Ex Parte Liskow

Patent Trial and Appeal Board

Jan 11, 2018

14366631 (P.T.A.B. Jan. 11, 2018)

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.
2178-1003 4227
EXAMINER
TA, THO DAC
ART UNIT PAPER NUMBER
2831
MAIL DATE DELIVERY MODE
14/366,631 06/18/2014
10800 7590 01/12/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Uwe Liskow
01/12/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte UWE LISKOW
Appeal 2017-003332
Application 14/366,631
Technology Center 2800
Before MARK NAGUMO, GEORGE C. BEST, and AVELYN M. ROSS,
Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—6 and 8—12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In our Decision we refer to the Specification filed June 18, 2014 (“Spec.”),
the Final Office Action appealed from dated January 15, 2016 (“Final
Act.”), the Appeal Brief filed September 9, 2016 (“Appeal Br.”), the
Examiner’s Answer dated October 25, 2016 (“Ans.”) and the Reply Brief
filed December 26, 2016 (“Reply Br.”).
2 Appellant is Applicant, Robert Bosch GmbH, which according to the
Appeal Brief is also the real party in interest and assignee of the above-
captioned application. Appeal Br. 2.
Appeal 2017-003332
Application 14/366,631
STATEMENT OF THE CASE
The subject matter on appeal relates to an electrical plug-type
connector and an associated arrangement comprising a housing. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An electrical plug-type connector consisting of
electrically non-conductive material, the electrical plug-type
connector comprising:
a plug housing with an inner wall and at least one plug-
type contact, the inner wall configured to delimit a first space,
the plug-type contact having a first end portion,
configured to be contacted by a mating plug-type contact,
and a second end portion opposite the first end portion,
wherein:
the second end portion is connected to a printed circuit
board by solder,
the printed circuit board is fixedly connected to the plug
housing in a predetermined position,
the plug-type contact is devoid of a force-fitting
connection transversely to the axial direction in the
predetermined position,
the first end portion protrudes into the first space in the
predetermined position, and
the printed circuit board is connected in a fluid-tight
manner to the housing.
Appeal Br. 26 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1—6, 8, and 11 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description
requirement. Final Act. 2.
2
Appeal 2017-003332
Application 14/366,631
B. Claims 1 and 3 stand rejected under 35 U.S.C. § 112(b)
as indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor
regards as the invention. Id. at 3.
C. Claims 1—5 and 8 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Kamiya.3 Id. at 4.
D. Claims 1—3, 6, and 9-12 stand rejected under 35 U.S.C.
§ 103(a) over Applicant’s Admitted Prior Art4 in view of
Daly.5 Id. at 7.
Appellant requests reversal of Rejections C and D.6 See generally
Appeal Br. Appellant argues claims 1—3, 5, and 8 (Rejection C) and claims
1—3 and 9 (Rejection D) and does not present additional argument in support
of patentability for the remaining claims (claims 4, 6, and 10—12). Id.
Therefore, we address the claims identified by Appellant to resolve the
issues on appeal and the remaining claim will stand or fall with the argued
claims.
OPINION
Rejection A — Written Description (claims 1—6, 8, and 11)
Rejection B — Indefiniteness (claims 1 and 3)
The Examiner rejects claims 1—6, 8, and 11 as failing to comply with
the written description requirement. Final Act. 2. In particular, the
Examiner finds that the amendment to claim 1 constitutes new matter. Id.
The Examiner also concludes that claims 1 and 3 are indefinite because the
3 Arihiro Kamiya, US 6,869,293 B2, issued March 22, 2005 (“Kamiya”).
4 Applicant’s Admitted Prior Art is Figure 1 of the Drawings filed June, 18,
2014 (“AAPA”).
5 Daly et al., US 5,967,802, issued October 19, 1999 (“Daly”).
6 Appellant does not address Rejections A and B.
3
Appeal 2017-003332
Application 14/366,631
claims lack proper antecedent basis for the limitations “the first end.” Id.
at 3.
Appellant does not address either Rejection A or Rejection B; and in
doing so, Appellant fails to identify a reversible error by the Examiner.
Accordingly, we summarily affirm the lack of written description and
indefmiteness rejections as set forth by the Examiner.
Rejection C—Anticipation (claims 1—5 and 8)
The Examiner rejects claims 1—5 and 8 as anticipated by Kamiya.
Final Act. 4. The Examiner finds that Kamiya teaches an electrical plug-
type connector as recited in claims 1—5 and 8. Id. at 4.
