Ex Parte 7833053 et al

Patent Trial and Appeal Board

Oct 22, 2013

95001689 (P.T.A.B. Oct. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,689 07/18/2011 7833053 PPC.4089US4RE-NY 1278
116246 7590 10/22/2013
Hiscock & Barclay LLC/PPC
One Park Place
300 South State Street
Syracuse, NY 13202
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/22/2013 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
________________

FOLEY & LARDNER LLP1
Respondent, Requestor

v.

PPC BROADBAND, INC.2
Appellant, Patent Owner
________________

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Technology Center 3900
________________

1 The record indicates that Foley & Lardner LLP represented Thomas &
Betts Corporation in John Mezzalingua Associates, Inc. v. Thomas & Betts
Corp., Case No. 6:11-cv-6327 (W.D.N.Y.), in which the patent under
reexamination was at issue. The record also indicates that the pertinent
business of Thomas & Betts Corporation was acquired by Belden Inc. (See
Declaration of Dr. James Crivello, para. 3).

2 The Appellant/Patent Owner identifies its real party in interest as
PPC Broadband, Inc. [“PPC”] of East Syracuse, New York. It is understood
that PPC also was acquired by Belden Inc. (See, e.g., Belden Inc., press
release dated December 11, 2012).

3 Issued April 6, 2004 to Roger Mathews (the “′053 patent”). The ′053
patent issued from Appl. 12/427,843, filed April 22, 2009.
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
DANIEL S. SONG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant/Patent Owner appeals under 35 U.S.C. § 134(b) (2011) 2
and 35 U.S.C. § 315(a) (2011) from a final rejection of claims 1-19. Claim 8 3
is amended. Claims 13-19 were added during the course of the 4
reexamination. We have jurisdiction under 35 U.S.C. § 134(b) (2011) and 5
35 U.S.C. § 315(a) (2011). 6
The Examiner’s position is set forth in an Answer (“Answer” or 7
“Ans.”) mailed April 1, 2013 and a Right of Appeal Notice (“RAN”) mailed 8
August 30, 2012. The Examiner adopts, or adopts with modification, seven 9
grounds of rejection of claims 1-19: 10
1. claims 1-11 under 35 U.S.C. § 103(a) (2011) as 11
being unpatentable over Youtsey (US 6,042,422, issued Mar. 12
28, 2000), Lionetto (US 4,929,188, issued May 29, 1990) and 13
Horak (US 3,879,102, issued Apr. 22, 1975) (Ans. 5 and 6); and 14
claim 12 under § 103(a) as being unpatentable over Youtsey, 15
Lionetto, Horak and Montena (US 6,558,194 B2, issued May 6, 16
2003) (Ans. 12); 17
2. claims 1, 6, 8, 9, 11 and 12 under 35 U.S.C. § 18
102(a) (2011) and 35 U.S.C. § 102(e) (2011) as being 19
anticipated by Palinkas (US 6,716,062 B1, issued Apr. 6, 2004) 20
(Ans. 5 and 14);4 21

4 Despite the indication to the contrary on page 5 of the Answer and
page 6 of the RAN, the Examiner did not adopt the proposed rejection of
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3. claims 19/1 and 19/85 under § 103(a) as being 1
unpatentable over Youtsey, Lionetto and Horak (Ans. 6, 17 and 2
18); 3
4. claims 19/1 and 19/8 under § 102(a) and § 102(e) 4
as being anticipated by Palinkas (Ans. 14, 17 and 24); 5
5. claims 13-18, 19/13, 19/16 and 19/18 under 6
§ 103(a) as being unpatentable over Youtsey, Lionetto and 7
Horak (Ans. 17 and 18); 8
6. claims 13, 15, 16, 19/13 and 19/16 under § 102(a) 9
and § 102(e) as being anticipated by Palinkas (Ans. 17 and 24);6 10
and 11
7. claims 13-18, 19/13, 19/16 and 19/18 under 35 12
U.S.C. § 314 (2011) as enlarging the scope of the claims of the 13
patent being reexamined (Ans. 17 and 29). 14
(See Ans. 5 and 17). 15
We sustain grounds of rejection 1, 3, 5 and 7. We also sustain 16
grounds of rejection 2, 4 and 6 against claims 1, 6, 13, 15, 19/1 and 19/13. 17
We do not sustain the remaining grounds of rejection. 18
The Patent Owner relies on an Appeal Brief (“Appeal Brief” or 19
“App. Br. PO”) dated November 28, 2012 and a Rebuttal Brief (“Reb. Br. 20
PO”) dated April 25, 2013. The Appeal Brief refers to two declarations of 21

claims 2-5 under § 102(a) and § 102(e) as being anticipated by Palinkas.
(See RAN 19).

5 Claims “19/1 and 19/8” refer to dependent claim 19 as dependent
from independent claims 1 and 8, respectively. Claims “19/13, 19/16 and
19/18” refer to dependent claim 19 as dependent from independent claims
13, 16 and 18, respectively.

