Ex Parte 7060900 et al

Patent Trial and Appeal Board

May 21, 2015

95001982 (P.T.A.B. May. 21, 2015)

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.
95/001,982 04/27/2012 7060900 38629-13REEX 5577
30010 7590 05/21/2015
The Jackson Patent Group, LLC
1500 Forest Avenue, Suite 212
RICHMOND, VA 23229
EXAMINER
NASSER, ROBERT L
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/21/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

BRIDGEPORT FITTINGS, INC.
Requester, Appellant

v.

ARLINGTON INDUSTRIES, INC.
1

Patent Owner, Respondent
____________________

Appeal 2014-008599
Inter partes Reexamination Control 95/001,982
Patent US 7,060,900 B1
2

Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

Per Curium.

DECISION ON APPEAL

1
Arlington Industries, Inc., is the real party in interest (Respondent Brief
(hereinafter "Resp. Br.") 1).
2
Patent US 7,060,900 B1 (hereinafter "the ’900 patent") issued June 13,
2006 to Gretz.

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STATEMENT OF THE CASE
The Requester appeals under 35 U.S.C. §§ 134 and 315 from the
Examiner's refusal to adopt various proposed rejections of claims 3, 4 and 6,
which have been determined to be patentable by the Examiner (Appeal Brief
(hereinafter "App. Br.") 4; Right of Appeal Notice
3
(hereinafter "RAN")
PTOL-2066). We have jurisdiction under 35 U.S.C. §§ 134 and 315.
The Requester relies on its Appeal Brief and Rebuttal Brief
(hereinafter "Reb. Br."). The Patent Owner relies on a Respondent Brief
(hereinafter "Resp. Br.") in support of the Examiner's decision.
We REVERSE and denominate the proposed rejections as New
Grounds of Rejection.
Figure 7 of the ’900 patent is reproduced below:

3
The Examiner's Answer mailed May 2, 2014 incorporates by reference the
RAN, so we cite to the RAN herein.

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Figure 7 of the ’900 patent illustrates a sectional view of snap
engagement connector assembly 20 secured to electrical panel 62 and
connector assembly 20. Connector assembly 20 includes connector body 22
and snap fit retaining ring 32. Snap fit retaining ring 32 has locking tangs 42
and grounding tangs 44 (col. 2, ll. 58–60; col. 5, ll. 15–30; Fig. 7; see also
col. 3, ll. 48–50 (describing features common to Figures 1 and 7)). The
grounding tangs 44 have leg portions 59 that provide surface contact and
grounding to panel 62 (col. 5, ll. 15–30; Fig. 7). Leg portions 59 are
disclosed as being bent outwardly from grounding tangs 44 at an angle
between 100° and 115° (col. 4, ll. 44–48; see Fig. 4).
Independent claim 6, which was added during the reexamination,
reads as follows (Claims App., underlining removed, italics added):
6. (New) A snap engagement connector assembly for securing
an electrical cable or conduit to an electrical box comprising:
a connector body having a leading end portion, a trailing
end portion, and a bore extending therethrough;
said leading end portion terminating in an outlet opening
for insertion through a hole in said electrical box;
a snap fit retaining ring having a face portion and a
circumscribing frusto-conical configuration;
said snap fit retaining ring having a leading end and a
trailing end;
said leading end of said snap fit retaining ring having a
diameter;
said trailing end of said snap fit retaining ring having a
diameter wherein said diameter of said trailing end of said snap
fit retaining ring is greater than said diameter of said leading
end of said snap fit retaining ring;
a locking tang on said snap fit retaining ring;
a grounding tang extending at a first angle from said face
portion of said snap fit retaining ring;
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said grounding tang including an integral leg portion
bent outward at an angle from said grounding tang, said angle
of said leg portion of said grounding tang with respect to said
grounding tang is between 100 and 115 degrees;
a retaining tab on said snap fit retaining ring;
said locking tang, said grounding tang, and said retaining
tab bent outward radially from said face portion of said snap fit
retaining ring; and
an arrangement for securing said snap fit retaining ring
onto said leading end portion of said connector body.

