Ex Parte Wong et al

Patent Trial and Appeal Board

Apr 21, 2014

12334637 (P.T.A.B. Apr. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/334,637 12/15/2008 Kingston Wong 09-793 8638
20306 7590 04/22/2014
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
DANIEL, JAMAL D
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
04/22/2014 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 KINGSTON WONG and RUSSEL GOLDMANN, II
____________________

Appeal 2012-002774
Application 12/334,637
Technology Center 3700
____________________

Before: LYNNE H. BROWNE, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL
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Application 12/334,637

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STATEMENT OF THE CASE
Kingston Wong and Russel Goldmann, II (Appellants) appeal under
35 U.S.C. § 134 from the rejection of claims 1-10 and 13-23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are directed to a reverse marked fish tape. Claims 1, 7,
and 21 are independent; claim 1 is reproduced below:
1. A fish tape comprising:
an elongated member having a leading end, a fixed end
and a length between said ends wherein the fixed end of the
elongated member is attached to a fish tape housing, wherein
the elongated member is sufficiently flexible to bend around
corners and curves;
a plurality of unit line marks on said length; and
a value indicia associated with each mark wherein said
value indicia incrementally increase from said fixed to said
leading ends.

PRIOR ART
Garity
Robell
US 6,070,338
US 6,115,926
Jun. 6, 2000
Sep. 12, 2000
Wiesemann US 2007/0187659 A1 Aug. 16, 2007

GROUNDS OF REJECTION
1. Claims 1, 2, 5-8, 16, 20, and 21 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Garity.
2. Claims 4, 10, 15, 19, and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Garity.
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3. Claims 3 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Garity and Robell.
4. Claims 1, 7, and 13-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wiesemann and Garity.

OPINION
Anticipation
Claims 1, 2, 5, 6, and 16:
With respect to independent claim 1, the Examiner finds, inter alia,
that Garity discloses “a rolled tape member having a leading end, a fixed end
and a length between said ends wherein the fixed end of the elongated
member is attached to a housing and enclosable therein, wherein the
elongated member is sufficiently flexible to bend around corners and
curves.” Ans. 4 (emphasis added).
Appellants argue that “Garity does not disclose an elongated member
that is sufficiently flexible to allow it to bend around corners and curves in a
conduit.” App. Br. 6. In support of this argument, Appellants note that
“Garity is directed to a tape measure ‘where the tape measure 33 is wider
than the standard one inch, in order to prevent kinking and bending while the
tape measure 33 is being moved parallel to the end of the sheetrock.’” App.
Br. 5 (quoting Garity, col. 2, ll. 4-7); Reply Br. 1.
In response to this argument, the Examiner determines that the
limitation “‘rigid enough to be pushed through a conduit, yet flexible enough
to bend around corners and curves’ [is] very broad and qualitative,” and the
Examiner finds that “[t]he tape measure of the relied upon reference is
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certainly capable of being pushed through a large curved conduit such as a
sewage pipe.” Ans. 7.
The Examiner has proffered no evidence that Garity’s “elongated
member is sufficiently flexible to bend around corners” as required by claim
1. Thus, the evidence is insufficient to support a rejection based on
anticipation.
For these reasons, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2, 5, 6, and 16 which depend therefrom, as
anticipated by Garity.
Claims 7 and 8:
Independent claim 7 does not require an elongated member that “is
sufficiently flexible to bend around corners and curves.” Accordingly,
Appellants’ argument discussed supra does not pertain to claim 7.
In addition to this argument, Appellants argue that “Garity is directed
to a tape measure, not a fish tape.” App. Br. 5; Reply Br. 1. We note that
claim 7 recites a fish tape reel assembly including a fish tape housing;
however, a “fish tape” is not recited in the claim.
Appellants have not identified, nor do we discern any appreciable
differences between Garity’s reel assembly and housing and the claimed reel
assembly and housing. Thus, Appellants’ argument is not persuasive.
Appellants further argue that Garity’s device has a different intended
use than the claimed device. App. Br. 6; Reply Br. 1. It is well settled that
the recitation of a new intended use for an old product does not make a claim
to that old product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (“The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from prior art,
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cannot impart patentability to claims to the known composition.”); In re
Sinex, 309 F.2d 488, 492 (CCPA 1962) (statement of intended use in an
apparatus claim failed to distinguish over the prior art apparatus); In re
Hack, 245 F.2d 246, 248 (CCPA 1957) (“the grant of a patent on a
composition or a machine cannot be predicated on a new use of that machine
or composition”); In re Benner, 174 F.2d 938, 942 (CCPA 1949) (“no
provision has been made in the patent statutes for granting a patent upon an
old product based solely upon discovery of a new use for such product”).
Appellants have not apprised us of error in the Examiner’s rejection of
independent claim 7. Accordingly, we sustain the Examiner’s rejection of
claim 7, and claim 8, which depends therefrom and was not argued
separately, as anticipated by Garity.
Claim 20:
Claim 20 recites that “the elongated member is adapted to be
consumable.” Appellants argue that “the Garity tape measure cannot be said
to be ‘adapted to be consumable.’ The tape measure in Garity is specifically
designed not to be cut off during use.” App. Br. 7.
The Examiner determines that “the elongated member of Garity is
inherently consumable since it can be cut with an appropriate tool.” Ans. 4.
The Examiner further determines that “[s]ince the tape measure has indicia
in both directions, it could still be used to measure even after being cut.”
Ans. 8.
We agree and note that Appellants’ Specification does not assign or
suggest a particular definition of the term “consumable” or otherwise
indicate that this term is used in a manner other than its ordinary and
customary meaning. Therefore, in determining the ordinary and customary
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meaning of the claim term “consumable” as viewed by a person of ordinary
skill in the art, it is appropriate to consult a general dictionary definition of
the word for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348
(Fed. Cir. 2010). An ordinary and customary meaning of the word
“consumable” is “capable of being consumed”1 where the ordinary and
customary meaning of the word “consumed” is “to do away with
completely.”2 We further note that the Examiner finds that Garity’s elongate
member would be capable of performing the claimed function (i.e., being
consumed). Ans. 8. Appellant has not provided sufficient evidence or
arguments to establish this finding is in error. See, e.g., In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims directed to an apparatus must
be distinguished from the prior art in terms of structure rather than function).
For these reasons, we sustain the Examiner’s rejection of claim 20 as
anticipated by Garity.
Claim 21:
The Examiner finds that Garity discloses each and every limitation of
independent claim 21. Ans. 4. Appellants contend that “Garity is directed
to a tape measure, not a fish tape.” App. Br. 9; Reply Br. 1. Appellants’
Specification provides the following description of “fish tape:”
A fish tape is an elongated member preferably made of
tempered spring steel, stainless steel, nylon, fiberglass with a
nylon jacket, or multi-stranded steel wire. The fish tape is rigid
enough to be pushed through the conduit, yet flexible enough to
bend around corners or curves which may be inherent in a
particular run of conduit. As the tape needs to be used for long

