Ex Parte BelesimoDownload PDFBoard of Patent Appeals and InterferencesOct 25, 200510123447 (B.P.A.I. Oct. 25, 2005) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ADAM BELESIMO ____________ Appeal No. 2005-2560 Application No. 10/123,447 ____________ ON BRIEF ____________ Before RUGGIERO, DIXON, and GROSS, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal from the examiner's final rejection of claims 1-12, which are all of the claims pending in this application. We REVERSE. Appeal No. 2005-2560 Application No. 10/123,447 2 BACKGROUND Appellant's invention relates to a testing assembly and method for identifying network circuits. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below. 1. An apparatus for identifying at least one cable in a cabling system, said cable having a first end and a second end remote from said first end, said cable containing at least a first and second conductive wire, said apparatus comprising: a patch panel having at least one patch jack, said patch jack in electrical communication with said at Ieast first and second conductive wires in said first end of said cable; at Ieast one indicator Iamp, permanently installed in said patch panel adjacent to said patch jack, said indicator Iamp having a first electrical lead in electrical communication with said first conductive wire and a second electrical Iead in electrical communication with said second conductive wire; at Ieast one wall jack in electrical communication with said at least first and second conductive wires in said second end of said at Ieast one cable; and means for applying a test voltage to said at Ieast one wall jack, whereby the applied test voltage at said at Ieast one wall jack causes said indicator Iamp adjacent to said patch jack to Iight, when the patch jack is electrically connected to the wall jack through said first and second conductive wires of said cable. The prior art references of record relied upon by the examiner in rejecting the appealed claims are: Loudermilk 5,704,802 Jan. 6, 1998 Fincher et al. (Fincher) 5,847,557 Dec. 8, 1998 Appeal No. 2005-2560 Application No. 10/123,447 3 Rather than reiterate the conflicting viewpoints advanced by the examiner and appellant regarding the above-noted rejections, we make reference to the answer (mailed Mar. 23, 2004) for the examiner's reasoning in support of the rejections, and to the brief (filed Dec. 15, 2003) for appellant's arguments thereagainst. OPINION In reaching our decision in this appeal, we have given careful consideration to appellant's specification and claims, to the applied prior art references, and to the respective positions articulated by appellant and the examiner. As a consequence of our review, we make the determinations which follow. 35 U.S.C. § 103 In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is established by presenting evidence that the reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having the references before him to make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the Appeal No. 2005-2560 Application No. 10/123,447 4 claimed subject matter is prima facie obvious must be supported by evidence, as shown by some objective teaching in the prior art or by knowledge generally available to one of ordinary skill in the art that would have led that individual to combine the relevant teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must rest on a factual basis with these facts being interpreted without hindsight reconstruction of the invention from the prior art. The examiner may not, because of doubt that the invention is patentable, resort to speculation, unfounded assumption or hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against employing hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed invention from the isolated teachings of the prior art. See, e.g., Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988). When determining obviousness, “the [E]xaminer can satisfy the burden of showing obviousness of the combination `only by showing some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references.’” In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch, Appeal No. 2005-2560 Application No. 10/123,447 5 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). "Broad conclusory statements regarding the teaching of multiple references, standing alone, are not 'evidence.'” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). "Mere denials and conclusory statements, however, are not sufficient to establish a genuine issue of material fact." Dembiczak, 175 F.3d at 999-1000, 50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993). Further, as pointed out by our reviewing court, we must first determine the scope of the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the limitations of independent claim 1. Here, we find that the language of independent claim 1 requires “at Ieast one indicator Iamp, permanently installed in said patch panel adjacent to said patch jack, said indicator Iamp having a first electrical lead in electrical communication with said first conductive wire and a second electrical Iead in electrical communication with said second conductive wire.” Appellant argues that neither Fincher nor Loudermilk teaches or suggests the permanent installation of LED’s into a patch panel. (Brief at pages 3-4.) We agree with appellant and find that the teachings of Loudermilk would not have suggested to those skilled in the art to permanently mount the temporary LED’s in Fincher to be permanent in the patch panel. Fincher teaches the reuse of the LED connectors rather than a permanent affixation. Appeal No. 2005-2560 Application No. 10/123,447 6 Appellant argues that the teachings of Loudermilk teach away from the placement of LED’s in electrical communication with the network wiring due to EMF radiation or transfer and that special shielding is needed. (Brief at pages 5-6.) We agree with appellant that Loudermilk tends to teach away from the modification proposed by the examiner due to EMF considerations and also to the replacement of LED’s. While we find the teachings of Fincher quite good and convincing alone, we find no suggestion to replace the reuseable LED’s which plug into the jacks while the connected wires are still in place in the jack so that the “permanently installed” LED may be read. Additionally, we find that the method of testing set forth in independent claim 7 is remarkably similar to the methodology of Fincher, but for the step of providing a patch panel having the permanent installed indicator lamps in communication with the wiring pairs. Here, we do not find that the step of providing the patch panel limits the method of identifying the cabling system. But for the step of causing the light on the patch panel to light, we find the method to be taught and fairly suggested by Fincher. Yet, the examiner has not bridged that gap in the prior art to establish a prima facie case of obviousness and we cannot sustain the examiner’s rejection since a prima facie case has not been initially established for independent claims 1, 7, and 12 and their dependent claims. CONCLUSION Appeal No. 2005-2560 Application No. 10/123,447 7 To summarize, the decision of the examiner to reject claims 1-12 under 35 U.S.C. § 103 is reversed. REVERSED JOSEPH F. RUGGIERO ) Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT JOSEPH L. DIXON ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) ANITA PELLMAN GROSS ) Administrative Patent Judge ) JLD/gjh Appeal No. 2005-2560 Application No. 10/123,447 8 BARLOW, JOSEPHS & HOLMES, LTD. 101 DYER STREET 5TH FLOOR PROVIDENCE, RI 02903 Copy with citationCopy as parenthetical citation