Ex Parte Coleman

Board of Patent Appeals and Interferences

Oct 27, 2010

10969414 (B.P.A.I. Oct. 27, 2010)

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.
10/969,414 10/20/2004 Trent Coleman 288903-00268 1710
7590 10/27/2010
David V. Radack
Eckert Seamans Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
10/27/2010 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 TRENT COLEMAN
____________

Appeal 2009-009009
Application 10/969,414
Technology Center 3700
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Trent Coleman (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellant’s claimed invention is a garden hose with a backbone that
resists kinking. Spec. 1:4-5. Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. An improved garden hose including an inner core being
made of a first material, said inner core including an elongated
generally cylindrical inner core member having an integrally
formed backbone being made of a second material, said second
material having a higher durometer hardness than said first
material.
THE EVIDENCE
The Examiner relies upon the following evidence:
Stent US 3,825,036 July 23, 1974
Redding US 4,410,012 Oct. 18, 1983
Seckel US 5,682,925 Nov. 4, 1997
Follmer US 5,827,242 Oct. 27, 1998
Ogawa US 6,537,630 B1 Mar. 25, 2003
THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 1, 2, 6, 10, 11, and 15 under 35 U.S.C.
§ 102(b) as being anticipated by Ogawa.
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2. The Examiner rejected claims 1, 2, 6, 7, 10, 11, and 15 under
35 U.S.C. § 102(b) as being anticipated by Stent.
3. The Examiner rejected claims 1-3, 6, 7, 10-12, and 15 under
35 U.S.C. § 102(b) as being anticipated by Redding.
4. The Examiner rejected claims 1-3 and 7-12 under 35 U.S.C. § 102(b)
as being anticipated by Follmer.
5. The Examiner rejected claims 4, 5, 8, 9, 13, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Redding.
6. The Examiner rejected claims 16-20 under 35 U.S.C. § 103(a) as
being unpatentable over Redding in view of Seckel.
7. The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Seckel in view of Redding.
THE ISSUE
The Examiner determined that “there is no claim language or
definition that suggests a backbone needs to be a single element or
longitudinally disposed.” Ans. 8. The Examiner further determined, upon
review of the dictionary definitions provided by Appellant, that “backbone”
“can be a ‘series’ of elements” such as “a series of vertebrae forming the
axis of the skeleton and protecting the spinal cord.” Ans. 9. The Examiner
thus concluded that Appellant’s arguments about the interpretation of the
term “backbone” are more specific than either the Specification or the
proffered definitions can support. Ans. 10. The Examiner further noted that
the term “including” used in claim 1 is open ended and does not preclude the
references from showing more structure than what is claimed, and thus the
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references showing more than one longitudinal element have at least one
element which is considered to meet the claimed “backbone.” Ans. 10-11.
Appellant contends that the claimed “backbone” is described and
shown as a single elongated member extending longitudinally along a length
of the garden hose. App. Br. 8. Appellant further notes that the word
“backbone” is not used in the literal sense to mean a spinal column
comprised of vertebrae. Id. Appellant argues that “as used in this
application, a ‘backbone’ is a singular, elongated, longitudinally extending
member that acts as the primary support for the hose body.” Id. Appellant
contends that this definition of “backbone” comports with the ordinary
meaning of the word. Id.
The issue presented by this appeal is whether the Examiner’s
interpretation of the claim term “backbone” is proper in view of Appellant’s
Specification and the ordinary meaning of the word.
PRINCIPLES OF LAW
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
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 interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
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art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted).
ANALYSIS
Claim Construction
At issue in this appeal is the proper interpretation of the claim term
“backbone.”
Appellant’s Specification describes:
The inner core [of the garden hose] has a generally elongated
cylindrical shape, with a generally circular cross-section as can
be seen in Figure 2. The inner core 40 includes a backbone 50
of the invention that is preferably co-extruded with the inner
core 40, as will be discussed in further detail below. The inner
core 40 and the backbone 50 are preferably made of
polyvinylchloride (“PVC”). In accordance with the invention,
the durometer hardness of the inner core 40 is less than the
durometer hardness of the backbone 50.
Spec. 2:13-19. Appellant’s Specification further describes that “[t]he
backbone 50 extends substantially the entire length of the hose portion of the
improved garden hose, and preferably terminates short of the outlet end 18
and the inlet end 16.” Spec. 2:29-31. Appellant’s Specification further
describes the co-extrusion process by explaining that “[t]he hose of the
invention is made by first extruding the inner core 40 and then, almost
simultaneously, extruding thereon the backbone 50.” Spec. 3:1-2.
Figure 2 of Appellant’s application shows a cross-sectional view of
the garden hose 14 taken along a line 2-2 of the hose of Figure 1.
Spec. 1:29-30. Figure 2 shows a single element backbone 50 at this cross-
section.
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As such, Appellant’s Specification describes a backbone that extends
substantially the entire length of a generally cylindrical, elongated inner
core. Appellant’s Specification describes that in a preferred embodiment,
the backbone is co-extruded with the inner core. At the point of the garden
hose at which the cross-section shown in Figure 2 is taken, the backbone is a
single element.
Appellant has provided many varied definitions for the term
“backbone.” The meanings that seem to best comport with the description
of the backbone provided in Appellant’s Specification are: “a central
cohesive source of support and stability”2 and “something that resembles a
backbone: as … the foundation or most substantial or sturdiest part of
something.”3 As such, the ordinary meaning of backbone requires that the
support forming the backbone is a central cohesive source of support or the
most substantial or sturdiest part of something.
This meaning is consistent with the description of the backbone
provided in Appellant’s Specification because the backbone 50 is described
as being made of a material having a durometer greater than the durometer
of the inner core and is thus the sturdiest part of the hose. This meaning is
also consistent with the description of the backbone provided in Appellant’s
Specification because the backbone is described and shown as a single

