Ex Parte 7882886 et al

Patent Trial and Appeal Board

Jan 12, 2015

95001830 (P.T.A.B. Jan. 12, 2015)

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.
95/001,830 11/18/2011 7882886 652192800100 7502
30010 7590 01/12/2015
The Jackson Patent Group, LLC
1500 Forest Avenue, Suite 212
RICHMOND, VA 23229
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
01/12/2015 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
____________

BRIDGEPORT FITTINGS INC.,
Requester and Appellant,

v.

Patent of ARLINGTON INDUSTRIES, INC.,
Patent Owner and Respondent
____________

Appeal 2014-003387
Reexamination Control 95/001,830
Patent 7,882,886 B1
Technology Center 3900
____________

Before MARK NAGUMO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Third-Party Requester Bridgeport Fittings, Inc. (“Requester”) appeals
under 35 U.S.C. §§ 134(c) and 315(b) (pre-AIA) from the Examiner’s
decision not to reject claims 1-13 on various grounds proposed by
Requester.1 Patent Owner Arlington Industries, Inc. urges that the
Examiner’s decision must be affirmed.2 We have jurisdiction under 35
U.S.C. §§ 134(c) and 315(b) (pre-AIA).
We AFFIRM.

STATEMENT OF THE CASE
United States Patent 7,882,886 B1 (hereinafter the “’886 Patent”),
which is the subject of the current inter partes reexamination, issued to
Thomas J. Gretz on February 8, 2011, based on Application No. 12/080,482,
which was filed on April 3, 2008. The ’886 Patent is related to Patent
7,954,538 B1 (hereinafter the “’538 Patent”), which is based on Application
No. 12/931,644, filed February 7, 2011. Application No. 12/931,644 was
filed as a continuation of Application No. 12/080,482. The ’538 Patent is
the subject of inter partes reexamination 95/001,829 and is also on appeal to
the Board (Appeal No. 2014-003316).
We heard oral argument in the present and related appeal on August
13, 2014, a transcript of which was entered into the electronic record on
September 19, 2014.

1 See Requester’s Appeal Brief filed April 19, 2013, hereinafter “App. Br.,”
at 1; Requester’s Rebuttal Brief filed September 20, 2013, hereinafter “Reb.
Br.,” Examiner’s Answer mailed August 16, 2013, hereinafter “Ans.,” Right
of Appeal Notice mailed January 17, 2013, hereinafter “RAN.”
2 See Patent Owner’s Respondent Brief filed May 20, 2013, hereinafter
“Resp. Br.”
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Claim 1, which is illustrative of the appealed subject matter, reads as
follows (with underlining and bracketing showing additions and deletions,
respectively, relative to the originally issued claims):
1. A coring system for producing a die-cast or injection
molded flash free one-piece connector body for securing
electrical cables to a panel comprising:
a first core including a base portion with a tubular nose
portion integral with and extending therefrom, said nose portion
including an end thereon;
two grooves on opposing sides of said tubular nose
portion of said first core, said grooves forming a narrow end
portion, each of said grooves extending from said end toward
said base portion and terminating in a shoulder;
a second core including a common base portion and two
parallel and [generally tubular] cylindrical fingers extending
from said base portion to an end;
an open channel between said fingers; and
said first core and said second core engaged together in
such a manner that said narrow end portion of said first core is
fully extended into said channel on said second core and said
end of said fingers of said second core engage said shoulders on
said first core,
whereby said engaged cores are capable of being inserted
in the cavity of a mold that is capable of being closed and
having molten metal or plastic admitted therein into said cavity
thereby producing said flash free one-piece connector body.
(App. Br., Claims App’x.)
Claim 8 recites a method of producing a one-piece connector body
employing a coring system having a first core and a second core. Id.

