Ex Parte Daume

Board of Patent Appeals and Interferences

Jun 16, 2005

09491841 (B.P.A.I. Jun. 16, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BRITTA DAUME
____________
Appeal No. 2005-0289
Application No. 09/491,841
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HEARD: June 7, 2005
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Before RUGGIERO, LEVY, and SAADAT, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1, 3, 7, 8, 11, 13, 14,
16-18, 20, 22-26, 29, 30 and 39.

Appeal No. 2005-0289
Application No. 09/491,841
Page 2
BACKGROUND
Appellants' invention relates to a pipe clamp. An
understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced as follows:
1. A device for providing electrical contact to an outer
conductor of a coaxial cable, the outer conductor having bare
segments, said device comprising:
a) a base structure adapted to be tensioned around a coaxial
cable, said base structure provided with an interior surface and
an exterior surface;
b) sealing lips operatively associated with said base
structure and extending from said interior surface thereof, said
sealing lips for providing a seal between said base structure and
a coaxial cable when said base structure is tensioned
therearound;
c) a band shaped, electrically conducting contact element
attached to said base structure, said band shaped, electrically
conducting contact element including at least one resilient,
electrically conducting contact protrusion formed integrally
therewith and biased to extend beyond said sealing lips so that
when said base structure is tensioned around a coaxial cable said
resilient, electrically conducting contact protrusion will rest
against the bare segments of the coaxial cable and provide
electrical contact therewith.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ellinwood 2,279,866 Apr. 14, 1942
Tinnerman 2,423,627 Jul. 8, 1947
Claims 1, 3, 7, 8, 11, 13, 14, 16-18, 20, 22-26, 29, 30 and
39 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Appeal No. 2005-0289
Application No. 09/491,841
Page 3
Claims 1, 3, 7, 8, 11, 13, 14, 16-18, 20, 22, 24, 25, 29 and
39 stand rejected under 102(e)as being anticipated by Ellinwood.
Claims 23 and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ellinwood.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellinwood in view of Tinnerman.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we make reference to the examiner's answer (mailed January 28,
2004) for the examiner's complete reasoning in support of the
rejections, and to appellant's brief (filed August 28, 2003) and
reply brief (filed March 29, 2004) for appellant's arguments
thereagainst. Only those arguments actually made by appellant
have been considered in this decision. Arguments which appellant
could have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of indefiniteness, anticipation
and obviousness relied upon by the examiner as support for the
Appeal No. 2005-0289
Application No. 09/491,841
Page 4
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, appellant's arguments
set forth in the briefs along with the examiner's rationale in
support of the rejections and arguments in rebuttal set forth in
the examiner's answer.
Upon consideration of the record before us, we reverse. We
begin with the rejection of claims 1, 3, 7, 8, 11, 13, 14, 16-18,
20, 22-26, 29, 30 and 39 under 35 U.S.C. § 112, second paragraph.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the metes
and bounds of a claimed invention with a reasonable degree of
precision and particularity. See In re Venezia, 530 F.2d 956,
958, 189 USPQ 149, 151 (CCPA 1976). The examiner's position
(answer, page 3) is that the band shaped coupling element is not
attached to the base, but rather is part of the base.
Specifically, the examiner relies upon the language of pages 17
and 18 of the specification that the base 4 comprises the band
shaped contact element 10 and the elastic part 22. The examiner
concludes, (id.) that the band is part of the base, not attached
to it.
Appeal No. 2005-0289
Application No. 09/491,841
Page 5
Appellant asserts (brief, pages 11 and 12) that in the
elected embodiment of figures 5 and 6, "the contact element is
imbedded into the base structure for purposes of attachment."
The examiner responds (answer, page 4) that appellant refers
to the figures of the elected species and other embodiments, but
does not address the description of the device in the
specification. The examiner asks (answer, page 5) "[h]ow can a
part of device also be attached to the same device."
Appellant responds (reply brief, page 2) that the examiner
fails to consider the written description as a whole because as
shown in figures 1 and 2 and as described on page 18 of the
specification, the contact element is embedded into the base
structure.