PROPOSED REJECTIONS NOT ADOPTED
The Examiner refuses to adopt the following proposed obviousness
rejections under 35 U.S.C. §103(a):
4

A. Claim 6 over Auray
5
in view of Neuroth.
6

B. Claims 3 and 4 over Auray and Neuroth in view of Gretz.
7

C. Claim 6 over Auray in view of Moran.
8

D. Claims 3 and 4 over Auray and Moran in view of Gretz.
E. Claim 6 over Auray in view of Paskert.
9

F. Claims 3 and 4 over Auray and Paskert in view of Gretz.
G. Claim 6 over Auray in view of Stikeleather.
10

4
We utilize the same sequential lettering used by the Requester to identify
the proposed rejections not adopted by the Examiner (App. Br. 5–6).
5
Auray et al. ("Auray"), US 6,916,988 B1, issued Jul. 12, 2005.
6
Neuroth, US 4,621,166, issued Nov. 4, 1986.
7
Gretz, US 6,596,939, issued July 22, 2003. The inventor of this prior art
reference is also the named inventor of the ’900 patent, which is the subject
of the present appeal. This patent should not be confused with Gretz, US
6,957,968 B1, issued Oct. 25, 2005, which is also of record.
8
Moran et al. ("Moran"), US 4,012,578, issued Mar. 15, 1977.
9
Paskert, US 3,858,151, issued Dec. 31, 1974.
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H. Claims 3 and 4 over Auray and Stikeleather in view of Gretz.
I. Claim 6 over Auray in view of Pyron.
11

J. Claims 3 and 4 over Auray and Pyron in view of Gretz.

TEACHINGS OF AURAY
Each of the rejections on appeal relies on Auray as a primary
reference. Auray describes an electrical connector assembly 10 for securing
an electrical cable (that is, a wire conductor 25) to an electrical box 15 (see
Auray, col. 3, ll. 21–22; col. 4, ll. 45–47; and Fig. 9). The electrical
connector assembly 10 is a snap engagement or snap fit connector assembly
(see Auray, col. 1, ll. 19–25). The electrical connector assembly 10 includes
a metallic connector body 11. The connector body 11 has a leading end
portion (that is, an outlet end portion 11B) and a trailing end portion (that is,
an inlet end portion 11A). A bore 12 extends through the connector body 11
(see Auray, col. 3, ll. 22–27 and Fig. 9). Auray describes the outer surface S
of the outlet end portion 11B of the connector body 11 as sloping, tapering
or converging toward an outlet opening 16 located at the terminus of the
outlet end portion 11B (see Auray, col. 3, ll. 33–37). Figures 8 and 9 of
Auray depict the tapered outlet end portion 11B of the connector body 11
inserted through a knockout hole 14 in the electrical box 15 (see Auray, col.
4, ll. 24–30).
Auray's electrical connector assembly 10 also includes a snap fit
retaining ring 18 integrally formed from a cruciform blank 19 of spring steel

