Ex Parte Mann

Board of Patent Appeals and Interferences

Jan 30, 2012

10861436 (B.P.A.I. Jan. 30, 2012)

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.
10/861,436 06/03/2004 David G. Mann WOOSP0132US 1069
23908 7590 01/30/2012
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
KENNEDY, JOSHUA T
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
01/30/2012 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 DAVID G. MANN
____________________

Appeal 2009-011798
Application 10/861,436
Technology Center 3600
____________________

Before: STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011798
Application 10/861,436
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
21-37. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Appellant’s claimed invention “relates to a grip for extension poles
and the like that contains a storage compartment for securely storing an
adaptor that may be threaded into a standard internally threaded socket in a
tool handle to permit the tool handle to be attached to poles having quick
release lock mechanisms.” Spec. 1:7-10. The independent claims on appeal
are claims 21 and 33. Independent claim 21, reproduced below, is
representative of the claimed subject matter:
21. In combination, a grip for an extension pole and an adaptor
including means for providing an interface between tool
handles and extension poles that are not otherwise connectable
together, the adaptor being storable in the grip when the adaptor
is not being used to provide such interface, the grip comprising
a tubular sleeve having opposite open ends, one of the open
ends being sized for receipt of an inboard end of an extension
pole for tool handles, and the other of the open ends
communicating with a storage compartment inside the sleeve
sized for receiving at least a portion of the adaptor, the adaptor
being removable from the storage compartment for use in
providing such interface between tool handles and extension
poles that are not otherwise connectable together, and a gripper
inside the sleeve that is engageable by the adaptor during
insertion of the adaptor into the storage compartment for
retaining the adaptor within the storage compartment when not
being used to provide such interface.

Appeal 2009-011798
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REJECTIONS1
Appellant seeks review of the following rejections:
1. Claims 21-35 under 35 U.S.C. § 112, second paragraph, as indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention;
2. Claims 21-28 and 30-32 under 35 U.S.C. § 102(b) as anticipated by
Lewis (US 4,684,283; iss. Aug. 4, 1987); and
3. Claims 33, 34, 36, and 37 under 35 U.S.C. § 103(a) as unpatentable over
Lewis and Taylor (US 6,461,074 B2; iss. Oct. 8, 2002).

OPINION
Claims 21-35 under 35 U.S.C. § 112, second paragraph, as indefinite
The Examiner concludes that independent claims 21 and 33 are
indefinite for three reasons. First, the Examiner asks, “[h]ow would one
determine when the tool handles and extension poles are not connectable
together? They could always be crudely connected together by duct tape,
making them ‘connectable’ in a broad sense of the term.” Ans. 12. For the
reasons that follow, we conclude the Examiner’s question is answered by
reading the claims in light of the Specification.
The standard for indefiniteness is set forth in Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986): “A
decision on whether a claim is invalid under § 112, 2d ¶, requires a
determination of whether those skilled in the art would understand what is

1 In the office action that is the subject of this appeal, claims 21-28, 30-34,
36, and 37 were rejected as anticipated by Lewis. Office Action dated Jun.
5, 2006, at 3. The Answer withdraws the rejection of claims 33, 34, 36, and
37 as anticipated by Lewis and rejects these claims over Lewis and Taylor.
Ans. 4.
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Application 10/861,436
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claimed when the claim is read in light of the specification.” Appellant
correctly contends that the disputed language is understandable by one of
ordinary skill in the art when read in view of the Specification. See App. Br.
6.
Claims 21 and 33 are independent. Claim 21 recites a combination
having “an adaptor including means for providing an interface between tool
handles and extension poles that are not otherwise connectable together.”
Claim 33 recites an extension pole having “an adaptor including means for
providing an interface between tool handles and extension poles that are not
otherwise connectable together.” 2
The function of the adaptor of claim 21 is to provide an interface
between tool handles and extension poles that are not otherwise connectable
together. Regarding the corresponding structure, the Specification describes
a single embodiment of adaptor 10, which includes one end having a head
portion 11 configured to mate with a quick release lock mechanism (e.g.,
lock mechanism 8), and the other end having a threaded end portion 12
configured to mate with the internally threaded socket of the tool handle.
Spec. 4:23-28; figs. 1-3.3
The Specification states the following:
Some types of extension poles have quick
release lock mechanisms that allow for the quick
and easy attachment and removal of tool handles to

2 In response to the anticipation rejection, Appellant argues that the
adaptor’s means for providing an interface must be construed to cover the
corresponding structure, material, or acts describes in the specification and
equivalents thereof (App. Br. 9), thus acknowledging that 35 U.S.C. § 112,
sixth paragraph, applies.
3 Appellant also identifies the corresponding structure as adaptor 10 having a
head portion 11 on one end configured to mate with a quick release lock
mechanism and a threaded end portion 12 on the other end. App. Br. 3.
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and from the poles. However, the tool handles
must be provided with compatible end portions in
order to work with such quick release lock
mechanisms.
If the tool handles have standard internally
threaded sockets, for example, the tool cannot be
used with poles having such quick release lock
mechanisms unless an adaptor that is configured to
mate with the quick release lock mechanism is first
threaded into the tool handle socket.
Spec. 1, ll. 13-20. The Specification also states that:
A disadvantage in providing extension poles
with these types of lock mechanisms is that the
tool handles must be provided with end portions
that are compatible with the lock mechanisms. If
the tool handles have a standard internally
threaded socket, extension poles having such quick
release lock mechanisms cannot be used with these
tool handles unless a suitable adaptor 10 of the
type shown, for example, in Fig. 1 . . . is first
threaded into the tool handle socket.
Spec. 4, ll. 21-28.
In view of these passages, it is reasonable to interpret the term "tool
handles and extension poles that are not otherwise connectable together” as
being limited to pairs of tool handles and extension poles having
incompatible end portions that cannot be used together without a suitable
adaptor. In other words, in the absence of a suitable adaptor4, an extension
pole having an end portion comprised of a quick release lock mechanism is
“not otherwise connectable” to a tool handle having an end portion
comprised of an internally threaded socket.