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The ’886 Patent states that the invention relates to a system for
producing an electrical fitting for connecting electrical cables to a panel or
an electrical box. (’886 Patent, col. 1, ll. 5-10.) More specifically, the ’886
Patent teaches that the invention relates to a coring system that is said to
form a one-piece flash-free connector body in a manner that decreases the
complexity and cost of the connector body. (’886 Patent, col. 1, l. 63 – col.
2, l. 10.) An embodiment of the invention is shown in Figure 11 of the ’886
Patent, which is reproduced below:

Figure 11 depicted above is an exploded perspective view of a coring
system 86 described in the ’886 Patent. 3 The coring system 86 is composed
of a first core 50 and a second core 52. The first core 50 includes a base
portion 54, a nose portion 56 (unlabeled) extending from the base 54, an end
58, two grooves 60 on opposite sides of the nose portion 56, terminating in
shoulder 64. The second core 52 includes base portion 66 and two parallel

3 Descriptions of drawings, Figs. 5 through 12, ’886 Patent col.2, l. 60
through col. 3, l. 8, appear to be mislabeled.
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fingers 68 that terminate in ends 70. An open channel 74 is provided
between the fingers 68. (See ’886 Patent, col. 3, ll. 45-59; col. 4, ll. 35-53.)
In operation, the first core 50 and second core 52 are pressed together
in a mold (see Fig. 17) such that the end 58 of the first core is inserted into
the channel 74 of the second core 52 to where the end portions 58 and 70 of
the first and second cores respectively are in contact to form a gap-free
connection between the first core 50 and second core 52. (’886 Patent, col.
4, l. 59 – col. 5, l. 6.) After closing the mold, a suitable material, e.g.,
molten metal, is pumped into the mold cavity to form a flash free connector
body 40 after the cores are removed. (’886 Patent, col. 6, ll. 6-31; Fig. 17.)
Requester contests the Examiner’s decision not to reject claims 1-13
as follows (App. Br. 3-6):
I. Claims 1-4, 8, and 9 under 35 U.S.C. § 103(a) as obvious over
Hamilton, 4 Gretz ’831, 5 and Reilly; 6
II. Claims 5-7 and 11-13 under 35 U.S.C. § 103(a) as obvious over
Hamilton, Gretz ’831, Reilly, and Davis; 7
III. Claim 10 under 35 U.S.C. § 103(a) as obvious over Hamilton,
Gretz ’831, Reilly, and Gretz ’355;8
IV. Claims 1-4, 8, and 9 under 35 U.S.C. § 103(a) as obvious over
Hamilton, Auray, 9 and Reilly;

4 U.S. Patent No. 3,138,827, issued June 30, 1964.
5 U.S. Patent No. 6,521,831 B1, issued Feb. 18, 2003.
6 United States Patent Application Publication US 2007/0221359 A1, Sept.
27, 2007.
7 ASM International, Tool Materials (J.R. Davis ed., pp. 251-258).
8 U.S. Patent No. 6,682,355.
9 U.S. Patent No. 7,151,223 B2, issued December 19, 2006.
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V. Claims 5-7 and 11-13 under 35 U.S.C. § 103(a) as obvious over
Hamilton, Auray, Reilly, and Davis;
VI. Claim 10 under 35 U.S.C. § 103(a) as obvious over Hamilton,
Auray, Reilly, and Gretz ’355;
VII. Claims 1 and 8 as unpatentable under 35 U.S.C. § 112, first and
second paragraph; and
VIII. Claims 1 and 8 under 35 U.S.C. § 314 for improper broadening.

Proposed Rejections I-VI
Each of proposed Rejections I-VI relies on Hamilton as the primary
reference.
Hamilton discloses a mold for making a connector having two inlets
and a single outlet. (Col. 1, l. 10-14, 58-65.) Figure 11 of Hamilton is
reproduced below:

