Ex parte DEMASTERS

Board of Patent Appeals and Interferences

Jan 21, 1999

08320016 (B.P.A.I. Jan. 21, 1999)

Application for patent filed October 7, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JIMMIE G. DEMASTERS
____________
Appeal No. 98-0057
Application No. 08/320,0161
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, COHEN
and FRANKFORT, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 8 and 15. The only other claims
Appeal No. 98-0057
Application No. 08/320,016
2
still pending in the application have been withdrawn from
consideration as being directed to a nonelected invention.
Claim 1, the only independent claim on appeal, defines
the invention as follows:
1. A helical pipe comprising an outer plastic layer and
an inner plastic layer wherein said outer plastic layer is an
ultraviolet light-protective color and said inner plastic
layer is [sic, has] a light-reflecting color such that the
interior of said helical pipe can be accurately inspected by
visual or video means.
The following references are relied upon by the examiner
as evidence of obviousness in support of his rejection under
35 U.S.C. § 103:
Fouss et al. (Fouss) 4,523,613 Jun. 18,
1985
Prassas et al. (Prassas) 5,299,885 Apr.
5, 1994
(filed Aug. 14, 1992)
Appealed claims 1 through 8 and 15 stand rejected under
35 U.S.C. § 103 as being unpatentable over Fouss in view of
Prassas. Appealed claims 1 through 8 additionally stand
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
Appeal No. 98-0057
Application No. 08/320,016
The examiner has offered no reason why claim 15 was2
omitted from this rejection, despite the fact that this
dependent claim, like claims 2 through 8, is in the chain of
dependency from claim 1.
3
distinctly claim the subject matter which appellant regards as
his invention.2
The basis for the rejection of claims 1 through 8 under
the second paragraph of § 112 involves two limitations in
claim 1. The examiner’s first difficulty with the claim
language centers on the recitation that the outer plastic
layer has “an ultraviolet light-protective color.” The
examiner’s second difficulty with the claim language centers
on the word “accurately” in the recitation that the inner
plastic layer “is [sic, has] a light-reflecting color such
that the interior of said helical pipe can be accurately
inspected . . .”
In arguing that the claim language is definite, appellant
relies on the following definitions presented on page 8 of the
specification for the expressions “ultraviolet light-
protective color” and “light-reflecting color”:
By ultraviolet light-protective color it is meant
that the plastic layer has a color and composition
sufficient to prevent or retard the deterioration of
Appeal No. 98-0057
Application No. 08/320,016
4
the plastic layer upon exposure to ultraviolet
light.... By light-reflecting color it is meant that
the color is light enough to provide adequate
reflection of light to allow accurate visual or
video inspection of the inside of the pipe.
We are not persuaded by appellant’s arguments that the
rejection of claims 1 through 8 under the second paragraph of
§ 112 is improper. Although an inventor is free to define
specific terms used in a claim to describe his or her
invention, this must be done with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Neither of the
definitions quoted supra meets the Paulsen requirements.
With regard to the expression “accurately inspected” in
claim 1 and the expression “ accurate . . . inspection” in the
above-quoted definition for the phase “light-reflecting
color,” it is unclear how thorough the inspection must be in
order to be considered as being “accurate.” Appellant’s
specification does not contain any guidelines to enable one
skilled in the art to determine what constitutes an “accurate
inspection.” Compare Seattle Box Co. v. Industrial Crating &
Packing Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984). For these reasons alone, claim 1 does not define the
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metes and bounds of the claimed subject matter with a
reasonable degree of precision as required in In re Venezia,
530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
With regard to the expression “ultraviolet light-
protective color” the definition as quoted supra, does not
make clear the degree to which the outer plastic layer must
“retard” the ultraviolet light in order to be considered as
being “protective.” Furthermore, the specification states that
the expression “ultraviolet light-protective color” means both
“color and composition,” thereby improperly distorting the
meaning of the term “color.” Such a distorted definition is
not permissible and renders claim 1 indefinite. See In re
Barr, 444 F.2d 588, 597, 170 USPQ 330, 338 (CCPA 1971) and In
re Hill, 161 F.2d 367, 369, 73 USPQ 482, 484 (CCPA 1947).
For the foregoing reasons we will sustain the examiner’s
rejection of claims 1 through 8 under the second paragraph of
§ 112. However, to the extent that the claim language is
understandable, we will not sustain the examiner’s § 103
rejection of the appealed claims based on the combined
teachings of Fouss and Prassas.
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The Fouss reference discloses a corrugated pipe having
inner and outer plastic layers. The inner layer contains
carbon black to inhibit degradation due to ultraviolet
radiation, and the outer layer contains titanium dioxide to
provide the pipe with a white, light reflective exterior
surface. The examiner concedes that Fouss’s two-layer pipe
construction differs from appellant’s claimed invention in
that Fouss’s light-reflective layer is on the exterior of the
pipe rather than the interior of the pipe. He nevertheless
contends that the teachings of Prassas would have made it
obvious to reverse the order of Fouss’s plastic layers. We
disagree.
Prassas discloses a porous pipe in which a single layer
wall is formed from rubber particles 14 coated with a film of
binder resin 18. According to Prassas’s teachings, the film of
binder resin contains carbon black 24 to inhibit degradation
due to ultraviolet light. Such a teaching does not amount to a
suggestion of placing Fouss’s light-reflective layer on the
inside of the pipe or of interiorly lining Fouss’s pipe with a
light-reflective layer. Furthermore, Fouss expressly teaches
that the light-reflective layer should be on the exterior of
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Application No. 08/320,016
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the pipe to keep the pipe from softening due to heat from the
sun (see column 4, lines 46-52).
Moreover, even if Fouss’s pipe were modified in the
manner proposed by the examiner, the resulting structure would
not arrive at the claimed invention in that Fouss’s pipe is a
corrugated pipe, not a helical pipe as recited in claim 1. The
recitation that the pipe is a helical pipe in the preamble of
claim 1 is not a statement of intended use of the pipe.
Instead, it is a statement of particular pipe construction as
specifically defined on page 3 of appellant’s specification.
For the foregoing reasons, we must reverse the § 103
rejection of claims 1 through 8 and 15.
Under the provisions of 37 CFR 1.196(b), the following
new ground of rejection is entered against claim 15:
Claim 15 is rejected under 35 U.S.C. § 112 ¶ 2 as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as
his invention. This claim is indirectly dependent from claim 1
and therefore encompasses the subject matter of claim 1. It is
therefore indefinite for the reasons stated supra with respect
to claim 1.
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The examiner’s decision rejecting the appealed claims is
affirmed-in-part, and a new ground of rejection has been
entered against claim 15 under the provisions of 37 CFR §
1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
Appeal No. 98-0057
Application No. 08/320,016
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ground of rejection to avoid termination of proceedings (37
CFR § 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. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
Appeal No. 98-0057
Application No. 08/320,016
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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).
AFFIRMED-IN-PART, 1.196(b)
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
bae
Appeal No. 98-0057
Application No. 08/320,016
11
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