Ex parte KACINES

Board of Patent Appeals and Interferences

Oct 6, 1999

08715422 (B.P.A.I. Oct. 6, 1999)

Application for patent filed September 18, 1996. 1
We note that claim 6 was never included in any of the2
rejections under 35 U.S.C. § 103 set forth by the examiner in
any Office action. However, the examiner did indicate in the
disposition of claims section of the Office Action Summary
that claim 6 was rejected. Therefore, for purposes of this
appeal, we will considered claim 6 to be rejected on the same
(continued...)
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for publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEVEN C. KACINES
____________
Appeal No. 1999-1747
Application No. 08/715,4221
____________
ON BRIEF
____________
Before CALVERT, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 16, which are all of the claims
pending in this application.2
Appeal No. 1999-1747
Application No. 08/715,422
(...continued)2
basis as its parent claim (i.e., claim 5).
We REVERSE and enter a new rejection pursuant to 37 CFR
§ 1.196(b).
Appeal No. 1999-1747 Page 3
Application No. 08/715,422
BACKGROUND
The appellant's invention relates to a quick connect
coupling for connecting a brake hose to a brake tube in a
hydraulic brake hose assembly. A copy of the claims under
appeal appears in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Dick 2,062,449 Dec.
1, 1936
Eschbaugh 3,826,523 July
30, 1974
Legris 3,963,267 June 15,
1976
Guest 4,645,246 Feb. 24,
1987
Tarum 4,828,297 May 9,
1989
Spors et al. 5,064,227 Nov. 12,
1991
(Spors)
Joseph et al. 5,387,016 Feb. 7,
1995
(Joseph)
Rea et al. 5,573,279 Nov. 12,
1996
(Rea) (filed June 7, 1995)
Appeal No. 1999-1747 Page 4
Application No. 08/715,422
Id.3
Claims 1, 2 and 7 to 10 stand rejected under 35 U.S.C. §
103 as being unpatentable over Eschbaugh in view of Joseph and
Spors.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Eschbaugh in view of Joseph and Spors as
applied to claim 2 above, and further in view of Tarum.
Claims 4 to 6 stand rejected under 35 U.S.C. § 103 as3
being unpatentable over Eschbaugh in view of Joseph, Spors and
Tarum as applied to claim 3 above, and further in view of Rea.
Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Eschbaugh in view of Joseph and Spors as
applied to claim 1 above, and further in view of Dick.
Claims 1 and 11 to 15 stand rejected under 35 U.S.C. §
103 as being unpatentable over Legris in view of Joseph and
Guest.
Appeal No. 1999-1747 Page 5
Application No. 08/715,422
Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Legris in view of Joseph and Guest as
applied to claim 1 above, and further in view of Dick.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 6, mailed December 11, 1997) and the answer (Paper No. 14,
mailed December 3, 1998) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 12,
filed September 11, 1998) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 1999-1747 Page 6
Application No. 08/715,422
Analysis of whether a claim is patentable over the prior4
art under 35 U.S.C. § 103 begins with a determination of the
scope of the claim. The properly interpreted claim must then
be compared with the prior art. Claim interpretation must
begin with the language of the claim itself. See Smithkline
Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878,
882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
The appellant argues (brief, pp. 6-9) that the claims
under appeal are directed to the combination of a brake hose,
a brake tube and a quick connect coupling. The examiner has
determined (final rejection, p. 3) that the claims under
appeal are directed only to the quick connect coupling having
the intended use of coupling a brake hose to a brake tube.
Thus, before addressing the examiner's rejections based upon
prior art, it is an essential prerequisite that the claimed
subject matter be fully understood. Accordingly, we will4
initially direct our attention to appellant's claim 1 (the
only independent claim on appeal) to derive an understanding
of the scope and content thereof.
However, before turning to the proper construction of
claim 1, we believe it is important to review some basic
principles of claim construction. First, and most important,
Appeal No. 1999-1747 Page 7
Application No. 08/715,422
the language of the claim defines the scope of the protected
invention. Yale Lock Mfg. Co. v. Greenleaf, 117 U.S. 554, 559
(1886) ("The scope of letters patent must be limited to the
invention covered by the claim, and while the claim may be
illustrated it cannot be enlarged by language used in other
parts of the specification."); Autogiro Co. of Am. v. United
States, 384 F.2d 391, 396, 155 USPQ 697, 701 (Ct. Cl. 1967)
("Courts can neither broaden nor narrow the claims to give the
patentee something different than what he has set forth [in
the claim]."). See also Continental Paper Bag Co. v. Eastern
Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti Unhairing
Co. v. American Fur Ref. Co., 198 U.S. 399, 410 (1905).
Accordingly, "resort must be had in the first instance to the
words of the claim" and words "will be given their ordinary
and accustomed meaning, unless it appears that the inventor
used them differently." Envirotech Corp. v. Al George, Inc.,