6 The inclusion of claim 18 in this ground of rejection as stated on page 17
of the Answer appears to be a typographical error. (See Ans. 24; RAN 28).
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record, a Declaration of Dr. Charles A. Eldering (“Eldering Declaration” or 1
“Eldering Decl.,” Exhibit C to the Appeal Brief) and a Declaration of Dr. 2
James Crivello (“Crivello Declaration” or “Crivello Decl.,” Exhibit D to the 3
Appeal Brief). Although the Requester has not filed any briefs in this 4
appeal, this opinion will refer to the Request for Inter Partes Reexamination 5
(“Request”) dated July 18, 2011 and to the Third Party Requester Comments 6
(“Req’r Comments”) dated December 29, 2011. 7
The claims on appeal relate to connectors for coaxial cables. (′053 8
patent, col. 1, ll. 10-11). According to the Specification of the ′053 patent, a 9
connector 100 for a coaxial cable 10 includes a post 40 having a flange 46 at 10
one end. (′053 patent, col. 3, ll. 34-38; col. 4, ll. 42-48; col. 5, ll. 18-23; and 11
figs. 1 and 3). A fastener member 60 clamps a deformable connector body 12
50 onto the post 40 such that both the post 40 and the connector body 50 13
engage portions of the cable 44. (′053 patent, col. 5, ll. 59-67 and fig. 1). A 14
threaded nut 30 encircles the post 40. (′053 patent, col. 4, ll.56-59 and figs. 15
1 and 2). A mating edge conductive member 70 in the form of a resilient 16
and electrically conductive O-ring seal sits against the flange 46 within the 17
nut 30. When the nut 30 is threaded onto a stub shaft connector 20, a mating 18
edge 26 on the axial end of the stub shaft connector 20 presses against the 19
mating edge conductive member 70 to form both an environmental seal and 20
an unbroken electrical connection between the mating edge 26, the flange 46 21
and the nut 30. (′053 patent, col. 7, ll. 41-61). 22
Claims 1, 8, 13, 16 and 18 are independent. Claim 1 recites, with 23
italics added for emphasis: 24
1. A connector for coupling an end of a coaxial 25
cable and facilitating electrical connection with a 26
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coaxial cable interface port having a conductive 1
surface, the coaxial cable having a center 2
conductor surrounded by a dielectric, the dielectric 3
being surrounded by a conductive grounding 4
shield, the conductive grounding shield being 5
surrounded by a protective outer jacket, the 6
connector comprising: 7
a post having a first end and a second end, 8
the first end configured to be inserted 9
into an end of the coaxial cable 10
around the dielectric and under the 11
conductive grounding shield thereof; 12
a connector body attached to and at least 13
partially surrounding the post, said 14
connector body and post defining a 15
space for receiving the conductive 16
grounding shield of the cable; 17
a nut operatively attached proximate the 18
second end of the post; and 19
a conductive member electrically engaged 20
with the second end of the post, 21
wherein said conductive member is 22
adapted to physically contact the 23
conductive surface of the interface 24
port and facilitate grounding of the 25
coaxial cable. 26
(App. Br. 27 (Claims App’x)). 27
Claim 8 recites a connector including “a compressible conductive 28
member located at the second end of the post, wherein said conductive 29
member facilitates grounding of the coaxial cable.” 30
Claims 13 and 18 each recite a “connector for coupling an end of a 31
coaxial cable and facilitating electrical connection with a coaxial cable 32
interface port having a mating edge.” The connector of claim 13 includes “a 33
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conductive member electrically engaged with the flange of the post, said 1
conductive member adapted to physically contact the mating edge of the 2
coaxial cable interface port and facilitate grounding of the coaxial cable, 3
wherein the physical contact between the mating edge of the coaxial cable 4
interface port and the conductive member stops an axial progression of the 5
connector onto the coaxial cable interface port.” The connector of claim 18 6
includes “a conductive member electrically engaged with the flange of the 7
post, wherein the conductive member is compressed between the flange of 8
the post and the mating edge of the coaxial cable interface port to stop axial 9
progression of the connector onto the coaxial cable interface port.” 10
Claim 16 recites a connector including “a compressible conductive 11
member in electrical contact with the flange proximate the second end of the 12
post, wherein the conductive member is compressed between the flange of 13
the post and the mating edge of the coaxial cable interface port to prevent 14
the coaxial cable interface port from contacting the post during mating.” 15
16
ISSUES 17
Only issues and findings of fact contested by the Patent Owner have 18
been considered. See 37 C.F.R. § 41.67(c)(1)(vii) (2011); In re Jung, 637 19
F.3d 1356, 1365 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 20
(BPAI 2010). Five issues are dispositive of the appeal: 21
First, did Youtsey teach away from the proposed 22
substitution of an electrically conductive material for the 23
unidentified material used to fabricate the o-ring 82 described 24
by Youtsey? (See App. Br. 5-14; Reb. Br. PO 3-7). 25
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Second, would one of ordinary skill in the art have had a 1
reasonable expectation that the proposed substitution of an 2
electrically conductive material for the unidentified material 3
used to fabricate the o-ring 82 described by Youtsey would 4
have been successful? (See App. Br. 14-16). 5
Third, does Palinkas describe a connector including a 6
post and “a conductive member electrically engaged with the 7
second end of the post?” (See generally App. Br. 16-17 and 22-8
23; Reb. Br. 7-10). 9
Fourth, does Palinkas describe a connector including a 10
post and “a compressible conductive member located at the 11
second end of the post?” (See App. Br. 17-18 and 23-25). 12
Fifth, do claims 13-18, 19/13, 19/16 and 19/18 enlarge 13
the scope of the claims of the ′053 patent? (See App. Br. 25-14
