Ex Parte Anderson

Board of Patent Appeals and Interferences

Nov 23, 2004

09867495 (B.P.A.I. Nov. 23, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TODD ANDERSON
____________
Appeal No. 2004-2335
Application No. 09/867,495
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 4 and 5,
which are all of the claims pending in this application.
We REVERSE and REMAND.
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Application No. 09/867,495
Page 2
BACKGROUND
The appellant's invention is directed to a tie down which has a bungi cord that
has a hook at one end for securing the bungi cord to a first object and a clasp at the
other end. The clasp has a pair of pivoted jaws with teeth on at least one of the jaws for
securing the other end of the bungi cord to an object (specification, p. 2). A copy of
dependent claim 4 is set forth in the appendix to the appellant's brief. Claim 5 reads as
follows:
A bungi cord comprising:
an elastic cord having a first end and a second end, said first end having a
hook secured thereto, and
said second end having means for securing said second end to a support,
said means for securing said second end to a support comprising a first
jaw and a second jaw,
said first and second jaws being secured together by a pivot, and said first
and second jaws being movable from a first position to a second position about
said pivot, and
wherein when said first and second jaws are in said first position, they are
closely adjacent one another, and
when said first and second jaws are in said second position, they are
remote from one another, and
means for holding said first and second jaws in said first position,
and
wherein said means for holding said first and second jaws in said first
position is a spring, and
wherein said spring is wound around said pivot and has a pair of arms,
one of said pair of arms engaging an outside surface of said first jaw, and
another of said pair of arms engaging an outside surface of said second
jaw.
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Application No. 09/867,495
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The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Thurston 1,195,874 Aug. 22, 1916
De Witt 2,931,084 April 5, 1960
Vasilopoulos 5,722,125 March 3, 1998
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Vasilopoulos in view of Thurston.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Vasilopoulos in view of Thurston and De Witt.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(mailed April 8, 2003) for the examiner's complete reasoning in support of the rejections,
and to the brief (filed January 30, 2003) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
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Application No. 09/867,495
Page 4
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The specification (p. 5) informs us that this invention
has a bungi cord 2 which has a hook 4 secured to an enlarged end 3 of the bungi
cord in the conventional manner. The other end of the bungi cord is secured, in
any conventional manner to a clasp 5. The clasp 5 is shown in more detail in
FIG. 3. The clasp 5 has a pair of jaws 6, 7 which are pivoted together at 8, so the
jaws can be moved toward and away from each other. Each of the jaws 6, 7 have
a plurality of teeth 9 which will dig into an object from opposite sides and thereby
secure the clasp firmly to the object. Since the clasp 5 of the present invention
does not need an aperture or a ledge, or some other form of support that the
conventional hook 4 needs in order to secure the hook to a support, the clasp 5
of the present invention, is much more versatile than the conventional hook 4.
It is axiomatic that, in proceedings before the USPTO, claims in an application
are to be given their broadest reasonable interpretation consistent with the specification,
and that claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218
USPQ 385, 388 (Fed. Cir. 1983). While the claim must be interpreted consistent with
the specification, limitations should not be read into the claim from the specification. In
re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In
re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Appeal No. 2004-2335
Application No. 09/867,495
Page 5
1 The structure of the means for securing is spelled out in detail in claim 5.
In applying this guidance to claim 5, we believe that the broadest reasonable
interpretation consistent with the appellant's specification of the claim limitation that the
second end of the elastic cord has means for securing the second end to a support is
that the means for securing1 is attached to the second end of the elastic cord, i.e., as
disclosed, the other (i.e., second) end of the bungi cord 2 is secured to a clasp 5 as
depicted in Figure 2. In our view, this interpretation does not read limitations from the
specification into the claim, but rather interprets the claim language as it would be
interpreted by one of ordinary skill in the art so as to be consistent with the specification.
In the rejection of claim 5 under appeal, the examiner found (answer, p. 3) that
Vasilopoulos taught an elastic cord 30 with a hook 50 at a first end and an alligator clip
92 at the second end. In view of the clasp 2 taught by Thurston, the examiner
determined (answer, pp. 3-4) that it would have been obvious to modify Vasilopoulos'
alligator clip to have a spring that is wound around a pivot and has a pair of arms, one
of the pair of arms engaging an outside surface of a first jaw of the alligator clip, and the
other of the pair of arms engaging an outside surface of a second jaw of the alligator
clip.
