Ex Parte Lopez

Board of Patent Appeals and Interferences

Aug 7, 2009

11063227 (B.P.A.I. Aug. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES PAUL LOPEZ
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Appeal 2009-001998
Application 11/063,227
Technology Center 2800
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Decided: August 10, 2009
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Before ALLEN R. MACDONALD, VICE CHIEF Administrative Patent
Judge, and BEVERLY A. FRANKLIN and LINDA M. GAUDETTE,
Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 19-22. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2009-001998
Application 11/063,227

SUMMARY OF THE DECISION
We affirm.

STATEMENT OF THE CASE
Claims 19-22 are representative of the subject matter on appeal and
are set forth below:
19. An adapter connectable to a midspan repeater slot and to a
meter for testing cable pairs, the adapter comprising:

A transmit low circuit having disposed on a first side of the adapter a
first set of “to field” jacks and a set of first “from C.O.” jacks, and disposed
on a second side of the adapter at least a second set of “to field” jacks and at
least a second set of “from C.O.” jacks;

A receive high circuit having disposed on the first side of the adapter
at least one first set of “to C.O.” jacks and at least one first set of “from
field” jacks, and on the second side of the adapter a second set of “to C.O.”
jacks and a second set of “from field” jacks; and

A pin assembly connected to the jacks to form one or more electrical
loops, wherein the pin assembly is connectable to the midspan repeater slot
and at least one set of the transmit low circuit jacks and at least one set of the
receive high circuit jacks is connectable to the meter.

20. The adapter of claim 19, wherein the second side is adjacent to
the first side.

21. The adapter of claim 19, wherein the second side is distal to the
first side.

22. The adapter of claim 19, wherein the second side is opposite the
first side.

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Appeal 2009-001998
Application 11/063,227

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kracker 6,813,339 B2 Nov. 02, 2004

THE REJECTION
Claims 19-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kracker.
ISSUE
Has Appellant shown reversible error in the Examiner’s determination
by showing that modification of the apparatus of Kracker by adding a
second set of jacks on a second side (claim 19), wherein the second side is
adjacent to the first side (claim 20), or distal to the first side (claim 21), or
opposite to the first side (claim 22) would not have been obvious?

FINDINGS OF FACT
We refer to the Examiner’s undisputed findings regarding the specific
teachings of Kracker on page 3 of the Answer.

PRINCIPLES OF LAW
When there is a design need or market pressure to solve a
problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good
reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is
likely the product [is] not of innovation but of ordinary skill
and common sense.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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Appeal 2009-001998
Application 11/063,227

ANALYSIS
With regard to claim 19, the Examiner finds that Kracker discloses
each element of claim 19, except Kracker does not disclose the second sets
of jacks. The Examiner concludes it would have been obvious to one
having ordinary skill in the art at the time the invention was made to include
the second sets of jacks, since it has been held that mere duplication of the
essential working parts of a device involves only routine skill in the art, and
cites St. Regis Paper Co. v. Bemis Co., 549 F.2d 833 (Fed. Cir. 1977).
With regard to claims 20-22, the Examiner states that Kracker also
does not disclose different locations of the second sets of jacks, but
concludes that rearranging of parts involves only routine skill in the art, and
cites In re Japikse, 181 F.2d 1019 (CCPA 1950). Ans. 3.
Appellant argues that the claimed second set of jacks disposed on a
second side of the adapter is not mere duplication of parts; rather, the second
set of jacks on the second side of the adapter provides additional
functionality. Appellant states that, for example, the second set of jacks on
the second side of the adapter allows the adapter to be used in enclosures
where a repeater is obstructed on its end, such as by hold-down brackets.
Spec., para. [0019]. Appellant also argues that in certain configurations, a
repeater may be oriented so that it would be difficult or dangerous to access
jacks on a single side of the adapter. Spec., para. [0002]. The second set of
jacks on a second side of the adapter may be accessible by a meter even in
these orientations. Spec., para. [0019]. Br. 3-4.
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Appeal 2009-001998
Application 11/063,227

In response, the Examiner argues that the additional set of jacks has
the same function as the first set of jacks. The Examiner states that either
the first set of jacks or the second set of jack connects the same plugs to the
adapter. The Examiner states that improved accessibility of the jacks does
not mean that the function of the jacks would be changed. Ans. 4.
Appellant then argues that the Examiner’s reliance on a per se rule
when citing St. Regis is inappropriate because there must be some
suggestion in the cited art. Appellant argues that the Examiner must explain
why the prior art would have suggested to one of ordinary skill in the art the
desirability of the proposed modification. Br. 4. Appellant further discusses
St. Regis in the Reply Brief on page 3. With respect to claims 20-22,
Appellant discusses In re Japikse on pages 3-4 of the Reply Brief.
The Examiner responds by stating that Kracker provides motivation
for an additional set of jacks in col. 1, ll. 14-18, wherein Kracker discusses
the restricted conditions of operation in a manhole for a technician
descending into the manhole to work with the adapter. The Examiner states
that hence, the duplication of the jacks makes a technician's operations more
convenient. The Examiner also refers to his statement made in an Advisory
Action filed August 28, 2006 wherein the Examiner stated that it was
generally known in the art to provide electrical distribution adapters with a
variety of jacks at different surfaces of the adapter for purposes of their
convenient utilization. Ans. 4.
We agree with the Examiner’s position for the following reasons.
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Appeal 2009-001998
Application 11/063,227

The Court in St. Regis stated:
[T]he Lokey bag is only entitled to a patent if the fusion of
the old elements that comprised the Poppe patent and the old
element of multiple layering created a synergistic
combination. We hold that it did not do so. While the
addition of multiple plies to the concept of the Poppe bag
undoubtedly made it stronger and even may have been
necessary to make this type of bag commercially feasible, it
is not the type of innovation for which a patent monopoly is
to be granted. It is difficult to conceive of a more obvious
method of strengthening a certain type of bag than putting
one bag inside of another.
St. Regis, 549 F.2d at 838-39.
Likewise, in the instant case, Appellant has not demonstrated a
synergistic combination regarding the combination of a first set of jacks with
a second set of jacks. Appellant’s claims require an extra set of jacks. As in
St. Regis, adding a second set of jacks “is not the type of innovation for
which a patent monopoly is to be granted”. Also, as in St. Regis, supra, “it is
difficult to conceive of a more obvious method” of improving accessibility
to the apparatus of Kracker than by adding a second pair of jacks.
As for the aspect of the claimed invention found in claims 20-22
regarding different locations of the second set of jacks, we also agree with
the Examiner’s application of In re Japikse. Improved accessibility to the
apparatus of Kracker by having a second set of jacks at different locations
does not modify the operation of the apparatus itself; rather, access to the
apparatus is improved. 181 F.2d at 1023.
Furthermore, as the Court stated in KSR:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified,
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Appeal 2009-001998
Application 11/063,227

predictable solutions, a person of ordinary skill has good
reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is
likely the product [is] not of innovation but of ordinary skill
and common sense.
KSR, 550 U.S. at 421.
In view of the above, we affirm the rejection.
CONCLUSIONS OF LAW
Appellant has not shown reversible error in the Examiner’s
determination because Appellant has not shown that modification of the
apparatus of Kracker by adding a second set of jacks on a second side (claim
19), wherein the second side is adjacent to the first side (claim 20), or distal
to the first side (claim 21), or opposite to the first side (claim 22) would not
have been obvious.

DECISION
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)(v)(2008).
AFFIRMED

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