10
Stikeleather et al. ("Stikeleather"), US 4,880,387, issued Nov. 14, 1989.
11
Pyron, US 2005/0269122 A1, published Dec. 8, 2005.
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material. The blank 19 as depicted in Figure 2 of Auray includes two arms
AA extending in opposite directions from a central face portion 20. Each of
the two arms AA includes a retaining slot 21 (Auray, col. 3, ll. 42–52, col. 4,
ll. 1–8 and Fig. 2). Each of the arms AA constitutes a retaining tab. The
combination of the projecting lugs 17 and the retaining tabs (that is, the arms
AA) constitutes an arrangement for securing the snap fit retaining ring 18
onto the outlet end portion 11B of the connector body 11. During the
assembly of the electrical connector assembly 10, the retaining slots 21
engage the lugs 17 so as to retain the snap fit retaining ring 18 on the outlet
end portion 11B of the connector body 11 (see Auray, col. 3, ll. 37–41, col.
4, ll. 12–19 and Figs. 1 and 8).
The blank 19 from which the snap fit retaining ring 18 is formed also
includes two arms BB extending outwardly from the face portion 20 at right
angles to the arms AA (Auray, col. 3, ll. 42–50 and Fig. 2). Each of the two
arms BB of the snap fit retaining ring 18 defines a locking tang 22
surrounded by a pair of grounding tangs 23 (see Auray, col. 3, ll. 52–55 and
Fig. 2).
In forming the retaining ring 18 from blank 19, the
respective arms AA and BB are subjected to a
series of progressive bending dies which will
gradually bend the respective arms relative about a
foldline f, which defines the face or front portion
20, whereby the arms AA and BB form a cup
having circumscribing frusto-conical or outwardly
flaring sides to define a ring which complements
the conical surface S of the outlet end portion 11B
[of the connector body 11], as seen in FIG. 1.
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(Auray, col. 4, ll. 1–8; see also id, col. 2, ll. 44–49). In other words, the
fully-formed snap fit retaining ring 18 as depicted in Figures 3–6 of Auray
defines a circumscribing frusto-conical configuration between a leading end
(to the left in the sectional view of Figure 6) and a trailing end (to the right
in Figure 6).
The leading and trailing ends of the snap fit retaining ring 18 as
depicted in Figures 3–6 of Auray define circumscribing circles having
diameters. Auray's description of the snap fit retaining ring 18 as having
"circumscribing frusto-conical or outwardly flaring sides" implies that the
diameter of the trailing end of the snap fit retaining ring is greater than the
diameter of the leading end of the snap fit retaining ring. Even in the fully-
formed snap fit retaining ring 18, as depicted in Figures 3–6 of Auray, the
locking tangs 22, grounding tangs 23 and the retaining tabs are bent radially
outwardly from the face portion 20 of the retaining ring.
When the electrical connector assembly 10 is inserted through a
knockout hole 14 in a wall of an electrical box 15 as depicted in Figures 7–9
of Auray, the locking tangs 22 help hold the electrical connector assembly in
place in the knockout hole (Auray, col. 4, ll. 32–35). The grounding tangs
23 and the retention tabs AA engage the wall of the electrical box 15
surrounding the knockout hole 14 to provide an electrical grounding
pathway from a sheath of a wire connector 25 held by the electrical
connector assembly to the electrical box. In particular, Auray teaches that
"the tangs 22, 23, which are formed integral with the ring 18, are shaped and
formed so that the locking tangs 22 secure the assembly 10 to an electric box
15 while the grounding tangs 23 ensure a positive electrical ground of the
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assembly 10 with the associated electric box 15." (Auray, col. 4, l. 67 – col.
5, l. 5). Auray also teaches that the "inherent resiliency of the grounding
tangs 23, 23 and the free end 24 of the arms AA are normally biased in
engagement with the internal periphery of the knockout hole 14 to ensure a
positive electrical ground with the electric box 15." (Auray, col. 4, ll. 35–
39).
Auray's connector body 11 includes a radially outwardly projecting
flange 13. The radially outwardly projecting flange 13 acts as a stop to limit
how far the connector body 11 can be inserted through the knockout hole 14
(see Auray, col. 3, ll. 27–32; col. 4, ll. 24–30; and Fig. 9). Figure 9 of Auray
indicates that the flange 13 makes flush contact with the outside surface of
the wall of the electrical box 15 when the electrical connector assembly 10 is
inserted into the knockout hole 14.
Auray's description of the snap fit retaining ring 18 as being "frusto-
conically shaped" (see Auray, col. 2, ll. 44–49) implies that the angle
between the face portion 20 and the grounding tangs 23 must fall within a
finite range. The angle between the face portion 20 and the grounding tangs
23 must be greater than 90° and less than 180°. When the electrical
connector assembly 10 is inserted into a knockout hole in a wall of an
electrical box 15, the plane of the face portion 20 will remain approximately
parallel with the outer surface of the wall (see Auray, Figs. 8 and 9).

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ANALYSIS
Proposed Rejection A
The Requester argues that Auray discloses each of the limitations of
claim 6 other than the limitation requiring the grounding tang to include "an
integral leg portion bent outward at an angle from said grounding tang . . .
between 100 and 115 degrees." (App. Br. 7). The record indicates that the
Examiner agrees with the Requester's assessment (see RAN 16; see also
RAN 12–13; Action Closing Prosecution (hereinafter "ACP") 10).
The Requester relies on Neuroth for disclosing gripper arm 26
including a hooked end 32 bent outwardly at an angle, and argues that
"modification of the grounding tang of Auray to include an outwardly bent
'leg portion,' as taught by Neuroth, is a simple replacement," with
predictable results (App. Br. 7, citing Neuroth, col. 2, ll. 62–63; Fig. 16). As
to the recited angle between the leg portion and the grounding tang, the
Requester argues that:
The leg portion of Neuroth is substantially parallel to the
junction box. Neuroth, Fig. 6. If a leg portion substantially
parallel to the junction box were added to the grounding tang 23
of Auray, the angle of the leg portion with respect to the
grounding tang would be between 100 and 115 degrees.
(App. Br. 7).