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Application No. 09/867,495
Page 6
The appellant argues (brief, p. 5, lines 10-12; p. 6, lines 13-14) that Vasilopoulos
does not disclose "said second end [of the elastic cord] having means for securing said
second end to a support." We agree. Given our interpretation of this claim language as
set forth above, the decision of the examiner to reject claim 5 under 35 U.S.C. § 103
must be reversed. In that regard, we note that even if the alligator clip of Vasilopoulos
were modified by the teachings of Thurston as set forth in the rejection, it would not
arrive at the claimed subject matter since the modified alligator clip of Vasilopoulos is
attached to a base ring 12 (a distinct additional component) and is not attached to the
second end of the elastic cord 30, i.e., the alligator clip is not part of the elastic cord.
The second end of the elastic cord 30 of Vasilopoulos does not have an alligator clip for
securing the second end to a support. Instead, Vasilopoulos teaches that the second
end of the elastic cord 30 has a hook as shown in Figure 2. In that regard, the bungi
cord taught by Vasilopoulos is much like the conventional prior art bungi cord depicted
in the appellant's Figure 1.
For the reasons set forth above, the decision of the examiner to reject claim 5
under 35 U.S.C. § 103 is reversed.
We have also reviewed the reference to De Witt additionally applied in the
rejection of claim 4 (dependent on claim 5) but find nothing therein which makes up for
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Application No. 09/867,495
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the deficiency of Vasilopoulos discussed above regarding claim 5. Accordingly, the
decision of the examiner to reject claim 4 under 35 U.S.C. § 103 is reversed.
REMAND
We remand this application to the examiner under the authority provided by
37 CFR § 41.50(a)(1) to consider a rejection of claims 4 and 5 on appeal under
35 U.S.C. § 103(a) wherein Bozarjian (U.S. Patent No. 6,187,104) is used as the base
reference along with Thurston and De Witt in a manner similar to the examiner's
rejections discussed above. In that regard, the examiner should note the embodiment
of the tie down or tether discussed in column 3, lines 60+ of Bozarjian, wherein an
elastic cord or strap (column 3, line 9) is provided with a hook member (32) secured to
one end (Figure 4) and a spring-loaded clamp/clip (column 3, line 14) secured at the
other end (Figure 1).
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CONCLUSION
To summarize, the decision of the examiner to reject claims 4 and 5 under
35 U.S.C. § 103 is reversed. In addition , this application has been remanded to the
examiner for further consideration as set forth above.
This application, by virtue of its "special" status, requires immediate action, see
MPEP § 708.01.
REVERSED and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2004-2335
Application No. 09/867,495
Page 9
Frankfort, Administrative Patent Judge, dissenting.
Although my colleagues in the majority have recognized on page 4 of their
opinion that during patent examination limitations should not be read into the pending
claims from the specification, it is my view that they have done exactly that in construing
independent claim 5 on appeal to require the securing means recited therein to be
"attached to the second end of the elastic cord, i.e., as disclosed" (decision, p. 5) and
"part of the elastic cord" (decision, p. 6). For that reason, I must respectfully dissent
from their decision reversing the examiner's rejections of claims 4 and 5 under
35 U.S.C. § 103(a).
In pertinent part, independent claim 5 is directed to a bungi (bungee) cord
comprising: an elastic cord having first and second ends, said first end having a hook
secured thereto, and said second end "having means for securing said second end to a
support." Claim 5 goes on to specify exactly what structure constitutes the means for
securing and, as found by the examiner (answer, pages 4-5), thereby removes the
recited element from the purview of 35 U.S.C. § 112, sixth paragraph. More particularly,
claim 5 essentially goes on to describe the means for securing as being a spring-biased
clasp or clip of the type seen in Figure 3 of the application.
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It is the proper interpretation to be accorded the language "said second end having
means for securing said second end to a support" of claim 5, and the impact of that
language on the invention as a whole, that is at issue. In my opinion, when such
language is given its broadest reasonable interpretation consistent with the specification
as such would be understood by one of ordinary skill in the art, it does not require the
securing means to be attached to the second end of the elastic cord as depicted in
Figure 2 of the pending application, i.e., "as disclosed" as the majority has determined.