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Figure 11 depicts a section view of a connector. (Col. 2, ll. 31-32.)
The mold includes cavity pins 34 and 35, which have tapered lower
extremities 36 that “fit snugly” around conical surface 37 of core pin 38.
(Col. 3, ll. 21-26.) The lower extremities 36 are “ground out” to provide the
snug fit. (Id., see Fig. 6.) Hamilton discloses that “the pins 34 and 35 make
a sliding fit with the conical surface 37 of the pin 38.” (Col. 3, ll. 33-34.)
Hamilton discloses further that “core pin 38 is attached to the core
body 43 and is free to rotate.” (Col. 3, ll. 28-29.)
Claims 1 and 8 are independent. Requester contends, relying on
previous positions of the Examiner in the First Office Action mailed
February 10, 2012, that the difference between the coring system in
Hamilton and the coring system recited in the independent claims is that
Hamilton does not disclose that the cavity pins 34 and 35, which correspond
to the second core recited in the independent claims, extend from a common
base portion as required in the claims. (App. Br. 7, “FF4”.) However,
Requester contends, relying on the Examiner’s original reasoning, that this
modification would have been obvious to one of ordinary skill in the art.
(Id. at 7.)
With respect to the limitation that the first core includes two grooves
on opposite sides of the end portion of the first core, Requester contends,
relying on previous positions of the Examiner in the First Office Action, that
it would have been obvious to have placed grooves on either the first core
pin or the second core pins, because in either location, gap-free engagement
may be achieved. (App. Br. 6, 8, 11-12.)
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The Examiner subsequently found that because Hamilton teaches that
the center core pin 38 of the mold is “free to rotate,” modifying Hamilton by
placing grooves on center core pin 38, rather than cavity pins 34 and 35 as
proposed by Requester would destroy the ability of Hamilton’s core pin to
rotate. (RAN 6-7; citing Hamilton, column 3, ll. 26-29 and Fig. 6.)
Requester argues that Hamilton does not require free rotation of the
core pin 38 such that the Examiner’s position with respect to Hamilton is
incorrect. (App. Br. 10-12.)
Patent Owner contends that the features taught by Hamilton for
preventing flash, spring-loaded and rotatable pins, would be unacceptable
for producing a die-cast or injection molded connector body. (Resp. Br. 8-
9.) Patent Owner contends also that Hamilton does not disclose the
relationship between the ends of the fingers of the second core and the
shoulder of the first core recited in the claims (“said end of said fingers of
said second core engage said shoulders on said first core”), because ends of
Hamilton’s cavity pins 34 and 35 do not engage the shoulder on core pin 38.
(Resp. Br. 10-12.) Patent Owner argues that modification of Hamilton’s
core pins 34 and 35 to have an end portion that engages with a shoulder on
core pin 38 would eliminate the ability of pins 34 and 35 to slide with
respect to core pin 38, and would cause the pins to wear down with repeated
use. (Resp. Br. 9-10.) As a result, Patent Owner contends that such a
modification would change the principle function of rotating core pin 38,
which would be contrary to Hamilton’s system that compensates for wear.
(Id.)

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Claim Interpretation
We turn first to claim interpretation, and specifically, the
interpretation of the terms “end” of the second core and “shoulder” of the
first core recited in claim 1. “‘During reexamination, as with original
examination, the PTO must give claims their broadest reasonable
construction consistent with the specification.’” In re Suitco Surface, Inc.,
603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)).

“end”
Claim 1 recites that fingers of the second core extend from a
“common base portion to an end,” using the word “end” as a noun. The
“end” of the fingers of the second core is described similarly in the ’886
Patent, which states: “generally tubular fingers 68 [extend] to a lens shaped
end 70.” (Col. 4, ll. 47-50; see Fig. 8 and Fig. 11, reproduced above.) The
’886 Patent discloses further that the fingers 68 “include end portions 76
thereon that include gradually sloping arcuate shoulders 78, using the word
“end” as an adjective. The end portions 76 turn upward near ends 70 to
form tip portions 80.” (Col. 4, ll. 53-55; See Fig. 8.) Thus, by using
different terms for “end” and “end portion,” the ’886 Patent makes it clear
that the end of the of the fingers of the “second core [which] engages said
shoulder on said first core” (claim 1) corresponds to the furthest point or
boundary on the fingers, while the “end portion” includes at least the “end”
as well as the shoulder 78. Accordingly, we interpret the noun “end” to
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mean the furthest point or boundary of the fingers, which is consistent with
how it is used in the ’886 Patent.

“shoulder”
Claim 1 recites “a first core including a base portion, a tubular nose
portion integral with and extending from said base portion to a shoulder, and
an end portion narrower than said base portion extending from said
shoulder.” Thus, claim 1 requires the first core to have three distinct, yet
integral “portions,” a base portion 54, a nose portion, 56, and an end
portion 55. Between what constitutes the nose portion and what constitutes
the end portion of the first core is defined in the claim as the “shoulder.”
Claim 1 recites further that the end of the fingers of the second core
“engages said shoulder on said first core in a gap free connection.”
The ’886 Patent discloses that the nose portion 56 of the first core
includes two grooves 60 that extend from the end 58 of the first core and
terminate in a shoulder 64. (Col. 4, ll. 37-43; see Fig. 5 and Fig. 11,
reproduced above.) The ’886 Patent discloses further that the second core
includes gradually sloping arcuate shoulders 78. (Col. 4, ll. 53-55; See Fig.
8.) Thus, the Specification describes a shoulder as either a sloping part (as
for the second core) or an abutment (as for the first core). These are
different embodiments of a “shoulder” on different cores, and we will not
read these features into the claims. Indeed, the Specification itself does not
impart any particular requirements to the shape of the shoulder.
Consistent with the express language of the claim, we interpret
“shoulder” of the first core as that portion of the first core that begins at the
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termination region of the nose portion of the first core and engages the “end”
of the fingers of the second core. We do not read the claim to require the
shoulder to have a specific shape as long as it can meet the requirement that
“said fingers of said second core engages said shoulder on said first core in a
gap free connection.”

