Ex parte JUNTWAIT et al.

Board of Patent Appeals and Interferences

Sep 28, 1998

08104461 (B.P.A.I. Sep. 28, 1998)

Application for patent filed August 9, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ERIC D. JUNTWAIT, JEFFREY C. HOWLAND
and CHARLES R. MURPHY
__________
Appeal No. 97-2619
Application 08/104,4611
___________
ON BRIEF
___________
Before CALVERT, STAAB and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of claims 1-9, all the claims in the
application.
Appeal No. 97-2619
Application 08/104,461
Our understanding of this German language publication is derived from a translation prepared2
in the Patent and Trademark Office. A copy of the translation is attached to this decision.
2
Appellants’ invention pertains to an electrical connector having a housing for holding a plurality
of contact elements. Each contact element is terminated to an insulated wire by crimping adjacent
crimp portions of the contact element to, respectively, an exposed conductor wire and an insulation
layer of the wire. In appellants’ connector, the portion of the contact element crimped to the insulation
layer of the wire is of oval configuration, with the smaller dimension of the oval being oriented in the
longitudinal direction of the housing. According to appellants, this allows for a greater density of
contact elements. Independent claim 1, a copy of which is appended to appellants’ brief, is illustrative
of the appealed subject matter.
The references of record relied upon by the examiner in support of rejections under 35 U.S.C.
§ 103 are:
Berg 3,707,933 Jan. 2, 1973
Bruni et al. (Bruni) 3,941,444 Mar. 2, 1976
Piscitelli et al. (Piscitelli) 4,373,773 Feb. 15, 1983
Shindo et al. (Shindo) 4,979,912 Dec. 25, 1990
German published application (Beyer) 240,466 Oct. 29, 1986 2