26). 15
16
FINDINGS OF FACT 17
The record supports the following findings of fact (“FF”) by a 18
preponderance of the evidence. 19
20
Youtsey 21
1. We adopt and incorporate by reference the Examiner’s findings 22
at page 6, line 8 of the Answer (starting with “With respect to the limitations 23
of claims 1 and 8, Youtsey discloses a connector . . .”) through page 7, line 7 24
of the Answer (“. . . is adapted to physically contact the conductive surface 25
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of the interface port (male connector 16).”). (See also Youtsey, col 2, ll. 49-1
52 and 65-67; col. 5, ll. 25-44 and 57-65; and fig. 3). 2
2. Youtsey’s connector 10 includes two o-rings 82, 84. (Youtsey, 3
col. 5, ll. 45-49). Figure 3 of Youtsey depicts the first o-ring 82 as being 4
positioned in an annular groove 80 in the interior surface of the nut or 5
receptacle 30. (See Youtsey, col. 5, l. 45). The annular groove 80 is 6
depicted as being positioned axially between a flange 70 of the post or inner 7
tube 28 and the internal threads 72 of the receptacle 30. (See Youtey, col. 5, 8
ll. 39-44). 9
3. Youtsey teaches that the o-rings 82, 84 seal the interior of the 10
connector 10 from moisture and environmental contaminants. (Youtsey, col. 11
5, ll. 50-53). Youtsey also teaches that the “o-rings 82 and 84 also function 12
to retain the parts of the coaxial cable end connector 10 together until the 13
connector 10 is fixed to the end of a coax cable by crimping.” (Youtsey, col. 14
5, ll. 53-56). 15
4. Youtsey does not describe the o-ring 82 as being electrically 16
conductive. 17
5. The Patent Owner argues that “Youtsey teaches away from 18
compressing the O-ring between the post-face and the port-face; the mere 19
existence of the groove (80) in the nut to accommodate the O-ring (82) 20
suggests that the O-ring should not be compressed between the port-face and 21
the post-face.” (App. Br. 6; see also Reb. Br. 3). Youtsey does not mention, 22
much less criticize or disparage, compressing the o-ring 82 between the 23
flange 70 and a mating edge of a male connector 16. 24
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6. To the contrary, Youtsey describes a connector 10 in which the 1
o-ring 82 is compressed between the flange 70 of the inner tube 28 and the 2
mating edge of the male connector 16. 3
7. The Examiner correctly finds that: 4
the intent of the o-ring member (82) is to prevent 5
moisture, etc. from getting into the connector when 6
the connector (10) is engaged to male connector 7
(16). This essentially provides a compressed seal. 8
(Youtsey; column 5, lines 50-53). This 9
“compressed” seal would inherently make contact 10
with both the edge of male connector (16) and the 11
flange (first flange 70) of the second end of the 12
post (inner tube 28) during assembly or the o-ring 13
(82) would not perform a “sealing” functionality. 14
(Ans. 32-33; see also RAN 42). 15
8. The Examiner correctly finds that Figure 3 of Youtsey depicts 16
only about 50% of the o-ring 82 extending into the annular groove 80. (See 17
RAN 41). In other words, approximately half of the cross-section of the o-18
ring 82 is located over the flange 70, in the path of the connector 16 as it is 19
received in the receptacle 30. (See Req’r Comments 10). This finding 20
follows from the position of the gap between the flange 70 and the interior 21
surface of the nut or receptacle 30 relative to the position of the o-ring 82 as 22
depicted in Figure 3. The finding is not dependent on Figure 3 being drawn 23
to any particular scale. 24
9. The Examiner also correctly finds that the o-ring 82 makes 25
contact with the flange 70 of the inner tube 28 before the connector 16 enters 26
the receptacle 30. (See RAN 41-42; Req’r Comments 10). These facts 27
imply that the connector 16, on entering the receptacle 30, contacts the 28
portion of the o-ring 82 extending into the receptacle 30; and compresses the 29
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o-ring between the flange 70 and a mating edge of the connector 16 to 1
thereby perform its disclosed sealing function. These facts also imply that 2
the o-ring 82 stops the axial progression of the connector 16 onto the coaxial 3
cable interface port and prevents the connector 16 from contacting the post 4
or inner tube 28 during mating. (See Ans. 33-34). 5
6
Eldering Declaration 7
10. Dr. Charles A. Eldering (“Eldering”) declares that a coaxial 8
cable “create[s] a waveguide structure that, among other things, contain[s] 9
the RF [that is, radio frequency] signal of interest and act[s] as an 10
electromagnetic container that keeps external signals and noise from 11
interfering.” (Eldering Decl., para. 7). Eldering additionally declares that: 12
in the cable television industry there had been a 13
long standing and unresolved problem with 14
connectors either not being fully tight or loosening 15
over time. When this occurs, the waveguide 16
structure of the cable’s sheath is not extended all 17
the way to the port and, therefore, unwanted 18
electromagnetic noise can interfere with the signal 19
traveling down the center conductor. 20
(Eldering Decl., para. 8). 21
11. Eldering declares that Youtsey’s 22
O-ring 82 is not conductive and, therefore, cannot 23
extend the waveguide structure of the cable’s 24
sheath. If anything, it interferes with that process 25
by acting as a non-conductive barrier that must be 26
overcome in order for flange 70 of inner tube 28 to 27
make electrical contact with the male interface 28
port. Because the connector must necessarily 29
operate to frequencies up to 1 GHz (also termed 30
Radio Frequencies, or RF) it is critical that 31
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[Youtsey’s] flange 70 come into solid and firm 1
contact with the face of male connector 16 (the 2
mating edge of the port) in order to establish good 3
electrical continuity and create a continuous 4
waveguide structure that is required to maintain 5
signal integrity and keep key connector 6
performance parameters such as return loss and 7
insertion loss within acceptable ranges. 8
(Eldering Decl., para. 9). 9
