Ex Parte 8192237 et al

Patent Trial and Appeal Board

Apr 24, 2017

95002400 (P.T.A.B. Apr. 24, 2017)

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.
95/002,400 09/15/2012 8192237 0069611-000002 4779
72742 7590 04/24/2017
Barclay Damon, LLP
Barclay Damon Tower
125 East Jefferson Street
Syracuse, NY 13202
EXAMINER
ANDUJAR, LEONARDO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/24/2017 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)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

CORNING OPTICAL COMMUNICATIONS RF LLC
Requester, Respondent

v.

PPC BROADBAND, INC.
Patent Owner, Appellant
____________________

Appeal 20016-008704
Reexamination Control 95/002,400
Patent US 8,192,237 B21
Technology Center 3900
____________________

Before DANIEL S. SONG, JOSIAH C. COCKS, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued June 5, 2012 to Purdy et al. (hereinafter “the ’237 patent”).
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134 and 315 (2002)
from a Final Rejection of claims 1–5, 7–17, and 20–43. Appeal Brief (“App.
Br.”) 2). Claims 6, 18, and 19 have been canceled. Id. We have jurisdiction
under 35 U.S.C. §§ 134 and 315 (2002).
In support of its appeal, the Patent Owner submitted and relies on its
Appeal Brief, Rebuttal Brief (“Reb. Br.”), and the evidence submitted
therewith, which includes declarations of Charles Eldering, a declaration of
David Jackson, and exhibits. In support of the Examiner’s rejections, the
Requester relies on its Respondent Brief (“Resp. Br.”), and the evidence
submitted therewith, which includes declarations of Ronald Locati,
declaration of Robert Mroczkowski, and exhibits.
We are also informed in the Patent Owner’s Appeal Brief that
numerous patents related to the ’237 patent were subjects of various Inter
Partes Review proceedings at the U.S. Patent and Trademark Office, as
well as numerous judicial proceedings in various forums. App. Br. 1–2. An
oral hearing with the Patent Owner’s representative was held before the
Patent Trial and Appeal Board on March 8, 2017.
The Examiner rejected various claims under 35 U.S.C. § 103(a) as
unpatentable over the following combinations of prior art:
1. Claims 1–5, 7, 14–17, 33, and 34 over Matthews,2 Bence,3 and
Tatsuzuki.4 RAN5 6.

2 U.S. Patent Application Publication No. 2006/0110977.
3 U.S. Patent No. 7,114,990.
4 Japanese Publication 2002-15823 (citations to the English translation of
record).
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2. Claims 24–32, 35, and 36 over Matthews, Bence, Tatsuzuki,
and Stoesz.6 RAN 14.
3. Claims 8–13, 20–23, and 37–43 over Matthews, Tatsuzuki, and
Campbell.7 RAN 28.

We REVERSE.

THE INVENTION
The ’237 patent is directed to a coaxial cable connector having an
electrical continuity member that makes consistent physical and electrical
contact with the coupler of the connector. Title; Abs. Specifically, the ’237
patent relates to “coaxial connectors having electrical continuity members
that extend continuity of an electromagnetic interference shield from the
cable through the connector.” Spec., 1:18–22. When a coaxial connector is
not properly tightened or improperly installed, a loss of ground and
discontinuity may occur between the connector and interface port. Id. at
1:45–53. The continuity member mitigates this problem by “physically and
electrically” contacting both the nut and the post, “thereby extending ground
continuity between components.” Id. at 13:49–54.

5 Right of Appeal Notice mailed August 5, 2015. The Examiner’s Answer
incorporates by reference, the RAN. Answer, PTOL-2291. Hence, we cite
to the RAN herein.
6 U.S. Patent Application Publication No. 2008/0047703.
7 U.S. Patent No. 5,002,503.
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Figure 5 of the ’237 patent is reproduced below:

Figure 5 of the ’237 patent depicts a cut-away view of the elements of
assembled coaxial cable connector 100 having electrical continuity member
70. Id. at 5:66–6:1, 12:16–20. The assembled coaxial connector comprises
threaded nut 30, post 40, connector body 50, continuity member 70, and
connector body sealing member 80. Id. at 7:10–16, 8:8–15. The post may
comprise flange 44, such as an externally extending annular protrusion,
located at the end of the post. Id. at 8:8–10. The flange 44 includes a
rearward facing surface 45 that faces the forward facing surface 35 of the
nut. Id. at 8:10–13. The nut is free to rotate, and has some freedom for axial
movement with respect to the connector body. Id. at 18:14–16. The
continuity member is located at the rearward end of the nut, and “physically
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and electrically contacts both the nut 30 and the post 40, thereby extending
ground continuity between the components.” Id. at 13:49–54.
Figure 24 of the ’237 patent reproduced below shows an alternative
embodiment of a coaxial cable connector:

