Ex Parte Pickett, Jr. et al

Board of Patent Appeals and Interferences

Apr 30, 2004

09684210 (B.P.A.I. Apr. 30, 2004)

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not written for publication and is not binding precedent of the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. 22

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL MATTHEWS PICKETT, JR.
and
DANIEL SHELTON
__________

Appeal No. 2004-0917
Application No. 09/684,210
___________

ON BRIEF
___________

Before OWENS, DELMENDO, and PAWLIKOWSKI, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 1, 4
through 10, and 12 through 17 in the above-identified
application. Claims 3 and 11, which are the only other pending
claims, have been objected to as being dependent upon a rejected
base claim but have been indicated as allowable if rewritten in
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Application No. 09/684,210

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independent form including all the limitations of the base claim
and any intervening claims.
The subject matter on appeal relates to an alignment device
for aligning a conduit within a conduit port of a housing
(claims 1 and 4 through 8), a conduit connection (claims 9, 10,
and 12 through 16), and a method for connecting and aligning a
conduit within a conduit port of a housing (claim 17).
According to the appellants, the alignment device of the present
invention “assures an efficient and reliable connection between
a conduit connected to a housing of an air-conditioning
component for a vehicle, in order to squarely align a relatively
short conduit end within a conduit port of the housing.”
(Specification, page 1, lines 4-9.) Further details of this
appealed subject matter are recited in representative claims 1
and 4 reproduced below:
1. An alignment device for aligning a conduit
within a conduit port of a housing, said alignment
device comprising:
a connecting block comprising a conduit passage
and a fastener passage laterally offset from said
conduit passage, said conduit being mounted in said
conduit passage;
a fastener having one end mounted into said
fastener passage of said connecting block; and
means for aligning said conduit in said conduit
port of said housing, said means for aligning
comprising an alignment sleeve interposed said
connecting block and said fastener [sic] and secured
to said fastener, whereby as said connecting block is
mounted to said housing said conduit is mounted to
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said conduit port and said alignment sleeve pilots
said fastener into said fastener passage of said
connecting block to align said conduit axially within
said conduit port.

4. The alignment device as claimed in Claim 1,
wherein said alignment sleeve is chamfered to enable
easier assembly of said connecting block thereover.

The examiner relies on the following documents as evidence
of unpatentability:
Stendahl 1,409,606 Mar. 14, 1922

Le et al. 5,603,152 Feb. 18, 1997
(Le)

Pickett, Jr. et al. 6,193,283 B1 Feb. 27, 2001
(Pickett)

The appealed claims stand rejected as follows:
I. claims 1, 6, 7, 9, 14, and 15 under the judicially
created doctrine of obviousness-type double patenting
as unpatentable over patented claim 3 of Pickett
(examiner’s answer mailed Jul. 30, 2003, paper 18,
page 6);
II. claims 4, 5, 12, and 13 under the judicially created
doctrine of obviousness-type double patenting as
unpatentable over patented claim 4 of Pickett in view
of Stendahl (id. at page 7);
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III. claim 8 under the judicially created doctrine of
obviousness-type double patenting as unpatentable over
patented claim 4 of Pickett (id.);
IV. claim 10 under the judicially created doctrine of
obviousness-type double patenting as unpatentable over
patented claim 3 of Pickett in view of Le (id.);
V. claim 16 under the judicially created doctrine of
obviousness-type double patenting as unpatentable over
patented claims 3 and 4 of Pickett (id.); and
VI. claim 17 under the judicially created doctrine of
obviousness-type double patenting as unpatentable over
patented claim 12 of Pickett (id.).
We affirm these rejections.1
The judicially-created doctrine of obviousness-type double
patenting prohibits a party from obtaining an extension of the
right to exclude granted through claims in a later patent that
are not patentably distinct from claims in a commonly-owned
earlier patent. Ely Lilly & Co. v. Barr Laboratories, Inc., 251
F.3d 955, 967, 58 USPQ2d 1869, 1877-78 (Fed. Cir. 2001)(citing