The following reference, cited by appellants in the Information Disclosure Statement filed June
26, 1997, is relied upon by this merits panel in support of new rejections pursuant to 37 CFR §
1.196(b):
Japanese patent document, 63-38536 Oct. 11, 1988
Appeal No. 97-2619
Application 08/104,461
3
Nishijo et al. (Nishijo)
Claims 1-4 and 6-9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bruni or
Shindo in view of Beyer.
Claims 5-9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bruni or Shindo
in view of Beyer, and further in view of Berg or Piscitelli.
The rejections are explained in the final rejection and the answer.
The opposing viewpoints of appellants are set forth in the brief and reply brief.
Claim 1 calls for an electrical connector having a housing for holding a plurality of contact
elements, with each contact element being connected to an insulated wire by crimping. Regarding the
crimping of the contact elements to the insulating jacket of the wire, claim 1 requires that
said insulation crimping portion defining a cross-section when crimped wherein its
dimension along the longitudinal direction of the housing is less than its dimension along
a direction substantially orthogonal to the longitudinal direction of said housing, each of
said wire contact assemblies [i.e., the contact element with the wire crimped thereto]
being positioned within the respective cavities in substantially the same orientation with
respect to each other.
There appears to be no dispute that Bruni and Shindo generally disclose the subject matter of
claim 1 with the exception of the above quoted claim requirement regarding the configuration of the
insulation crimping portions and their orientation in the housing. For a teaching of this claim
requirement, the examiner relies on Beyer. Specifically, the examiner has taken the position that
[Beyer] discloses an oval crimp section, and to form the insulation crimping portion of
Appeal No. 97-2619
Application 08/104,461
4
the contacts of either . . . [Bruni or Shindo] in an oval shape thus would have been
obvious, for better engagement between the insulation and the contact. The oval shape
thus would allow closer spacing between the contacts. [Final rejection, page 2.]
In responding to appellants’ argument in the brief, the examiner acknowledges on pages 3-4 of
the answer that in Beyer the oval shaped crimp section is for the conductor of the wire rather than the
insulation jacket, and that there is no disclosure at all in Beyer of crimping a wider insulation jacket of a
wire into an oval configuration. Nevertheless, the examiner posits that
it also would have been obvious to one of ordinary skill in the art to form the insulation
crimping portion of the male contact of either Bruni er al or Shindo et al as an oval
shape . . . to allow for a reliable connection with the conductor [sic, insulation jacket].
Clearly, it would have been desirable to have a reliable connection between the contact
and both the wire conductor itself and the surrounding insulation. [Answer, page 4.]
The examiner’s position is not well taken. Like appellants, we find no teaching whatsoever in
Beyer of crimping an insulation jacket to a contact, much less a teaching of crimping an insulation jacket
to a contact with a crimp barrel that is oval in its final configuration. While Beyer teaches that the
disclosed conductor crimp of oval configuration is advantageous as a conductor connection because it
prevents nicks to the conductor and protects the connection from the deleterious effects of aggressive
substances (translation, pages 2 and 3), it is not clear to us that these considerations would apply to a
crimp connection for the insulating jacket of a wire as well. In short, it is not at all apparent to us that
the ordinarily skilled artisan would consider Beyer’s oval conductor crimp portion to be of any benefit
in terminating the insulation jacket of a wire. Where prior art references require a selective combination
Appeal No. 97-2619
Application 08/104,461
5
to render obvious a claimed invention, there must be some reason for the combination other than
hindsight gleaned from appellants’ disclosure. Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1143, 227 USPQ 543, 551 (Fed. Cir. 1985). In the fact situation before us, we are unable to agree
with the examiner that one of ordinary skill in the art would have been motivated by the teachings of
Beyer to incorporate oval crimps in the connectors of Bruni or Shindo for terminating the insulating
jackets of the wires in the manner called for in claim 1.
In light of the foregoing, we will not sustain the §103 rejection of claim 1, or claims 2-4 and 6-9
that depend therefrom, as being unpatentable over Bruni or Shindo in view of Beyer.
As to the examiner’s second rejection, we have carefully reviewed the Berg and Piscitelli
references additionally relied upon and find nothing therein that makes up for the deficiencies of Bruni,
Shindo and Beyer noted above. Hence, we also will not sustain the § 103 rejection of claims 5-9 as
being unpatentable over Bruni or Shindo in view of Beyer, and further in view of Berg or Piscitelli.
Under the provisions of 37 CFR § 1.196(b), we enter the following new rejections.
Claims 1-4 are rejected under 35 U.S.C. § 103 as being unpatentable over the Japanese
publication to Nishijo (cited by appellants in the Information Disclosure Statement filed June 26, 1997)
in view of Shindo.
Nishijo, Figures 3-8, discloses a wire contact assembly comprising an insulated wire 2 including
a conductor surrounded by a layer of insulation, and a contact crimped thereto. The contact includes a
Appeal No. 97-2619
Application 08/104,461
6
locking portion (generally adjacent reference numeral 4), a conductor crimping portion 3B, and an
insulation crimping portion 3A. The forward end of the contact may
comprise either a receptacle (Figure 3) or an elongate terminal pin (Figure 9). As clearly seen in Figure
4, the insulation crimping portion 3A defines a cross-section when crimped wherein its horizontal
dimension is less than its vertical dimension. The wire contact assembly is carried in a housing (see, for
example, Figure 10).
Shindo discloses an electrical connector generally as called for in the first 16 lines of claim 1.
Thus, Shindo’s connector 60 comprises an elongate housing including a front face (i.e., the face of
connector 60 beyond which the elongate terminals 51, as seen in Figure 2, extend) and a rear face.
The housing includes a plurality of cavities 62 separated by partitions. Shindo’s cavities are provided in
an array that extends both longitudinally and laterally. The cavities receive wire contact assemblies,
each comprising an insulated wire 70 and electrical contact 50 having a wire crimp portion 53, an
insulation crimp portion 52, a locking portion 21, and an elongate terminal 51. The locking portions of
the contacts engage with housing latches 37 (Figure 2) to releasibly hold the wire contact assemblies in
their respective cavities.
Considering first claim 1, it would have been obvious to one of ordinary skill in the art to
provide a housing of the type shown by Shindo for holding a plurality of Nishijo’s wire contact
Appeal No. 97-2619
Application 08/104,461
7
assemblies for the self evident advantages to be gained by incorporating a plurality of contact terminals
in a single electrical housing. The resulting combination would meet the configuration and orientation
limitations for the insulation crimping portions found in the last 5 lines of claim 1, in our view. The
requirement of claim 1 that the housing cavities are spaced on centers less
than 0.09 inches apart, and that the insulation crimping portions of the contact are adapted to receive a
range of wire sizes including 28 AWG, are considered to be obvious matters of engineering choice
depending on the contact density and wire size, respectively, called for by the particular connector
application.
The limitation of claim 2 is disclosed by Shindo. As to claims 3 and 4, the requirement that the
contact terminal is of rectangular cross-section, and the requirement that contact terminal is of solid
cross-section, are at the very least suggested by Shindo’s showing in Figure 3 at element 51, such that
the subject matter of these dependent claims also would have been obvious.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Nishijo in view of
Shindo, and further in view of Berg. Berg teaches (e.g., column 6, lines 13-25) milling stock material to
form a bi-level strip 10 from which contacts are made, such that the rearward ends of the resulting
contacts 60, including the crimp portions 64 thereof, are of reduced thickness to facilitate crimping. In
light of Berg’s teaching, it would have been further obvious to one of ordinary skill in the art to provide
Appeal No. 97-2619
Application 08/104,461
8
contacts in the Nishijo/Shindo combination that have terminal end portions of a first predetermined
thickness and the remainder of the contact, including the crimp portions, of a second lesser thickness,
for the reasons taught by Berg.
In summary, the examiner’s rejections of the appealed claims are reversed. New rejections of
claims 1-5 pursuant to 37 CFR § 1.196(b) have been made.
The decision of the examiner is reversed.
This decision contains new grounds of rejection pursuant to 37 CFR § 1.196(b) (amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63,122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that “[a] new
ground of rejection shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellants, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37 CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so re-
jected, or both, and have the matter reconsidered by the
examiner, in which event the application will be remanded
to the examiner. . . .
Appeal No. 97-2619
Application 08/104,461
9
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-2619
Application 08/104,461
10
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
REVERSED; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2619
Application 08/104,461
11
LJS/caw
Michael L. Hoelter
Chief Patent Counsel
8155 T & B Boulevard
Memphis, TN 38125