Claim 1:
Appellant first argues that that there is no disclosure in Kamiya of a
fluid-tight connection. Appeal Br. 7. Rather, Appellant explains that
Kamiya simply teaches a clamped configuration secured with a screw. Id.
Appellant further notes that no showing of inherency has been made by the
Examiner that the clamping connection would necessarily result in a fluid-
tight connection. Id. at 8. Appellant also contends that one skilled in the art
would not understand that the connection between the printed circuit board
and the housing to be fluid-tight because Kamiya already contains a seal that
precludes fluid from entering the housing. Appeal Br. 8—9. Therefore
Appellant reasons that a fluid-tight connection between the housing and the
printed circuit board serves no purpose in Kamiya. Id. at 9.
We do not find Appellant’s arguments persuasive of reversible error.
Anticipation is established when “one skilled in the art would reasonably
understand or infer from the prior art reference’s teaching that every claim
4
Appeal 2017-003332
Application 14/366,631
[limitation] was disclosed in that single reference.” Akamai Techs., Inc. v.
Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192—93 (Fed.
Cir. 2003) (alteration in original) (quoting Dayco Prods., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003)); see also In re
Preda, 401 F.2d 825, 826—27 (CCPA 1968) (“[I]n considering the disclosure
of a reference, it is proper to take into account not only specific teachings of
the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”). As the Examiner correctly
notes (Ans. 2), the claims do not require any particular mechanism to effect
a fluid-tight connection and “one skill in the art would recognize that the
connection of PCB 1 between housings 2 and 3 would prevent fluid from the
lower surface area of PCB 1 from entering the upper surface area of PCB 1.”
The Examiner’s findings are supported by Kamiya’s statement that water
entry into the interior of housing 2 is undesirable. In particular, Kamiya
states
[w]hen the electronic device is installed in an engine
compartment, unwanted materials such as water may enter
inside of the case 2 through the through hole 7. To solve this
problem, rubber seals 16 are fixed to the female connectors 15.
The rubber seals 16 work as gaskets to block the unwanted
materials from entering a gap between the connector housing 14
and the female connector 15.
Kamiya, col. 3,11. 21—27 (emphasis added). The Examiner provides
annotated Figure IB (below) as an illustration.
5
Appeal 2017-003332
Application 14/366,631
FIG. I B
this clamping area would serve as a fluid tight
connection area and would prevent the fluid from
area 1 from entering the area 2 and vice versa
Ans. 3. Figure IB represents and enlarged cross-sectional view of an
electronic device with integrated connectors according to the first
embodiment of Kamiya. Kamiya col. 9—14. As shown above, in the
Examiner’s annotated version of Kamiya’s Figure IB, gasket 16 provides a
seal to prevent entry of water and other fluids from the exterior of the plug
through hole 7 and into area 2. Thus, the Examiner’s finding that the circled
region similarly provides for a fluid tight connection is reasonable given
Kamiya’s desire to avoid water entry into area 2. See Preda, 401 F.2d at
826-27.
Therefore, on this record, we affirm the Examiner’s rejection of
claim 1 as anticipated by Kamiya.
Claim 2:
Claim 2 depends from claim 1 and additionally requires:
a bridge element fixedly connected to the inner wall, wherein:
6
Appeal 2017-003332
Application 14/366,631
the bridge element has at least one opening extending in a
direction of longitudinal extension of the plug-type contact,
the at least one plug-type contact is configured to be
guided through the at least one opening, and
the at least one plug-type contact is configured to be
supported by the bridge element exclusively in a radial direction,
wherein the printed circuit board forms at least a portion of a
fluid barrier for the at least one opening.
Appeal Br. 26—27 (Claims App’x) (emphasis added). The Examiner finds
that Kamiya teaches a bridge element fixedly connected to the inner wall
and that the plug-type contact is configured to be supported in a radial
direction by the bridge element. Final Act. 5.
Appellant argues that Kamiya fails to teach a bridge that provides
support to the plug-type contact in a radial direction. Appeal Br. 11.
Appellant explains that “Kamiya specifically teaches that there is no radial
support provided by the alleged bridge,” and therefore Kamiya cannot also
provide radial support. Id. (citing Kamiya col. 3,11. 35—46). Appellant
points to the disclosure of Kamiya that explains “there is no contact, ever,
between the flange 8 and the fitting members 10.” Reply Br. 4 (citing
Kamiya col. 4,11. 44-47). Appellant further explains that because Figure 5B
is the configuration of the actual fitting, which has a diameter larger than
that of pin 5, Kamiya does not teach a bridge member that provides radial
support. Id. at 5.