730 F.2d 753, 759, 221 USPQ 473, 477 (Fed. Cir. 1984).
Second, it is equally "fundamental that claims are to be
construed in the light of the specification and both are to be
read with a view to ascertaining the invention." United
States v. Adams, 383 U.S. 39, 49, 148 USPQ 479, 482 (1966).
Appeal No. 1999-1747 Page 8
Application No. 08/715,422
Furthermore, the general claim construction principle
that limitations found only in the specification of a patent
or patent application should not be imported or read into a
claim must be followed. See In re Priest, 582 F.2d 33, 37,
199 USPQ 11, 15 (CCPA 1978). One must be careful not to
confuse impermissible imputing of limitations from the
specification into a claim with the proper reference to the
specification to determine the meaning of a particular word or
phrase recited in a claim. See E.I. Du Pont de Nemours & Co.
v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129,
1131 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988). What we
are dealing with in this case is the proper construction of
the limitations recited in appealed claim 1.
Claim 1 reads as follows:
A quick connect coupling for connecting a brake hose
to a brake tube in a hydraulic brake hose assembly,
wherein the brake hose has an inside diameter in the
range of about 1/8 inch to 3/16 inch, comprising:
a connector body having a first end for crimped
connection to the brake hose and a second end for
connection to the brake tube;
a resilient retaining element extending between the
brake tube and connector body;
a stepped bore in the second end of the body for
receiving the brake tube, the stepped bore including a
Appeal No. 1999-1747 Page 9
Application No. 08/715,422
The manner or method in which a machine (e.g., in this5
case, the quick connect coupling which attaches a brake hose
to a brake tube) is to be utilized is not germane to the issue
of patentability of the machine itself. See In re Casey, 370
F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). A statement of
intended use does not qualify or distinguish the structural
apparatus claimed over the reference. In re Sinex, 309 F.2d
488, 492, 135 USPQ 302, 305 (CCPA 1962). There is an
(continued...)
first bore section for communicating with the brake hose,
a second bore section for receiving a sealing arrangement
that seals between the brake tube and second bore section
and a third bore section for receiving the retaining
element;
a shoulder within the third bore section extending
radially inwardly for engaging one portion [of] the
retaining element to prevent axial movement of the
retaining element out of the third bore section; and
a groove in the brake tube for abutting another
portion of the retaining element to prevent axial
movement of the tube from the connector body.
Our review of independent claim 1 reveals that we are
unable to derive a proper understanding of the scope and
content thereof. Specifically, for the reasons set forth
below, we are unable to determine whether claim 1 is directed
to the combination of a brake hose, a brake tube and a quick
connect coupling as asserted by the appellant or that claim 1
is directed only to the quick connect coupling having the
intended use of coupling a brake hose to a brake tube.5
Appeal No. 1999-1747 Page 10
Application No. 08/715,422
(...continued)5
extensive body of precedent on the question of whether a
statement in a claim of purpose or intended use constitutes a
limitation for purposes of patentability. See generally Kropa
v. Robie, 187 F.2d 150, 155-59, 88 USPQ 478, 483-87 (CCPA
1951) and the authority cited therein, and cases compiled in 2
Chisum, Patents § 8.06[1][d] (1991). Such statements often,
although not necessarily, appear in the claim's preamble. In
re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir.
1987).
The preamble of claim 1 (i.e., A quick connect coupling
for connecting a brake hose to a brake tube in a hydraulic
brake hose assembly, wherein the brake hose has an inside
diameter in the range of about 1/8 inch to 3/16 inch) leads us
in the direction that only the quick connect coupling is being
claimed, that is, the brake hose and brake tube are not part
of the claimed subject matter. We reach this conclusion based
on the appellant's use of the phrase "for connecting" and the
appellant's designation of the claimed subject matter as being
"A quick connect coupling" rather than a brake hose assembly.
The first clause of claim 1 (i.e., a connector body
having a first end for crimped connection to the brake hose
and a second end for connection to the brake tube) leads us in
Appeal No. 1999-1747 Page 11
Application No. 08/715,422
the direction that only the quick connect coupling is being
claimed, that is, the brake hose and brake tube are not part
of the claimed subject matter. We reach this conclusion based
on the appellant's use of the phrases "for crimped connection
to the brake hose" and "for connection to the brake tube."
The second clause of claim 1 (i.e., a resilient retaining
element extending between the brake tube and connector body)
leads us in the direction that the combination of a brake
hose, a brake tube and a quick connect coupling is being
claimed. We reach this conclusion based on the appellant's
use of the term "extending" rather than the phrase "for