The Requester also asserts that Auray discloses a grounding tang at an
angle of approximately 105° based on angle measurements of Figure 9 (App.
Br. 7–9; annotated Figure 9 and photograph). The Requester argues that "if
the grounding tang of Auray were modified to include a leg portion
substantially parallel to the junction box, as taught by Neuroth, the angle of
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the leg portion of the grounding tang with respect to the grounding tang
would be approximately 105 degrees." (App. Br. 9).
The Examiner declines to adopt the proposed rejection, stating that
there is "insufficient evidence to establish that the angle of the legs with
respect to the grounding tang in the combination is between 100 and 115
degrees" (RAN 5). According to the Examiner, "the drawings are not
evidence of proportions;" and because "the dimensions are not known, one
cannot properly measure the angle." (RAN 12–13). It is also the Examiner's
position that "proving that the angle is approximately in the range is not the
same thing as establishing that the angle is actually in the claimed range.
The burden is on [the Requester] to establish that the angle is actually in the
claimed range." (RAN 12).
The Requester argues that even if the angle from Figure 9 of Auray
cannot be relied upon, the text of Auray is sufficient to establish obviousness
of claim 6 (App. Br. 12). In this regard, the Requester argues that "the
grounding tang 23 must actually be angled outward from the longitudinal
axis of the connector assembly 10, because Auray teaches that the snap fit
retaining ring is a 'frustro-conically shaped cup-like member.'" (Id. at 14,
citing Auray, col. 2, ll. 44–49). The Requester further argues that "the
disclosure of an angle which was 'close enough' to the claimed range would
have been sufficient for a prima facie case of obviousness." (Id. at 15, citing
MPEP 2144.05(I) and Titanium Metals Corp. of America v. Banner, 778
F.2d 775 (Fed. Cir. 1985)).
While we do not agree with the Requester that the angle of 105° can
be determined from Figure 9 of Auray, we do agree that in view of what
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Figure 9 reasonably discloses, together with Auray's disclosure of a frusto-
conically shaped retaining ring 18, the invention of claim 6 would have been
obvious to one of ordinary skill in view of Auray and Neuroth.
Drawings can be relied upon for what they reasonably disclose and
suggest to one of ordinary skill in the art, and Figure 9 of Auray reasonably
discloses an angle slightly greater than 90°. In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972); In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re
Heinrich, 268 F.2d 753, 755–56 (CCPA 1959). Neuroth establishes that it
was known to provide a grounding tang (gripper arm 26) including an
integral leg portion (hooked end 32) that is bent outwardly at an angle from
the grounding tang to contact the outlet box (Neuroth, Fig. 6; col. 2, ll. 59–
65; see also Figs. 1, 11). The retaining ring (insert 24) of Neuroth is
cylindrical and the integral leg portion extends generally radially outwardly
from the grounding tang to contact the outlet box (Neuroth, Fig. 6).
However, the retaining ring of Auray is frusto-conical in shape (Auray, Figs.
1, 4, 5, 8, 9; col. 2, ll. 44–49). When a leg portion is provided in Auray's
grounding tang in the manner taught by Neuroth, it would have been obvious
to provide it at an angle slightly greater than 90° to allow for contact with
the outlet box.
The proposed rejection is that of obviousness, and the proper inquiry
is whether claim 6 would have been obvious to a person of ordinary skill in
the art in view of Auray and Neuroth. The fact that the recited angle range is
not explicitly disclosed is not dispositive. KSR Int’l v. Teleflex, Inc., 550
U.S. 398, 418–19 (2007) ("the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
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can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ."); In re Keller, 642 F.2d 413, 425
(CCPA 1981) ("The test for obviousness is not . . . that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art."). It would have been obvious
to angle a provided leg portion (such as that taught in Neuroth) relative to
the grounding tang based on the angle of the grounding tang so as to
increase contact with the surface of the outlet box.
Thus, we agree with the Requester that in view of the teachings of
Auray, both in its drawings and the text of its specification as to the frusto-
conical shape which results in angling of the grounding tang at an angle
slightly greater than 90°, the recited angling of claim 6 would have been
obvious to one of ordinary skill (App. Br. 11, 15; Reb. Br. 3). While it is
unclear whether the prior art discloses an angle within the range of 100° and
115°, the disclosure of the grounding tang at an angle slightly greater than
90° is very clear. We discern no unobvious significance of the recited range
other than to account for the frusto-conical shape of the recited retaining
ring. As discussed, such frusto-conical shape and angling of the grounding
tang is disclosed in Auray, and accommodation therefor in provision of a leg
portion would have been obvious to one of ordinary skill.
Based on Auray's disclosure that "the free ends of the grounding tangs
23 are biased in engagement with the internal periphery of the knockout hole
14," the Patent Owner argues that Auray teaches away from adding the leg
portion as proposed (Resp. Br. 6, quoting Auray, col. 3, ll. 62-64).
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However, we discern nothing in Auray that would have discouraged a
person of ordinary skill in the art from the path proposed. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) ("The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed . . .."). We agree with the Requester that "[b]ecause modifying
Auray by adding a bent leg portion . . . would actually increase the amount
of mechanical contact between the grounding tangs and the junction box, a
person of ordinary skill in the art would [have been] motivated to modify the
grounding tang 23 with an additional leg portion." (Reb. Br. 4). Indeed,
during the reexamination, the Examiner also found provision of legs would
have been obvious (see ACP 5).
12

The Patent Owner also argues that the angle shown in Auray is
measured with "the grounding tang 23 in a biased position, wherein it is
compressed inwardly by the periphery of the knockout hole," and there is no
way to determine the angle when the grounding tang is unbiased (Resp. Br.
6–7). However, claim 6 does not require the recited angle range to be
measured when the grounding tang is unbiased (see also Reb. Br. 4), and we
also fail to see how this establishes nonobviousness of the recited angle
range for the reasons already discussed.