Figure 24 of the ’237 patent depicts a cut-away view of the elements
of assembled coaxial cable connector having electrical continuity member
770. Id. at 4:4–7, 15:28–30. Continuity member 770 has a sleeve-like
configuration and includes a larger diameter portion that receives a portion
of a connector body 50. Id. at 14:59–64.
Claims 1 and 8 of the ’237 patent are illustrative of the claimed
subject matter, and read as follows (App. Br., Claims App., emphasis
added):
1. A coaxial cable connector comprising:
a connector body having a forward facing surface;
a post, engageable with the connector body, wherein the
post is axially secured to the connector body to prevent the post
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from moving axially with respect to the connector body when
the connector is assembled, wherein the post includes a flange
having
a first rearward facing surface,
an intermediate surface extending axially from the
first rearward facing surface of the flange, and
a second rearward facing surface extending
radially inward from the intermediate surface, the second
rearward facing surface of the flange of the post
configured to face the forward facing surface of the
connector body and form an annular space between the
forward facing surface of the connector body and the
second rearward facing surface of the flange of the post;
a nut, axially rotatable with respect to the post and the
connector body, the nut having
a first end configured for coupling to an interface
port and an opposing second end, and an internal lip, the
internal lip having a first surface facing the first end of
the nut and a second surface facing the second end of the
nut, wherein the annular space formed between the
forward facing surface of the connector body and the
second rearward facing surface of the flange of the post
is disposed axially rearward of the first surface of the
internal lip of the nut; and
a continuity member, disposed axially rearward of the
first surface of the internal lip of the nut and positioned along
the post, the continuity member having
a post contact portion, the post contact portion
positioned and axially secured in the annular space
formed between the forward facing surface of the
connector body and the second rearward facing surface
of the flange of the post so as to make consistent physical
and electrical contact with the second rearward facing
surface of the flange of the post,
a nut contact portion, the nut contact portion
positioned to make consistent physical and electrical
contact with the second surface of the internal lip of the
nut, and
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wherein, the continuity member enhances electrical
grounding continuity through the post and the nut.

8. A coaxial cable connector comprising:
a connector body;
a post, having at least a portion thereof residing within
the connector body, wherein the post includes a flange;
a coupler, axially rotatable with respect to the post and
the connector body, the coupler having a first end configured
for coupling to an interface port and an opposing second end,
an internal lip, the internal lip having a first surface facing the
first end of the coupler and a second surface facing the second
end of the coupler, and an inward facing annular coupler
surface extending axially rearward of the second surface of the
internal lip and having an inner diameter; and
a continuity member, disposed axially rearward of the
second surface of the internal lip of the coupler, wherein the
continuity member makes consistent physical and electrical
contact with the coupler;
wherein at least a portion of the continuity member
extends about and contacts an annular external
body surface of the connector body at a location on the
annular external body surface of the connector body
having an outer diameter greater than the inner diameter
of the inward facing annular coupler surface and that is
not surrounded by the inward facing annular coupler
surface, and
resides axially rearward of a rearward-most end
surface of the coupler between the coupler and the
connector body, and
wherein none of the at least a portion of the continuity
member that extends about and contacts the annular external
body surface of the connector body and resides axially rearward
of the rearward-most end surface of the coupler contacts the
post.

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Independent claim 35 is similar to claim 1, while independent claim
43 is similar to claim 8.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner set forth a sufficient basis for modifying
the coaxial cable connector of Matthews in view of Bence and Tatsuzuki.
2. Whether the Examiner set forth a sufficient basis for modifying
the coaxial cable connector of Matthews in view of Tatsuzuki and Campbell.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Matthews
Matthews generally discloses a coaxial cable connector with at least
one conductive member 70, 80. Matthews ¶¶ 26, 28. The one or more
conductive members facilitate grounding of the coaxial cable. Id. ¶ 9.
Figure 1 of Matthews is reproduced below:
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Figure 1 illustrates a sectional side view of a coaxial cable connector.
Id. ¶¶ 16, 26. The coaxial cable connector includes threaded nut 30, post 40,
connector body 50, mating edge conductive member 70, and connector body
conductive member 80. Id. ¶ 28. The threaded nut 30 may function to
physically secure and advance the connector 100 onto an interface port 20.
Id. ¶ 29. The threaded nut 30 may be formed of conductive material to
facilitate grounding through the nut. Id. The connector body conductive
member 80 provides an electrical coupling between the nut 30 and connector
body 50. Id. ¶ 28. This allows for a physical seal and effective electrical
contact between the connector body 50 and nut 30. Id.
Figure 3 of Matthews is reproduced below:

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Figure 3 of Matthews depicts a sectional side view of post 40. Id.
¶ 30. The post may include a mating edge 49 that makes electrical contact
with the interface port 20 or O-ring 70 to facilitate grounding with the
conductive grounding shield. Id. The post 40 may comprise an outward
flange configured to contact the internal lip of the threaded nut 30. Id.

