10860199 (B.P.A.I. Dec. 20, 2011)

Ex Parte Balsells

Board of Patent Appeals and InterferencesDec 20, 2011

10860199 (B.P.A.I. Dec. 20, 2011)

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. 10/860,199 06/02/2004 Peter J. Balsells 3058 1271 7590 12/21/2011 WALTER A. HACKLER, Ph.D. PATENT LAW OFFICE SUITE B 2372 S.E. BRISTOL STREET NEWPORT BEACH, CA 92660-0755 EXAMINER BURCH, MELODY M ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 12/21/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte PETER J. BALSELLS ____________________ Appeal 2010-000685 Application 10/860,199 Technology Center 3600 ____________________ Before: LINDA E. HORNER, JOHN C. KERINS, and PHILLIP J. KAUFFMAN, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000685 Application 10/860,199 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 36. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellant’s claimed invention “relates to connectors and is more directly related to the use of canted coil springs in connecting a piston and a housing for mechanical and electrical connection purposes.” Spec. 1:8-11. Independent claim 1, the sole independent claim on appeal, is representative: 1. A spring latching connector comprising: a housing having a bore therethrough; a piston slidably received in said bore; a groove formed in one of said bore and piston; and a coil spring disposed in said groove for latching said piston and housing together, said groove being sized and shaped for controlling, in combination with a spring configuration, disconnect and connect forces of said spring latching connector. REJECTIONS Appellant seeks review of the rejection of claims 1-36 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over, any one of the following Balsells patents. Balsells ‘210 Balsells ‘821 Balsells ‘390 Balsells ‘276 Balsells ‘348 Balsells ‘842 US 4,678,210 US 4,974,821 US 5,082,390 US 5,139,276 US 5,411,348 US 5,545,842 Jul. 7, 1987 Dec. 4, 1990 Jan. 21, 1992 Aug. 18, 1992 May 2, 1995 Aug. 13, 1996 Appeal 2010-000685 Application 10/860,199 3 ISSUE Whether the Examiner has presented a prima facie case that claim 1 is anticipated by, or obvious over the Balsells references. ANALYSIS Regarding anticipation by the Balsells references, the Examiner found “[e]ach one of the references appears to include the structural features directed to a piston, groove and spring as broadly recited.” Ans. 3. Appellant argues that the Examiner has not made a prima facie case of anticipation. App. Br. 4-5. While a prima facie case is merely a procedural device that enables an appropriate shift of the burden of production, the rejection may not be so uninformative as to prevent Appellant from recognizing and seeking to counter the grounds for rejection. In re Jung, 637 F.3d 1356, 1362-3 (Fed. Cir. 2011) (citing Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)) (holding that a prima facie case was met by a rejection that identified the statutory basis (anticipation), the prior art basis (the reference), and identified where each limitation of the rejected claims is shown in the prior art reference by specific column and line number). Here, the Examiner provides the statutory basis and the prior art basis. However, the statement that each of the six references “appears to include the structural features directed to a piston, groove and spring,” does not adequately put Appellant on notice for the purpose of seeking to counter the rejection.1 See Ans. 3. The rejection does not so much as identify which of 1 The Examiner relies on Balsells ‘842 (Ans. 5) to provide factual support for the rationale of the obviousness rejection, but it is not relied upon for the anticipation rejection. Appeal 2010-000685 Application 10/860,199 4 the numerous embodiments of the six references corresponds to the subject matter of claim 1. Thus, Appellant was prevented from recognizing and seeking to counter the rejection, we have no factual findings to review, and the Examiner has not made a prima facie case of anticipation regarding claim 1. Alternatively, the Examiner rejected claim 1 as obvious over each of the Balsells references. The Examiner concluded that if any differences exist between the instant claims and the references, it would have been obvious to have modified the shape or material or configuration of the coil springs of the Balsells' patents as desired since it has been held to be within the general skill of a worker in the art to select the size, shape, configuration to adapt the spring to various adaptations and environments absent evidence in the instant specification that the particular configurations, sizes, shapes, etc are critical to the invention. Ans. 3-4. As with the anticipation rejection, this rejection does adequately put Appellant on notice for the purpose of seeking to counter the rejection. Further, the rejection is deficient in that it does not identify how the prior art differs from the subject matter of claim 1. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-407 (2007) (citing with approval the underlying factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). Thus, the Examiner has not made a prima facie case of obviousness regarding claim 1. As such, we cannot sustain the rejection of claim 1, or its dependent claims 2-36. CONCLUSIONS The Examiner has not presented a prima facie case that claim 1 is anticipated by, or obvious over the Balsells references. Appeal 2010-000685 Application 10/860,199 5 DECISION We reverse the Examiner’s decision to reject claims 1-36. REVERSED mls