Ex Parte Belesimo

Board of Patent Appeals and Interferences

Oct 25, 2005

10123447 (B.P.A.I. Oct. 25, 2005)

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for publication and is not binding precedent of the Board.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
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Ex parte ADAM BELESIMO
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Appeal No. 2005-2560
Application No. 10/123,447
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ON BRIEF
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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.
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Application No. 10/123,447
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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
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Application No. 10/123,447
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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
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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,
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Application No. 10/123,447
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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.
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Application No. 10/123,447
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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
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Application No. 10/123,447
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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
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