Ex Parte Huang

Board of Patent Appeals and Interferences

Jan 31, 2007

10642413 (B.P.A.I. Jan. 31, 2007)

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for publication and is not binding precedent of the Board.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
___________

Ex parte George Y. Huang
___________

Appeal No. 2006-2187
Application No. 10/642,413
Technology Center 2800
___________

HEARD: December 12, 2006
___________

Before HAIRSTON, DIXON, and SAADAT, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. §134 from the
Examiner's final rejection of claims 1, 3-12, and 14-16, which are all of the
claims pending in this application. We note that this appeal is related to a
prior appeal in Appeal No. 2002-1175 where we affirmed all of the
rejections under 35 U.S.C. §§ 102 and 103(a).

We AFFIRM.
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Application No. 10/642,413

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BACKGROUND
Appellant's invention relates to an electrical connector and adapter
structure with raised portion. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced below.
1. An electrical connector structure comprising:
a housing with an outer surface and at least one end
adapted to hold an electrical connector plug, wherein the
housing has a raised portion that is above the outer surface of
the housing,
a covering formed over the outer surface of the housing,
wherein the covering is further formed around the raised
portion so that an exposed part of the raised portion is not
covered by the covering, wherein the exposed part of the raised
portion further comprises a background surface and a design
surface, and
wherein the design surface is formed as part of the
background surface and is not level with the background
surface.
PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Wiebe 4,164,725 Aug. 14, 1979
Biche 4,202,351 May 13, 1980
Williams 4,256,159 Mar. 17, 1981

