Ex Parte Dunn

Board of Patent Appeals and Interferences

Sep 14, 2007

09569826 (B.P.A.I. Sep. 14, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDMUND M. DUNN
____________

Appeal 2007-1591
Application 09/569,826
Technology Center 3600
____________

Decided: September 14, 2007
____________

Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

REMAND TO THE EXAMINER
Having reviewed the totality of the record in this appeal, we have
determined that the record is incomplete and the issues have not been fully
developed. Therefore we REMAND this application to the jurisdiction of
the Examiner for action consistent with our remarks below. See 37 C.F.R.
§ 41.50 (a)(1).
Appeal 2007-1591
Application 09/569,826

Claims 49-64 are pending and on appeal in this application (Br. 2).1
Although the action appealed from was a non-final rejection, we have
jurisdiction since the claims have been twice presented and twice rejected.
See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994); 35 U.S.C.
§§ 6(b) and 134. According to Appellant, the invention is directed to a rebar
safety protective cover having a hollow cylindrical body closed at one end
and open at the other end, with a flat overhanging impact head of substantial
extent projecting laterally outward, where the body and impact head are of a
thickness and integrally formed of a plastic material such that the protective
cover passes the Cal OSHA drop test (Br. 3). Independent claim 49 is
illustrative of the invention and a copy of this claim is reproduced below:
49. A rebar safety protective cover for use on the projecting free end
of concrete reinforcing bar to prevent impact injuries comprising:

(a) a hollow cylindrical body closed at one end and open at the other,

(b) an overhanging impact head of substantial extent projecting
laterally outwardly beyond said closed end of the body,

said body and impact head being of a thickness and integrally formed
of a plastic material to provide a protective cover which passes the Cal
OSHA drop test when the rebar is positioned within said protective cover in
direct contact with said plastic material and at an angle such that the free end
of the rebar abuts the inside diametrical lateral extremity of said closed end.

Claims 49, 56, 57, and 64 stand rejected under 35 U.S.C. § 102(b) as
anticipated by American AllSafe Company (Answer 3).2 Claims 49-64

1 We refer to and cite from the Substitute Brief dated Aug. 11, 2006.
2 The applied prior art references are correctly listed on pages 2-3 of the
Answer.
2
Appeal 2007-1591
Application 09/569,826

stand rejected under 35 U.S.C. § 103(a) as obvious over Schimmelpfennig
in view of Brydson and American AllSafe Company (Buffalo BarGard®)
(Answer 4). Claims 50-54 and 58-62 stand rejected under 35 U.S.C.
§ 103(a) as obvious over American AllSafe Company (Buffalo BarGard®)
in view of Brydson (Answer 5). Claims 55 and 63 stand rejected under
35 U.S.C. § 103(a) as obvious over American AllSafe Company (Buffalo
BarGard®) in view of Schimmelpfennig (Answer 6).3
Implicit in our review of the Examiner’s anticipation and obviousness
analyses is that the claim must first have been correctly construed to define
the scope and meaning of each contested limitation. See Gechter v.
Davidson, 116 F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3
(Fed. Cir. 1997). From the record in this appeal, the principal contested
limitation is the scope and meaning of the Cal OSHA drop test (see, e.g.,
claim 49). Appellant contends that the claim language regarding the “Cal
OSHA drop test” means the “new” Cal OSHA drop test, not the “old” test
(Reply Br. 4-6, 11). The Examiner contends that the claim language in
question does not require the “new” Cal OSHA drop test (Answer 7-9).
The “original” Cal OSHA drop test required the protective cover to be
capable of withstanding at least the impact of a 250 pound weight dropped

3 We note that the rejections on appeal and the claims included in each
rejection are not correctly listed in the Brief (page 5). Furthermore, the
Examiner does not correctly state the grounds of rejection and claims
involved (Answer 2, ¶ (6)). However, the grounds of rejection and included
claims are correctly stated in the body of the Answer (4-5) as well as the
Reply Br. 1. Therefore, we determine that both Appellant and the Examiner
have notice of the correct grounds of rejection and claims involved, and we
deem the incorrect statements to be harmless error.
3
Appeal 2007-1591
Application 09/569,826

