Ex Parte Hull et al

Board of Patent Appeals and Interferences

Nov 8, 2010

10903197 (B.P.A.I. Nov. 8, 2010)

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.
10/903,197 07/30/2004 Eric G. Hull 427600700094 2802
7590 11/09/2010
Jones Day
North Point
901 Lakeside Avenue
Cleveland, OH 44114-1190
EXAMINER
HEWITT, JAMES M
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
11/09/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC G. HULL, GREGORY D. TURCOVSKY,
and DENNIS P. REVLOCK, SR.
____________________

Appeal 2009-008168
Application 10/903,197
Technology Center 3600
____________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008168
Application 10/903,197

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STATEMENT OF THE CASE
Eric G. Hull et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1-16. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to electrical fittings in the
form of a male to female reducer having a barbed male end and a female
socket (Spec. 1: 4-10).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. Apparatus for transitioning from an existing electrical
nonmetallic tubing socket of one size to an electrical
nonmetallic tubing socket of a smaller size, the existing socket
having latch fingers for reception in an external circumferential
groove of a first electrical nonmetallic tube that is closely
receivable in the existing socket for locking reception therein,
said apparatus comprising:
a reducer fitting having generally cylindrical male and
female opposite end portions;
said male end portion having a cylindrical outer surface
and a terminal end;
a shoulder extending outwardly from said outer surface
between said male and female end portions;
a pair of axially-spaced first and second circumferential
projections extending outwardly from said outer surface
intermediate said terminal end and said shoulder;
said second projection being located between said first
projection and said shoulder;
at least said second projection having a sloping cam
surface that slopes outwardly from said outer surface in a
direction away from said terminal end;
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Application 10/903,197

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said female end portion having a generally cylindrical
electrical nonmetallic tubing socket therein that is smaller than
the existing socket for receiving an end portion of a second
electrical nonmetallic tube that is smaller than the first electrical
nonmetallic tube;
said male end portion being configured for locking
reception in the existing electrical nonmetallic tubing socket by
way of cooperation between at least one of said projections and
the latch fingers on the existing socket; and
said electrical nonmetallic tubing socket on said fitting
being one size smaller than the existing electrical nonmetallic
tubing socket.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1, 3, 4 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petty (US 5,094,482, issued Mar. 10, 1992) in view
of Merrett (US 5,984,375, issued Nov. 16, 1999).
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Petty in view of Patera (US 5,312,138, issued May 17, 1994).
3. Claims 5 and 7-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petty in view of Merrett, and further in view of
Rajecki (US 4,989,905, issued Feb. 5, 1991).

ISSUE
The issue before us is whether the Examiner erred in finding that Petty
describes a reducer fitting (1) including a female end portion smaller than an
existing socket, as called for in independent claim 1, and (2) a female end
portion being configured for locking reception of a tube one size smaller
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Application 10/903,197

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than a first size, as called for in independent claims 7 and 9 (Reply Br. 4;
App. Br. 8, 11).

ANALYSIS
Appellants contend that Petty does not describe a reducer fitting, as
called for in independent claims 1, 7 and 9 (Reply Br. 4; App. Br. 8, 11).
The Examiner found that Petty describes a reducer fitting (Ans. 3, 4).
In support thereof, the Examiner found (1) that while Petty describes that
“[t]he other end 4 is shown for threaded connection to a junction box or the
like” (col. 1, ll. 54-55), Petty’s male end 4 “could be designed for any type
of connection or fitting” (Ans. 7); (2) that Petty describes in column 1, lines
34-38 that “[t]he connector . . . can be utili[z]ed with any form of fittings”
(Ans. 7); (3) that “as it is clear from FIG. 2 that a fitting joined to the male
end 4 would have a diameter larger than the corrugated hose inserted into
open end 3, Petty et al’s fitting 1 constitutes a ‘reducer fitting’” (id.); and (4)
that “Petty et al’s reducer fitting is capable of transitioning from an existing
ENT socket of one size to an ENT socket of a smaller size” (id.).
Appellants contend that “[i]t is not the corrugated hose of Petty that is
relevant to the claimed reducer fitting,” “it is the female end portion 2 and
the socket 3 defined by that end portion” (emphasis added) (Reply Br. 4).
Appellants contend that “Appellants’ female end portion defines a socket
that is smaller than the existing socket,” whereas “Petty’s female end portion
2 defines a socket 3 that is not smaller than the existing socket” (emphasis
added) (id.). Appellants further contend that, “as evidenced by Fig. 2 of
Petty, the nominal diameter of the corrugated pipe is virtually the same as
the diameter of the connector (App. Br. 10).
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Application 10/903,197

