Ex Parte 6,716,062 et al

Patent Trial and Appeal Board

Sep 10, 2013

95001492 (P.T.A.B. Sep. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

PCT INTERNATIONAL, INC.
Respondent, Requestor

v.

PPC BROADBAND, INC.
1

Appellant, Patent Owner
________________

Appeal 2013-009170
Reexamination Control 95/001,492
Patent No. US 6,716,062 B1
2

Technology Center 3900
________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
DANIEL S. SONG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1
The Appellant/Patent Owner identifies its real party in interest as
PPC Broadband, Inc. of East Syracuse, New York.

2
Issued April 6, 2004 to Raymond Palinkas, Michael T. Fox and
Noah Montena (the “′062 patent”). The ′062 patent issued from
Appl. 10/277,756, filed October 21, 2002.
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STATEMENT OF THE CASE 1
The Appellant/Patent Owner appeals under 35 U.S.C. § 134(b) (2011) 2
and 35 U.S.C. § 315(a) (2011) from a final rejection of claims 27 and 28. 3
Claims 1-26 and 29-33 are not subject to reexamination in this proceeding. 4
It does not appear that any claims were added or amended during the 5
reexamination proceeding.
3
We have jurisdiction under 35 U.S.C. § 134(b) 6
(2011) and 35 U.S.C. § 315(a) (2011). 7
The Examiner adopts six grounds of rejection of claims 27 and 28 8
under 35 U.S.C. § 103(a) (2011). These six grounds of rejection rely on the 9
following combinations of prior art evidence: 10
3.
4
McConnell (US 5,877,452, issued Mar. 2, 1999) 11
and Melcher ′025 (US 2,762,025, issued Sep. 4, 1956); 12
4. McConnell, Melcher ′025 and the Patent Owner’s 13
concession in the Specification of the ′062 patent (“APA”) that 14
it “will be immediately recognized by those skilled in the art 15
that the elements of the connector of the [′062 patent] generally 16
duplicate those of prior art F connectors, with the addition of 17
the coil spring” (′062 patent, col. 3, ll. 57-60; see also id., 18
col. 1, ll. 56-61; col. 2, ll. 12-16 and col. 4, ll. 14-17); 19
5. McConnell, Melcher ′331 (US 2,755,331, issued 20
Jul. 17, 1956) and Melcher ′025; 21

3
The Examiner refused admission of an amendment dated
June 11, 2012, which sought to add new claims 34-41 after the mailing of an
Action Closing Prosecution. (See RAN 4).

4
The Examiner did not adopt two grounds of rejection, numbered 1
and 2, proposed in the Request. (RAN 6). The numbering of the grounds of
rejection adopted by the Examiner as they appear in this opinion corresponds
to the numbering of those grounds on pages 9-12 of the Request and on
page 6 of the RAN.
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6. McConnell and Saito (US 5,944,548, issued 1
Aug. 31, 1999); 2
7. McConnell and Kornick (US 3,681,739, issued 3
Aug. 1, 1972); and 4
8. Melcher ′331 and Melcher ′025. 5
We sustain grounds of rejection 3-7. We do not sustain ground of 6
rejection 8. 7
The Patent Owner relies on an Appeal Brief (“Appeal Brief” or 8
“App. Br. PO”) dated February 14, 2013 and a Rebuttal Brief (“Reb. Br. 9
PO”) dated May 2, 2013. The Requester relies on a Respondent’s Brief 10
(“Respondent’s Brief” or “Resp. Br.”) dated March 14, 2013. The 11
Examiner’s Answer incorporates by reference a Right of Appeal Notice 12
(“RAN”) mailed November 14, 2012. This opinion also references the 13
Request for Inter Partes Reexamination (“Request”) dated 14
November 23, 2010; and the Action Closing Prosecution (“ACP”) mailed 15
May 9, 2012. 16
The Patent Owner and the Requester were parties to litigation 17
involving the ′062 patent in the U.S. District Court for the Western District 18
of Texas, styled John Mezzalingua Associates, Inc. d/b/a PPC v. PCT 19
International, Inc., Case No. SA-09-CA-0410 RF and John Mezzalingua 20
Associates, Inc. d/b/a PPC v. PCT International, Inc., Case No. SA-05-CA-21
1002 RF. (Request 2). The District Court entered an “Order Construing 22
U.S. Patent No. 6,716,062 Claim Terms” (“Markman Order”) in Case No. 23
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SA-05-CA-1002 on December 20, 2006
5
and this case was dismissed on 1
September 26, 2007. Case No. SA-09-CA-0410 was dismissed by a 2
stipulation of the parties filed October 22, 2012. 3
The claims on appeal relate to “F” type connectors used in cable 4
television applications. (′062 Patent, col. 1, ll. 7-10). The Specification of 5
the ′062 patent states that “[t]hese connectors are normally mounted upon 6
the end of a coaxial cable for connection to a port on [a] television set. 7
Connection is usually made by the subscriber in the home via an internally 8
threaded nut of the connector and an externally threaded stub shaft 9
surrounding the port.” (′062 patent, col. 1, ll. 16-21). 10
According to the Specification of the ′062 patent, a connector 60 for a 11
coaxial cable 44 includes a post 62 having a cylindrical stem 73 terminating 12
in a flange 72. A compression ring 70 clamps a deformable body 68 onto 13
the stem 73 such that both the post 62 and the deformable body 68 engage 14
portions of the cable 44. The flange 72 is designed to contact the stub 15
shaft 90 of a complementary connector. A nut 66 includes an internal flange 16
78 which encircles the stem 73. This arrangement permits the nut 66 to slide 17
and rotate over the periphery of the flange 72. (′062 patent, col. 5, ll. 30-50; 18
col. 6, ll. 6-10; and figs. 5 and 7). 19
According to the Specification, subscribers often failed to tighten the 20
nuts onto the stub shafts sufficiently to form an acceptable degree of 21
shielding to prevent ingress of noise and degradation of the signal. 22