1 Merriam-Webster.com, © 2014, accessed at http://www.merriam-
webster.com/dictionary/consumable (last visited Apr. 9, 2014).
2 Merriam-Webster.com, © 2014, accessed at http://www.merriam-
webster.com/dictionary/consumed (last visited Apr. 9, 2014).
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distances, it is quite typical to have lengths of up to 240 feet or
more. To make these runs, or possibly even longer runs,
manageable, and to make the storage of the fish tape possible, it
is typically wound about a reel, which may be enclosed by a
housing. One end of the fish tape, the proximal end, is usually
anchored to a stationary or rotatable portion of the reel to keep
it from coming loose. The other, leading (or distal) end of the
fish tape is adapted in some way (e.g. hooked) to readily attach
cable(s) to be pulled by the fish tape through the conduit.
Spec. para. [0003] (emphasis added).
We note that this description does not require that a fish tape be
capable of bending around corners and curves as required by independent
claim 1. We further note that it does not require that the tape have a length
of at least 240 feet, that the tape be stored on a reel, that the reel be enclosed
in a housing, or a hook or other attachment mechanism for attaching the fish
tape to a cable. With this description in mind, we consider Appellants’
contention.
In support of Appellants’ contention that Garity fails to disclose a
“fish tape,” Appellants argue that “Garity is directed to an extra wide tape
measure (preferably 1.5 to 1.75 inches wide) having a short, fixed length. . . .
a fish tape is much more flexible and has a much thinner width than even a
conventional tape measure.” App. Br. 8; see also Reply Br. 1-2.
Appellants’ argument is not persuasive for two reasons. First, the length, the
flexibility, and the width of the elongate member are not recited in
independent claim 21. Second, none of the length of a fish tape, the
flexibility of a fish tape, as compared to a “conventional” tape measure, or
the width of a fish tape are included in the definition of “fish tape” set forth
in Appellants’ Specification. We apply to verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary usage as they
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would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in Appellants’ specification.
In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). Reading a claim in
light of the specification, to thereby interpret limitations explicitly recited in
the claim, is a quite different thing from reading limitations of the
specification into a claim, to thereby narrow the scope of the claim by
implicitly adding disclosed limitations which have no express basis in the
claim. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Although the
claims are interpreted in light of the specification, limitations from the
specification are not read into the claims. In re Van Geuns, 988 F.2d 1181
(Fed. Cir. 1993).
Appellants further argue that “the tape measure of Garity is designed
for measuring and cutting sheetrock of a standard width of four feet.” App.
Br. 10; see also Reply Br. 1. Appellants’ argument is not persuasive. As
discussed supra, a new use for an old product fails to distinguish the product
over the prior art.
In addition, Appellants argue that “the Garity tape measure would not
work for its intended purpose if the end were cut off.” App. Br. 11. In
response to this argument, the Examiner finds that “[i]f the tab at the end of
the tape measure were cut off, the tape measure would still be able to
perform its primary task of measuring.” Ans. 8. We agree and again note
that claims directed to an apparatus must distinguish over the prior art in
terms of structure, as discussed supra.
For these reasons, we sustain the Examiner’s rejection of independent
claim 21 as anticipated by Garity.
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Obviousness
Rejections Based on Garity
Claims 4 and 15:
Appellants argue that “claims 4, 10, 15, and 19 cannot be obvious in
view of Garity because not all elements of the claims are found in Garity or
are obvious from the disclosure of Garity.” App. Br. 12. With respect to
claims 4 and 15, which depend from claim 1, we agree as we have not
sustained the Examiner’s rejection of claim 1. Accordingly, we do not
sustain the Examiner’s rejection of claims 4 and 15 as unpatentable over
Garity.
Claims 10 and 19:
With respect to claims 10 and 19, which depend from claim 7, we
disagree as we have sustained the Examiner’s rejection of independent claim
7. Accordingly, we sustain the Examiner’s rejection of claims 10 and 19 as
unpatentable over Garity.
Claim 23:
Appellants argue that “[c]laim 23 further specifies that there is an
absence of additional numerical markings decreasing from the fixed end to
the leading end like that found on a conventional tape measure. Garity fails
to teach or disclose the absence of such markings.” App. Br. 13; Reply Br.
