Ex Parte 6994585 et al

Patent Trial and Appeal Board

Feb 28, 2013

95000200 (P.T.A.B. Feb. 28, 2013)

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.
95/000,200 11/29/2006 6994585 52833 9601
44564 7590 02/28/2013
BOND, SCHOENECK & KING, PLLC
10 BROWN ROAD, SUITE 102
ITHACA, NY 14850-1248
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/28/2013 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
______________

PASS & SEYMOUR, INC.,
Patent Owner, Appellant, and Cross Respondent

v.

HUBBELL, INC.,
Requester, Respondent, and Cross-Appellant
______________

Appeal 2013-001548
Reexamination Control No. 95/000,200
United States Patent 6,994,585 B2
Technology Center 3900
______________

Before JOHN C. MARTIN, KEVEN F. TURNER,
and BRIAN J. McNAMARA, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner Pass & Seymour, Inc. (hereinafter “Patent Owner”)
appeals under 35 U.S.C. §§ 134(b) and 315(a)(1) from the Examiner’s
rejection of claims 1-66 of Benoit et al. U.S. Patent 6,994,585 (hereinafter
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“the Benoit patent” or “Benoit”).1 Requester Hubbell, Inc. (hereinafter
“Requester”) has filed a cross-appeal under 35 U.S.C. §§ 134(c) and
315(b)(1) challenging the Examiner’s determination not to enter a proposed
rejection of claims 1, 2, 4, 6-14, 18-23, 33, 37, 55, 56, and 63-65 under
35 U.S.C. § 102(b) for anticipation by Heimann.2
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
We AFFIRM the Examiner’s decision that claims 1-66 are
unpatentable and AFFIRM the Examiner’s decision not to enter Requester’s
proposed rejection for anticipation by Heimann.

I. STATEMENT OF THE CASE
A. Related Appeals and Litigation
Requester has identified the following inter partes reexamination
proceedings as related to this appeal:
(1) Reexamination 95/000,253, involving U.S. Patent 7,189,110 (“the
'110 patent”), which is a continuation of the Benoit patent involved in this
reexamination proceeding;3 and

1 Issued to John Benoit and Gerard R. Savicki, Jr. on February 7, 2006,
based on Application 10/680,797, filed October 7, 2003.
2 Heimann, U.S. Patent 4,842,551, issued June 27, 1989, and corrected by a
Certificate of Correction dated September 8, 1992.
3 A “Decision on Appeal” by the Board in the '253 proceeding (Appeal No.
2012-011443) was mailed on November 27, 2012.
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(2) Reexamination 95/000,258, involving U.S. Patent 7,195,117
(hereinafter “the '117 patent”), which is a continuation of the '110 patent.4
Req. Br.5 1-2.
Requester has also identified the following litigation as related to this
appeal:
(1) Pass & Seymour, Inc. v. Hubbell Incorporated, C.A. No. 07-cv-
00017 (N.D.N.Y, filed Jan. 5, 2007) (dismissed for statistical reasons)
(involving the Benoit Patent); and
(2) Pass & Seymour, Inc. v. Hubbell Incorporated, C.A. No. 07-cv-
00272 (N.D.N.Y, filed Mar. 13, 2007) (dismissed for statistical reasons after
denial of preliminary injunction) (involving the '110 and '117 patents). Id. at
1-2.

B. This Reexamination Proceeding
This reexamination proceeding was initiated by a “Request for Inter
Partes Reexamination Under 37 C.F.R. § 1.913” (hereinafter “Request”)
filed on November 29, 2006, and seeking reexamination of claims 1-51 (all
of the original claims) of the Benoit patent. The Request proposed twenty-
nine grounds of rejection under 35 U.S.C. §§ 102 and 103(a) based on the

4 The appeal in the '258 proceeding is still in the briefing stage.
5 “Brief of Cross-Appellant Under 37 C.F.R. § 41.67,” filed by Requester on
March 28, 2011.
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following references: Heimann, Hyde,6 Blackwood,7 Kolling,8 Hardesty,9
and Richter.10 Req. 2-5. The proposed rejections under § 102 were based on
each of Heimann, Hyde, Blackwood, Hardesty, and Kolling. Id. at 2, paras.
1-5.
Reexamination of claims 1-55 was ordered in a February 22, 2007,
“Order Granting/Denying Request for Inter Partes Reexamination.”
The Office actions issued during the proceeding and discussed below
include: (1) a nonfinal Office Action mailed March 26, 2007 (hereinafter
“Nonfinal Action”); (2) a first Action Closing Prosecution, mailed June 7,
2008 (“First ACP”); (3) a second Action Closing Prosecution, mailed March
23, 2010 (“Second ACP”); and a Right of Appeal Notice, mailed
December 17, 2010 (“RAN”).
In the Nonfinal Action, the Examiner entered numerous rejections
under 35 U.S.C. §§ 102 and 103(a). Nonfinal Action 7-46. In response,
Patent Owner amended all of the original independent claims (viz., claims 1,
33, 40, and 46) and some dependent claims and added new claims 52-66
(including independent claims 56, 65, and 66). May 25, 2007, “Response to

6 Hyde, U.S. Patent 6,376,770 B1, issued April 23, 2002.
7 Blackwood et al., U.S. Patent 4,725,249, issued February 16, 1988.
8 Kolling, U.S. Patent 4,273,957, issued June 16, 1981.
9 Hardesty, U.S. Patent 4,477,141, issued October 16, 1984.
10 Richter et al., Practical Electrical Wiring, pages 137, 507 (16th ed.,
McGraw-Hill 1993).
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the Decision Granting Inter Partes Reexamination” at 49-63. Requester in
June 25, 2007, “Comments by Third Party Requester Under 37 C.F.R.
§ 1.947” responded by proposing rejections on the following grounds:
(1) Under 35 U.S.C. § 112, first paragraph (written description
requirement) (e.g., id. at 3);
(2) Under 35 U.S.C. § 102 (e.g., id. at 28); and
(3) Under 35 U.S.C. § 103(a) (e.g., id.).
Some of these proposed § 103(a) rejections were based in part on a newly
cited First Alert reference.11 See, e.g., id. at 25, 27.
In the First ACP, the Examiner declined (at 16, 39, and 41-43) the
request to reject claims under 35 U.S.C. § 102 for anticipation by Heimann
or other references. Instead, the Examiner rejected claims 1-66 on each of
the following grounds:
(1) Under 35 U.S.C. § 314(a) for improper enlargement of their scope
(id. at 5);
(2) Under 35 U.S.C. § 112, first paragraph (written description
requirement) (id. at 9);
(3) Under 35 U.S.C. § 112, second paragraph, for indefiniteness (id. at
10); and

11 BRK, First Alert, User’s Manual, Smoke and Fire Alarms (© July 2004).
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(4) Under 35 U.S.C. § 103(a) for obviousness over Heimann in view
of First Alert (and further in view of Hyde or Hyde and Blackwood as to
some dependent claims). Id. at 16-39.
Patent Owner on July 7, 2008, filed a “Response to the Action Closing
Prosecution” (hereinafter “July 2008 Response”) including (at 50-59) further
amendments of the claims. This response was accompanied by the
following evidence of alleged commercial success: (1) An Appendix A
consisting of a “Statement of Thomas N. Packard” and three pages each
bearing the heading “PlugTail™ Update”; and (2) An Appendix B described
as consisting of “[s]everal emails from P&S marketing personnel listing the
various industry awards along with testimonials from various customers.”
July 2008 Response at 45. These testimonials consist of three Pass &
Seymour “Case History” articles.
In response to a December 31, 2008, “Notice Re Defective Paper in
Inter Partes Reexamination” indicating that the format of the amended
claims was incorrect, Patent Owner on January 30, 2009, filed a
“Supplemental Response to the Action Closing Prosecution” (hereinafter
“Supplemental Response”) including a corrected copy of the amended
claims. These are the claims that appear in the Claims Appendix (hereinafter
“Claims App.”). App. VIII to P.O. Br.12 The Supplemental Response

12 Patent Owner’s “Brief on Appeal,” filed on March 14, 2011.
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argues, inter alia, (at 47) that the July 2004 date of First Alert makes it
unavailable as prior art against the Benoit patent claims.
In the Second ACP, the Examiner, “[i]n view of the amendments
adding back the previously deleted subject matter,” withdrew the rejection of
claims 1-66 under 35 U.S.C. § 314(a). Second ACP 38. The Examiner also
effectively withdrew the rejection of claims 1-64 and 66 under 35 U.S.C.
§ 112, first paragraph, by rejecting only claim 65 on this ground. Id. at 7.
However, the rejection of claims 1-66 under 35 U.S.C. § 112, second
paragraph, was repeated. Id. at 7. Furthermore, the Examiner modified the
rejections of claims 1-66 under 35 U.S.C. § 103(a) by replacing First Alert
with BRK.13 In so doing, the Examiner explained that “[w]hile . . . the
disclosures of the two publications are virtually identical, the examiner has
considered this a new ground of rejection. This Office action is [therefore]
an Action Closing Prosecution.” Id. at 4. Finally, the Examiner (id. at 11)
declined Requester’s invitation to reject claims 1, 2, 4, 6-14, 18-23, 33, 37,
55, 56 and 63-65 (including independent claims 1, 33, 56, and 65) under
35 U.S.C. § 102 for anticipation by Heimann.
Patent Owner responded on April 23, 2010, with a “Response to the
Action Closing Prosecution,” accompanied by a “Statement of Donald S.

13 BRK Electronics, User’s Manual, Smoke Alarms (© 2000), offered in the
August 6, 2008, “Comments by Third Party Requester Under 37 C.F.R.
§ 1.951” (at 5) as a replacement for First Alert.
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Bausch” (hereinafter “Bausch Declaration”) and a “Statement by Clarke C.
Ayer” (hereinafter “Ayer Declaration”), which are offered (at 26-27) to
prove commercial success and copying.14
In the RAN, mailed December 17, 2010, the Examiner (at 5-53)
repeats the positions set forth in the Second ACP and (at 53-57) finds the
evidence of alleged commercial success and copying unpersuasive.
Patent Owner and Requester filed notices of appeal and cross-appeal
on January 14 and 26, 2011, respectively.
In response to the above-noted Patent Owner’s “Brief on Appeal”
(“P.O. Br.”) and Requester’s “Brief of Cross-Appellant Under 37 C.F.R.
§ 41.67” (“Req. Br.”), the parties filed the following briefs:
(1) “Respondent’s Brief of Third Party Requester Under 37 C.F.R.
§41.68,” filed on April 14, 2011 (hereinafter “Req. Resp’t Br.”); and
(2) “Corrected Respondent Brief of Patent Owner Under 37 C.F.R.
§41.68,” filed on June 3, 2011 (hereinafter “P.O. Resp’t Br.”).
The Examiner’s Answer, mailed February 28, 2012, incorporates the
RAN by reference without providing any additional comments.