extending."
The third clause of claim 1 (i.e., a stepped bore in the
second end of the body for receiving the brake tube, the
stepped bore including a first bore section for communicating
with the brake hose, a second bore section for receiving a
sealing arrangement that seals between the brake tube and
second bore section and a third bore section for receiving the
retaining element) leads us in the direction that only the
Appeal No. 1999-1747 Page 12
Application No. 08/715,422
quick connect coupling is being claimed, that is, the brake
hose and brake tube are not part of the claimed subject
matter. We reach this conclusion based on the appellant's use
of the phrases "for receiving the brake tube" and "for
communicating with the brake hose." In addition, it is not
clear to us if the "sealing arrangement" is part of the
claimed subject matter due to it being recited after the
phrase "for receiving."
The last clause of claim 1 (i.e., a groove in the brake
tube for abutting another portion of the retaining element to
prevent axial movement of the tube from the connector body)
leads us in both directions. First, it leads us in the
direction that the combination of a brake hose, a brake tube
and a quick connect coupling is being claimed. We reach this
conclusion based on the appellant's use of a separate clause.
Second, it also leads us in the direction that only the quick
connect coupling is being claimed, that is, the brake hose and
brake tube are not part of the claimed subject matter. We
reach this conclusion based on the appellant's use of the
phrase "for abutting."
Appeal No. 1999-1747 Page 13
Application No. 08/715,422
In view of the above conflicting attributes of claim 1,
we are unable to determine the scope of claim 1. That is,
whether claim 1 is directed to the combination of a brake
hose, a brake tube and a quick connect coupling as asserted by
the appellant or whether claim 1 is directed only to the quick
connect coupling having the intended use of coupling a brake
hose to a brake tube. Thus, it is our determination that the
appellant has failed to particularly point out and distinctly
claim the invention as required by the second paragraph of 35
U.S.C. § 112.
NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 1 to 16 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the invention, for the reasons
explained above.
Appeal No. 1999-1747 Page 14
Application No. 08/715,422
See pages 3-4 of the brief wherein the appellant reads6
claims 1 and 11 on the drawings.
In addition, claim 11 lacks proper antecedent basis for
"the retaining ring" and "the shoulder." It appears to us
that "the retaining ring" is meant to refer back to the
resilient retaining element recited in claim 1. Additionally,
while claim 1 does recite "a shoulder," it is not "the
shoulder" being recited in claim 11. In that regard, the
shoulder being recited in claim 1 is either shoulder 40
(Figure 1) or shoulder 112 (Figure 5) while the shoulder being
recited in claim 11 is shoulder 114 (Figure 5).6
The rejections under 35 U.S.C. § 103
Considering now the rejections of claims 1 to 16 under
35 U.S.C. § 103, we have carefully considered the subject
matter defined by these claims. However, for reasons stated
supra in our new rejection under the second paragraph of
Section 112 entered under the provisions of 37 CFR 1.196(b),
the scope of the claims under appeal cannot be ascertained.
We find that it is not possible to apply the prior art to
claims 1 to 16 in deciding the question of obviousness under
Appeal No. 1999-1747 Page 15
Application No. 08/715,422
35 U.S.C. § 103 without resorting to speculation and
conjecture as to the scope of claim 1. This being the case,
we are therefore constrained to reverse the examiner's
rejection of claims 1 to 16 under 35 U.S.C. § 103 in light of
the holding in In re Steele, 305 F.2d 859, 862, 134 USPQ 292,
295 (CCPA 1962). This reversal of the examiner's rejection is
based only on the procedural ground relating to the
indefiniteness of these claims and therefore is not a reversal
based on the merits of the rejection.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 16 under 35 U.S.C. § 103 is reversed and a new
rejection of claims 1 to 16 under 35 U.S.C. § 112, second
paragraph, has been added pursuant to provisions of 37 CFR §
1.196(b).
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. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
Appeal No. 1999-1747 Page 16
Application No. 08/715,422
1.196(b) provides that, "A new ground of rejection shall not
be considered final for purposes of judicial review."

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
ground of rejection to avoid termination of proceedings
(§ 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. . . .
Appeal No. 1999-1747 Page 17
Application No. 08/715,422
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1747 Page 18
Application No. 08/715,422
MILLEN WHITE ZELANO & BRANIGAN
ARLINGTON COURTHOUSE PLAZA 1
2200 CLARENDON BOULEVARD
SUITE 1400
ARLINGTON, VA 22201
APPEAL NO. 1999-1747 - JUDGE NASE
APPLICATION NO. 08/715,422
APJ NASE
APJ McQUADE
APJ CALVERT
DECISION: REVERSED
37 CFR § 1.196(b)
Prepared By: Gloria Henderson
DRAFT TYPED: 04 Oct 99
FINAL TYPED:
Gloria: Note Panel Change