Bence
Bence discloses another type of electrically conductive grounding
member in a coaxial cable connector. Bence, 3:1–5, 3:14–16. Figures 6A–
6C are reproduced below:

Figure 6A illustrates a partial cross-sectional view of a coaxial cable
with grounding member 601. Id. at 4:48–51; 7:59–8:1. Figures 6B and 6C
illustrate an enlarged view of the grounding member in a side view and plan
view, respectively. Id. at 4:52–56. This grounding member engages both
tubular post 104 and coupling nut 105 in order to provide an electrically-
conductive path. Id. at 6:19–21. The spring action of fingers 603 make
contact with radial surface 604 near the back end of coupling nut 105 that
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faces the front end of coupling nut 105. Id. at 8:10–14. This serves as a
ground path from the coupling nut to the tubular post while allowing the nut
to rotate. Id.

Tatsuzuki
Tatsuzuki describes a coaxial plug that includes a disc-shaped spring.
Tatsuzuki ¶¶ 1, 17. Figure 3 of Tatsuzuki is reproduced below:

Figure 3 illustrates a cross-section view of coaxial plug 1 securely
installed in a coaxial cable connector 50. Id. ¶ 12. Disc-shaped spring 13 is
accommodated in spring housing groove 11e of plug body 11. Id. ¶ 15, Fig.
2. The electrical connection is formed between the ring-shaped part 11c
(Fig. 5) of main plug body 11 and rotary mounting element 12 with the disc-
shaped spring 13 interposed between them. Id. ¶ 17. In the spring housing
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groove 11e, the disc-shaped spring 13 is accommodated so that “it is not
pressed to the point of becoming crushed flat and does not lose its spring
operation.” Id.
Figures 7(a) and 7 (b) are reproduced below:

Figures 7(a) and 7(b) illustrate plan view and side view of disc-shaped
spring 13, respectively. Id. ¶ 17. This disc-shaped spring 13 is formed by a
stamp cutout process of a thin metal plate possessing elasticity, e.g.,
phosphor bronze. Id. The disc-shaped spring 13 includes spring piece 13b
and ring-shaped joining part 13a. Id.

Campbell
Campbell discloses a coaxial cable connector that provides
electromagnetic shielding. Campbell, Abs. Figure 10a of Campbell is
reproduced below:
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Figure 10a illustrates a cross sectional view of an assembled
connector 40 including post 41, nut 42, collar 43 and sleeve 44. Id. at 7:10–
11, 32–43. Sleeve 44 is forcibly pressed into the mating opening of collar
43. Id. at 7:53–54, 64–65. Shoulder 49 of nut 42 is dimensioned to allow
the nut to float free on neck 50 of collar 43. Id. 8:42–45; Fig. 12.

