Ex Parte Mandrusov et al

Board of Patent Appeals and Interferences

Jul 23, 2008

10235221 (B.P.A.I. Jul. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VAL MANDRUSOV and DUANE FRIESEN
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Appeal 2008-0114
Application 10/235,221
Technology Center 2800
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Decided: July 23, 2008
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and CARLA M.
KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20.1 We have jurisdiction under 35 U.S.C. § 6(b).

1 The drawings were objected to and claims 6-15 were rejected under 35
U.S.C. § 112, second paragraph. The Examiner withdrew this objection and
rejection in the Answer mailed July 12, 2007 (Ans. 5), the most recent
Answer, to which we refer throughout this opinion.
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Application 10/235,221

We reverse.

STATEMENT OF CASE
Appellants’ claimed invention is an electromagnetic interference
(EMI) backshell assembly suitable for applications prone to high levels of
radiated electromagnetic emissions (Spec. 1:11-13). The invention is
directed to a method, system, and device having an electrical connector, an
insulative shell, a housing, and a threaded fastener. Appellants’ invention
allows for separate movement of electrical conductors and shielding
components to allow each to be adjusted for desired performance and for the
signal carrying components to float relative to the shielding or housing
(Spec. 2:24-27).
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A device comprising:

an electrical connector having a plurality of electrical conductors
adapted to mate with a matching connector;

an insulative shell encasing a portion of the electrical connector,

a housing having an interior adapted to receive the electrical
connector, the housing having a channel adapted to permit
independent movement of the electrical connector relative to the
housing, the housing including an electrically conductive material;
and

a threaded fastener coupled to the housing and adapted to mate with a
corresponding fastener of the matching connector.

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Application 10/235,221

REFERENCES
Karir US 6,017,245 Jan. 25, 2000
Imai US 6,588,937 B2 Jul. 8, 2003
(Filed Mar. 27, 2002)
Komenda US 6,592,387 B2 Jul. 15, 2003
(Filed Dec. 26, 2000)
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
obvious based upon the teachings of Karir and Komenda (Ans. 3). The
Examiner rejected claims 1-4, 16, and 18-20 under 35 U.S.C. § 103(a) as
obvious based upon the teachings of Karir and Imai (Ans. 4).
Appellants contend that claims 1-20 were improperly rejected and that
the Examiner has not provided a prima facie case of obviousness (Br. 7 and
10)

ISSUES
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as obvious based upon the teachings of Karir and Komenda?
Did the Examiner err in rejecting claims 1-4, 16, and 18-20 under 35
U.S.C. § 103(a) as obvious based upon the teachings of Karir and Imai?

PRINCIPLES OF LAW
We note that the Court of Appeals for the Federal Circuit has
determined that the motivation to combine under § 103 must come from a
teaching or suggestion within the prior art, within the nature of the problem
to be solved, or within the general knowledge of a person of ordinary skill in
the field of the invention, to look to particular sources, to select particular
elements, and to combine them as combined by the inventor. Ruiz v. A.B.
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Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000) (emphasis added). Further,
our reviewing court has recently reaffirmed that:
an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole,
but when the ‘improvement’ is technology-independent
and the combination of references results in a product or
process that is more desirable, for example because it is
stronger, cheaper, cleaner, faster, lighter, smaller, more
durable, or more efficient . . . In such situations, the
proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of
combining the prior art references.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that
burden is met, then the burden shifts to the Appellants to overcome the
prima facie case with argument and/or evidence. In re Mayne, 104 F.3d
1339, 1342 (Fed. Cir. 1997).
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be
patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007).
The Examiner’s “articulated reasoning . . . in the rejection must
possess a rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The
Supreme Court, reiterating this reasoning by citing In re Kahn, 441 F.3d at
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988, stating that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1741.
One important indicium of nonobviousness is “teaching away” from
the claimed invention by the prior art. In re Dow Chemical Co., 837 F.2d
469, 473 (Fed. Cir. 1988).
As to the specific question of “teaching away,” our reviewing court in
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) stated:
A reference may be said to teach away when a person of
ordinary skill, upon [examining] the reference, would be
discouraged from following the path set out in the
reference, or would be led in a direction divergent from
the path that was taken by the applicant.

