Ex Parte Jourdan

Board of Patent Appeals and Interferences

Sep 10, 2008

10398351 (B.P.A.I. Sep. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN JOURDAN
____________

Appeal 2008-1122
Application 10/398,351
Technology Center 2800
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Decided: September 10, 2008
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Before JOHN A. JEFFERY, MARC S. HOFF, and KEVIN F. TURNER,
Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 7-12. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellant’s claimed invention relates to a contact element for an
electrical plug connection, where the contact element has at least stop
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limiting the axial mobility of a center section of the contact element, inside
of which the contacting by a mating contact of a connector takes place.
(Spec. 2:1-8).
Independent claim 7 is the only pending independent claim, is
illustrative of the invention and reads as follows:

7. A contact element for an electrical plug connection,
comprising:

a contact outer part;

a contact inner part at least partially covered by the contact
outer part, the contact inner part being axially aligned with an
insertion direction, the contact inner part having a connecting
section at one end and a contact section for a mating contact of
a mating connector at another end, the contact inner part further
having a center section, the center section having an axially
flexible design and being situated between the connecting
section and the contact section; and

at least one stop limiting an axial mobility of the center section
to within a predetermined travel range;

wherein the at least one stop is configured to limit the axial
mobility of the center section to such a degree that the contact
element remains below a Woehler curve when exposed to
vibration stresses.

The Examiner relies on the following prior art references to show
unpatentability:
Huhnen US 3,964,736 Jun. 22, 1976
Hotea US 5,362,262 Nov. 8, 1994

Claims 7-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hotea.
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Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUE
Under 35 U.S.C. § 103(a), with respect to appealed claims 7-12, does
Hotea teach or suggest all of the elements of those claim to render them
unpatentable?

FINDINGS OF FACT
1. The Specification details a contact element for an electrical plug
connection, having contact outer and inner parts, with the contact inner part
having a center section. The contact also has at least one stop which limits
the axial mobility of the center section to within a predetermined travel
range. (Spec. 3:2-8, 3:18-22; Figs. 1 and 3, elements 12, 13, 22 and 32).
2. The stop also limits the axial mobility of the center section to such
a degree that the contact element remains below a Woehler curve when
exposed to vibration stresses. (Spec. 2:10-14).
3. Hotea describes an electrical receptacle terminal, having inner and
outer spring members, where the inner spring member is axially movable
within the outer spring member to compensate for vibration. (Abstract; Col.
2, ll. 5-14; Fig. 1, elements 2, 10 and 12).
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4. Hotea details that the contact structure includes tab portions which
fix the outer spring member to the inner contact. The Examiner has
identified that the center section has restricted axial mobility between
projections 122 and 125. (Col. 2, l. 64 – col. 3, l. 4; Figs. 1 and 2, elements
120, 122, and 125), (Ans. 3).
5. Huhnen is relied upon to teach that a Woehler curve is defined by
the number of cycles to failure in terms of the stress applied. The Examiner
cites the teachings of Huhnen to show that the maintenance of a flexible
element to remain below a Woehler curve is known. We note that the
rejection of the claims does not directly rely on Huhnen, but that Huhnen
was separately cited to support the Examiner’s findings. (Col. 5, ll. 30-41);
(Ans. 6-7).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
“. . . .there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
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would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359,
1369 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).