2.
We agree and note that if these markings were removed from Garity,
the tape measure would not perform the same function as prior to their
removal. Thus, the Examiner’s reason for removing these markings from
Garity lacks rational underpinning.
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For this reason, we do not sustain the Examiner’s rejection of claim
23 as unpatentable over Garity.
Rejections Based on Garity and Robell
Claim 3:
Appellants argue that “because Garity does not anticipate claims 1 and
7 . . . , dependent claims 3 and 9 cannot be obvious in view of Garity
because not all elements of the claims are found in Garity and the addition of
Robell fails to cure this deficiency.” App. Br. 15.
With respect to claim 3, which depends from claim 1, we agree as we
have not sustained the Examiner’s rejection of claim 1. Accordingly, we do
not sustain the Examiner’s rejection of claim 3 as unpatentable over Garity
and Robell.
Claim 9:
With respect to claim 9, which depends from claim 7, we disagree as
we have sustained the Examiner’s rejection of independent claim 7.
Accordingly, we sustain the Examiner’s rejection of claim 9 as unpatentable
over Garity and Robell.
Rejections Based on Wiesemann and Garity
Claims 1, 7, and 13-22
Appellants argue claims 1, 7, and 13-22 as a group. App. Br. 15-17.
We select independent claim 1 as the illustrative claim and claims 7 and 13-
22 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds, inter alia, that Wiesemann discloses a fish tape
and Garity “discloses a tape with indicia increasing from the fixed end to the
free end.” Ans. 6.
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Appellants argue that “[t]here is no suggestion or disclosure that
someone would employ the counter-intuitive approach of the present
invention and provide numerical indicia that increase from the fixed end to
the free end, the direct opposite of the numbering on a conventional tape
measure.” App. Br. 17; see also Reply Br. 3.
Appellants’ argument is not convincing as Garity expressly describes
numerical indicia that increase from the fixed end to the free end, as the
Examiner correctly finds. Ans. 6; see also Garity, Abst. and Fig.
Appellants further argue that “one would not turn to the dual
numbering system of Garity if using a fish tape as a tape measure . . .
because the short tape measure of Garity is specifically designed for use
with fixed length sheetrock, not for use with variable length conduit” and
that “the numbering system on the extra wide tape measure of Garity, with
both ascending and descending numerical indicia, would be too large and
impractical to fit on the small width fish tape of Wiesemann.” App. Br. 17.
Appellants’ arguments are not persuasive because “it is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983). The relevant inquiry is whether the claimed subject matter would
have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). “Combining the teachings of references does not involve an
ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968
(CCPA 1973).
In addition, Appellants argue that “given that the leading end of the
fish tape is sometimes cut off during use, one would not turn to the dual
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numbering system of Garity as the purpose of the dual numbering system in
Garity would be lost if the leading end were cut off.” App. Br. 17.
Appellants’ argument is not persuasive. Appellants have not
explained why it would be any more difficult to use Garity’s numbering
system if the leading end were cut off, than the numbering system described
in the instant Specification. Moreover, a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate any or all reasons to combine teachings. See Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”). In the instant case, Appellants have not
provided evidence or persuasive argument that the disadvantages of Garity’s
dual numbering system outweigh its benefits.
For these reasons, we sustain the Examiner’s rejection of claim 1, and
claims 7 and 13-22 which fall therewith, as unpatentable over Wiesemann
and Garity.

DECISION
The Examiner’s rejection of claims 1, 2, 5, 6, and 16 as anticipated by
Garity is REVERSED.
The Examiner’s rejection of claims 4, 15, and 23 as unpatentable over
Garity is REVERSED.
The Examiner’s rejection of claim 3 as unpatentable over Garity and
Robell is REVERSED.
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The Examiner’s rejection of claims 7, 8, 20, and 21 as anticipated by
Garity is AFFIRMED.
The Examiner’s rejection of claims 10 and 19 as unpatentable over
Garity is AFFIRMED.
The Examiner’s rejection of claim 9 as unpatentable over Garity and
Robell is AFFIRMED.
The Examiner’s rejection of claims 1, 7, and 13-22 as unpatentable
over Wiesemann and Garity is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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