2 ONE LOOK® DICTIONARY SEARCH, www.onelook.com/?w=backbone&ls=a,
fourth definition (last visited May 29, 2007).
3 Merriam-Webster Online Dictionary, definition 2.b., www.m-w.com/cgi-
bin/dictionary?book=Dictionary&va=backbone (last visited May 29, 2007).
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backbone element that extends substantially the entire length of the inner
core and is thus a central cohesive source of support.
Anticipation by Ogawa
Independent claims 1 and 10 call for an inner core made of a first
material having an integrally formed backbone made of a second material.
Ogawa discloses a blow-molded hose of a synthetic resin having a
monolayer segment 3 of a synthetic soft resin layer 2 and a multilayer
segment 5 in which a synthetic hard resin layer 4 and the synthetic soft resin
layer 2 are laminated to each other. Ogawa, col. 5, ll. 10-15; fig. 1. As
shown in Figure 1 of Ogawa, the hard resin layer 4 of each multilayer
segment 5 is disposed circumferentially about the hose 1 at intervals along
the length of the hose. Thus, Ogawa’s hard resin layer 4 does not form a
support that is a central cohesive source of support for the hose. Rather,
Ogawa’s hard resin layer 4 forms discrete circumferential areas of support
along the length of the hose. As such, we find that Ogawa does not disclose
the claimed inner core having a backbone. Accordingly, we will not sustain
the rejection of independent claims 1 and 10 and their dependent claims 2, 6,
11, and 15 as being anticipated by Ogawa.
Anticipation by Stent
Stent was also found by the Examiner to anticipate independent
claims 1 and 10. Stent discloses several embodiments of a reinforced
flexible plastic tube, each comprising an extruded wall 1 of a soft grade PVC
and a plurality of circumferentially disposed, axially extending, reinforcing
elements 2 of a rigid grade PVC. Stent, col. 2, ll. 17-27; figs. 1-6. As
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shown and described in Stent, the rigid reinforcing elements 2 extend axially
along the extruded wall 1 and are disposed circumferentially about the wall.
None of Stent’s rigid reinforcing elements 2 appears to form a support that is
the most substantial or sturdiest part of the wall 1. Rather, each of Stent’s
rigid reinforcing elements 2 forms a support of apparent equal reinforcement
to at least some of the other elements 2. As such, we find that Stent does not
disclose the claimed inner core having a backbone. Accordingly, we will
not sustain the rejection of independent claims 1 and 10 and their dependent
claims 2, 6, 7, 11, and 15 as being anticipated by Stent.
Anticipation by Redding
Redding was also found by the Examiner to anticipate independent
claims 1 and 10. Redding discloses an acoustic line array hose section 10
which comprises a long extruded cylindrical tubing 12 of a soft, flexible
grade of PVC with a plurality of longitudinal ribs 14 of a stiffer, harder
PVC, which are spaced uniformly around the circumference of the tubing.
Redding, col. 2, ll. 22-30; fig. 2. As shown and described in Redding, the
ribs 14 extend longitudinally along the tubing 12 and are disposed
circumferentially about the tubing. None of Redding’s ribs 14 appears to
form a support that is the most substantial or sturdiest part of the hose.
Rather, each of Redding’s ribs 14 forms a support of apparent equal
reinforcement to the other ribs 14. As such, we find that Redding does not
disclose the claimed inner core having a backbone. Accordingly, we will
not sustain the rejection of independent claims 1 and 10 and their dependent
claims 2, 3, 6, 7, 11, 12, and 15 as being anticipated by Redding.
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Anticipation by Follmer
Follmer was also found by the Examiner to anticipate independent
