CITE: 530 F.2d 956
CMON: March 1976
PLAIN: J. William Venezia
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE: March 11, 1976
HISTORY:
Patent application of J. William Venezia, Serial No. 31,500.
SUMMARY:
A group or "kit" of interrelated parts is a "manufacture" as that
term is used in 35 U.S.C. Section 101.
JUDGE: Lane, Judge
DECISION:
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 USC 112, second paragraph, as indefinite
and incomplete in not defining a complete article of manufacture. The
examiner particularly relied on In re Collier, 55 CCPA 1280, 397 F.2d 1003,
158 USPQ 266 (1968), as support for this rejection.
Claims 31-36 were additionally rejected under 35 USC 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 cooperation. 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 compontent parts". Such joining as
may be recited in the claims, as we have pointed out above in
connection with the rejection under 35 USC 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 (CCPA 1974); In re Miller, 441 F.2d 689 (CCPA 1971);
In re Borkowski, 422 F.2d 904 (CCPA 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"
limitations in the third and fourth paragraphs of the claim. The last
paragraph of claim 31 contains additional language criticized by the board,
including "may be slideably positioned," "slideably repositioned", "when
said sleeves ... are assembled," and "when said housing is in its
repositioned location." However, this language also defines present
structures or attributes of the part of the "kit" identified as the
housing, which limits the structure of the housing to those configurations
which allow for the completed connector assembly desired. Again, a
present structural configuration for the housing is defined in accordance
with how the housing interrelates with the other structures in the
completed assembly. We see nothing wrong in defining the structures of
the components of the completed connector assembly in terms of the
interrelationship of the components, or the attributes they must
possess, in the completed assembly. More particularly, we find nothing
indefinite in these claims. One skilled in the art would have no
difficulty determining whether or not a particular collection of
components infringed the collection of interrelated components defined
by these claims. In re Miller, supra.
We also fail to see any basis for rejecting appellant's claims for
being incomplete in failing to recite a completed assembly. Appellant's
invention is a "kit" of parts which may or may not be made into a completed
assembly. Since all of the essential parts of the "kit" are recited in the
claims, there is no basis for holding the claims incomplete.
We cannot leave our discussion of the section 112 rejection without
discussing In re Collier, supra, relied on by both the examiner and
the board as support for this rejection. In Collier we were confronted
by the following claim:
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 frusto-conical 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. [ 55 CCPA
at 1281-82, 397 F.2d at 1004-05. (Emphasis and brackets in original
opinion).]
In Collier appellant argued that we were to regard the italicized portions
of claim 17 about intended uses, capabilities, and structures which
would result upon the performance of future acts, as positive
structural limitations. However, we found that the claim did not
positively recite any structural relationship between the two elements
identified as [1] and [2], in its recitation of what may or may not occur.
We concluded that the claim failed to comply with section 112, second
paragraph, in "failing distinctly to claim what appellant in his brief
insists is his actual invention".
There is no issue in this case of whether appellant is claiming what he
regards as his invention. Moreover, although the claims before us contain
some language which can be labeled "conditional," this language, rather
than describing activities which may or may not occur, serves to precisely
define present structural attributes of interrelated component parts of the
"kit", such that a later assembly of the "kit" of parts may be effected.
Thus, we find In re Collier inapposite to the claims presently before us.
Section 101 Rejection
35 USC 101 provides in pertinent part:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter ... may obtain a patent
therefor ....
Both the examiner and the board construed the language "any ... manufacture"
as excluding from its ambit claims drawn to a "kit" of parts, reasoning
that a "kit" would be a plurality of separate manufactures, not a
single manufacture.
The solicitor in his brief recognizes that the Patent and Trademark Office
has in the past issued patents containing similar claims drawn to "kits" of
interrelated parts. {n1} He argues, however, that double patenting decisions
by this court, holding that an inventor may obtain only one patent on a single
invention, show that this court has interpreted portions of section 101
in the singular. From this he reasons that the word "manufacture" in
section 101 is to be similarly interpreted.
We do not find our decisions on double patenting to be applicable to an
interpretation of the words "any manufacture" in section 101. Suffice it
to say that the two situations are totally dissimilar.In the section 101
"same invention" type double patenting cases, all we were construing was
the phrase "a patent therefor".
No other authority has been cited, either by the board or the solicitor,
to support the narrow construction which the Patent and Trademark Office
now seeks to impose on the words "any manufacture" in section 101.
We do not believe the words in question are to be so narrowly construed. To
hold that the words "any manufacture" exclude from their meaning groups
or "kits" of interrelated parts would have the practical effect of not only
excluding from patent protection those "kit" inventions which are capable of
being claimed as a final assembly (e.g., a splice connector), but also many
inventions such as building blocks, construction sets, games, etc., which are
incapable of being claimed as a final assembly. We do not believe Congress
intended to exclude any invention from patent protection merely because
it is a group or "kit" of interrelated parts. We therefore hold that a
group or "kit" of interrelated parts is a "manufacture" as that term is
used in section 101.
Accordingly, the decision of the board is reversed.
REVERSED
FOOTNOTES:
{n1} There are copies of several patents in the record which contain "kit"
claims exemplifying this prior practice, including patent No. 3,108,803,
claiming a basketball goal set kit, patent No. 3,041,778, claiming a
puppet kit, patent No. 1,974,838, claiming a toy construction set, and
patent No. 3,355,837, also claiming a toy construction set.