Ex Parte Lavie

Board of Patent Appeals and Interferences

Dec 7, 2010

10644416 (B.P.A.I. Dec. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/644,416 08/20/2003 Reuven Lavie ITL.1000US (P16572) 6954
21906 7590 12/07/2010
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
TA, THO DAC
ART UNIT PAPER NUMBER
2839
MAIL DATE DELIVERY MODE
12/07/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REUVEN LAVIE
____________

Appeal 2009-007051
Application 10/644,416
Technology Center 2800
____________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 or for filing a request for rehearing as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007051
Application 10/644,416

2
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-8 and 10-24, which constitute all the claims pending in this
application. Claim 9 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to an Ethernet connector having
capacitively coupled terminals to reduce cross-talk (Abstract). Claims 1 and
8, which are illustrative of the invention, read as follows:
1. A method comprising:
capacitively coupling a pair of terminals of an Ethernet
connector to reduce cross talk.

8. A network connector comprising:
a non-conductive housing having a jack;
a plurality of Ethernet terminals to receive Ethernet
network signals;
a first capacitor to couple a first pair of said Ethernet
terminals; and
a second capacitor to couple a second pair of said
Ethernet terminals, said terminals to contact mating Ethernet
connectors.

The Examiner relies on the following prior art in rejecting the claims:
Paulson US 5,938,479 Aug. 17, 1999

Claims 1-8 and 10-17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Paulson.
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Application 10/644,416

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Claims 18-24 stand rejected under 35 U.S.C. § 103(a) as obvious over
Paulsen.
Rather than repeat the arguments here, we make reference to the
Briefs (Second Supplemental Appeal Brief, filed Feb. 4, 2009; Reply Brief
filed Dec. 27, 2005) and the Answer (mailed Nov. 17, 2005) for the
respective positions of Appellant and the Examiner. Only those arguments
actually made by Appellant have been considered in this decision.
Arguments that Appellant did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Claims 1, 8, 17, and 20 are independent claims. Appellant argues
claims 1-7 as a group contending that the cited art does not disclose an
Ethernet connector or Ethernet terminals (App. Br. 10). Appellant’s
arguments for the patentability of claims 17-24 rely on the argument made
for claims 1-7 (App. Br. 11). Appellant argues claims 8 and 10-16 as a
group, contending Paulson does not disclose the “non-conductive housing
having a jack” and “terminals to contact mating Ethernet connectors” as
recited in claim 8 (App. Br. 11).
Therefore, we select claims 1 and 8 as the representative claims,
pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). The issues are:
1. Does Paulson disclose an Ethernet connector having Ethernet
terminals, as recited in claim 1?
2. Does Paulson disclose a non-conductive housing having a jack
and terminals to contact mating Ethernet connectors, as recited in claim 8?

Appeal 2009-007051
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PRINCIPLES OF LAW
“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. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). “These elements must be arranged as in the claim under
review, but this is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990) (citations omitted).

ANALYSIS
Claim 1
Appellant correctly asserts that the recitation of an “Ethernet
connector” (otherwise known as an RJ-45 connector) is a structural
limitation of the claim requiring specific connector structures and cannot be
read out of the claim (App. Br. 10). However, we do not agree with
Appellant’s contention that Paulson does not disclose an “Ethernet
connector” (App. Br. 10; Reply Br. 1-2). Although Paulson does not use the
term “Ethernet connector,” the use of the precise words is not required. See
Bond, 910 F.2d at 832. Appellant has pointed to no structural or functional
difference between the connector disclosed by Paulson and an Ethernet
connector. Comparing the structure disclosed in Figure 1 of Paulson (e.g.,
overall geometry and number of contacts) to the structure illustrated in IEEE
Standard 802.3, Figure 12-30 (cf. Figs. 1, 4), and considering the overall
description found in Paulson’s disclosure (see, e.g., Paulson, col. 1, ll. 5-10,
26-35; col. 2, ll. 28-36), we find that a person having ordinary skill in the
Ethernet connector art would recognize that Paulson discloses an Ethernet
connector.
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Additionally, because we find that Paulson discloses an Ethernet
connector, we further agree with the Examiner’s finding regarding claims 3
and 4 that Paulson discloses Ethernet terminals (Ans. 3) (see, e.g., Paulson
Figs. 5, 6). Appellant has submitted no further substantive arguments for the
patentability of claims 17-24 (App. Br. 11). Accordingly, we sustain the
rejections of claims 1-7 and 17-24.
Claim 8
Claims 8 recites “non-conductive housing having a jack” and
“terminals to contact a mating Ethernet connector.” Appellant contends
these features are further limitations not found in Paulson (App. Br. 11,
Reply Br. 2). With regard to the recitation of “Ethernet,” we rely on the
same findings and analysis set forth for claim 1, supra, and agree with the
Examiner’s findings with respect to that recitation in claim 8 (Ans. 3-5).
The Examiner further points to Paulson’s non-conductive housing 12 having
a jack 20 and terminals 54 as meeting the remaining argued recitations of
claim 8 (Ans. 5). We agree with the Examiner.
The Examiner’s findings are reinforced by Paulson’s disclosure in
Figure 1 and at column 2, lines 28 to 36, which describe a modular plug
opening 20 (i.e., “jack”) having spring contacts 22 (i.e., “terminals”) to
engage a mating plug (i.e., “to contact a mating … connector”). Although
Paulson does not explicitly use the term “non-conductive,” a person having
ordinary skill in the art would understand from the overall disclosure of
Paulson that the housing 12 is non-conductive. See Bond, 910 F.2d at 832.
We note that, for example, in Paulson’s Figure 9, the portion of the housing
12 near the center of the figure is shown in physical contact with spring
contact 56E, which would be understood by one skilled in the art to also be
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in contact with spring contacts 56H, 62G, and 62H (see also Paulson, Fig.
2). One skilled in the art would recognize that the housing is non-
conductive because a conductive material would render the connector non-
functional.
Additionally, we observe that, as shown in Figure 9, Paulson uses the
same graphical symbols to designate the material for the housing 12 and for
the lead frame block 52. As such, the housing material is implied to be the
same as that of lead frame block 52, which is disclosed by Paulson at
column 3, lines 18 to 21, as being a dielectric (i.e., “non-conductive”) or
plastic material.2 See 37 C.F.R. § 1.84 (h)(3).
Accordingly, we sustain the rejection of claim 8 as well as claims 10-
16 grouped therewith as falling with claim 8 (App. Br. 11).

ORDER
The decision of the Examiner rejecting claims 1-8 and 10-24 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).

AFFIRMED

2 Further, Figure 9 of Paulson specifically designates a non-conductive
material for the housing 12 by using the conventional symbol for a synthetic
resin or plastic material. See USPTO, Symbols for Draftsmen,
http://www.uspto.gov/web/offices/pac/design/drawing.html.
Appeal 2009-007051
Application 10/644,416

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TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631