Ex Parte Hoernle

Board of Patent Appeals and Interferences

Mar 10, 2009

10216142 (B.P.A.I. Mar. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROMAN HOERNLE
__________

Appeal 2009-1136
Application 10/216,142
Technology Center 2800
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Decided:1 March 10, 2009
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/216,142

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A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 2-12 under 35 U.S.C. § 102(b) as anticipated by Cha.2 We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
The Appellant argues the patentability of claims 2-12 as a group.
Therefore, we decide the appeal on the basis of independent claim 11. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 11 reads as follows:
An electrical plug connector arrangement comprising:

a mating connector and a male connector, each of the
mating connector and the male connector including a housing
and a contact strip, the contact strip being arranged in the
housing, contact elements being arranged in the contact strip;

wherein:

the male connector includes a coding device, the
coding device including a first functional part and a second
functional part,

the first functional part includes pin type elements
which are aligned in an insertion direction, and is movable
perpendicularly to the insertion direction and interacts with
other pin-like elements which are aligned counter to the
insertion direction, and which are arranged in the second
functional part,

free ends of the pin-like elements and the other
pin-like elements touching in an opened state of the coding
device, and

2 US 6,146,210 issued to Cha et al. on November 14, 2000.
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corresponding patterns of elements are formed in
the male connector and the mating connector, which are
joinable together, by the pin-like elements and the other pin-
like elements which are provided in a comb arrangement.

App. Br., Claims Appendix (emphasis added).3
B. ISSUES
(1) Has the Appellant shown that the Examiner reversibly erred in
finding that Cha describes a connector arrangement comprising a first
functional part that “is movable perpendicularly to the insertion direction” as
recited in claim 11?
(2) Has the Appellant shown that the Examiner reversibly erred in
finding that elements 48 and 38a in Cha are “pin type elements” and “pin-
like elements,” respectively, within the scope of claim 11?
(3) Does claim 11 require the male connector to include a first
functional part and a second functional part?
C. FINDINGS OF FACT
Cha Figure 3 illustrates a connector assembly. Cha 2:62-64. Figure 3
is reproduced below:

3 Replacement Appeal Brief dated December 20, 2007.
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Cha Figure 3 depicts a connector assembly.
The Examiner found:
Cha discloses an electrical plug connector arrangement
(Fig. 3) comprising: a mating connector (14) and a male
connector (50) . . . wherein the male connector includes a
coding device (48, 38a), the coding device including a first
functional part (42[, 48]) and a second functional part (at 38a),
the first functional part includes pin type elements [48] which
are aligned in an insertion direction, and is movable
perpendicularly to the insertion direction and interacts with
other pin-like elements [38a] which are aligned counter to the
insertion direction, and which are arranged in the second
functional part, free ends of the pin-like elements and the other
pin-like elements touching in an opened state of the coding
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device, and corresponding patterns of elements are formed in
the male connector and the mating connector, which are
joinable together, by the pin-like elements and the other pin-
like elements which are provided in a comb arrangement.

Ans. 3.4
D. PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“[I]n proceedings before the PTO, claims in an application are to be
given their broadest reasonable interpretation consistent with the
specification . . . .” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
“‘[R]eading a claim in the light of the specification,’ to thereby
interpret limitations explicitly recited in the claim, is a quite different thing
from ‘reading limitations of the specification into a claim,’ to thereby
narrow the scope of the claim by implicitly adding disclosed limitations
which have no express basis in the claim.” In re Prater, 415 F.2d 1393,
1404 (CCPA 1969).
E. ANALYSIS
1. Issue (1)
The Examiner found that Cha discloses a first functional part 42, 48
including pin type elements which are aligned in an insertion direction. Ans.
3. The Examiner found that the first functional part 42, 48 is movable
perpendicularly to the insertion direction as recited in claim 11, along with
the rest of the plug body or housing 50. Ans. 5.