from a height of 10 feet without penetration failure of the cover, with the
rebar being aligned with the longitudinal dimension of the cylindrical body
portion of the cover (Specification, paragraph bridging pages 7-8). The
“latest” or “new” Cal OSHA drop test is conducted with the protective cover
positioned over the rebar at an angle, as illustrated in Fig. 6 (Specification
8-9). The complete test is set forth in Exhibit 1 attached to the Dunn
Declaration under 37 C.F.R. § 1.132 (a copy of which is attached to the
Brief dated Aug. 11, 2006). In view of this evidence, we cannot agree with
the Examiner that the contested language of the claims “reads on” the “old”
or “original” Cal OSHA drop test since the language clearly states that the
rebar must be positioned within the protective cover in direct contact with
the plastic material and at an angle such that the free end of the rebar abuts
the inside diametrical lateral extremity of the closed end (i.e., the rebar cover
is at an angle such that the free end is touching the plastic side of the cover).
This language does not agree with the “old” Cal OSHA drop test and the
Examiner has not indicated why the claim would read on this “old” test.
Additionally, even without construing the contested claim language,
we must give the language of the claims the broadest reasonable meaning as
the words are ordinarily used, as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definition or otherwise that may be afforded by the specification. See
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
As discussed above, Appellant’s Specification (7-9) discloses the “old” or
“original” Cal OSHA drop test and teaches that the rebar protective cover of
the invention passes the “latest” or “new” Cal OSHA drop test. Therefore,
4
Appeal 2007-1591
Application 09/569,826

we determine that one of ordinary skill in the art would have understood that
the contested claim language would be interpreted as the “latest” Cal OSHA
drop test as disclosed and defined in the Specification.
We further note that the claims recite the transitional term
“comprising,” thus allowing other materials including metal inserts, as long
as the rebar protective cover is formed as a hollow cylindrical body with an
open end, a closed end, an overhanging impact head, and plastic sufficient to
pass the “new” Cal OSHA test. See In re Baxter, 656 F.2d 679, 686-87,
210 USPQ 795, 802-03 (CCPA 1981).
We note that Appellant has submitted evidence that the “Buffalo
BarGard®” and the embodiment of the Schimmelpfennig patent passed the
“old” test but have failed the “new” Cal OSHA drop test (see the Dunn
Declaration and the Supplemental Dunn Declaration, especially the list of
banned products attached to this Supplemental Declaration). Therefore, in
view of our claim construction as discussed above, we remand this
application to the jurisdiction of the Examiner for application of the cited
prior art against the properly construed claims, and consideration of the
evidence of record in the two Dunn Declarations.
With regard to the combination of references as applied by the
Examiner, we note that the “Buffalo BarGard®” of the American AllSafe
Co. is made from “low density polyethylene” while the “BarGard®
Protector Caps” are made from “heavy-duty polyethylene” but do not pass
even the “old” Cal OSHA drop test. The Examiner should consider these
disclosures in any review of the applied prior art.
5
Appeal 2007-1591
Application 09/569,826

Finally, we determine that the list from the Department of Industrial
Relations, Div. of OSHA, attached to the Supplemental Dunn Declaration,
not only sets out rebar protective covers not approved for sale after Oct. 1,
2000, but also lists the rebar protective covers that have passed the “new”
Cal OSHA drop test (see pp. 4-6 of the list). Since we determine that this
list discloses that some of the rebar protective covers that passed the “new”
test are made from plastic (with or without metal inserts), these products
would meet all claim limitations if made in the conventional form of a
hollow cylindrical body with open and closed ends (e.g., see claim 49 on
appeal). However, there is no evidence in the record of this appeal if these
products which have passed the “new” Cal OSHA drop test are references
which are available as prior art against the claimed subject matter (e.g., the
Don De Cristo product on page 4 of the list was approved 4/25/99, well
before the 05-12-00 filing date of this application). Therefore, we also
remand this application to the jurisdiction of the Examiner so that the
Examiner can request sufficient information to determine whether any of the
approved products are of conventional shape and would be available as prior
art against the claimed subject matter.
This remand is made for the purpose of directing the Examiner to
further consider the grounds of rejection. Accordingly, if the Examiner
submits a Supplemental Answer to the Board in response to this remand,
“appellant must within two months from the date of the supplemental
examiner’s answer exercise one of” the two options set forth in 37 C.F.R.
§ 41.50(a)(2), “in order to avoid sua sponte dismissal of the appeal as to the
6
Appeal 2007-1591
Application 09/569,826

claims subject to the rejection for which the Board has remanded the
proceeding,” as provided in this rule.
Accordingly, this application is remanded to the Examiner for action
consistent with our remarks above. This application, by virtue of its
“special” status, requires an immediate action (MPEP § 708.01 (D)).
REMANDED

cam

JOSEPH E. MUETH, ESQ.
JOSEPH E. MUETH LAW CORP.
SUITE 300
100 E., CORSON STREET
PASADENA, CA 91103-3842

7