Ex parte FIALA et al.

Board of Patent Appeals and Interferences

Sep 4, 1998

08467306 (B.P.A.I. Sep. 4, 1998)

Application for patent filed June 6, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ANTHONY FIALA, THOMAS D. SMITH and
THOMAS D. SMITH JR.
_____________
Appeal No. 98-0024
Application 08/467,3061
______________
ON BRIEF
_______________
Before CALVERT, COHEN and FRANKFORT, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 10
to 25. Claims 4 to 9, the other claims remaining in the
applica-tion, stand withdraw from consideration under 37 CFR §
1.142(b) as being directed to nonelected inventions.
Appeal No. 98-0024
Application 08/467,306
Claim 18, the other independent claim on appeal, recites the pipe2
insulation in combination with the pipe. Part (f) of claim 18 is identical to
part (f) of claim 10.
2
Claim 10 is illustrative of the subject matter in issue:
10) An insulation for pipe in tubular integral form and
comprising:
a) a flexible and resilient water-tight and
vapor-tight outer tube having what was formerly
two longitudinal edges which were fused into a
unitary continuous said outer tube;
b) an insulating tube inside of said outer tube;
c) said insulating tube comprising two half
tubes for encircling said pipe;
d) a moisture barrier tube inside of said
insulating tube to define a recess for receiving
said pipe;
e) said moisture barrier tube comprising two
half tubes for encircling said pipe; and
f) said outer tube being sufficiently flexible
upon being longitudinally divided along a line
to have said two longitudinal edges and which
two longitudinal edges can be rotated with
respect to each other with said outer tube still
being unitary.
Claims 10 to 25 stand finally rejected for failure to
comply with the second paragraph of 35 USC § 112.
The examiner considers part (f) of claims 10 and 18 to be2
indefinite because in part (a) of these claims, it is recited
Appeal No. 98-0024
Application 08/467,306
3
that the outer tube's former two longitudinal edges are "fused
into a unitary continuous said outer tube", while part (f) of
these claims recites that the outer tube is "longitudinally
divided along a line to have said two longitudinal edges".
According to the examiner (answer, page 7):
step [sic: part] (f) is describing features of
the outer tube which are known prior to the
sealing of the longitudinal edges but are not
actual features of the outer tube once it is in
its final sealed state as set forth by step
[sic: part] (a). Therefore, appellant [sic] has
created an indefinite situation where two states
of the outer layer are occurring in the same
claim and the metes and bounds of the claim
cannot be determined when it is not known in
what form appellant [sic] is intending to claim
the apparatus.
The test for compliance with the second paragraph of §
112 is stated in In re Merat, 519 F.2d 1390, 1396, 186 USPQ
471, 476 (CCPA 1975), as:
whether the claim language when read by a
person of ordinary skill in the art in
light of the specification, describes the
subject matter with sufficient precision
that the bounds of the claimed subject
matter are distinct.
In the present case, while the language of part (f) might be
Appeal No. 98-0024
Application 08/467,306
For example, if "upon being . . . to have" were changed to -- that,3
prior to --, and "and which" were changed to -- being fused, said --.
4
more clearly expressed, we do not consider that one of3
ordinary skill would find the bounds of the claimed subject
matter to be indistinct.
The part of the specification which is relevant to part
(f) is found on page 8, lines 8 to 15:
It is called to the attention of the reader
that the high-density polyethylene [outer
circular member] 22 is split only once at the
top of Figure 4 and at 31. The high-density
polyethylene is not split at the bottom of
Figure 4.
The result is a flexible insulation kit 40,
see Figure 2, which can be spread apart around
the solid high-density polyethylene at the
bottom 60 of Figure 4. In other words, the
high-density polyethylene at the bottom of
Figure 4 functions as a hinge around which the
two halves of the insulation can be rotated and
moved.
In our view, one of ordinary skill in the art, reading part
(f) in light of this disclosure, would not consider that the
claims recite the outer tube in both its fused and
longitudinally divided states, but rather that the claims are
drawn to a combination including a fused outer tube, with part
Appeal No. 98-0024
Application 08/467,306
5
(f) simply referring, as appellants state on page 11 of their
brief, "to a physical characteristic of the outer tube and not
to a state of assembly."
The examiner further argues on pages 7 to 8 of the
answer:
Section (f) may indeed be describing a physical
attribute of the outer layer but does so in a
way that is describing the attribute when the
outer layer is in a different form from its
final state which is indefinite.
We do not agree. The fact that an element in a claim is
defined by a property or characteristic which it has when in a
different form from the form in which it is claimed does not
inherently render the claim indefinite. Cf. In re Miller, 441
F.2d 689, 691, 169 USPQ 597, 599 (CCPA 1971) (claim to powder
which recited unsintered flex strength, a property of preforms
made from the powder rather than of the powder itself, was not
indefinite). Here, although part (f) sets forth a
characteristic of the outer tube which it has when in a
different form than recited in part (a), there is compliance
with the second paragraph of § 112 since the bounds of the
claimed subject matter are distinct, as dis-cussed above.
In the final rejection, the examiner also found claims
Appeal No. 98-0024
Application 08/467,306
These claims each recite "said flexible outer tube being high-density4
polyethylene qualified as type III, category 5, class C, selected from Grades
P23 and P24 as per ASTM D1248."
6
14, 16, 22 and 24 to be indefinite because they refer to an
ASTM standard, reasoning that "these factors could change in4
time and not be a specific limitation anymore" (final
rejection, page 3). This rejection is repeated on page 4 of
the examiner's answer, but is not discussed in detail on pages
6 to 8.
In any event, we do not consider that the reference to
the ASTM standard renders these claims indefinite. The ASTM
standard referred to in the claims is the one in existence
when the application was filed. Such standards are published
annually, and if later amended, the previous standard would
still be available. See the discussion of the ASTM in Gore &
Assocs. Inc. v. Int'l. Medical Prosthetics Research Assocs.
Inc., 16 USPQ2d 1241, 1244-45 (D. Ariz. 1990). Thus one of
ordinary skill could readily determine the bounds of claims
14, 16, 22 and 24. In this regard, we note that it is not
uncommon to recite ASTM standards or methods in claims. See,
e.g., In re Saether, 492 F.2d 849, 851, 181 USPQ 36, 38 (CCPA
Appeal No. 98-0024
Application 08/467,306
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1974), and In re Chapman, 357 F.2d 418, 148 USPQ 711 (CCPA
1966).
Accordingly, the rejection of claims 10 to 25 will not be
sustained.
Conclusion
The examiner's decision to reject claims 10 to 25 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )

Appeal No. 98-0024
Application 08/467,306
8
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