Ex parte Kodama

Board of Patent Appeals and Interferences

Jan 31, 2002

09023198 (B.P.A.I. Jan. 31, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHINJI KODAMA
____________
Appeal No. 2000-0464
Application No. 09/023,198
____________
HEARD: January 9, 2002
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Before HAIRSTON, DIXON, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8, which are all of the claims
pending in this application.
Appellant's invention relates to a connector having a
connector housing, a screw hole for fixing the connector
housing to a printed circuit board, and a guide rib projecting
from the bottom face of the connector housing. The guide rib
includes a hollow groove around its base portion. The hollow
groove avoids cracking when the connector housing is screwed
Appeal No. 2000-0464
Application No. 09/023,198
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into the printed circuit board. Claim 1 is illustrative of
the claimed invention, and it reads as follows:
1. A connector comprising:
a connector housing;
a terminal provided on a bottom face of said connector
housing and connected to a printed circuit board;
a guide rib protruding from said bottom face of said
connector housing;
a hollow groove portion formed around a base portion of
said guide rib on said bottom face of said connector housing;
and
a screw hole, for fixing said connector housing to said
printed circuit board, provided on said bottom face of said
connector housing;
wherein the position of said connector housing with
respect to said printed circuit board is determined by said
guide rib.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Glomb et al. (Glomb) 4,710,132 Dec. 01,
1987
Appellant's admitted prior art shown in Figures 4-6 and
described in the specification on page 1, line 14-page 2, line
(AAPA)
Appeal No. 2000-0464
Application No. 09/023,198
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Claims 1 through 8 stand rejected under 35 U.S.C. § 103
as being unpatentable over AAPA in view of Glomb or,
alternatively, over Glomb alone.
Reference is made to the Examiner's Answer (Paper No. 13,
mailed September 14, 1999) for the examiner's complete
reasoning in support of the rejections, and to appellant's
Brief (Paper No. 12, filed July 6, 1999) and Reply Brief
(Paper No. 14, filed November 12, 1999) for appellant's
arguments thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellant and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 8.
The examiner (Answer, page 3) admits that AAPA does not
include a hollow groove around the base of the guide rib, as
recited in independent claims 1 and 4. To remedy this
deficiency, the examiner turns to Glomb. The examiner asserts
(Answer, page 3) that it would have been obvious to modify
AAPA "by having a hollow groove portion around a base portion
Appeal No. 2000-0464
Application No. 09/023,198
4
of a guide rib as taught by Glomb et al. to disperse the
stress that occurs when the connector housing is fixed on the
printed circuit board and to prevent a crack on the base
portion of the guide rib."
The examiner fails to point out where the prior art
suggests such a modification. We find the motivation provided
by the examiner solely in appellant's specification (page 3,
lines 16-20). In rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the examiner to provide a reason why one
having ordinary skill in the pertinent art would have been led
to modify the prior art to arrive at the claimed invention.
Such reason must stem from some teaching, suggestion or
implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438
(Fed. Cir. 1988), cert. denied, 488 U.S. 825 (1988); Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986). These showings by the examiner are an
essential part of complying with the burden of presenting a
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Application No. 09/023,198
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prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Furthermore, "[t]hat knowledge can not come from the
applicant's invention itself." Oetiker, 977 F.2d at 1447, 24
USPQ2d at 1446. Thus, the examiner has failed to establish a
prima facie case of obviousness.
We note that Glomb does suggest (column 2, lines 52-60)
providing cavities 4 around posts 3. However, Glomb teaches
that the cavities are to collect chips that arise due to the
prescribed tolerances between the diameter of the posts and
the diameter of the corresponding bores for press fitting the
connector to the circuit board. As pointed out by appellant
(Brief, page 5), since AAPA connects the connector to the
printed circuit board using screws rather than by press
fitting, the skilled artisan would not have expected any chips
to arise and, therefore, would not have used Glomb's cavities
with AAPA.
Regarding the rejection of the claims over Glomb alone,
the claims require both a hollow groove portion around the
base of the guide rib and also "a screw hole, for fixing said
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Application No. 09/023,198
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connector housing to said printed circuit board, provided on
said bottom face of said connector housing." Although Glomb
does teach cavities 4 around posts 3, as described above, the
object of Glomb is to eliminate the use of screws by using a
press fit instead. Specifically, Glomb finds (column 1, lines
12-18) that a screw-type connection "requires a considerable
outlay in terms of cost and labor." Therefore, Glomb states
(column 1, lines 30-34), "With the provision of corresponding
bores in the printed circuit board to receive the posts, it is
thus possible to firmly connect the plug connector strip of
the invention to the printed circuit board without special
screwing work." Consequently, Glomb cannot be considered to
include the claimed screw holes.
Further, it would not have been obvious to add such screw
holes, as that would defeat the purpose of Glomb's invention.
The Federal Circuit has held that "a proposed modification
[is] inappropriate for an obviousness inquiry when the
modification render[s] the prior art reference inoperable for
its intended purpose. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984)." In re Fritch, 972 F.2d
Appeal No. 2000-0464
Application No. 09/023,198
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1260, 1265-1266 n.12, 23 USPQ2d 1780, 1783 n.12 (Fed. Cir.
1992). Therefore, as we cannot accept the examiner's proposed
modification of Glomb, the examiner again has failed to
establish a prima facie case of obviousness. Accordingly, we
cannot sustain the obviousness rejection of claims 1 through 8
over Glomb alone.
CONCLUSION
The decision of the examiner rejecting claims 1 through 8
under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Appeal No. 2000-0464
Application No. 09/023,198
8
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
APG:pgg
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