claims 1 and 10. In particular, the Examiner found that Follmer discloses an
inner core including a generally cylindrical inner core member having a
smooth inner surface and formed of a first material such as soft PVC and an
integrally formed backbone 14 of a second material such as hard PVC.
Ans. 5.
Follmer discloses a medical catheter 10 comprising a tubular body 12,
wherein at least a portion of the body comprises a helical reinforcement
element 14. Follmer, col. 4, ll. 55-58; figs. 1, 2. As shown and described in
Follmer, the helical reinforcement element 14 is disposed circumferentially
about the catheter 10 at intervals along the length of the catheter. Thus,
Follmer’s helical reinforcement element 14 does not form a support that is a
central cohesive source of support for the catheter. Rather, Follmer’s helical
reinforcement element 14 forms circumferential areas of support along the
length of the hose. As such, we find that Follmer’s helical reinforcement
element 14 is not the claimed backbone. Accordingly, we will not sustain
the rejection of independent claims 1 and 10 and their dependent claims 2, 3,
7-9, 11 and 12 as being anticipated by Follmer.
Obviousness based on Redding or Redding in view of Seckel
The Examiner’s rejection of dependent claims 4, 5, 8, 9, 13, and 14 as
being unpatentable over Redding and the rejection of claims 16-20 as being
unpatentable over Redding in view of Seckel are based on the same
erroneous underlying finding that Redding discloses an inner core having a
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backbone, as discussed supra.4 As such, we will not sustain the Examiner’s
rejections of these claims as being obvious over Redding or over Redding in
view of Seckel for the same reasons we did not sustain the rejection of
independent claims 1 and 10 as being anticipated by Redding.
Obviousness based on Seckel in view of Redding
The Examiner rejected claims 1-20 as being unpatentable over Seckel
in view of Redding. In particular, the Examiner found that Seckel discloses
all of the recited structure, except it fails to disclose forming the backbone
structures of a harder material such as PVC and the hose body of a softer
material such as PVC of specific hardness. Ans. 7.
Seckel disclose a kink resistant garden hose 10 having a plurality of
longitudinally displaced ribs 20 either attached to or extruded as part of the
hose 10. Seckel, col. 4, ll. 39-42; fig. 3. As shown and described in Seckel,
the ribs 20 extend axially along the hose 10 and are disposed
circumferentially about the hose. None of Seckel’s ribs 20 appears to form a
support that is the most substantial or sturdiest part of the hose 10. Rather,
each of Seckel’s ribs 20 forms a support of apparent equal reinforcement to
the other ribs 20. As such, we find that Seckel does not disclose the claimed
inner core having a backbone. Thus, the Examiner’s rejection of claims 1-
20 is based on an erroneous underlying finding of fact that Seckel discloses a

4 Independent claim 16 is directed to a garden hose and, similar to claims 1
and 10, calls for an elongated inner core including an integrally formed
backbone.
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backbone. As discussed supra, we find that Redding does not cure this
deficiency in Seckel.
As such, we will not sustain the Examiner’s rejection of claims 1-20
under 35 U.S.C. § 103(a) as being unpatentable over Seckel in view of
Redding.
CONCLUSION
The Examiner’s interpretation of the claim term “backbone” is
unreasonably broad in view of Appellant’s Specification and the ordinary
meaning of the word.
DECISION
The decision of the Examiner to reject claims 1-20 is REVERSED.

REVERSED

nlk

David V. Radack
Eckert Seamans Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh PA 15219