5
A copy of the Markman Order is available as of the date of this
opinion at http://ipmall.info/hosted_resources/Markman/pdfFiles
/2006.12.20_JOHN_MEZZALINGUA_ASSOCIATES_INC_PPC_v._PCT_
INTERNATIONAL.pdf (last visited August 22, 2013).
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(′062 patent, col. 1, ll. 11-15 and 24-26). The Specification teaches 1
addressing this problem by providing “spring means,” such as a coil spring 2
64, trapped between the flanges 72 and 78. The coil spring biases the 3
coupling nut 66 toward a rest position in which the coupling nut bears 4
against an abutment surface of the deformable body 68. (See ′062 patent, 5
col. 2, ll. 12-30; col. 5, ll. 41-49 and fig. 7). In this rest position, the nut 66 6
is mounted to the post 62 in the sense that the flange 78 of the nut 66 7
encircles the post. The nut 66 also is mounted to the deformable body 68 in 8
the sense of abutting against the abutment surface of the body. The 9
Specification states that, when the nut 66 engages the external threads of the 10
stub shaft 90 of a complementary connector from the nut’s rest position, it 11
often takes only one or two revolutions of the nut 66 to tighten the connector 12
66 so as to bring the flange 72 into contact with the stub shaft 90. 13
(′062 patent, col. 5, l. 66 – col. 6, l. 10; see also id., col. 1, ll. 12-30). 14
Claims 27 and 28 recite: 15
27. An F-type connector for mounting upon a 16
terminal end of a coaxial cable to permit electrical 17
connection of said cable to a port on video 18
equipment by threaded engagement of said 19
connector and a metal shaft surrounding said port, 20
said connector comprising: 21
a) a plurality of cable engagement members 22
secured to said terminal end, one of said 23
engagement members having a planar 24
surface in perpendicular, surrounding 25
relation to said terminal end; 26
b) a nut having internal threads matable 27
with external threads on said shaft, said nut 28
being mounted to said engagement members 29
for free rotation and limited axial movement 30
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from a rest position in a first direction with 1
respect to said engagement members; and 2
c) spring means biasing said nut toward said 3
rest position. 4
28. The connector of claim 27 wherein said 5
spring means comprises a coil spring 6
compressible between portions of said nut and 7
said one of said engagement members. 8
(App. Br. PO 29 (Claims App’x)). 9
10
ISSUES 11
The Patent Owner argues the patentability of claims 27 and 28 12
together as a group for purposes of all of the grounds of rejection. Only 13
issues and findings of fact contested by the Patent Owner have been 14
considered. See 37 C.F.R. § 41.67(c)(1)(vii) (2011); In re Jung, 637 F.3d 15
1356, 1365 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 16
(BPAI 2010). Three issues are dispositive of the appeal: 17
First, did McConnell teach away from the proposed 18
combination of the teachings of McConnell with the teachings 19
of either Melcher ′025; Melcher ′025 and APA; Melcher ′025 20
and Melcher ′331; Kornick; or Saito, either because McConnell 21
would have discouraged one of ordinary skill in the art from 22
making the combinations or because the proposed combinations 23
would have rendered McConnell’s connector inoperative for its 24
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intended purpose? (See App. Br. PO 3-13; Resp. Br. 2-11; 1
Reb. Br. PO 3-6).
6
2
Second, was the subject matter of claims 27 and 28 not 3
obvious because one of ordinary skill in the art would have 4
lacked motivation, in the sense of incentive, to combine the 5
teachings of the prior art in the manner proposed in grounds of 6
rejection 3-7? (See App. Br. PO 14-15; Resp. Br. 11-12; 7
Reb. Br. PO 6-7). 8
Third, does Melcher ′331 describe a connector including 9
a nut “mounted to” a plurality of “[cable] engagement 10
members?” (See App. Br. PO 15-20; Resp. Br. 12-16; Reb. Br. 11
PO 7-8). 12
13
FINDINGS OF FACT 14
The record supports the following findings of fact (“FF”) by a 15
preponderance of the evidence. 16
17
McConnell 18
1. McConnell describes a connector 10 including a base portion or 19
post 40; an attachment portion or nut 60; and a ground conductor or post 80. 20
(McConnell, col. 3, ll. 57-59 and fig. 1). 21

