Ex Parte Held et al

Board of Patent Appeals and Interferences

Apr 20, 2004

09742980 (B.P.A.I. Apr. 20, 2004)

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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today was not written for publication and is not binding
precedent of the Board.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
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ERNST HELD,
WOLFGANG SCHNEID and PETER ZWEIGLE
______________

Appeal No. 2004-0868
Application 09/742,980
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ON BRIEF
_______________

Before GARRIS, WARREN and OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellants, in the brief and reply brief,
and based on our review, find that we cannot sustain the rejection of appealed claims 1, 2, 4 and
5 under 35 U.S.C. § 102(e) as being anticipated by Hwang, and of appealed claims 3 and 6 under
35 U.S.C. § 103(a) as being unpatentable over Hwang in view of Takase et al. (Takase).1, 2
It is well settled that in making out a prima facie case of anticipation, each and every
element of the claimed invention, arranged as required by the claims, must be found in a single

1 A copy of the appealed claims appears in the appendix to the brief.
2 The examiner states that the grounds of rejection are set forth in the final action mailed
December 17, 2002 (Paper No. 14). See answer, pages 2-4.
Appeal No. 2004-0868
Application 09/742,980
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prior art reference, either expressly or under the principles of inherency. See generally,
In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann
Maschinenfabrik v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485
(Fed. Cir. 1984). It is further well settled that in order to establish a prima facie case of
obviousness under § 103(a), the examiner must show that some objective teaching, suggestion or
motivation in the applied prior art taken as a whole and/or knowledge generally available to one
of ordinary skill in this art would have led that person to the claimed invention as a whole,
including each and every limitation of the claims arranged as required by the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d
1260, 1265-66, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed.
Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). It
is also well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
In order to review the examiner’s application of prior art to appealed claims 1 and 3,3 we
must first interpret the language thereof by giving the claim terms their broadest reasonable
interpretation in light of the written description in the specification, including the specification
drawings, as it would be interpreted by one of ordinary skill in this art. See, e.g., In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). The claim language at issue is
the recess [of the mating connector] being dimensioned so that during an insertion
process of the plug connector into the mating connector, the guide element [of the plug