From our review of the elected species of figures 5 and 6
and the accompanying portions of the specification (which differs
from the first embodiment by the substitution of a blade shaped
contact protrusion) we find that base structure 4 comprises band-
shaped metal contact element 10 and comprises part 22 made from
an elastic material. As is clear from figure 2, contact element
10 is attached to and in some areas, embedded into, elastic part
22. With this interpretation of the specification in mind, we
turn to the language of claim 1 that is argued by the examiner to
Appeal No. 2005-0289
Application No. 09/491,841
Page 6
be indefinite. Claim 1 recites, inter alia, "a base structure. .
. sealing lips operatively associated with said base structure .
. . said sealing lips for providing a seal between said base
structure and a coaxial cable . . . a band shaped, electrically
conducting contact element attached to said base structure . . .
said . . . contact element including at least one . . .
protrusion . . . biased to extend beyond said sealing lips . . ."
We find from the language of the claim, that the claim does not
recite the elastic part 22, but rather the sealing lips 30, 32,
34 and 36 of the elastic part 22. Thus, as set forth, the base
as claimed is broad enough to include the portions of the elastic
part 22 that are not part of the sealing lips. As a result, the
claim language regarding the contact element being "attached to"
the base structure is correct because the base structure, as
claimed, includes the portions of the elastic part 22 that are
not part of the sealing lips. The language of the specification
of comprising, and the language of the claim of "attached to" are
not mutually exclusive due to the breadth of the claim. This is
so because of the claim language of the protrusion of the contact
element extending beyond the sealing lips associated with the
base structure, which includes the portions of the elastic
element 22 other than the sealing lips. Accordingly, we find the
Appeal No. 2005-0289
Application No. 09/491,841
Page 7
language of independent claims 1 and 13 to be definite. With
respect to dependent claim 8, argued by appellant, we reverse the
rejection of claim 8 based on our findings, supra, with respect
to independent claims 1 and 13. The rejection of claims 1, 3, 7,
8, 13, 14, 16-18, 20, 22-26, 29, 30 and 39 under 35 U.S.C. § 112,
second paragraph, is reversed.
We turn next to the rejection of claims 1, 3, 7, 8, 11, 13,
14, 16-18, 20, 22, 24, 25, 29 and 39 under 35 U.S.C. § 102(b) as
being anticipated by Ellinwood. Appellant asserts (brief, page
14) that the sealing lips of subparagraph (b) are not found in
Ellinwood. Appellant asserts (brief, page 15) that the sealing
lips of the claimed invention seal against penetration of air and
moisture. Appellant notes (id.) that in Ellinwood, cushion 13
prevents displacement and dampening vibration of an air or fuel
conduit line. It is argued that in Ellinwood, there is no
disclosure of a seal against a conduit, and that the mere fact
that the edges are shown to project does not inherently suggest a
seal, since the cushion does not extend around the circumference
of the pipe (conduit) against which it is asserted to provide a
seal. It is further argued (brief, page 16) that “[f]urthermore,
the examiner has provided no reasonable basis in fact or
Appeal No. 2005-0289
Application No. 09/491,841
Page 8
technical reasoning to support a conclusion sealing lips
necessarily flow from the disclosure of Ellinwood.”
The examiner's position (answer, page 3) is that in the
embodiment of figures 5-8 of Ellinwood, base structure 10, 13 is
adapted to be tensioned around a coaxial cable, and that the
edges 13 of cushion 13 are sealing lips that project, in the area
of 13 in figure 7 "for providing a seal.” The examiner
additionally relies upon element 10 of Ellinwood for the claimed
electrically conducting contact element, which includes metallic
contact protrusion 14.
A prior art reference may anticipate without disclosing a
feature of the claimed invention if that missing characteristic
is necessarily present, or inherent, in the single anticipating
reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
1268 (Fed. Cir. 1991). Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1377 (Fed. Cir. 2003). If, however, the
disclosure is sufficient to show that the natural result flowing
from the operation as taught would result in the performance of
the questioned function, it seems to be well settled that the
disclosure should be regarded as sufficient.
