Ex Parte 6521831 et al

Patent Trial and Appeal Board

Nov 1, 2017

95000196 (P.T.A.B. Nov. 1, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,196 01/26/2007 6521831 IE-831 3931
30010 7590 11/02/2017
The Jackson Patent Group, LLC
1500 Forest Avenue, Suite 212
RICHMOND, VA 23229
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/02/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BRIDGEPORT FITTINGS, INC.
Requester, Respondent, and Cross-Appellant

v.

ARLINGTON INDUSTRIES, INC.
Patent Owner, Appellant, and Cross-Respondent
____________

Appeal 2017-010838
Inter partes Reexamination Control 95/000,196
United States Patent 6,521,831 B1
Technology Center 3900
____________

Before JOHN A. JEFFERY, KEVIN F. TURNER, and STEPHEN C. SIU,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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DECISION ON APPEAL
In an earlier Decision (2011-009135) mailed June 17, 2016 (“Bd.
Dec.”), we reversed the Examiner’s decision to not reject claim 3 as obvious
over EC&M (Sept. 1999), Gretz, and Schneiderman1 in connection with this
inter partes reexamination of U.S. Patent 7,679,573 (“’573 patent”). In that
decision, we also noted that the Board’s earlier decision to (1) reject claims
1, 5, and 6, and (2) not reject claim 4 was affirmed by the U.S. Court of
Appeals for the Federal Circuit. Bd. Dec. 2, 7 (citing Arlington Indus., Inc.
v. Bridgeport Fittings, Inc., No. 2013-1400, -1401 (Fed. Cir. Aug. 29, 2014)
(non-precedential)). Our reversal of the Examiner’s decision in connection
with the prior art rejection of claim 3 was designated as a new ground of
rejection under 37 C.F.R. § 41.77(b). Bd. Dec. 7–9.
On July 18, 2016, Patent Owner submitted a request to reopen
prosecution before the Examiner under 37 C.F.R. § 41.77(b)(1) responsive
to the Board’s decision, and proposed to amend claim 3 as follows:

3. (Amended) The duplex electrical connector of claim 1
including an insert secured within said inbound end, said insert
is generally oval in shape and includes said pair of parallel
openings having an insertion end, a rearward end, and interior
walls with said retainers disposed in said openings, said interior
walls each having a diameter and including an annular ridge
near said rearward end for securing said retainers in said
openings, wherein said annular ridge has a smaller diameter
than the diameter of said interior walls.

1 These references are cited in full on page 5 of the Board’s earlier decision.
Therefore, we omit their full citations here for brevity.
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See Response Requesting Reopening of Prosecution Under 37 C.F.R.
§ 41.77(b)(1), filed July 18, 2016 (“PO Request”), at 2. In the remarks
accompanying this proposed amendment, Patent Owner included (1) a
declaration from the inventor, Thomas J. Gretz, and (2) a copy of the
complete brochure for the 3838ST connector. Id. 3–7.
On August 18, 2016, Requester filed comments responsive to Patent
Owner’s request, arguing, among other things, that claim 3 would have been
obvious despite Patent Owner’s newly-submitted amendment and evidence.
See Response Under 37 C.F.R. § 41.77(c) to Patent Owner’s Response
Requesting Reopening of Prosecution, filed Aug. 18, 2016 (“TPR 2016
Comments”), at 4–9. Requester also proposed a new ground of rejection of
claim 3 as obvious over Grindle,2 Schnittker,3 and Roder4 alone or combined
with EC&M (Sept. 1999), Gretz, and Schneiderman. Id. 9–10.
On March 24, 2017, the Board (1) granted Patent Owner’s request to
reopen prosecution; (2) entered Patent Owner’s proposed amendment,
comments, and accompanying evidence; (3) entered Requester’s comments;
and (4) remanded the case to the Examiner for a determination under 37
C.F.R. § 41.77(d) in view of these submissions and the Board’s decision
mailed June 17, 2016. See Order Remanding Inter Partes Reexamination
Under 37 C.F.R. § 41.77(d) to the Examiner mailed March 24, 2017
(“Remand Order”).