ANALYSIS
We note that only those arguments timely made in the briefs of record
in this appeal have been considered. Other arguments not made or those not
properly presented to the Board have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.67(c)(1)(vii). In addition, while we have
fully considered all of the evidence of record, including the declarations, we
cite to the briefs of the parties in the analysis below, the briefs citing to
specific portions of the evidence in support of the facts and contentions set
forth therein.
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Rejection 1
Claims 1–5, 7, 14–17, 33, and 34 stand rejected as obvious over the
combination of Matthews, Bence, and Tatsuzuki (RAN 6). Claims 2–5, 7,
14–17, 33, and 34 ultimately depend from independent claim 1. In rejecting
claim 1, the Examiner relies on the general cable connector structure of
Matthews, but concedes that Matthews does not disclose the recited “annular
space between the forward facing surface of the connector body and the
second rearward facing surface of the flange of the post.” RAN 11. The
Examiner asserts that Bence discloses this limitation, and concludes that:
It would have been obvious to one of ordinary skill[] in the art
at the time of the invention to make the coaxial cable disclosed
by Matthews having an annular space between the forward
facing surface of the connector body and the second rearward
facing surface of the flange of the post to accommodate a
portion of the continuity member in an axially secured manner
and to provide a ground path from the nut to the post while also
allowing the nut to rotate as suggested by Bence.
Id.
The Examiner also concedes that the combination of Matthews with
Bence does not disclose a continuity member “disposed axially rearward of
the first surface of the internal lip of the nut and positioned along the post,”
and having “a post contact portion positioned and axially secured in the
annular space . . . so as to make consistent physical and electrical contact
with the second rearward facing surface of the flange of the post,” and a nut
contact portion “positioned to make consistent physical and electrical
contact with the second surface of the internal lip of the nut,” as recited in
claim 1. Id.
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The Examiner relies on Tatsuzuki’s disc-shaped spring as
corresponding to the recited continuity member, and as disclosing the recited
positioning and contact with the components of the combination of
Matthews and Bence to conclude that “[i]t would have been obvious to a
person of ordinary skill in the art at the time of invention to modify
Matthews to include the continuity member of Tatsuzuki at a position axially
rearward of the second surface of the internal lip of the coupler.” Id. at 11–
12; see also id. at 49–50.
Hence, the position of the Examiner is that in view of the above
teachings in the prior art, it would have been obvious to modify Matthews to
provide the disc-shaped spring of Tatsuzuki so that a part thereof would be
positioned and axially secured in a newly provided space between the
second rearward facing surface of the flange and the forward facing surface
of the connector body as required by the claims. Id.; see also Resp. Br. 7,
11–13. The Examiner concludes that “[s]uch modification would further
promote electrical continuity by providing an alternate ground path,” which
“would improve the reliability of the connector.” Id. at 12. The Requester
agrees with the Examiner’s findings and conclusion of obviousness. Resp.
Br. 4–8.
The Patent Owner disagrees with the Examiner and argues that the
combination of Matthews, Bence, and Tatsuzuki does not disclose or suggest
the italicized limitations in the reproduced claim 1 supra pertaining to the
annular space and the continuity member secured therein. App. Br. 25. The
Patent Owner argues that while the Examiner and the Requester rely on
teachings of Bence for placement of the annular space and provision of a
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continuity member therein, in contrast to the limitations of claim 1, Bence
discloses a space between a forward face of the connector body and a first
rearward facing surface of the flange (instead of a second rearward facing
surface of the flange), and such space in Bence is disposed axially forward
of the first surface of the internal lip of the nut (instead of rearward of the
first surface of the internal lip of the nut). Id. at 26.
The Patent Owner summarizes that “while the Examiner adopted
Requester’s suggestion that positioning the continuity member in an annular
space . . . would provide a ground path from the nut to the post while
allowing the nut to rotate (RAN at pp. 11, 25), that unsupported theory does
not explain why a person of ordinary skill in the art would create an annular
space in the claimed location.” Id. at 29. According to the Patent Owner,
“[g]iven the absence of any teaching or suggestion of the claimed ‘annular
space,’ all of the Examiner’s and Requester’s theories for why Matthews
could somehow be modified amount to nothing more than impermissible,
uncorroborated, and speculative hindsight reasoning.” Id. at 28.
We are generally persuaded by Patent Owner’s arguments. In our
assessment, while the obviousness issue raised in the present rejection is a
difficult one, based on the facts and arguments in the appeal, the Examiner’s
articulated reason is insufficient to demonstrate why a person of ordinary
skill in the art would have been motivated to combine Matthews with Bence
and Tatsuzuki in the manner suggested. See KSR, 550 U.S. at 418, (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
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support the legal conclusion of obviousness”)). In this regard, we find the
Examiner’s rejection based on the combination and modification of the prior
art to be based on hindsight. KSR, 550 U.S. at 421 (“factfinder should be
aware . . . of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning”); see also id. at 418 (“it can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”).
In accordance with the rejection, in modifying the coaxial connector
of Matthews, one of ordinary skill in the art must selectively extract the
teaching of Bence regarding a space between the forward facing surface of
the connector body and the rearward facing surface of the flange of the post,
and securing the continuity member therein. Moreover, in accordance with
the rejection, one of ordinary skill in the art must selectively extract the
teaching of Tatsuzuki wherein the continuity member is “disposed axially
rearward of the first surface of the internal lip of the nut,” and contacts “the
second surface of the internal lip of the nut.”
Whereas Tatsuzuki is relied upon for positioning a continuity member
rearward of the first surface of the internal lip of the nut, and for the
continuity member to make contact with the second surface of the internal
lip of the nut, the construction of the coaxial connector of Tatsuzuki is
substantially different than that of Bence in that the continuity member of
Tatsuzuki is “accommodated” in a spring housing groove between nut 12
and main plug 11, which generally corresponds to the recited post. As such,
while the continuity member in Tatsuzuki does contact “the second surface
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of the internal lip of the nut,” it is positioned between the post and the
internal lip of the nut, and is not secured between “the forward facing
surface of the connector body” and the post.
While Bence is relied upon for providing an annular space between
the forward facing surface of the connector body and the second rearward
facing surface of the flange of the post, as well as for securing a continuity
member therein, as Patent Owner points out (App. Br. 26), the grounding
member of Bence is forward of the lip of the nut and, therefore, is not
“disposed axially rearward of the first surface of the internal lip of the nut”
as in Tatsuzuki or as claim 1 requires. Figures 6 and 6A–6C of Bence