12. Eldering suggests that the annular groove 80 in the interior 10
surface of Youtsey’s nut or receptacle 30 11
avoid[s] the positioning of any component between 12
the interface port and the post. As one of at least 13
ordinary skill in the art, it is clear to me that O-ring 14
82 is compressed into special O-ring groove 80 15
avoiding contact with the mating edge of male 16
connector 16 and providing a physical seal by 17
compression against the threaded outer surface of 18
male connector 16. 19
(Eldering Decl., para. 9). Eldering infers that o-ring 82, which is contained 20
within the annular groove 82, at most minimally contacts the flange 70. For 21
this reason, Eldering concludes that one of ordinary skill in the art would not 22
have substituted electrically conductive material for the material of the o-23
ring 82 described by Youtsey in order to provide an unbroken electrical 24
circuit between the cable’s sheath and the port. (See Eldering Decl., para. 25
10). 26
13. As support for this reasoning, Eldering reports having made 27
“working samples” of Youtsey’s connector 10. Eldering had these “working 28
samples” encased in epoxy material; cross-sectioned; and then polished in an 29
attempt to demonstrate how the o-ring 82 would behave when the connector 30
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10 was actually connected to a port 16. Eldering interpreted the tests as 1
proving that the male connectors 16 would have forced the o-rings 2
substantially entirely into the annular grooves, so that the o-rings would not 3
have made effective contact with a mating edge of the port, nor would have 4
prevented the port from contacting the post during mating. (Eldering Decl., 5
para. 12). 6
14. The Examiner’s finding and technical reasoning are more 7
persuasive than Eldering’s testimony. In particular, the Examiner’s findings 8
and reasoning are more persuasive than the results of Eldering’s tests. As 9
the Examiner correctly finds, Youtsey discloses recessing no more than 10
about half of the cross-section of an o-ring 82 into an annular groove 80 in 11
the interior surface of the receptacle 30. (FF 9). The Examiner’s finding 12
that half of the o-ring 82 extends radially into the receptacle 30 over the 13
flange 70 is consistent with Youtsey’s teaching that the o-ring 82 retains the 14
parts of the connector 10 together until the connector is crimped to the end 15
of a cable 12. (See Youtsey, col. 5, ll. 53-56). 16
15. The one photograph reproduced in the Eldering Declaration 17
which purports to show the “working samples” before the working samples 18
were coupled to male connectors does not clearly show how far the o-rings 19
recessed into the annular grooves in the interior surfaces of the nuts before 20
the working samples were coupled to male connectors. (See Exhibit E to the 21
Appeal Brief, corresponding to Appendix C to the Eldering Declaration). 22
Exhibit F to the Appeal Brief (corresponding to Appendix B to the Eldering 23
Declaration) suggests that significantly more than half of the cross-sections 24
of the o-rings in the working samples may have been recessed into the 25
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annular grooves before the working samples were coupled to male 1
connectors. Because the degree to which the o-rings were recessed into the 2
annular grooves may have affected whether the male connectors forced 3
those o-rings substantially entirely into the annular grooves, Eldering’s test 4
results are entitled to little weight as evidence of the behavior of the o-ring 5
82 of Youtsey’s connector 10. (See RAN 41-43; Req’r Comments 9 and 6
10). 7
16. Eldering’s statement that Youtsey’s o-ring 82 “provid[es] a 8
physical seal by compression against the threaded outer surface of male 9
connector 16” (Eldering Decl., para. 9) is not persuasive. Youtsey teaches 10
that the o-ring 82 seals the interior of the connector 10 from moisture and 11
environmental contaminants. (Youtsey, col. 5, ll. 50-53). A seal made from 12
a relatively soft material likely will be crushed against the flange 70 by a 13
male connector 16. A seal made from a material of higher durometer is less 14
likely to enter into the roots of the threaded surface of the male connector 16 15
to form a tight seal. In view of this consideration and the other dimensional 16
considerations, it is more likely than not that the seal is positioned between 17
the male connector and the flange. 18
17. The Examiner’s subsidiary findings and technical reasoning 19
support the finding that Youtsey actually describes a connector 10 in which 20
the o-ring 82 is compressed between the flange 70 of the inner tube 28 and 21
the mating edge of the male connector 16. The Examiner’s subsidiary 22
findings and technical reasoning are based on the actual disclosure of 23
Youtsey’s written description and drawing. On the other hand, apart from 24
Eldering’s tests, Eldering’s reasoning only describes how one of ordinary 25
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skill in the art might have constructed a connector implementing Youtsey’s 1
teachings in accordance with best engineering practices at the time. The 2
Examiner’s approach better characterizes what Youtsey actually describes. 3
4
Lionetto 5
18. The Examiner correctly finds that Lionetto “teaches a sealing 6
member (conductive elastomer 34) in a coaxial cable connector assembly 7
being conductive (i.e., conductive), resiliently deformable and compressible 8
(i.e. an elastomer being deformable and compressible) in order to present a 9
means to facilitate electrical contact (column 2, lines 31-36; see Figures 1-10
2).” (Ans. 8). 11
19. Lionetto describes a microminiature coaxial connector 12
assembly including an outer male shield conductor 10 and a female outer 13
conductor 12. (Lionetto, col. 1, ll. 4-7 and col. 2, ll. 1-5). The female outer 14
conductor 12 of Lionetto’s connector assembly includes an internal sleeve 15
14 which fits within an inner surface 15 of the outer male shield conductor 16
10. (Lionetto, col. 2, ll. 1-5). Lionetto teaches that, where the outer male 17
shield conductor 10 and the female outer conductor 12 of Lionetto’s 18