6
On page 8-11 of the Appeal Brief, the Patent Owner presents
arguments objecting to the Examiner's references on pages 4-10 of the
Action Closing Prosecution mailed May 9, 2012, to independent claim 9 of
McConnell. We do not rely on claim 9 of McConnell in reaching our
findings, conclusions or holding in this appeal. Thus, these arguments are
moot.
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2. The base portion 40 and the ground conductor 80 are each cable 1
engagement members in that they are sized to receive portions of the 2
terminal end of a coaxial cable 20. (McConnell, col. 4, ll. 3-4 and 43-45). 3
An end of the ground conductor or shaft 80 radiates outwardly to define a 4
ground plate platform or flange 82 having a planar surface in perpendicular, 5
surrounding relation to the terminal end of the cable 20. (McConnell, col. 4, 6
ll. 22-24 and fig. 1). 7
3. Furthermore, McConnell describes the attachment portion 60 as 8
being shaped like a nut and as having internal threads. (McConnell, col. 4, 9
ll. 11-16). The attachment portion 60 is rotatably attached to the exterior of 10
the base portion 40 (McConnell, col. 4, ll. 9-11) and is also rotatable over 11
the ground plate platform 82 of the ground conductor 80 as depicted in 12
Figure 1 of McConnell. 13
4. The attachment portion 60 is mounted to the base portion 40 14
and the ground conductor 80 for limited axial movement to the extent of the 15
compressibility of an O-ring 100 captured between the ground plate 16
platform 82 of the ground conductor 80; an inwardly flanged shoulder 17
portion 66 of the attachment portion 60; and the base portion 40. (See 18
McConnell, col. 4, ll. 34-38 and fig. 1). 19
5. The Examiner correctly adopts the Respondent’s proposed 20
finding that McConnell teaches each and every limitation of claims 27 and 21
28 other than the “spring means biasing said nut toward said rest position” 22
recited in claim 27, which spring means are further limited to “a coil spring 23
compressible between portions of said nut and said one of said engagement 24
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members” in claim 28. The Patent Owner does not appear to contest this 1
fact. 2
6. McConnell teaches that, “[h]istorically, infiltration of moisture 3
or other environmental elements and poor connection of opposing 4
conducting surfaces have been the most significant sources of signal loss.” 5
(McConnell, col. 1, ll. 35-38). 6
7. In McConnell’s “Background of the Invention” section, 7
McConnell discusses the disclosure of Tarrant (US 5,083,943, issued 8
Jan. 28, 1992). In particular, McConnell describes Tarrant as disclosing a 9
connector including two separate O-rings. (McConnell, col. 2, ll. 4-7). 10
McConnell teaches that “[t]hese O-rings formed of a pliable material 11
resistant to and recoverable from deformation, such as rubber provide an 12
improved barrier from external agents which could compromise connector 13
performance.” (McConnell, col. 2, ll. 7-11). 14
8. McConnell additionally teaches that: 15
The ground portion of the mating connector 16
makes contact with the ground plate platform 17
[82 in Figure 1] of [McConnell’s connector] 18
during connection of mating connectors. As the 19
connection is tightened by rotation of the 20
attachment portion [60 in Figure 1] about the 21
threaded mating connector, the O-ring [100 in 22
Figure 1] is compressed. Compression of the 23
O-ring provides two results. First, the resilient 24
properties of the O-ring generate increased 25
pressure on the backside [85 in Figure 1] of the 26
ground plate platform as the connection between 27
mating connectors is tightened. This increased 28
pressure forces the opposing ground connectors 29
together and enhances their electrical connection. 30
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Second, compression of the deformable O-ring 1
creates an environmental seal between the inner 2
aspect of the shoulder [66 in Figure 1] of the 3
attachment portion and the backside of the ground 4
plate platform. This environmental seal protects 5
the conductive elements of the connected cable 6
ends from infiltrates such as dust and moisture. 7
(McConnell, col. 3, ll. 30-46). 8
9
Melcher ′331 10
9. Melcher ′331 describes a connector plug 40 including a 11
connector shell 46; a flexible insulator 45; a ferrule 44; an internally 12
threaded sleeve (no reference numeral) surrounding the ferrule 44; a cable 13