1 The appellants submit: “For each ground of rejection that
applies to more than one claim, such additional claims, to the
extent separately identified and argued below, do not stand or
fall together.” (Substitute appeal brief filed Apr. 21, 2003,
paper 17, p. 5.) We will consider claims separately to the
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In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir.
1985)). According to our reviewing court, the fundamental
reason for the doctrine of obviousness-type double patenting is
to prevent unjustified timewise extension of the right to
exclude granted by a patent, regardless of how the extension
arose. Ely Lilly, 251 F.3d at 967-968, 58 USPQ2d at 1878.
Pickett’s patented claims 1 through 5 and 12 recite:
1. A conduit connection, comprising:
a housing having a fastener port and a conduit
port offset from said fastener port;
a conduit having an annular bead spaced a
predetermined distance from one end, said one end
being inserted into said conduit port of said housing;
a connecting block abutting said housing, said
connecting block comprising:
a conduit passage therethrough, said conduit
located into said conduit passage such that said
annular bead of said conduit is trapped between said
connecting block and said housing;
a fastener passage therethrough, said fastener
passage being offset from said conduit passage; and
an engagement surface thereon;
means for fastening said connecting block to said
housing, said means for fastening mounted in said
fastener passage of said connecting block and said
fastener port of said housing; and
means for indicating full engagement of said
connecting block to said housing, said means for
indicating being interposed between said means for
fastening and said fastener passage of said connecting
block, said means for indicating communicating with
said means for fastening and said engagement surface
of said connecting block to provide visible, audible,
and tactile verification that said connecting block is
fully engaged with said housing.

extent they have been argued as separately patentable within the
meaning of 37 CFR § 1.192(c)(7)(2003)(effective Apr. 21, 1995).
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2. The conduit connection as claimed in claim 1,
wherein said means for a fastening comprises:
a threaded stud threaded into said fastener port
of said housing; and
a nut threaded onto said threaded stud;
whereby said nut is torqued down on said threaded
stud and against said connecting block to complete
assembly of said conduit connection; and
said means for indicating comprises:
an engagement device locked to a portion of said
threaded stud in order to hold said engagement device
relative to said housing, said engagement device
comprising a locking portion at one end thereof for
engaging said engagement surface of said connecting
block;
whereby said locking portion of said engagement
device engages said engagement surface of said
connecting block to trap said connecting block between
said locking portion of said engagement device and
said housing, such that said locking portion holds
said connecting block relative to said housing, and
further such that upon engagement of said connecting
block to said housing said locking portion of said
engagement device expands against said engagement
surface of said connecting block to provide visible,
audible, and tactile verification that said connecting
block is completely engaged with said housing.

3. The conduit connection as claimed in claim 2,
wherein said threaded stud further comprises a
recessed portion thereon, said engagement device
circumscribing said recessed portion.

4. The conduit connection as claimed in claim 2,
wherein said engagement device is composed of a
resilient nylon material.

5. The conduit connection as claimed in claim 2,
wherein said engagement device is composed of a
resilient metal material.

12. A method of connecting a conduit having an
annular bead to a component to form a conduit
connection, said method comprising the steps of:
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providing a connecting block comprising an
engagement surface thereon, said connecting block
further comprising a conduit passage therethrough and
a fastener passage therethrough and offset from said
conduit passage, said conduit passage receiving said
conduit therethrough;
providing a conduit port and a fastener port
offset from said conduit port in said component;
releasably securing a threaded stud within said
fastener port of said component, said threaded stud
comprising an engagement device locked therearound to
a portion thereof, said engagement device having a
locking portion thereon;
mounting said fastener passage over said
engagement device;
assembling said connecting block to said
component by inserting said conduit into said conduit
port of said component to trap said annular bead of
said conduit between said connecting block and said
component;
verifying that said locking portion of said
engagement device engages said engagement surface of
said connecting block to trap said connecting block
between said locking portion of said engagement device
and said component, such that upon engagement of said
connecting block to said component, said locking
portion of said engagement device expands against said
engagement surface of said connecting block to provide
visible, audible, and tactile verification that said
conduit connection is completely engaged; and
releasably securing a nut to said threaded stud
to fasten said connecting block to said component to
complete connecting said conduit to said component.