connector assembly are aligned, “electrical contact is essentially through [a] 19
leaf spring 22 and a conductive elastomer 34 against which the tapered 20
surface 27 [of the internal sleeve 14] abuts.” (Lionetto, col. 2, ll. 31-36). 21
20. Lionetto further describes the conductive elastomer 34 as an 22
“electrically conductive elastomer gasket ring, carried on said male member 23
against which said outer end taper of said female member may engage and 24
compensates for misalignment of said male and female connector halves 25
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when fully engaged, providing continuous circumferential electrical contact 1
and RFI [that is, radio frequency interference] suppression.” (Lionetto, col. 2
3, ll. 14-20 (claim 3)). 3
21. Lionetto does not describe further the material used to fabricate 4
the electrically conductive elastomer gasket ring 34. In particular, Lionetto 5
does not describe any evaluation or iterative testing used to select the 6
conductive elastomer used to fabricate the gasket 34. 7
8
Horak 9
22. The Examiner correctly finds that “Horak teaches a sealing 10
member (conductive rubber ring 18) in a coaxial cable connector (Abstract) 11
assembly being conductive (i.e. conductive), resiliently deformable and 12
compressible (i.e. rubber being deformable and compressible) in order to 13
provide weather sealing and eliminate RFI (i.e. electromagnetic interference) 14
at the same time (column 4, line 60 – column 5, line 11).” (Ans. 9). 15
23. Horak describes a connector including a nut section 12 and a 16
pin section 14. (Horak, col. 2, ll. 43-44). When the pin section 14 is 17
fastened to the nut section 12, axial compression of a rubber ring 18 between 18
a cylindrical mandrel 24 and a conductive body 16 of the nut section 12 19
causes the rubber ring 18 to expand radially inwardly against the outer 20
conductive jacket 62 of the coaxial cable 60. This action provides a 21
weather-proof seal between the rubber ring 18 and the cable 60. (Horak, col. 22
4, ll. 25-41 and fig. 3). 23
24. Horak teaches that the signal-carrying central conductor 66 of a 24
coaxial cable 60 must be surrounded by a continuous conductive shield in 25
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order to prevent the introduction of RFI into the signal carried by the central 1
conductor 66. (Horak, col. 4, ll. 60-63). Horak additionally teaches that 2
using conductive rubber for the rubber ring 18 not only provides weather 3
sealing but also prevents the introduction of RFI into the signal carried by 4
the central conductor 66. (Horak, col. 5, ll. 2-7). 5
25. Horak does not describe further the material used to fabricate 6
the rubber ring 18. In particular, Horak does not describe any evaluation or 7
iterative testing used to select the material used to fabricate the rubber ring 8
18. 9
10
Bell 11
26. Bell (US 5,882,226, issued Mar. 16, 1999) describes a 12
connector and cable termination system 10 including a “plug body 12 13
provided with a coupling ring 14 secured to it by a retaining ring 16. The 14
plug body 12 contains an insulator 18 through which pass two (in this case) 15
male connector pins 20. The connector pins 20 mate with female connector 16
receptacles on a mating fixed connector.” (Bell, col. 1, ll. 48-54 and fig. 1). 17
A portion of the plug body 12 is surrounded by an outlet body 22. (Bell, col. 18
2, ll. 6-7). “The wider portion of the plug body 12 has a recess 32 for 19
receiving a conductive O-ring 34, which provides a degree of sealing 20
between the plug body 12 and the outlet body 22.” (Bell, col. 2, ll. 17-20). 21
27. Bell does not describe further the material used to fabricate the 22
conductive O-ring 34. In particular, the Requester correctly observes that 23
“Bell discloses the use of a conductive O-ring 34 in a coaxial connector (see 24
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col. 2, ll. 19-20), without mentioning any particular difficulties encountered 1
with its selection and use.” (Req’r Comments 8). 2
3
Palinkas 4
28. We adopt and incorporate by reference the Examiner’s findings 5
at page 14, line 3 of the Answer (beginning with “[w]ith respect to the 6
limitations of claims 1 and 8 . . .”) through page 15, line 3 of the Answer 7
(ending with “. . . and facilitate grounding of the coaxial cable (44) (column 8
6, lines 14-18).”), except that we do not adopt the finding that the flange 26 9
is compressible. 10
29. We adopt and incorporate by reference the Examiner’s findings 11
at page 24, line 19 of the Answer (beginning with “[w]ith respect to the 12
limitations of claims 13 and 16 . . .”) through page 26, line 7, except that we 13
do not adopt the finding that the flange 26 is compressible. 14
30. Palinkas describes an “F” type connector 10 for a coaxial cable 15
44. (Palinkas, col. 1, ll. 53-59 and col. 4, ll. 41-43). Palinkas’ connector 10 16
includes a post 14. (Palinkas, col. 3, ll. 40-42). A compression ring 20 17
clamps a compressible body 18 over the post 14 such that both the post 14 18
and the deformable body 18 engage portions of the cable 44. (Palinkas, col. 19
4, ll. 58-63). A nut 12 encircles the post 14 for threaded engagement with a 20
stub shaft 56 of a port of a television receiver or other electronic equipment. 21
(See Palinkas, col. 4, ll. 25-27; col. 4, l. 66 - col. 5, l. 1 and col. 5, ll. 6-10; 22
and figs. 1-3). 23
31. Palinkas describes the post 14 by saying that a “[f]lange 26 at 24
one end of post 14 is integrally attached to stem portion 28, the flange and 25
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stem cooperatively defining constant diameter bore 30, extending fully 1
through post 14.” (Palinkas, col. 3, ll. 45-48). 2
32. Palinkas describes the flange 26 as a “metal flange.” (Palinkas, 3
col. 6, ll. 41-44 (claim 1)). Palinkas does not identify the metal. 4
33. Furthermore, Palinkas teaches “metal-to-metal” contact 5
between the flange 26 and the stub shaft 56 to provide acceptable RFI 6
shielding and to substantially eliminate noise ingress and signal degradation. 7
(Palinkas, col. 5, ll. 10-15). This teaching implies that the flange 26 is an 8