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Riggs et al. (Riggs) 4,275,768 Jun. 30, 1981
Owens et al. (Owens) 4,704,091 Nov. 3, 1987
Beinhaur et al. (Beinhaur) 4,960,391 Oct. 2, 1990
Tan 5,735,699 Apr. 7, 1998
REJECTIONS
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellant regarding the above-noted rejections, we make
reference to the Examiner’s answer (mailed Feb. 28, 2006) for the reasoning
in support of the rejection, and to Appellant’s brief (filed Dec. 14, 2005) and
reply brief (filed Apr. 28, 2006) for the arguments thereagainst.
Claims 1 and 12 stand rejected under 35 U.S.C. § 102 as being
anticipated by Tan. Claims 1 and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Owens. Claims 3 and 14 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Owens in view of Williams.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Owens and Williams, as applied to claim 3 above, and further in view of
Biche. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Owens and Williams, as applied to claim 3 above, and
further in view of Riggs. Claim 6 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Owens and Williams, as applied to claim 3
above, and further in view of Beinhaur. Claims 7, 8 and 15 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Owens in view of
Biche. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
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unpatentable over Owens in view of Biche, as applied to claim 7 above, and
further in view of Riggs. Claim 10 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Owens and Biche, as applied to claim 7 above,
and further in view of Beinhaur. Claims 11 and 16 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Owens in view of Wiebe.
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
that follow.
35 U.S.C. § 102
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). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference. As set forth by
the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983), it is only necessary for the claims to “‘read on’
something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or ‘fully met’ by it.” While all elements of the
claimed invention must appear in a single reference, additional references
may be used to interpret the anticipating reference and to shed light on its
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meaning, particularly to those skilled in the art at the relevant time. See
Studiengesellschaft Kohle v. Dart Indus., Inc., 726 F.2d 724, 726-727, 220
USPQ 841, 842-843 (Fed. Cir. 1984).
We must point out, however, that anticipation under 35 U.S.C. § 102
is established only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of a
claimed invention. See RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
From our review of the Examiner’s rejection in the Answer, we
cannot agree with the Examiner’s formulation of the rejection based upon
anticipation over the Tan reference. We agree with Appellant that Tan does
not teach that covering 12 is “formed over” housing 16 with outer surface 29
being the raised portion with both design and background surfaces which are
not level. We find the Examiner’s correlation to be unclear and
unreasonable in light of Appellant’s disclosed invention. Therefore, we
cannot sustain the rejection of claims 1 and 12 based upon Tan alone.
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
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1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the
conclusion that the 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, 178 (CCPA 1967). 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, 972 F.2d 1260,
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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 as recited in independent claim
1.
From our review of our prior decision on appeal in this application
and the claims on appeal, we again agree with the Examiner’s claim
interpretation as applied with the Owens reference and application of the
prior art (Answer at pages 5-6 and 13-16). We find that the Examiner has
established a prima facie case of obviousness and look to Appellant to show
error in the prima facie case of obviousness or to adequately rebut the
Examiner’s rejection. We find that the Examiner summarizes the proper
interpretation and response to Appellant’s main argument at page 11 of the
answer stating “[h]owever, the language such ‘later manufacturing step’ or
similar language never appeared in the claims 1 and 12. Also, none of the
claims disclose how many steps these surfaces were formed.” We agree
with the Examiner that Appellant’s arguments are not supported by the
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express limitations in the claim language and Appellant has not identified
how the specification defines or limits the interpretations of the claim
limitations.
Appellant argues that the invention overcomes a problem in the prior
art and that the present invention provides “a structure that could be formed
in a single step.” (Reply Br. at 8). The Examiner has relied upon the
teachings of Owens at column 3, lines 55-56 which indicates that the raised
portion of the raised planar informative plaque member 26 and that etching
and appliqués are both commonly used methods for applying information.
(Answer at page 5). We agree with the Examiner’s analysis and reasoning
and do not find that Appellant has shown error therein. We agree with the
Examiner that if etched, the surface of the information would be below the
remainder of the background surface and if an appliqué were applied to the
surface then the final “formed” product would have the design surface raised
above the background surface.
Appellant argues that Owen’s two-step member is the very problem
that Appellant’s invention seeks to solve (Br. 19 et seq.). With that said, it is
the invention as recited in the claim language which we must limit our
review to. This argument emphasizes the difficulty which we had in this
appeal and the prior appeal that Appellant tries to distinguish a physical
article by the manner in which it was made. While this can be done, it is the
structural limitations which must distinguish the article. The arguments to
the mechanical advantages, the two step process, and the problem of
transparent plastics are not expressly set forth in the claim language and
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arguments thereto are not commensurate in scope and supported by the
claim language. Therefore, Appellant’s argument is not persuasive.
Here, we find the use of the term “formed” in the article of
manufacture claim to be quite broad and not specifically defined in the
specification or developed in the prosecution history. We find no temporal
limitation as to the time of being “formed” or limitation that the surfaces are
made of the same material so as to distinguish over the Examiner’s
reasonable claim interpretation and application of the prior art of Owens.
Appellant maintains that the Examiner has made a “leap based on
unsupported factual speculation . . . such as etching and appliqués” (Reply
Br. at page 9). We disagree with Appellant and find that Appellant’s
specification discloses use of labels or appliqués at page 2, lines 18-19, “Or,
a label (not shown) can be affixed in the recess 20 after molding” in the
admitted prior art. Additionally, in the record, U.S. Patent 5,449,302 to
Yarbrough indicates that angled label portion includes printed information
about the electrical rating at column 8 and U.S. Patent to Englemann in the
abstract and the Summary of the Invention disclose the application of
information to electrical components. Therefore, we cannot agree with
Appellant that the Examiner has based the rejection upon mere speculation.
Therefore, Appellant’s argument is not persuasive, and we will sustain the
rejection of independent claims 1 and 12.
With respect to dependent claims 3 and 14, Appellant argues that the
Examiner does not understand the problem of the prior art and solving the
problem in a single step (Br. 24). As discussed above, we do not find the
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argument to the single step process to be well supported in the claim
language and does not distinguish the claimed invention. Therefore,
Appellant’s argument is not persuasive, and we will sustain the rejection of
dependent claims 3 and 14.
With respect to dependent claims 1, 3-10, and 15, Appellant argues
that none of the references disclose a structure that eliminates the multi-step
manufacturing process of the prior art as disclosed by Appellant. As
discussed above, we do not find the argument to the single step process or
elimination of multi-step processes to be well supported in the claim
language, and we find that this argument does not distinguish the claimed
invention. Therefore, Appellant’s argument is not persuasive, and we will
sustain the rejection of dependent claims 1, 3-10, and 15.
Appellant additionally subdivides the above grouping into claims 4,
7, 8, and 15, and we select dependent claim 7 as representative. We find that
Owens teaches an appliqué which we find to be above the surface of the
background surface and also agree with the Examiner that the molding of
Biche would have suggested that a separate step of molding could be used
with Owens to apply information to the information plaque. Therefore,
Appellant’s argument is not persuasive, and we will sustain the rejection of
dependent claims 4, 7, 8, and 15.
Appellant additionally subdivides the above grouping into three
additional groupings of claims 5 and 9; claims 6 and 10; and claims 11 and
16. Appellant presents the same argument as above that the references do
not disclose the claimed structure and process of manufacturing (Br. 26-27).
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As discussed above, we do not find this argument persuasive and we will
sustain the Examiner’s rejection.
With respect to dependent claims 11 and 16, we find that any surface
that can be contacted is a gripping surface as recited in the claims, and we do
not find that the claims recite any structure to accomplish or improve the
gripping of the connector, such as, texture. Therefore, Appellant’s argument
is not persuasive, and we will sustain the rejection of dependent claims 11
and 16.
CONCLUSION
To summarize, we have reversed the rejection of claims 1 and 12 under
35 U.S.C. § 102 and affirmed the rejection of claims 1, 3-12 and 14-16
under 35 U.S.C. § 103.

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

JLD/rwk

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