We do not find Appellant’s arguments persuasive of reversible error.
Here, the Examiner’s rejection rests solely upon the Examiner’s finding that
plug contact 5 extends through an opening 7 and is supported by the bridge
element as shown in annotated Figure 5 A of Kamiya, below. Ans. 4; see
also Final Act. 5.
7
Appeal 2017-003332
Application 14/366,631
Ans. 5. Figure 5 A depicts an enlarged cross-sectional view of an electronic
device according to a fourth embodiment of Kamiya. Kamiya col. 2,11. 30—
32. As illustrated in the annotated version above, plug-type contact 5
extends through opening 7 and directly abuts the bridge element, at a
position above and below the flange 8, to support the contact/pin in a radial
direction. Appellant’s first argument that “Kamiya specifically teaches that
there is no radial support” is too reaching. The cited portions of Kamiya
relate to an embodiment where the connector pins are soldered to the printed
circuit board and not fixed to case 2. Kamiya explains that by not “fixing”
the second end of the pin to the case, stress is less likely to be applied to the
solder. Kamiya, col. 3,11. 35—46. Kamiya does not state, however, that the
pin does not abut the bridge element in Figure 5A. Further, Appellant’s
second argument regarding flange 8 and fitting members 10 (Reply Br. 4)
does not address the actual findings made by the Examiner—i.e., that the
plug contact 5 extends through opening 7—and instead, addresses features
8
Appeal 2017-003332
Application 14/366,631
not relied upon by the Examiner. Accordingly, Appellant’s argument fails
to identify a reversible error. Thus, the preponderance of the evidence
supports the Examiner’s findings.
Claim 3:
Claim 3 also depends from claim 1 and additionally recites, “wherein:
the plug-type contact has a thickened portion, the thickened portion is
configured to be supported on the bridge element such that a movement in
translation of the plug-type contact in a direction of the first end portion is
prevented.” Appeal Br. 27 (Claims App’x). The Examiner finds that
Kamiya teaches a thickened portion 8 that is supported on the bridge
element. Final Act. 6; see e.g., Kamiya Fig. 5A.
Appellant contends that the Examiner mischaracterizes Kamiya.
Appeal Br. 12. Specifically, Appellant explains that the Examiner’s position
that “the flanges 8 of Kamiya are supported by the bridge in an axial
direction” is in error because Kamiya “teaches that there is no axial support
provided by the alleged bridge.” Id. at 12—13 (citing Kamiya col. 3,11. 63—
67).
Appellant’s argument is persuasive of reversible error. Kamiya
clearly states that the thickened portions or “flanges 8 and the case 2 do not
touch even when the components expand or contract due to temperature
changes.” Kamiya, col. 3,11. 65—67; see also id. col. 4,11. 4—11 and 29-32.
Rather, Kamiya’s flanges 8 are used to position the connector pins 5 during
the soldering process—and not to prevent axial movement. Id. col. 3,11. 53—
60. Because Kamiya’s flanges do not touch the housing, the flanges do not
prevent “a movement in translation of the plug-type contact in a direction of
9
Appeal 2017-003332
Application 14/366,631
the first end portion” as claimed. Thus, we do not sustain the Examiner’s
rejection of claim 3 as anticipated by Kamiya.
Claim 5:
Claim 5, depending from claim 1, further requires that “the plug-type
contact extends completely through the printed circuit board; and an
electrical line is non-detachably connected electrically conductively on a
portion of the at least one plug-type contact that extends beyond the printed
circuit board.” Appeal Br. 27 (Claims App’x). The Examiner finds that
[although Kamiya does not specifically disclose[] the claimed
electrical line non-detachably connected electrically
conductively on a portion of the at least one plug-type contact
5, this feature is seen as being inherent teaching of that device
since means 5 for providing a voltage between the mating
connector at the front end and the PCB 1 is disclosed and it is
apparent that some type of electrical line on the PCB 1 carrying
circuit elements from the plug-type contact 5 to electrical
component on the PCB must be present for the electrical plug-
type to function as intended.
Final Act. 6.