electrically conductive member and that the flange 26 is electrically engaged 9
with the stem portion 28. More precisely, the teaching implies that the 10
flange 26 is electrically engaged with the shielding electrode of the coaxial 11
cable 44 through the stem portion 28. 12
13
ANALYSIS 14
First Issue 15
The Examiner finds that Youtsey describes a connector including each 16
limitation of independent claims 1, 8, 13, 16 and 18 except the conductive 17
members recited in claims 1, 13 and 18; and the compressible conductive 18
members recited in claims 8 and 16. (See Ans. 8; see also FF 1). The 19
Requester proposes, and the Examiner adopts, the reasoning that it would 20
have been obvious to substitute a compressible, electrically conductive 21
material for the unidentified material used to fabricate the o-ring 82 22
described by Youtsey. (See Ans. 10; Request 18). The Examiner concludes 23
that one of ordinary skill in the art would have had reason to make this 24
substitution so that the o-ring 82 might provide both environmental sealing 25
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and enhanced electrical conduction between the outer conductor 24 of the 1
cable 12 to which the connector 10 was secured and a male connector 16 to 2
which the connector 10 was connected. (See Ans. 8-9). 3
The Patent Owner argues that “Youtsey teaches away from 4
compressing the O-ring between the post-face and the port-face; the mere 5
existence of the groove (80) in the nut to accommodate the O-ring (82) 6
suggests that the O-ring should not be compressed between the port-face and 7
the post-face.” (App. Br. 6; see also Reb. Br. 3). This argument applies 8
only to the rejections of claims 13-18, 19/13, 19/16 and 19/18. (See Ans. 9
32). Nevertheless, the Examiner correctly finds that the connector 16, on 10
entering the receptacle 30, contacts the portion of the o-ring 82 extending 11
into the receptacle 30; and compresses the o-ring between the flange 70 and 12
a mating edge of the connector 16. The Examiner also correctly finds that 13
the o-ring 82 stops the axial progression of the connector 16 onto the coaxial 14
cable interface port and prevents the connector 16 from contacting the post 15
or inner tube 28 during mating. (See Ans. 33-34). 16
The Examiner’s findings are supported by a preponderance of the 17
evidence. (See FF 6-9). While the Patent Owner cites the Eldering 18
Declaration as evidence that “O-ring 82 is compressed into special O-ring 19
groove 80 avoiding contact with the mating edge of male connector 16” (see 20
Eldering Decl., para. 9; see also App. Br. 3-5 and 10-12; Reb. Br. 3; and FF 21
10-13), the Examiner’s findings and technical reasoning are more persuasive 22
(see FF 14-17). Youtsey does not teach away from the combination 23
proposed by the Requester and adopted by the Examiner. 24
25
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Second Issue 1
The Patent Owner also argues that 2
those with ordinary skill in the art would have 3
[had] no motivation to modify Youtsey with the 4
teachings of either Lionetto or Horak, because 5
their knowledge of the structural characteristics of 6
Youtsey coupled with their knowledge of how 7
conductive elastomers behave would [have left] 8
them with no reasonable expectation that such a 9
combination would [have been] successful. In 10
particular, they would [have known] that “it would 11
not be obvious that the O-ring 82 of Youtsey could 12
simply be replaced by a conductive sealing 13
member, such as the conductive sealing members 14
of either Lionetto or Horak.” 15
(App. Br. 15). 16
The Examiner correctly finds that Youtsey’s male connector 16, on 17
entering the receptacle 30, compresses the o-ring between the flange 70 and 18
a mating edge of the connector 16. (See FF 6-9). To the extent that the 19
Crivello Declaration declares that one of ordinary skill in the art would have 20
had “knowledge of the structural characteristics of Youtsey” that Youtsey’s 21
“O-ring 82 undergoes radial expansion from within and is subject to the 22
shear stress of the male port 16 on the inside of the O-ring 82 as it passes 23
therethough” (Crivello Decl., para. 10) or that “Youtsey teaches a special 24
groove 80 for receiving the sealing member, such as O-ring 82, . . . 25
[whereby] the O-ring 82 barely makes tangential, if any, contact with the 26
flange 70 of the inner tube (post) 28” (Crivello Decl., para. 13), the 27
declaration is contrary to the weight of the evidence and unpersuasive for the 28
reasons already noted. 29
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Furthermore, neither the Examiner nor the Requester appears to 1
propose merely substituting the electrically conductive elastomer gasket ring 2
34 described by Lionetto or the conductive O-ring 34 described by Horak for 3
Youtsey’s o-ring 82. (See, e.g., Ans. 10; Request 18). Rather, the position 4
is that it would have been obvious to combine the teachings thereof which 5
results in the invention claimed. The conclusions of the Crivello 6
Declaration, such as that “it would not be obvious that the O-ring 82 of 7
Youtsey could simply be replaced by a conductive sealing member, such as 8
the conductive sealing members of either Lionetto or Horak” (Crivello 9
Decl., para. 8) or that “component elements, such as the conductive sealing 10
members of Lionetto or Horak, are not predictably interchangeable with 11
non-conductive sealing members, such as the O-ring of Youtsey” (Crivello 12
Decl., para. 10), are entitled to little weight. 13
More generally, however, the Patent Owner’s argument suggests that 14
one of ordinary skill in the art would not have had a reasonable expectation 15
that the substitution of an electrically conductive seal material for the 16
unidentified material used to fabricate the o-ring 82 would have been 17
successful because evaluation and testing would have been required in order 18
to choose an effective electrically conductive material for substitution. (See, 19
e.g., Crivello Decl., para. 8).7 The Requester points out, and the Examiner 20
finds, that the ′053 patent itself does not describe any significant evaluation 21

