Ex Parte 7854627 et al

Patent Trial and Appeal Board

May 19, 2014

95001799 (P.T.A.B. May. 19, 2014)

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.
95/001,799 10/31/2011 7854627 38629-14REEX 6884
30010 7590 05/19/2014
The Jackson Patent Group, LLC
1500 Forest Avenue, Suite 212
RICHMOND, VA 23229
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/19/2014 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 and Respondent

v.

ARLINGTON INDUSTRIES, INC.
Patent Owner and Appellant
____________________

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Technology Center 3900

____________

Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
Owner appeals under 35 U.S.C. § 134(b) (2002) from the final
decision of the Examiner adverse to the patentability of claims 1, 2, and 5-
19. We have jurisdiction under 35 U.S.C. § 315 (2002).
We affirm-in-part.

Invention
The ‘627 patent describes an electrical fitting for rapid connection of
an electrical cable to a panel or junction box. Figure 9 of that patent depicts
a perspective view of the leading end of a cable retainer in accordance with
the claimed invention and is depicted below.

As illustrated, Figure 9 depicts a cable retainer having a cable
retaining tang 70, formed within substantially tubular body 66. Tang 70
includes a base portion 67 and two fingers, first finger 73 and second finger
75, which are separated by notch 71.
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Claims
Claims 1, 2, and 5-19 are subject to reexamination and have been
rejected. Claims 1-16 are original patent claims. Claims 17-19 were
proposed new claims; however, claims 17 and 19 were canceled by an
amendment submitted with Owner’s Appeal Brief. (Owner’s App. Br. 1)
Claims 3, 4, and 16 are not subject to reexamination. Claims 1, 15, 16, and
18 are independent.
Claim 1 is illustrative.
1. An electrical fitting for securing an electrical cable to a panel
or junction box comprising:
a connector body including a leading end and a trailing
end;
a fastening arrangement on said leading end for securing
said leading end of said connector body to said panel or said
junction box;
a cavity in said trailing end of said connector body, said
cavity including a wall;
a substantially tubular cable retainer secured within said
cavity, said cable retainer including a leading end and a trailing
end;
a securing arrangement for locking said cable retainer
within said cavity of said trailing end of said connector body;
a single cable retaining tang projecting inward from one
side of said tubular body and angled toward said leading end of
said cable retainer;
said cable retaining tang including a base portion, an end,
and a first finger and a second finger defined by a notch
extending from said end of said cable retaining tang; and
said notch extends at least half of the length of said cable
retaining tang.
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Prior Art
Gretz US 6,177,633 B1 Jan. 23, 2001
(hereinafter “Gretz ‘633”)
Gretz US 6,335,488 B1 Jan. 1, 2002
(hereinafter “Gretz ‘488”)
Keily US 6,555,750 B2 Apr. 29, 2003
(hereinafter “Keily ‘750”)
Keily US 6,872,886 B2 Mar. 29, 2005
(hereinafter “Keily ‘886”)
Auray US 7,057,107 B2 June 6, 2006
Gretz US 7,161,095 B1 Jan. 9, 2007
(hereinafter “Gretz ‘095”)

Owner’s Contentions
Owner contends that the Examiner erred in entering the following
grounds of rejections against claims 1, 2, 5-15 and 18: (Owner’s App. Br. 4)
A. The rejection of claims 1, 2, 5-15 and 18 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as his invention;1
B. The rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by
either Kiely ‘886; Auray; or, Kiely ‘750;
C. The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over either Kiely ‘886 and Gretz ‘995; Auray and Gretz ‘095; or, Kiely ‘750
and Gretz ‘095; and
D. The rejections of claims 2 and 5-14 under 35 U.S.C. § 102(b) or
under 35 U.S.C. § 103(a) as anticipated by or unpatentable over various
references.

1 Owner expressly lists claims 3 and 4 as rejected under 35 U.S.C. § 112,
second paragraph; however, claims 3 and 4 were not subject to
reexamination and will not be addressed herein.
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Requester’s Contentions
Requester contends the Examiner erred in failing to adopt the
following proposed rejections of claims 18 and 19: (Requester’s App. Br.
5)2
A. The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable
over Kiely ‘886 and either Gretz ‘488 or Gretz ‘633;
B. The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable
over Auray and either Gretz ‘488 or Gretz ‘633; and
C. The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable
over Kiely ‘750 and either Gretz ‘488 or Gretz ‘633.

