Ex Parte Blette et al

Board of Patent Appeals and Interferences

Jan 12, 2012

10939540 (B.P.A.I. Jan. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RUSSELL E. BLETTE and JOHN E. STARK
____________

Appeal 2009-012070
Application 10/939,540
Technology Center 3600
____________

Before GAY ANN SPAHN, EDWARD A. BROWN, and
JAMES P. CALVE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Russell E. Blette and John E. Stark (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s rejection of claim 21 under 35
U.S.C. § 103(a) as unpatentable over Foster (US 5,647,103, iss. Jul. 15,
1997). The Examiner withdrew claims 1-20 from consideration. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

Appeal 2009-012070
Application 10/939,540

2
The Claimed Subject Matter
Claim 21, reproduced below, is the sole claim on appeal.
21. A splice system for linear connection of fishing lines, the
system comprising:
a female connector having first and second opposite ends
and a longitudinal axis, the connector being
symmetric about the axis, the first end connected
to a first fishing line section and the second end
having a first opening therein, the first end having
a tapered exterior surface, the connector having an
interior feature with a radial extent; and
a male connector having first and second opposite ends
and a longitudinal axis, the connector being
symmetric about the axis, the second end
connected to a second fishing line section and the
first end having a projection thereon configured for
coaxial insertion into the first opening of the
female connector, the projection having a radial
extent greater than the radial extent of the interior
feature of the female connector;
wherein at least one of the connectors is resilient so that
the projection compresses or the interior feature
expands to allow passage of the projection axially
past the interior feature, and
wherein upon such passage, the projection of the male
connector and the interior feature of the female
connector are configured to define a permanent
locking connection therebetween.

Br. 17-18.

OPINION
The Examiner finds that Foster discloses a splice system including,
inter alia, a female connector 16 with an interior feature 18 and male
connector 21 with a projection 27 having a greater radial extent than the
Appeal 2009-012070
Application 10/939,540

3
interior feature 18 of the female connector 16. Final Rej. 2.1 The Examiner
also finds that the projection 27 of the male connector 21 and the interior
feature 18 of the female connector 16 “form a ‘permanent locking
connection’ in the sense that such a connection will not disengage on its
own,” but will only disengage “when the user intends to ‘break’ the
connection.” Final Rej. 3.
Appellants contend that the Examiner’s finding that Foster teaches a
permanent locking connection between the male and female connectors is
clearly erroneous. Br. 9. More particularly, Appellants assert that the
ordinary and customary meaning of the claim term “permanent” is
“continuing or enduring without fundamental or marked change,”2 and argue
that the Examiner’s interpretation of “permanent” is contrary to this ordinary
and customary meaning as it does not differentiate between a “locking
connection” and a “permanent locking connection” so as to render the claim
term “permanent” meaningless. Br. 12, 13. Appellants also assert that the
Examiner’s interpretation contradicts Appellants’ usage of “permanent” in
the Specification. Br. 12-13.
We agree with Appellants. In attempting to give the claim language
of “a permanent locking connection” its broadest reasonable interpretation,
the Examiner failed to consider how it would be interpreted in light of the
Specification by a person of ordinary skill in the art. See In re Am. Acad. of

1 The Examiner’s Answer does not list the specifics of the rejection of claim
21 under 35 U.S.C. § 103(a) as unpatentable over Foster in the “Grounds of
Rejection” section and therefore, we cite to the Final Rejection in the Office
Action mailed Mar. 3, 2006. See Ans. 3.
2 For the definition of the claim term “permanent,” Appellants cite to
http://www.m-w.com/dictionary/permanent.
Appeal 2009-012070
Application 10/939,540

4
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (We determine the
scope of the claims in patent applications not solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.). Appellants’ Specification describes that when the barb 16 is fully
inserted into the receiver 18, a radially extending shoulder 22 of the barb 16
is snap connected with an interior feature 64 of the receiver 18 to form “a
permanent, locking connection.” Spec. 7, ll. 10-13 and Spec. 10, ll. 6-9. A
new leader 14 can only be connected to a fly line 12 by cutting the
connected barb 16 and receiver 18 from the fly line 12, tying a new barb 16
to the fly line 12, and connecting a new receiver 18 (and leader 14) to the
new barb 16 (Spec. 13, ll. 4-12). Br. 10. Thus, in light of Appellants’
Specification, a person of ordinary skill in the art would not interpret the
claim language of “a permanent locking connection” to be one in which the
locking connection between the members could be disengaged or
disconnected.
Foster discloses a beveled clasp for jewelry including female and male
members 16 and 21. Col. 2, ll. 56-64, col. 5, ll. 37-38 and 45-46, and Figs. 8
and 9. The female member 16 includes an internal bead 18 having a
circumferential extremity 27 at the front thereof and an open front end 20 for
accepting the beveled front end 24 of the male connector 21. Col. 5, ll. 38-
46. Adjacent the beveled front end 24 of the male connector 21 is a groove
26 which in turn is adjacent to a base 22. Col. 5, ll. 48-51. A slot 25
extends through the beveled front end 24 and the groove 26 and the slot 25
allows for a slight compression of the beveled front end 24 to provide
clearance for the circumferential extremity 27 to clear the bead 18 of the
Appeal 2009-012070
Application 10/939,540

5
female member 21 when the male member 16 is inserted into and removed
from the female member 21. Col. 5, ll. 51-57. In the normal usage of
Foster’s beveled clasp for jewelry, the male and female members 21 and 16
are disengaged or disconnected from their locking connection with each
other on a regular basis for removal of the jewelry from the wearer’s person.
The removal of the jewelry from the wearer’s person in Foster is
accomplished by fundamentally or markedly changing the locking
connection by exerting a tensioning force on the two members and pulling
them apart, after overcoming their resistance to separation. See Foster, col.
2, ll.61-63, col. 3, ll. 3-5, 16-17, 24, and 27-29, col. 4, ll. 1-4, and col. 5, ll.
35-37 and 59-62. Thus, a person of ordinary skill in the art when reading the
claim term “a permanent connection” in light of Appellants’ Specification
would determine the Examiner’s interpretation that Foster’s male and female
members 21 and 16 form a permanent locking connection as called for in
claim 21 to be unreasonable, because Foster’s beveled clasp provides a
locking connection wherein the male and female members are readily
disengagable or disconnectable from each other in contrast to the locking
connection that cannot be disengaged or disconnected as described in
Appellants’ Specification for the claimed subject matter.
Moreover, the Examiner’s interpretation of Foster’s disengagable or
disconnectable locking connection as being a permanent locking connection
would effectively read the term “permanent” out of the claim. See Bicon
Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (Claims are
construed with an eye toward giving effect to all terms in the claim.).
Indeed, an overly broad interpretation, as the Examiner suggests, would
eviscerate the meaning of the claim term “permanent” to render it
Appeal 2009-012070
Application 10/939,540

6
superfluous, because according to the Examiner’s interpretation, any
connection between male and female members that was maintained for a
long period of time would be considered permanent, even though there was
no structure to maintain the permanency of the connection by preventing
disengagement or disconnection of the members. See Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
constructions which render phrases in claims superfluous).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 21 under 35 U.S.C. § 103(a) as unpatentable over Foster.

DECISION
We reverse the Examiner’s decision to reject claim 21.

REVERSED

Klh