From our review of Ellinwood, we make the following findings
of fact:
Appeal No. 2005-0289
Application No. 09/491,841
Page 9
"[t]his invention relates to conduit supporting clips"
(col. 1, lines 1 and 2);
"the clips are especially made to provide for a
cushioned supporting and an electrical grounding of
metallic conduit lines, such as the air, oil, fuel and
other conduit or similar lines in airplanes and the
like." (col. 1, lines 6-10);
"[m]oreover, inasmuch as the lines are subjected to
considerable vibration the clip must be rugged and have
the cushioning medium and the grounding strip or
element securely incorporated therewith or carried
thereby so that the vibration will not cause the
cushion and grounding element to slip or work out of
place and fall in their respective functions, or cause
a loose or insecure connection of the clip and line.
The primary object of the present invention is to
provide a line supporting clip for the purposes
hereinbefore noted, which will afford a reliable and
full cushioned and thoroughly electrically grounded
support and connection of the line with respect to the
structure on which the clip is mounted, and maintain
these desirable qualities over long periods of time and
regardless of vibration" (col. 1, lines 25-42);
"[y]et another purpose is to provide in a clip of the
character described a novel and efficacious form of
tensioned grounding strip or element which will resiliently
or yieldingly engage the metallic conduit line embraced by
the clip" (col. 2, lines 1-5);
"the clip comprises a bendable resilient metal strap 1
which is adapted to embrace a metallic conduit, line A"
(col. 2, lines 44-48);
"[t]his cushion is made of resilient rubber or other
similar resilient and compressible material and
preferably is tubular and surrounds the loop portion to
prevent displacement thereof from the strap as might
occur if the cushion were otherwise formed or secured
on the strap. The cushion may be preformed as a tube
Appeal No. 2005-0289
Application No. 09/491,841
Page 10
and tightly fitted over the strap or the strap may be
dipped in molten rubber or the like in such manner as
to form the desired coating and cushion on the strap"
(col. 3, lines 7-17);
As shown in figures 1 and 2, "[t]he reduced thickness of the
grounding strip 6 permits the rubber cushion 5 to overlap
the edges of the strip and therefore support substantially
the entire circumference of the line A" (col. 3, lines 31-
35);
"[t]hus the strip or member 6 will partly encircle the
line in tensioned or yielding contact therewith when
the ends 2 are secured tightly together and to the
member B as shown in Fig. 1" (col. 3, lines 43-47);
"[w]hen the fastening 4 is inserted in place it will
maintain the strip or tongue 6 carried by the portion 7
in the desired position overlying the cushion 5 and in
contact with the conduit line embraced by the cushion
and strap, so that the conduit line will be securely
anchored and also electrically bonded or grounded to
the metallic structure of the airplane on which the
strip is mounted even if the integral joint of the
strip with the strap breaks or falls in its purpose"
(col. 4, lines 2-12);
"said cushion and strip will be securely held against
displacement and reliably perform their respective
functions regardless of vibratory and other movements
of the line which would tend to dislodge such parts"
(col. 4, lines 23-27),
"tongue-like strips 14 are resilient or tensioned and
of considerably less width than the strap and lie in
inwardly spaced relation to the inner periphery of the
cushion so as to yieldingly engage or have a tensioned
engagement with the line and the cushion" (col. 4,
lines 38-44).
Appeal No. 2005-0289
Application No. 09/491,841
Page 11
From the disclosure of Ellinwood, we note at the outset that
there is no disclosure of a coaxial cable. In Ellinwood, the
conduit lines contain items such as air, oil and fuel. Ellinwood
also discloses "other conduits or similar lines" but does not
state that these conduits contain wires. Even if the conduits
did contain wires, there is no disclosure that the wires would be
coaxial with the conduit. Thus, we would have to resort to
speculation to find that the conduit lines are coaxial cables,
much less coaxial cables with bare segments. Although claim 1
initially refers to the coaxial cable and bare segments in the
preamble, the claim additionally refers to the coaxial cable and
bare segments in the body of the claim, such that the preamble is
given patentable weight.