clamping means 43; and a coupling nut 48. (Melcher ′331, col. 3, ll. 28-32 14
and fig. 2). 15
10. The connector shell 46 is a cable engagement member in that it 16
facilitates the engagement of the flexible insulator 45 with the cable 42. 17
(See Melcher ′331, col. 3, ll. 32-36 and fig. 2; see also Resp. Br. 14). The 18
Patent Owner does not appear to dispute this finding in either the Appeal 19
Brief or the Rebuttal Brief. (See generally App. Br. PO 15-20; Reb. Br. 20
PO 7-8). 21
11. An end of the connector shell 46 as depicted in Figure 2 of 22
Melcher ′331 defines a planar surface in perpendicular, surrounding relation 23
to the terminal end of the cable 42. 24
12. The ferrule 44 as depicted in Figure 2 of Melcher ′331 is a cable 25
engagement member in that it fits over central conductor 49 and the 26
insulation layer 50 at the terminal end of the coaxial cable 42. The ferrule 27
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44 is soldered or otherwise connected to the outer conductor or shield 51 of 1
the coaxial cable 42. (Melcher ′331, col. 3, ll. 36-42 and fig. 2). 2
13. The cable clamping means 43 as depicted in Figure 2 of 3
Melcher ′331 is a cable engagement member in that it appears to include a 4
strain relief device gripping the exterior of the cable 42. In addition, the 5
cable clamping means 43 presses the ferrule 44 against the connector shell 6
46 so as to place the connecting shell 46 at the ground potential of the shield 7
51 of the coaxial cable 42. (See Melcher ′331, col. 3, ll. 38-42 and fig. 2). 8
14. The internally threaded coupling sleeve (no reference numeral) 9
depicted in Figure 2 of Melcher ′331 is a cable engagement member in that it 10
facilitates engagement between the cable clamping means 43, the ferrule 44 11
and the connecting shell 46, on the one hand, and the cable 42, on the other. 12
The internally threaded coupling sleeve (no reference numeral) secures the 13
ferrule 43 and the strain relief device of the cable clamping means 43 in 14
place relative to the connecting shell 46. (See Melcher ′331, fig. 2; see also 15
Resp. Br. 14). The Patent Owner does not appear to dispute this finding in 16
either the Appeal Brief or the Rebuttal Brief. (See generally App. Br. 17
PO 15-20; Reb. Br. PO 7-8). 18
15. The Patent Owner concedes that the coupling nut 48, as 19
depicted in Figure 2 of Melcher ′331, is rotatably mounted to the connector 20
shell 46. (App. Br. PO 17). 21
16. The connector plug 40 as depicted in Figure 2 of Melcher ′331 22
appears to include a biasing structure therein (no reference numeral) that 23
biases the coupling nut 48 toward the internally threaded coupling sleeve. It 24
is unclear whether this biasing structure is a coil spring or a plurality of 25
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spring washers as depicted at reference numeral 28 in Figure 2 of Melcher 1
′331. (Cf. Melcher ′331, col. 2, ll. 24-27 (describing spring washers 28)). 2
17. The coupling nut 48 is not mounted to the internally threaded 3
coupling sleeve (no reference numeral) which secures the ferrule 43 and the 4
strain relief device of the cable clamping means 43 in place relative to the 5
connecting shell 46. Figure 2 of Melcher ′331 does not depict any stop 6
mechanism on the periphery of the connecting shell 46 short of the internally 7
threaded coupling sleeve for stopping the motion of the coupling nut 48 8
under the bias of the coil spring or plurality of spring washers (no reference 9
numeral) depicted in the drawing figure. Nevertheless, Figure 2 does not 10
depict the coil spring or plurality of spring washers as necessarily being long 11
enough to force the coupling nut 48 into a rest position abutting an abutment 12
surface of the internally threaded coupling sleeve. Once the coil spring or 13
plurality of spring washers fully expand along the periphery of the 14
connecting shell 46, the coupling nut 48 might slide freely along the 15
periphery of the connecting shell 46 between the internally threaded sleeve 16
and the free end of the coil spring or plurality of spring washers. As the 17
Patent Owner points out, this relationship does not imply that the coupling 18
nut 48 is mounted to the internally threaded coupling sleeve. (See Reb. Br. 19
PO 8). 20
21
Melcher ′025 22
18. Melcher ′025 describes a connector set for connecting tri-axial 23
cables. A tri-axial cable includes two concentric, tubular shielding 24
