Ex parte Anglin et al.

Board of Patent Appeals and Interferences

Mar 9, 2001

08821508 (B.P.A.I. Mar. 9, 2001)

1
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publication and is not binding precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL E. ANGLIN and GLEN GIBBS
____________
Appeal No. 2000-0533
Application No. 08/821,508
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge,
ABRAMS and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 33, 36-39, 42-45 and 60, which are all of
the claims pending in this application.
Appeal No. 2000-0533
Application No. 08/821,508
The copy of claim 60 in appellants' appendix is an inaccurate1
reproduction of the claim of record. In particular, in line 3, "forming"
should be "flaring"; in line 4, "an end" should be "a distal end portion"; in
line 7, "a" should be "the distal end"; and, in line 13, there should be a
comma after "conduit."
The examiner has withdrawn the rejection of the claims as being2
unpatentable over AAPA (appellants' admitted prior art) in view of McIntosh,
Takikawa and Currie (answer, page 2).
2
BACKGROUND
The appellants' invention relates to a method of forming
a flared end on a fluid conduit (claims 33, 36-38 and 60) and
a method of sealingly joining two members (claims 39 and 42-
45). An understanding of the invention can be derived from a
reading of exemplary claim 33, which appears in the appendix
to the appellants' brief.1
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Currie 3,265,413 Aug. 9, 1966
McIntosh 2,242,831 May 20, 1941
Takikawa 5,354,107 Oct. 11, 1994
The following rejection is before us for review.2
Claims 33, 36-39, 42-45 and 60 stand rejected under 35
U.S.C. § 103 as being unpatentable over Takikawa in view of
McIntosh and Currie.
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Application No. 08/821,508
3
Reference is made to the brief (Paper No. 29) and the
answer (Paper No. 30) for the respective positions of the
appellants and the examiner with regard to the merits of this
rejection.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Independent claim 60 recites the steps of:
(1) flaring a first end of a conduit radially outward from an
axial extent with a distal end portion extending radially
inward by axially pressing a tool into the first end of the
conduit;
(2) bending the distal end portion inward on itself to form
exterior and inner substantially parallel flanges, an exterior
conical surface formed on the outer flange and an inner
conical surface formed on the inner flange; and
Appeal No. 2000-0533
Application No. 08/821,508
It is not apparent to us what plane is defined by a conical (curved)3
surface. Presumably, the plane referred to in the claims is a plane lying
tangent to the conical surface and the extension from the plane occurs at the
line of tangency. In any event, it is in this manner that we have interpreted
the claims in reaching our decision in this appeal.
4
(3) simultaneously with the bending of the first flared end,
extruding an annular reduced resistance bead having a sidewall
terminating in an outer end by the axial pressing of the tool
as a continuous, one-piece, radially inward[ly] projecting
extension from a plane defined by the interior conical3
surface.
Step (1) is the step shown in appellants' Figure 2 of
pressing the punch 36 axially into the end of the conduit 14
to produce the bowed, partially folded over flange 42
illustrated in Figure 3. In accordance with the underlying
disclosure, steps (2) and (3) are simultaneously performed by
pressing the special tool 46 into the partially folded over
flange. This tool 46 is different from the tool or punch 36
used in step (1). Claim 60 is thus inaccurate or
misdescriptive of appellants' invention, in that the extruding
step (3) is recited as being performed by axially pressing
"the tool," which refers back to the only tool recited in the
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Application No. 08/821,508
5
claim, i.e., the tool used in step (1), rather than to a tool
used in step (2).
Claim 38, which depends from independent claim 33, is
also misdescriptive of appellants' invention as disclosed, in
that the bending step of claim 38 is recited as a step in
addition to the flaring step recited in claim 33. In
accordance with the invention as disclosed, the step of
bending the flared first end inward on itself to form parallel
flanges is the step shown in Figure 3 of pressing the special
tool 46 into the bowed or partially folded over flange 42.
This is the same step that forms the exterior and interior
conical surfaces. Thus, the bending step of claim 38 should
be recited as part of the flaring step, rather than as an
additional step separate from the flaring step.
No claim may be read apart from and independent of the
supporting disclosure on which it is based. We are thus
required to read the claims in light of the disclosure. The
result is an inexplicable inconsistency within each of claims
38 and 60, for the reasons discussed above, which renders the
claims indefinite under the second paragraph of 35 U.S.C. §
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Application No. 08/821,508
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112. See In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA
1971).
For the foregoing reasons, claims 38 and 60 are rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the
subject matter which appellants regard as the invention. This
is a new ground of rejection pursuant to 37 CFR § 1.196(b).
Next we turn to the examiner's rejection of claims 33,
36-39, 42-45 and 60 under 35 U.S.C. § 103 as being
unpatentable over Takikawa, McIntosh and Currie. Normally,
when a claim is held to be indefinite, a determination as to
patentability under 35 U.S.C. § 103 is not made. See In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962) and
