Ex Parte Crosser

Board of Patent Appeals and Interferences

Jun 29, 2009

11501500 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARRY G. CROSSER
____________

Appeal 2009-001565
Application 11/501,500
Technology Center 3700
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Decided:1 June 29, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001565
Application 11/501,500

2
STATEMENT OF THE CASE
Larry G. Crosser (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 35-37, 39, and 40. Claims 1-26
are cancelled and claims 27-34, 38, and 41-50 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention relates to the color identification of
tools. Spec. 1:6-7. Claim 35, reproduced below, is representative of the
subject matter on appeal.
35. An apparatus comprising the combination of a
set of one color instant identification of color
coded tools comprising:
a plurality of tools, each of said tools having
an outer surface, wherein a portion of the outer
surface is colored, wherein each of said tools has a
different size and a different color and wherein the
colored portion of the outer surface is recessed;
and
a tool holder having a corresponding color
coding.

Appeal 2009-001565
Application 11/501,500

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THE EVIDENCE
The Examiner relies upon the following evidence2:
Arnold US 5,819,606 Oct. 13, 1998

THE REJECTION
The Appellant seeks our review of the Examiner’s rejection of claims
35-37, 39, and 40 under 35 U.S.C. § 102(b) as anticipated by Arnold.

ISSUES
The Appellant contends that the Examiner erred in rejecting claims
35-37 and 40 because Arnold does not disclose the colored portion of the
outer surface of the tool being recessed. App. Br. 6.
The first issue before us is:
Has the Appellant shown the Examiner erred in finding that Arnold
discloses the colored portion of the outer surface of the tool is recessed?
The Appellant contends that the Examiner erred in rejecting claim 39
because Arnold does not disclose a raised collar area. App. Br. 7.
The second issue before us is:
Has the Appellant shown the Examiner erred in finding that Arnold
discloses a raised collar area?

2 The Examiner’s Answer also lists U.S. Patents 5,498,158 to Wong,
6,257,098 B1 to Cirone, and 4,841,653 to Negley in the Evidence Relied
Upon portion of the Answer. Ans. 3. The Examiner does not refer to these
patents elsewhere in the Answer and does not appear to rely upon them in
the rejection of the appealed claims.
Appeal 2009-001565
Application 11/501,500

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FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Arnold discloses an insert for a socket with color differentiation
and other indicia. Arnold, col. 1, ll. 6-10.
2. Arnold discloses that identification insert 20 is a plastic sleeve
with a hollow core. Arnold, col. 3, ll. 26-29.
3. Arnold discloses a first embodiment where the upper portion of
the identification insert 20 projects upwardly from the top surface 16 of
socket 10. Arnold, col. 3, ll. 47-49; Figs. 1-4 (best visible in Fig. 4).
4. Arnold discloses a second embodiment where the top surface
32 of identification insert 20 is flush with the top surface 16 of the socket 10.
Arnold, col. 3, ll. 52-54; Figs. 5-8.
5. In this second embodiment, the top surface 16 of socket 10
extends above the flat parallel surface created by counterbore 30. Arnold,
Fig. 8.
6. Arnold discloses a third embodiment where plastic insert 42 fits
within a counterbore 52, and is flush with the top surface 16 of socket 10.3
Arnold, col. 4, ll. 31-37; Figs. 10-15.

3 Arnold mistakenly identifies plastic insert 42 as “washer 48” (col. 4, l. 32);
however, a later reference to the plastic insert clearly identifies that the
plastic insert is “42” (see e.g. Fig. 8; col. 4, ll. 41, 48, 49, 55), and “48” is
the top surface of plastic insert 42 (see e.g. Fig. 12, col. 4, ll. 33, 50, 54).
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7. Arnold discloses a fourth embodiment where a plastic insert 42
fits within a trepan 58 of conventional socket 54, and is flush with the top
surface of socket 54. Arnold, col. 4, ll. 57-64; Figs. 16-17.
8. Arnold discloses that identification insert 20 is colored for rapid
visual identification. Arnold, col. 3, ll. 55-57; see also col. 3, l. 66 to col. 4,
l. 2 (disclosing different color inserts for different size sockets).
9. Appellant’s Specification does not define a relationship
between the height of the raised collar and the height of the colored portion
of the outer surface. Spec., passim.
10. Appellant’s Specification does not provide a definition of
“collar” as used in the claims. Spec., passim.
11. The word “collar” is commonly understood to mean “a ring of
flange, as on rods, shafts, or pipes, to prevent sideward motion, connect
parts, etc.” Webster’s New Universal Unabridged Dictionary (Deluxe
Second Ed. 1983).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

