APPLICATION OF COLLIER, Patent Appeal No. 7973.

• Decision Date: 27 June 1968
• Docket Number: Patent Appeal No. 7973.
• Citation: 158 USPQ 266,397 F.2d 1003
• Parties: Application of John Covell COLLIER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

158 USPQ 266, 397 F.2d 1003 (1968)

Application of John Covell COLLIER.

Patent Appeal No. 7973.

United States Court of Customs and Patent Appeals.

June 27, 1968.

William Hintze and Adrian J. LaRue, Harrisburg, Pa. (Truman S. Stafford, New York City, Roger L. Hansel, Washington, D.C., of counsel), for appellant.

Joseph Schimmel, Washington, D.C. (Jere W. Sears, Washington, D.C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and KIRKPATRICK^*, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claim 17 of application serial No. 242,973, filed December 7, 1962, entitled "Electrical Connections."

The rejection of claim 17 is based on two grounds: (1) that it does not comply with 35 U.S.C. § 112 because incomplete and indefinite; (2) that the subject matter defined by the claim is obvious under 35 U.S.C. § 103 in view of a patent to Dumire et al., No. 3,109,052, Oct. 29, 1963. Other references were cited and relied on by the examiner but the board held them merely cumulative.

The invention relates to making a ground wire connection with the shield conductor of a coaxial cable and is illustrated by Fig. 4 of the application drawings:

The coaxial cable has an axial conductor 10 covered by insulation 12 over which is the usual coaxial wire braid or second conductor 11 over which is the external insulating sheath 13. It is desired to make a ground connection with the braid 11, through applied wire 14, without damaging the insulation 12. To this end, insulation 13 is stripped back and a perforated metal ferrule 15 is crimped around the braid into generally cylindrical form, the ferrule being rolled up from flat stock. The perforations in the ferrule are struck inwardly so as to produce sharp projections which extend toward the axis and dig into the wire braid but not so far as to damage insulation 12. The perforations are preferably in staggered rows so that when the ferrule is crimped over the ground wire they will distort it into the sinuous path shown in dotted lines, locking it more securely against withdrawal.

The single claim on appeal, which we have broken up into its elements for clarity and to which we have added some emphasis, reads:

17. For use in a ground connection,

1 a connector member for engaging shield means of a coaxial cable means,

said connector member comprising a substantially rectangular piece of metal formed into trough form to define a ferrule-forming member, said ferrule-forming member having

a series of perforations disposed therein toward the axis of the ferrule-forming member and defining inwardly directed frustoconical projections having jagged edges defining lances converging toward their tips said ferrule-forming member being crimpable onto said shield means with said lances keying into said shield means without penetrating insulation means disposed thereunder,

2 and ground wire means for disposition between said ferrule-forming member and said shield means upon the ferrule-forming member being crimped onto the shield means,

said ground wire means being displaced in a series of bights around respective perforations to effect serpentine form when said ferrule-forming member is crimped onto said shield means.

We consider first the rejection based on section 112. The examiner's rejection on this score, which the board appropriately declined to follow, was on the ground that claim 17 was merely a "catalogue of elements." The examiner's view was that it recites "a connector member, a shield means and a ground wire." We do not regard that as a proper reading of the claim. There is no positive inclusion of "shield means" in what is apparently intended to be a claim to structure consisting of a combination of elements. As we read it, the claim includes only two elements and appellant admitted as much at oral argument. They are 1 the connector member, also redundantly recited as a ferrule-forming member, and 2 the ground wire.

The board, referring to the examiner's "catalogue" rejection, said:

Since in connection therewith the Examiner states that "There is no positive recitation of any structural cooperation among the elements listed", we construe this rejection as in fact based on the ground that the claim is incomplete, and therefore indefinite and in this way does not conform to the requirements of 35 U.S.C. 112.

Appellant appears to argue that we should regard the statements in the claim, indicated by the initial italicized words, about intended uses, capabilities, and structure which will result upon the performance of future acts, as positive structural limitations; he seems to believe that his invention (on which a claim in proper structural form has been allowed) is particularly pointed out and distinctly claimed within the meaning of section 112 because of the presence of these statements. He is apparently aware of the necessity for limiting his claim as he thinks he has done. We agree with...