Ex Parte Gibbs

Board of Patent Appeals and Interferences

Mar 22, 2011

11676468 (B.P.A.I. Mar. 22, 2011)

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.
11/676,468 02/19/2007 Edward L. Gibbs 048 8231
21454 7590 03/22/2011
GARY PETERSON
211 N. ROBINSON AVE.,
SUITE 450
OKLAHOMA CITY, OK 73102
EXAMINER
KENNEDY, JOSHUA T
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
03/22/2011 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 EDWARD L. GIBBS
____________________

Appeal 2009-011129
Application 11/676,468
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, 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.
Appeal 2009-011129
Application 11/676,468
2
STATEMENT OF THE CASE
Edward L. Gibbs (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 28-422 under 35 U.S.C. § 102(b) as
being anticipated by Cumber (US 3,562,873, iss. Feb. 16, 1971). We have
jurisdiction under 35 U.S.C. § 6(b).

THE INVENTION
The claims are directed to a clip for an elongate line. Spec. 1. Claim
28, reproduced below, is illustrative of the claimed subject matter.
28. A compressible clip having opposed first and second ends
and having opposed interior and exterior surfaces, comprising:
a planar lower leg including the first end of the clip;
a planar intermediate leg that adjoins the lower leg; and
an upper leg that adjoins the intermediate leg, the upper
leg having a transverse indentation formed in the exterior
surface thereof, the upper leg including the second end of the
clip;
in which the clip is characterized by a relaxed shape in which
the interior surfaces of the lower and intermediate legs define
an included angle greater than 90 degrees and by a uniform
side-to-side width between its ends.

SUMMARY OF DECISION
We REVERSE.

2 The Examiner withdrew the rejection of claims 28-34 and 41 based on
Holliday set forth in the Final Rejection, mailed November 23, 2007, and
replaced it with a new ground of rejection of these claims as anticipated by
Cumber. Ans. 3.
Appeal 2009-011129
Application 11/676,468
3
OPINION
Claims 28-34 and 41
Independent claim 28 requires that the clip have “a uniform side-to-
side width between its ends.” For the very reasons argued by Appellant in
the Reply Brief, from page 2, line 1 to page 3, line 9, we find that Cumber’s
clip does not satisfy this limitation. Specifically, the notches 16 and 17
provided in Cumber’s clip to receive the supporting rod or wire 18 create a
non-uniformity in the side-to-side width of the clip between the two ends of
the clip. The Examiner’s position, stated on page 5 of the Answer, that “the
uniform width merely has to be located between its ends and the uniformity
does not have to extend from one end to the other” effectively reads the
limitation in question out of the claim, and thus is unreasonable. See Stumbo
v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
(denouncing claim constructions which render phrases in claims
superfluous). We do not sustain the rejection of independent claim 28, or of
claims 29-34 and 41, which depend from claim 28.
Claims 35-40 and 42
Independent claim 35 requires, inter alia, “a planar lower leg
including the first end of the clip.” The Examiner reads this limitation on
the straight rod engaging portion 12 of Cumber’s clip. Ans. 7. For the
reasons asserted by Appellant in the Reply Brief, on page 4, in lines 10-15,
we find that Cumber’s straight rod engaging portion 12 does not satisfy this
limitation. The straight rod engaging portion 12 of Cumber’s clip, which is
planar, does not extend to the end (i.e., extremity) of the clip. Rather, arm
19, which is “formed on the outer end of the rod engaging portion 12” and
“has its outer free end reversely bent inwardly to form a hook 28,” and thus
is not planar, extends between the planar straight rod engaging portion 12
Appeal 2009-011129
Application 11/676,468
4
and the first (lower) end of the clip. Col. 2, ll. 55-58; figs. 2 and 4. The
Examiner’s position, as articulated on page 7 of the Answer, that the planar
lower leg, as recited in claim 35, “does not necessarily define any structure
of the first end” is unreasonable. Claim 35 clearly requires “a planar lower
leg including [i.e., extending to] the first end of the clip.” We do not sustain
the rejection of independent claim 35, or of claims 36-40 and 42, which
depend from claim 35.

DECISION
For the above reasons, the Examiner’s decision is reversed.
REVERSED

hh

GARY PETERSON
211 N. ROBINSON AVE.,
SUITE 450
OKLAHOMA CITY, OK 73102