2 US 1,295,304, issued Feb. 25, 1919.
3 US 4,885,429, issued Dec. 5, 1989.
4 US 2,744,769, issued May 8, 1956.
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After this remand, the Examiner determined that Patent Owner’s
amendment and new evidence did not overcome the Board’s new ground of
rejection of claim 3 because “art already of record in the image file wrapper
or IFW, i.e., Schnittker, discloses in an electrical connector an annular ridge
(106 of Fig. 4) near the rearward end where the annular ridge has a smaller
diameter than the diameter of the interior walls of a retainer (22 of Fig. 4).”
See Determination Under 37 C.F.R. § 41.77(d) mailed Apr. 26, 2017 (“Ex’r
Det.”), at 4.
In response to the Examiner’s determination, both Patent Owner and
Requester submitted comments under 37 C.F.R. § 41.77(e). See Patent
Owner’s Comments to Examiner’s Determination Under 37 C.F.R.
§ 41.77(e) filed May 26, 2017 (“PO May 2017 Comments”); see also
Requester’s Reply to Patent Owner’s Comments to Examiner’s
Determination Under 37 C.F.R. § 41.77(e) filed June 23, 2017 (“TPR 2017
Comments”).5
The proceeding then returned to us to reconsider the matter and issue
a new decision under 37 C.F.R. § 41.77(f). For the following reasons, we
affirm the Examiner’s rejection of claim 3.

5 Although Patent Owner replied to Requester’s comments to the Examiner’s
determination on July 21, 2017, the Examiner did not enter Patent Owner’s
reply. See Office Communication mailed Aug. 4, 2017, at 2. Accordingly,
Patent Owner’s July 2017 reply is not before us.
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PETITIONABLE MATTER
We first address a procedural matter. Patent Owner contends that (1)
the Board’s entering Requester’s newly proposed rejection of claim 3 and
the ensuing Examiner’s determination are improper as a matter of law, and
(2) Requester ostensibly waived reliance on the new ground of rejection. PO
May 2017 Comments 6–10. These procedural grievances, however, are
petitionable—not appealable—matters and are, therefore, not before us. See
MPEP § 1201 (“The Board will not ordinarily hear a question that should be
decided by the Director on petition . . . .”).