12
In rejecting claim 1, which has been canceled, the Examiner stated "[i]t
would have been obvious to modify Auray to use the hooked ends on the
grounding tangs, to improve the mechanical contact of the grounding tangs
with the electrical box. In addition, it would have been a simple substitution
of one known grounding element for another (see the discussion on pages 25
and 26 of the request)." (ACP 5).
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The Patent Owner further argues that, whereas the device of Auray
includes radially outwardly extending flange 13, which functions as a stop to
limit the insertion of the connector body 11, modifying the device of Auray
in the manner proposed would negate this teaching and is not a simple
replacement (Resp. Br. 7, citing Auray, col. 3, ll. 28–32). However, as noted
by the Requester and agreed to by the Examiner (see ACP 20–21), Neuroth
shows that both a flange and leg portions of grounding tangs can be in
contact with an outlet box so that the leg portions "are not required to extend
between an outlet box and a flange" due to openings in the flange (Reb. Br.
5). It is also not apparent why it would not have been obvious to
alternatively eliminate the flange, the function thereof being performed by
the leg portion, or to reposition the flange so that the flange abuts against the
leg portions, which in turn, abuts against the outlet box.
The Patent Owner further argues that Neuroth's gripping arms 26
secure the parts of the Neuroth connector and thus, are equivalent to Auray's
arms AA (Resp. Br. 7). However, as found by the Examiner,
13
the gripping
arms also function as grounding tangs (ACP 5; see also Reb. Br. 5–6).
Therefore, in view of the above, we agree with the Requester that
claim 6 would have been obvious in view of the combination of Auray and
Neuroth. We reverse the Examiner's determination to the contrary and
denominate the rejection as a new ground.

13
In rejecting claim 1, which has been canceled, the Examiner stated
"[w]hile Neuroth does not explicitly state that gripper arms are grounding
tangs, the examiner notes that the gripper arms are metallic and contact the
electrical box, which is grounded. As such, it is clear that gripper arms 26
perform a grounding function." (ACP 5).
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Proposed Rejection B
Claim 3 depends on claim 6 and further recites "wherein said retainer
tab includes a U-shaped cut therein; and a retainer tang formed by said U-
shaped cut and bent inward radially of said snap fit retaining ring having
said frusto-conical configuration." (App. Br., Claims App.). Claim 4
depends from claim 3 and recites "an opening on said leading end portion of
said connector body for receiving said inward bent retainer tang of said snap
fit retaining ring." (Id.).
The Requester argues that these claims are also unpatentable because
"Gretz ‘939 discloses a U-shaped cut defining a retainer tang 18 that is bent
inwardly," and "[t]he substitution of the retaining structure of Gretz ‘939
(i.e. a retainer tang 18 on the retaining ring, and an aperture 20 on the
connector body) for the ring retaining structure of Auray (i.e. a slot 21 in the
retaining ring, and a lug 17 on the connector body) is a simple replacement
with no complexity," which would have been obvious to a person of
ordinary skill (App. Br. 16–17).
The Patent Owner argues that in Gretz, openings 30 and locking tab
18 are "lanced from the body of the blank" so there is no disclosure of a U-
shaped cut being formed within a retainer tab, or a retaining tang 18 (i.e.,
locking tab) within a retainer tab (Resp. Br. 8, quoting Gretz, col. 3, ll. 12–
13). Thus, the Patent Owner asserts that even if the ring of Auray were
modified according to Gretz, the retaining tang would be formed directly in
the blank or ring of Auray (Resp. Br. 8).
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This argument is unpersuasive because it argues the references
separately. In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986). As noted by
the Requester (Reb. Br. 6–7), Auray already discloses a retainer tab (i.e.,
each of arms AA) including a feature (i.e., retaining slot 21 that engages lug
17) for securing the retaining ring and the connector body together (Auray,
col. 4, ll. 12–19; Fig. 1). The proposed rejection modifies this retention
feature of Auray to instead provide in each of its arms AA, retainer tang 18
formed via a U-shaped cut as disclosed in Gretz, which engages a
corresponding aperture. In this regard, the Examiner also previously
rejected the Patent Owner's argument along the same lines (ACP 23).
14

Therefore, in view of the above, we agree with the Requester that
claims 3 and 4 would have been obvious in view of the combination of
Auray, Neuroth and Gretz, and reverse the Examiner's determination to the
contrary, denominating the rejection as a new ground.