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Claim 1 calls for, inter alia, an existing socket, a reducer fitting
having generally cylindrical male and female opposite end portions, the
female end portion having a socket therein that is one size smaller than the
existing socket.
Claims 7 and 9 call for, inter alia, a reducer fitting having generally
cylindrical male and female opposite end portions, the female end portion
having a socket, the male end portion configured for locking reception in a
first size socket, and the female end portion configured for locking reception
of an electrical nonmetallic tube, wherein the tube is at least one size smaller
than the first size.
Petty describes a connector 1 having an open end (female end) 3 for
insertion of corrugated piping to effect a connection thereto, and the other
end (male end) 4 has a threaded connection (col. 1, ll. 50-59). Petty
describes in column 1, lines 34-38 and 54-55 (1) that the connector can be
utilized with any form of fittings and (2) that the other (male end) 4 is shown
for threaded connection to a junction box. However, the written disclosure
of Petty is silent as to the sizes of the fittings and the size of the other (male
end) 4. Petty is also silent as to the relative sizes of the open end (female) 3
and the other (male end) 4. As such, it becomes incumbent upon the
Examiner to provide an adequate basis in fact and/or technical reasoning that
would support a finding that Petty describes a reducer fitting, wherein the
female socket is one size smaller that the socket that fits over the male end,
as called for in independent claims 1, 7 and 9.
The Examiner relies on Figure 2 of Petty, maintaining that Figure 2
clearly shows that a fitting joined to the other (male end) 4 would have a
diameter larger than the corrugated hose inserted into open end (female) 3.
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Application 10/903,197

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However, as Appellants have pointed out (App. Br. 10), the nominal
diameter of the corrugated pipe/hose inserted into the open end (female) 3 of
Petty appears to be virtually the same as the diameter of the other (male end)
4. As such, a fitting into which the other (male end) 4 would be inserted
would seemingly have an inner diameter substantially equal to the inner
diameter (i.e., socket size) of open end (female) 3. The Examiner’s position
thus is not persuasively substantiated by Figure 2 of Perry.
Moreover, since Petty’s written description is silent on the issue,
reliance on Petty’s patent drawings alone as showing the particular relative
sizes of the other (male end) 4 and open end (female) 3 is not something that
we can readily endorse, absent a showing as to how a person of ordinary
skill in the art would interpret the drawings without accompanying written
description.. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d
951, 956 (Fed. Cir. 2000) (“it is well established that patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue.);
see also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any
written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value.”).
We find that the Examiner has not provided an adequate basis in fact
and/or technical reasoning that would support a finding that Petty describes a
reducer fitting as claimed. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”)
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Application 10/903,197

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The Examiner has not relied on Merrett, Rajecki or Patera for any
teaching that would remedy the deficiency in Petty (Ans. 3, 4, 6).
Thus, we are constrained to reverse the rejection of independent
claims 1, 7 and 9, and of claims 2-6, 8 and 10-16, which depend therefrom.

CONCLUSION
The Examiner has erred in finding that Petty describes a reducer
fitting (1) including a female end portion smaller than an existing socket, as
called for in independent claim 1, and (2) a female end portion being
configured for locking reception of a tube one size smaller than a first size,
as called for in independent claims 7 and 9.

DECISION
The decision of the Examiner to reject claims 1-16 is reversed.

REVERSED

mls

JONES DAY
NORTH POINT
901 LAKESIDE AVENUE
CLEVELAND, OH 44114-1190