Ex Parte McAlpine

Board of Patent Appeals and Interferences

Jun 26, 2008

10785581 (B.P.A.I. Jun. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES KENNETH MCALPINE
____________

Appeal 2008-2350
Application 10/785,581
Technology Center 3600
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Decided: June 26, 2008
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Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-13 and 15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

Appeal 2008-2350
Application 10/785,581

I. BACKGROUND
The invention relates to a flexible piping connector, particularly for
use in connecting a bath overflow to a bath waste water pipe. (Spec. 1, ¶¶ 2
and 3). The flexible piping connecter includes a tubular flexible member
and two flanking rigid tubular members. (Spec. 3, ¶ 7). The connector has a
substantially smooth inner bore surface. (Spec. 3, ¶ 7). The flexible tubing
member 12 has a central annular groove 14 formed around its circumference
and a corresponding protrusion 16 formed inside, against which two annular
members 28 abut. (Spec. 6-7, ¶¶ 25 and 28). Claims 1 and 15 are
illustrative of the subject matter on appeal:
1. Bath overflow piping for connecting a bath overflow to a bath
waste water pipe, the overflow piping comprising:

a flexible piping connector having a first end and a second end and
comprising a tubular flexible member having a substantially smooth inner
bore surface, the flexible piping connector further including at least one rib
on a portion of an internal surface;

a pipe section connected at a first end with the first end of the
connector, the pipe section being adapted to be connected at a second end to
a bath waste water pipe; and

an overflow attachment adapted for connecting the second end of the
connector to an overflow outlet on a bath.

15. Bath overflow piping for coupling a bath overflow outlet to bath
waste outlet piping, the overflow piping comprising:

a flexible piping connector having a first end and a second end, and
comprising a tubular flexible member having a substantially smooth internal
surface, the tubular flexible member having an external surface defining an
annular depression, and an internal surface defining an annular rib, the
annular depression and the annular rib being at the same axial location, the
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Application 10/785,581

first end adapted for coupling to bath waste outlet piping and the second end
being adapted for coupling to a bath overflow outlet.

Appellant requests review of the sole rejection maintained by the
Examiner, namely, the rejection of claims 1-13 and 15 under 35 U.S.C. §
102(b) as anticipated by U.S. Patent No. 5,749,609, issued May 12, 1998 to
James R. Steele (“Steele”).
Appellant argues claims 1-13 as a group and claim 15 under a separate
heading. (App. Br. 5). Thus, we decide this ground of rejection on the basis
of claims 1 and 15. See 37 C.F.R. § 41.37(c)(1)(vii).
II. DISCUSSION
Based on a dictionary definition provided by Appellant, Appellant
argues that a proper construction of the term “rib” is “a portion of an entire
body or device which is proportionately smaller or more narrow than the
body of the entire piece.” (App. Br. 4-5, ¶¶ 8-10). Appellant argues that the
inner portion of Steele, relied upon by the Examiner, includes no such rib
and the Examiner’s finding is “wholly inconsistent with the use of the word
rib in common language as well as the use of this word within the Steele
patent itself.” (App. Br. 5, ¶ 10). With respect to claim 15, Appellant
further argues that “the smaller depressions in the outer surface [of Steele]
do not each individually correspond to a projection in the inner surface so as
to align along the same axis.” (App. Br. 5, ¶ 14).
The Examiner responds that “the raised portion 16a extending axially
between bands 13a and 14a [sic, 13 and 14] of the structure in Steele
constitutes a rib as it has been claimed by the Appellant.” (Ans. 5, ¶ 6). The
Examiner discusses how portion 16a of Steele reads on the dictionary
definition provided by Appellant and Appellant’s provided construction.
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(Ans. 5-7, ¶¶ 8-9). Regarding claim 15, the Examiner also responds that
claim 15 does not require that the depressions on the outer surface “each
individually correspond to a projection in the inner surface.” (Ans. 8, ¶ 14).
The Examiner also responds that Steele teaches that item 16a is provided at
each point where there is an annular depression and that any one of the
depressions is shown in Figure 1 aligned with the raised portion 16a
extending axially between bands 13 and 14. (Ans. 8, ¶ 14).
The issues on appeal arising from the contentions of Appellant and the
Examiner are: (1) did the Examiner reversibly err in finding that the term
“rib” recited in claim 1 reads on the raised portion of surface 16a between
bands 13 and 14 as taught by Steele; and (2) did the Examiner reversibly err
in finding that “the annular depression and the annular rib being at the same
axial location” as recited in claim 15 reads on the structure described in
Steele? We answer both of these questions in the negative.
Claim Construction1
During examination, "claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be

