Ex Parte Miller

Patent Trial and Appeal Board

Sep 21, 2016

13495638 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/495,638 06/13/2012 Robert W. Miller
123696 7590 09/21/2016
Robert W. Miller
15946 Mariner Dr.
Huntington Beach, CA 92649
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RMX-4 8356
EXAMINER
DO, ROWLAND
ART UNIT PAPER NUMBER
3677
MAILDATE DELIVERY MODE
09/21/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT W. MILLER
Appeal2014-009939
Application 13/495,638 1
Technology Center 3600
Before BRUCE T. WIEDER, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1
and 3. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
According to Appellant, "[ t ]he present invention relates to a wire
connector to facilitate making a structural parallel line-splice in lightweight
metal wires. This connector would be useful to make a quick adjustment in
hanging-wire lengths. This connector produces end-loops required for
hanging wall pictures and other decor." Spec. ,-r 2.
1 According to Appellant, "[t]he real party in interest is the individual
inventor Robert W. Miller." Appeal Br. 1.
Appeal 2014/009939
Application 13/495,638
CLAHvIS
Claims 1 and 3 are on appeal. Claim 1 is the only independent claim
on appeal and recites:
1. A connector for making a quick assembly splice in light
gage structural wire to produce adjustable close tolerance wire
lengths for decorative hanging applications; the connector
compnsmg:
an elongated hollow tube having a polymeric material
having an axial channel therethrough over the full length of the
tube from a first end to a second end, said channel being of
sufficient diameter at its interior to receive said wires in opposed
relation;
each of said first and second ends of said axial channel
being tapered to accommodate insertion of a locking screw that
upon insertion will deform the end of the tube to accept the screw
thread, and at that same time, deform the wire strands to be
locked between the projections of the screw thread and the
threaded shape pressed into the surface of the bore by the
advancing lockscrew.
See i'.\~ppeal Br. 12.
REJECTIONS
1. The Examiner rejects claims 1 and 3 under 35 U.S.C. § 112,
second paragraph, as indefinite.
2. The Examiner rejects claims 1 and 3 under 35 U.S.C. § 102(b) as
anticipated by Holder. 2
2 Holder et al., US 4,454,376, iss. June 12, 1984.
2
Appeal 2014/009939
Application 13/495,638
Indefiniteness
DISCUSSION
The Examiner finds that claim 1 is indefinite based on the use of the
term "sufficient" and that claim 3 is indefinite based on the term "desired."
Final Act. 3. Appellant acknowledges that no response or arguments have
been provided with respect to this rejection. See Reply Br. 7-8.
Accordingly, we summarily sustain this rejection.
Anticipation
Claim 1
The Examiner finds that Holder discloses a connector as claimed
including the capability of performing the functional and intended use
recitations required by the claim. Final Act. 4 (citing Holder Figs. 1, 3, 4;
col. 1, 1. 55---col. 2, 1. 17).
We agree with and adopt the Examiner findings regarding Holder.
See id.; see also Ans. 2-3. As discussed below, we are not persuaded of
error by Appellant's arguments.
As an initial matter, Appellant raises an issue regarding a restriction
requirement and the subsequent cancellation of claim 2 related thereto.
Appeal Br. 4, 9. However, this is a matter reviewable by petition under
37 C.F.R. § 1.181 (see Manual of Patent Examining Procedure (MPEP)
§ § 1002 and 1201) and is thus not within the jurisdiction of the Board. In re
Mindick, 371F.2d892, 894(CCPA1967).
Appellant also argues that "Holder is not capable of performing the
use as a light gage wire structural connector." Appeal Br. 5. In support,
Appellant asserts that Holder's connector is a "butt-splice" connector that "is
basically an assembly of back to back wire-nuts" and provides test results
3
Appeal 2014/009939
Application 13/495,638
regarding "the tensile strength of commercially available wire-nuts to
various types of wire." Id. Appellant concludes that Holder is not capable
of performing the use recited in the claim because "[i]n no case did the
Holder type connector produce a connection strength close to the rated wire
load strength. [In] fact, that type [of] connector did not work at all with hard
steel wire." Id. Appellant also asserts that Holder's connector is not suitable
for structural applications because "[t]he failure mode for a butt-splice made
with this connector is catastrophic break," whereas the desired failure mode
is a gradual slip in load capacity. Id. at 6.
However, we agree with the Examiner that to the extent that Appellant
is arguing that Holder's device is incapable of performing the intended use
recited in the claim preamble, i.e. "for making a quick assembly splice in
light gage structural wire to produce adjustable close tolerance wire lengths
for decorative hanging applications," the preamble does not set forth any
structural limitations for the claim and the body of the claim itself "fully and
intrinsically sets forth all of the limitations of the claimed invention" Ans.
2-3. We also agree that the preamble merely sets forth an intended use of
the invention. Thus, we find that the claim preamble should not be
considered a structural limitation for this claim. See Rowe v. Dror, 112 F.3d
473, 478 (Fed. Cir. 1997) ("where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim limitation.")
Appellant has not otherwise argued that the Examiner's findings
regarding the intended use or functional limitations of claim 1 are in error.
Accordingly, we are not persuaded of error with respect to claim 1, and thus,
we sustain the rejection of claim 1.
4
Appeal 2014/009939
Application 13/495,638
Claim 3
With respect to claim 3, the Examiner relies on the same structure of
Holder and finds that claim 3 merely defines a logical manner of using the
structure defined by claim 1 and "that the recitation with respect to the
manner in which a claimed apparatus is intended to be employed does not
differentiate the claimed apparatus from a prior art apparatus if the prior art
apparatus teaches all the structural limitations of the claim." Final Act. 5.
With respect to this claim, Appellant argues "that the Examiner
brushed over any real consideration of adjustability feature of the RMX3
connector compared to the Holder example." Appeal Br. 7. However, given
that Appellant acknowledges that Holder's device allows for some limited
adjustability, and Appellant describes how Holder's device may be used to
adjust wires, Appellant fails to explain how Holder does not disclose a
device that is capable of adjustment as claimed, as the Examiner finds. See
id.; see also Reply Br. 6. Accordingly, we are not persuaded of error, and
we sustain the rejection of claim 3.
CONCLUSION
For the reasons set forth above, we AFFIRM the rejections of claims
1and3.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
3 We note that Appellant does not expressly indicate what an "RMX
connector" is, but Appellant appears to indicate it is a fastener as described
in the Specification and as allegedly claimed.
5