illustrate the placement of the grounding member forward of the lip of the
nut. See also Bence 7:62–8:15 (“The spring action of the fingers 603 extend
to, and make contact with, a radial surface 604 near the back end of the
coupling nut 105 that faces the front end of the coupling nut”).
The Examiner asserts that the suggested combination and
modifications would have been obvious to one of ordinary skill in the art in
order “to provide a ground path from the nut to the post while also allowing
the nut to rotate” (RAN 11), and asserts that “[s]uch modification would
further promote electrical continuity by providing an alternate ground path,”
which “would improve the reliability of the connector.” Id. at 12; see also
id. at 46. In response to the Patent Owner’s arguments, the Examiner asserts
that Matthews implies that “several locations would be suitable for placing a
continuity member in order to provide a ground path” (RAN 43), and there
are “a finite number of options for placement of the annular space,” which
allows for a grounding path and rotation of the coupling nut. RAN 45.
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While we do not disagree that Matthews implies that other locations
may be suitable for placing a continuity member, or that there may be a
finite number of options for its placement, the specific location and
arrangement recited in the rejected claims is not disclosed. Accordingly,
that implication does not, in and of itself, establish that a person of ordinary
skill in the art would have had adequate reason to modify Matthews for
placement of the disc-shaped spring of Tatsuzuki as suggested by the
Examiner. As to provision of an alternate ground path, this rationale is
undermined by the fact that Matthews already provides one or two
alternative ground paths through the use of one or two conductive o-ring
members. While the Examiner notes that conductive o-ring 70 of Matthews
would not provide a ground path if the nut is not fully tightened, and thus,
asserts that it would have been obvious to use the disc-shaped spring of
Tatsuzuki that addresses this problem (RAN 48), we observe that Matthews
itself addresses this potential problem by providing conductive o-ring
member 80 in alternative embodiments. See Matthews Figs. 1 and 8.
The Examiner further asserts that a person of ordinary skill in the art
“would have found such location desirable,” and “sandwiching” the
continuity member between the post and body:
would allow the continuity member to be axially secured, while
still allowing resilient portions of the continuity member to
make contact with the coupling nut, for example, even when the
coupling nut moves axially with respect to the post.
RAN 44.
However, that assertion essentially states that when Matthews and
Tatsuzuki are combined and modified in the manner suggested, the claimed
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coaxial connector would result. The dispositive question as to this rejection
is not whether various teachings of the prior art can be extracted and
combined to result in the coaxial connector claimed, but rather, whether a
person of ordinary skill would have had a rational reason to make such
combination and modification without the benefit of the Patent Owner’s
disclosure in the ’237 patent. In our view, the Examiner has not explained
sufficiently why a person of ordinary skill in the art, at the time of the
invention, would have been motivated to undergo the combination and
modifications suggested. Instead, the Examiner’s analysis appears to be
based on impermissible hindsight that relies on ex post reasoning to result in
the coaxial connector claimed.
In arguing that the Examiner’s rejection should be maintained, the
Requester points out that in related Inter Partes Reviews, the Board
determined that “[t]here also is a finite number of identified, predictable
solutions, i.e., the Bence patent, Matthews, and Tatsuzuki provide evidence
that one of ordinary skill in the art would have known that there is not a sole
position or location recognized for positioning a continuity member in a
coaxial cable connector; however, there are a limited number of possible
positions for such a continuity member.” Resp. Br. 8, quoting Inter Partes
Review Case IPR2013-00346 (U.S. Patent No. 8,597,041 (“the ’041
patent”)), 2014 WL 6680908 *15 (PTAB 2014).
Indeed, as discussed supra, we do not dispute the assertion that one of
ordinary skill in the art would glean from the art that other locations may be
suitable for placing a continuity member, or that there may be finite number
of options for its placement. However, as also discussed, the specific
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location and arrangement recited in the rejected claims is not disclosed, and
does not, in and of itself, establish that a person of ordinary skill in the art
would have had a reason to modify Matthews in the manner suggested.
We also observe that the Requester’s noted Inter Partes Reviews are
distinguishable from the appeal at hand. In IPR2013-00346, the claim of the
’041 patent at issue was broader in scope than the claims of the ’273 patent
currently on appeal. Specifically, representative independent claim 1 in
IPR2013-00346 required “a continuity member disposed only rearward of
the start of the second end portion of the nut,” wherein “the continuity
member is configured to contact a rearward facing surface of the lip of the
nut and extend between a portion of the post and a portion of the connector
body.” 2014 WL 6680908 *4. The representative independent claim 1 of
the ’041 patent did not include recitations explicitly requiring “an annular
space between the forward facing surface of the connector body and the
second rearward facing surface of the flange of the post,” such a space being
“disposed rearward of the first surface of the internal lip of the nut,” or a
continuity member having a “post contact portion positioned and axially
secured in the annular space” as required by claim 1 of the ’273 patent.
Compare claim 1 of the ’041 patent as reproduced in 2014 WL 6680908 *4
with claim 1 of the ’273 reproduced above.
As such, in IPR2013-00346, the connector of Matthews was modified
to include the disc-shaped spring 13 of Tatsuzuki in the space already
existing between the second surface of the internal lip of the nut (which is
rearward of the start of the second end portion of the nut and rearward of the
post) and the forward facing surface of the connector body. 2014 WL
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6680908 *14–16. As noted by the Requester, in IPR2013-00346, the Board
noted the disclosures of Bence, Matthews, and Tatsuzuki as providing
evidence that one of ordinary skill in the art would have recognized that
there is not a sole position for positioning a continuity member in a coaxial
cable connector and that there are a limited number of possible positions for
such a continuity member. 2014 WL 6680908 *15. However, the Board’s
decision in IPR2013-00346 does not stand for the proposition that it would
have been obvious to provide “an annular space between the forward facing
surface of the connector body and the second rearward facing surface of the
flange of the post,” and positioning and axially securing a post contact
portion of a continuity member therein.
To the contrary, as pointed out by the Patent Owner (Rebuttal Br. 2–
6), a similar issue has already been addressed by the Board in Decision
Denying Institution of Inter Partes Review in IPR2015-01952 (PTAB 2016)
as well as in IPR2015-01955 (PTAB 2016). In both of these Inter Partes
Reviews, the Requester petitioned for institution of a review arguing that it
would have been obvious to modify the coaxial connector of Matthews in
view of Tatsuzuki and Bence8 to provide the recited continuous metallic
electrical ground pathway “by sandwiching a portion of the continuity
member 13 of Tatsuzuki.” Decision Denying Institution of Inter Partes
Review in IPR2015-01952 (“Decision in IPR2015-01952”), Pg. 17
(discussing the proposed rejection based on Matthews, Bence and

