Ex Parte McClure

Board of Patent Appeals and Interferences

Mar 27, 2012

11370713 (B.P.A.I. Mar. 27, 2012)

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.
11/370,713 03/08/2006 Mark W. McClure 275PA0105 3821
26882 7590 03/27/2012
ROBERT R. WATERS, ESQ.
WATERS LAW OFFICE, PLLC
633 SEVENTH STREET
HUNTINGTON, WV 25701
EXAMINER
SHAKERI, HADI
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
03/27/2012 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 MARK W. McCLURE
__________

Appeal 2010-007474
Application 11/370,713
Technology Center 3700
___________

Before JAMESON LEE, RICHARD TORCZON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Mark W. McClure appeals under 35 U.S.C. § 134(a) from a final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Applied Prior Art
McClure (McClure ’90) Pat. 4,936,500 June 26, 1990
Buffinton Pat. 544,051 August 13, 1895
Jugle Pat. 2,963,679 December 6, 1960
Ahrndt Pat. 2,367,552 January 16, 1945
Appeal 2010-007474
Application 11/370,713
2

The Rejections on Appeal
Claims 1-3, 11-13, and 16 were finally rejected under 35 U.S.C. § 103
as obvious over McClure ’90 and Buffinton.
Claims 4, 5, 14, and 15 were finally rejected under 35 U.S.C. § 103 as
obvious over McClure ’90, Buffinton, and Jugle.
Claims 6, 7, 8, and 17 were finally rejected under 35 U.S.C. § 103 as
obvious over McClure ’90, Buffinton, and Ahrndt.
Claims 9 and 10 were finally rejected under 35 U.S.C. § 103 as
obvious over McClure ’90, Buffinton, Ahrndt, and Jugle.
The Invention
The claimed invention is a tool useful for clamping and aligning ends
of boiler wall tubes. Boiler tubes carry hot gases or water inside boilers
which produce steam and operate for long periods under high temperature
conditions. When a tube breaks, repair often requires welding and the ends
of two segments of a tube need to be held in firm alignment during welding.
(Spec. ¶ 3). In particular, the claims are specifically directed to such a tool
for clamping and aligning boiler wall tubes. Boiler wall tubes are boiler
tubes arranged in very close proximity to each other by use of webbing
structure so as to form a sheet or wall of tubes in closely confined space.
(Spec. ¶ 3). Appellant’s specification describes that certain boiler tube tools
of the prior art are not especially adapted for use with boiler tubes forming a
boiler wall, and the boiler wall tube tools of the prior art are not particularly
versatile in accommodating varying sizes of the boiler tubes. (Spec. ¶¶ 3-4).
In the Summary of Invention section, the specification states (Spec. ¶
6):
The combination of a recess and a planar or inclined wall along
the same general surface of a clamp member provides the user
App
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Figure 3
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07474
/370,713
ater versat
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Appeal 2010-007474
Application 11/370,713
4

substantially aligned with the aperture of the remaining clamp
member; and

means for moving the clamp members toward each other
for secure clamping engagement of the tubes for maintaining
the clamp members in alignment while connecting the ends of
the tubes by welding.

6. A boiler wall tube tool comprising:

a pair of opposed clamp members, each one of the clamp
members having a nose intermediately disposed between a
recess and an inclined wall, and an aperture formed centrally
through the clamp member;

the clamp members oriented so that the recess of one of
the clamp members is substantially aligned with the inclined
wall of the remaining clamp member for engaging a boiler wall
tube therebetween, and the aperture of one clamp member is
substantially aligned with the aperture of the remaining clamp
member; and

means for moving the clamp members toward each other
for secure clamping engagement of the tubes for maintaining
the clamp members in alignment while connecting the ends of
the tubes by welding.

11. In combination with a boiler tube wall formed and by a
plurality of closely spaced tubes rigidly connected by webs, a
tool for clampingly engaging adjacent ends of a tube from
which the connecting webs have been removed and retaining
the adjacent tube ends in alignment while being connected by
welding, said tool comprising:

a first clamp member and an opposing second clamp
member, each one of the clamp members having a nose
intermediately disposed between recess means and wall means,
and an aperture formed centrally through the clamp member;

Appeal 2010-007474
Application 11/370,713
5

the clamp members oriented so that recess means or wall
means of a first clamp member is aligned with wall means or
recess means of a second clamp member so that at least one
boiler wall tube is engaged between one of the recess means
and one of the wall means; and

means for moving the clamp members toward each other
for secure clamping engagement of the tubes for maintaining
the clamp members in alignment while connecting the ends of
the tubes by welding.