Prior Art Rejections

Hamilton
Hamilton is discussed above. All of the obviousness rejections
proposed by Requester rely on Hamilton in order to teach the relationship
between the shoulder of the first core and the ends of the fingers of the
second core, i.e., that the shoulder of the first core engages the ends of the
fingers of the second core.
Issue
The dispositive issue is: Does Hamilton disclose or render obvious
the relationship between the shoulder of the first core and the ends of the
fingers of the second core recited in the claims?

Analysis
In view of the interpretation of the noun “end” discussed above, we
are not persuaded by Requester’s arguments that Hamilton discloses the
relationship between the shoulder of the first core and the ends of the fingers
of the second core recited in the claims. As depicted in Figure 11 of
Hamilton reproduced above, the “end” of the dual core pins 34 and 35 faces
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downward toward the base of single core pin 38. To the extent that sloping
surface 37 of core pin 38 can be considered a shoulder, it does not engage
the end of the fingers of the second core as required by independent claim 1.
Rather, the end of the core pins 34 and 35, which we interpret to be the
furthest point or boundary of the pin, are open to the space created between
core body 43 and core pin 38. Thus, there is no gap-free connection
between the shoulder of the first core and the ends of the fingers of the
second core as required by claim 1.
As a result, we agree with the Examiner that the prior art fails to
disclose the shoulder of the first core as recited in claim 1, as all of the
structural characteristics of the shoulder of the first core recited in the claim
are not met by Hamilton.
Independent claim 8 recites also the relationship between the shoulder
of the first core and the end of the fingers of the second core as recited in
claim 1. As such, Hamilton is deficient for the same reasons discussed with
respect to claim 1.
For completeness, although not strictly necessary to our Decision, we
add the following. While we agree with Requester’s contention that it would
have been obvious to provide the ground out areas to form the recited
grooves on core pin 38 (corresponding to the first core recited in the claims)
rather than on core pins 34 and 35 (corresponding to the second core recited
in the claims) such a modification does not remedy the deficiencies of
Hamilton discussed above.
In this regard, we are not persuaded by Patent Owner’s argument that
Hamilton teaches away from such a modification by disclosing that the core
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pin 38 is free to rotate. We acknowledge that such a modification would
result in a core pin that is not free to rotate. However, we are not persuaded
that Hamilton requires the core pin 38 to rotate for the reasons that follow.
Hamilton does not describe any particular benefits to the rotation of
core pin 38. In addition, claim 1 of Hamilton does not recite that the single
core pin must rotate, whereas claim 3 expressly recites that capability. Thus,
applying the doctrine of claim differentiation, claim 1 of Hamilton does not
require a rotating single pin, which is further evidence that such a function is
not necessary for the mold disclosed in Hamilton. Patent Owner has not
directed our attention to sufficient evidence supporting the position that the
proposed modification would destroy an essential function of the mold in
Hamilton. Further, Patent Owner has not directed our attention to sufficient
evidence to support the position that the proposed modification would
eliminate the ability of pins 34 and 35 to slide with respect to pin 38 or cause
uneven wearing of the grooves in the core pin 38. (Resp. Br. 10.)
Accordingly, we agree with Requester that it would have been
obvious to have ground out the conical surface 37 of core pin 38 allowing
for the snug fit between pins 34 and 35 and pin 38 in pin 38 rather than in
pins 34 and 35. It would have been commonsense that the grooves could be
on either pin or set of pins, and still achieve the same purpose in providing
for a snug fit. Accordingly, we find that such commonsense modification
would have been obvious to, and within the ability of, one of ordinary skill
in the art.
However, as discussed above, the modification as proposed by the
Requester does not account for all the structural requirements of the first
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core recited in the claims including the relationship between a shoulder
created by the modification of the core pin 38 and the ends of the core pins
34 and 35 required in the claims.
The secondary references relied on in the rejections do not remedy the
deficiencies of Hamilton.
Accordingly, we affirm the Examiner’s decision refusing to reject
claims 1-13 on the grounds of rejection based on Hamilton.