In addition, we find that in Ellinwood, although there is
disclosure of the supporting clips providing cushioning support,
there is no disclosure that the cushioning support provides a
seal. We do not agree with the examiner's assertion (answer,
page 5) that "a seal is merely something that closes or fastens
tightly or securely." We find that the examiner has provided
only a portion of the Definition of a seal, and has taken the
Appeal No. 2005-0289
Application No. 09/491,841
Page 12
1 A copy of the pertinent pages of the Dictionary is attached to our
Decision.
definition out of context with the language of the Dictionary
definition. Webster's New World Dictionary1, Second Edition,
© 1972, recites: "4. a) something that seals, closes or fastens
tightly or securely; specif., a piece of metal, paper, etc., so
placed over a lid, cap, etc. that it must be broken before the
container can be opened b) a tight closure, as against the
passage of air or water."
From our review of the Dictionary definition of a seal, we
find that "fastening tightly or securely" is not enough to
provide a seal, but rather that a seal requires that the tight
enclosure prevents intrusion. As such, the tight cushioned
support of Ellinwood is not a seal, and accordingly, the edges 13
of the tubular cushioning material are not sealing lips as
recited in the claim. Moreover, we agree with appellant (brief,
page 15) that in Ellinwood, the cushion does not provide a seal
because it does not surround the conduit. In any event, even if,
assuming arguendo, we considered the edges of cushion 13 to be
sealing lips, and considered the conduit of Ellinwood to be a
coaxial cable with bare elements, Ellinwood would still not
anticipate independent claims 1 or 13 because the claims recite
Appeal No. 2005-0289
Application No. 09/491,841
Page 13
that the protrusion extends beyond the sealing lips. In
Ellinwood, the cushioning element 13 could only act as a seal
when compressed around the conduit line. However, as seen in
figure 7, relied upon by the examiner, resilient tongue-like
strips 14 do not extend beyond the cushion 13 when the conduit
supporting clip is in place. Thus, for this additional reason,
Ellinwood cannot be said to anticipate claims 1 and 13.
From all of the above, we find that the examiner has failed
to establish a prima facie case of anticipation of independent
claims 1 and 13. Accordingly, the rejection of claims 1, 3, 7,
8, 11, 13, 14, 16-18, 20, 22, 24, 25, 29 and 39 under 35 U.S.C.
§ 102(b) as being anticipated by Ellinwood is reversed.
We turn next to the rejection of claims 23 and 26 under 35
U.S.C. § 103(a) as being unpatentable over Ellinwood. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
Appeal No. 2005-0289
Application No. 09/491,841
Page 14
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We reverse the rejection of claims 23 and 26 as there is no
evidence of record that would have suggested to an artisan the
obviousness of the limitations missing from independent claims 1
Appeal No. 2005-0289
Application No. 09/491,841
Page 15
and 13 as noted, supra. Accordingly, the rejection of claims 23
and 26 under 35 U.S.C. § 103(a) is reversed.
We turn next o the rejection of claim 30 under 35 U.S.C.
§ 103(a) as being unpatentable over Ellinwood in view of
Tinnerman. We cannot sustain the rejection of claim 30 because
the examiner has not shown that Tinnerman makes up for the basic
deficiencies of Ellinwood. Accordingly, the rejection of claim
30 under 35 U.S.C. § 103(a) is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 3, 7, 8, 11, 13, 14, 16-18, 20, 22-26, 29, 20 and 39 under 35
U.S.C. § 112, second paragraph, is reversed. The decision of the
examiner to reject claims 1, 3, 7, 8, 11, 13, 14, 16-18, 20, 22,
24, 25, 29 and 39 under 35 U.S.C. § 102(e) is reversed. The
decision of the examiner to reject claims 23, 26 and 30 under 35
U.S.C. § 103(a) is reversed.
Appeal No. 2005-0289
Application No. 09/491,841
Page 16
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
SSL/kis
Appeal No. 2005-0289
Application No. 09/491,841
Page 17
SHLESINGER, ARKWRIGHT & GARVEY, L.L.P.
1420 KING STREET
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