Ex Parte Raczuk

Board of Patent Appeals and Interferences

Apr 7, 2010

10752110 (B.P.A.I. Apr. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD C. RACZUK
____________

Appeal 2009-005628
Application 10/752,110
Technology Center 3700
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Decided: April 7, 2010
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Before: JENNIFER D. BAHR, JOHN C. KERINS, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005628
Application 10/752,110

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STATEMENT OF THE CASE
Richard C. Raczuk (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting claims 1-25. Claim 26 has been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a tool for mating an end of
a braided hose to a connector or socket. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A tool for assembling a hose material within a
connector opening in a connector, comprising:
a body having a first portion to locate the
connector with the connector opening in a first
position, and a converging passage having an inlet
adapted for receiving an end of the hose material
with a disturbed sheath and an outlet in registry
with the connector opening when in said first
position, said converging passage defined by a
surface that constrains the size of the disturbed
sheath as it passes from said inlet to said outlet,
wherein said outlet is no larger than the connector
opening.

The Rejections
Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 102(b) of claims 1-14 and 18-25 as anticipated by US Patent 5,480,193
issued to Echols (Jan. 2, 1996) and of claims 1-17 and 19-25 as anticipated
by US Patent 5,353,623 issued to Bobenhausen (Oct. 11, 1994).

Appeal 2009-005628
Application 10/752,110

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SUMMARY OF DECISION
We REVERSE.

ISSUES
The claimed invention is directed to a device that receives a hose
having a "disturbed" sheath through an opening in a passage. Independent
claim 1 requires a "converging passage" defined "by a surface that constrains
the size of the disturbed sheath" as it passes through the passage.
Independent claim 10 requires a "means for reducing the diameter of the
hose" wherein the means includes "a confining path adapted for the passage
of the hose." Independent claim 19 requires a "converging passage" defined
by a "frustum conical surface that reduces the diameter of the disturbed
sheath" as it passes through the passage, such that "at said outlet the
diameter of the hose and sheath has been reduced by said frustum conical
surface."
The Examiner found that both Echols and Bobenhausen describe an
adjustable passage that has a reducing diameter, thus anticipating each
independent claim. See Ans. 3. Appellant argues that neither reference
describes the claimed "converging passage" that "[constrains/reduces] the
[size/diameter] of the disturbed sheath," as recited in claims 1 and 19
(Appeal Br. at items A, C, D, and F) or the "means for reducing the diameter
of the hose" as recited in claim 10 (Appeal Br. at items B and E).
Therefore, the dispositive issues in this appeal are:
(1) Has the Examiner made the requisite factual findings to establish that
Echols describes structure satisfying the limitations in claims 1 and 19
directed to a "converging passage" defined by a surface that
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Application 10/752,110

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constrains/reduces the size/diameter of the disturbed sheath as it
passes through the passage, as required by claims 1 and 19?
(2) Has the Examiner made the requisite factual findings to establish that
Echols describes structure satisfying the limitation in claim 10 of a
"means for reducing the diameter of the hose" wherein the means
includes "a confining path adapted for the passage of the hose"?
(3) Has the Examiner made the requisite factual findings to establish that
Bobenhausen describes structure satisfying the limitations in claims 1
and 19 directed to a "converging passage" defined by a surface that
constrains/reduces the size/diameter of the disturbed sheath as it
passes through the passage?
(4) Has the Examiner made the requisite factual findings to establish that
Bobenhausen describes structure satisfying the limitation in claim 10
of a "means for reducing the diameter of the hose" wherein the means
includes "a confining path adapted for the passage of the hose" as
required by claim 10?

PRINCIPLES OF LAW
To establish anticipation, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001).

Appeal 2009-005628
Application 10/752,110

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ANALYSIS
Issue (1) - Does Echols describe a "converging passage"?
The Examiner found that Echols discloses a converging passage,
whereby the "first and second portion (25f&25b) which are a pair that is
adjustable with [] passages." Ans. 3-4. Presumably, the Examiner is
referring to the two clamp halves 25B and 25A of the clamp device that fits
over the pipe and fitting of Echols. Appellant argues that Echols does not
disclose a "converging passage" as claimed. Appeal Br. at A, C.
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner has not
pointed out where Echols describes each limitation of claims 1 and 19. In
particular, the claims require a "converging passage," which the Examiner
does not address in the rejection. See Ans. 3. The Examiner does nominally
address the "converging passage" in the "Response to Argument" section,
after this shortcoming was particularly argued by Appellant. See Appeal Br.
at A. However, the Examiner summarily states that the "references do
disclose a converging passage," without specifically identifying any
structure in Echols that corresponds to the limitation. See Ans. 3-4. Thus,
the Examiner has failed to meet the initial burden requisite for a finding of
anticipation.