The appellants do not dispute that Pickett’s patented
claims describe the connecting block and fastener elements
specified in appealed claim 1. (See, e.g., column 6, lines 4-12
and Figures 2-7.) Rather, the appellants’ principal argument in
this appeal is that Pickett’s engagement device is not an
alignment device. (Substitute appeal brief, pages 7-8.)
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We cannot agree with the appellants. The appellants’
recited “means for aligning said conduit in said conduit port of
said housing” comprises an alignment sleeve 60 that is
interposed between the connecting block 130 and the fastener 70.
(Figure 4.) According to the appellants, “[l]eakage can occur
in conditions where the connecting block and conduit are not
properly aligned to the housing.” (Specification, page 2, lines
8-10.) The alignment means is said to “ensure[] square
alignment between the connecting block and conduit and the
housing to reduce the potential for refrigerant leaks and
therefore expensive damage to automotive air-conditioning
equipment.” (Specification, page 3, line 23 to page 4, line 3.)
Like the appellants, Pickett discloses that “[c]antilevered
block connections may leak due to incomplete engagement,” e.g.,
where conduit 12P and connecting block 60P tend to misalign
cross-axially relative to conduit port 44P in a housing 40P.
(Column 1, lines 41-62; Figure 1.) As a solution to this
problem, Pickett claims an engagement device (20, 120, 220),
which “provide[s] visible, audible, and tactile verification
that a cantilevered conduit connection is fully engaged wherein
a conduit is mounted squarely within a conduit port of the
housing” and “assists in fastening a connecting block to a
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housing by trapping the connecting block between the engagement
device and the housing.” (Column 2, lines 52-61.)
Given the structural and functional similarities between
the appellants’ recited alignment sleeve 60 and the engagement
device recited in Pickett’s claims, it would reasonably appear
that Pickett’s patented engagement device would necessarily or
inherently perform the same alignment function recited in
appealed claim 1. Cf. In re Schreiber, 128 F.3d 1473, 1478, 44
USPQ2d 1429, 1432 (Fed. Cir. 1997) (“[C]hoosing to define an
element functionally, i.e., by what it does, carries with it a
risk...[W]here the Patent Office [PTO] has reason to believe
that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in fact,
be an inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the
characteristic relied on.”); accord In re Fitzgerald, 619 F.2d
67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Whether the
rejection is based on inherency under 35 U.S.C. § 102 or on
obviousness under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by
the PTO’s inability to manufacture products or to obtain and
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compare prior art products. In re Best, 562 F.2d at 1255, 195
USPQ at 433-34.
The appellants argue that “any alignment or misalignment
between the conduit 12 and the conduit port 244 [in Pickett’s
Figure 7] occurs before the fastener passage 68 comes into
contact with the engagement device 220” and that there is a
clearance between the outer diameter of the body portion of the
engagement device 220 and the fastener passage 68. (Substitute
appeal brief, page 13; see also reply brief filed Oct. 6, 2003,
paper 19, page 4.) Regarding these arguments, we agree with and
therefore refer to the examiner’s reasoning on page 10 of the
answer. Moreover, even if we accept the appellants’ argument
that “there is absolutely no communication between the fastener
passage 68 and the outside diameter of the engagement device
when the assembly is completed” (emphasis added), appealed claim
1 fails to recite any limitation that would serve to distinguish
over the prior art device.
With respect to appealed claim 4, the appellants contend
that the examiner “does not make clear how or where the collar
15 taught by Stendahl could be combined with the teachings of
Pickett...” (Substitute appeal brief, page 15.) This argument
is unpersuasive. The examiner has identified some motivation or
a suggestion in the prior art to use an engagement device that
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is chamfered. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated
into the structure of the primary reference” but rather “what
the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
The appellants make the same principal argument for
rejections III through VI. Accordingly, we affirm these
rejections for the same reasons discussed above.
For these reasons and those set forth in the answer, we
affirm the examiner’s rejections under the judicially created
doctrine of obviousness-type double patenting of: (i) claims 1,
6, 7, 9, 14, and 15 as unpatentable over patented claim 3 of
Pickett; (ii) claims 4, 5, 12, and 13 as unpatentable over
patented claim 4 of Pickett in view of Stendahl; (iii) claim 8
as unpatentable over patented claim 4 of Pickett; (iv) claim 10
as unpatentable over patented claim 3 of Pickett in view of Le;
(v) claim 16 as unpatentable over patented claims 3 and 4 of
Pickett; and (vi) claim 17 as unpatentable over patented claim
12 of Pickett.
The decision of the examiner is affirmed.

Appeal No. 2004-0917
Application No. 09/684,210

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Terry J. Owens )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )

RHD/kis
Appeal No. 2004-0917
Application No. 09/684,210

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755 W BIG BEAVER RD
STE 1313
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