ANALYSIS
Karir and Komenda
The Examiner asserts that Karir teaches all the features of Appellants’
invention except that it “is not slidably coupled to the housing” (Ans. 3).
The Examiner further asserts that Komenda discloses a spring providing a
force that keeps two connectors together and provides them with freedom of
movement within a tray while maintaining connection (Ans. 3). It is the
Examiner’s position that it would thus be obvious to a person having
ordinary skill in the art to modify Karir such that the connector would be
slidably coupled to a housing using the spring taught by Komenda “because
the spring would help make the connection by pushing the two mating
connectors toward each other and provide a force that keeps the two
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connectors together and gives the connectors freedom of movement within a
housing while still maintaining connection” (Ans. 4).
Appellants contend that the principles of operation of Karir and
Komenda differ (Br. 9). According to Appellants, Karir allows no
movement between the connector and the housing (col. 4, ll. 55-67) — an
argument the Examiner concedes as correct (Ans. 5)). Appellants
emphasize, however, that unlike Karir, Komenda allows the connector
freedom to move in all directions (col. 5, ll. 21-23) (Br. 9). Thus, Appellants
contend that these references teach away from each other and combining
them would render one or the other unsatisfactory for its intended purpose
(Br. 9). The Examiner disagrees and asserts that the combination of Karir
and Komenda “show a device with a movable electrical connector within a
housing of the device is known in the art at the time the invention was
made” (Ans. 6).
In our view, the Examiner has provided no reasonable basis to
combine Karir and Komenda aside from what is taught by Appellants’
disclosure. That is, the Examiner has merely cited a secondary reference
that permits independent movement with respect to a housing using a spring
and asserted that the base reference can somehow be modified to arrive at
the claimed invention in light of this teaching. However, modifying Karir in
the manner proposed by the Examiner must not frustrate the principles of
operation of the respective references. In this regard, we agree with
Appellants that the Examiner has failed to show how the proposed
combination would not frustrate “the principle of operation delineated by
Karir” and show “how the connector of Komenda can be made rigid without
frustrating the principles of operation delineated by Komenda” (Br. 10). As
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such, we agree with Appellants that combining these teachings in the
manner proposed by the Examiner runs counter to the references’ principles
of operation. We also find the combination is tantamount to impermissible
hindsight reconstruction of the invention using Appellants’ disclosure as a
blueprint.
Furthermore, we are not persuaded by the Examiner’s arguments and
agree with Appellants that “[t]he Office has not set forth reasoning to
explain the desirability of modifying the non-sliding connector of Karir for
use in a structure having a sliding connector, as in Komenda” (Br. 10). For
these reasons, we find the Examiner did not establish a prima facie case of
obviousness over the teachings of Karir and Komenda with respect to claims
1-20.
Karir and Imai
The Examiner rejected claims 1-4, 16, and 18-20 as obvious over
Karir and Imai. The Examiner asserts that the housing structure of Imai is
the same as Appellants (Ans. 4). The Examiner further asserts that
connectors include coil springs that press ferrules toward mating connectors
to provide a force that keeps the two connectors together and gives the
connectors freedom of movement within the housing while maintaining
connection (Ans. 4). It is the Examiner’s position that it would thus be
obvious to modify the device taught by Karir to have a connector slidably
coupled to a housing of the device taught by Imai to provide a force that
keeps two connectors together and provide “freedom of movement within
the housing while still maintaining connection” (Ans. 5).
Appellants contend that Karir teaches away from “‘independent
movement’ of the connector relative to the housing” and further, the nature
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of Karir negates a need for independent movement of the connector relative
to the housing (Br. 10). It should be further noted that Imai teaches that after
the locking of the two connections, the fiber returns to its pre-compression
state and the compressive force no longer works (col. 9, ll. 25-29; ll. 51-57).
We agree with Appellants that the Examiner has not provided a
reasonable basis for “modifying the non-sliding connector of Karir for use in
a structure having a sliding connector, as in Imai” (Br. 11). As with the
previous rejection, we find the Examiner’s combination of references is
untenable and tantamount to impermissible hindsight reconstruction of the
invention. For these reasons, we find that the Examiner did not establish a
prima facie case of obviousness over the teachings of Karir and Imai with
respect to claims 1-4, 16, and 18-20.

CONCLUSION
We therefore conclude that the Examiner erred in rejecting claims 1-
20 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner rejecting claims 1-20 is reversed.

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Application 10/235,221

REVERSED

tdl/gw

SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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