Ex parte Wright et al.

Board of Patent Appeals and Interferences

Aug 18, 1998

08399836 (B.P.A.I. Aug. 18, 1998)

Application for patent filed March 7, 1995.1
-1-
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journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RICHARD B. WRIGHT and KENNETH MILLIGAN
________________
Appeal No. 97-2911
Application 08/399,8361
________________
ON BRIEF
________________
Before STAAB, NASE and CRAWFORD, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 3, 9 and 10, all the claims then remaining in the
application. Subsequent to the final rejection, appellants
Appeal No. 97-2911
Application 08/399,836
Both the examiner (answer, page 2) and appellants2
(brief, page 2; reply brief, page 2) appear to be of the view
that dependent claim 3 has been canceled. However, our review
of the record reveals that claim 3 remains pending.
-2-
filed an amendment (Paper No. 8) canceling claim 9 and
amending claim 10 to include the subject matter of claim 9
therein. Accordingly, only the rejection of claims 3 and 10
remain before us for review.2
Appellants’ invention pertains to a double-ended flex-
handle wrench. Independent claim 10, a copy of which appears
in the appendix to appellants’ brief, is illustrative of the
appealed subject matter.
The references of record relied upon by the examiner in
support of a rejection under 35 U.S.C. § 103 are:
Nakano 2,294,510 Sept. 1, 1942
Engquist 2,951,405 Sept. 6, 1960
Wendling 2,987,334 Jun. 6, 1961
Claims 3 and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Engquist in view of Nakano and
Wendling.
Reference is made to appellants’ brief (Paper No. 11) and
reply brief (Paper No. 13) and to the examiner’s answer (Paper
No. 12) for the respective positions of appellants and the
Appeal No. 97-2911
Application 08/399,836
-3-
examiner with respect to the merits of this rejection.
The only claim limitation argued by appellants as
patentably distinguishing the claims over the applied prior
art is the requirement of claim 10 that the handle of the
wrench includes a pair of ergonomic gripping surfaces in the
form of bulbous portions. Specifically, claim 10 calls for a
handle having a pair of opposing forked arms connected by
bridge means at each end thereof, “and a pair of bulbous
portions, each said bulbous portion positioned near one of
said bridge means to provide additional ergonomic gripping
surfaces for controlling and maneuvering said double-ended
flex-handle wrench.”
The examiner has taken the position on the penultimate
page of the answer that the enlarged portions 2 and 3 of
Engquist’s wrench can be broadly construed as the claimed
“bulbous” portions.
This position is not well taken. First, the enlarged
ends of Engquist’s wrench as a whole (i.e., the forked end 4
and 5, the bridge portions joining the forked ends, and the
tapered transition portions joining the bridge portions to the
Appeal No. 97-2911
Application 08/399,836
Webster’s New Riverside University Dictionary (The3
Riverside Publishing Company © 1984).
-4-
narrow shank 1) cannot be considered bulbous portions as
called for by claim 10. This is so because claim 10
specifically calls for each end of the handle to have a pair
of opposing forked arms connected by bridge means, and further
calls for a bulbous portion to be positioned “near” each
bridge means. This makes clear that the claimed bulbous
portions are separate and distinct from the bridge means and
forked arms.
Second, Engquist’s tapered transition portions by
themselves cannot be considered bulbous portions under any
fair reading of the term “bulbous.” In this instance, an
appropriate definition for “bulbous” is “resembling a bulb:
rounded” and an appropriate definition for “bulb” is “a
rounded projection or part.” Because the tapered transition3
portions of Engquist between the handle shank and the bridge
portions are not arcuate in logitudinal cross section, it is
our view that they are not in any sense “rounded” so as to
“resemble a bulb.” They are, at best, frustoconical.
Appeal No. 97-2911
Application 08/399,836
-5-
Third, while it is well settled that terms in a claim are
to be given their broadest reasonable interpretation in
proceedings before the PTO, this interpretation must be
consistent with the specification and the claim language
should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Bond,
910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990); In
re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983). Here, when the claim limitation calling for “bulbous
portions” positioned near the bridge means to provide
additional ergonomic gripping surfaces is read in light of the
specification, we can think of no circumstances where one of
ordinary skill in the art would regard Engquist’s tapered
transition portions as meeting this limitation.
In light of the foregoing, we shall not sustain the
standing § 103 rejection of claims 3 and 10 as being
unpatentable over Engquist in view of Nakano and Wendling.
The decision of the examiner is reversed.
REVERSED
Appeal No. 97-2911
Application 08/399,836
-6-
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
JEFFREY V. NASE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-2911
Application 08/399,836
-7-
D. Peter Hochberg Co.
The Baker Building Sixth Floor
1940 Eash 6th Street
Cleveland, OH 44114