ANALYSIS
Owner’s Appeal
Representative Claim
Owner relies on the limitations of claim 1 and does not provide
arguments for separate patentability for any other claim. Accordingly, we
will decide the appeal on the basis of claim 1 alone. See 37 C.F.R.
§ 41.67(c)(1)(vii).
§112 Second Paragraph Rejections
The Examiner has rejected claims 1, 2, 5-15 and 18 under 35 U.S.C.
§112, second paragraph, as failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
Specifically, the Examiner finds the Owner’s terminology “a single cable

2 Owner has canceled claim 19 and consequently, Requester’s arguments
regarding claim 19 will not be addressed herein.
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retaining tang projecting inward from one side of said tubular body” to be
unclear, positing that a “tubular body” does not necessarily include “sides.”
(RAN 9-10)
Owner argues that a person having ordinary skill in the art, upon
reference to the Specification of the ‘627 patent would appreciate that the
disputed language recites that the tang projects inward from one
circumferential portion (i.e. one side) of the tubular body. Owner’s App. Br.
5-6.
In further support for this position, Owner points out that Kiely ‘886,
a reference cited by Requester and the Examiner, recites at Column 28, lines
32-36, that the arm members described therein are “formed on opposed sides
of the sleeve member. . .”
It is our opinion that one having ordinary skill in this art would
reasonably comprehend what is meant by “one side of said tubular body”
and that the subject language does point out and distinctly claim with
reasonable particularity the subject matter which the Owner regards as the
invention. Accordingly, we do not sustain the Examiner’s rejection of
claims 1, 2, 5-15, and 18 under 35 U.S.C. §112, second paragraph.

§102 Rejections of Claim 1
The Examiner has rejected claim 1, inter alia, as anticipated under
35 U.S.C. § 102(b) by one of Kiely ‘886, Auray, or Kiely ‘750. For
example, the Examiner finds that Kiely ‘886 discloses two cable retaining
tangs wherein each tang includes a pair of fingers, with one pair of fingers
labeled 205 and 206. (RAN 19)
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In each case Owner urges the cited references disclose multiple
adjacent tangs, and not a single tang having a first and second fingers.
(Owner’s App. Br. 6-12) Owner’s argument is best understood by reference
to Figure 9 of the ‘627 Patent which is depicted below:

As illustrated, Figure 9 depicts a perspective view of the leading end
of a cable retainer. The cable retainer includes a tang 70 includes a base
portion 67 and two fingers; first finger 73 and second finger 75, which are
separated by notch 71.
In contrast, Owner argues that Kiely ‘886, for example, teaches two
individual adjacent tangs, as depicted below in Figure 42 of Kiely ‘886:
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Kiely ‘886 describes Figure 42 as including “arm members 205, 206,
207 and 208, each of which are constructed for extending inwardly. . .”
wherein “arm members 205 and 206 are formed directly adjacent each other
in juxtaposed, spaced, cooperating relationship” and wherein the arms “are
preferably constructed with sloping, intermediate sections and sloping, end
sections. . .” (Kiely ‘886, Col. 27, ll. 14-26)
Owner argues that Kiely ‘886 therefore depicts two adjacent tangs and
not a tang having first and second fingers, as claimed. In support of this
position Owner argues that Kiely ‘886 discloses an unlabeled line at the base
of each tang illustrated within Figure 42 of Kiely ‘886, which Owner asserts
serves as a demarcation between each of the two tangs and the body of
sleeve member 22. (Owner’s App. Br. 7-9)
Owner’s contentions raise the issue of whether any of the cited
references disclose a “retaining tang including a base portion, an end, and a
first finger and a second finger defined by a notch extending from said end
of said cable retaining tang. . .” as set forth in claim 1.
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We find the Examiner’s position persuasive. We find unpersuasive
Owner’s alleged purpose of demarcation for an unlabeled line within Figure
42 of Kiely ‘886, particularly in the absence of any description of that
purpose within the description of Figure 42. Further, within Figure 42, we
note that the “notch” illustrated between arm members 205 and 206 is
shorter in length than the “notch” on either side, which separates the two
arm members from sleeve member 22. We find this persuasive of the
Examiner’s position that elements 205 and 206 can be reasonably interpreted
as being portions of a single “tang.”
Consequently, we find the Examiner did not err in rejecting claim 1 as
anticipated by Kiely ‘886. In view of our conclusion that the Examiner did
not err in rejecting the appealed claim 1 based on Kiely ‘886, we do not
address any of the other rejections upon which the Examiner relies. See In
re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

§103 Rejections of Claim 15
The only basis for Owner’s appeal of the rejection of claim 15 as
unpatentable under 35 U.S.C. §103 is the alleged failure of the Gretz ‘095
reference to cure the asserted deficiency of the primary references with
respect to the disclosure of a single tang having two fingers elements, as
argued above. (Owner’s App. Br. 13)
We have addressed this alleged deficiency above, with respect to
Kiely ‘886, and consequently we find no error in the Examiner’s rejection of
Claim 15 as unpatentable under 35 U.S.C. §103 over Kiely ‘886 in
combination with Gretz ‘095. Again, based upon this conclusion we do not
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address any of the other rejections upon which the Examiner relies. See In
re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

Rejection of Claims 2 and 5-14
Owner submits no separate and particular arguments with respect to
the rejections of claims 2 and 5-14. Consequently, we sustain the
Examiner’s rejections of these claims.