7 “[T]hose in the art appreciate that elastomers are not naturally
conductive, and making them such involves a myriad of oppositely ranging
variables; the material choice involves substantial complexity and is not
tantamount to a simple and predictable substitution. Significant evaluation
and iterative testing is needed to determine performance capability for each
unique design.” (Id.)
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or iterative testing that must be performed in order to identify an effective 1
conductive seal material. (See RAN 37-38; Req’r Comments 3-7). 2
The ′053 patent merely provides a generalized list of materials 3
suitable for use in the conductive member 70 (see ′053 patent, col. 7, ll. 41-4
47) along with a generalized list of fabrication processes for fabricating the 5
conductive member (see ′053 patent, col. 8, ll. 5-11). Lionetto and Horak 6
describe the use of conductive, compressible gaskets or rings in their 7
connectors without describing how the conductive material is to be chosen. 8
(See FF 20, 21, 24 and 25). Similarly, the Requester points out that Bell 9
describes the use of a conductive O-ring 34 to seal between the plug body 12 10
and the outlet body 22 without providing any further guidance (See Req’r 11
Comments 8; see also FF 26 and 27). These findings indicate that the level 12
of ordinary skill in the art was sufficient to identify an effective conductive 13
material for use in a conductive seal in a coaxial connector, even if the 14
identification of the material required evaluation and testing. 15
Only a reasonable expectation of success is required to establish 16
obviousness. The fact that some experimentation might have been required 17
in order to implement the substitution does not lead to the conclusion that 18
one of ordinary skill in the art would have lacked a reasonable expectation 19
that the substitution would have been successful. See Pfizer, Inc. v. Apotex, 20
Inc., 480 F.3d 1348, 1364-65 (Fed. Cir. 2007). The fact that one of ordinary 21
skill in the art may have to engage in significant evaluation and iterative 22
testing to identify an effective conductive elastomer for substitution into 23
Youtsey’s o-ring 82 does not suggest that one of ordinary skill in the art 24
would have lacked a reasonable expectation of successfully identifying such 25
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an elastomer. Nothing in the Crivello Declaration suggests that the 1
evaluation or iterative testing would have been beyond the level of ordinary 2
skill in the art. 3
Because the Examiner articulates persuasive reasoning with some 4
rational underpinning to support the conclusion of obviousness, we sustain 5
the rejection of claims 1-11 and 13-19 under § 103(a) as being unpatentable 6
over Youtsey, Lionetto and Horak. We also sustain the rejection of claim 12 7
under § 103(a) as being unpatentable over Youtsey, Lionetto, Horak and 8
Montena. 9
10
Third Issue 11
Claim 1 recites a connector including a “post” and “a conductive 12
member electrically engaged with the second end of the post.” Claim 13 13
recites a connector including a “post” and “a conductive member electrically 14
engaged with the flange of the post.” The Examiner finds that Palinkas’ 15
flange 26 corresponds to the “flange” recited in claim 13. The Examiner 16
additionally finds that the “far end of flange 26 that makes contact with [the] 17
mating edge of stub shaft 56,” corresponds to the “conductive member” 18
recited in claims 1 and 13. (See Ans. 25). 19
The Patent Owner argues that the terms “conductive member 20
electrically engaged with the second end of the post” and “conductive 21
member electrically engaged with the flange of the post” cannot be 22
interpreted so broadly as to read on the flange 26 of Palinkas, which is 23
“integrally attached” to a stem portion 28 of the post 14. (See App. Br. 16-24
17 and 22-23; Reb. Br. 7-10). In so doing, neither the Patent Owner nor the 25
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Eldering Declaration appears to identify any formal definition or disclaimer 1
which might exclude the far end of Palinkas’ flange 26 from the scope of the 2
term “conductive member.” Because the far end of Palinkas’ flange 26 is 3
electrically conductive (FF 33), it is within the ordinary usage of the term 4
“conductive member.” 5
Even if one concludes, as the Patent Owner and the Eldering 6
Declaration suggest, that the term “post” as used in claims 1 and 13 is 7
limited to the combination of a stem portion and a flange (see Reb. Br. 7; 8
Eldering Decl., para. 18), post 14 described by Palinkas includes both a stem 9
portion 26 and a flange 28 (FF 31). Even if one presumes that the separate 10
terms “post” and “conductive member” must have different meanings in 11
claims 1 and 13 (see App. Br. 22-23; Reb. Br. 7 and 8), the Examiner has 12
given the terms different meanings by identifying only the far end of the 13
flange 28 as corresponding to the “conductive member” recited in claims 1 14
and 13. 15
Neither the Patent Owner nor the Eldering Declaration identifies any 16
formal definition or disclaimer which might imply that the far end of the 17
flange 26 is not “electrically engaged” with the post 14 or its flange 26. In 18
fact, neither the Patent Owner nor the Eldering Declaration appears to 19
identify any usage of the term “electrically engaged” in the Specification of 20
the ′053 patent. (See generally App. Br. 16-17 and 22-23; Reb. Br. 7-10; 21
Eldering Decl., para. 8). While the Specification of the ′053 patent identifies 22
particular embodiments in which conductive O-rings separate from the posts 23
facilitate grounding of the coaxial cable, the Specification speaks of these O-24
rings as “proximate” the post or as “mak[ing] contact with and/or resid[ing] 25
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continuous with” a mating edge of the post. (See, e.g., ′053 patent, col. 7, ll. 1
37-41 and 47-53; see also col. 8, ll. 12-16 and 24-34). The usage of 2
narrower language in particular embodiments disclosed in the Specification 3
does not disclaim a broader scope for the term “electrically engaged” used in 4
claims 1 and 13. Because Palinkas describes a connector including the 5
limitations of independent claims 1 and 13, we sustain the rejection of 6
