Ex Parte Ashida et al

Board of Patent Appeals and Interferences

Mar 24, 2010

10523829 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIGERU ASHIDA and TOMOYUKI SHINOHARA
____________

Appeal 2009-002582
Application 10/523,829
Technology Center 2800
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Decided: March 24, 2010
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claims 1, 13, and 18 are representative of the subject matter on appeal
and are set forth below:
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1. An electrical connector comprising:

a terminal fixed to a connector housing;

a conductor exposed from a covering and having a connection portion
connected to a connection portion of the terminal;

a foam element at a foam ratio selected to substantially match the
impedance of the connection portion with the covering of the conductor,
located around respective connection portions of the conductor and the
terminal.

13. An electrical connector comprising:

a cable comprising:

an electrical wire including a conductor exposed from a first covering;

a drain wire arrayed parallel to the electric wire; and

a jacket holding the electric wire and the drain wire;

a connection terminal having a connection portion connected to an
end of the conductor;

an earth terminal having a connection portion connected to an end of
the drain wire;

a connector housing receiving the connection terminal and the earth
terminal;

a second covering located around the foam resin, and

a foam resin having a foam ratio selected to substantially match the
impedance of the connection portion with the first and second coverings of
the conductor, located around the end of the conductor, the connection
portion of the connection terminal, the end of the drain wire and
the connection portion of the earth terminal.

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18. A method of fabricating a connector for a signal transmission
cable, comprising:

welding a terminal and a cable conductor to each other for connection;

forming a pair of foam resin covering members preliminarily formed
into shapes which conform to an upper half shape and a lower half shape of
connection portions of the terminal and the cable conductor;

fitting said pair of covering members around the connection portions
of the terminal and the cable conductor;

molding a resin for a connector housing around the terminal, the
covering members, and the cable conductor exposed from a covering, thus to
form the connector housing in a predetermined shape.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hutchison 4,070,084 Jan. 24, 1978
Knapp 4,521,064 Jun. 4, 1985
Beamenderfer 4,834,674 May 30, 1989
Bates 4,864,081 Sep. 5, 1989
Urushibata 5,057,650 Oct. 15, 1991
Ichikawa 5,780,774 Jul. 14, 1998
Moore 6,064,003 May 16, 2000

THE REJECTION(S)
1. Claims 1-4, 6-10, and 14-16 are rejected under 35 U.S.C. § 103(a) as
being obvious over Moore in view of Knapp.
2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being obvious over
Moore in view of Knapp, and further in view of Hutchinson.
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as being obvious over
Moore in view of Knapp and further interview of Urushibata.
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4. Claim 12 is rejected under 35 U.S.C. § 103(a) has been obvious over
Moore in view of Knapp and further in view of Bates.
5. Claims 13 and 17 are rejected under 35 U.S.C. § 103(a) over
Beamenderfer in view of Knapp.
6. Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) over Ichikawa
in view of Moore and Knapp.
7. Claim 19 is rejected under 35 U.S.C. § 103(a) over Ichikawa in view
of Bates and Knapp.

We note that the Examiner has withdrawn the § 112, second
paragraph rejection. Ans. 13.

ISSUE
Rejections 1-4
Have Appellants identified error in the Examiner’s determination that
Moore in view of Knapp suggests the aspect of claim 1 of “a foam ratio
selected to substantially match the impedance of the connection portion with
the covering of the conductor”?

Rejection 5
Have Appellants identified error in the Examiner’s determination that
Beamender in view of Knapp suggests the aspect of the claims of “a foam
ratio selected to substantially match the impedance of the connection portion
with the covering of the conductor”?

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Rejection 6
Have Appellants identified error in the Examiner’s determination that
Ichikawa in view of Moore and Knapp suggests the aspect of the claim 20 of
“a foam ratio selected to substantially match the impedance of the
connection portion with the covering of the conductor”, as well as the aspect
of claim 18 of "forming a pair of foam resin covering members preliminarily
formed into shapes", "fitting said pair of covering members around the
connection portions", and "molding a resin for a connector housing around
the terminal, the covering members and the conductors"?

Rejection 7
Have Appellants identified error in the Examiner’s determination that
Ichikawa in view of Bates and Knapp suggests the aspect of claim 19 of “a
foam ratio selected to substantially match the impedance of the connection
portion with the covering of the conductor”?

FINDINGS OF FACT
Rejections 1-4
We refer to the Examiner’s findings regarding Moore and Knapp on
pages 5-6 of the Answer.

Rejection 5
We refer to the Examiner’s findings regarding Beamenderfer and
Knapp on pages 8-10 of the Answer.

