12029595 (B.P.A.I. Jun. 26, 2012)

Ex Parte Turner

Board of Patent Appeals and InterferencesJun 26, 2012

12029595 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRUCE H. TURNER ____________ Appeal 2010-004272 Application 12/029,595 Technology Center 3600 ____________ Before STEVEN D.A. MCCARTHY, MICHAEL L. HOELTER, and JAMES P. CALVE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-4 and 6-15. App. Br. 3.1 Claim 5 has been canceled. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART. 1 Refers to Appeal Brief filed Jul. 3, 2009. Appeal 2010-004272 Application 12/029,595 2 CLAIMED SUBJECT MATTER Claim 1 is representative of the claimed subject matter on appeal: 1. A sleeve for protecting a utility conduit passing through a hole in a stud used in building construction, comprising: a body portion forming a hollow trough extending longitudinally and defining a body length, wherein said trough has a circular side section with a diameter defining a body width, and wherein said circular side section is changeable by compression with human hand or conventional hand-tool to adapt said body width to coincide with a range of sizes of the hole in the stud; said body portion further having an inserted end and a worked end at opposed ends of said trough to permit engagement of the sleeve into the hole in the stud by inserting said inserted end into the hole and pressing on said worked end; said body portion further having two edge portions extending between said inserted end and said worked end, wherein each said edge portion has a plurality of edge fingers; a stop portion at said worked end of said body portion to stop insertion of the sleeve into the hole beyond a proximate face of the stud; and a retention portion in the sleeve to affirmatively retain the sleeve within the hole once inserted there in. REJECTIONS Claim 1 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1-4 and 6-15 are rejected under 35 U.S.C. § 102(b) as being anticipated by Thoreson (EP 0486299 A1; pub. May 20, 1992). Appeal 2010-004272 Application 12/029,595 3 ANALYSIS Claim 1 as indefinite The Examiner determined that the limitation “changeable by compression with human hand or conventional hand tool” is indefinite because hand strengths vary and what one hand may compress another may not. Ans. 3. The Examiner also determined that the term “conventional hand tool” has not been defined in such a way as to clearly identify what is a conventional hand tool, which causes confusion as there are many types of hand tools in existence, each with its own uses, functions, power, and strength abilities. Ans. 3. Appellant argues that an artisan reading claim 1 would know that the shape of the claimed sleeve is changeable by hand compression, versus the shape of a brick, which is not. App. Br. 9. Appellant also argues that such a skilled artisan would know that the shape of the sleeve is changeable by the hand of a human that would normally use the sleeve, versus the hand of an infant, which would not be engaged in building construction. App. Br. 9. Appellant further argues that the USPTO patent classification system defines some classes as pertaining to hand tools, which indicates that the USPTO has no problem understanding what is meant by a hand tool. App. Br. 9-10. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). “The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005). Appeal 2010-004272 Application 12/029,595 4 Appellant has not pointed to anything in the Specification that provides a workable objective standard to define the compression that is applied by a human hand or the types of hand tools that are “conventional” within the scope of claim 1. See App. Br. 8-9; Reply Br. 2. As such, we sustain the rejection of claim 1 as being indefinite. See Datamize, 417 F.3d at 1352-53. Claims 1-4 and 6-15 as anticipated by Thoreson The Examiner found that Thoreson discloses a sleeve with a body portion 12 forming a longitudinal hollow trough with a circular side section, an inserted end, and a worked end, and further having two edge portions 18, 20 extending between the inserted and worked ends where each edge portion has a plurality of edge fingers 42, 44. Ans. 3-4. The Examiner interpreted the term “fingers” as not imparting any distinguishing structural features and determined that elements 42 constitute fingers as they are separated elements for interlocking and engaging with elements 44. Ans. 7-8. Appellant argues that elements 42 are openings or slots or holes, not fingers as called for in claim 1. Reply Br. 4-5. Appellant also argues that the fingers 44 on the one edge 20 of Thoreson’s collar 12 may correspond to the claimed fingers, but the openings 42 on the other edge 18 of the collar 12 are not equivalent to the claimed edge fingers. App. Br. 12. We agree. The Examiner’s interpretation of the term “fingers” as not imparting any distinguishing structural features is inconsistent with the Specification, which discloses embodiments in which a plurality of fingers 72 (fig. 10) and 76 (fig. 13) extend from the side edges 70 of two sleeves 10, 10a. Spec. 15, ll. 7-31. The fingers 72 overlap one another in the Figure 10 embodiment (Fig. 11b) and interlock with one another in the Figure 13 embodiment (Fig. 14b). Although the slots 42 that are formed in one end 18 of Thoreson’s Appeal 2010-004272 Application 12/029,595 5 collar 12 interlock with fingers 44 that extend from the other end 20, the slots 42 do not correspond to the claimed edge fingers2 because they are openings formed in the collar 12 rather than elements that extend from the edge of the collar. As such, we cannot sustain the rejection of claims 1-4 and 6-15 as anticipated by Thoreson. DECISION The rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as being indefinite is AFFIRMED. The rejection of claims 1-4 and 6-15 under 35 U.S.C. § 102(b) as being anticipated by Thoreson is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART mls 2 An ordinary, customary meaning of “finger” includes “a digit of the forelimb” or “something that resembles a finger.” MERRIAM-WEBSTER’S COLLEGIATE® DICTIONARY (11th ed. 2005). Appellant’s use of “finger” is consistent with this meaning. See Spec. 15, ll. 7-31; Figs. 10, 13.