14 Requester argued that these declarations should be denied consideration
for being untimely. May 24, 2010, “Comments by Third Party Requester
Under 37 C.F.R. § 1.951” at 2. The Examiner in the RAN (at 72) stated that
this argument “has been noted” but did not decide its merits, instead finding
both declarations unpersuasive on the merits. Id. at 53-57.
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A “Rebuttal Brief” was filed by Patent Owner on March 28, 2012
(hereinafter “P.O. Reb. Br.”).

A. The Invention Described in the Benoit Patent
The invention described in the Benoit patent is a wiring system
comprising a “plug connector device” and a “wiring device.” Benoit,
Abstract.
The Benoit patent explains in the section labeled “2. Technical
Background” that during a rough-in phase, junction boxes and device boxes
are installed, and then electrical wires are installed such that their leads
extend from the boxes and are visible and accessible for the next phase of
the installation process. Id. at 1:14-34. After completion of the rough-in
phase, “the electrical wiring devices are terminated, i.e., they are electrically
connected to the wire leads.” Id. at 1:57-60. In this process, each electrical
wire must be stripped and terminated to the device. Id. at 1:63-64. The
wiring system described and claimed in the Benoit patent “provides an
efficient system and method for terminating electrical devices” and “is cost-
effective because it eliminates many of the labor intensive practices that are
currently in use.” Id. at 2:6-9.
Figure 1A of the Benoit patent is reproduced below.
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Figure 1A is a perspective view of an embodiment of Benoit’s wiring
system. Id. at 3:36-37. The electrical wiring system 10 includes a plug
connector 20 that mates with an electrical wiring device 30. Id. at 4:39-40.
Plug 20 includes a housing 200 with contacts 202 disposed therein to
terminate electrical power conductor wires 12. Id. at 4:41-43.
The electrical wiring device 30 includes a body 300, a strap element
302, a cover 304, a power input receptacle 306 (hereinafter “plug receptacle
306”), receptacle contacts 308, a ground chassis 310, and mounting screws
312. Id. at 4:52-55. In this embodiment, receptacle contact 308 is a male
contact that is configured to mate with a female plug contact 202. Id. at
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4:44, 55-56. Because the embodiment shown is a three-wire system that
includes a ground, the ground chassis 310 includes a male contact tab that
mates with one of the female contacts in plug connector 20. Id. at 4:62-65.
Although not stated in the Benoit patent, it is evident that wires 12 extend
into the device box (not shown) and are accessible via the open front thereof
while they are in the process of being connected to plug connector 20.
Figure 1B is reproduced below.

Figure 1B is a perspective view of the wiring system depicted in Figure 1A,
showing plug connector 20 inserted into plug receptacle 306 of electrical
wiring device 30. Id. at 4:36-38.
Figure 2 of the Benoit patent is reproduced below.
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Figure 2 is a cross-sectional view of the electrical wiring system depicted in
Figure 1B (i.e., with plug connector 20 inserted into wiring device 30). Id.
at 5:12-13. When wires 12 are energized, power is supplied to output
receptacles 314. Id. at 5:20-21.
Figure 4 is reproduced below.
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Figure 4 is “a detail view illustrating the construction of [plug] receptacle
3[0]6.” Id. at 5:35-36.15 Essentially, the contacts within (i.e., extending
into) plug receptacle 306 are formed by three metallic bodies disposed
within molded body 300 (Fig. 1A). Id. at 5:36-38. Specifically, ground
chassis 310 includes ground contact 316; contact body 318 includes contact
308 (i.e., one of the hot and neutral contacts) (incorrectly labeled 308’ in
Figure 4); and contact body 318' is a mirror image of contact body 318 and
includes contact 308' (i.e., the other of the hot and neutral contacts)
(incorrectly labeled 308 in Figure 4). Id. at 5:39-42. As shown in Figure
1A, these contacts are engagable by corresponding contacts in plug
connector 20.

15 In quotations herein from the record and briefs, bolding of reference
numerals is omitted.
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Figure 5 is reproduced below.

Figure 5 is a detail view showing ground chassis 310 in isolation. Id. at
5:47-48. (In order to be consistent with Figure 4, the contact should be
designated 316 instead of 308.)
Figure 6 is reproduced below.
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Figure 6 is a detail view of electrical contact body 318 in isolation. Id. at
5:48-49.
Figure 12 of the Benoit patent is reproduced below.

Figure 12 is a perspective view of plug connector 20, illustrating “a second
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method for terminating wires 12 to plug connector 20.” Id. at 6:62-64. In
this embodiment, plug connector 20 is equipped with leads 214 that are
terminated to plug contacts 202 at the factory. Id. at 6:64-66. Twist-on wire
connectors 212 are used to connect leads 214 stripped wires 12. Id. at 6:66-
67. Because this embodiment of plug connector 20 has leads, it resembles
the plug connector disclosed in Heimann, discussed below.

B. The Claims
The independent claims are claims 1, 33, 40, 46, 56, and 65, of which
claim 1 is reproduced below.
1. (amended) An electrical wiring system for use in an AC electrical power
distribution system including a plurality of AC electric power transmitting
wires configured to be disposed between an AC power distribution point and
a device box, the device box including a wiring ingress aperture and an open
front face for accessing an interior of the device box, the plurality of AC
electric power transmitting wires being routed through the wiring ingress
aperture and extending into the interior of the device box, the system
comprising:
a plug connector device including a plurality of plug contacts
disposed in a predetermined pattern within a plug device
housing, the plug connector device being configured to
terminate [a]the plurality of AC electric power transmitting
wires accessible via the open front face of the device box using
a termination arrangement, the plug connector device and the
termination arrangement being arranged in a detached
relationship relative to the device box after termination, the
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plurality of AC electric power transmitting wires being
configured to transmit electrical power provided by the AC
electrical power distribution system; [the plurality of wires
being configured to transmit electrical power provided by an
electrical power distribution system;]and
an electrical wiring device configured to provide the electrical power
to an electrical load, the electrical wiring device being
substantially disposed between a user accessible cover member
and a body member, the electrical wiring device also being
configured to be mountable to the open front face of the device
box and including at least one AC electric circuit element
disposed between the user accessible cover member and the
body member, the electrical wiring device further including at
least one set of output receptacles operatively coupled to at least
one circuit element and configured to direct AC electric power
to the electrical load,[configured to provide the electrical power
to a load, the electrical wiring device being substantially
disposed between a user accessible cover member and a body
member,] the electrical wiring device also including a
receptacle disposed in the body member, the receptacle including a
plurality of receptacle contacts arranged in accordance with the
predetermined pattern, the receptacle being configured to
receive the plug device[, whereby]such that electrical continuity
is established between the at least one AC electric circuit
element and the plurality of AC electric power transmitting
wires[ electrical wiring device and the plurality of wires]when
the plug device is inserted into the receptacle and the plurality
of plug contacts mate with corresponding ones of the plurality of
receptacle contacts.
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Claims App. 1-2.
Dependent claim 16, which is specifically directed to the plug
connector embodiment shown in Figure 12, is reproduced below.
16. (amended) The system of claim 1, wherein the termination
arrangement [plug device] includes a plurality of threaded
twist-on wire connectors, each threaded twist-on wire connector
being coupled to a plug contact and configured to accommodate
one of the plurality of AC electric power transmitting wires,
such that electrical continuity is established between each wire
and each plug contact[, and wherein each plug contact
corresponds to a contact disposed in the receptacle].
Id. at 3. Thus, when reading claim 16 on the disclosed invention, leads 214
and twist-on connectors 212 in the Figure 12 embodiment correspond to the
recited “termination arrangement” rather than being part of the recited
“plurality of AC electric power transmitting wires.”
Claim 33, which is a method claim, reads as follows:
33. (amended) A method for installing an electrical wiring system in an AC
electrical power distribution system including a plurality of AC electric
power transmitting wires configured to be disposed between an AC power
distribution point and a device box, the device box including a wiring
ingress aperture and an open front face for accessing an interior of the device
box, the method comprising:
installing [a]the plurality of AC electric power transmitting wires from
a first location to [an electrical device location]the device box,
the plurality of AC electric power transmitting wires being
routed through the wiring ingress aperture and extending into
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the interior of the device box and accessible via the open front
face, [at least a portion of] the plurality of AC electric power
transmitting wires being configured to transmit electrical
power provided by the AC electrical power distribution system;
terminating the plurality [or]of AC electric power transmitting wires
accessible via the open front face of the device box with a plug
connector, the plug connector terminating the plurality of AC
electric power transmitting wires using a termination
arrangement, the plug connector including a plurality of plug
contacts being disposed in a predetermined pattern within a
plug device housing, the plug connector device and the termination
arrangement being arranged in a detached relationship relative
to the device box after termination;
providing an electrical wiring device configured to provide the
electrical power to an external electrical load, the electrical
wiring device being substantially disposed between a user
accessible cover member and a body member, the electrical
wiring device also including at least one AC electric circuit
element disposed between the user accessible cover member
and the body member, the electrical wiring device further including
at least one set of output receptacles operatively coupled to the
at least one AC electric circuit element and configured to direct
AC electric power to the external electrical load, [configured to
provide electrical power to a load, the electrical wiring device
being substantially disposed between a user accessible cover
member and a body member,] the electrical wiring device also
including a receptacle disposed in the rear body member, the
receptacle including a plurality of receptacle contacts arranged
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in accordance with the predetermined pattern[the receptacle
being configured to receive the plug device]; and
inserting the plug connector into the receptacle such that the plurality
of plug contacts mate with corresponding ones of the plurality
of receptacle contacts[, whereby] to thereby establish electrical
continuity therebetween.[is established between the electrical
wiring device and the plurality of wires.]
Claims App. 6-7.

