Application of Venezia

• Decision Date: 11 March 1976
• Docket Number: Patent Appeal No. 75-601.
• Citation: 530 F.2d 956
• Parties: Application of J. William VENEZIA.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

530 F.2d 956

Application of J. William VENEZIA.

Patent Appeal No. 75-601.

United States Court of Customs and Patent Appeals.

March 11, 1976.

Donald R. Dunner, Lane, Aitken, Dunner & Ziems, Washington, D. C., atty. of record, for appellant; S. Michael Bender, Richard A. Craig, New York City, Arthur Jacob, Hackensack, N. Y., of counsel.

Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Thomas E. Lynch, Washington, D.C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

LANE, Judge.

This is an appeal from the decision of the Patent and Trademark Office Board of Appeals (board) affirming the rejections of claims 31 through 36 in application serial No. 31,500 filed April 24, 1970, for "Method of Splicing High Voltage Shielded Cables and Splice Connector Therefor." We reverse.

The Invention

Appellant's invention is a splice connector having interrelated parts adapted to be assembled in the field to provide a splice connection between a pair of high voltage shielded electric cables.

Appellant's application contains claims drawn to the completed connector and to the method of making the splice connection, which have been allowed by the Patent and Trademark Office. On appeal before us are claims drawn to a splice connector "kit" consisting of the parts which are used in making the splice in their unassembled condition.

Claim 31, with our emphasis, is representative of the claims on appeal:

31. A splice connector kit having component parts capable of being assembled in the field at the terminus of high voltage shielded electrical cables for providing a splice connection between first and second such cables, said cables each having a conductor surrounded by an insulating jacket within a conductive shield wherein a portion of the conductive shield is removed to expose the insulating jacket and a portion of the insulating jacket is removed to expose the conductor at the terminus of the cable, the kit comprising the combination of:

a pair of sleeves of elastomeric material, each sleeve of said pair adapted to be fitted over the insulating jacket of one of said cables, each said sleeve having an external surface and a resiliently dilatable internal bore for gripping the insulating jacket to increase the dielectric strength of the creep path along the insulating jacket;

electrical contact means adapted to be affixed to the terminus of each exposed conductor for joining the conductors and making an electrical connection therebetween;

a pair of retaining members adapted to be positioned respectively between each of said sleeves fitted over the insulating jacket of each said cable and the corresponding terminus of each said cable, said retaining members each having means cooperatively associated therewith for maintaining each said member's position relative to the insulating jacket on each said cable and for precluding axial movement of the sleeve toward the corresponding terminus of each said cable; and

a housing, said housing having an internal bore extending therethrough from end to end, said housing including portions adjacent each end thereof defining said internal bore and being resiliently dilatable whereby said housing may be slideably positioned over one of said cables and then slideably repositioned over said sleeves, said retaining members, and said contact means when said sleeves, said retaining members and said contact means are assembled on said cables as hereinaforesaid, said resiliently dilatable portions of said housing respectively gripping the corresponding external surface of each said sleeve in watertight sealing relationship therewith and said housing having a further portion intermediate its ends defining said internal bore and forming a sealed chamber enclosing at least said contact means and the exposed portions of said cable conductors when said housing is in its repositioned location.

The Rejections

Claims 31-36 were rejected under 35 U.S.C. § 112, second paragraph, as indefinite and incomplete in not defining a completed article of manufacture. The examiner particularly relied on In re Collier, 397 F.2d 1003, 55 C.C.P.A. 1280 (1968), as support for this rejection.

Claims 31-36 were additionally rejected under 35 U.S.C. § 101 because they were drawn to a plurality of separately and discretely listed and defined manufactures instead of a manufacture.

The Board

The board at first unanimously sustained both of the above rejections. With respect to the section 112 rejection it stated:

In the Collier case, the two elements see bracketed elements 1 and 2 of Collier claim 17, infra recited specifically in the claims there under consideration were described in terms of intended uses and capability, and the like. The Court said:

"We agree with the Board, however, that the claim does not positively recite structural relationships of the two elements, identified as (1) and (2) above, in its recitation of what may or may not occur. In this sense it fails to comply with section 112, second paragraph In sic failing distinctly to claim what appellant in his brief insists is his actual invention."

An inspection of the claims here under consideration, see for example claim 31 above, discloses a similar situation. Although the preamble refers to the structure as a "kit", the elements are recited without present co-operation. The language is futuristic and conditional in character, thus,

a pair of sleeves—to be fitted—electrical contact means—to be affixed—a pair of retaining numbers sic, members—to be positioned —

a housing—may be slideably positioned—slideably repositioned —

when said sleeves are assembled on said cables —

when said housing is in its repositioned location.

From the above it is clear that the language of the claim taken as an example is directed to assembly to take place in the future. No present positive structural relationships are recited.

In affirming the section 101 rejection the board stated:

Appellant urges that the elements of his claimed combination are "joined together in a kit of component parts". Such joining as may be recited in the claims, as we have pointed out above in connection with the rejection under 35 U.S.C. 112, relates to matters which may take place in the future. No present coaction is recited. The presence of the word "kit" in the preamble, we do not think fairly links the elements separately recited in the claims. Appellant has referred to no language in the claims which would support such "joining" and we know of none. Emphasis in original.

In a subsequent decision, upon reconsideration, one of the board members dissented, finding that appellant had distinctly claimed what he regarded as his invention under section 112. The dissenting member of the board also found that it was not fatal under section 101 that the cooperation of the claimed elements was recited as occurring at a future time.

This posture of the board remained intact following a third opinion rendered after a second request for reconsideration by appellant.

OPINION

Section 112 Rejection

We have reviewed the disputed claims and in particular the language criticized by the examiner and the board. We conclude that the claims do define the metes and bounds of the claimed invention with a reasonable degree of precision and particularity, and that they are, therefore, definite as required by the second paragraph of section 112. In re Conley, 490 F.2d 972 (C.C.P.A. 1974); In re Miller, 441 F.2d 689, 58 C.C.P.A. 1182 (1971); In re Borkowski, 422 F.2d 904, 57 C.C.P.A. 946 (1970). As we view these claims, they precisely define a group or "kit" of interrelated parts. These interrelated parts may or may not be later assembled to form a completed connector. But what may or may not happen in the future is not a part of the claimed invention. The claimed invention does include present structural limitations on each part, which structural limitations are defined by how the parts are to be interconnected in the final assembly, if assembled. However, this is not to say that there is anything futuristic or conditional in the "kit" of parts itself. For example, paragraph two of claim 31 calls for "a pair of sleeves . . . each sleeve of said pair adapted to be fitted over the insulating jacket of one of said cables." Rather than being a mere direction of activities to take place in the future, this language imparts a structural limitation to the sleeve. Each sleeve is so structured or dimensioned that it can be fitted over the insulating jacket of a cable. A similar situation exists with respect to the "adapted to be affixed" and "adapted to be positioned"...