3 Appellants state that “[f]or each ground of rejection . . . all claims will be treated as a single
group” (brief, page 5). Thus, we decide this appeal based on appealed claims 1 and 3 as
representative of the respective grounds of rejection. 37 CFR § 1.192(c)(7) (2002).
Appeal No. 2004-0868
Application 09/742,980
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connector] is guided into the recess, and in an inserted state, the recess is set apart
from the guide element.
The examiner takes the position that the claim language is satisfied if “the plug connector
is movable . . . with regard to the mating connector when both are mated” which “is possible due
to differences in diameter of the recess and the guiding member” (Paper No. 14, pages 2 and 3).
Appellants contend that if the guide member is “fully within” the recess, it is “not set apart”
therefrom (brief, page 6). In response, the examiner submits that
[t]he phrase “the recess is set apart from the guide element” should be interpreted in
[sic, the] sense that the respective elements are being kept separate (Heritage
Dictionary, 4th Ed; Cambridge International Dictionary, 2nd Ed).
Even being fully within the recess, the guide element can be set apart from the recess if
its cross-sectional size is smaller than that of the recess with the given tolerance. This
interpretation corresponds to the idea of the invention (Fig. 3 of the Application;
[brief], page 4, lines 4-8) where the guide (8) is separated from walls of the recess (9).
[Answer, page 3.]
With respect to this issue, we find that the specification would have disclosed to one of
ordinary skill in this art that “guide elements [of plug connectors] . . . are rectangular in cross-
section and . . . engage with recesses . . . in the mating connector” and that such “conventional
guide elements also have a centering function” which presents a problem when the “plug
connector . . . is only centered in the base of the mating connector” (page 1, line 8, to page 2, line
3). The solution to the problem proposed by appellants is to have “the recess . . . set apart from
the guide element” such that the “centering” and “guide” functions are separated, that is,
[a]fter ending the insertion process, while the plug connector is resting on the
connector base, centering elements retain the plug connector in the correct position in
the mating connector, and at the same time, the guide elements provide no further
function. [Id., page 2, lines 19-31.]
In one embodiment, the guide elements are “cam-like” and “glide in” the “guide-like recesses,”
wherein the “end position . . . [of] the recess . . . is dimensioned in such a way that the cam-like
. . . guide element is no longer guided by the recess” and “centering elements engage and retain
the connector in the correct position in the mating connector” (id., page 2, line 33, to page 3,
line 16).
This embodiment is illustrated in specification Figs. 1 - 3 which are described as follows:
Appeal No. 2004-0868
Application 09/742,980
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While producing the plug-in connection, in which plug connector 2 is guided into
mating connector 3 in the direction of an arrow 10, cam-like guide element 8 glides
along recess 9 until plug-in contacts 6 are brought into engagement with mating plug-
in contacts 7. The guidance of cam-like guide element 8 in recess 9 is subsequently
released, in that the cross-section of recess 9, particularly in a region 11 which is also
shown in the cross-section in Figure 3, is larger than the cross-section of guide element
8, so that cam-like guide element 8 is no longer immediately encircled by the walls of
recess 9. When this position of plug connector 2 in mating connector 3 is reached, then
in this exemplary embodiment, centering elements 12 shown in Figure 2 position plug
connector 2 in mating connector 3. [Page 4, lines 12-25; see also brief, page 3, line 29,
to page 4, lines 11.]
We observe that specification Fig. 3 is “a section through a guide element according to
Figure 1 along a line III-III” (specification, page 3, lines 33-34). While lower region 11 of recess
9 is shown in Fig. 1 as having a larger diameter than the upper “guide” region of recess 9, in
Fig. 3, recess 9 has a constant cross-section that is larger than the constant cross-section of guide
element 8 such that the latter “is no longer immediately encircled by the walls of” the former,
with centering elements 12 providing the “centering function.”
We determine that in either structure shown for recess 9 in specification Figs. 1 and 3,
recess 9 is “dimensioned” such that guide element 8 “is guided into” recess 9 during insertion
and, “in an inserted state,” recess 9 “is set apart from” guide element 8 as required by the
language of appealed claim 1. In other words, one of ordinary skill in this art would have
interpreted the written description in the specification to disclose that guide element 8 is not
encircled by the walls of and can move within recess 9, in which respect, recess 9 does not serve
to restrict the movement of guide element 8 therein, which would be the case if guide element 8
and recess 9 provide a “centering function” with respect to the mated connectors.
Accordingly, in considering the written description in the specification, including the
specification figures, as interpreted by one of ordinary skill in this art and in light of the
arguments advanced by the examiner and appellants, we interpret the phrase “the recess is set
apart from the guide element” to mean that the guide element is separated from the recess at least
to the extent that the guide element can move within the recess in the sense that the recess and
the guide element do not provide a centering function. We are not persuaded otherwise by the
examiner’s argument based on the cited dictionaries that the guide element should merely be
“kept separate” from the recess, that is, a small difference in cross-sectional size would satisfy
Appeal No. 2004-0868
Application 09/742,980
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the claim. Indeed, the ordinary dictionary definition of the terms “set” and “apart,” in context
alone and together,4 do not support the examiner’s position.
Considering now the ground of rejection under § 102(e) over Hwang, it is apparent that
the examiner is relying only on guiding rods or guide elements 24 in plug connector 20 and
receiving passages or recesses 14 in mating connector 10 as shown in Hwang FIGS. 1-4, and
cites Hwang col. 2, lines 46-48 in support of the proposition that the “plug connector is movable
to [sic] with regard to the mating connector when both mated” (Paper No. 14, page 2; answer,
page 4; second paragraph, second sentence). The passage of Hwang cited by the examiner reads
as follows:
Floatable means 30 is arranged [sic] the plug connector 20 such that when the plug
connector 20 is moveable to the corresponding receptacle connector 10 [sic] when
both are mated. [Col. 2, lines 46-48.]
Appellants submit that the passage cited by the examiner “is at best incoherent and
ambiguous” and that “a more understandable description of the floating means” is found at col. 1,
lines 46-53:
Floatable means arranged at least on the first connector such that when the first
(floatable) connector is mated to the corresponding second connector of the second
substrate, the first (floatable) connector is moveable [sic] respect to the corresponding
second connector to compensate any misalignment therebetween ensuring an electrical
connection between the first and second connectors. [Brief, pages 6-7.]
Appellants argue that “the floating means, as disclosed in Hwang, allows the entire plug
connector (20) to move or ‘float’ with respect to the substrate (41) of which the connector is
attached so that both connectors can remain attached to one another when the associated
substrates are not fully aligned. (See Hwang, FIG. 5; col. [2, ll.] 49-60)” (brief, page 7, lines 3-7).
The examiner takes the position that
both statements of Hwang suggest the same – the designed movement of the