conductors surrounding a central conductor. (Melcher col. 1, ll. 36-42). 25
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19. A connector 9 described by Melcher ′025 includes a tubular 1
outer shell 31 which surrounds a central connector 10 at the terminal end of 2
tri-axial cable 16. (Melcher, col. 3, ll. 9-11 and fig. 1). Figure 1 of 3
Melcher ′025 depicts the outer tubular shell 31 as being fixed in position 4
relative to an exposed end of the central conductor 10. (See, e.g., 5
Melcher ′025, col. 2, ll. 42-48 and 54-61; col. 3, ll. 9-11). 6
20. The connector 9 of Melcher ′025 also includes a generally cup-7
shaped, interiorly-threaded coupler 39 rotatably and slidably encircling the 8
outer surface of the tubular outer shell 31. (Melcher ′025, col. 3, ll. 40-47 9
and fig, 1). 10
21. The connector 9 of Melcher ′025 additionally includes a coil 11
spring 41 captured between an outwardly directed flange 36 of the outer 12
tubular shell 31 and an inwardly turned rear edge 40 of the coupler 39. The 13
coil spring 41 biases the coupling 39 relative to the outer tubular shell 31 14
toward a rest position spaced from the connection end of the connector 9. 15
(Id.) 16
22. Melcher ′025 teaches that the function of biasing the outer 17
tubular shell 31 forwardly toward the connection end of the connector 9 18
relative to the coupling 39 may be performed by either the simple coil spring 19
41 or a set of bent washers. (Id.) Thus, this teaches the interchangeability of 20
a simple coil spring and a plurality of spring washers for this purpose. 21
23. The connector 9 of Melcher ′025 includes an O-ring 30 22
positioned between the outer tubular shell 31 and a generally tubular shell 23 23
disposed co-axially within the outer tubular shell 31. (Melcher ′025, col. 3, 24
ll. 5-8 and fig. 1). The connector 9 also includes a flat washer-like sealing 25
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gasket 50 positioned between a lip 35 of the outer tubular shell 31 and an 1
annular shoulder of a rear body member 48 which is threaded onto a rear 2
portion of the shell 31. (Melcher ′025, col. 4, ll. 18-20). The O-ring 30 and 3
the sealing gasket 50 would serve to protect the conductive elements of the 4
connected cable ends from infiltrates such as dust and moisture. 5
6
Kornick 7
24. Kornick describes a connector 10 including a receptacle 8
section 14. The receptacle section 14 connects a coaxial cable 12 to a 9
complementary plug section 16 mounted on a panel plate 18. (Kornick, 10
col. 2, ll. 48-52 and fig. 1). 11
25. Kornick teaches coupling the receptacle section 14 to the male 12
plug section 16 by means of a bayonet-type coupling. (Kornick, col. 3, 13
ll. 1-8). The receptacle section 14 includes a bayonet sleeve 30 having a pair 14
of substantially L-shaped slots 42, 44 for engaging and retaining pins 46 on 15
the complementary plug section 16. (Id.; Kornick, col. 3, ll. 15-28 and 16
figs. 1 and 3). 17
26. Kornick’s receptacle section 14 also includes an outer 18
conducting shell 34 disposed co-axially within the bayonet sleeve 30. 19
A spring 36, which Figure 1 of Kornick depicts as a coil spring, is captured 20
between a shoulder 38 of the outer conducting shell 34 and a retaining ring 21
40 affixed to the bayonet sleeve 30. The spring 36 biases the bayonet sleeve 22
30 toward rest (that is, retracted) position relative to the outer conducting 23
shell 34. (Kornick, col. 3, ll. 1-14 and figs. 1 and 2). 24
25
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Saito 1
27. Saito describes a coaxial connector 200 having a floating mount 2
for mounting a connector component 250 to a panel-shaped mount 3
member 230. (See Saito, col. 3, ll. 51-56 and figs. 2A and 2B). 4
28. Saito’s connector component 250 includes a male connector 5
component 212 and a connector flange component 214. The male connector 6
component 212 and a connector flange component 214 each project from a 7
connector body component 216. (Saito, col. 4, ll. 1-4 and fig. 2A). 8
29. Saito’s panel-shaped mount member 230 includes a mount 9
hole 238 for receiving the connector body component 216 of the connector 10
component 250. The connector 200 includes an elastic body 260 in the form 11
of a coil spring 220 captured between the connector body component 216 12
and the wall of the mount hole 238. The elastic body 260 biases the 13
connector body component 216, the male connector component 212 and the 14
connector flange component 214 toward connection with a complementary 15