C. The Rejections Challenged by Patent Owner
Patent Owner seeks review of the following rejections:
Claim 65 under 35 U.S.C. § 112, first paragraph (written description
requirement). RAN 7.
Claims 1-66 under 35 U.S.C. § 112, second paragraph for
indefiniteness. Id. at 8.
Claims 1-14, 16, 18-33, 35, 37-56, and 60-66 under § 103(a) for
obviousness over Heimann in view of BRK. Id. at 15.
Claims 15, 34, 57, and 59 under 35 U.S.C. § 103(a) for obviousness
over Heimann in view of BRK and further in view of Hyde. Id. at 34.
Claims 17, 36, and 58 under 35 U.S.C. § 103(a) for obviousness over
Heimann in view of BRK and Hyde and further in view of Blackwood. Id.
at 36.

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D. The Proposed Rejection That Is the Basis for Requester’s Cross-Appeal
Requester seeks review of the Examiner’s determination (RAN 11)
not to reject any of claims 1, 2, 4, 6-14, 18-23, 33, 37, 55, 56, and 63-65
under 35 U.S.C. § 102(b) for anticipation by Heimann. Req. Br. 10.

II. DISCUSSION
A. The 112, ¶ 1 Rejection of Claim 65 (Written Description Requirement)
Claim 65 recites, inter alia, “a plurality of AC electric power
transmitting wires disposed between an electric power distribution point and
a device box,” a “plug connector” including “plug connector contacts” and
“a termination interface configured to terminate the plurality of AC electrical
power transmitting wires.” Claims App. 15 (underlining omitted). The
Examiner (RAN 7, 39) finds that the Benoit patent fails to provide written
description support for the italicized language in the following claim 65
passage:
the plug connector . . . being configured to be inserted into the
line receptacle [of the electrical wiring device] to establish
electrical continuity between the plurality of line receptacle
contacts and the electric power distribution point without any
intervening electrical connections between the termination
interface and the electric power distribution point[.]
Claim App. 15 (italics added; underlining omitted).
The rejection is based on two alternative rationales. The first relies on
Benoit’s discussion of “bonding” at column 1, lines 28-31, which state:
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“After the boxes are placed, the electrical wires are pulled through the
conduits and all of the circuits are bonded.” Specifically, the Examiner
states that “[t]hough the disclosure does not define the term ‘bonded,’ one
skilled in the art would consider that such bonding would necessarily require
some sort of intervening electrical connection.” RAN 39. Patent Owner
argues that “[a] person having ordinary skill in the art (‘PHOSITA’) would
surely know that the neutral conductor is bonded to ground at the
distribution panel (e.g., the neutral conductor is typically connected to the
earth grounding rod at the panel).” P.O. Br. 11. Requester correctly points
out (Req. Resp’t Br. 6) that this argument is unsupported by any evidence in
the record but does not provide any evidence on this question. We find that
even assuming for the sake of argument that “bond[ing]” refers to an
electrical connection, Benoit does not describe bonding as occurring at an
“intervening” location between the termination interface (which is located
inside the device box) and an electric power distribution point (whether
considered to be a distribution panel or a junction box). We are therefore
unpersuaded by the first rationale for the rejection.
The Examiner alternatively found that
[r]egardless of whether or not “bonding” implies an intervening
electrical connection, there is clearly no support for there being
no intervening electrical connection. At best, the disclosure is
merely silent on the issue, and nothing in the description would
preclude an intervening electrical connection. Since it is well
established that to support an inherency argument, the support
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must make it clear that the missing descriptive matter is
necessarily present. That is not the case here. (See also Third
Party comments at page 5).
RAN 39. Patent Owner makes the following argument for inherent
support:16
The electrical wiring is typically disposed between the panel
and the device box (Benoit 7:13-15). However, “[j]unction
boxes, of course, are employed to house the connection point,
or junction, of several conductors.” Benoit 1:22-23. Thus, if
any intervening electrical connection is required, Benoit
unambiguously teaches that it should be housed within a
junction box; but, a junction box is an electric power
distribution point.
P.O. Br. 11.17 Patent Owner’s position that the recited “electric power
distribution point” can be read on a junction box strikes us as reasonable
one. The Examiner has not addressed this position of Patent Owner or
explained why, assuming it is correct, the claim language thus interpreted
nevertheless lacks written description support. We are therefore also
unpersuaded by the second rationale for the rejection.

16 To establish inherency, the extrinsic evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill. In
re Roberston, 169 F.3d 743, 745 (Fed. Cir. 1999).
17 The argument, which apparently was made for the first time in the Appeal
Brief, is not addressed in the Answer.
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The rejection of claim 65 under 35 U.S.C. § 112, first paragraph
(written description requirement) is not sustained.

B The § 112, ¶ 2 Rejection of Claims 1-66
The Examiner has concluded that the phrase “a plurality of AC
electric power transmitting wires” (see, e.g., preamble of claim 1) is
indefinite for two reasons. The first reason is stated as follows:
[T]he disclosure suggests that only a portion of the plurality of
wires are configured to transmit electrical power (abstract;
col. 2, lines 11-12; col.4, lines 21-23; and col. 9, lines 54-56),
suggesting that at least some of the wires do not transmit power,
however the basis for determining which wires are power
transmitting wires and which wires are not power transmitting
wires is unclear.
The disclosure explains that three phase power includes
three “hot” or “live” wires that transmit electrical power (col. 1,
lines 41-43) and two “other” wires, a neutral and a ground
(col. 1, lines 43-44)[.] From the disclosure at col. 1, lines 44-
48, it is taught that in a balanced 3 phase circuit, no current
would flow in the neutral (suggesting that the neutral does not
transmit power). Those skilled in the art would further
appreciate that in normal operation, the ground wire (equipment
ground) would not carry any current. As such, it could be
considered that only the “li[v]e” wires would transmit power.
On the other hand, a person of ordinary skill in the art would
consider that in unbalanced situations and fault situations, both
the neutral and ground wires would carry current such that, in
some situations, all the wires could be considered power
transmitting wires. It would also be appreciated by a person or
ordinary skill in the art that all of the conductors (not just a
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portion) would at least be capable of transmitting AC power.
As such, it is unclear whether the term “plurality of AC power
transmitting wires[”] is being used to distinguish between the
“hot” wires and the grounded conductors, or whether the term
has some other meaning.
RAN 8-9. This reasoning does not persuade us that the claim language is
indefinite. We conclude that the claim language “a plurality of AC power
transmitting wires,” when given its broadest reasonable interpretation,
describes wires that provide an AC current path for providing power to a
load under normal operating conditions (i.e., not during a short-circuit
condition). The Examiner’s interpretation of column 1, lines 41-43 as
describing only the three hot or live wires in a three-phase system as power
transmitting wires is incorrect. Instead, these lines, which read as follows,
merely describe the phase relationship between the three hot wires: “Three
phase power includes three ‘hot’ or ‘live’ wires. Each of these wires
transmits electrical power that is 120 degrees out of phase with the other two
hot wires.” These sentences therefore do not suggest that only the hot wires
are used to transmit power. We agree with Patent Owner (P.O. Br. 13) that
the artisan would have characterized the neutral wires in single-phase, two-
phase, and three-phase systems as power-transmitting wires, even though the
neutral wire in a three-phase system conducts only when the loads are
unbalanced. However, we do not agree with Patent Owner (id.) that the
artisan would also have considered the ground wire in such systems to be a
power transmitting wire. In fact, Benoit describes the ground wire as
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optional in the following passage: “Some of the circuits in the structure are
designed to provide power to grounded equipment. These circuits may
employ three wires, a line conductor (hot wire), a neutral conductor, and a
ground. Some circuits may only employ two wires, the line conductor and
the neutral conductor.” Benoit 1:51-55.
Finally, excluding the ground wire from the recited “plurality of AC power
transmitting wires” is consistent with Benoit’s statement that “[a] portion of
the plurality of wires are configured to transmit electrical power provided by
an electrical power distribution system.” Id. at 2:12-14 (emphasis added).
As a second, alternative reason for entering the rejection, the
Examiner states:
[E]ven if it was clear which of the individual wires correspond
to “power transmitting” wires and which wires do not
correspond to power transmitting wires, the claim limitation
would still be indefinite. That is because the Patent Owner also
seems to be relying on this term to distinguish between the
wires of the electrical cable 120 and the electrically connected
wires of interconnector cable 140 as taught Heimann.
. . . In this case, if the term “plurality of AC electric
power transmitting wires” as used in the amended claims is
intended to be used to mean only wires that directly extend
from an AC power distribution point so as to be accessible via
the open front portion of a device box without including any
splices therein (i.e., so as to exclude the functionally equivalent
and otherwise indistinguishable power transmitting interconnect
wires (140) disclosed by Heimann), then the specification
would necessarily need to clearly indicate something to that
effect. In this case, the term is indefinite because the
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specification does not either define or redefine the term such
that a person of ordinary skill in the art would not understand
that to qualify as one of the plurality of AC power transmitting
wires, the wires must not include an intervening splice between
the power distribution point and the connection to the plug
connector (the only distinguishable difference between the
interconnect wires). Without some special definition, one of
ordinary skill in the art would consider that on the basis of the
actual Benoit patent disclosure, the broadest reasonable
interpretation of AC electric power transmitting wires
accessible via the open front face of the device box would not
exclude the interconnect wires 140 of the Heimann plug
connector device 155.
For the purpose of the Office Action, because it
appears, based on the Patent Owner’s arguments, that the “AC
electrical power transmitting wires” term is intended to
distinguish between the interconnect wires 140 and the
electrical cable wires 120 as taught be Heimann, the examiner
has adopted that meaning.
RAN 9-11. We agree with Patent Owner that the Examiner’s position
“improperly mixes claim clarity under §112 with a discussion of the prior art
analysis better left to §103(a).” P.O. Br. 14. The question raised by the
rejection is whether the claims “set out and circumscribe a particular area
with a reasonable degree of precision and particularity.” In re Johnson,
558 F.2d 1008, 1015 (CCPA 1977). The Examiner correctly answered this
question in the affirmative in the above-quoted passage by concluding that
the claim phrase “a plurality of AC electric power transmitting wires,” when
given its broadest reasonable construction consistent with the Benoit patent
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disclosure, does not preclude splices in these wires. As a result, the claim
phrase “a plurality of AC electric power transmitting wires” is broad enough
to read on cable 120 alone or on the combination of cables 120 and 140.
For the above reasons, the rejection of claims 1-66 under 35 U.S.C.
§ 112, second paragraph, is not sustained.