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Rejection 6
The additional fact findings are:
Ichikawa teaches a pair of synthetic resin covering members (4, 9)
which are fitted around connection portions. Ichikawa, Figure 3. Moore
teaches a resin connector housing (74) that is fitted around a terminal, the
covering members and the conductors. Moore, Figure 8.
Ichikawa discloses welding a lead wire 1 (a terminal) and a flat cable
2 (a cable conductor) to each other for connection, and forming the resin
material 9, preliminarily formed into a shape, which conforms to an upper
half shape. Ichikawa, Figure 3, col. 3, ll. 26-39.
Rejection 7
The additional fact findings are: we refer to the Examiner’s findings
on pages 12-13 of the Answer.
PRINCIPLES OF LAW
It is the claims that define the invention and, therefore, the absence in
the prior art of subject matter not included in the claims cannot be a basis for
patentability. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d
1560, 1571 (Fed. Cir. 1988); see In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (“Many of appellant's arguments fail from the outset because . . . they
are not based on limitations appearing in the claims.”).
“As long as some motivation or suggestion to combine the references
is provided by the prior art taken as a whole, the law does not require that
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the references be combined for the reasons contemplated by the inventor.”
In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
Where the claimed and prior art products are identical or substantially
identical in structure or composition, or are produced by identical or
substantially identical processes, a prima facie case of either anticipation or
obviousness has been established. In re Best, 562 F.2d 1252, 1255 (CCPA
1977). “When the PTO shows a sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.” In re Spada, 911F.2d 705, 709 (Fed. Cir.
1990). Therefore, the prima facie case can be rebutted by evidence showing
that the prior art products do not necessarily possess the characteristics of
the claimed product. In re Best, 562 F.2d at 1255. See also Titanium Metals
Corp. v. Banner, 778 F.2d 775, 780-81 (Fed. Cir. 1985).

ANALYSIS
Rejections 1-4
For these rejections, we confine our discussion to claim 1 (claims 8,
14, and 15 have similarly recited features) which contains limitations
representative of the arguments made by Appellants, pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2007). Also, our focus is on the combination of Moore in
view of Knapp (Appellants’ arguments with regard to the other secondary
references are essentially that these other secondary references do not cure
the alleged deficiencies of the combination of Moore in view of Knapp).
Appellants argue that the combination does not suggest "a foam ratio
selected to substantially match the impedance of the connection portion with
the covering of the conductor" as recited in claim 1. Appellants allege that
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Moore fails to teach or suggest any foam element. Appellants argue that
“Knapp, while disclosing a foam material, only teaches or suggests the use
of the foam material as a seal against water penetration and ice formation.
(col. 3, ll. 32-38).” Br. 18.
Appellants also argue that whether or not the applied art has a same or
similar structure is not relevant because the applied art does not suggest
selecting a foam ratio to substantially match the impedance of the
connection portions with the covering of the conductor. Br. 17. Appellants
then allege that the Examiner relies on Appellants’ Specification to provide
support for the rejection.1 Br. 18.
We are not convinced by the above-mentioned arguments for the
following reasons.
As explained by the Examiner on pages 16-17 of the Answer, it is the
Examiner’s position that because Knapp teaches a foam element having a
foam ratio greater than 20%, specifically 35%-55%, to provide a balance
between moisture-proof qualities and the compressibility of the material, one
skilled in the art would have desired to provide the foam element (72) of
Moore with such a foam ratio so that the moisture-proof qualities of the
foam element will not be reduced or eliminated. Thus, the Examiner does
not rely upon the Specification in the matter argued by Appellants. Also, the

1 Appellants state that the Examiner analogizes that because Knapp
teaches that the foam element should have a foam ratio of 20% or more,
Knapp somehow discloses selecting a foam element at a foam ratio to
substantially match the impedance of the covering of the conductor because
Appellants’ Specification (page 12, ll. 5-7) indicates that a foam ratio of
20% or more would have such properties.
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stated motivation is appropriate. In re Beattie, 974 F.2d at1312. The
Examiner then states because the structure of the combination is the same or
similar, the structure will “substantially match the impedance of the
connection portion with the covering of the conductor”. We agree. In re
Spada, 911F.2d at 709; In re Best, 562 F.2d at 1255; Titanium Metals Corp.,
778 F.2d at 780-81.
In the Reply Brief, Appellants then argue that the Examiner
improperly deduces that Knapp, which teaches the benefits of a foam ratio of
at least 20%, must necessarily disclose that the foam ratio matches the
covering of the conductor. Appellants assert that the fallacy of the
Examiner's logic is that merely providing a foam ratio above 20% does not
necessarily match the impedance of the foam element to the covering of the
conductor. Rather, there would be only a subset of values within the foam
ratio in excess of 20% that may meet this criterion, e.g., 41-43 % (depending
on the impedance of the covering).
We are not convinced by the above-mentioned argument for the
following reasons.
Firstly, Appellants have not provided any evidence that there would
be only a subset of values within the foam ratio in excess of 20% that would
provide a substantially matching impedance. Secondly, Knapp discloses
foam ratios entirely within Appellants’ claimed range, and Appellants have
not provided any evidence that the polyurethane foams of Moore having the
foam ratio would not have substantially matching impedance.2 Finally,
Appellants’ argument is not commensurate in scope with the claims (the

