Ex Parte Parsons

Board of Patent Appeals and Interferences

Aug 22, 2002

09122022 (B.P.A.I. Aug. 22, 2002)

1 Claims 1 and 7 have been amended subsequent to final
rejection.
1
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not written for publication and is not binding precedent of the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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KEVIN L. PARSONS
__________
Appeal No. 2002-1038
Application 09/122,022
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Kevin L. Parsons appeals from the final rejection of claims
1 through 36, all of the claims pending in the application.1
THE INVENTION
The invention relates to “expandable batons for use by law
enforcement personnel and is specifically directed to a formed
handle cover for such batons” (specification, page 2).
Representative claims 1 and 7 read as follows:
Appeal No. 2002-1038
Application 09/122,022
2
1. A handle in combination with an expandable baton, the
handle comprising:
a hollow cylindrical tube having a plurality of square-cut
grooves about a portion thereof, each groove having a groove
diameter less than an outer diameter of the tube adjacent said
groove; and
a cover attached to the tube having an internal diameter
approximately equal to the outer diameter of the tube, wherein
the cover conforms to an outer surface of the tube;
whereby each groove of the tube cooperates with a ridge
located on the internal diameter of the cover and having a
diameter approximately equal to the groove diameter, and where
the cover is constructed of a material such that the diameter of
the ridge cannot stretch or expand to a size of the outer
diameter of the tube thereby preventing the cover from moving
relative to the tube during expanding or collapsing of the baton.
7. A handle in combination with an expandable baton having
at least one member telescopingly mounted in the handle, wherein
the telescoping member includes an enlarged outer end which is
seated in the handle when the telescoping member is nestled in
the handle, the handle comprising:
a hollow cylindrical tube;
a cover attached to the tube, the cover conforming to an
outer surface of the tube; and
means for preventing the cover from moving relative to the
tube during expanding or collapsing of the baton.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Zimmerman 1,165,484 Dec. 28, 1915
Hemming 1,685,588 Sep. 25, 1928
Parsons 5,110,375 May 5, 1992
Beere et al. (Beere) 5,551,323 Sep. 3, 1996
THE REJECTION
Appeal No. 2002-1038
Application 09/122,022
3
Claims 1 through 36 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Parsons in view of Zimmerman, Hemming
and Beere.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 17 and 19) and to the examiner’s answer (Paper
No. 18) for the respective positions of the appellant and the
examiner with regard to the merits of this rejection.
DISCUSSION
Parsons, the examiner’s primary reference, discloses an
expandable baton 1 composed of a main section 2, which serves as
a handle, and two telescoping sections 10 and 11 (see Figures 1
and 2). The main section 2 is formed from a hollow tube and “is
covered by a padding material 3 to provide a comfortable, secure
grip (column 3, lines 50 and 51).
Implicit in the examiner’s explanation of the appealed
rejection (see pages 4 and 5 in the answer) is the concession
that Parsons fails to respond to a number of limitations in
independent claims 1, 7 and 17. To cure these admitted
deficiencies, the examiner turns to Zimmerman, Hemming and Beere.
The threshold issue in the appeal is whether these secondary
references are non-analogous art as urged by the appellant (see,
for example, page 2 in the reply brief).
Appeal No. 2002-1038
Application 09/122,022
4
Zimmerman discloses a grip-enhancing covering for non-slip
application to the handle of a baseball bat, which covering can
also be adapted for application to the handles of tennis rackets,
cricket bats, golf clubs, portable flag poles, cranks and all
kinds of tools (see page 1, lines 79 through 86). The covering A
consists of a rubber tube having a closed end and a diameter
slightly smaller than that of the bat handle to which it is to be
applied. Zimmerman teaches that
[i]n order to positively secure the tube upon the
handle I provide a special fastening means which
consists in circumferentially grooving the bat handle
adjacent the heel thereof as shown at C and providing a
circumferential lug D upon the inside of the tube
adjacent the closed end thereof. When the tube is
applied to the handle and the lug engages within the
groove it will be impossible to withdraw the same
unless cut [page 1, lines 58 through 67].
Hemming discloses a piece of cutlery composed of a blade 1
including a tang 2 about which is molded a bolster 3 having a
tail piece 4, and a hard rubber handle 6 having a bore 5 adapted
to receive the tang and bolster. According to Hemming,
[i]t will readily be seen that when the rubber handle
is brought in contact with hot water, it will both
soften and expand and lose its holding grip on the tail
piece of the bolster.