Proposed Rejections C to J
Proposed Rejections C to J are all based on Auray in combination
with an alternative secondary reference: Moran, Paskert, Stikeleather or

14
In addressing the Patent Owner's arguments against the combination of
Auray and Gretz, the Examiner agrees "that it would have been obvious to
modify Auray by replacing the cutout 21 and nub 17 with the structure of
Gretz, that includes a U-shaped cutout to form tang 18, which is bent
inwardly, as it is merely a simple substitution of one known engaging
mechanism for another. The arrangement of Gretz and the arrangement of
Auray are disclosed to perform the same function, to attach a snap ring to a
body in a cable. As such, the two structures are functional equivalents and
the combination satisfies the simple substitution rationale of KSR, rationale
B." (ACP 23).
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Pyron. All of the proposed rejections of dependent claims 3 and 4 also rely
on Gretz. The alternative secondary references disclose, and are relied upon
for disclosing, a grounding tang having an integral leg portion, just like
Neuroth in Proposed Rejections A and B discussed supra. In this regard, the
issues raised and arguments proffered with Proposed Rejections C to J are
substantively identical to those in Proposed Rejections A and B (see
generally, RAN 6–10, 13–16; App. Br. 17–29; Resp. Br. 8–14).
Correspondingly, we also reverse the Examiner's refusal to adopt the
Proposed Rejections C to J for substantially the same reasons already
discussed, and denominate them as new grounds of rejection.