connector (not shown in Figures 2A-2C). (Saito, col. 3, ll. 53-67; see also 16
id., col. 2, ll. 25-31). 17
30. Saito teaches that the elastic body 260 may be either the coil 18
spring 220 or an elastic rubber insert 245 shown in Figure 2C. (Saito, col. 3, 19
ll. 64-67 and col. 4, ll. 10-14, fig. 2C). This teaching indicates that a coil 20
spring and an elastic rubber insert were interchangeable for the purpose of 21
biasing toward a rest position the connector body component 216, the male 22
connector component 212 and a connector flange component 214 of the 23
connector 200 relative to the coupling portion (that is, the mount 24
member 230). 25
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Additional Findings 1
31. The Examiner correctly finds that “there may be circumstances 2
under which an environmental seal is not necessary,” for example, to 3
provide a moisture barrier. (RAN 10, citing Burris (US 5,975,951, issued 4
Nov. 2, 1999), col. 2, ll. 2-5). This finding is a reasonable exercise of 5
official notice, since it is susceptible of instant and unquestionable 6
demonstration as being well-known. For example, Burris teaches that, “[f]or 7
F-connectors that are used exclusively indoors, the coupling nut can be free-8
spinning, as there is no need to create a moisture barrier between the 9
coupling and other components of the F-connector.” (Burris, col. 2, ll. 2-5). 10
11
ANALYSIS 12
First and Second Issues 13
The Examiner correctly finds that McConnell describes an 14
F connector including each and every limitation of claims 27 and 28 other 15
than the “spring means biasing said nut toward said rest position” recited in 16
claim 27, which spring means are further limited to “a coil spring 17
compressible between portions of said nut and said one of said engagement 18
members” in claim 28. (FF 5). McConnell additionally describes an 19
O-ring 100 captured between McConnell’s ground conductor 80, attachment 20
portion 60 and base portion 40. McConnell describes that the O-ring 100 is 21
capable of forcing the ground conductors of opposing coaxial connectors 22
together to enhance their electrical connection; and of creating an 23
environmental seal protecting the conductive elements of the connected 24
cable ends from infiltrates such as dust and moisture. (FF 4-7). 25
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Melcher ′025 teaches the use of a coil spring compressible between 1
portions of a nut (that is, the coupling 39) and an outer tubular shell 31 of a 2
connector for biasing the nut toward a rest position. (See FF 21 and 22). 3
Melcher ′331 teaches the use of a biasing structure of what appears to be a 4
plurality of spring washers for the same purpose, while Melcher ′025 teaches 5
that a coil spring and a plurality of spring washers are interchangeable for 6
this purpose. (See FF 16, 21 and 22). Saito teaches that a coil spring and an 7
elastic rubber insert are interchangeable for the purpose of biasing a 8
coupling member of a coaxial connector toward a rest position relative to a 9
connector body component. (FF 29 and 30). 10
In view of the teachings of each of the cited secondary references, the 11
Requester proposes, and the Examiner concludes, that it would have been 12
obvious to have replaced the O-ring 100 described by McConnell with a coil 13
spring likewise capable of biasing the ground conductors of opposing 14
coaxial connectors together to enhance their electrical connection and reduce 15
signal leakage. (See Request 37-38, 44-45, 51-52, 56-57 and 61; see also 16
RAN 10). The Patent Owner, on the other hand, argues that McConnell 17
taught away from the combination proposed by the Requester and the 18
Examiner for two reasons. First, the Patent Owner argues that McConnell 19
would have discouraged one of ordinary skill in the art from substituting for 20
the O-ring 100 a coil spring which did not both bias the ground conductors 21
of opposing coaxial connectors together (to enhance their electrical 22
connection) and create an environmental seal (to protect the conductive 23
elements of the connected cable ends from infiltrates). (See App. Br. PO 3-24
8; Reb. Br. PO 3-4; see also FF 6 and 8). Second, the Patent Owner argues 25
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that one of ordinary skill in the art would not have had reason to substitute a 1
coil spring for the O-ring 100 because the substitution would have destroyed 2