Rejections under 35 U.S.C. § 112
Requester contends that claims 1and 8 should be rejected under 35
U.S.C. § 112, first and/or second paragraph (pre-AIA). (App. Br. 15-18.)
Thus, there are two grounds of rejection with respect to 35 U.S.C. § 112
alleged by Requester. The rejections of claims 1 and 8 relate to the addition
of certain terms to the claim by way of amendment during this
reexamination proceeding. The terms are: “integral with” with respect to
the relationship between the tubular nose portion and the base portion of the
first core; “common” with respect to the base portion of the two fingers
located on the second core; “cylindrical” replacing the term “generally
tubular” modifying the fingers of the second core; “a left hand die and a
right hand die” added to claim 8; the recitation “and said left and right hand
dies are oriented perpendicular to said cores”; and replacing “mold” with
“left hand die and said right-hand die upon said joined cores.” We address
each in turn.
Principles of Law
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To satisfy the written description requirement, the disclosure must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis omitted).
As set forth in 35 U.S.C. § 112 (pre-AIA), the specification must
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112, ¶ 2. “As the statutory language of ‘particular[ity]’ and
‘distinct[ness]’ indicates, claims are required to be cast in clear--as opposed
to ambiguous, vague, indefinite--terms.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). However, exact precision is not required. The test
for determining the question of indefiniteness may be formulated as whether
the claims “set out and circumscribe a particular area with a reasonable
degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235
(CCPA 1971). With regard to the reasonableness standard, one must
consider the language in the context of the circumstances. Packard, 751
F.3d at 1313.

“integral with” and “common”
Both claims 1 and 8 recite the terms “integral and “common.”
Requester contends that there is no indication that whether the tubular nose
portion was integral with the base portion was a part of the invention, and
that the metes and bounds of the term are not clear from the Specification.
(App. Br. 15-16.) In response to the Examiner’s position that Figs. 5 and 8
provided sufficient description support for the term and that the term was not
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indefinite, Requester merely contends that the Examiner is incorrect and
states that the Specification does not mention “integral.” (App. Br. 15; ACP
9.) Requester contends also that there is no indication of the meaning of
“common” in the context of the base portion and that the word is not used in
the Specification. (App. Br. 16.) Requester argues also that the term
“common” requires some reference, and the claim does not identify what is
common between the two things such that the Examiner’s reference to
Figures 1 and 8 for support fails to remedy the alleged deficiencies. (Id.)
Patent Owner contends that all references in the Specification to the
first core and the second core depict both as a single piece, such that there is
adequate support for the terms “integral with” and “common.” (Resp. Br.
13-14.)
We agree with the positions of the Patent Owner in this regard.
(Resp. Br. 13-14.) That is, the ’886 Patent provides adequate written
description support for the limitations “integral with” and “common” as the
description would have been understood by one of ordinary skill in the art as
shown by the drawings of the ’886 Patent.
In addition, Requester has not provided sufficient argument to support
the position that one of ordinary skill in the art would not have been able to
understand the metes and bounds of these claim terms in light of the ’886
Patent. The terms “common” and “integral” in the context of the ’886
Patent would have been understood based on inspection of the drawings in
conjunction with the Specification. We are not persuaded that one of
ordinary skill in the art would not have been able to understand the limits of
these terms. Accordingly, we affirm the Examiner’s decision not to reject
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claims 1 and 8 under 35 U.S.C. § 112 with respect to the terms “integral
with” and “common.”