Alternative Analysis: Proposed Rejections I and J
In the above analysis, we referred to the drawings of Auray as
reasonably disclosing an angle of the grounding tang slightly greater than
90°. However, as discussed infra, the drawings need not be relied upon to
reach the conclusion of obviousness. In addition, as we also noted supra, it
would have been obvious to alternatively eliminate the flange of Auray in
combining the teachings of Auray and the secondary references so that the
function of the flange of Auray would be performed by the leg portion. We
further enter a new ground of rejection as to Proposed Rejections I and J
based on such alternative analysis.
As discussed earlier, Auray's description of the snap fit retaining ring
18 as being "frusto-conically shaped" (see Auray, col. 2, ll. 44–49) implies
that the grounding tangs 23 necessarily extend at angles in the range greater
than 90° and less than 180° relative to an outer surface of a wall of an
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electrical box 15 when the connector assembly is inserted into a knockout
hole 14 in the wall (see App. Br. 14–15). This range encompasses
grounding tangs extending at angles in the range of 100° to 115° relative to
the outer surface of the wall. The overlapping of the ranges implies that it
would have been prima facie obvious to design the grounding tangs 23 of
Auray's electrical connector assembly 10 so as to extend at angles in the
range of 100° to 115° relative to an outer surface of a wall of an electrical
box 15 when the connector assembly is inserted into a knockout hole 14 in
the wall. See In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003).
Proposed Rejections I and J rely on Pyron, which describes an
electrical connector 10 used to connect a cable 12 to a knockout hole 14 in a
wall 16 of an electrical enclosure 18 (see Pyron, para. 19 and Fig. 20) as
well as to provide electrical continuity (that is, a grounding path) between a
sheath of the cable 12 and the electrical enclosure 18 (see Pyron, para. 20).
The electrical connector 10 includes a one-piece connector body 22 made of
a conductive metal. The electrical connector 10 has a leading or forward
end 24 and a trailing or rearward end 26 (see Pyron, para. 20 and Fig. 1; see
also id., para. 22 and Fig. 2 (teaching that the connector body is fabricated
from a metallic, one-piece blank)). Pyron's one-piece connector body 22
defines a face portion (that is, the circular forward end 24) and a plurality of
inwardly-deflectable side walls 29 that cooperate to enable the connector
body 22 to snap fit into a knockout hole 14 (see Pyron, para. 20; see also id.,
paras. 7 and 28; Figs. 1 and 9). The plurality of inwardly-deflectable side
walls 29 together define a generally cylindrical wall 28. The generally
cylindrical wall 28 encompasses a connector interior 30 communicating with
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a central opening 32 in the forward end 24 for the passage of electric wires
(see Pyron, para. 20; Figs. 1, 15 and 19).
Pyron’s electrical connector 10 also includes front tabs 34a and back
tabs 34b punched from the side walls 29 of the connector body 22 (see
Pyron, paras. 20 and 23). As depicted in Figures 1, 7 and 19 of Pyron, each
front tab 34a extends rearwardly and outwardly from the cylindrical wall 28
defined by the side walls 29. Each back tab 34b likewise includes an inner
portion extending rearwardly and outwardly from the cylindrical wall 28.
Each back tab 34b also includes an integral outer or leg portion.
Pyron also teaches forming inwardly directed fingers 36 for
maintaining a cable 12 in mechanical and electrical engagement with the
electrical connector 10 (see Pyron, paras. 25, 29, 32 and 33). As depicted in
Figures 14–19, these fingers 36 are defined by U-shaped cuts in two of the
side walls 29 making up the cylindrical wall 28 of the electrical connector
10. The fingers 36 constitute retainer tangs formed by the U-shaped cuts
that are bent radially inwardly of the electrical connector 10 for engagement
with the cable 12 (see Pyron, para. 25). The external surface of the cable 12
as depicted in Figures 1 and 20 has a helical convolution 12b defining a
groove or opening 12a for receiving the inwardly bent retainer tangs (that is,
the inwardly bent fingers 36) of the electrical connector 10. The receipt of
the fingers 36 in the grooves of the cable 12 provides strain relief against
forces tending to pull the cable 12 out of the electrical connector 10; and
enhances the grounding connection between the cable 12 and the electrical
connector 10 (see Pyron, paras. 29, 30, 32 and 33).
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When the electrical connector 10 is inserted through a knockout hole
14 in a wall 16 of an electrical enclosure 18 as depicted in Figures 1 and 20
of Pyron, the portion of the wall immediately surrounding the knockout hole
is captured between the front tabs 34a and the back tabs 34b. Pyron teaches
that the "cylindrical wall 28 inwardly deflects to allow insertion into the
knockout 14. Front tabs 34a pass through the knockout so that the front tabs
34a abut against the inside surface of wall 16 while the rear tabs 34b abut
against the outside surface of wall 16." (Pyron, para. 28). The fact that the
leg portions of the rear tabs 34b abut against the wall 16 when the electrical
connector 10 is inserted into the knockout hole 14 implies that the leg
portions act as a stop to limit how far the electrical connector can be inserted
through the knockout hole.
Pyron teaches that the electrical connector 10 provides electrical
continuity, that is, a grounding path, between the sheath of the cable 12 and
the electrical enclosure 18 through the front and rear tabs 34a, 34b (see
Pyron, paras. 20 and 29). In this sense, the rear tabs 34b act as grounding
tangs. The integral leg portions of the rear tabs 34b as depicted in Figure 19
of Pyron are bent outwardly at an angle from the remainder of the grounding
tangs, that is, the remainder of the rear tabs 34b. As depicted in Figure 1 of
Pyron, the leg portions of the rear tabs 34b make flush contact with the
outside surface of the wall 16 of the electrical enclosure 18.
Thus, Auray and Pyron describe similar devices, namely, electrical
connectors designed to connect electrical cables to electrical boxes; and to
provide ground paths from sheaths of the electrical connectors to the
electrical boxes. The grounding tangs 23 of Auray's electrical connector
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assembly 10 and the rear tabs 34b of Pyron's electrical connector 10 are
similar in structure and perform similar functions, namely, providing at least
portions of grounding paths from the electrical cables to the electrical boxes.
The flange 13 of Auray's connector body 11 and the leg portions of Pyron's
rear tabs 34b perform similar functions, that is, abutment against the outside
surfaces of electrical boxes; and do so in similar ways, namely, by flush
contact. In view of the teachings of Pyron, it would have been obvious to
replace the combination of the straight grounding tangs 23 and the separate
flange 13 described by Auray with grounding tangs having outwardly
extending leg portions for abutting against an outside surface of an electrical
box (see ACP 40; Request 121). Pyron would have provided both sufficient
guidance to one of ordinary skill in the art to implement this substitution and
a reasonable expectation that the substitution would have been successful.
The Patent Owner argues that Auray taught away from the proposed
substitution. The Patent Owner argues that substituting grounding tangs