Issue (2) - Does Echols describe a "means for reducing"?
The Examiner does not provide a separate anticipation analysis for
claim 10, which recites a "means for reducing the diameter of the hose,"
"wherein said means including [sic] a confining path adapted for the passage
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of the hose." Appellant urges that claim 10 recites means-plus-function
language requiring a particular structure. Appeal Br. at B. The Examiner
merely states that "there is equivalent structure to match the means plus
function language" without specifying what structure in Echols that
"equivalent structure" might be, and without analyzing whether claim 10
recites means-plus-function language1 or construing the language in light of
the Specification2. Ans. 4. Therefore, the Examiner has not met the initial
burden of presenting a prima facie case of unpatentability. See In re Oetiker,
977 F.2d at 1445; In re Donaldson Co., 16 F.3d at 1192.

Issue (3) - Does Bobenhausen describe a "converging passage"?
The Examiner found that Bobenhausen describes "a first and second
portion (96&98) which are a pair that is adjustable with a passage[], [and] a
reducing diameter." Ans. 3. Presumably, the Examiner is referring to the
upper and lower die inserts of Bobenhausen that clamp down to crimp a

1 Claim 10 recites a "means for reducing," "wherein said means including
[sic] a confining path." The record does not indicate whether the appropriate
analysis to determine whether the claim contains a means-plus-function
recitation under 35 U.S.C. § 112, sixth paragraph, has been done as required
by the Manual of Patent Examining Procedure (MPEP) § 2181(I) (8th Ed.,
Rev. 7, Jul. 2008) (especially noting prong "C" of the three-prong test).
2 Contrary to the Examiner's statement that "[i]t will be up to the Board to
determine how much or how little is read into the claims and is equivalence
honored or not honored" (Ans. 4), "under Donaldson an examiner carries the
initial burden of proof for showing that the prior art structure or step is the
same as or equivalent to the structure, material, or acts described in the
specification which has been identified as corresponding to the claimed
means or step plus function." MPEP § 2182 (citing In re Donaldson Co., 16
F.3d 1189 (Fed. Cir. 1994)). The Examiner cannot delegate that task to the
Board.
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ferrel [sic, ferrule] onto a hose. See Bobenhausen, col. 5, ll. 10-18, fig. 1.
Appellant argues that Bobenhausen does not describe a "converging
passage" as recited in the claims. Appeal Br. at D, F. The Examiner has not
pointed out where Bobenhausen describes each limitation of claims 1 and
19, and in particular, the limitation requiring the body to have a "converging
passage." Therefore, the Examiner has not met the initial burden of
presenting a prima facie case of unpatentability. See In re Oetiker, 977 F.2d
at 1445.

Issue (4) - Does Bobenhausen describe a "means for reducing"?
The Examiner does not provide a separate anticipation analysis for
claim 10, which recites a "means for reducing the diameter of the hose."
Appellant urges that claim 10 recites means-plus-function language
requiring a particular structure. Appeal Br. at E. The Examiner merely
states that "there is equivalent structure to match the means plus function
language." Ans. 4. Therefore, for the same reasons set forth in our
discussion with respect to Issue (2) above, the Examiner has not met the
initial burden of presenting a prima facie case of unpatentability. See In re
Oetiker, 977 F.2d at 1445; In re Donaldson Co., 16 F.3d at 1192.

CONCLUSIONS
(1) The Examiner has not made the requisite factual findings to support a
finding that Echols describes structure satisfying the limitations in
claims 1 and 19 directed to a "converging passage" defined by a
surface that constrains/reduces the size/diameter of the disturbed
sheath as it passes through the passage. Therefore, we do not sustain
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the Examiner's rejection of claims 1 and 19 as anticipated by Echols,
and of claims 2-9, 18, and 20-25, which depend therefrom.
(2) The Examiner has not made the requisite factual findings to support a
finding that Echols describes structure satisfying the limitation in
claim 10 of a "means for reducing the diameter of the hose" wherein
the means includes "a confining path adapted for the passage of the
hose." Therefore, we do not sustain the Examiner's rejection of claim
10 as anticipated by Echols, and of claims 11-14, which depend
therefrom.
(3) The Examiner has not made the requisite factual findings to support a
finding that Bobenhausen describes structure satisfying the limitations
in claims 1 and 19 directed to a "converging passage" defined by a
surface that constrains/reduces the size/diameter of the disturbed
sheath as it passes through the passage. Therefore, we do not sustain
the Examiner's rejection of claims 1 and 19 as anticipated by
Bobenhausen, and of claims 2-9 and 20-25, which depend therefrom.
(4) The Examiner has not made the requisite factual findings to support a
finding that Bobenhausen describes structure satisfying the limitation
in claim 10 of a "means for reducing the diameter of the hose"
wherein the means includes "a confining path adapted for the passage
of the hose" as required by claim 10. Therefore, we do not sustain the
Examiner's rejection of claim 10 as anticipated by Bobenhausen, and
of claims 11-17, which depend therefrom.

Appeal 2009-005628
Application 10/752,110

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DECISION
The Examiner's decision is reversed as to claims 1-25.

REVERSED

hh

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