C. The Proposed Rejection for Anticipation by Heimann
The proposed rejection for anticipation by Heimann is directed to
independent claims 1, 33, 56, and 65 and dependent claims 2, 4, 6-14, 18-23,
33, 37, 55, 63, and 64. Req. Br. 10-15; Heimann '551 Claim Chart (App. A
to Req. Br.) (hereinafter “Claim Chart”).
Heimann relates generally to electrical utility boxes and specifically to
electrical receptacle or switch assemblies adapted for modular connection to
conventional cable. Heimann 1:9-12. Heimann explains that conventional
electrical cabling sheathes three metallic conductors in an insulating
material, that “[s]uch cabling is stiff and bulky,” and that “[s]witches and
outlets of the prior art generally incorporate screw-type terminals for the
connection of the exposed conductor ends to several conductors internal to
the switch or outlet.” Id. at 28-33. Furthermore,
[a]ttachment of the cable conductors to such screw terminals
must be accomplished in close proximity to the junction box
and always requires the use of at least a screwdriver or similar
tool. Simple wiring of junction boxes in parallel therefore
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requires repeated use of these screw terminals or of even more
clumsy devices, such as wire nuts or electrical tape.
Id. at 1:33-40. Also, several cable ends are typically routed to one junction
box and their slack portions must be coiled or “nested” as a bundle within
the junction box after all connections are made to the requisite switch or
outlet piece. Id. at 1:46-50. Heimann thus describes the objectives of the
disclosed invention as follows:
The construction industry would therefore benefit from a
junction box assembly which does not rely upon the
cumbersome and typically labor-intensive screw terminal
installation. Moreover, an assembly which requires neither
tools, nor the nesting of bulky cabling within the junction box,
would be a significant advance in construction wiring
technique.
Id. at 1:60-68.
Figure 1 of Heimann is reproduced below.
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Figure 1 is an exploded perspective view of a conventional utility box with
an interconnector and a switch or outlet module in accordance with
Heimann’s invention. Id. at 2:41-43. A typical electrical cable 120 may be
routed to the vicinity of a conventional utility box 100 and then connected to
an interconnector assembly 155 consisting of a clamp receptacle 130
connected via an interconnect cable 140 to an interconnect plug 150. Id. at
2:68-3:4. Receptacle 130, cable 140, and plug 150 “p[re]ferably comprise a
single interconnect 155 assembly or harness” (id. at 3:4-6) and are also
described as “preformed as one interconnector 155.” Id. at 3:19-20. A
function module 160 includes interconnect jacks 170, a ground strip 180
having mounting ears 184, mounting screws 186, and a front plate 166. Id.
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at 3:6-9. Function module 160 can include a preformed outlet receptacle for
receiving the blades and pin of a typical grounded electrical plug. Id. at
4:34-38.
Figures 2 and 3 of Heimann are reproduced below.

Figures 2 and 3 are perspective views of clamp receptacle 130 in its
unassembled and assembled configurations, respectively. Id. at 2:44-47.
For the reasons given below, “it is necessary only to route the usually stiff
and unwielding [sic] electrical cabling 120 to the exterior of the utility box
100.” Id. at 3:22-24. As shown in Figure 2, cabling 120, after being
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stripped to expose a predetermined length of its conductors 122, is inserted
into the clamp receptacle 130. Id. at 3:16-18. “The clamp receptacle 130,
interconnect cable 140, and male plug 150 are preformed as one
interconnector 155 and sized so as to press into and through the utility box
wall at a punch-out hole 108 [not labeled in the figures].” Id. at 3:19-22.
Thus, after clamp receptacle 130 is used outside of utility box 100 to clamp
cable 120, interconnector 155 is fed (plug first) through opening 108 in
utility box 100 (id. at 3:50-52) until clamp receptacle 130 is in the final
position shown in Figure 4, reproduced below.

Figure 4 depicts in cross-section the construction of the clamp receptacle
130 and its position in the utility box wall. Id. at 4:3-5. The snaps 136 are
shown in their normal state and may be seen to curve against the utility box
100 opposite the ring 138. Id. at 4:5-7.
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Figures 5 and 6 are reproduced below.

Figures 5 and 6 are perspective and sectional views of plug 150. Id. at 2:50-
55. Numerals 156 identify three plug ferrules that terminate the ends of the
wires of interconnect cable 140. Id. at 4:24-27.
We reach the following conclusions regarding the scope and meaning
of the claims. Apparatus claim 1 recites an “electrical wiring system”
comprising “a plug connector” and “an electrical wiring device.” Rather
than requiring actual connection of these components, the claim specifies
that these components are “configured” to be connected together in the
recited manner when the electrical wiring system is
use[d] in an AC electrical power distribution system including a
plurality of AC electric power transmitting wires configured to
be disposed between an AC power distribution point and a
device box, the device box including a wiring ingress aperture
and an open front face for accessing an interior of the device
box, the plurality of AC electric power transmitting wires being
routed through the wiring ingress aperture and extending into
the interior of the device box.
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Claim 1 preamble (underlining omitted), Claims App. Claims reciting a
group or “kit” of interrelated parts were approved in In re Venezia, 530 F.2d
956, 959 (CCPA1976), which states: “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.” See also In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) (“A patent applicant is free to recite features of
an apparatus either structurally or functionally.”). As a result, the
“configured to . . .” and other functional recitations are entitled to weight to
the extent they imply structural features. Independent apparatus claims 56
and 65 are also in the “kit” format and will be interpreted in the same
manner as claim 1. Claim 33, on the other hand, is a method claim and thus
requires actual connection of the components in the recited manner.
Requester presents two alternative rationales for finding that claim 1
is anticipated by Heimann. The first rationale assumes that, as argued by
Requester and as we have concluded above, the claim phrase “a plurality of
AC electric power transmitting wires” does not exclude Heimann’s
cable 140. Req. Br. 13, 1st full para.; Claim Chart 1, 2d row. The second
rationale assumes that, as argued by Patent Owner, this claim phrase
excludes Heimann’s interconnect cable 140 and thus is readable on only
cable 120. Req. Br. 11-12; Claim Chart 1, 2d row. These two alternative
rationales are set forth as follows in Requester’s Claim Chart:
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[T]he plug 150 (FIG. 1) includes ferrules 158 disposed in a
predetermined pattern terminating cables 140 that propagate
AC power, particularly by their connection to the wires 122 of
cable 120 via receptacle 130; alternatively, AC electric power
transmitting wires 120 are terminated by clamp 130[.]
Claim Chart 1, 2d row (emphasis added).

1. The First Anticipation Rationale (Reading the Recited “Plurality
of AC Electric Power Transmitting Wires” on Heimann’s Cables 120 and
140)
The Examiner found that Heimann anticipates claim 1 if (as we have
concluded above) the claim phrase “a plurality of AC electric power
transmitting wires” does not exclude Heimann’s cable 140. Specifically, the
Examiner stated:
If, as Requester asserts, the term “plurality of AC power
transmitting wires” does not exclude the AC power transmitting
wires 140 of the interconnect assembly, then the wires 140,
plug 150 and the second plurality of ferrules 158 would meet
the limitations of being accessible via the open front face of the
device box and being in a detached relationship relative to the
device box after termination.
RAN 13. Because the Examiner describes wires 140 as “AC power
transmitting wires,” we understand the Examiner’s position to be: (i) that
wires 140 are part of the recited “plurality of AC power transmitting wires”
and accessible via the open front face of the device box; and (ii) that plug
150 (the recited “plug connector device”) and ferrules 158 (the recited
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“termination arrangement”) are in a detached relationship relative to utility
box 100 (the recited “device box”) after termination.
Patent Owner does not specifically address this position of the
Examiner. Instead, Patent Owner contends that the first two rows of
Requester’s Claim Chart for claim 1 are inconsistent, self-contradictory, and
misleading (P.O. Resp’t Br. 12) because the first row reads the recited
“plurality of AC power transmitting wires” on cable 120, whereas the
second row reads the recited “plug” and “termination arrangement” on plug
150 and ferrules 158, which terminate wires 140 rather than cable 120.
Patent Owner also argues that plug 150 is not used to perform termination
“in the field.” More particularly, these arguments are made in the following
passage:
Taking the first two rows of the Requester’s claim 1 chart
together, the Requester asserts that (1) AC wires 120 are
accessible via the device box interior; (2) plug ferrules 158
terminate harness wires 140. This analysis is problematic on
several levels: statement (1) is not true; statement (2) takes
place in a factory; and statement (1) in combination with
statement (2) is misleading because it mixes and matches the
term “AC wires 120” with “harness wires 140” to give the
illusion that AC wires 120 are terminated by plug 150 in the
field when they are not. Claim 1 requires that the AC wires be
disposed between the AC distribution point and routed into the
device box interior such that they are accessible via the open
front face of for termination by a plug connector with a
termination arrangement.
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Id. (emphasis omitted). While it is true that the second row of Claim Chart 1
does not read the claim phrase “plurality of AC power transmitting wires”
on cable 140, this position is clearly implied by the first of the two
alternative positions set forth in the second row. In any event, the Examiner
in the above-quoted passage at RAN 13 clearly describes wires 140 as “the
AC power transmitting wires 140.”
Although Patent Owner has not shown that the claim phrase “plurality
of AC power transmitting wires” excludes cable 140, we are persuaded by
the argument that anticipation nevertheless is lacking because plug ferrules
158 terminate harness wires 140 in a factory, whereas claim 1 requires that
termination be performed in the field, i.e., while the AC electric power
transmitting wires are extending into the device box and accessible via the
front opening thereof. In our view, this proposed interpretation of the
claims, which has not been addressed by the Examiner or Requester, is a
reasonable one. Claim 1, for example, recites that “the plug connector
device [is] configured to terminate the plurality of AC electric power
transmitting wires accessible via the open front face of the device box using
a termination arrangement.” Apparatus claims 56 and 65 are similar to claim
1 in this respect. Method claim 33, on the other hand, specifically recites
“terminating the plurality of AC electric power transmitting wires accessible
via the open front face of the device box with a plug connector . . . using a
termination arrangement.” Claims App. 6 (underlining omitted).
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Heimann’s plug 150 is not described as being used to terminate
interconnect cable 140 in the field (as required to satisfy claim 33) or as
being capable of such use (as required to satisfy claims 1, 56, and 65). In so
holding, we are mindful of Heimann’s statement that “[r]eceptacle 130,
cable 140 and plug 150 p[re]ferably comprise a single interconnect 155
assembly or harness.” Heimann 3:4-6. See also id. at 3:19-20 (“clamp
receptacle 130, interconnect cable 140, and male plug 150 are preformed as
one interconnector 155”). Patent Owner and Requester both refer to this
“single interconnect 155 assembly or harness” as a “unitary” wiring harness.
Patent Owner argues that “Heimann’s preferably unitary harness 155 is both
the preferred embodiment and the only embodiment.” P.O. Br. 18.
Requester contends that the word “p[re]ferably” in the cited sentence makes
it clear that Heimann “clearly discloses, at least inherently, that the
interconnect assembly 155 could be unitary or non-unitary.” Req. Resp’t Br.
11-12. Although we agree with Requester on this point, we do not find that
this cited sentence would have been understood as suggesting that plug 150
(including ferrules 158) of a non-unitary assembly can be connected to
interconnect cable 140 while it extends into utility box 110 and is accessible
via the open front end thereof, as required to satisfy the claims. Heimann is
silent regarding when, where, or how components 130, 140, and 150 of a
nonpreferred embodiment of interconnect assembly 155 can be connected
together. See In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (the prior art
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anticipates under the principle of inherency if it necessarily functions in
accordance with, or includes, the claimed limitations).
For the foregoing reasons, we are not persuaded by the first
anticipation rationale.