8 U.S. Patent No. 5,975,951, issued November 2, 1999 to Burris was also
relied upon by the Petitioner but that reference had no bearing on the issue
presented herein.
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Tatsuzuki); Decision Denying Institution of Inter Partes Review in
IPR2015-01955 (“Decision in IPR2015-01955”), Pg. 16.
The Board declined to institute Inter Partes Reviews, finding Bence
teaches positioning of the grounding (i.e. continuity) member forward of the
lip of the nut, and deficiency in demonstrating a motivation to rearrange the
position of the continuity member at the recited position. Decision in
IPR2015-01952 at 18–20; Decision in IPR2015-01955 at 17–19. The Board
explicitly found that “the modification Petitioner argues is obvious would
require creating a new space in Matthews where none currently exists, i.e.,
between the rearward facing surface of the protrusion of the outward flange
of the post [], and the body.” Decision in IPR2015-01952 at 19–20;
Decision in IPR2015-01955 at 18–19. While the Petitioner asserted that “a
person of ordinary skill would have done so to create an alternative ground
path,” the Board concluded that the “evidence does not support sufficiently
this assertion.” Id. We observe that the rationale relied upon by the
Petitioner in these related Inter Partes Reviews (i.e., “create an alternative
ground path”) is essentially the same as that relied upon by the Examiner in
the present inter partes reexamination to reject claim 1 (i.e., that “[s]uch
modification would further promote electrical continuity by providing an
alternate ground path.” RAN 12).
In a subsequent Decision Denying Petitioner’s Request for Rehearing
in these Inter Partes Reviews, the Board stated, inter alia:
We considered Petitioner’s evidence and arguments, but, for the
reasons stated in the Decision, we found that Petitioner and its
declarant did not address sufficiently why it would have been
obvious to a person of ordinary skill in the art to create the
specific modification to Matthews (including creating a new
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gap), based on Tatsuzuki, Bence, and Burris, or how that
modification fully addresses the claim limitations (including
maintaining the ground pathway while “spaced away”)[].
2016 WL 7047687; see also 2016 WL 7047083.
Accordingly, we are not persuaded by the Requester’s argument based
on prior Inter Partes Review proceedings. Thus, in view of the above
considerations, we reverse the Examiner’s rejection of claims 1–5, 7, 14–17,
33, and 34. The remaining arguments with respect to Rejection 1 are moot.