4 Examiner’s Answer mailed March 27, 2008.
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The Appellant argues that Cha does not disclose that pin type
elements 48 are perpendicularly displaceable relative to the plug housing 50,
and thus, Cha does not disclose a first functional part that is movable
perpendicularly to the insertion direction as recited in claim 11. App. Br. 8.
The Appellant explains the operation of the claimed connector
arrangement as follows:
To move from the opened state, where the free ends of the pin-
like elements and the other pin-like elements are touching, to a
state where the pin-like elements and the other pin-like
elements are side-by-side in a comb arrangement, the first
functional part must be movable perpendicularly to the
direction of insertion, which is exactly what claim 11 provides.

App. Br. 9.
To the extent that such perpendicular movement is required to form
the comb arrangement recited in claim 11, the claim does not require the
first functional part to be movable in a perpendicular direction relative to the
male connector to form this arrangement. Prater, 415 F.2d at 1404.
Indeed, the first and second functional parts in Cha can form the
claimed comb arrangement in the manner described above without moving
the first functional part in a perpendicular direction relative to the male
connector or plug housing 50. In particular, in an opened state, free ends of
at least one of the pin-like elements 48 and at least one of the pin-like
elements 38a touch. When the first functional part is moved perpendicularly
to the direction of insertion, the pin-like elements of the first and second
functional parts can be joined together in a side-by-side arrangement. See
Ans. 7-8.
In sum, the Appellant has not shown that the Examiner reversibly
erred in finding that Cha describes a connector arrangement comprising a
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first functional part that “is movable perpendicularly to the insertion
direction” as recited in claim 11.
2. Issue (2)
The Appellant argues that elements 48 and 38a in Cha are not “pin
type elements”5 and “pin-like elements,” respectively, as recited in claim 11.
Reply Br. 3.6
This argument is not persuasive of reversible error. Cha identifies
elements 48 and 38a as guide ribs and the inside surfaces of guide holes 38,
respectively. See, e.g., Cha 4:11-13. Based on their depiction in Cha Figure
3, we find that these elements are long, tapered, and relatively narrow.
The Appellant has failed to direct us to any definition of “pin type
elements” or “pin-like elements” in the Specification that excludes the long,
tapered, and relatively narrow elements 48 and 38a of Cha. Thus, it is
reasonable to conclude that elements 48 and 38a are “pin type elements” or
“pin-like elements” within the scope of claim 11. Sneed, 710 F.2d at 1548.
3. Issue (3)
The Appellant argues that Cha does not disclose a plug connector
arrangement comprising a mating connector and a male connector “wherein
the male connector includes a first functional part and a second functional
part.” Reply Br. 4.
Claim 11 is directed to a connector arrangement comprising a mating
connector, a male connector, and a coding device. Claim 11 recites that the
coding device includes a first functional part and a second functional part
wherein the first functional part includes pin type elements and the second

5 Claim 11 also refers to the “pin type elements” of the first functional part as
“pin-like elements.”
6 Reply Brief dated June 2, 2008.
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functional part includes “other pin-like elements.” Claim 11 recites that the
male connector and the mating connector are “joinable together, by the pin-
like elements and the other pin-like elements which are provided in a comb
arrangement.” App. Br., Claims Appendix.
In order for the male connector and the mating connector to be
“joinable together” as recited in claim 11, it is reasonable to interpret the
claim as requiring one of the functional parts to be included in the male
connector and the other functional part to be included in the mating
connector. Thus, we conclude that claim 11 only requires one functional
part of the coding device to be included in the male connector.
Furthermore, if claim 11 did require both the first and second
functional parts to be included in the male connector, the claim would not be
supported by the original disclosure. See, e.g., Specification filed on August
9, 2002, at 2:28-30 (disclosing that “another function part 3” is assigned to a
mating connector), 3:7-8 (disclosing “[a]dditional function part 3” is
mounted in a mating connector); see also App. Br. 5 (“[a]dditional function
part 3” is mounted in a mating connector).
F. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(2008).
AFFIRMED

cam
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Application 10/216,142

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