1 We find that Appellant’s Specification is inconsistent with the language of
claims 1 and 15, i.e., the “flexible piping connector” has a “substantially
smooth inner bore surface” (Spec. ¶ 7), and the “tubular member” includes
“a corresponding protrusion 16 formed inside the member.” (Spec. ¶ 25).
For the purpose of applying the prior art, we have construed the claims as
the Appellant and the Examiner do: “the flexible piping connector has a first
end and a second end, a tubular flexible member with a substantially smooth
inner bore surface and at least one rib on a portion of an internal surface.”
(App. Br. 4, ¶ 4; Ans. 5, ¶ 4). We are utilizing this claim construction in
rendering our decision. We will not address whether rejections under 35
U.S.C. § 112 are appropriate.
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interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Specification is always
highly relevant. Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term. Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005). “[I]n those circumstances where reference to dictionaries
is appropriate, the task is to scrutinize the intrinsic evidence in order to
determine the most appropriate definition.” Free Motion Fitness, Inc. v.
Cybex Intern., Inc., 423 F.3d 1343, 1348 (Fed. Cir. 2005)(citing Phillips,
415 F.3d at 1322-23, 1324).
Appellant argued that “the rib is the item designated as number 16 in
Fig. 4 of the application as filed.” (App. Br. 4, ¶ 5). We note that
Appellant’s Specification does not use, and provides no guidance as to the
meaning of, the word “rib,” but rather refers to a “protrusion 16” generally.
(Spec. 7-8, ¶¶ 25 and 28). We note that a “protrusion” must be smaller or
more narrow than the body from which it protrudes. However, we find no
reason in the Specification, the dictionary definition, or Appellant’s implied
definition to limit the term “rib” to any particular size, shape or narrowness
of a protrusion, as suggested by Appellant. (App. Br. 4, ¶ 8-9). Thus, the
broadest reasonable interpretation of the term “rib” in claims 1 and 15
requires no particular size, shape or narrowness with respect to the body
from which it protrudes.
We note that the language of claim 15 merely recites “the annular
depression and the annular rib being at the same axial location.” We also
note that claim 15 only calls for “an annular depression” and “an annular
rib.” Appellant’s Specification does not use, and provides no guidance as to
the meaning of, the phrase “the annular depression and the annular rib being
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Application 10/785,581

at the same axial location.” (Spec.) Rather, the Specification merely refers
to “a protrusion 16” as “corresponding” to “the annular groove 14.” (Spec.
6-7, ¶ 25). Likewise, Figure 4 of the Specification illustrates only one
protrusion 16 and only one annular groove 14. (Spec., Figure 4). Thus, the
broadest reasonable interpretation of the phrase “being at the same axial
location” is that an annular groove and an annular rib must correspond at an
axial location.
Anticipation of Claim 1-13
In order to find anticipation, “the Board must compare the construed
claim to a prior art reference and make factual findings that ‘each and every
limitation is found either expressly or inherently in [that] single prior art
reference.’” In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004)(quoting
Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed. Cir.
1998)).
Steele discloses that reinforcing bands 13 and 14 have inner surfaces
13a and 14a that are in substantial alignment with the interior surface 16a.
(Steele, col. 3, ll. 1-5 and 20-25). Steele also states that “FIG. 1 and FIG. 3
illustrate the nature of the smooth junction between rigid reinforcing band 13
and surface 16a and rigid reinforcing band 14 and surface 16a.” (Steele, col.
3, ll. 35-37). Further, looking at Figures 1 and 3, it is clear that a raised
portion of surface 16a protrudes from the connector between bands 13 and
14 such that the inner surface of reinforcing bands 13a and 14a are aligned
with the raised portion of surface 16a. (Steele, Figures 1 and 3). Since the
term “rib” requires no particular size, shape or narrowness of a protrusion,
we find that it reads on the portion of surface 16a protruding between
reinforcing bands 13 and 14.
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The Examiner did not reversibly err in finding that claim 1 reads on
surface 16a as taught by Steele. We sustain the Examiner’s rejection of
claim 1 in that we find each and every limitation of claim 1 is found in
Steele.
Appellant has failed to set forth separate, substantive arguments for
dependent claims 2-13. As such, dependent claims 2-13 fall with our
decision above regarding independent claim 1.
Anticipation of claim 15
We apply the same analysis discussed above to the term “rib” in claim
15. Similarly, we find that Figures 1 and 3 of Steele illustrate that any one
of the annular depressions corresponds to the raised portion of surface 16a
between reinforcing bands 13 and 14 (i.e., the “rib”). Based on our claim
construction above, the Examiner did not err in finding that “the annular
depression and the annular rib being at the same axial location” as recited in
claim 15 reads on the teachings of Steele. Since we find that each and every
limitation of claim 15 is found in Steele, we sustain the Examiner’s rejection
of claim 15.
III. CONCLUSION
The totality of the evidence weighs in favor of finding that Steele
anticipates claims 1-13 and 15 under 35 U.S.C. § 102(b).
IV. DECISION
The decision of the Examiner is affirmed.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

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Application 10/785,581

AFFIRMED

PL initials:

sld

DYKAS, SHAVER & NIPPER, LLP
P.O. BOX 877
BOISE, ID 83701-0877
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