Ex Parte Abdi et al

Board of Patent Appeals and Interferences

Feb 8, 2012

11116582 (B.P.A.I. Feb. 8, 2012)

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.
11/116,582 04/29/2005 Abraham Abdi MEI--41 3144
7590 02/08/2012
G. DONALD WEBER, JR.
18442 Taft Avenue
Villa Park, CA 92861
EXAMINER
LAVINDER, JACK W
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
02/08/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ABRAHAM ABDI, MUNA ABDI, and
CHARLES L. COULTER
____________________

Appeal 2010-000581
Application 11/116,582
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, STEVEN D.A. MCCARTHY, and
KEN B. BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000581
Application 11/116,582

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STATEMENT OF THE CASE
Abraham Abdi et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Abdi (US 5,075,935, iss. Dec. 31, 1991) and Marusiak
(US 5,765,820, iss. Jun. 16, 1998) and rejecting claims 1-16 on the ground
of obviousness-type double patenting as unpatentable over claims 1-13 of
Abdi and Marusiak. We have jurisdiction under 35 U.S.C. § 6(b).
The Examiner also rejected claims 17 and 18 under 35 U.S.C. § 112,
second paragraph, as being indefinite because of the use of the term
“preferably.” See Ans. 3. Appellants state that “[t]his rejection is not
disputed.” App. Br. 12. Thus, Appellants have waived any argument of
error, and we summarily sustain the rejection. See In re Berger, 279 F.3d
975, 984-85 (Fed. Cir. 2002) (holding that the Board did not err in sustaining
a rejection under 35 U.S.C. § 112, second paragraph, when the applicant
failed to contest the rejection on appeal).

THE INVENTION
The claims are directed to “pinch clips with co-molded, soft plastic
sections.” Spec. 2, l. 3. Claim 1, reproduced below, is illustrative of the
claimed subject matter.1
1. A clip comprising,
a pair of jaws,

1 Claim 16, which depends from claim 1, recites that “each of said co-
molded pad components is adhered to the respective jaw by means of
thermal bonding.” Independent claim 17 recites that the pads “are co-
molded and integrally formed with the jaws.”
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each of said jaws comprising a generally planar member
including a first end portion, an intermediate portion, and a
second end portion,
each of said first and second end portions having an inner
surface area and an outer surface area,
a bridge member joined to the intermediate portion of
each of said jaws by hinge means,
resilient bias means,
said resilient bias means comprising a member having a
base and a pair of inwardly flared legs mounted to said base,
each of said flared legs of said bias means terminating in
a free end,
said base of said bias means overlying said bridge
member,
said free ends of said flared legs of said resilient bias
means adapted to be readily secured to said jaws such that
said flared legs force said second end portions of said jaws
into engagement with each other,
first co-molded pad components integrally formed at the
outer surface of each of said first end portions of each of
said jaws and,
second co-molded pad components formed at the inner
surface of each of said second end portions of each said
jaws.

OPINION
The dispositive issue presented with respect to both the rejection of
claims 1-18 under 35 U.S.C. § 103(a) and the rejection of claims 1-16 under
the judicially-created doctrine of obviousness-type double patenting is
whether the Examiner’s proposed combination of Abdi and Marusiak
renders obvious a clip as called for in claims 1 and 17 comprising pads (or
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Application 11/116,582

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pad components) integrally formed with or at the outer surface of the jaws.
See App. Br. 9, 13; Reply Br. 2, 3.
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
The Examiner points out that “[t]he term ‘integrally’ is a broad term.”
Ans. 7. The claim limitation “integrally formed” has been construed by our
reviewing court in a manner dependent upon the context provided by the
underlying disclosure in the specification in which the claim is contained.
See, e.g., In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997) (holding
devices that were fixedly attached could reasonably be interpreted as
“integrally formed.”).
We look to Appellants’ Specification to ascertain the context in which
the limitation “integrally formed” should be construed. We find that
Appellants’ pad 251 (or 252) is described as being “co-molded along with
the jaw 101 (and 102) on the outer surfaces thereof.” Spec. 7, ll. 11-13; see
also id. at 3, ll. 19-21. Appellants’ “pad 201 (or 202) is co-molded along
with the jaws 101 (and 102) on the inner surfaces thereof.” Id. at 8, ll. 7-8;
id. at 3, ll. 19-21. Appellants’ Specification further discloses that in some
instances, a shallow impression can be formed in the end portion of the jaw,
and the pad is typically adhered to the jaw “by thermal bonding during the
manufacturing process.” Id. at 8, ll. 12-14.
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In light of the disclosure in Appellants’ Specification, we construe the
claim limitation “integrally formed” as requiring a positive fixed attachment,
such as by co-molding or thermal bonding, of the pads to the jaws.
Marusiak’s teaching of placing elastomeric covers 50 over the jaw and
handle ends 36, 38 of the clamp lever arms 32 (col. 3, ll. 11-12) does not
imply a fixed attachment, such as by co-molding or thermal bonding, of the
covers to the jaws. Thus, even assuming Abdi’s clip were modified as
proposed by the Examiner by placing pads on the handles and jaws of the
clip as taught by Marusiak (see Ans. 3, 4), Appellants’ claimed invention
would not necessarily result. The Examiner’s finding that “in Marusiak, the
clamping jaws are manufactured first and the pads are adhered to the jaws
thereafter” (Ans. 7) is not supported by Marusiak’s disclosure.
Therefore, we conclude that the Examiner’s proposed combination of
Abdi and Marusiak is insufficient to render obvious a clip as called for in
claims 1 and 17 comprising pads (or pad components) integrally formed
with or at the outer surface of the jaws. We reverse the rejections of
independent claims 1 and 17 and their dependent claims 2-16 and 18 as
unpatentable over Abdi and Marusiak, and of claims 1-16 on the ground of
obviousness-type double patenting as unpatentable over claims 1-13 of Abdi
and Marusiak.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to
claims 17 and 18 and reversed as to claims 1-16.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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