ANALYSIS
Appellant argues that Hotea does not disclose or suggest at least one
stop limiting an axial mobility of a center section to within a predetermined
travel range. (App. Br. 5). Appellant argues that the tab portions in Hotea,
elements 120 and 122, provide no play in the connector and provide for no
travel range since they are disclosed as being crimped together. (App. Br. 5-
6). The Examiner finds that even if the outer member is completely fixed to
the inner contact, the stops 120 and 122 still limit axial mobility of at least a
part of the center section to within a predetermined range. (Ans. 6). We
agree with the Examiner.
As is recited in a portion of claim 7, the axial mobility is limited “to
within a predetermined travel range,” where that range is not explicitly
recited in that claim. While Appellant would have us accept that “Hotea
could in no clearer words state that a predetermined travel range is not
present,” (App. Br. 5), we do not find any support in Hotea that the crimping
of tab portions would result in no play in the connection. As such, we do not
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find the fact that the tab portions are crimped to necessarily require that there
is neither play nor any axial mobility limitations in the center section of the
connector in Hotea.
Appellant also argues that even if Hotea allows for some axial
mobility, a specific predetermined travel range is not disclosed. (App. Br.
6). However, the section of claim 7 upon which Appellant relies does not
define the range. Also, we find that any construction based on Hotea that
allowed for some axial mobility would have to provide some travel range,
based on that construction and the materials used. Additionally, while claim
7 also recites that “the contact element remains below a Woehler curve when
exposed to vibration stresses,” and Hotea does not disclose this limitation,
we agree with the Examiner that it would have been obvious to form the
center section of the contact element to remain below a Woehler curve since
the contact element is for use in high vibration atmospheres. (Ans. 3).
Appellant also argues that Hotea does not disclose the incorporation
of a travel range to increase fatigue resistance and would provide no
motivation to one of ordinary skill in the art to incorporate such a
predetermined travel range. (App. Br. 6). Appellant continues that one of
ordinary skill in the art would rather have been motivated to provide a strong
and secure crimp between elements to prevent relative movement. (App. Br.
6). The Examiner counters that it is generally known that limiting mobility
of a flexible element to remain below a Woehler curve is known, as
evidenced by Huhnen. (Ans. 9). We agree with the Examiner that a given
amount of travel would be provided by the construction in Hotea, as
discussed supra, and that limiting that travel in view of the known
vibrational effects would have been obvious. Additionally, we disagree that
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Hotea necessarily teaches a connection between elements to prevent relative
movement, as crimping is known to allow for play between parts, as
opposed to other connection methods, that would allow for little to no play
between parts.
Appellant argues that the “combination of Hotea and Huhnen does not
disclose, or even suggest, loosening a connection between two parts
normally crimped together,” (App. Br. 6), but independent claim 7 does not
recite the loosening of any connection. Additionally, we note that the
Examiner’s rejection does not proffer an actual combination of Hotea and
Huhnen, but rather suggest modification of Hotea in view of known
relationships, as evidenced by Huhnen.
Appellant also argues that any motivation to allow for a
predetermined travel is improperly derived from the present application and
would constitute improper hindsight reasoning and that none of the patents
relied upon mention or refer to a motivation for allowing for a
predetermined travel. (App. Br. 7). However, we agree with the Examiner,
(Ans. 10), that only the teachings of what was within the level of ordinary
skill at the time the invention was made are necessary to sustain the
rejection, namely to maintain a flexibility movable member below the
Woehler curve to prevent the element from failing or breaking. As such, we
do not find Appellant’s argument to be compelling.
Appellant further argues that the Examiner is oversimplifying the
claimed invention and that it is the design of both the inner and outer parts of
the connector and their designed interaction that improves fatigue life.
(App. Br. 8). However, we find, as the Examiner does, that such design is
not specifically claimed, only that the axial mobility is limited to within a
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predetermined travel range such that the contact element remains below a
Woehler curve when exposed to vibration stresses. (Ans. 10). While the
Specification provides more detail on what Appellant argues, we cannot read
limitations from the Specification into the claims.
In addition, Appellant argues that the motivation to modify Hotea
relies on an “obvious to try” basis and is unsupported by the cited
references. (App. Br. 9-12). However, “the fact that a combination was
obvious to try might show that it was obvious under § 103.” KSR Int’l Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007). In the instant case, we find
that the rejection is based on sound motivation to modify the connector of
Hotea such that the claims would read thereupon and is fully supported by
cited references. As such, we do not find Appellant’s arguments to be
compelling.
Appellant also argues, separately, that elements of claim 10 are not
taught or suggested by Hotea. (App. Br. 13). Appellant argues that element
125 of Hotea is perpendicular to the longitudinal axis of the connector and
not parallel as required by claim 10. Appellant does not make a similar
argument about elements 120 and 122, but continues to argue that those
elements are not stop elements, as argued above. Given that the Examiner
has not relied upon element 125 of Hotea, (Ans. 12-13), and we find that the
elements 120 and 122 functionally act as stops, supra, we do not find
Appellant’s arguments with respect to claim 10 to be compelling. Appellant
also raise a related point with respect to claim 8, (Reply Br. 2), which we
also do not find to be compelling for the same reason.

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CONCLUSION
In summary, we have affirmed the Examiner’s rejection of claims
7-12 under 35 U.S.C. § 103(a) as unpatentable over Hotea.

DECISION
The Examiner’s rejection of claims 7-12 before us on appeal 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)(1)(iv).

AFFIRMED

KIS

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