ANALYSIS
Turning to the merits of the rejection, we first clarify several
ambiguities that have appeared in this record since our earlier decision.
First, Patent Owner’s recitation of amended claim 3 on page 2 of the May
2017 comments is incorrect. Despite Patent Owner’s repeated statements to
the contrary (see, e.g., PO May 2017 Comments 2–3, 11, 13), amended
claim 3 does not recite a “stepped” annular ridge, let alone that such a
“stepped” ridge forms a smaller diameter than a diameter of the insert’s
interior walls. Compare PO Request 2 with PO May 2017 Comments 2.
Accord TPR 2017 Comments 1, 21 (noting this discrepancy). Rather,
amended claim 3 recites, in pertinent part, that the insert’s interior walls
each have a diameter and include an annular ridge near the rearward end for
securing retainers in the openings, where the annular ridge has a smaller
diameter than the diameter of said interior walls (the “annular ridge
limitation”).
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The Examiner’s determination also contains an ambiguity. Although
the Examiner determines that Patent Owner’s amendment to claim 3 and
accompanying evidence do not overcome the new ground of rejection
entered in our earlier decision (Ex’r Det. 4), our earlier ground of rejection
was based solely on the unamended version of claim 3—not the amended
version. Nor was our rejection based on evidence that was added after our
earlier decision, namely (1) the Gretz declaration, and (2) the complete
brochure for the 3838ST connector.
Therefore, as the Examiner correctly noted earlier in the
determination, Patent Owner’s amendment and evidence submitted after our
decision overcame our new ground of rejection. Accord Ex’r Det. 3 (noting
that our decision is binding on the Examiner except, as here, when Patent
Owner’s request to reopen prosecution introduces an amendment or new
evidence not previously of record which, in the Examiner’s opinion,
overcomes the Board’s new ground of rejection).
But where, as here, the Board’s rejection of claim 3 is overcome by
amending the claim and entering new evidence, that does not mean
necessarily that the claim is now patentable. Rather, that patentability
determination after our earlier decision belongs to the Examiner in light of
the record as a whole, including amendments and evidence entered after our
earlier decision. See 37 C.F.R. § 41.77(d).
Turning to the merits, the Examiner finds that prior art of record,
namely Schnittker, teaches the annular ridge limitation. See Ex’r Det. 4
(“[A]rt already of record in the image file wrapper or IFW, i.e., Schnittker,
discloses in an electrical connector an annular ridge (106 of Fig. 4) near the
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rearward end where the annular ridge has a smaller diameter than the
diameter of the interior walls of a retainer (22 of Fig. 4).”) (emphasis added).
The Examiner then concludes that “it would have been obvious to one of
ordinary skill in the art to make the combination in view of the third party
requester’s comments.” Id. (emphasis added).
Although the Examiner does not specify which combination of prior
art is “the combination” that renders claim 3 obvious, we nonetheless
presume that this combination includes Schnittker, particularly given the
Examiner’s sole reliance on Schnittker for teaching the annular ridge
limitation. See Ex’r Det. 4. That the Examiner uses the definitive term
“i.e.” in connection with Schnittker is telling in this regard. See WEBSTER’S
NEW WORLD DICTIONARY OF AMERICAN ENGLISH 670 (3d College ed. 1993)
(defining “i.e.” as “that is (to say)”); see also Rembrandt Wireless Techs.,
LP, v. Samsung Electronics Co., Ltd., 853 F.3d 1370, 1376 (Fed. Cir. 2017)
(noting that “i.e.” means “that is”); Interval Licensing LLC v. AOL, Inc., 766
F.3d 1364, 1373 (Fed. Cir. 2014) (distinguishing the defining term “i.e.”
from the exemplary term “e.g.”).
Given (1) the Examiner’s sole reliance on Schnittker for teaching the
annular ridge limitation, and (2) the Examiner’s reference to our earlier
ground of rejection based on the combination of EC&M (Sept. 1999), Gretz,
and Schneiderman, we presume that the Examiner concludes that amended
claim 3 would have been obvious solely over the combination of EC&M
(Sept. 1999), Gretz, Schneiderman, and Schnittker. See Ex’r Det. 4.
On this record, we see no error in the Examiner’s obviousness
rejection over these references. First, the Examiner maps the recited annular
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ridge to the annular flange 106 on the trailing end of tubular closure (i.e.,
gland nut) 22 as shown in Schnittker’s Figure 4 reproduced below. See Ex’r
Det. 4.