Appellant argues that inherency has not been established by the
Examiner. Appeal Br. 14. According to Appellant, the Examiner finds that
Kamiya inherently teaches both “an electrical line nondetachably connected
electrically conductively on a portion of the at least one plug-type contact
that extends beyond the printed circuit board1'’ (claim 5) and “an electrical
line nondetachably connected electrically conductively to the at least one
plug-type contact on printed circuit board’ (claim 4). Id. (emphasis added).
Appellant reasons that Kamiya “cannot inherently teach both connection on
the circuit board and connection off of the circuit board.” Id.
10
Appeal 2017-003332
Application 14/366,631
In this instance, we agree with Appellant that the Examiner has failed
to establish that Kamiya inherently teaches “an electrical line [that] is non-
detachably connected electrically conductively on a portion of the at least
one plug-type contact that extends beyond the printed circuit board.’ '’
Appeal Br. 27 (Claims App’x) (emphasis added). We agree with the
Examiner that claims 4 and 5 are directed to different embodiments. Ans. 6.
We further observe that Kamiya teaches both connection of the plug-type
contact on the circuit board and off of the circuit board. Compare Kamiya
Fig. 7, with Fig. 8. And, we agree with the Examiner that, in order to
function properly, an electrical line must be connected to the plug-type
contact 5. Final Act. 6. But Kamiya does not teach, inherently or otherwise,
an embodiment in which the electrical line is connected to the portion of the
contact “that extends beyond the printed circuit board” as claimed.
Therefore, we cannot sustain the Examiner’s rejection of claim 5 as
anticipated.
Claim 8:
Claim 8 depends from claim 1 and further recites “wherein a
peripheral second sealing element is arranged between the printed circuit
board and a bridge element.” Appeal Br. 28 (Claims App’x). The Examiner
finds that sealing element 16 of Kamiya satisfies this limitation. Final
Act. 7.
Appellant contends that the Examiner has mischaracterized
Kamniya’s teachings. Appeal Br. 15. In particular, Appellant notes that
claim 8 requires a sealing element between the PCB and bridge element, but,
the Examiner identifies female connector 15 as the bridge element which “is
not fixedly attached to the inner wall” of the housing 2. Id. at 15—16.
11
Appeal 2017-003332
Application 14/366,631
Because “a structure which is not fixedly connected to a housing is not the
same as a structure which is fixedly connected to a housing,” Kamiya fails to
suggest the arrangement of claim 8. Id. at 16. Appellant also argues that the
Examiner has misconstrued the terms “bridge” and “plug.” Reply Br. 6.
Appellant explains that the “bridge” is “a part of the plug which is
sufficiently attached to the inner wall of the plug to provide lateral support”
and not located on the female side of the connection. Id. at 7.
Appellant’s arguments are persuasive of reversible error. “[DJuring
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.” In re Translogic Tech.,
Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (alteration in the original)
(quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The scope of
the claims in patent applications is not determined solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004); Phillips v. AWHCorp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the
claim construction analysis ... it is the single best guide to the meaning of a
disputed term.’” (citation omitted)). As the Appellant explains (Reply Br.
7—8), the “bridge” is part of the “plug” which is part of the male-ended
connector. The “electrical plug-type connector” claimed describes the
connector as having two end portions where one end portion is “configured
to be contacted by a mating plug-type contact,” or female connector. Appeal
Br. 26 (Claims App’x). This understanding is consistent with the
Specification which describes an “electrical plug-type connector [that] can
12
Appeal 2017-003332
Application 14/366,631
be electrically contacted from the exterior space by means of an electrical
mating plug-type connector.” Spec. 1; see also id. at 3 (“The plug-type
contact has a first end, which can be contacted by a mating plug-type
contact, and a second end, which is opposite the first end.”). The bridge,
recited in claim 8, is part of the “electrical plug-type connector” or male-
ended connector. Appeal Br. 28 (Claims App’x); see also Spec. 5 (“a bridge
element is fixedly connected to the inner wall of the electrical plug-type
connector”), and 17 (“A bridge element 42 extending substantially
transversely to the direction of longitudinal extension L of the plug-type
contact 6 is non-detachably connected non-detachably on the inner wall 8 of
the plug housing 4”). Thus, the claims and Specification make clear that the
“electrical plug-type connector” claimed is a male-ended connector and the
“bridge” is part of the “electrical plug-type connector.”
The Examiner identifies a portion of the mating plug-type connector,
i.e., female-ended connector, of Kamiya as the bridge. See Final Act. 5 and
7; Ans. 6—7. And, because the male-ended connector of Kamiya does not
depict a second sealing element located between the printed circuit board
and the bridge element, the Examiner reversibly errs in the rejection of
claim 8.