4 An adaptor having one end that mates with a quick release mechanism and
an opposite threaded end portion.
Appeal 2009-011798
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Consequently, the term “tool handles and extension poles that are not
otherwise connectable together” is susceptible of a reasonable interpretation
consistent with the Specification. Thus, claims 21 and 33 are not indefinite
for the first reason identified by the Examiner.
Second, the Examiner concludes that independent claims 21 and 33
are indefinite because it is unclear when the adaptor is “not being used.”
Ans. 5. The context of claims 21 and 33 provides the answer the Examiner
seeks: the adapter is “not being used” when it is not providing an interface
between the tool handle and the extension pole. Thus, claims 21 and 33 are
not indefinite for the second reason identified by the Examiner.
Third, the Examiner concludes that it was unclear whether the claims
were drawn to a combination or a subcombination because the preamble of
claims 21 and 33 implies the subcombination of a grip for an extension pole
and an adaptor, while lines 1-4 in the body of claim 29 seeks to positively
include a tool handle. Ans. 5-6. The Examiner’s conclusion is not
applicable to claim 33, which is not directed to a combination or a
subcombination. Further, as Appellant correctly points out, independent
claim 21 is directed to the combination of a grip for an extension pole and an
adaptor including means for providing an interface between tool handles and
extension poles, and does not positively recite a tool handle or an extension
pole. App. Br. 7, 16. Claim 29 adds that the combination further includes a
tool handle and an extension pole. We fail to see how this creates confusion
as to whether claim 21 is directed to a combination or a subcombination.
Thus, claims 21 and 33 are not indefinite for the third reason identified by
the Examiner.
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As such, we cannot sustain the rejection of claims 21 and 33 or their
respective dependent claims 22-28, 30-32, 34, and 355 under § 112, second
paragraph, as indefinite.6
Claim 29
Claim 29 depends from independent claim 21, and adds the limitation
that the tool handle includes a “standard” internally threaded socket. The
Examiner rejected claim 29 as indefinite because the meaning of “standard”
is unclear since it is not made in reference to a particular standard or
otherwise defined in the Specification. Ans. 6, 13. Appellant argues that a
person of ordinary skill in the art would understand “standard” to mean
“ordinary” or “typical.” App. Br. 7-8.
The Specification consistently refers to a “standard internally threaded
tool handle,” but does not define “standard.” See e.g., Spec. 1:9, 25-26. In
the context of claim 29, and consistent with the Specification, “standard”
could mean, “constituting or affording a standard for comparison,
measurement, or judgment,” 7 (e.g., an industry standard), or “standard”
could mean, “ordinary” or “typical.” Because claim 29 is amenable to two
reasonable and inconsistent meanings, it is indefinite. See Ex Parte
Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential). As such,
claim 29 is indefinite.

5 Claim 29 is not indefinite by virtue of its dependence form claim 21, but is
indefinite for the reasons provided infra.
6 The Examiner’s conclusion of indefiniteness is also deficient in that the
record does not reflect that the adaptor’s means for providing an interface
was interpreted in light of the corresponding structure in the specification, as
required under § 112, 2d ¶. See e.g. Golight Inc. v. Wal-Mart Stores Inc.,
355 F.3d 1327, 1333-34 (Fed. Cir. 2004).
7 Webster’s Unabridged Dictionary (1996) (“standard,” adj. definition 1).
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Claims 21-28 and 30-32 as anticipated by Lewis; and claims 33, 34, 36, and
37 as unpatentable over Lewis and Taylor
The grip for an extension pole of independent claim 21 comprises a
tubular sleeve having opposite open ends. App. Br. 16. Similarly, the grip
on the inboard end of an extension pole of independent claim 33 comprises a
tubular sleeve having an opening in one end, and another opening in the
other end. Thus, the grip of claims 21 and 33 is open at both ends.
The rejection of claim 21 relies upon the Examiner’s finding that
Lewis discloses a grip (socket adaptor 10) comprising a tubular sleeve. Ans.
6, 10.
As Appellant correctly points out, Lewis’s socket adaptor 10 is
molded into broom block 12, and thus is closed at one end. Lewis, col. 3, ll.
20-23; fig. 2. Consequently, we cannot sustain the rejection of independent
claim 21 or dependent claims 22-28, and 30-32.
Turning to the remaining rejection based on Lewis and Taylor, the
Examiner relies on the same erroneous finding regarding the disclosure in
Lewis of a socket adaptor. The Examiner cites Taylor only for the teaching
of a tubular extension pole. Ans. 10. In doing so, the Examiner fails to
explain persuasively how the teachings of Taylor might remedy the
deficiencies in the disclosure of Lewis. As such, we cannot sustain the
rejection under 35 U.S.C. § 103(a) of independent claim 33 or dependent
claims 33, 34, 36, and 37.
Appeal 2009-011798
Application 10/861,436
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DECISION
We reverse the Examiner’s decision to reject claims 21-28 and 30-35
as indefinite.
We affirm the Examiner’s decision to reject claim 29 as indefinite.
We reverse the Examiner decision to reject claims 21-28 and 30-32 as
anticipated by Lewis.
We reverse the Examiner’s decision to reject claims 33, 34, 36, and 37
as unpatentable over Lewis and Taylor.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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