Rejection 2
The Examiner rejects claims 24–32, 35, and 36 as obvious over the
combination of Matthews, Bence, Tatsuzuki, and Stoesz. RAN 14. Claims
24–34 ultimately depend from independent claim 1, but further require the
continuity member to include a flexible portion with an arcuate portion
extending between first and second end portions, the flexible portion
contacting a second surface of the internal lip of the nut. App. Br., Claims
App. Claim 35 is independent, and claim 36 depends from claim 35. Id. In
addition to requiring “an annular space between the forward facing surface
of the connector body and the second rearward facing surface of the flange
of the post” similar to independent claim 1, claim 35 also requires a flexible
portion similar to claim 24, as well as a second flexible portion. Id.
In rejecting claim 24, the Examiner concedes that the combination of
Matthews, Bence, and Tatsuzuki “does not teach that the first and second
end portions of the flexible portion integrally connecting the arcuate portion
to the post contact portion.” RAN 14. The Examiner asserts that Stoesz
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discloses this limitation. Id. at 14–15. The Requester agrees with the
Examiner’s findings and conclusion of obviousness. Resp. Br. 13–14.
However, Stoesz does not remedy the deficiencies of claim 1 as
discussed above relative to Rejection 1. Moreover, the Examiner’s basis of
rejecting claims 35 and 36 are substantially the same as that of claim 24, the
Examiner further relying on the factual findings and conclusions with
respect to independent claim 1 from which claim 24 depends. RAN 19–27.
Correspondingly, Rejection 2 is reversed for substantially the same reasons
as Rejection 1.