Rejection D — Obviousness (claims 1—3, 6, and 9—12)
The Examiner rejects claims 1—3, 6, and 9—12 as obvious over AAPA
in view of Daly. Final Act. 7. The Examiner finds, with respect to claim 1,
that Figure 1 of Appellant’s drawings, i.e., the AAPA, teaches nearly all
aspects of claim 1. The Examiner acknowledges, however, that the AAPA
fails to disclose: (1) “the second end portion is connected to a printed circuit
board by solder”; (2) “the printed circuit board is fixedly connected to the
13
Appeal 2017-003332
Application 14/366,631
plug housing in a predetermined position”; and (3) the printed circuit board
is connected in a fluid-tight manner to the housing.” Id. at 8. The Examiner
finds that Daly provides these missing features. Id. at 9. The Examiner
reasons that the person skilled in the art would have modified the AAPA
according to the teachings of Daly “since the printed circuit board would
provide the user with an improved and versatile connector and the shape of
the plug-type contact would provide the user with a faster assembling time.”
Id. at 9—10.
Appellant asserts that Daly fails to teach connecting the printed circuit
board to the housing in a fluid-tight manner and that the Examiner
mischaracterizes the teachings of Daly. Appeal Br. 17.
The Examiner explains that no connection mechanism is recited by
the claims. Ans. 7. Further, the Examiner states that Daly shows the printed
circuit board 104 connected to the plug housings 106 and 108 in a fluid tight
manner. Id. at 7—8. The Examiner provides annotated Figure 4 of Daly,
reproduced below, to further illustrate this fluid-tight “clamping”
connection.
14
Appeal 2017-003332
Application 14/366,631
jpiof 4
Id. at 9. Figure 4 is a cross-sectional view of a bus terminator assembly.
Daly col. 4,11. 30—31. According to the Examiner, the circled portions
where the housing and circuit board meet, is fluid tight. Id. at 8—9.
The weight of the evidence supports Appellant’s arguments. The
Examiner relies upon Daly to teach a fluid-tight clamping connection
between the printed circuit board and the housing. Final Act. 9. But, as
Appellant urges (Reply Br. 9), there is no teaching in Daly that the clamping
areas, where the PCB and housings 10 and 108 join, are fluid tight or that a
fluid-tight connection is desirable in that location. Unlike the connector of
the claimed invention or of Kamiya, Daly is directed to a communication
bus for connecting a central processing unit to peripheral devices (e.g., disk
15
Appeal 2017-003332
Application 14/366,631
drives and printers) where there is no need for a water-tight connection.
Daly, col. 1,11. 1—13. The connection of Daly is described as a latched
connection in which the cover 106 is force-fit over a ridge on the housing
108. Id. col. 5,11. 18—25; see also id. col. 4,11. 59-65 and col. 5,11. 18—2.
Accordingly, there is no suggestion in Daly that the connection between the
printed circuit board 104 and housings 106 and 108 are fluid tight.
Therefore, on this record, we do not sustain the Examiner’s rejection of
claim 1 as obvious over AAPA in view of Daly. Because the basis for
reversal of claim 1—i.e., the lack of a fluid-tight connection between the
printed circuit board and the housing—is common for each of the remaining
claims, we similarly reverse the Examiner’s rejection of claims 2—3, 6, and
9-12.
CONCLUSION
Appellant has not identified a reversible error in the Examiner’s
rejection of claims 1—6, 8, and 11 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Appellant has not identified a reversible error in the Examiner’s
rejection of claims 1 and 3 under 35 U.S.C. § 112(b) as indefinite.
Appellant has not identified a reversible error in the Examiner’s
rejection of claims 1, 2, and 4 under 35 U.S.C. § 102(b) as anticipated by
Kamiya. But, Appellant has identified a reversible error in the Examiner’s
rejection of claims 3,5, and 8 under 35 U.S.C. § 102(b) as anticipated by
Kamiya.
16
Appeal 2017-003332
Application 14/366,631
Appellant has identified a reversible error in the Examiner’s rejection
of claims 1—3, 6, and 9-12 under 35 U.S.C. § 103(a) over Applicant’s
Admitted Prior Art in view of Daly.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—6, 8, and
11 is affirmed and the Examiner’s rejection of claims 9, 10, and 12 is
reversed.
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).
AFFIRMED-IN-PART
17