having outwardly bent leg portions would have prevented the flange 13 from
abutting the electrical box 15 when the electrical connector assembly 10 was
inserted into a knockout hole 14 (see Resp. Br. 7). Rather than a teaching
away, the opportunity to use the leg portions of the modified grounding
tangs, rather than the flange 13, to abut against the wall of the electrical box
15 to act as an insertion stop would have been a reason to make the proposed
substitution rather than a reason not to make the substitution. The proposed
substitution would have provided one of ordinary skill in the art opportunity
to eliminate the flange 13 and transfer its function to the leg portions of the
grounding tangs.
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To the extent one of ordinary skill in the art might have required
additional reason for making this substitution beyond any simplification in
structure, which the substitution would have provided, the Requester
correctly argues that "a person of ordinary skill in the art would [have]
underst[ood] the relationship between mechanical contact between the
connector and the junction box[,] and good electrical continuity." (Reb. Br.
13). In other words, one of ordinary skill in the art would have understood,
as a matter of common sense, the elementary principle that increased contact
area would improve the electrical continuity between two electrically
conductive parts. In view of this principle:
One of ordinary skill in the art would [have]
look[ed] to Pyron for teaching a grounding tang
having an integral leg portion bent outwards so as
to provide additional surface contact between the
grounding tang and the panel or junction box so as
to provide good electrical continuity and low
millivolt drop between the fitting and the junction
box.
(Request 121; see also Reb. Br. 13).
Figure 9 of Auray depicts relatively little contact area between the
grounding tangs 23 and the wall of the electrical box 15. Figure 1 of Pyron,
on the other hand, depicts flush contact between the outer or leg portions of
the rear tabs 34b and the wall 16 of the electrical enclosure 18. It would
have been obvious to one of ordinary skill in the art to increase the limited
contact area between the grounding tangs 23 and the electrical box 15
described by Auray and, to some extent, incorporate the teaching to bias the
free ends of the grounding tangs 23 into engagement with the internal
periphery of the knockout hole 14, by replacing Auray's straight grounding
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tangs 23 and flange 13 with grounding tangs having leg portions extending
parallel to the outside surface of a wall of an electrical box when the
electrical connector assembly was inserted into a knockout hole through the
wall. Flush contact between the leg portions and the wall of the electrical
box would have increased the contact area between the grounding tangs and
the electrical box, thereby improving electrical continuity (see Reb. Br. 4).
The Patent Owner argues that Auray taught away from the proposed
substitution by teaching that one should bias the free ends of the grounding
tangs 23 into engagement with the internal periphery of the knockout hole
14 in order to place the free ends of the grounding tangs into engagement
with the electrical box 15 (see Resp. Br. 6 and 13; see also Auray, col. 3, ll.
57–64). The Patent Owner does not identify any functional difference
between electrical contact between the grounding tangs and the internal
periphery of a knockout hole, as described in Auray, and electrical contact
between the grounding tangs and the portion of the outside wall surrounding
the knockout hole. One of ordinary skill in the art desirous of increasing the
contact area between the grounding tangs of an electrical connector
assembly and a wall of an electrical box would have had reason to prefer
flush contact between leg portions of modified grounding tangs and the
outside surface of a wall surrounding a knockout hole over line contact
between end portions of straight grounding tangs and the internal periphery
of a knockout hole. The Patent Owner's argument that Auray taught away
from the proposed substitution is not persuasive.
As mentioned earlier, it would have been obvious from the disclosure
of Auray to design the grounding tangs 23 of Auray's electrical connector
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assembly 10 so as to extend at angles in the range of 100° to 115° relative to
an outer surface of a wall of an electrical box 15 when the connector
assembly is inserted into a knockout hole 14 in the wall. Combining the
teachings of Auray and Pyron, it would have been obvious to replace the
straight grounding tangs 23 and flange 13 of Auray's electrical connector
assembly 10 with modified grounding tangs extending at angles in the range
of 100° to 115° relative to an outer surface of a wall of an electrical box 15;
and which terminated in outwardly integral, bent leg portions extending
parallel to the outside surface of a wall of the electrical box, when the
connector assembly was inserted into a knockout hole 14 in the wall. Such
modified grounding tangs would have satisfied the limitation whereby at
least one of the grounding tangs included "an integral leg portion bent
outward at an angle from said grounding tang, said angle of said leg portion
of said grounding tang with respect to said grounding tang [being] between
100 and 115 degrees." The modified electrical connector assembly as a
whole would have satisfied all limitations of claim 6.
The Patent Owner has not identified any objective evidence, such as
evidence of unexpected results, which rebut the evidence demonstrating the
obviousness of the claimed invention. Thus, claim 6 is also unpatentable
under § 103(a) over the combined teachings of Auray and Pyron under the
alternative analysis discussed above. To the extent that dependent claims 3
and 4 differ in scope from independent claim 6, the findings and conclusions
regarding the modification of the arms AA and the lugs 17 of Auray's
electrical connector assembly 10 in view of the teachings of Gretz is
applicable as discussed supra. The Requester's arguments regarding claims
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3 and 4 find additional support in Pyron’s teachings regarding the fingers 36
of the electrical connector 10, which are formed by U-shaped cuts in the side
walls 29; and which are bent radially inwardly of the electrical connector 10
for receipt in the groove or opening 12a of the cable 12. On these bases,
claims 3 and 4 are also unpatentable under § 103(a) over the combined
teachings of Auray, Pyron and Gretz.

CONCLUSION
The Examiner's refusal to adopt Proposed Rejections A–J is
REVERSED, and the proposed rejections are denominated as New Grounds
of Rejection.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956.

REVERSED; 37 C.F.R. § 41.77(b)

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b), which provides that "[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
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For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)–(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
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decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).

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alw

Patent Owner:
The Jackson Patent Group, LLC
1500 Forest Avenue, Suite 212
Richmond, VA 23229

Third Party Requester:

John F. Klos
Briggs and Morgan P.A.
2200 IDS Center; 80 South 8
th
Street
Minneapolis, MN 55402