Ex Parte Turner

Board of Patent Appeals and Interferences

Feb 6, 2012

11308329 (B.P.A.I. Feb. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE H. TURNER
____________

Appeal 2010-003621
Application 11/308,329
Technology Center 3600
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Before STEVEN D.A. MCCARTHY, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-18 under 35 U.S.C. § 102(b) as anticipated by
Porter (WO 00/68608; pub. Nov. 16, 2000). The Examiner also rejected
claim 1 under 35 U.S.C. § 112, second paragraph, as indefinite. We have
jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART.

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THE INVENTION
Claim 1 illustrates the claimed subject matter on appeal:
1. A sleeve for protecting a utility conduit passing
through a hole in a stud used in building construction,
comprising:
a body portion forming a hollow trough extending
longitudinally and defining a body length, wherein
said trough has a circular side section with a diameter
defining a body width, and wherein said circular side
section is changeable by compression with human
hand or conventional hand-tool to adapt said body
width to coincide with a range of sizes of the hole in
the stud;
said body portion further having an inserted end and a
worked end at opposed ends of said trough to permit
engagement of the sleeve into the hole in the stud by
inserting said inserted end into the hole and pressing
on said worked end;
a stop portion at said worked end of said body portion to
stop insertion of the sleeve into the hole beyond a
proximate face of the stud; and
a retention portion in the sleeve to affirmatively retain the
sleeve within the hole once inserted there in.
ISSUES
The issues presented by this appeal are:
Does the recitation of “changeable by compression with human hand
or conventional hand-tool” in claim 1 render claim 1 indefinite?
Does Porter disclose “a body portion forming a hollow trough” having
“a circular side section,” “a stop portion,” and “a retention portion” as called
for in claim 1?
Does Porter disclose a sleeve that is “a unitary die-stamped construct”
or “a unitary cast construct” as called for in claims 14 and 15?
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ANALYSIS
Indefiniteness of Claim 1
The Examiner determined that “changeable by compression with
human hand or conventional hand tool” was indefinite because hand
strengths vary; what one hand may compress another may not. Ans. 3. The
Examiner also determined that the metes and bounds of “conventional hand
tool” are unclear because there are many types of hand tools that apply
compression, each with its own uses, power, and strength. Ans. 3, 7.
Appellant argues that an artisan would know that the shape of the
claimed sleeve is changeable by hand compression, versus the shape of a
brick, which is not. App. Br. 8. Appellant also argues that an artisan would
know that “the shape of Applicant’s sleeve is changeable by the hand of a
human that would normally use the sleeve, versus that of, say, an infant
(which would not be engaged in building construction).” Id. Appellant also
asserts that the USPTO patent classification system defines some classes to
include hand tools so the meaning of this term is understood. App. Br. 8-9.
“A decision on whether a claim is invalid under § 112, 2d ¶, requires a
determination of whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
“The scope of claim language cannot depend solely on the unrestrained,
subjective opinion of a particular individual purportedly practicing the
invention.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350
(Fed. Cir. 2005). Appellant has not pointed to anything in the Specification
that provides a workable objective standard to define the compression that is
applied by a human hand or the hand tools that are “conventional” within the
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Application 11/308,329