2. The Second Anticipation Rationale (Reading The Recited
“Plurality of AC Electric Power Transmitting Wires” on Heimann’s Cable
120)
When the claim phrase “plurality of AC electric power transmitting
wires” is read on only Heimann’s cable 120, the issue is whether the recited
“plug connector device” and its “termination arrangement” can be read on
interconnect assembly 155, i.e., clamp connector 130, cable 140, and plug
150. The Examiner found anticipation lacking for two reasons. The first
reason is that
the termination arrangement would have to be considered as
including the clamp connector 130 and the first plurality of
ferrules 148, but then the wires 122 would no longer be
accessible via the open front face of the device box (though
wires 140 would still be accessible) after being terminated to
the clamp connector 130 and installed according to the
procedure suggested by Heimann.
RAN 14 (emphasis added). This position is unsound for the reasons pointed
out by Requester:
There is no recitation in claim 1 that the plurality of AC electric
power transmitting wires be accessible via the open front face
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of the device box after being terminated by the termination
arrangement. Claim 1 merely recites that the plurality of AC
electric power transmitting wires are accessible via the open
front face such that the wires can be terminated by the
termination arrangement.
Req. Br. 12.
The Examiner’s second reason for finding no anticipation under the
second rationale is that “the first termination arrangement [interconnect
assembly 155] would not be detached from the device box.” RAN 14.
Requester contends that this limitation is briefly satisfied by interconnect
assembly 155 after clamp receptacle 130 is connected to wires 122 of cable
and before clamp receptacle 130 is seated in the access opening of utility
box 100. See Req. Br. 12 (“Prior to securing the clamp receptacle 130 to the
box 100, the terminated wires 122 and clamp receptacle 130, as shown in
FIG. 3, are in a detached relationship relative to the box 100, as recited in
independent claim 1.”). Patent Owner responded to this argument, which
has not been addressed by the Examiner, as follows: “Requester argues that
clamp 130 is detached before it is attached. Requester admits, therefore, that
clamp 130 is attached to the device box at some point after termination.”
P.O. Resp’t Br. 12 (emphasis omitted). We agree with Patent Owner that
claim receptacle 130 is not “detached” in the sense of the claims. The claim
1 recitation of “the plug connector device and the termination arrangement
being arranged in a detached relationship relative to the device box after
termination” (emphasis added; underlining omitted) clearly refers to the final
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position of the plug connector device and termination arrangement relative
to the device following completion of the termination operation.
Independent claims 33, 56, and 65 are similar to claim 1 in this respect.
For the above reason, we are unpersuaded by Requester’s second
anticipation rationale. We find that anticipation under this rationale is also
lacking for another reason. Patent Owner argues that anticipation is lacking
because wires 122 of Heimann’s cable 120 do not extend into the device box
and are not accessible for termination via the front opening thereof, as
claimed. See P.O. Resp’t Br. 12 (“AC wires 120 are not routed into the
interior of the device box, do not extend into the interior of the device box,
and are not accessible from the open front face of the device box.”).
Requester contends (Req. Br. 12) that Heimann describes routing of cable
120 into utility box 100 in column 3, lines 12-15, which state: “The box 100
includes discs 108 which may be removed, or ‘punched-out’, from a side of
the box 100 to allow the routing of electrical cabling 120 into the box 100.”
We agree with Patent Owner that this sentence “describes a conventional
device box 100 that includes punch-outs that may be used to route cable in
prior art applications” (P.O. Resp’t Br. 9) and thus does not describe routing
cable 120 into utility box 100 for termination by interconnect assembly 155.
As noted above, Heimann explains that “it is necessary only to route the
usually stiff and unwielding [sic] electrical cabling 120 to the exterior of the
utility box 100.”) Heimann 3:19-24 (emphasis added). Thus, Heimann fails
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to disclose using plug 150 (including ferrules 158) to terminate cable 120
wires while they extend into the device box and are accessible via the open
front face thereof, as required by claim 33.
However, the question raised by the proposed anticipation rejection of
claims 1, 56, and 65 is whether Heimann’s interconnect assembly 155 is
capable of being used to terminate a cable that extends into the utility box
and is accessible via the open front face of the device box. The answer is no,
because interconnect assembly 155 can only be connected to cable 120 while
it located outside of the utility box. After clamp receptacle 130 is attached
to wires 122 of cable 12, the plug 150 and interconnect cable 140 are pushed
through the utility box opening that corresponds to the recited “wiring
ingress aperture” until clamp receptacle 130 is pressed as far as it will go
into that opening. Heimann 3:50-58. Ring 138 and resilient snaps 136
prevent clamp receptacle 130 from being used (without modification) to
terminate a cable that is extending into the utility box and accessible via the
open front thereof, as required to satisfy claim 1, 56, and 65.
Because we are not persuaded by either anticipation rationale, we
sustain the Examiner’s determination not to enter Requester’s proposed
rejection of independent claims 1, 33, 56, and 65 and dependent claims
2, 4, 6-14, 18-23, 37, 55, 63, and 64 under 35 U.S.C. § 102(b) for
anticipation by Heimann.

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D. The § 103(a) Rejection Based on Heimann in View of BRK
1. The Prima Facie Case for Obviousness
The Examiner rejected all of the claims except dependent claims 15,
17, 34, 36, and 57-59 for obviousness over Heimann in view of BRK.
RAN 15.
As noted by Patent Owner (P.O. Br. 23), the Examiner has concluded
that it would have been obvious to modify Heimann by (1) using
conventional mechanical clamps to secure cable 120 in the ingress opening
of the utility box and (2) replacing Heimann’s claim receptacle 130 with
twist-on connectors (i.e., wire nuts) of the type shown in BRK. RAN 18-19.
For the following reasons, we are not persuaded of error in this rationale.18
We begin our analysis by considering the level of skill in the art. The
factors that may be considered in determining level of ordinary skill in the
art include: (1) the educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of active workers in the field. Daiichi Sankyo Co., Ltd.

18 It is therefore not necessary to address the Examiner’s alternative
rationale, which, as noted by patent Owner (P.O. Br. 23), involves reversing
the relative positions of the ring 138 and snaps 136 of clamp connector 130
in order to permit it to be “used via the open front face of the device box[.]”
Id. at 20.
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v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Patent Owner focuses
on factor (1), asserting that “[i]n this case, one inventor has an
undergraduate degree in engineering and the other is an experienced
electrician” and that “[inventor] Benoit is an electrician and was responsible
for the over-all design.” P.O. Br. 16-17. Requester counters that these
assertions are not supported by evidence and thus constitute mere attorney
argument, which cannot take the place of evidence in the record. Req.
Resp’t Br. 9 (citing In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718
(CCPA 1965)). However, Requester has not provided a description of the
appropriate level of skill in the art.
The Examiner states:
Contrary to Patent Owner’s statement that it is the examiner
that has suggested that a person of ordinary skill in the art is an
electrician, the examiner notes that it was Patent Owner that
proposed that a person of ordinary skill in the art would have a
range of between that of an experienced electrician and
someone with an undergraduate engineering degree.
RAN 44. The Examiner further finds:
As to the level of skill in the art corresponding to that of
an electrician (an experienced electrician) of ordinary creativity,
the examiner notes that the creativity of an experienced
electrician is very high. . . .
In addition, an electrical engineer would have the skill in
the art to propose useful design modification to various
electrical during the manufacturing stage.
Id. at 45.
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Because the claims recite allegedly new circuit components for use in
electric power systems, we find that the person having ordinary skill in the
relevant art is a person who has experience designing rather than merely
installing circuit components for power systems.
Turning now to the proposed combination of reference teachings and
specifically to the secondary reference to BRK, the Examiner relies on the
figure and associated text that appear therein at page 10 under the heading
“How to Install This Smoke Alarm” and are reproduced below.