4 “apart . . . 2. a. Separately or at a distance in time, place of position . . . 4. Separately or aside
for a particular function or purpose . . . ;” “set . . . 1. To put in a specified position; place . . .
–phrasal verbs. . . . set apart. 1. To reserve for a specific use. . . .” The American Heritage
Dictionary, Second College Edition 117, 1121-22 (Boston, Houghton Mifflin Company, 1982);
see also Webster’s II New Riverside University Dictionary 115, 1067 (Boston, The Riverside
Publishing Company. 1984).
Appeal No. 2004-0868
Application 09/742,980
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connectors in a direction perpendicular to a mating direction. According to Hwang,
that movement is possible due to differences in diameter of the recess and the guiding
member. [Paper No. 14, page 3; answer, page 3.]
With respect to appellants’ argument in the brief, the examiner alleges with respect to the
“movement of the plug connector (20) regarding substrate (41), that movement does not
eliminate but complement the mutual movement of the plug and receptacle connectors when in
mated position” (answer, page 3).
In the reply brief, appellants contend that the examiner has not established that the
difference in diameter between receiving passages or recesses 14 and guiding rods or guide
elements 24 of Hwang necessarily and inherently “make possible the movement between the first
floatable connector and the corresponding connector,” arguing that
[w]hen read together, col. 1, lines 46-53, col. 2, lines 46-48 and 57-60 and Fig. 5 of
Hwang support the conclusion that floatable means 30 allows the entire plug connector
20 to move or “float” with respect to the substrate 40 to which the connector 20 is
attached, so that the plug 20 can be aligned with the receptacle connector 10 even if
there is an offset between the plug connector 20 and the attached substrate 40.
However, there is no reasonable interpretation of the disclosure of Hwang that would
support the Examiner’s conclusion that the difference in the diameters of the recess 14
and the guide 24 necessarily have to exit in view of the overall teachings of Hwang,
thereby satisfying the limitation of claim 1 that “in an inserted state the recess is set
apart from the guide element.” [Pages 4-5; emphasis in original deleted.]
Upon carefully considering the disclosure of Hwang as a whole, we agree with
appellants’ position. We find that Hwang discloses that
[t]he plug connector 20 includes a pair of guiding rods 24 on opposite ends of the
mating portion 22 received in the corresponding receiving passage 14 of the receptacle
connector 10. Each guiding rod 24 includes a tapered tip 24a extending over a top face
22a of the mating portion 22. By the cooperation of the tapered tip 24a and the slanted
edges 14a, mating between the receptacle and plug connectors 10, 20 along a front-
to-back direction can be smoothly performed. [Col. 2, lines 32-40.]
We further find that one of ordinary skill in this art would not have found in this disclosure or in
the protrusion of tips 24a of guiding rods or guide elements 24 through the base of receptacle
connector 10 when the guide rods are fully received in receiving passages or recesses 14 upon
mating as shown in Hwang FIG. 4 (see answer, page 3), any teaching that guiding rods or guide
elements 24 and receiving passages or recesses 14 are of such relative cross-sections that the
same can move with respect to each other as if they are “set apart” as we have interpreted this
Appeal No. 2004-0868
Application 09/742,980
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claim term above. This person would have further found from col. 2, line 46, to col. 3, line 22,
and FIGS. 5 and 6 of Hwang that floatable means 30 does not include or involve in any respect
guiding rods or guide elements 24 and receiving passages or recesses 14, and these elements are
not disclosed to play any role in floatable means 30 facilitating the free movement or floatability
of plug connector 20 with respect to circuit board 40, regardless of the relative positions of
printed circuit boards 40 and 44 prior to mating.
Accordingly, we find as a matter of fact that the disclosure of Hwang with respect to
guide rods 24 and receiving passages or recesses 14 as relied on by the examiner, does not
disclose each and every element of the claimed invention, arranged as required by appealed
independent claim 1, as we have interpreted the language thereof above, and by appealed
dependent claims 2, 4 and 5, either expressly or under the principles of inherency, and thus, in
the absence of a prima facie case of anticipation within the meaning of 35 U.S.C. § 102(e), we
reverse this ground of rejection,
We also reverse the ground of rejection under 35 U.S.C. § 103(a) as a matter of law on
the same factual findings, because, as appellants argue (brief, pages 9-10; reply brief, page 6), the
examiner provides no additional scientific explanation or objective evidence from Takase which
would cure the factual deficiencies of Hwang with respect to appealed dependent claims 3 and 6.

The examiner’s decision is reversed.
Reversed
Appeal No. 2004-0868
Application 09/742,980
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BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

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