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970). However, in this instance, we consider it to be
desirable to avoid the inefficiency of piecemeal appellate
review. See Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App.
1984). In reviewing the examiner's obviousness rejections, we
have interpreted claim 38 such that the step of flaring
further comprises the step of "bending . . ." recited in claim
38. We have also interpreted the bending step of claim 60 as
Appeal No. 2000-0533
Application No. 08/821,508
7
being performed by axially pressing a second tool into the
first end of the flared conduit and the extruding step as
being performed by the axial pressing of the second tool.
Each of independent claims 33, 39 and 60 requires, inter
alia, the steps of axially pressing a tool into a member or
conduit to form exterior and interior parallel conical
surfaces and simultaneously extruding an annular reduced
resistance bead by the axial pressing of the tool as a
continuous one-piece extension from a plane defined by one of
the conical surfaces. According to the examiner, the claimed
method is suggested by the combined teachings of Takikawa,
McIntosh and Currie.
Takikawa discloses a flared double-wall conduit having an
annular reduced resistance bead (annular brim 2) formed as a
one-piece, radially inwardly projecting extension from the
interior conical surface of the flared end. Takikawa does not
disclose a specific method of forming the flared double-wall
conduit, other than a broad reference to "molding processes"
and "machining and/or cutting" (column 2, lines 51-52).
McIntosh discloses a two-step process of forming a double
walled flare on tubing. The process, like appellants' method,
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Application No. 08/821,508
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includes axially forcing a first member 70 against the end of
the tube such that the end is curved into the form of an arc,
as shown in Figure 4, and then inserting a flaring member 78
against the end of the arc to flatten the inwardly arched
portion 94 and the outwardly arched portion 92 of the arc
together, as shown in Figure 5, to form exterior and interior
parallel flanges and conical surfaces. The McIntosh method
does not include extrusion of an annular reduced resistance
bead extending from a conical surface of the flared end, as
required by the claims.
Currie (Figure 4, column 3, lines 5-16) discloses a
method of forming a raised annular portion 46 on the inner
surface of a flared end of a tube using a single double angle
flaring tool punch. The raised annular portion created by
this method is the point of intersection of two conical
portions or surfaces 40, 41 of different angularity and is not
a one-piece extension from either of these conical surfaces
40, 41 (or from a plane tangent to either of these conical
surfaces). Thus, the Currie method does not produce an
annular reduced resistance bead as a one-piece extension from
a plane defined by either of these conical surfaces, as
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Application No. 08/821,508
9
required by the claims, and will not produce a bead (brim) of
the type disclosed by Takikawa.
The examiner concedes that McIntosh and Currie do not
teach or suggest a flaring/extruding process which would
simultaneously produce parallel conical surfaces and an
annular bead as required by the claims. However, the
examiner's position, in essence, is that any deficiencies in
the flaring/extrusion taught by Currie are overcome by the
teachings of Takikawa (answer, page 3).
While Takikawa teaches that flared double-wall conduits
having parallel exterior and interior conical surfaces and an
annular bead of the type formed by the claimed method were
known in the art at the time of appellants' invention, we
perceive no teaching or suggestion in the applied references
to form that particular flared end by axially pressing a tool
into the conduit to form the parallel exterior and interior
conical surfaces and simultaneously extruding the annular bead
by the axial pressing of the tool. As discussed above,
Takikawa does not specify the method of forming the flared end
and, thus, provides no suggestion of such a method. McIntosh
and Currie, on the other hand, fail to teach or suggest a
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Application No. 08/821,508
10
method wherein a bead as claimed is extruded simultaneously
with the flaring of the end to form parallel interior and
exterior conical surfaces by the pressing of a tool into the
end of the conduit. Modification of the teachings of McIntosh
and Currie to arrive at the claimed invention would require a
re-design of the flaring tool. From our perspective, the only
suggestion for such a modification is found in the luxury of
hindsight accorded one who first viewed the appellants'
disclosure. This, of course, is not a proper basis for a
rejection. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
Accordingly, we shall not sustain the examiner's
rejection of claims 33, 36-39, 42-45 and 60 under 35 U.S.C. §
103.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 33, 36-39, 42-45 and 60 under 35 U.S.C. § 103 is
reversed. A new rejection of claims 38 and 60 is entered
pursuant to 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, "A new
Appeal No. 2000-0533
Application No. 08/821,508
11
ground of rejection shall not be considered final for purposes
of judicial review."
37 CFR § 1.196(b) also provides that appellants, 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 proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
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Application No. 08/821,508
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2000-0533
Application No. 08/821,508
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ANDREW R. BASILE
YOUNG & BASILE, P.C.
3001 WEST BIG BEAVER ROAD
SUITE 624
TROY, MI 48084