sufficient force to retract the hose.” App. Br. 90. Accordingly,
there is no contradiction as both a spring and the cover may each provide
some biasing force and may work in conjunction.
We also agree with the Patent Owner regarding the Examiner’s
rejection under 35 U.S.C. § 135(b)(1). The Examiner’s rejection is based
upon the premise that “claims 1, 3, 10, 11, 13, 15, 18, and 22 of Berardi ’941
recite essentially the same subject matter as claims 1, 2, 4, 7-9, and 11-16 of
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Patent No. 9,022,076.” Ans. 9. The Examiner goes on to admit, however,
that the Patent Owner’s claims “additionally require that the elastic inner
tube provides a biasing force sufficient to retract the hose from the expanded
condition to the relaxed length when fluid pressure is equal to or less than
ambient pressure, or is decreased or removed” and that this limitation is not
found in the claims of Berardi ’941. Id. The Examiner then states regarding
Berardi ’941, however, that “the biasing force appears to be an inherent
characteristic” of the claims thereof. Id.
First, we agree with the Patent Owner that the Examiner is technically
incorrect on the limited record before us in this ex-parte proceeding. We are
not persuaded that the characteristic is necessarily inherent if it was
considered by the examiner at the time of the amendment to be material to
patentability of the invention. See id. Note, however, that this is different
from the two-way test for interferences. See 37 C.F.R. § 41.203(a).
Furthermore, while Berardi ’941 may have claimed a flexible/resilient
material for the inner and outer tubes, the claims at issue require more than
just such a material and specifically recite a biasing retracting force that is
not required to be provided by any particular element of Berardi ’941. See
id. (citing Lueptow Dec. ¶¶ 32, 35, 36, 61, and 81). The Patent Owner is
correct that the Examiner appears to be relying on the disclosures of Berardi
’941 rather than the claims as required under 35 U.S.C. § 135(b)(1). App.
Br. 78. There is an insufficient basis on this record for concluding that the
claimed invention of Berardi ’941 would achieve the specific requirements
relating to the biasing force as currently claimed. Accordingly, we do not
sustain this rejection.
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As to the prior art rejections, the Examiner’s use of the specific prior
art in the rejections relies on the alleged absence of disclosure supporting the
claim limitations to date the pertinent disclosure. The Examiner, thus relies
not on the original filing date of the patent or its parent application(s), but on
the filing of the claims containing the limitations at issue, which brings
Berardi ’941 in as prior art. Our conclusion that the Patent Owner’s
arguments persuade us that the Specification adequately discloses the
limitations at issue eliminates the references used by the Examiner from
consideration as prior art based on the earlier filing date that should have
been conceded by the Examiner. Accordingly, the prior art-based rejections
are also reversed.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1–18.
REVERSED