Ex Parte MURG

Board of Patent Appeals and Interferences

Nov 26, 2002

09185493 (B.P.A.I. Nov. 26, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LEONARD R. MURG
____________
Appeal No. 2002-1888
Application No. 09/185,493
____________
HEARD: NOVEMBER 6, 2002
____________
Before COHEN, STAAB, and McQUADE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 6, 9,
11, 13 through 15, and 19 through 21. These claims constitute
all of the claims remaining in the application. We REVERSE and
REMAND.
Appellant’s invention pertains to a plier type cutter tool
for sheathed cable of the type having a spaced pair of insulated
power conducting wires, a ground wire disposed between the
insulated wires and a sheath surrounding the wires. A basic
Appeal No. 2002-1888
Application No. 09/185,493
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understanding of the invention can be derived from a reading of
exemplary claim 19, a copy of which appears in the APPENDIX to
the revised brief (Paper No. 24).
As evidence of anticipation, the examiner has applied the
document specified below:
Brimmer 5,669,132 Sep. 23, 1997
The following rejections are before us for review.
Claims 6, 9, 11, 13 through 15, and 19 through 21 stand
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claims 6, 9, 11, 13 through 15, and 19 through 21 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by
Brimmer.
The full text of the examiner’s rejections and response to
the argument presented by appellant appears in the final
rejection and the answer (Paper Nos. 17 and 25), while the
Appeal No. 2002-1888
Application No. 09/185,493
1 For consistency, the word --tool-- should be inserted
after “cutter” in claim 19, lines 3 and 15.
3
complete statement of appellant’s argument can be found in the
revised brief (Paper No. 24).
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims,1 the applied prior art
document, and the respective viewpoints of appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
We do not sustain the rejection of claims 6, 9, 11, 13
through 15, and 19 through 21 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
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Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the metes
and bounds of a claimed invention with a reasonable degree of
precision and particularity. See In re Venezia, 530 F.2d 956,
958 189 USPQ 149, 151 (CCPA 1976).
The examiner is of the view that claim 19 is indefinite due
to inconsistent recitations therein. In particular, the examiner
points out that, inconsistent with the claim preamble which
addresses a “plier type cutter tool” for sheathed cable, the body
of the claim positively requires structure of the cable (answer,
page 3). We fully appreciate the examiner’s position, but
disagree therewith for the reasons articulated below.
As we see it, the references in claim 19 to cable structure
are fairly considered and understood to relate to the indicated
intended use of the tool as an assist in defining specified
portions of the tool that coact with the cable during the
intended use. Thus, claim 19 is not indefinite.
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Application No. 09/185,493
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The anticipation issue
We do not sustain the rejection of claims 6, 9, 11, 13
through 15, and 19 through 21 under 35 U.S.C. § 102(b) as being
anticipated by Brimmer.
Anticipation under 35 U.S.C. § 102(b) is established only
when a single prior art reference discloses, either expressly or
under principles of inherency, each and every element of a
claimed invention. See In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); and RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). However, the law of
anticipation does not require that the reference teach
specifically what an appellant has disclosed and is claiming but
only that the claims on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in
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Application No. 09/185,493
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the reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
Independent claim 19 sets forth a plier type cutter tool for
sheathed cable of the type having a spaced pair of insulated
power conducting wires, a ground wire disposed between the
insulated wires and a sheath surrounding the wires, the cutter
comprising, inter alia, jaw portions each having blade sections
for coactively circumferentially severing a cable sheath, with
each blade section having a set of three aligned cutting parts of
a cutting edge, spaced end ones of the parts being contoured to
completely sever a sheath from side portions of the sheath,
central ones of the parts being adapted to sever a sheath central
portion, the cutter being designed to cut such that a sheath is
circumferentially severed.
The examiner views the applied Brimmer patent as
anticipatory. This patent is expressly described by appellant in
the present specification (page 1) as being a stripper tool that
is specifically designed to not cut the outer edges of an outer
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electrical cable sheath. Our reading of the Brimmer patent
(column 6, lines 2 through 5) likewise indicates to us that the
patentee clearly provided for knife blades 26C and 28C of cutting
edges 26 and 28 to “sever the outer sheath 52 of the cable 50
everywhere except the extreme opposed sides 52C of the sheath 52
(Fig. 3).” Based upon the above unambiguous teachings of
Brimmer, it is quite apparent to us that this document does not
anticipate the now claimed cutter tool which includes jaw
portions to circumferentially sever a cable sheath. Since the
Brimmer reference provides blades that do not sever the extreme
opposed sides of a sheath, it would be speculative as to what
effect the Brimmer tool would have on a larger cable sheath than
that contemplated by the patentee (answer, page 5). For the
above reasons, the anticipation rejection is not sustained.
REMAND TO THE EXAMINER
We remand this application to the examiner to consider the
patentability of the claimed subject matter based upon the
combined tool teachings of Brimmer, Miller (of record in the
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Application No. 09/185,493
2 U.S. Patent No. 1,800,317 to Ries et al (Ries), a copy of
which is appended to this decision.
8
application), and Ries2. While Brimmer reveals the tool
alternative in the art of not completely severing a sheath, each
of the Miller and Ries patents evidence the knowledge in the art
of the tool alternative of completely severing a sheath. The
examiner should determine whether it would have been obvious to
one having ordinary skill in the art, when appellant’s invention
was made, to configure the knife blades of Brimmer to effect a
complete sheath severing in light of the known alternative in the
art of complete sheath severing, as taught by each of Miller and
Ries.
In summary, this panel of the board has reversed each of the
rejections on appeal, and remanded the application for
consideration of the matter discussed above.
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The decision of the examiner is reversed.
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
ICC:pgg
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