On the contrary, I consider that the language in question is susceptible to a much
broader interpretation and is clearly readable on an arrangement like that seen in the
Vasilopoulos patent applied by the examiner, wherein a means for securing (i.e.,
alligator clip 92) is indirectly secured to the second end (32) of an elongate elastic cord
(30) via base ring (12) and a swivel fitting (40), thereby providing a bungi (bungee) cord
having first and second ends with the first end having a hook (50, 52) secured thereto
and a second end having securing means in the form of a clamp/clip (90, 92) capable of
securing said second end to a support. This broader interpretation, in my view, is clearly
supported by the specification of the present application (e.g., page 5), wherein it is
indicated that the second end of the bungi (bungee) cord (2) of appellant's invention is
secured "in any conventional manner" to a clasp (5). The arrangement of Vasilopoulos
merely represents one conventional manner in which a securing or attachment means
Appeal No. 2004-2335
Application No. 09/867,495
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in the form of a clasp or clip (90, 92) may be secured to a second end of the elastic cord
(30).
Thus, looking to Figure 2 of the Vasilopoulos patent, I agree with the examiner that
this patent discloses a bungee cord tie down structure which has different types of
securing devices on opposite ends of the tie down and, more specifically, a tie down
which has a bungee cord (30) that has a hook (50) at one end for securing the bungee
cord to a first object and an opposite end having a clasp or clip, wherein the clasp/clip
(92) includes a pair of pivoted jaws (97, 98) with teeth on at least one of the jaws for
securing that end of the bungee cord to an object or support. I further agree with the
examiner that the bungee cord tie down of Vasilopoulos differs from that defined in
claim 5 on appeal only in the details of the form of clasp/clip associated therewith and
that the patent to Thurston discloses a clasp/clip like that broadly recited in appellant's
claim 5. Moreover, I concur in the examiner's assessment that it would have been
obvious to one of ordinary skill in the art at the time of appellant's invention to have
utilized a known alternative form of clasp/clip like that in Thurston in place of the
alligator clip (92) of Vasilopoulos, thereby rendering the subject matter of claim 5 on
appeal obvious under 35 U.S.C. § 103(a).
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Appellant has not specifically contested the examiner's above-noted combination
of Vasilopoulos and Thurston, but has urged instead (brief, pages 5-6) that the clip (92)
of Vasilopoulos is not intended to be secured to a support and that it would not be
obvious to use the clip (92) to secure to a support. In that regard, I believe appellant has
lost sight of the fact that while features of an apparatus may be recited either structurally
or functionally, claims directed to an apparatus must be distinguished from the prior art
in terms of structure rather than function, because apparatus claims cover what a
device is, not what a device does (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). In this case, I agree with
the examiner that the bungee cord structure resulting from the combination of
Vasilopoulos and Thurston is structurally the same as that broadly set forth in claim 5 on
appeal and is also fully capable of performing the intended use as recited in claim 5.
For the above reasons, I would sustain the examiner's rejection of claim 5 under
35 U.S.C. § 103(a) as being unpatentable over Vasilopoulos in view of Thurston.
Given appellant's indication on page 5 of the brief that the claims on appeal "stand
or fall together," I further conclude that dependent claim 4 should be considered to fall
with independent claim 5 and that the examiner's rejection of claim 4 under 35 U.S.C.
Appeal No. 2004-2335
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§ 103(a) as being unpatentable over Vasilopoulos, Thurston and De Witt should
therefore also have been sustained.
Concerning the remand to the examiner set forth on page 7 of the majority
opinion, I share the view that the examiner should consider a rejection of claims 4 and 5
of the present application under 35 U.S.C. § 103(a) using Bozarjian (U.S. Patent No.
6,187,104) as the base reference along with Thurston and De Witt, noting that the
particular bungee cord tether pointed to in Bozarjian appears to meet even the
majority's more limited interpretation of the above-noted language of appellant's claim 5.
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Appeal No. 2004-2335
Application No. 09/867,495
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JOSEPH H. MCGLYNN
6111 SADDLE HORN DR.
FAIRFAX, VA 22030
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