FINDINGS AND ANALYSIS
Claim Interpretation
Claim 11 recites a wall means and a recess means. A question arises
for purposes of claim interpretation whether those terms should be regarded
as setting forth a “means-plus-function” element under 35 U.S.C. § 112,
sixth paragraph, which provides that an element in a claim for a combination
may be expressed as a means for performing a specified function without the
recital of structure, material, or acts in support thereof, and that such claim
shall be construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
The Court of Appeals for the Federal Circuit has set forth the
appropriate manner of determining whether means-plus-function element
treatment under 35 U.S.C. § 112, sixth paragraph, applies to a claim
recitation. The guideline provided by the Court of Appeals for the Federal
Circuit is clear. Use of the word “means” creates a presumption that § 112,
sixth paragraph, applies, and not using the word “means” creates a
presumption that § 112, sixth paragraph, does not apply, Personalized Media
Communications, LLC v. International Trade Com’n, 161 F.3d 696, 703
(Fed. Cir. 1998). However, both presumptions can be rebutted. In that
Appeal 2010-007474
Application 11/370,713
6

regard, the Federal Circuit stated that in deciding whether either presumption
has been rebutted, the focus remains on whether the claim itself as properly
construed recites “sufficiently definite structure” to avoid the ambit of § 112,
sixth paragraph. Id. at 704; see also Watts v. XL Systems, Inc., 232 F.3d 877,
880 (Fed. Cir. 2000).
In this case, both “wall” and “recess” set forth sufficiently definite
structure as would be understood from the perspective of one with ordinary
skill in the art. Also, the terms “wall means” and “recess means” lack an
explicitly stated function that is to be performed. Accordingly, the terms
should not be regarded as means-plus-function elements. “Wall means”
simply sets forth a wall, and “recess means” simply sets forth a recess.
The Obviousness Rejections of Claims 1-17

All of the obviousness rejections rely on at least McClure ’90 and
Buffinton. The independent claims are claims 1, 6, and 11.
Claims 2-5 depend from claim 1. Claims 7-10 depend from claim 6.
Claims 12-17 depend from claim 11. Claims 1-3, 11-13, and 16 were
rejected over McClure ’90 and Buffinton. Claims 4, 5, 14, and 15 were
rejected over McClure, Buffinton, and Jugle. Claims 6, 7, 8, and 17 were
rejected over McClure, Buffinton, and Ahrndt. Claims 9 and 10 were
rejected over McClure ’90, Buffinton, Ahrndt, and Jugle.
Each of independent claims 1 and 6 recites a pair of opposed clamp
members and specify that each clamp member includes a nose positioned
between a recess and a wall. Claim 1 recites a planar wall and claim 6
recites an inclined wall. Both claims 1 and 6 require that for each clamp
member the recess is substantially aligned with the wall on the other to
engage a boiler wall tube in between. Independent claim 11 also recites two
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07474
/370,713
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rior art sp
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gle size re
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a wall and
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7
ires each c
all. Claim
e aligned
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re ’90 are
4 position
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and 26 of
are not o
f the other
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lls.
below, wh
:
opposing c
ed betwee
acknowled
ates that M
of boiler
pec. ¶ 4).
McClure
pposingly
to clamp
ber to inc
er requires
all or rece
ll tube eng
ich illustr

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n two rece
ged by Ap
cClure ’9
wall tubes
’90 do not
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ith the
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6

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r
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07474
/370,713
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Appeal 2010-007474
Application 11/370,713
9

