Ex parte KRAMER

Board of Patent Appeals and Interferences

Jun 29, 1998

08393858 (B.P.A.I. Jun. 29, 1998)

Application for patent filed February 24, 1995. 1
According to appellant, this application is a division of
Application 08/248,097, filed May 24, 1994.
1
Paper No. 11
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte VANCE M. KRAMER, JR.
______________
Appeal No. 97-2966
Application 08/393,8581
_______________
ON BRIEF
_______________
Before MCCANDLISH, Senior Administrative Patent Judge, and
MEISTER and MCQUADE, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Vance M. Kramer, Jr. (the appellant) appeals from the
final rejection of claims 7-9, the only claims remaining in
Appeal No. 97-2966
Application 08/393,858
Contrary to the examiner’s statement on page 3 of the2
answer that the copy of the appealed claims in the appendix to
the brief is correct, we note that in subparagraph h) of claim
7 (as reproduced in the appendix to the brief) “steps 3
through g” should read -- steps c through g --.
2
the application.
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), enter a new rejection of the
appealed claims under 35 U.S.C. § 103.
The appellant’s invention pertains to a length of rubber
tubing with axially spaced circumferentially corrugated
segments which has been made by a particular process.
Independent claim 7 is further illustrative of the appealed
subject matter and reads as follows:2
7. A length of rubber tubing of uniform wall thickness
throughout its length and with axially spaced
circumferentially corrugated segments, made by the process
comprising the steps of:
a) positioning an end length of a sleeve of uncured
rubber over an end portion of a forming mandrel;
b) positioning about said end length, an axially
extensible, resilient forming member with sleeve-engaging
convolutions so that there is space between the convolutions;
c) expanding said end length of said sleeve radially into
engagement with said convolutions;
Appeal No. 97-2966
Application 08/393,858
3
d) axially foreshortening said forming member and said
radially expanded end length of said sleeve, concertina
fashion to cause circumferential portions of said sleeve to be
pressed between convolutions of said forming member, to form
at least rudimentary corrugations in said end length;
e) axially extending said forming member and said end
length of said sleeve while radially collapsing said end
length;
f) moving said sleeve axially along said mandrel to a new
axial location;
g) moving said forming member axially relative to said
sleeve to a new length portion of said sleeve axially spaced
from said end length;
h) repeating steps c through g until a desired number of
length portions with rudimentary corrugations are formed;
i) removing said forming member from said sleeve; and
j) curing said sleeve to provide a length of tubing with
a plurality of axially spaced corrugated segments and with a
uniform wall thickness.
No prior art has been relied on by the examiner.
Prior art relied on by this merits panel of the Board is:
Kramer et al. (Kramer) 3,304,581 Feb. 21,
1967
The prior art set forth by the appellant in lines 23-31
of page 2 of the specification (the admitted prior art).
Claims 7-9 stands rejected under 35 U.S.C. § 112, first
paragraph, as being based upon an original disclosure which
Appeal No. 97-2966
Application 08/393,858
See column 1, line 15, and column 3, line 12, of Patent3
No. 3,168,604; column 1, lines 18 and 19, and column 2, line
(continued...)
4
fails to provide descriptive support for the subject matter
now being claimed. According to the examiner, there is no
support in the original disclosure for the recitations set
forth in independent claim 7 of the tubing being “of uniform
wall thickness throughout its length” and that the sleeve is
cured “with a uniform thickness.”
We will not support the examiner’s position. As the
appellant has argued:
The present application when filed, incorporated
by reference several U.S. patents [see
specification, page 1] that provide support for the
claimed feature whereby the tubing produced by the
recited process, has a uniform wall thickness. The
patents referred to are Nos. 3,168,604; 3,304,581;
3,669,586; 3,705,780; 3,975,129; 4,053,275; and
4,113,828. All of these U.S. patents issued prior
to the effective filing date (May 24, 1994) of the
present application. The present application
recites that the invention relates to an unique
variation of the method and apparatus for the
manufacture of tubing in accordance with those
patents. [Brief, page 6.]
The examiner recognizes this but, nevertheless, takes the
position that there is no specific indication that the
“uniform wall thickness” disclosed by these references is3
Appeal No. 97-2966
Application 08/393,858
(...continued)3
70, of Patent No. 3,304,581; column 1, lines 13, 33 and 34, of
Patent No. 3,699,586; column 1, lines 13 and 14, of Patent No.
3,705,780; column 5, line 5, of Patent No. 4,053,275; and
column 5, line 8, of Patent No. 4,113,828.
5
intended for use in the claimed length of rubber tubing. We
do not agree. Page 1 of the specification expressly states
that the invention relates to the manufacture of “such tubing
in accordance with” the above-noted patents. In our view,
this statement provides a specific indication that the tubing
of the instant invention has the same features (including a
uniform wall thickness) as those disclosed by the patents
which are incorporated by reference. This being the case, we
share the appellant’s view that there is adequate descriptive
support for the limitation of a “uniform wall thickness” as
claimed.
In view of the foregoing, we will not sustain the
rejection of claims 7-9 under 35 U.S.C. § 112, first
paragraph.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claims 7-9 are rejected under 35 U.S.C. § 103 as being
Appeal No. 97-2966
Application 08/393,858
6
unpatentable over the admitted prior art in view of Kramer.
The admitted prior art states that “[i]n the past” tubing
having axially spaced corrugated length portions has been made
by using plural forming devices at axially spaced length
portions of the uncured rubber sleeve. Thus, according to the
admitted prior art, a length of rubber tubing with axially
spaced circumferentially corrugated segments is known in the
art (albeit formed by a different process). To the extent
that the tubing of the admitted prior art might not have a
“uniform wall thickness,” Kramer’s teaching of a “uniformity
in a wall thickness” (column 1, lines 18 and 19) would have
fairly suggested such an arrangement, particularly where
economical manufacture is of concern (see column 1, line 17).
Although the tubing of the admitted prior art is formed by a
different process, we must point out that the determination of
patentability in a product-by-process claim is based on the
product itself, even though the claim may be limited and
defined by the process. That is, the product in such a claim
is unpatentable if it is the same as or obvious from the
product of the prior art, even if the prior product was made
by a different process. In re Thorpe, 777 F.2d 695, 697, 227
Appeal No. 97-2966
Application 08/393,858
7
USPQ 964, 966 (Fed. Cir. 1985).
In summary:
The rejection of claims 7-9 under 35 U.S.C. § 112, first
paragraph, is reversed.
A new rejection of claims 7-9 has been made under 35
U.S.C. § 103.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of
the following two options with respect to the new ground of
Appeal No. 97-2966
Application 08/393,858
-8-
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
HARRISON E. MCCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )

Appeal No. 97-2966
Application 08/393,858
-9-
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