claims 1, 6, 13, 15, 19/1 and 19/13 under §102(a) and § 102(e) as being 7
anticipated by Palinkas. 8
9
Fourth Issue 10
Claim 8 recites a connector including a “post” and “a compressible 11
conductive member located at the second end of the post.” Claim 16 recites 12
a connector including a post and “a compressible conductive member in 13
electrical contact with the flange proximate the second end of the post.” The 14
Examiner finds that the metal flange 26 at the end of Palinkas’ post 14, or a 15
portion of that flange, corresponds to the “compressible conductive 16
member” recited in the claim. (See Ans. 15 and 25; see also Req’r 17
Comments 14-15). One may set aside for the moment the question of 18
whether the Examiner’s interpretation of the term “compressible” as being 19
so broad as to encompass a metal flange essentially reads the term 20
“compressible” out of claim 8. The Eldering Declaration is correct in 21
suggesting that one of ordinary skill in the art ordinarily would not use the 22
term “compressible” to refer to a generic metal flange such as the flange 26 23
described by Palinkas. (See Eldering Decl., paras. 16 and 17; see also App. 24
Br. 25). While not decisive in this case, the significant difference between 25
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the compressibility of a metal flange and that of the polymeric, elastomeric 1
and soft metallic materials which constitute the preferred materials described 2
by the ′053 patent for fabricating the mating edge conductive member 70 3
indicates that the term “compressible” was not intended to encompass a rigid 4
metal flange. (See id.) 5
Neither the Examiner nor the Requester appears to have articulated 6
any other structure in Palinkas’ connector which might correspond to the 7
“compressible conductive member” recited in claim 8 or claim 16. We do 8
not sustain the rejection of claims 8, 9, 11, 12, 16, 19/8 and 19/16 under 9
either § 102(a) or § 102(e) as being anticipated by Palinkas. 10
11
Fifth Issue 12
Claims 13-19 were added during the course of the reexamination. 13
Claims 13, 16 and 18 are independent. The Examiner adopts the 14
Requester’s proposed rejection of claims 13-19 under § 314 as enlarging the 15
scope of the claims of the patent being reexamined. 16
The preamble of both claim 13 and claim 18 reads, in part, “[a] 17
connector for coupling an end of a coaxial cable and facilitating electrical 18
connection with a coaxial cable interface port having a mating edge.” (App. 19
Br. 29 and 31 (Claims App’x)(italics added for emphasis). In addition, 20
claims 13 and 18 each include the limitation: 21
a conductive member electrically engaged with the 22
flange of the post, wherein the conductive 23
member is compressed between the flange 24
of the post and the mating edge of the 25
coaxial cable interface port to stop axial 26
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progression of the connector onto the 1
coaxial cable interface port. 2
(App. Br. 31 (Claims App’x)(italics added for emphasis)). 3
Prior to the reexamination, the preamble of claim 1 of the ′053 patent 4
read, in part, “[a] connector for coupling an end of a coaxial cable and 5
facilitating electrical connection with a coaxial cable interface port having a 6
conductive surface. (′053 patent, col. 11, ll. 60-62 (claim 1)(italics added for 7
emphasis)). In addition, claim 1 included the limitation: 8
a conductive member electrically engaged with the 9
second end of the post, wherein said 10
conductive member is adapted to physically 11
contact the conductive surface of the 12
interface port and facilitate grounding of the 13
coaxial cable. 14
(′053 patent, col. 12, ll. 13-17 (claim 1) (italics added for emphasis)). 15
The Requester argues that: 16
New independent claim 13 is broader than original 17
independent claim 1. First, claim 1 requires “a 18
coaxial cable interface port having a conductive 19
surface.” New independent claim 13 does not 20
have this limitation. Instead, new independent 21
claim requires only “a coaxial cable interface port 22
having a mating edge.” A conductor product with 23
an interface port that lacks a conductive surface 24
would not infringe original claim 1 but could 25
infringe new claim 13. 26
(Req’r Comments 23; see also Ans. 29). The Requester presents a similar 27
argument regarding claim 18. (Id. at 26-27). The Patent Owner responds 28
only that “claims 13 and 18 limit the scope by requiring the port to include a 29
mating edge because a mating edge is a particular location of the conductive 30
interface port, as opposed to ‘a’ conductive surface of the port. Thus, the 31
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claim scope is actually narrowed.” (App. Br. 25). Because claims 13 and 18 1
encompass an embodiment not encompassed by claim 1 prior to the 2
reexamination, namely, a connector wherein the conductive member is 3
adapted to facilitate grounding of the coaxial cable while physically 4
contacting a mating edge of an interface port which may or may not be a 5
conductive surface, the Requester’s argument is more persuasive. We 6
sustain the rejection of claims 13-15, 18, 19/13 and 19/18 under § 314 as 7
enlarging the scope of the claims of the patent being reexamined. 8
The Examiner separately explains on page 29 of the Answer why 9
claim 16 is subject to rejection as enlarging the scope of the claims of the 10
patent being reexamined. The Patent Owner does not address the 11
Examiner’s reasoning with regard to the rejection of claim 16. For reasons 12
similar to those justifying the rejections of claims 13 and 18 under § 314, we 13
sustain the rejection of claims 16, 17 and 19/16 under § 314 as enlarging the 14
scope of the claims of the patent being reexamined. 15
16
DECISION 17
We AFFIRM the Examiner’s decision rejecting claims 1-19. 18
Requests for extensions of time in this inter partes reexamination 19
proceeding are governed by 37 C.F.R. § 1.956 (2011). 20
21
AFFIRMED 22

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Patent Owner:
1
Hiscock & Barclay LLC 2
One Park Place 3
300 South State Street 4
Syracuse, NY 13202 5
6
7
8
9
10
Third Party Requester: 11
12
Foley & Lardner LLP 13
3000 K Street N.W. 14
Suite 500 15
Washington, DC 20007 16

cu