Rejection 3
The Examiner rejects claims 8–13, 20–23, and 37–43 as obvious over
the combination of Matthews, Tatsuzuki, and Campbell. RAN 28. Claims
9–13, 20–23, and 37–42 ultimately depend from independent claim 8, while
independent claim 43 is substantially the same as claim 8. App. Br. Claims
App. These claims recite that “at least a portion of the continuity member
extends about and contacts an annular external body surface of the connector
body at a location on the annular external body surface of the connector
body having an outer diameter greater than the inner diameter of the inward
facing annular coupler surface and that is not surrounded by the inward
facing annular coupler surface.” Id.
In addition to modifying the coaxial connector of Matthews in view of
Tatsuzuki in a manner similar to Rejection 1 to reject these claims, the
Examiner also relies on Campbell for disclosing a coaxial cable connector
with a conductive collar 43, i.e., a conductive member, that “extends about
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and contacts an annular external body surface of the connector body (sleeve
44).” RAN 30; see also id. at 53. According to the Examiner:
The collar 43 [of Campbell] engages the connector body (sleeve
44) to force braid outer conductor 4 against inside surface 43c
of the collar 43, providing good electrical contact; the presence
of the body (sleeve 44) over the barb 45 of post 41 provides
another layer of electromagnetic shielding of central conductor
from the outside environment.
RAN 30 citing Campbell 7:44–48, 64–67.
The Examiner concludes that:
It would have been obvious to a person of ordinary skill in the
art to modify the continuity member of the Matthews/Tatsuzuki
connector so as to extend about and contact an annular external
body surface of the connector body, as shown in the structure of
the collar of Campbell to provide additional electromagnetic
shielding of the central conductor, to improve the reliability of
contact between the continuity member and connector body
and/or provide means for securing the position of the continuity
member with respect to the connector body. For the same
reasons, it would have been obvious to modify the nut and/or
body of Matthews to accommodate the structure of such
extended continuity member.
RAN 32.
The Patent Owner argues that in view of the disclosure, collar 43 and
sleeve 44 of Campbell “form a single piece that functions as a body in the
connector.” App. Br. 11; see also id. at 15–17. According to the Patent
Owner, the Examiner’s rejection “ignores the fundamental differences
between Tatsuzuki’s thin, disc-shaped spring 13 with spring pieces (fingers)
and Campbell’s collar 43.” App. Br. 12. In this regard, the Patent Owner
points out that the collar of Campbell:
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is an elongated, rigid structure that is designed to compress the
sleeve. (Campbell 7:53-63 (“collar 43 under tension ...
circumferentially grips and puts in compression the
circumferential surface ... of sleeve 44.”)) By contrast,
Tatsuzuki discloses that the disc-shaped spring (13) is made
from a “thin metal” with elasticity allowing for bending of the
eight spring pieces (13b). (Tatsuzuki ¶ [0017].)
App. Br. 12–13.
The Patent Owner further argues that collar of Campbell “cannot be
relied upon to teach or suggest the claimed continuity member,” because it
teaches that the collar should be sized to “allow the nut [42] to float free on
the neck 50 . . . of the collar 43.” App. Br. 13 quoting Campbell 8:42–45.
Accordingly, the Patent Owner argues that “Campbell does not provide any
teaching or suggestion on how Tatsuzuki’s disc-shaped spring could be
modified with Campbell’s collar 43.” App. Br. 14.
We generally agree with the Patent Owner. The collar disclosed in
Campbell does not relate, structurally or functionally, to a continuity
member as disclosed in Matthews (i.e., connector body conductive member
80) or Tatsuzuki (i.e. disc-shaped spring 13). In this regard, as the Patent
Owner pointed out, the collar of Campbell is actually dimensioned to
provide “adequate clearance” so as to “allow nut 41 to float and turn freely
when being threaded on a mating connector.” Campbell 8:42–50. Hence,
the collar does not contact the nut to allow for “consistent physical and
electrical contact with the coupler” as required by the rejected claims.
Campbell discloses the structure and function of the collar simply in the
contexts of providing essentially a two-piece connector body consisting of
collar 43 and sleeve 44 that together “form an integral one piece unit,” in
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order to facilitate assembly and installation of a coaxial connector.
Campbell 7:44–65; 8:8–12, 20–25; 10:19–30. Nothing in the disclosure of
Campbell indicates that the collar disclosed is structurally or functionally
relevant to a continuity member for providing a “consistent physical and
electrical contact with the coupler.”
The Requester argues that Tatsuzuki teaches that contact between the
continuity member and nut does not prevent the nut from rotating. Resp. Br.
18–19. However, we view it problematic to rely on the collar 43 of
Campbell as providing the teachings necessary to modify the coaxial
connector of Matthews, but then ignoring how the collar 43 of Campbell
actually functions. In our view, such selective extraction of only certain
teachings while ignoring contrary teachings in the context of the entirety of
Campbell is indicative of hindsight reconstruction. In re Wesslau, 353 F.2d
238, 241 (CCPA 1965) (“It is impermissible within the framework of section
103 to pick and choose from any one reference only so much of it as will
support a given position, to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one of ordinary skill in
the art.”); see also Rebuttal Br. 7, 16–17.
The Examiner’s stated rationale for the rejection is that a continuity
member that is configured to extend about and contact the external surface
of the connector body as recited by the rejected claims would have been
desirable in order to “provide additional electromagnetic shielding of the
central conductor, to improve the reliability of contact between the
continuity member and connector body and/or provide means for securing
the position of the continuity member with respect to the connector body.”
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RAN 32. As to the first basis, while Campbell discloses that sleeve 44
provides another layer of electromagnetic shielding (Campbell 10:50–53),
Tatsuzuki teaches that its disclosed “disc-shaped spring” is formed by
stamping process of a thin metal plate possessing elasticity. Tatsuzuki ¶ 17.
As such, we find speculative, the Examiner’s assertion that additional thin
metal material added to the external surface of the thick connector body of
Matthews (Matthews Fig. 1) would have provided sufficiently improved
shielding effect to motivate one of ordinary skill in the art to pursue the
suggested modification of the disc-shaped spring of Tatsuzuki.
As to the second and third bases, as already discussed supra, the collar
of Campbell does not relate, structurally or functionally, to a continuity
member, and so it speaks little toward improving the reliability of contact
between a continuity member and a connector body, or to securing a
continuity member to a connector body. In this regard, Tatsuzuki’s disc-
shaped spring is merely disclosed as being accommodated in the spring
housing groove between nut 12 and main plug 11. We fail to see how a
person of ordinary skill in the art would glean from Campbell, a reason to
modify the disc-shaped spring of Tatsuzuki so that it would be shaped and
extended to contact the annular external body surface of the connector body
of Matthews.
Accordingly, in view of the above considerations, the Examiner’s
reliance on Campbell, and further modification of a coaxial connector
resulting from the combination of Matthews and Tatsuzuki based thereon,
appears to be based on impermissible hindsight instead of being based on
rational underpinnings. KSR, 550 U.S. at 418; see also id. at 421.
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Correspondingly, we reverse Rejection 3 as well. The remaining arguments
with respect to Rejection 3 are moot.

CONCLUSIONS
The Examiner’s rejections of claims 1–5, 7–17, and 20–43 are
REVERSED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

REVERSED

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PATENT OWNER:
BARCLAY DAMON, LLP
One Park Place
300 South State Street
Syracuse, NY 13202-2078

THIRD PARTY REQUESTER:
BUCHANAN, INGERSOLL & ROONEY PC
PO Box 1404
Alexandria, VA 22313-1404