“Cylindrical”
Requester contends that in replacing the term “generally tubular” with
the term “cylindrical,” Patent Owner has introduced new matter into the
claim, and that the scope of claim 1 is not clear to the extent that the term
cylindrical is different from a right circular cylinder. (App. Br. 16.)
Patent Owner argues that the term “cylindrical” is more limiting than
“generally tubular” and that “tubular” as used in the ’886 Patent does not
refer to a hollow structure as shown in Figure 13. (Resp. Br. 14-15.)
However, Patent Owner, at oral argument, argued that the terms “tubular”
and “cylindrical” were “essentially synonymous in the context of the
patent,” and that in view of the hashing depicted in Figure 13, the fingers of
the second core could not be hollow. (Or. Hr’g transcript 36, ll. 9-14.)
Initially, we agree with Patent Owner that the term “cylindrical” is
supported by the ’886 Patent. That is, Figures 8-10 depict the fingers of the
second core as cylindrical.
In addition, we do not agree that one of ordinary skill in the art would
not have understood the metes and bounds of the claim because of the term
“cylindrical.” In this regard, although the ’886 Patent uses the term
“cylindrical” to refer to specific portions of the coring system and housing
through reference to the figures, we observe that the ’886 Patent does not
expressly define the term “cylindrical.” Thus, we turn to the dictionary
definition of cylindrical, which is “relating to or having the form or
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properties of a cylinder.” (Webster’s Third New International Dictionary
565 (1961).) We discern no inconsistency with this definition and the way
that “cylindrical” is used in the context of the ’886 Patent. That is, the
definition of “cylindrical” includes structures that are “relating to a
cylinder.” This is consistent with the use of the term “cylindrical” in the
’886 Patent. The fingers of the second core, as shown for example in Figure
8, have a proximal portion that is cylindrical in the same manner as the nose
portion of the first core. The distal ends of both the nose portion of the first
core and the fingers of the second core, although including other structural
features, relate to a cylinder. Thus, we disagree with Requester that one of
ordinary skill in the art would not have understood the metes and bounds of
the term “cylindrical” in claim 1.
In view of the above, we affirm the Examiner’s decision not to reject
claim 1 with respect to the term “cylindrical.”

“a left hand die and a right hand die”
Claim 8 recites “a left hand die and a right hand die forming an
elongated mold cavity having opposing ends therein.” Requester contends
that there is no significance or meaning to the distinctions left and right
being introduced into the claim. (App. Br. 17.) Requester argues that it is
not clear what the orientation of the left and right hand dies is recited to be
in the claim. (Id.) Requester argues also that it is not clear what is meant by
closing the left-hand die and right-hand die. (App. Br. 18.)
Patent Owner contends that a person of ordinary skill in the art of die-
casting would easily recognize the terms “left hand die and right hand die”
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pointing to the ’886 Patent, col. 6, ll. 6-9 and Fig. 17. (Resp. Br. 15.) Patent
Owner argues also that Figure 17 depicts the dies that mold the device are
perpendicular with respect to the cores where the two mold halves close on
the cores and hold them in place during die-casting. (Resp. Br. 16.)
We agree with Patent Owner that the terms “left hand die” and “right
hand die” are sufficiently clear to one of ordinary skill in the art. The terms,
on their face, specify two distinct dies on the left and right of the mold
cavity, and this would readily be understood to be a description of the
position of the dies. In addition to this, the ’886 Patent expressly uses the
terms to describe the two dies used in the die cast molding process. (Col. 6,
ll. 6-9.) Regarding the orientation of the dies recited in claim 8, it is clear
from Figure 17 that the perpendicular orientation refers to axis by which the
two dies (106 and 108) fit together with respect to the axis that the two cores
(50 and 52) fit together. (Fig. 17.) We are also not persuaded that one of
ordinary skill in the art would not have understood what is meant by closing
a left hand die and a right hand die upon said joined cores. The terms,
themselves, are clear. Furthermore, it is clear from Figure 17 that the left
hand die and right hand die are brought together or “closed” around the
joined first and second cores. (’886 Patent, col. 6, ll. 6-25.)
In view of the above, we affirm the Examiner’s decision not to reject
claim 8 with respect to the term “left hand die and right hand die.”

Improper Broadening
Requester also contends that claims 1 and 8 should be rejected under
35 U.S.C. § 314 for improper broadening because deletion of “generally
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tubular” from claim 1 and replacing it with the term “cylindrical” is an
improper broadening as a tubular structure must be hollow like a tube,
whereas a cylinder can be solid or hollow. (App. Br. 18-19.) Additionally,
Requester contends that deleting the recitation in claim 8 that the joined
cores are longitudinally aligned “in said cavity and said base portions are at
said opposing ends of said elongated cavity” broadens the scope of the
claim. (App. Br. 20.)