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As shown in this figure, the smoke alarm unit has a “Quick-connect power
connector” (i.e., receptacle) 9 for receiving power from a plug connector
(not numbered) having hot and neutral AC wires 4 and 5 that are connected
to by wire nuts (not numbered) to the house wiring (not numbered). The
Examiner finds that this figure
shows a typical plug connector, device arrangement (9) wherein
twist-on connectors are utilized to couple the power
transmitting wires to the plug connector. In such a
conventional termination arrangement, the power transmitting
wires are accessible from the front face of the device box, and
the termination arrangement is detached from the device box.
RAN 18. The Examiner also explains that BRK is relied on “not for the
teaching of a plug connector, but rather for the well known use of wire nuts
for terminating the distal portion of the wires of a plug connector device.”
RAN 52.
Although not identified in the statement of the rejection, the Examiner
also implicitly takes official notice of conventional clamps for mechanically
supporting a cable in the “wiring ingress aperture” (claim 1) of a device box
without also performing a termination (i.e., electrical connection) function:
[T]hose skilled in the art appreciate that the conventional wire
clamping means utilized with such device box openings
(Romex® connectors, for example) only secure the cable
without terminating it. Thus in a typical installation, (as is
admitted in the Benoit patent) the AC power transmitting wires
would normally be accessible via the open front face of the box.
RAN 18-19.
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Based on the foregoing teachings, the Examiner concluded:
[I]t would . . . have been obvious for an electrician of ordinary
skill in the art to modify the [Heimann] system so as to install
and secure the power transmitting wires in the conventional
manner (i.e., utilize the clamping means included with the
device box), and use the dual-purpose molded connector 130
only to terminate the power transmitting wires.
It is also noted that in those situation wherein the device
box already includes its own clamping means for securing the
AC power transmitting wires wire, rather than even use the
molded clamp connector termination arrangement, it would
have been an obvious and predictable design choice to merely
remove the molded clamp connector and terminate the wires by
use of the well known and time-tested twist-on connectors, as is
conventional in the art.
RAN 19 (emphasis added). In Heimann thus modified, wires 122 of cable
120 will be connected by wire nuts to one end of interconnect cable 140,
whose other end is terminated by plug 150. This termination arrangement in
these respects is therefore identical to the termination arrangement depicted
in Figure 12 of the Benoit patent.
Patent Owner does not deny that the independent claims read on
Heimann thus modified. Instead, Patent Owner contends (P.O. Br. 23) the
Examiner has not provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness,” as required by
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). We are
unpersuaded by this argument for the following reasons.
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The Examiner’s most specific stated motivation for combining the
reference teachings in the above manner is that “it would have been obvious
to apply a known technique to a known device [Heimann] ready for
improvement to yield predictable results.” RAN 43. See MPEP § 2143 (8th
ed., rev. 9, Aug. 2012) (stating that “[e]xemplary rationales [described in
KSR] that may support a conclusion of obviousness include: . . . (D)
Applying a known technique to a known device (method, or product) ready
for improvement to yield predictable results[.]”). Specifically, the Examiner
found that a person skilled in the relevant art would have concluded that
Heimann’s wiring system can be made more versatile by modifying it to
permit the use of conventional mechanical clamps that, unlike Heimann’s
clamp receptacle 130, can accommodate metal-sheathed cables as well as
nonmetal-sheathed cables:
One notable deficiency is that even though[] the modular
wiring device and the plug connector taught by Heimann are
generally useful with a wide variety of device boxes (e.g., new-
work boxes, old-work boxes, handy boxes, plastic boxes,
weather-proof boxes, surface mount boxes, etc[.],) and a wide
variety of wiring types and methods (non-metallic cable, UF
cable, bx cable, armored cable, electrical metallic tubing, steel
pipe, pvc pipe, flexible metal conduit, surface wiring systems,
etc.), the molded clamp connector [of Heimann] is a specialty
device generally only useful with non-metallic cable and either
metal new-work or handy boxes with a half inch (nominal 7/8
inch) knock out. As such the system is ready for improvement,
wherein such improvement can be effected by applying the well
known techniques utilized with other wiring methods and
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device boxes so as to allow for a much more versatile system
usable with those wiring methods.
RAN 43 (emphasis added).
The Examiner also provided an alternative second rationale for the
above combination of prior art teachings, which is that this combination
is consistent with guideline for establishing a prima facie case
of obviousness in view of the Supreme Court’s decision in KSR
International Co. v. Teleflex Inc., since the modification is a
combination or substitution of known prior art elements (twist-
on connectors) to obtain predictable results (the reliable and
predictable termination of power transmitting wires to the wire
leads of a connection plug) (See MPEP 2143 A and B).
Id. at 58.
Both of the Examiner’s rationales for obviousness are based on the
assumption, which is correct in our view, that interconnect cable 140
(which is retained in Heimann when modified as proposed by the Examiner)
serves an important function that is independent of the manner in which
cable 140 is electrically connected to cable 120. We note that Patent Owner
acknowledges that the nesting problem discussed by Heimann (at 1:63-65) is
solved by using an interconnect cable 140 having greater flexibility than
wires 122 of cable 120:
Heimann has two major objectives: (1) Stiff and bulky AC
cabling must not be routed into the device box and nested
therein; and (2) screw terminals, wire nuts, electrical tape and
other such conventional means are not be employed to
terminate the AC electrical wires 120. . . .
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. . . .
[T]he first Heimann objective is accomplished because the stiff
and bulky electrical cable 120 remains to the exterior of the
device box 100; only the relatively thin flex wires 140 (and
plug 150) are disposed in the device box 100. . . .
. . . It is Heimann that teaches that cables 120 are stiff and
bulky and should not be nested in the device box. It is Heimann
that teaches that harness wires 140 should instead be nested in
the device box because they are flexible and less bulky.
P.O. Br. 17, 19 (emphasis modified).19 It would have been readily apparent
to a person skilled in the art that this advantage of using a flexible
interconnect cable 140 is independent of how it is electrically connected to
the end of cable 120 or how the end of cable 120 is mechanically supported
in the utility box. See KSR, 550 U.S. at 421 (“A person of ordinary skill is . .
. a person of ordinary creativity, not an automaton.”). See also Perfect Web
Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[W]hile

19 As noted by the Examiner (RAN 47), Patent Owner incorrectly quotes
Heimann as disclosing that cable 140 has “a thinner gauge wire” than does
cable 120. See P.O. Br. 19 (“the interconnect cable 140, [is] pliant and less
bulky (i.e., a thinner gauge wire) than the electrical cabling 120”). However,
we do not agree with the Examiner’s finding that
there is no suggestion whatsoever that the cables are a thinner
gauge wire. To the contrary, a person of ordinary skill in the art
would understand that the cable is more pliant and less bulky
because it is not a sheathed cable. There is nothing that would
suggest[] that the individual wires are anything other standard
AC power transmitting wires.
RAN 47.
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an analysis of obviousness always depends on evidence that supports the
required Graham [v. John Deere Co., 383 U.S. 1 (1966)] factual findings, it
also may include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference or expert opinion.”). As a result, it would have been obvious
to replace Heimann’s clamp receptacle 130 with one or more known devices
for supporting the end of cable 120 in the utility box and for electrically
connecting cables 140 to cable 120, such as the mechanical clamps
conventionally used with utility boxes and wire nuts. As stated by the
Examiner, this modification of Heimann would have been obvious because it
“is a combination or substitution of known prior art elements (twist-on
connectors) to obtain predictable results.” KSR, 550 U.S. at 416.
Alternatively, as explained by the Examiner, replacing Heimann’s clamp
receptacles 130 with conventional mechanical clamps and wire nuts permits
Heimann’s wiring system to be used with a wider range of wiring techniques
(e.g., armored cable) than is allowed by a clamp receptacle 130 and thus
involves no more than “the mere application of a known technique to a piece
of prior art ready for the improvement.” KSR, 550 U.S. at 417.
Patent Owner argues that modifying Heimann in the manner proposed
by the Examiner would have been nonobvious because “Heimann clearly
teaches away from terminating the AC wires using wire nuts, screw
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terminals, and etc.” P.O. Br. 25.20 Patent Owner further argues that these
modifications would “makes harness 155 (and Heimann as a whole)
unsatisfactory for its intended purpose” by “destroy[ing] Heimann’s
intended purpose of eliminating wire nuts” (id. at 24) (citing In re Gordon,
733 F.2d 900 (Fed. Cir. 1984)) and would “destroy[] Heimann’s principle of
operation” (citing In re Ratti, 270 F.2d 810 (CCPA 1959)). Id. at 25.
These arguments are unpersuasive because, as explained above, an
artisan would have recognized that Heimann’s objective of avoiding the
need for wire nuts and screw terminals is separate and separable from
Heimann’s teaching of using a flexible interconnect cable 140 to solve the
nesting problem. See In re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969)
(“It is true that such substitution omits the circuit portion which Horsch
apparently regarded as his contribution to the art along with such advantages
as it might provide. However, the modified apparatus is clearly obvious in
view of the prior art and the retained circuit D1, C3 and M of Horsch will
operate therein on the same principles as before to indicate engine speed as a
function of applied pulse frequency. In re Irmscher, . . . 262 F.2d 85 . . .
[(CCPA 1958)]; In re Ratti, . . . 270 F.2d 810 . . . [(CCPA 1959)]; and In re

20 See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1327 (Fed. Cir. 2009) (“A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.”).
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Lobl, . . . 228 F.2d 234 . . . [(CCPA 1955)], cited by appellant, clearly are
not authority for holding a rejection improper under such circumstances.”)
(footnote omitted).
We are therefore satisfied that the evidence relied on by the Examiner
demonstrates the prima facie obviousness of the subject matter recited in
claim 1 and the other independent claims. For the reasons given below, the
Examiner correctly concluded that this prima facie case has not been
rebutted by Patent Owner’s evidence of nonobviousness (i.e., secondary
considerations).

2. Patent Owner’s Commercial Success Evidence
As evidence that the claimed invention has experienced commercial
success, Patent Owner relies on Appendix X.A. (“Commercial Success
Evidence”) to Patent Owner’s Brief. The cover page of this appendix lists
the following documents:
1. Plug Tail Product Information: Commercial Product
same as Benoit Invention and Benoit Claims
2. Donald S. Bausch Declaration
3. Customer Testimonials: Commercial Success is linked
to Benoit Invention Features
4. E-mail: Industry Awards Listed
5. Thomas N. Packard Declaration
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App. X.A. at 1.
We agree with Patent Owner that the product information and Bausch
Declaration provide the required linkage between the commercial product
and the Benoit patent claims. P.O. Br. 29. The three pages of PlugTail™
product information describe a plug connector that has pre-stripped leads
and thus resembles the plug connector depicted in Figure 12 of the Benoit
patent.21 These pre-stripped plug connector leads are also discussed in all
three of the Pass & Seymour documents labeled “Case History – PlugTail
Wiring devices” (hereinafter “Case History” documents), of which the
August 2004 document further explains (at 2, center col.) that “the pre-
stripped leads of the PlugTail connector were connected [to the facility
wiring] using wire nuts.”
As recognized by Patent Owner, a showing of commercial success
additionally requires “some factual evidence that demonstrates the nexus
between the sales and the claimed invention -- for example, an affidavit from
the purchaser explaining that the product was purchased due to the claimed
features.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Patent Owner
argues that the “customer testimonials . . . link the claimed features of the
Benoit patent to the commercial success enjoyed by the commercial
product.” P.O. Br. 29. We find that the Case History documents describe the