Conclusions Regarding Owner’s Appeal
We do not sustain the Examiner’s rejections of claims 1, 2, 5-15, and
18 under 35 U.S.C. §112, second paragraph. However, we do sustain the
Examiner’s rejections of claims 1, 2, and 5-15, variously under 35 U.S.C.
§102 and 35 U.S.C. §103, for the reasons set forth above.

Requester’s Appeal
Requester appeals the Examiner’s failure to adopt Requester’s
proposed rejections of Claim 18 under 35 U.S.C. § 103(a) as unpatentable
over one of Kiely ‘886, Auray, or Kiely ‘750, in view of Gretz ‘488 and
Gretz ‘633. (Requester’s App. Br. 5)
Requester urges that either Gretz ‘488 or Gretz ‘633 disclose the
feature of “said cable retaining tang pressing said electrical cable against
said wall of said connector body thereby locking said electrical cable
between said cable retaining tang and said wall,” as recited in claim 18.
Requester urges that every other feature within claim 18 is disclosed by one
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of Kiely ‘886, Auray, or Kiely ‘750, as applied above to claim 1.
(Requester’s App. Br., Claim Charts 1, 3 and 5)
The Examiner declined to adopt this suggested rejection, finding that
no combination of Kiely ‘886 with Gretz ‘488 or Gretz ‘633 would be
proper. The Examiner found that substituting the cable retaining tangs of
either Gretz ‘488 or Gretz ‘633 into Kiely ‘886 would fail to disclose the
features of Owner’s claimed “tang.” Further, the Examiner found that
simply repositioning the tangs of Kiely ‘886 into Gretz ‘488, or reduced to a
single tang within Gretz ‘633 would likewise fail to show or suggest the
claimed invention. (RAN 69-72)
The Examiner made similar findings with respect to Requester’s
suggested rejection of Claim 18 as unpatentable over Auray, as applied to
Claim 1, with Gretz ‘488 or Gretz ‘633, (RAN 74-75), as well as the
suggested rejection of Claim 18, as unpatentable over Kiely ‘750, as applied
to Claim 1, with Gretz ‘488 or Gretz ‘633. (RAN 75-76)
We find that substitution of one set of the two fingered tangs of Kiely
‘886 into Gretz ‘488 or Gretz ‘633 would have constituted a simple
substitution of an art-recognized equivalent. Kiely ‘886 teaches locking an
electrical cable within a connector body by wedging the cable between a pair
of two fingered tangs from opposite sides of the connector body, while the
Gretz references both teach locking an electrical cable within a connector
body by wedging the cable between one tang and the wall of the connector
body.
"[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
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field, the combination must do more than yield a predictable result" to be
nonobvious. KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing
United States v. Adams, 383 U.S. 39, 50-51 (1966)).
[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill. . . . [A] court must ask
whether the improvement is more than the predictable use of prior-art
elements according to their established functions."

Id. at 417.
In the present situation, the utilization of a single two fingered tang to
retain an electrical cable by pressing the cable against the wall of a
connector body, as set forth in claim 18, yields no more than a predictable
result. Consequently, we reverse the Examiner’s decision not to adopt the
Requester’s proposed rejection of Claim 18 under 35 U.S.C. § 103(a) as
unpatentable over of Kiely ‘886, in view of Gretz ‘488 and Gretz ‘633. In
view of our conclusion that the Examiner erred in failing to adopt the
requested rejection of Claim 18 based on Kiely ‘886, Gretz ‘488 and Gretz
‘633, we do not address any of the other requested rejections of Claim 18.
See In re Gleave, 560 F.3d 1331, 138 (Fed. Cir. 2009).

Conclusions Regarding Requester’s Appeal
The Examiner’s decision not to adopt the proposed rejections of claim
18 is not sustained.

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DECISION
The Examiner’s decision adverse to the patentability of claims 1, 2,
and 5-15 is affirmed.
The Examiner’s decision adverse to the patentability of claim 18 is
reversed.
The Examiner’s decision to not adopt the proposed rejection of
claim 18 is reversed.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection. Section 41.77(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.” That
section also provides that Patent Owners, 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 proceeding 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. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.

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In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37
C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of
this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
This is final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

AFFIRMED-IN-PART

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Patent Owner:

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

Third Party Requester:

BRIGGS AND MORGAN P.A.
2200 IDS Center
80 South 8th Street
Minneapolis, MN 55402