In Figure 1 it is shown a base A in an upright position and a cap A’ in
a tilted-down position to facilitate viewing. Each of the base and the cap is
provided with a transverse groove B at one end and a serrated surface B’ at
another end, separated by an intermediate nose portion of the base or cap.
When forming a cleat to hold in place insulated electric wires, the two base
and cap pieces are arranged so that the groove on one opposes the serrated
surface on the other. (Buffinton 1:40-48).
In Figure 2 it is shown an assembled cleat with an insulated electric
wire placed within each groove B and passing through the cleat. The base A
and cap A’ of the cleat are mated together with screws C passing through
screw holes D to close the cleat and affix the cleat to permanent structure E.
The Examiner relied on Buffinton’s teaching of having both a recess B and a
wall B’ on each of two opposing clamping members A and A’, and of
placing the groove of one opposite the wall of the other. As is evident from
Figure 2, each electric wire is held between a groove on one half of the cleat
and a wall on the other half of the cleat.
Appellant asserts that Buffinton is nonanalogous art with respect to
Appellant’s invention and therefore is inapplicable to Appellant’s claims.
We do not reach the issue of whether Buffinton is nonanalogous art because,
even assuming that it is applicable prior art, the rejection cannot be
sustained.
We think the Examiner has not articulated a sufficient rationale for
modifying the single size double recess configuration of each clamp member
of McClure’90 to the oppositely disposed pairs of one recess and one wall as
shown in Buffinton. According to the Examiner (Answer 4:1-3): “One of
ordinary skill in the art would have been motivated to do this in order to
achieve an exceedingly firm grip of the tubular members by the clamp.”
Appeal 2010-007474
Application 11/370,713
10

We disagree. Buffinton discloses serrated surfaces B’ which are used
to dig into the two flexible insulated electric wires for a firm grip on the
wires. It is unexplained why a similar structure would be expected to
achieve comparable grasping performance in the context of boiler wall tubes
which are rigid and typically made of metal capable of being welded
together.
In any event, claim 1 requires a planar wall, not just any wall. We do
not regard Buffinton’s serrated surfaces B as a planar wall. The Examiner’s
reasoning that underneath the serrations is still a planar surface and so the
serrated surface is still essentially planar is unpersuasive. We interpret
“planar surface” in the context of Appellant’s invention as meaning a flat
surface. The Examiner’s interpretation of a planar surface as “laying in a
single geometric plane” (Answer 7:22 to 8:1) actually also requires the
surface to be flat, not serrated, because a serrated surface has a vertical
dimension and cuts across multiple geometric horizontal planes. In case the
Examiner is referring to what lies beneath the serrations, we note that a
mountain range of peaks and valleys cannot be regarded as a planar surface
simply because what lies beneath the peaks and valleys may be flat.
The Examiner also reasoned that it would have been obvious to one
with ordinary skill in the art to remove the serrations because one with
ordinary skill in the art would have known that features can be removed if
the advantage it provides is not essential. While the argument is not entirely
without merit, it cannot be used here in support of the rejection because the
Examiner’s stated rationale for combining McClure ’90 and Buffinton relies
on the serrated surfaces as providing an exceedingly firm grip. It is illogical
to rely on the serrations of Buffinton to combine the teachings of Buffinton
and McClure ’90 and then once the combination is made to propose to
Appeal 2010-007474
Application 11/370,713
11

eliminate the serrations in order to meet the claimed invention. The
rationale is inconsistent and reflects reliance on hindsight in light of
Appellant’s own disclosure as a road map to modify the prior art.
For the foregoing reasons, the proposed combination of McClure ’90
and Buffinton fails to render obvious the subject matter of claims 1-3, 11-13,
and 16.
For claims 4, 5, 14, and 15, the Examiner’s reliance on additional
reference Jugle does not make up for the deficiency of the combination of
McClure ’90 and Buffinton as discussed above. For claims 6, 7, 8, and 17,
the Examiner’s reliance on additional reference Ahrndt does not make up for
the deficiency of the combination of McClure ’90 and Buffinton. For claims
9 and 10, the Examiner’s reliance on additional references Jugle and Ahrndt
does not make up for the deficiency of the combination of McClure ’90 and
Buffinton.
The obviousness rejections of claims 1-17 cannot be sustained.
ORDER
The rejection of claims 1-3, 11-13, and 16 under 35 U.S.C. § 103 as
obvious over McClure ’90 and Buffinton is reversed.
The rejection of claims 4, 5, 14, and 15 under 35 U.S.C. § 103 as
obvious over McClure ’90, Buffinton, and Jugle is reversed.
The rejection of claim 6, 7, 8, and 17 under 35 U.S.C. § 103 as
obvious over McClure ’90, Buffinton, and Ahrndt is reversed.
The rejection of claims 9 and 10 under 35 U.S.C. § 103 as obvious
over McClure ’90, Buffinton, Jugle, and Ahrndt is reversed.
REVERSED