Schnittker’s Figure 4 showing annular flange 106 on tubular closure 22

Although the Examiner finds that this flange-based “annular ridge” is
near the rearward end (Ex’r Det. 4), it is actually at the rearward end—a
point that Requester acknowledges. See TPR 2016 Comments 10 (“The
ridge, i.e. flange 106 of Schnittker, is at the rearward end . . . .”) (emphasis
added). Accord PO May 2017 Comments 14 n.4.
Nevertheless, this distinction is of no material consequence here, for
being “at” an end is the epitome of being “near” that end—a fact
underscored by the plain meaning of the term “near” that includes “at.” See
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 775 (10th ed. 1993)
(defining “near,” in pertinent part, as “at, within, or to a short distance or
time”) (emphasis added).
Second, claim 3 not only recites that the annular ridge is near the
rearward end, but is also for securing the retainers in the insert’s openings.
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According to Requester, Schnittker’s flange 106 (i.e., “annular ridge”) is
provided for securing the retainers, i.e., grounding ring 16, in the opening.
TPR 2016 Comments 10; see also TPR 2017 Comments 20 (same).
Patent Owner argues that Schnittker’s flange 106 does not engage the
cable retainer or grounding ring 16 to secure it within the gland nut, but
rather engages and secures a washer 20 between the flange and grommet 18
as shown in Schnittker’s Figure 8. PO May 2017 Comments 15.
On this record, however, we agree with Requester that Schnittker’s
annular flange 106 would, at least to some extent, secure the internal
components, including grounding ring 16, grommet 18, and washer 20, in
the connector housing at least against rearward withdrawal. TPR 2017
Comments 21. As Requester explains, the tubular closure 22 and tubular
body 12 collectively constitute the housing in this interpretation, where the
closure includes an annular flange, or “ridge,” on its trailing end. Id. 20.
Patent Owner’s contention, then, that Schnittker’s flange 106 does not form
part of the interior walls of the gland nut 22 (PO May 2017 Comments 14) is
not germane to the above-noted housing-based interpretation that is not
limited to the gland nut, but also includes the tubular body 12.
Notably, claim 3 does not specify how the annular ridge secures the
retainers in the openings, apart from merely reciting, quite broadly, that the
annular ridge is for securing the retainers in the openings. Therefore,
nothing in the claim precludes Schnittker’s annular flange 106 for at least
contributing to securing the internal components, including grounding ring
16, grommet 18, and washer 20, in the connector housing at least against
rearward withdrawal as Requester indicates. See TPR 2017 Comments 21.
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Furthermore, because the diameter of annular flange’s opening 108 is
less than that of the housing’s walls as Requester indicates (id.), Schnittker
at least suggests that providing an annular ridge with a diameter smaller than
that of the interior walls of an insert would have at least been obvious,
particularly when combined with EC&M (Sept. 1999). Notably, EC&M
(Sept. 1999)—not Schnittker—was cited for teaching the recited insert. See
id. 21 (“Schnittker is cited to show a ridge securing a cable retainer, not for
the insert. The insert is shown in EC&M.”). Therefore, to the extent that
Patent Owner contends that Schnittker lacks the recited insert (see PO May
2017 Comments 15), such arguments do not show nonobviousness where, as
here, the rejection is based on the cited references’ collective teachings. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Because the Examiner finds that Schnittker teaches the recited annular
ridge limitation, Patent Owner’s arguments regarding the respective alleged
shortcomings of EC&M (Sept. 1999), Gretz, and Schneiderman in that
regard (PO May 2017 Comments 16–25) are unavailing, for they do not
persuasively rebut the Examiner’s reliance on Schnittker for teaching that
feature. See Ex’r Det. 4; see also TPR 2017 Comments 19–22.
Lastly, to the extent that Patent Owner’s contention that there is no
motivation to provide annular ridges in the 3838ST connector applies to the
proposed combination of EC&M (Sept. 1999), Gretz, Schneiderman, and
Schnittker (see PO May 2017 Comments 20–22), we find these arguments
unavailing. Placing an annular ridge, such as that in Schnittker, at the
rearward end of an insert uses prior art elements predictably according to
their established functions—an obvious improvement. See KSR Int’l Co. v.
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Teleflex, Inc., 550 U.S. 398, 417 (2007). Therefore, we agree with
Requester (TPR 2017 Comments 18–19) at least to the extent that providing
annular ridges near the rearward end to secure an element in an opening
would have been an obvious variation yielding a predictable result.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 3 over EC&M (Sept. 1999), Gretz, Schneiderman, and Schnittker.

THE OTHER PROPOSED REJECTIONS
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of other proposed obviousness rejections over different
combinations of prior art contemplated by the proposed obviousness
rejection of Grindle, Schnittker, and Roder alone or combined with EC&M
(Sept. 1999), Gretz, and Schneiderman. See Beloit Corp. v. Valmet Oy, 742
F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s determination based on a
single dispositive issue, and not reaching other issues not decided by the
lower tribunal).

CONCLUSION
The Examiner did not err in rejecting claim 3 as obvious over EC&M
(Sept. 1999), Gretz, Schneiderman, and Schnittker.
We do not reach other proposed rejections of that claim.

DECISION
The Examiner’s decision to reject claim 3 is affirmed.
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

For PATENT OWNER:

THE JACKSON PATENT GROUP, LLC
1500 Forest Avenue, Suite 212
Richmond, VA 23229

For THIRD PARTY REQUESTER:

Mark E. Ungerman
UNGERMAN IP PLLC
2305 Calvert St., N.W.
Washington, DC 20008