the ability of the resulting connector to protect the conductive elements of 3
the connected cable ends from infiltrates. (See App. Br. PO 11-13; Reb. Br. 4
PO 4-6; see also FF 8). 5
A reference teaches away only if “a person of ordinary skill, upon 6
reading the reference, would be discouraged from following the path set out 7
in the reference, or would be led in a direction divergent from the path that 8
was taken by the applicant.” In re ICON Health & Fitness, Inc., 496 F.3d 9
1374, 1381 (Fed. Cir. 2007) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. 10
Cir. 1994)). A reference may teach away by expressly suggesting to one of 11
ordinary skill in the art that a proposed combination should not be 12
reasonably expected to succeed in its desired function. “Additionally, a 13
reference may teach away from a [proposed modification] when that 14
[proposed modification] would render the result inoperative.” Id. (citing 15
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)). 16
Nevertheless, the subject matter of a claim “does not become 17
patentable simply because it has been described as somewhat inferior to 18
some other product for the same use.” In re Gurley, 27 F.3d 551, 553 (Fed. 19
Cir. 1994). “The fact that the motivating benefit comes at the expense of 20
another benefit . . . should not nullify its use as a basis to modify the 21
disclosure of one reference with the teachings of another. Instead, the 22
benefits, both lost and gained, should be weighed against one another.” 23
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 24
2000); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. 25
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Cir. 2006)(“[A] given course of action often has simultaneous advantages 1
and disadvantages, and this does not necessarily obviate motivation to 2
combine.”). In may be obvious in a particular case to omit a feature 3
described by the prior art where the function performed by that feature is not 4
desired. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). 5
In the present case, it would have been obvious to have replaced the 6
O-ring 100 described by McConnell with a coil spring capable of forcing the 7
ground conductors of opposing coaxial connectors together to enhance their 8
electrical connection. McConnell taught that historical coaxial connectors 9
suffered from two significant sources of signal loss, namely, infiltration of 10
moisture or other environmental elements and poor connection of opposing 11
conducting surfaces. (See FF 6). McConnell described an elegant solution 12
which addresses both significant sources of signal loss in prior art coaxial 13
connectors. (See FF 8). Nevertheless, McConnell did not suggest that a 14
connector including a coil spring addressing only one of the significant 15
sources of signal loss, namely, poor connection of opposing conducting 16
surfaces, would not have been capable of operating as a coaxial connector. 17
The secondary references, particularly Melcher ′025, Melcher ′331 18
and Saito, describe operable coaxial connectors using coil springs rather than 19
O-rings to bias the grounding member of a coaxial connector into better 20
connection with the grounding member of a complementary connector. 21
Considering the teachings of the references as a whole, one of ordinary skill 22
in the art would have had a reasonable expectation that a connector using a 23
coil spring rather than a conductive O-ring to bias the grounding member of 24
a coaxial connector into better connection with the grounding member of a 25
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complementary connector would have been capable of operating as a coaxial 1
connector. (See Resp. Br. 2-7; see also RAN 13-14). 2
As the Requester points out, one of ordinary skill in the art would 3
have recognized that signal loss due to infiltration of moisture or other 4
environmental elements would not have been an equally significant problem 5
in all environments. (See Resp. Br. 4-5; see also RAN 14). For example, 6
one of ordinary skill in the art would have recognized that signal loss due to 7
infiltration of moisture would not have been as significant a consideration 8
when designing a connector for indoor use. (See FF 31). It would have been 9
obvious to one of ordinary skill in the art to use a coil spring rather than a 10
conductive O-ring as taught by McConnell to bias the grounding member of 11