21 Most of the small print in the copy of record is illegible.
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PlugTail™ product as providing time savings during the rough-in phase:
“The time savings with PlugTail begins at rough-in. Instead of making pig-
tails, pre-stripped leads are easily connected to the PlugTail connector.”
August 2004 Case History at 2, center col.22 We further find that this Case
History document describes the following other advantages: “There is no
preparing, tripping or looping of conductors, no taping of exposed wires, and
no over- or under-tightening of terminals. Not only does PlugTail save
contractors time, it is also safer than the conventional receptacle because
there are no exposed terminals before, during, or after installation.” Id. at 1-
2. However, these advantages over conventional installation techniques fail
to establish commercial success of the claimed system because they would
also be provided by Heimann’s wiring system. See J.T. Eaton & Co. v. Atl.
Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“asserted
commercial success of the product must be due to the merits of the claimed
invention beyond what was readily available in the prior art”).
The evidence also fails to demonstrate commercial success for two
other reasons. The first is that it is unclear to what extent the PlugTail™
product sales were attributable to factors other than their technical merits,
such as a strong marketing campaign. The Examiner stated that “the
submitted literature with regard to the P&S system seems to support a

22 We understand this description to be referring to connection of the leads
to the plug at the factory.
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conclusion that the system was successful not because of any asserted novel
features, but rather because of a successful mark[et]ing campaign.” RAN
55. This position of the Examiner is not only unaddressed in Patent Owner’s
Brief, it finds support in the email before us as document 4 of Patent
Owner’s “Commercial Success Evidence.” This email explains that P&S
received awards for its PlugTail™ advertising campaign from TED
Magazine and IMARK.
The second reason is that although the Bausch Declaration (at para. 3)
and the “PlugTail™ Update” documents discussed in the Packard
Declaration provide sales figures for the PlugTail™ products, they do not
identify their market share. As explained in Huang, 100 F.3d at 139:
“[E]vidence related solely to the number of units sold provides a very weak
showing of commercial success, if any.” See also Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1026-27, 226 USPQ 881, 888 (Fed. Cir.
1985) (finding that sales of 5 million units represent a minimal showing of
commercial success because “[w]ithout further economic evidence . . . it
would be improper to infer that the reported sales represent a substantial
share of any definable market”).
Patent Owner also argues that “[c]ommercial success is relevant
because the law presumes that an idea would have been successfully brought
to market in response to market forces had the concept been obvious to a
PHOSITA sooner” (citing Merck & Co. v. Teva Pharm. USA Inc., 395 F.3d
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1364 (Fed. Cir. 2005)) and that “Heimann had issued almost fifteen years
before Benoit was filed.” P.O. Br. This argument, which we understand to
be that the claimed invention satisfied a long-felt and unsatisfied need in the
art, is unpersuasive because it is not supported by evidence demonstrating
the recognition of such a need during this fifteen-year period of time. See
Iron Grip Barbell Co. v. USA Sports, Inc. 392 F.3d 1317, 1325 (Fed. Cir.
2004) (“Absent a showing of long-felt need or the failure of others, the mere
passage of time without the claimed invention is not evidence of
nonobviousness.”).
Finally, assuming for the sake of argument that the foregoing
evidence is sufficient to establish commercial success, this evidence is too
weak to rebut the strong evidence of obviousness. See Tokai Corp. v.
Easton Enters., Inc., 632 F.3d 1358, 1371 (Fed. Cir. 2011) (“[a] strong case
of prima facie obviousness, such as that presented here, cannot be overcome
by a far weaker showing of objective indicia of nonobviousness”).

3. Patent Owner’s Copying Evidence
To establish copying, Patent Owner relies (P.O. Br. 29) relies on
Appendix X.B. (“Copying Evidence”) to Patent Owner’s Brief. The cover
page of this appendix lists the following documents:23
1. Clarke C. Ayer Declaration
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2. Photographic Evidence
3. Hubbell® SNAPConnect™ Brochure
4. Bryant® Quick-Tech™ Brochure.
Mr. Ayer, a technician at Pass & Seymour (Ayer Decl. para. 1),
identifies the photographs as showing Requester Hubbell’s “Snapconnect
duplex receptacle device, which includes a plug connector portion and an
electrical wiring device portion.” Id. at paras. 1-2. Mr. Ayer testified that
the Snapconnect duplex receptacle device
is essentially the same as the electrical wiring system disclosed
and claimed by the Benoit Patent. For example, this device
includes a plug connector device that is essentially the same as
the plug connector shown in Figure l A and Figure 7 of the
Benoit patent (see Photo Nos. 2 and 3 – “a”), and also includes
an electrical wiring device that is essentially the same as the
electrical wiring device shown in Figures 1A and 1B of the
Benoit patent (see Photo Nos. 2 and 3 – “b”; and 6 and 7). See
also pending claim 1 (calling for an electrical wiring system
comprising a plug connector device and an electrical wiring
device, which covers the Snapconnect duplex receptacle
device). The only difference noted between the third party
system and the Benoit patent is that the receptacle blade
contacts are rotated relative to the Benoit patent. My reading of
several of the Benoit independent claims, however, is that there
is no mention of blade orientation.

23 Documents 3 and 4 are recorded in eDAN separately from Appendix X.B.
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Id. at para. 7. Furthermore, Mr. Bausch has identified Hubbell’s
“SNAPConnect™” product and Bryant’s “Quick-Tech™” product as
“knock-offs” of the PlugTail™ products. Bausch Decl. para. 6.
The above evidence is unpersuasive of nonobviousness. As explained
in Iron Grip Barbell, 392 F.3d at 1325: “Not every competing product that
arguably fa[l]ls within the scope of a patent is evidence of copying.
Otherwise every infringement suit would automatically confirm the
nonobviousness of the patent. Rather, copying requires the replication of a
specific product.” The SNAPConnect™ and Quick-Tech™ products differ
too much from the PlugTailTM product to be characterized as replicates
thereof. For example, the ground conductor used in the SNAPConnect™
and Quick-Tech™ products does not resemble the ground conductor used in
the PlugTailTM product (best viewed in the Figure 5 of the Benoit patent).
Furthermore, assuming for the sake of argument that these products
are copies of the PlugTail™ product, that fact would be insufficient to prove
nonobviousness because, as noted by the Examiner RAN 56), “copying may
be attributable to other factors such as a lack of concern for patent property
or contempt for the patentee’s ability to enforce the patent. Cable Electric
Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir.
1985).” Furthermore, “a showing of copying is only equivocal evidence of
non-obviousness in the absence of more compelling objective indicia of
other secondary considerations.” Ecolochem, Inc. v. Southern California
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Edison Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000). Patent Owner has not
provided more compelling indicia of other secondary considerations.
Finally, even assuming for the sake of argument that the foregoing
evidence is sufficient to establish copying, this evidence is too weak to rebut
the strong evidence of obviousness. Tokai, 632 F.3d 1358 at 1371.

4. Conclusions Regarding the Rejection Based on Heimann and BRK
Because the prima facie case for obviousness has not been rebutted,
we sustain the rejection of claim 1 and the rejection of the other independent
claims (viz., claims 33, 40, 46, 56, 65, and 66), as to which Patent Owner
(P.O. Br. 22) repeats the arguments addressed above. The rejection is also
sustained with respect to claims 2-14, 16, 18-27, and 60-64, which are not
separately argued.
Patent Owner separately argues dependent claims 28-32. Claim 28,
on which claims 29-32 depend, recites a latching mechanism:
28. (original) The system of claim l, further comprising a
latching mechanism configured to prevent the plug connector
device from being removed from the receptacle to thereby
ensure that electrical continuity is maintained between the
electrical wiring device and the plurality of wires.
Claims App. 5. The Examiner concluded:
[I]t would . . . have been obvious (depending on the needs of
the particular application) to modify the system to utilize plug
connectors with latching mechanisms in order to provide a
higher degree of reliability (i.e., reduced chance of accidental
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disconnect) or to comply with safety rules and standards (UL
guidelines, for example).
RAN 66. Patent Owner argues that “Heimann teaches that because the wires
140 are of lower gauge and are relatively flexible, the plug 150 that is
inserted into functional module 170 need only use frictional fit. Thus,
Heimann leads a PHOSITA [person having ordinary skill in the art] away
from a latch.” P.O. Br. 30. We agree with the Examiner that “[n]owhere
does Heimann teach or suggest that the purpose of the ‘friction fit’
arrangement is to avoid the use of well known latching mechanisms.” RAN
66. We are therefore not persuaded of error in the Examiner’s conclusion
that it would have been obvious to use a latch to reduce the chance of an
accidental disconnect. The rejection of claims 28-32 is therefore sustained.
Regarding dependent claims 35 and 37-39, Patent Owner states that
“the Examiner merely makes conclusory statement about what he believes
the references include relative to the claim. The rejection does not include
the required analysis under KSR Int’l.” P.O. Br. 30. This argument is
unpersuasive because patent Owner has not addressed the Examiner’s
reasoning set forth at RAN pages 29 and 30. The rejection of these claims is
sustained.
Likewise, we do not understand Patent Owner’s assertion (P.O. Br.
30) that the rejection of claims 41-45 and 47-55 does not include the
required analysis under KSR. Patent Owner has not addressed the
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Examiner’s reasoning set forth at RAN pages 30-33. Regarding claims 52-
55, Patent Owner also more specifically argues:
Claims 52 -55 are directed to a latching mechanism for the rear
receptacle and plug connector. Heimann teaches that because
the wires 140 are of lower gauge and are relatively flexible, the
plug 150 that is inserted into functional module 170 need only
use frictional fit. Thus, Heimann leads a PHOSITA away from
a latch.
P.O. Br. 30. This “leads . . . away” argument is unpersuasive with respect to
claims 52-54, which recite a latch mechanism, for the reasons given above in
the discussion of claim 28. Claim 55 does not recite a latch mechanism.
The rejection of claims 41-45 and 47-55 is therefore sustained.

E. The § 103(a) Rejection of Based on Heimann in View of BRK and Hyde
(Claims 15, 34, 57, and 59)
Claims 15, 34, and 59 (Claims App. 3, 7, 13) each recite using self-
locking contacts to engage the AC electrical power wires. Claim 34 requires
that the self-locking contacts be located in the plug connector; claims 15 and
59 do not. Claim 15 reads as follows:
15. (amended) The system of claim 1, wherein the [plug
device]termination arrangement includes a plurality of self-
locking contacts, each self-locking contact accommodating one
of the plurality of AC electric power transmitting wires, such
that electrical continuity is established between each AC
electric power transmitting wire and each plug contact[, and
wherein each plug contact corresponds to a contact disposed in
the receptacle].
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Claims App. 3. Heimann, when describing ferrules 148 of plug receptacle
130, explains that “[e]ach ferrule 148 interior diameter is carefully
dimensioned to afford a snug electrical contact between the ferrule 148 and
the conductor 122.” Heimann 4:17-20. The Examiner relies on Figure 48 of
Hyde, reproduced below, for the claimed self-locking contacts.