To overcome this trouble, a properly shaped tool,
not shown, is inserted in the bore 5, Figure 4, to form
the circumferential grooves 8, see also Figure 2,
larger than the bore 5. The tang 2 of the blade is
then inserted in the bore of the handle 6, and said
handle enclosed in the conventional two-part mold 9,
Appeal No. 2002-1038
Application 09/122,022
5
Figure 6. This mold has the opening 10 through which
fusible metal is admitted to form the bolster 3, its
tail piece 4 and the ribs 11, which ribs, filling the
lateral branches or grooves 8, will, when the metal has
cooled, form a perfect anchorage to prevent accidental
withdrawal of said tail piece 4 from the handle [page
1, lines 53 through 72].
Beere discloses a surgical screwdriver handle 10 comprising
a solid metallic core piece 19 and an elastomeric silicone rubber
gripping cover 26. As explained by Beere,
[t]he cover 26 is applied to the core piece 19 in
a molding process and of course molten form to where it
hardens to a rubbery condition which adheres to the
core 19. In the molding process, the elastomer is
caused to flow into grooves 27 extending around and
throughout the length of the core piece 19, as shown in
FIG. 3. . . . As seen in FIG. 3, the groove 27 is
actually one continuous spiral groove from the butt end
22 to the head or cylindrical end 21, and the width of
the grooves 27 is approximately one third of the lands
designated 28 and extending circularly between every
two grooves 27. Thus, in the total length of the core
piece 19, and that may be a length of approximately 4
inches, there are twenty grooves 27 seen on each of the
side elevational view[s] of the core piece 19. FIGS. 9
and 10 show enlarged views of a fragment of the piece
19 and those views particularly show the grooves 27
which are shown to be undercut so that the groove base
29 is wider than the opening of the groove at the
curved surfaces 23 and 24, as particularly seen in FIG.
10. Thus, the molten cover material 26 will flow into
the groove 27 and fill the groove so that the undercut
or wedge-shape groove 27 will trap the portion 31 of
the cover material in the groove 27. With that
arrangement, the cover is secured to the core piece 19
without the need of cement or the like. Thus, the
cover 26 is completely secure and stable on the core 19
and the user can hand grip the cover 26 and apply
rotation torque without having the cover 26 slip
relative to the core piece 19 since the two become
integral by means of the grooving 27 and particularly
Appeal No. 2002-1038
Application 09/122,022
6
the undercut or extended dimension 29 of the groove 27
and the complete filling of the groove 27 by means of
the cover material at 31 [column 2, line 64, through
column 3, line 30].
In an obviousness determination under 35 U.S.C. § 103(a),
art which is non-analogous is too remote to be treated as prior
art. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992). There are two criteria for determining whether
art is analogous: (1) whether the art is from the field of the
inventor’s endeavor, regardless of the problem addressed, and (2)
if the art is not within the field of the inventor’s endeavor,
whether it is reasonably pertinent to the particular problem with
which the inventor was involved. Id.
The specification in the instant application indicates that
the field of the appellant’s endeavor is expandable batons and
handle covers therefor (see page 1), and that the particular
problem with which the appellant was involved was to prevent the
cover from slipping relative to the handle (see pages 4 and 5).
Although Zimmerman, Hemming and Beere are not within this field
of endeavor, they certainly are reasonably pertinent to this
particular problem. Thus, each constitutes analogous art which
was properly considered by the examiner in combination with
Appeal No. 2002-1038
Application 09/122,022
7
Parsons in assessing the obviousness of the subject matter
recited in the appealed claims.
One of the shortcomings of Parsons relative to the claimed
subject matter is a lack of response to the limitation in
independent claim 1, and the corresponding limitation in
independent method claim 17, requiring the cover to be
“constructed of a material such that the diameter of the ridge
cannot stretch or expand to a size of the outer diameter of the
tube.” The examiner’s reliance on Zimmerman as being suggestive
of this feature (see pages 7 through 9 in the answer) is not well
founded. As the diameter of Zimmerman’s rubber tubular covering
A is slightly smaller than that of the handle to which it is to
be applied, the diameter of the covering, and more specifically
the diameter of its ridge or lug D, necessarily must be capable
of stretching or expanding to a size of the outer diameter of the
handle in order to allow the covering to be properly positioned
on the handle with the ridge or lug D in groove C. The examiner
offers no evidence or cogent explanation in support of the
assertion (see page 8 in the answer) that this capability would
somehow vanish once the covering is disposed on the handle. It
simply does not follow from Zimmerman’s description of the
covering as not being removable from the handle without cutting
Appeal No. 2002-1038
Application 09/122,022
2 35 U.S.C. § 112, sixth paragraph, states in pertinent part
that “[a]n element in a claim for a combination may be expressed
as a means . . . for performing a specified function without the
recital of structure . . . in support thereof, and such claim
shall be construed to cover the corresponding structure . . .
described in the specification and equivalents thereof.”
