Ex Parte Hahn

Board of Patent Appeals and Interferences

Aug 30, 2002

09103449 (B.P.A.I. Aug. 30, 2002)

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written for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARLYN E. HAHN
____________
Appeal No. 1999-2822
Application No. 09/103,449
____________
ON BRIEF
____________
Before BARRETT, LALL, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 18, which are all of the claims
pending in this application.
Appellant's invention relates to an electrical connector
with grooves between terminal contacts. Claim 1 is illustrative
of the claimed invention, and it reads as follows:
1. An electrical connector for receiving a mating electrical
connector of the type having a plurality of spaced apart
terminals, the electrical connector comprising:
a housing;
a substratum disposed in said housing and defining a
surface;
Appeal No. 1999-2822
Application No. 09/103,449
1
This patent was not applied in the statement of the rejection of the
claims but was referenced by the examiner in the explanation of the rejection.
2
a plurality of spaced apart terminal contacts disposed on
said surface of said substratum and terminating in a plurality of
solder-tails, said terminal contacts corresponding in number to
the plurality of terminals of the mating electrical connector,
each of said terminal contacts having a contact surface that is
raised from said substratum surface to define an elevated area
wherein said contact surface extends the entire width of said
elevated area; and
a channel formed in said substratum surface adjacent each of
said terminal contacts.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Andrews, Jr. et al. (Andrews) 4,392,705 Jul. 12, 1983
Kourimsky et al. (Kourimsky)1 4,483,581 Nov. 20, 1984
Inaoka 5,380,225 Jan. 10, 1995
Claims 1 through 3, 6, 7, 9, and 10 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Inaoka.
Claims 1 through 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Andrews in view of Inaoka.
Reference is made to the Examiner's Answer (Paper No. 8,
mailed July 14, 1999) for the examiner's complete reasoning in
support of the rejections, and to appellant's Brief (Paper No. 7,
filed April 22, 1999) and Reply Brief (Paper No. 9, filed
September 14, 1999) for appellant's arguments thereagainst.
OPINION
Appeal No. 1999-2822
Application No. 09/103,449
3
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
will affirm the anticipation rejection of claims 1 through 3, 6,
7, 9, and 10 but reverse the obviousness rejection of claims 1
through 18.
Appellant (Brief, page 5) argues that Inaoka fails to
disclose a channel or notch "adjacent each of said terminal
contacts," as required by independent claims 1 and 6. More
specifically, appellant explains (Brief, pages 5-6) that Inaoka
includes terminal contacts in each body recess (or channel) as
well as on each body projection, the terminal contacts in the
body recesses do not have channels adjacent to them, and,
therefore, there is not a channel or notch adjacent to each
contact. Appellant thus concludes that Inaoka cannot anticipate
the claims.
We agree with appellant that Inaoka includes contacts which
are in the channels and not adjacent to channels. However,
claims 1 and 6 do not preclude such contacts. Claim 1, for
example, recites "a plurality of spaced apart terminal contacts
disposed on said surface of said substratum" and "a channel
formed in said substratum surface adjacent each of said terminal
contacts." The contacts on the projections are a plurality of
Appeal No. 1999-2822
Application No. 09/103,449
4
spaced apart terminal contacts, and adjacent each of the
aforementioned contacts is a channel. The channels need only be
adjacent "said" contact terminals, wherein said contact terminals
are the plurality. Within the channels is another plurality of
terminal contacts which are not adjacent to channels. By using
the word "comprising," appellant has allowed for the inclusion of
a second plurality of terminal contacts such as those within the
channels of Inaoka. Thus, we are unpersuaded by appellant's
argument, and find that Inaoka meets the language of claims 1 and
6. As appellant has provided no further arguments regarding the
anticipation rejection, we will sustain the rejection of claims 1
and 6 and the claims grouped therewith, claims 2, 3, 7, 9, and
10, over Inaoka.
In addition to the anticipation rejection discussed supra,
the examiner has rejected all of the claims under 35 U.S.C. § 103
over Andrews in view of Inaoka. The examiner contends that
Andrews includes all of the claim limitations except for the
contact surface extending across the entire width of the elevated
area, which appears in each of the independent claims. To remedy
this deficiency, the examiner includes Inaoka, asserting (Answer,
pages 6-7) that:
Although Inaoka is silent as to why the contact surface
extends the entire width of the elevated area, it would
have been obvious . . . to extend the contact surface
to the entire width of the elevated area for the
Appeal No. 1999-2822
Application No. 09/103,449
2
We note that although we have found that Inaoka alone anticipates
some of the claims, and thus would also render obvious the same claims, the
combination of Andrews and Inaoka, as presented by the examiner, fails to
render obvious any of the claims.
5
purpose of providing a larger contact surface since it
was known in the art that covering the entire width of
the elevated area with a conductive element would
provide a better contact surface and eliminate the
terminal misregistration or misalignment during the
insertion of the mating terminal.
However, as pointed out by appellant (Brief, pages 7-8), when the
two portions of Andrews' connector come together, there is a
close fit between the ribs and the opposing recesses. Thus,
Andrews' connector has no problem with misregistration and,
therefore, would not benefit from extending the contact terminal
across the entire width of the elevated area. Accordingly, there
is no motivation to combine the teachings of Inaoka with those of
Andrews. Consequently, the examiner has failed to establish a
prima facie case of obviousness, so we cannot sustain the
obviousness rejection of claims 1 through 18. 2
CONCLUSION
The decision of the examiner rejecting claims 1 through 3,
6, 7, 9, and 10 under 35 U.S.C. § 102 is affirmed. The decision
of the examiner rejecting claims 1 through 18 under 35 U.S.C.
§ 103 is reversed. As at least one rejection has been affirmed
for some but not all of the claims, the decision of the examiner
is affirmed-in-part.
Appeal No. 1999-2822
Application No. 09/103,449
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
apg/vsh
Appeal No. 1999-2822
Application No. 09/103,449
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