Ex Parte Daoud

Board of Patent Appeals and Interferences

Nov 25, 2003

09405872 (B.P.A.I. Nov. 25, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BASSEL H. DAOUD
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Appeal No. 2002-0507
Application No. 09/405,872
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ON BRIEF
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Before GROSS, BARRY, SAADAT, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-10 and 12-19. The appellant appeals
therefrom under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue on appeal relates to telephone connectors. According to
the appellant, such connectors are "used where wire enters buildings as a termination
for telephone cables." (Spec. at 1.) He adds,"wave solder application of a printed
circuit board on a connector provides specific problems which have resulted in very
poor welding. More particularly, unless the printed circuit board is properly positioned
Appeal No. 2002-0507 Page 2
Application No. 09/405,872
on the pins of the connector, including maintaining proper height and planer disposition,
a proper wave solder application cannot be obtained." (Appeal Br. at 4.)
Accordingly, the appellant's invention is a bracket for holding a printed circuit
board ("PCB") to a connector "in proper orientation for the wave solder application."
(Id.) More specifically, the bracket includes a shelf for supporting the PCB above the
connector and a latch for retaining the PCB on the shelf. The bracket is screwed to the
connector via a hole in the bracket. (Spec. at 1-2.)
A further understanding of the invention can be achieved by reading the following
claim.
1. A bracket for holding a printed circuit board in relation to a
connector for wave solder application, the connector having a block with
one or more mounting screwholes therein and a plurality of wire wrap pins
extending upwardly therefrom, comprising a mounting element adapted to
engage at least one mounting screwhole on the connector for attaching
the bracket to the connector, a shelf for supporting at least a portion of a
bottom of the printed circuit board at a predetermined height above the
connector and a latch for retaining the printed circuit board on the shelf.
Claims 1-9 and 12-19 stand rejected under 35 U.S.C. § 102(b) as anticipated by
U.S. Patent No. 4,767,338 ("Dennis"). Claim 10 stands rejected under 35 U.S.C.
§ 103(a) as obvious over Dennis.
Appeal No. 2002-0507 Page 3
Application No. 09/405,872
OPINION
Rather than reiterate the positions of the examiner or the appellant in toto, we
address the main point of contention therebetween. The examiner "opin[es] that the
bracket of Dennis can be used to hold a printed circuit board to a connector."
(Examiner's Answer at 6.) The appellant argues, "the Dennis reference fails to disclose
the 'mounting element adapted to engage at least one mounting screwhole on the
connector for attaching the bracket to the connector' as presently claimed." (Reply Br.
at 2.) He adds, "[t]his is because . . . Dennis replaces a connector, it does not mount to
a connector." (Id. at 3.) In addressing the point of contention, the Board conducts a
two-step analysis. First, we construe the claims to determine their scope. Second, we
determine whether the construed claims are anticipated or would have been obvious.
Claim Construction
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). "In construing claims, the analytical focus must begin and remain centered
on the language of the claims themselves. . . ." Interactive Gift Express, Inc. v.
Compuserve, Inc., 256 F.3d 1323, 1331, 59 USPQ2d 1401, 1406 (Fed. Cir. 2001)
(citing 35 U.S.C. § 112, ¶2).
Appeal No. 2002-0507 Page 4
Application No. 09/405,872
Here, independent claim 1 specifies in pertinent part the following limitations:
"[a] bracket for holding a printed circuit board in relation to a connector . . . having a
block with one or more mounting screwholes therein and a plurality of wire wrap pins
extending upwardly therefrom, comprising a mounting element adapted to engage at
least one mounting screwhole on the connector for attaching the bracket to the
connector. . . ." Claim 12, the other independent claim on appeal, includes similar
limitations. Focussing on the language of the independent claims, the limitations
require a bracket having a mounting element for attaching the bracket to a connector
block via at least one mounting screwhole in the connector block, the block having wire
wrap pins extending upwardly therefrom.
Anticipation Determination
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). "A claim
is anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing
Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264,
1270 (Fed. Cir. 1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
Appeal No. 2002-0507 Page 5
Application No. 09/405,872
USPQ 193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983)). "[A]bsence from the reference of any claimed
element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Here, Dennis discloses "a standoff telephone mounting bracket 4. . . ." Col. 3,
l. 19. "The mounting bracket 4 includes a pair of elongated side walls 8, 9 which
are spaced apart and joined together along a lower edge thereof by end dividers 10, 11,
middle divider 12 and bracing dividers 13, 14." Id. at ll. 27-30. Mounting elements are
included in the bracket as "mounting holes 16 in one or more of the dividers 10-14." Id.
at 35-36. Although the reference's bracket includes mounting holes, we are not
persuaded that the holes are used to attach the bracket to a connector block having
wire wrap pins extending upwardly therefrom. To the contrary, "[t]he bracket 4 may be
attached to a support structure, wall or the like by placing a screw or bolt through
mounting holes 16 in one or more of the dividers 10-14." Id. at ll. 33-36 (emphasis
added).
The absence from the reference of attaching a bracket to a connector block
having wire wrap pins extending upwardly therefrom negates anticipation. Therefore,
Appeal No. 2002-0507 Page 6
Application No. 09/405,872
we reverse the anticipation rejection of claim 1; of claims 2-9, which depend therefrom;
of claim 12; and of claims 13-19, which depend therefrom.
Obviousness Determination
"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would . . . have suggested the
claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976)). "A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1131 (Fed. Cir. 1994)
Here, Dennis mentions a connector block having wire wrap pins extending
upwardly therefrom. Specifically, "[a] commonly used terminal connecting block is
referred to as the '66-type' quick connect block. Such a connecting block includes an
Appeal No. 2002-0507 Page 7
Application No. 09/405,872
upper portion, having a multiplicity of connecting clips. . . ." Col. 1, ll. 36-39. "[E]ach
connecting clip may have a post extending through a rear surface of the block and
wires are wire-wrapped to each post in the factory in a desired arrangement." Id.
at ll. 44-46.
The reference emphasizes, however, that "[s]uch prior art connecting blocks
have a number of disadvantages." Id. at ll. 53-54. More specifically, "[m]anufacture
and installation of the blocks are quite labor intensive and time consuming, requiring
that a large number of wires (upwards of one-hundred wires or more for each block) be
either hand wired to the connecting clips on the block or individually wire-wrapped to the
posts beneath the block." Id. at ll. 54-60. "[T]o overcome the disadvantages of the
prior art [connecting blocks], [Dennis] invented a pre-wired telephone interface which is
easily secured to a telephone mounting bracket." Col. 2, ll. 5-8. Because the reference
leads in a direction divergent from a connecting block with wire wrap pins extending
upwardly therefrom, we are persuaded that it teaches away from attaching Dennis'
telephone mounting bracket to a connector block having wire wrap pins extending
upwardly therefrom. Therefore, we reverse the obviousness rejection of claim 10.
Appeal No. 2002-0507 Page 8
Application No. 09/405,872
CONCLUSION
In summary, the rejection of claims 1-9 and 12-19 under § 102(b) is reversed.
The rejection of claim 10 under § 103(a) is also reversed.
Appeal No. 2002-0507 Page 9
Application No. 09/405,872
REVERSED
ANITA PELLMAN GROSS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
Appeal No. 2002-0507 Page 10
Application No. 09/405,872
PAUL GARDON , ESQ.
AVAYA INC.
101 CRAWFORDS CORNER ROAD
P.O. BOX 629
HOLMDEL, NJ 07733