8
that the covering “cannot stretch or expand” as recited in claims
1 and 17.
Since Hemming and Beere ostensibly do not overcome the
foregoing flaw in the Parsons-Zimmerman combination, we shall not
sustain the standing 35 U.S.C. § 103(a) rejection of independent
claims 1 and 17, and dependent claims 2 through 6 and 18 through
36, as being unpatentable over Parsons in view of Zimmerman,
Hemming and Beere.
We shall sustain, however, the standing 35 U.S.C. § 103(a)
rejection of claims 7 through 16 as being unpatentable over
Parsons in view of Zimmerman, Hemming and Beere.
Parsons meets all of the limitations in independent claim 7
except for the one calling for “means for preventing the cover
from moving relative to the tube during expanding or collapsing
of the baton.” This means-plus-function recitation, construed as
it must be under 35 U.S.C. § 112, sixth paragraph,2 covers the
corresponding structure described in the appellant’s
specification, i.e., at least one groove on the tube and a mating
Appeal No. 2002-1038
Application 09/122,022
9
ridge on the cover, and equivalents thereof. In this regard, the
specification states that “[t]he grooves are designed to prevent
the cover from slipping or moving relative to the baton handle
during the extending or retracting actions” (page 6), and “[t]he
mating relationship between the circumferential grooves 119 and
the ridges 124 functions to prevent the cover 122 from slipping
or moving relative to the baton handle during the extending or
retracting actions” (specification, page 12). The specification
says nothing about the grooves and ridges being “square,” and
thus does not support the appellant’s contention that “[t]he
‘means’ [in claim 7] is the square ridges on the cover that mate
with grooves of the tube to prevent the cover from moving” (main
brief, page 10).
The collective teachings of Zimmerman and Beere that handle
covers similar to the one disclosed by Parsons can be positively
secured to their handles via interlocking grooves on the handle
and ridges on the cover to avert slippage would have furnished
the artisan with ample suggestion or motivation to provide
Parson’s baton handle tube and cover with such means for
preventing the cover from moving relative to the tube during
expanding or collapsing of the baton. Beere additionally would
have suggested the provision of grooves at both ends of Parson’s
Appeal No. 2002-1038
Application 09/122,022
10
handle tube as recited in dependent claim 12 for the self-evident
purpose of enhancing their movement-preventing function.
Although Beere’s groove 27 is actually one continuous spiral
groove, Beere makes it clear that this spiral groove in effect
embodies a plurality (twenty) of grooves. Furthermore, while the
appellant may be correct that the forces acting on Zimmerman’s
bat or Beere’s screwdriver which tend to cause cover slippage
differ from those acting on Parson’s baton, it is not apparent,
nor has the appellant persuasively pointed out, why this
circumstance would have deterred the artisan from appreciating
the non-slip benefits touted by Zimmerman and Beere as being
applicable to Parsons’ baton handle cover.
Hence, the appellant’s position that the reference
combination relied on by the examiner rests on impermissible
hindsight and does not account for all the limitations in the
claims is unconvincing, at least insofar as claims 7 and 12 are
concerned. To the contrary, the combined teachings of these
references support the examiner’s determination that the
differences between the subject matter recited in claims 7 and 12
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a
person having ordinary skill in the art. Dependent claims 8
Appeal No. 2002-1038
Application 09/122,022
11
through 11 and 13 through 16 fall with parent claim 7 since the
appellant has grouped them together for purposes of the appeal
(see page 4 in the main brief).
SUMMARY
The decision of the examiner to reject claims 1 through 36
is affirmed with respect to claims 7 through 16, and reversed
with respect to 1 through 6 and 17 through 36.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
Appeal No. 2002-1038
Application 09/122,022
12
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
RICHARD L. WOOD, ESQ.
WELSH & KATZ, LTD.
120 SOUTH RIVERSIDE PLAZA
22 FLOOR
CHICAGO, IL 60606