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scope of claim 1. See App. Br. 8-9; Reply Br. 2. As such, we sustain the
rejection of claim 1 as being indefinite. See Datamize, 417 F.3d at 1352-53.
Claims 1-18 as anticipated by Porter
Claims 1-13
Appellant argues claims 1-13 as a group. We select claim 1 as a
representative claim. Claims 2-13 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). Appellant first argues that Porter’s flexible casing 20
does not correspond to the claimed “a body portion” because the flexible
casing 20 is filled with an intumescent material 28 that has no equivalent in
the claimed invention. App. Br. 10; Reply Br. 2-3. This argument is not
persuasive because claim 1 recites a sleeve “comprising” a body portion.
Use of “comprising” means that a device may contain elements in addition
to those explicitly recited and still fall within the scope of claim 1. In re
Skvorecz, 580 F.3d 1262, 1267-68 (Fed. Cir. 2009) (“‘comprising’ is well
understood to mean ‘including but not limited to.’” (citation omitted)); In re
Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004) (“comprising” means the
named elements are essential but other elements may be added and still form
a construct within the scope of the claim) (citation omitted)).
Appellant also argues that Porter does not disclose a “hollow trough”
that extends longitudinally and has “a circular side section” because Porter’s
casing 20 extends around its circumference rather than longitudinally and
the edges are flat rather than circular. App. Br. 10-11. Appellant further
argues that Porter discloses a tube rather than a hollow trough and does not
teach that the tube is compressible to fit in a hole in a wall stud. Reply Br. 4.
We agree with the Examiner that Porter discloses a hollow trough that
extends longitudinally to define a body length and has a circular side section
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with a diameter that defines a body width (Ans. 4, 7) as called for in claim 1.
See Porter, figs. 8, 16. The tubular shape of Porter’s hollow trough is not a
valid point of distinction because Appellant discloses “circular side sections”
that form a 180 degree arc (Fig. 3), extend 180-270 degrees (Figure 6), and
extend 360 degrees (Spec. [Paras. 37, 44]). Porter’s fire collar is formable
(p. 2, ll. 17-20) and can be formed around service lines within a wall or soffit
(p. 2, ll. 26-28).
Appellant also argues that Porter’s fire collars are not placed internal
to a wall so the brackets are not “stop portions” that would stop insertion of
the sleeve in a hole as called for in claim 1. App. Br. 11. We agree with the
Examiner that Porter’s brackets are capable of stopping insertion of a collar
into a hole beyond the proximal face of a stud. See Ans. 7-8; Porter, p. 3, ll.
1-11; p. 4, ll. 15-16; figs. 8, 16. Appellant has not shown that the brackets
are not capable of functioning as stop portions when the fire collar is formed
around service lines within a wall or soffit as Porter discloses can be done.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (if examiner finds
that prior art inherently can perform a claimed function, the burden shifts to
appellant to show that prior art does not inherently possess the functionally-
defined limitation).
Appellant also argues that raised portions 123 in Figure 16 of Porter
are not “a retention portion” because there is no teaching that they retain a
sleeve/collar within a hole or that the fire collar is ever inserted into a hole or
wall stud. App. Br. 12. Appellant asserts that putting Porter’s fire collar in a
wall would entail making a large hole and weaken the wall. App. Br. 12.
We agree with the Examiner that Porter’s raised portions 123 are capable of
retaining a fire collar in a hole. Ans. 4, 7-8. Appellant has not shown that
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raised portions 123 are not capable of retaining the collar in a hole when the
collar is inserted in a wall or soffit (see Porter, p. 2, ll. 26-28). Appellant
discloses similar outward dimples 54 that engage the sides of a hole to retain
sleeve 10 in place. Spec. [Paras 50-51]; figs. 9a, 9b; see also Spec. [Para 11]
(discussing prior art Baillie sleeve). As such, we sustain the rejection of
claim 1 and its dependent claims 2-13 as anticipated by Porter.
Claims 14-18
Claims 14 and 15 depend from claim 1 and recite respectively that the
sleeve “is a unitary die-stamped construct” and “a unitary cast construct.”
The Examiner interpreted “unitary” as
a construct either relating to or consisting of units (where
the elements of Porter could arguably be considered units),
characterized by unity (where the elements of Porter
provide unity to the invention when assembled), or
existing as a unit (where the elements and device of Porter
arguably exists as a unit). The term unitary does not
exclude the use of a plurality of parts, particularly when
the parts (or units) are assembled into a unitary device.
Ans. 8.
The Examiner’s interpretation of “unitary” to include Porter’s multi-
part fire collar is inconsistent with the broadest reasonable interpretation of
that term in light of Appellant’s Specification. Reply Br. 5; App. Br. 13-14.
Appellant discloses that sleeves are formed by die stamp fabrication from
sheet stock, or as a cast metal. Spec. [Paras. 46-48]; fig. 7. This disclosure
is consistent with an ordinary meaning of unitary.1 As such, we cannot
sustain the rejection of claims 14 and 15 and their dependent claims 16-18.

1 An ordinary and customary meaning of “unitary” includes “of or relating to
a unit; having the character of a unit; undivided, whole.” See MERRIAM
WEBSTER’S COLLEGIATE® DICTIONARY 1369 (11th ed. 2005).
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CONCLUSION
The recitation of “changeable by compression with human hand or
conventional hand-tool” in claim 1 renders claim 1 indefinite.
Porter discloses “a body portion forming a hollow trough” having “a
circular side section,” “a stop portion,” and “a retention portion” as called
for in claim 1.
Porter does not disclose a sleeve that is “a unitary die-stamped
construct” or “a unitary cast construct” as called for in claims 14 and 15.
DECISION
The decision of the Examiner to reject claim 1 under 35 U.S.C. § 112,
second paragraph, as being indefinite is AFFIRMED.
The decision of the Examiner to reject claims 1-13 under 35 U.S.C.
§ 102(b) as being anticipated by Porter is AFFIRMED.
The decision of the Examiner to reject claims 14-18 under 35 U.S.C.
§ 102(b) as being anticipated by Porter is REVERSED.
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). See 37
C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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