2 The claims recite a foam ratio selected to "substantially match” the
impedance.
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claims do not recite a subset of values of from 41 to 43% and the claims
only require that). Constant v. Advanced Micro-Devices, Inc., 848 F.2d at
1571; In re Self, 671 F.2d at 1348.
In view of the above, we affirm rejections 1-4.
Rejection 5
Appellants state that they argue this rejection for the same reasons set
forth above with regard to the rejection of claim 1 under Moore in view of
Knapp. Br. 22. Appellants allege that Beamenderfer fails to compensate for
the above mentioned deficiencies and that this combination fails to teach "a
foam ratio selected to substantially match the impedance of the connection
portions with the covering of the conductor," as recited in claims 13 and 17
Appellants state that Knapp fails to teach or suggest this feature, and that
Beamenderfer is silent with regard to any foam element.
Appellants’ arguments do not point to any error regarding the
Examiner’s fact findings made on pages 8-10 of the Answer. Furthermore,
while Appellants argue that Beamenderfer is silent regarding any foam
element, the Examiner relies upon Knapp for this teaching.
Appellants then argue that Knapp fails to suggest the claimed feature
of "a foam ratio selected to substantially match the impedance of the
connection portions with the covering of the conductor". We disagree, and
refer to our analysis, supra, regarding the teachings of Knapp as they relate
to the aspect of Appellants’ claim directed to the matching of impedance.
In view of the above, we affirm the rejection of claim 5.
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Rejection 6
Appellants allege that one of ordinary skill in the art would not be
motivated to replace the resin members of Ichikawa with the foam members
of Moore to provide a water-tight seal over the connection portion as
proposed by Examiner. Appellants argue that no portion of Ichikawa
implies that a water-tight seal is desired. Appellants also argue that
replacing the resin with foam would destroy the high strength between the
connection portions and the conductors as taught by Ichikawa. Br. 22-24.
We are not convinced by the above-mentioned arguments for the
following reasons.
First, as stated by the Examiner on page 19 of the Answer, the
Examiner did not propose to replace the resin members of Ichikawa with the
foam members of Moore. Rather, the resin members of Ichikawa were
modified to be foamed resin as taught by Moore to provide a water-tight
seal. Also, as stated by the Examiner on pages 19-20 of the Answer,
modifying the resin members of Ichikawa to be foamed resin members
would not destroy the high strength between the connection portion and the
conductors because the modified foamed resin members of Ichikawa are
further covered by a connector housing.
Appellants then argues that even if combined as proposed by the
Examiner, the combination fails to teach or suggest "forming a pair of foam
resin covering members preliminarily formed into shapes", "fitting said pair
of covering members around the connection portions" and "molding a resin
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for a connector housing around the terminal, the covering members and the
conductors". Appellants also argue that the resin material 9 of Ichikawa is
not preliminarily formed and then fitted around the connection portions. Br.
24.
We are not convinced by the above-mentioned arguments for the
following reasons.
As stated by the Examiner on page 20 of the Answer, the combination
of Ichikawa and Moore teaches a pair of foam resin covering members (4, 9)
which are fitted around the connection portions, and a resin connector
housing (74 of Moore) is fitted around the terminal, the covering members
and the conductors. Claim 18 recites welding a terminal and a cable
conductor to each other for connection, and forming a pair of foam resin
covering members preliminarily formed into shapes. In other words, the
welding is formed before the forming of the upper half. Ichikawa discloses
welding the lead wire 1 (a terminal) and the flat cable 2 (a cable conductor)
to each other for connection, and forming the resin material 9, preliminarily
formed into a shape, which conforms to an upper half shape.
In view of the above, Appellants have not identified error in the
Examiner’s determination regarding Rejection 6.
Rejection 7
Appellants do not identify error in the Examiner’s findings made on
pages 12-13 of the Answer. Rather, Appellants state that they traverse this
rejection for the same reasons presented with regard to claim 1. Appellants
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argue that Knapp in combination with Bates and Ichikawa is deficient in that
there is no motivation to match any impedance values. Br. 25.
For the reasons expressed, supra, regarding the teachings of Knapp as
related to the claimed impedance matching, we affirm this rejection of claim
19.
CONCLUSIONS OF LAW
Rejections 1-4
Appellants have not identified error in the Examiner’s determination
that Moore in view of Knapp suggests the aspect of claim 1 of “a foam ratio
selected to substantially match the impedance of the connection portion with
the covering of the conductor”.

Rejection 5
Appellants have not identified error in the Examiner’s determination
that Beamenderfer in view of Knapp suggests the aspect of the claims of “a
foam ratio selected to substantially match the impedance of the connection
portion with the covering of the conductor”.

Rejection 6
Appellants have not identified error in the Examiner’s determination
that Ichikawa in view of Moore and Knapp suggests the aspect of claim 20
of “a foam ratio selected to substantially match the impedance of the
connection portion with the covering of the conductor”, as well as the
aspects of claim 18 of "forming a pair of foam resin covering members
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preliminarily formed into shapes", "fitting said pair of covering members
around the connection portions", and "molding a resin for a connector
housing around the terminal, the covering members and the conductors.
Rejection 7
Appellants have not identified error in the Examiner’s determination
that the aspect of claim 19 of “a foam ratio selected to substantially match
the impedance of the connection portions with the covering of the
conductor” is suggested by the applied art.

DECISION
Each rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
AFFIRMED

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