Principles of Law
The test for when a claim is broader in scope than the original claims
is “if it contains within its scope any conceivable apparatus or process which
would not have infringed the original patent.” In re Freeman, 30 F.3d 1459,
1464 (Fed. Cir. 1994) In this regard, a “claim that is broader in any respect
is considered to be broader than the original claims even though it may be
narrower in other respects.” Medtronic, Inc. v. Guidant Corp., 465 F.3d
1360, 1374 (Fed. Cir. 2006).
Analysis
Claim 1
We disagree with Requester’s premise that a “tubular” structure as
that term is used in the subject patent must be hollow. The ’886 Patent
describes the “tubular” fingers of the second core with respect to the Figures.
(See ’886 Patent, col. 4, ll. 46-58, col. 6, ll. 32-44.) Additionally, the ’886
Patent discloses that the cores are preferably constructed of hardened tool
steel, but is silent as whether the cores are solid or hollow. (’538 Patent, col.
6, ll. 40-44.)
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The definition of “tubular” is “having the form of a tube.” (Webster’s
Third New International Dictionary 2460 (1961); see RAN 8.) The
dictionary definition of “tube” is “a hollow elongated usually cylindrical
body that is used especially to convey fluids” or “any of various usually
cylindrical structures or devices felt to resemble or functioning in the
manner of a tube.” (Webster’s Third New International Dictionary 2459
(1961).) Thus, contrary to the definition offered by Requester, the definition
of tube also includes structures that “resemble . . . a tube.” (See App. Br.
19.)
Because the dictionary definition of “tube” includes the aspect of
“devices felt to resemble . . . a tube,” we are of the view that one of ordinary
skill in the art in view of the disclosure of ’886 Patent, would have
understood that the “tubular” shape of the fingers of the second core relates
to the general shape of the outside of the fingers and not a requirement that
the fingers have hollow structures. (Resp. Br. 12-13.) In addition, because
the definition of “tube” states that the structures are “usually cylindrical,”
and the amendment to claim 1 replaced the term “generally tubular” with
“cylindrical,” the claim has been narrowed by removing the additional
breadth imparted by “generally” and by limiting the shape of the fingers to
“cylindrical,” a subset of “tubular” structures.
Thus, for the reasons discussed above, we do not agree with Requester
that changing “generally tubular” to “cylindrical” as in claim 1 improperly
broadens claim 1. Rather, claim 1 has been narrowed as a result of the
amendment. Accordingly, we sustain the Examiner’s decision not to reject
claim 1 for improper broadening.
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Claim 8
As stated above, Requester contends that deleting the recitation in
claim 8 that the joined cores are longitudinally aligned “in said cavity and
said base portions are at said opposing ends of said elongated cavity”
broadens the scope of the claim. (App. Br. 20.)
Patent Owner responds that the aforementioned phrase was replaced
with the phrase “and said left and right hand dies are oriented perpendicular
to said cores,” which according to Patent Owner, narrows the claim. (Resp.
Br. 17.)
Requester has not explained sufficiently how the amended language
broadens the claim. Requester simply points to the deletion of the recited
language, without addressing the additionally added replacement language.
Requester therefore has not met the burden of showing that the claim was
improperly broadened. Claim 8 recites that each the first core and the
second core have base portions, recites how the cores are joined together,
recites that the left hand die and the right hand die form an elongated molded
cavity having opposing ends, and recites how the left hand die and right
hand die are oriented relative to cores. We are unconvinced that the claim
has been broadened in view of the amendment identified by Requester.
Accordingly, we sustain the Examiner’s decision not to reject claim 8
for improper broadening.

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CONCLUSION
On this record, Requester has failed to demonstrate any error in the
Examiner’s decision not to adopt the proposed rejections on appeal.

DECISION
The Examiner’s decision refusing to reject claims 1-13 on any of the
proposed grounds (i.e., proposed Rejections I-VIII) is affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e). In the event neither party files a request for
rehearing within the time provided in 37 C.F.R. § 41.79, and this decision
becomes final and appealable under 37 C.F.R. § 41.81, a party seeking
judicial review must timely serve notice on the Director of the United States
Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
AFFIRMED

PATENT OWNER:
THE JACKSON PATENT GROUP, LLC
1500 Forest Avenue, Suite 212
Richmond, VA 23229

THIRD-PARTY REQUESTER:
UNGERMAN IP, PLLC
2305 Calvert Street N.W.
Washington, DC 20008