an indoor connector into better connection with the grounding member of a 12
complementary connector, since signal loss due to infiltration of moisture 13
would not have been a significant concern. 14
Even in an environment where signal loss due to infiltration of 15
moisture or dust was a significant concern, neither claim 27 nor claim 28 16
disclaims the use of separate O-ring seals to prevent such infiltration. Both 17
McConnell and Melcher ′025 taught the use of non-conductive O-rings to 18
control moisture infiltration. (See FF 7 and 23). Melcher ′025 taught 19
combining the use of a coil spring with the use of non-conductive O-rings. 20
(See FF 22 and 23). Therefore, McConnell, in the context of the teachings 21
of the art as a whole, did not teach away from the subject matter of claims 27 22
and 28. 23
The question of whether one of ordinary skill in the art would have 24
had an incentive to use a coil spring rather than a conductive O-ring is one of 25
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perspective. One of ordinary skill would have had an incentive to improve 1
the historical connectors described in the Background of the Art section of 2
McConnell by using a conductive O-ring to both bias the grounding member 3
of a coaxial connector into better connection with the grounding member of 4
a complementary connector and to prevent the infiltration of moisture and 5
other infiltrates. One of ordinary skill in the art also would have had an 6
incentive to improve the historical connectors by using a coil spring merely 7
to bias the grounding member of a coaxial connector into better connection 8
with the grounding member of a complementary connector. The teachings 9
of the cited references indicate that one of ordinary skill in the art could have 10
implemented either improvement. The substitution of one improvement for 11
the other would have been obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 12
U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in 13
the prior art that is altered by the mere substitution of one element for 14
another known in the field, the combination must do more than yield a 15
predictable result.”). 16
We sustain grounds of rejection 3-7. 17
18
Third Issue 19
The Requester proposes, and the Examiner adopts, the finding that 20
Melcher ′331 describes an F type connector including cable engagement 21
members and a nut “mounted to said engagement members for free rotation 22
and limited axial movement from a rest position in a first direction with 23
respect to said engagement members.” More specifically, the Requester 24
proposes, and the Examiner adopts, the finding that the connector shell 46 25
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and an internally threaded coupling sleeve (no reference numeral) depicted 1
in Figure 2 of Melcher ′331 are “cable engagement members;” and that the 2
coupling nut 48 depicted in Figure 2 of Melcher ′331 is “mounted to” both 3
the connecting shell 46nd the internally threaded coupling sleeve. The 4
Requester argues that the “unnumbered threaded sleeve also serves as a rear 5
stop for limiting axial movement of coupling nut 48 along connector shell 6
46.” (Resp. Br. 14; see also RAN 17). 7
However, as the Patent Owner correctly points out, the coupling nut 8
48 is not mounted to the internally threaded coupling sleeve depicted in 9
Figure 2 of Melcher ′331. (FF 17; see also Reb. Br. PO 8). Since neither the 10
Examiner nor the Requester offer any other explanation as to how an F type 11
connector including cable engagement members and a nut “mounted to said 12
engagement members for free rotation and limited axial movement from a 13
rest position in a first direction with respect to said engagement members” 14
might have been obvious from the combined teachings of Melcher ′331 and 15
Melcher ′025, we do not sustain ground of rejection 8. 16
17
DECISION 18
We AFFIRM the Examiner’s decision rejecting claims 27 and 28. 19
Requests for extensions of time in this inter partes reexamination 20
proceeding are governed by 37 C.F.R. § 1.956 (2011). 21
22
AFFIRMED 23

ak
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Patent Owner: 1
2
John Mezzalingua Associates, Inc. 3
c/o Schmeiser, Olsen & Watts 4
22 Century Hill Driver, Suite 302 5
Latham, NY 12110 6
7
Third Party Requester: 8
9
Schwegman, Lundberg & Woessner, P.A. 10
P.O Box 2938 11
Minneapolis, MN 55402 12