ANALYSIS
Claims 35, 36, 37, and 40
Independent claim 35, and dependent claims 36 and 37, contain the
limitation that the colored portion of the outer surface of the tool is recessed.
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Claim 40 depends from claim 39 and also contains the limitation that “the
colored portion of the outer surface is recessed.” The Appellant’s
Specification describes, for example, that the insert 12 is set into a recessed
area 16 and the band 18 fits into a recessed area 22 “to protect [them] from
wear and abrasion.” Spec. 5:6-8; Spec. 5:15-17. When read in context of
the whole claim, and in light of Appellant’s Specification, a person of
ordinary skill in the art would understand “recessed” to mean that the
colored portion of the outer surface must be recessed with regard to the
adjacent outer surface of the tool.
The Examiner erred in finding that Arnold discloses the colored
portion of the outer surface is recessed.4 Arnold discloses a colored insert
for a socket with several embodiments, but none of those embodiments
discloses a colored portion of the outer surface recessed from the adjacent
outer surface of the socket (in all embodiments, the insert is flush with, or
above the top surface of the tool) (Facts 1-8).
Because Arnold does not disclose a colored portion of the outer
surface that is recessed as claimed, the Appellant has demonstrated the
Examiner erred in the decision to reject claims 35-37 and 40.
Claim 39
Claim Construction
In the analysis of claims 35-37 and 40, supra, we concluded that the
claimed limitation that “the colored portion of the outer surface is recessed”
required the colored portion of the outer surface to be recessed with regard
to the adjacent outer surface of the tool. By contrast, independent claim 39

4 The Examiner cites to Arnold, col. 3, l. 59 to col. 4, l. 7, 20-30; Figs 3, 4, 7,
8. Ans. 4.
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contains the limitation that “the colored portion of the outer surface is set
into a raised collar area” (underlining added). This language defines the
insert’s location (i.e. in the raised collar area), but does not define the
relationship between the thickness of the colored portion and the height of
the raised collar. Nor does Appellant’s Specification provide further
clarification of the relationship between the thickness of the colored portion
and the height of the raised collar (Fact 9). Consistent with this
interpretation, claim 40 depends from claim 39 and adds the requirement
that the colored portion is recessed from the raised collar. The theory of
claim differentiation suggests that claim 39 does not require the colored
portion be recessed in relation to the collar.
The Appellant’s Specification does not define “collar,” and the term is
commonly understood to means a flange to prevent sideward motion (Facts
10, 11). We conclude a person of ordinary skill in the art, reading claim 39
in light of the Specification, would determine that claim 39 requires the
colored portion be within a flange (or flanges) that hold the colored portion
in place, but claim 39 does not place a limitation on the height of the colored
portion in relation to the height of the raised collar.
Further, we interpret the word “raised” in the phrase “raised collar” to
refer to the fact that the collar is raised with respect to the outer surface of
the tool, but not necessarily raised with respect to the top surface of the
colored portion.
Analysis
The Appellant argues that “Arnold does not disclose a raised collar
area,” and that the sleeve (meaning identification insert 20) is not protected
by a raised collar area. App. Br. 7-8. The claim does not require the collar
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to protect the colored portion, and we analyze the Appellant’s remaining
contention, namely, that Arnold does not disclose a raised collar area.
Arnold discloses a raised collar area by disclosing an embodiment
where the top surface of the socket forms a flange relatively higher that the
parallel flat surface created by the counterbore (Fact 5). Further, the colored
portion (identification insert 20) fits within the flange (Fact 4). While the
colored portion (identification insert 20) is flush with the height of the raised
collar, claim 39 has no limitation defined for the relationship between the
height of the colored portion and the height of the raised collar.
The Appellant has failed to demonstrate that the Examiner erred in the
decision to reject claim 39 because Arnold discloses a raised collar area.

CONCLUSION
The Appellant has demonstrated that the Examiner erred in the
rejection of claims 35-37 and 40 because Arnold does not disclose the
colored portion of the outer surface of the tool is recessed.
The Appellant has failed to show the Examiner erred in the rejection
of claim 39 because Arnold discloses a raised collar area.

DECISION
We reverse the Examiner’s decision to reject claims 35-37 and 40.
We affirm the Examiner's decision to reject claim 39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART
Appeal 2009-001565
Application 11/501,500

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