Figure 48 shows a cross-section of a portion of male connector module 300
before and after a wire 5 is inserted into wiring access holes 108 to engage a
wire trap. Id. at 14:50-53.
The Examiner concluded that it would have been obvious to further
modify the above-discussed combination of Heimann and BRK by
replacing ferrules 156 of Heimann’s plug 150 with self-locking contacts
and eliminating interconnect cable 140 so that the self-locking contacts in
the plug can receive wires 122 of cable 120:
Those skilled in the art . . . appreciate that plug contact
termination arrangements of the self-locking (i.e., stab-in or
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self-gripping) type are well known in the art and would have
been an otherwise obvious, if not inherent design choice. Hyde,
for example, teaches (Fig. 48) the well known use of self-
locking (self-gripping or wire trap) plug contacts 160 within
plug connectors 300 including a plug device housing for
terminating AC electric power transmitting wires (col. 14, lines
45-61). Additionally, the inclusion of self-locking contacts in
wiring devices is well known and conventional in the art.
Those skilled in the art appreciate that such termination
arrangements are quick and easy. As such, it would have been
an obvious design choice to use self locking contacts in the
wiring system disclosed by Heimann in order to allow the
termination to be made in a quick and easy manner. In such a
system, it would have been further obvious to modify the
system suggested by Heimann and BRK to eliminate the power
transmitting wire extensions or pigtails 140, and connect the
power transmitting wires 122 directly to self locking contacts in
the plug connector as suggested by Hyde in order to allow for
the electrical connection to be made in a quicker and easier
manner.
RAN 34-35. The Examiner further explained that “th[is] modification is an
application of a known technique (self-locking contacts) to a known device
(the interconnector plug 150) ready for improvement to yield predictable
results (faster installation with fewer parts) (See MPEP 2143 D).” Id. at 69.
Patent Owner argues: “Heimann teaches away from this modification.
Heimann 3:34-35. There is nothing quicker or easier than Heimann’s
‘friction fit’ ferrules[.] Moreover, Heimann teaches that the ferrules are all
that are required for the job.” P.O. Br. 31. The argument is unpersuasive
because Heimann in the cited lines does not use the term “friction fit” to
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describe plug ferrules 156. Instead, these lines explain that “the plug 150
remains in the jack 170 by virtue of the friction fit therebetween.”
The rejection of claim 15 for obviousness based on Heimann, BRK,
and Hyde is therefore sustained, as is the rejection on this ground of claims
34 and 59, which likewise recite self-locking contacts.
We also sustain the rejection on this ground of claim 57, which is
reproduced below and recites a feature not addressed in Patent Owner’s
discussion of this ground of rejection.
57. (new) The system of claim 56, wherein the plug
connector further comprises a first housing portion and a
second housing portion configured to mate with the first
housing portion.
Claims App. 13 (underlining omitted). This feature is also recited in claims
17 and 36, addressed below.
F. The § 103(a) Rejection Based on Heimann in View of BRK, Hyde, and
Blackwood (Claims 17, 36, and 58)
Claims 17and 36 and claim 58 (by its dependence on claim 57)
recite a two-part plug connector including blade elements for making an
electrical connection by displacing insulation on the AC electric power
transmitting wires. A plug connector of this type is depicted in Figure 11
(not reproduced herein) of the Benoit patent. Benoit patent specification
6:47-61.
Claim 17 reads as follows:
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17. (amended) The system of claim 1, wherein the plug device further
comprises:
a first housing portion;
a second housing portion configured to mate with the first housing
portion to thereby form the plug device housing; and
wherein the[a plurality of contacts including] termination arrangement
includes blade elements coupled to each of the plurality of plug
contacts, the plurality of plug contacts being disposed in either
the first plug connector housing or the second plug connector
housing or both, the blade elements being configured to
displace insulation disposed on the plurality of AC electric power
transmitting wires when the second plug connector housing is
coupled to the first plug connector housing[, whereby]to
thereby establish electrical continuity[is established] between
each AC electric power transmitting wire and a corresponding
one of the plurality of plug contacts.
Claims App. 3-4.
Claims 17, 36 and 58 stand rejected under 35 U.S.C. 103(a) “as being
unpatentable over Heimann, BRK and Hyde as applied above, and further in
view of Blackwood.” RAN 36 (emphasis omitted). As noted in the above
discussion of the rejection (of claims 15, 34, 57, and 59) based on Heimann,
BRK and Hyde, one of the effects of combining these reference teachings
was to eliminate Heimann’s interconnect wires 140 so that wires 122 of
cable 120 can be inserted into self-locking contacts in plug 150.
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In rejecting claims 17, 36, and 58, the Examiner (RAN 36) further
relies on Hyde for a teaching of forming Heimann’s plug 150 with a two-
piece housing.
Figure 27 of Hyde is reproduced below.

Figure 27 shows an exploded view of an electrical box and connection
components in accordance with Hyde’s invention. Hyde 4:29-30.
Receptacle base 100 is designed to receive male and female plug units 310
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and 320. Id. at 9:21-33.
Figure 32 of Hyde is reproduced below

Figure 32 shows an unassembled male connector module 300 having a male
connector body 120, a corresponding connector base 150, three generally
rectangular female prongs 122, and a generally round female prong 123. Id.
at 11:16-22.
Blackwood is relied on for a teaching of using blade elements to form
electrical connections by displacing insulation on wires. RAN 37.
Blackwood discloses a connector assembly having user interchangeable
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adapters for making electrical connection with external connectors having
differing configurations. Blackwood 1:5-9.
Figure 1 of Blackwood is reproduced below.

Figure 1 shows a connector assembly that includes, inter alia, a pair of
cables 200 and 200' having multiple insulated conductors 210, the
conductors 210 of the cables 200 and 200' being respectively electrically
terminated by connectors 300 and 300.' Id. at 2:37-43.
Figure 2 of Blackwood is reproduced below.
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Figure 2 is an exploded perspective view showing that connector 300
includes an index strip 320 and a connecting block 340. Id. at 2:13-14, 43-
44. Each slot 325 of index strip 320 can receive an individual insulated
conductor 210. Id. at 2:51-52. The connecting block 340 includes multiple
generally symmetrical contacts 345 having a bifurcated beam at each end
(only the rear end being shown), each bifurcated beam having a conductor
receiving slit 346. Id. at 2:57-60. When connector block 340 is joined to
index strip 320, the insulated conductor held in each slot is forced into the
slit 346 of the corresponding bifurcated beam, thereby displacing the
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insulation from the conductor to make an electrical connection to the
conductor. Id. at 3:2-10.
The Examiner, citing Hyde, found that “although Heimann discloses
that the plug device 150 has a one-piece design, those skilled in the art
appreciate that in addition to one-piece designs a variety of other designs,
including two-piece designs, are well known in the art.” RAN 36. Citing
Blackwood, the Examiner further concluded that “[i]t would have been
obvious to modify the plug contacts to include blade elements in order to
allow for connections to be made in a quicker and easier manner.” Id. at 37.
The Examiner offered the following rationale for this combination:
[T]he combination of Blackwood with the other cited prior art is
proper because the rationale for the modification is consistent
with t the guidelines for establishing a prima facie case of
obviousness in view of the Supreme Court’s decision in KSR
International Co. v. Teleflex Inc., since the modification is
merely a combination or substitution of known prior art
elements (contacts utilizing a blade displacement technique) to
obtain predictable results (establishment of electrical continuity
without requiring pre-stripping of the wires) (See MPEP 2143
A and B).
The modification is also the application of a known
technique (insulation displacement) to improve similar devices
(plug connectors) in the same way (obviating the need for pre-
stripping) (See MPEP 2143 C).
Id. at 70.
Patent Owner responded by repeating the above-discussed argument
that “Heimann teaches away from this modification” in column 3, lines 34-
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35 because “[t]here is nothing quicker or easier than Heimann’s ‘friction fit’
ferrules.” P.O. Br. 31-32. This argument is unpersuasive for two reasons.
First, as pointed above, these cited lines instead describe the fit of plug 150
in receptacle 170. Second, this argument fails to address the Examiner’s
stated motivation of obviating the need for pre-stripping.
Patent Owner also argues: “Heimann teaches that unitary harness 155
is factory made, and not assembled in the field as part of a termination
arrangement. Heimann 4: 3-31.” P.O. Br. 32. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
For the above reasons, the rejection of claims 17, 36, and 58 for
obviousness based on Heimann in view of BRK, Hyde, and Blackwood is
sustained.

III. DECISION
A. Patent Owner’s Appeal
The rejection of claim 65 under 35 U.S.C. § 112, first paragraph
(written description requirement) is not sustained.
The rejection of claims 1-66 under 35 U.S.C. § 112, second paragraph
for indefiniteness is not sustained.
The rejection of claims 1-14, 16, 18-33, 35, 37-56, and 60-66 under
§ 103(a) for obviousness over Heimann in view of BRK is sustained.
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The rejection of claims 15, 34, 57, and 59 under 35 U.S.C. § 103(a)
for obviousness over Heimann in view of BRK and further in view of Hyde
is sustained.
The rejection of claims 17, 36, and 58 under 35 U.S.C. § 103(a) for
obviousness over Heimann in view of BRK and Hyde and further in view
of Blackwood is sustained.
The Examiner’s decision that claims 1-66 are unpatentable is therefore
affirmed.

B. Requester’s Cross-Appeal
The Examiner’s determination not to adopt the Requester’s proposed
rejection of claims 1, 2, 4, 6-14, 18-23, 33, 37, 55, 56, and 63-65 under 35
U.S.C. § 102(b) for anticipation by Heimann is sustained.
The Examiner’s decision not to reject any of these claims for
anticipation by Heimann is therefore affirmed.

C. Requests for Rehearing
Requests for rehearing inter partes reexamination proceedings are
governed by 37 C.F.R. § 41.79. See 37 C.F.R. § 41.79 regarding extensions
of time in connection with requests for rehearing.
AFFIRMED as to Patent Owner’s Appeal and
AFFIRMED as to Requester’s Appeal

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For Patent Owner:

BOND, SCHOENECK & KING, PLLC
10 Brown Road, Suite 102
Ithaca, NY 14850-1248

For Third Party Requester:

Roylance, Abrams, Berdo & Goodman, L.L.P.
1300 19th Street, N.W., Suite 600
Washington, D.C. 20036