Ex Parte Miller

Board of Patent Appeals and Interferences

Mar 10, 2008

10817711 (B.P.A.I. Mar. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT DENNIS MILLER
____________

Appeal 2007-3777
Application 10/817,7111
Technology Center 2800
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Decided: March 10, 2008
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Before ANITA PELLMAN GROSS, ROBERT E. NAPPI, and SCOTT R.
BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed April 2, 2004. The real party in interest is Robert Dennis
Miller.
Appeal 2007-3777
Application 10/817,711

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-13 and 21-33, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant's invention relates to a connector with an electrostatic
discharge (ESD) inhibiting shell. (Spec. paragraph [1001].)

Claim 1 is exemplary:
1. A connector for connection with a
complementary connector, said connector and
complementary connectors adapted to each be
mounted to a separate device having a ground, said
connector comprising:

a dielectric body having a plurality of signal
contacts; and

an inhibited shell mounted to said body for
connection with a shell on the complementary
connector, the inhibited shell being configured to
sufficiently slow down a transfer of charge
between the connector and complementary
connector device grounds to prevent charge
transfer damage when the connectors are
connected with one another.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bellamy US 4,747,783 May 31, 1988
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Appeal 2007-3777
Application 10/817,711

Brunker US Re. 35,896 Sep. 15, 1998
Limoge US 6,259,170 B1 Jul. 10, 2001

Claims 1, 7, and 13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Brunker.
Claims 2, 4, 6, 8, 10, 12, 21, 24, 27, and 29-33 stand rejected under 35
U.S.C. § 103(a) as being obvious over Brunker and Bellamy.
Claims 3, 9, 22, 23, 25, 26, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Brunker, Bellamy, and Limoge.
Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Brunker and Limoge.

Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
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).2

2 Except as will be noted in this opinion, Appellant has not presented any
substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).

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Application 10/817,711

ISSUES
The first issue is whether Appellant has shown that the Examiner
erred in rejecting claims 1, 7, and 13 under 35 U.S.C. § 102(b). The issue
turns on whether Brunker teaches an inhibited shell, as claimed.
The second issue is whether Appellant has shown that the Examiner
erred in rejecting claims 2-6, 8-12, and 21-33 under 35 U.S.C. § 103(a). The
issue turns on whether the applied references teach or suggest an inhibited
shell or a conductive shell having a resistive layer, as claimed.

PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).
"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). "[R]ejections 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." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). "To
facilitate review, this analysis should be made explicit." KSR, 127 S. Ct. at
1741. However, "the analysis need not seek out precise teachings directed to
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Application 10/817,711

the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." Id. The Supreme Court cautioned that "[a]
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning."
Id. at 1742.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). "[T]he words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.

ANALYSIS
Appellant contends that the Examiner erred in rejecting claims 1-13
and 21-33. Reviewing the record, we agree. In particular, we find that the
Appellant has shown that the Examiner failed to make a prima facie showing
of anticipation with respect to claims 1, 7, and 13, and has shown that the
Examiner failed to make a prima facie showing of obviousness with respect
to claims 2-6, 8-12, and 21-33.

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Application 10/817,711

Claims 1, 7, and 13
Regarding claim 1, Appellant argues that Brunker does not disclose an
inhibited shell, as claimed. (App. Br. 9-10; Reply Br. 4.) We agree.
The Examiner found that Brunker teaches an inhibited shell 44
configured to sufficiently slow down a transfer of charge to prevent charge
transfer damage, as claimed. (Ans. 3, 5-6.) In particular, the Examiner
found that the metal shroud 44 of Brunker meets the claimed inhibited shell
limitation because the language of the claim "does not specify what kind /
amount of charge is required" (Ans. 5 (emphasis deleted)) and therefore "a
low resistivity can sufficiently slow down a low level charge" (Ans. 5-6).
However, this broad interpretation is not consistent with the Specification.
The Specification clearly distinguishes an "inhibited shell" from the
metallic shells of the prior art. The Specification teaches that, with the metal
shells 109 of the prior art (as shown in Fig. 1), a sudden charge transfer may
occur from a "high" ground to a "low" ground when the shell 109 first makes
contact with a complementary connector -- which may result in damage to
sensitive components. (Spec. paragraphs [1012] and [1015] through
[1016].) The Specification further teaches that "if measures are taken to
slow down (or inhibit) charge transfer from the 'high' ground to the 'low'
ground, the damaging spike can be avoided, while at the same time, the
objective of equalizing the two device grounds is achieved, albeit in a longer
amount of time." (Spec. paragraph [1016].)
The Specification defines an "inhibited shell" as "the part of a
connector that (1) makes contact with a corresponding part from a
complementary connector to equalize the separate device grounds, and (2) is
configured to inhibit (or slow down) the transfer of charge between the
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Application 10/817,711

device grounds, at least when the shells initially make contact with each
other." (Spec. 5-6, paragraph [1017].) In one embodiment, an inhibited
shell 310 is a conventional metal shell that is partially covered with a
resistive coating "to provide a desired resistance for slowing down charge
transfer." (Spec. 7, paragraph [1019].) The Specification defines the term
"'resistive' . . . to refer to a conducting, non-insulating resistance suitably
high, e.g., in the range between 1K and 10M ohms, to sufficiently slow
down charge transfer while allowing the separate grounds to equalize in a
reasonable amount of time." (Spec. 7, paragraph [1019].)
Because the Specification clearly distinguishes the prior art metallic
shell from the claimed inhibited shell, an interpretation of claim 1 that reads
the claimed "inhibited shell" on a prior art metallic shell would be
inconsistent with the Specification. Brunker discloses a connector 10 with a
metal shroud 44 that contacts a complementary metal shroud 114 on a
complementary connector 100 in a manner similar to the prior art metallic
shell that is distinguished by the Specification. (Col. 3, ll. 46-48, 58-60; col.
6, ll. 40-43; Figs. 1 and 7.) Therefore, contrary to the Examiner's finding,
the claimed inhibited shell does not read on the metal shroud 44 of Brunker.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(b). Since claims 7 and 13
also recite an inhibited shell, which we have found to be lacking from
Brunker, the Examiner also erred in rejecting claims 7 and 13 under 35
U.S.C. § 102(b).

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Claims 2, 4, 6, 8, 10, 12, 21, 24, 27, and 29-33
With respect to the rejection of claims 2, 4, 6, 8, 10, 12, 21, 24, and 29
through 32, each of which depends from one of independent claims 1 and 7,
we agree with Appellant (App. Br. 10) that Bellamy does not remedy the
above-noted deficiency of Brunker.
Bellamy is directed to a connector assembly for coupling or
decoupling a circuit card to a circuit board connector without removing
power from the circuit board. (Col. 2, ll. 7-10; Abstract.) Bellamy teaches a
long resistor-coated guide pin in the voltage legs or the ground legs of a
printed circuit card connector. (Col. 2, ll. 10-12; Abstract.) When a circuit
card is inserted into the circuit board connector, the long pin makes initial
contact and the voltage is applied gradually through the resistive pin to
eliminate surge currents during insertion of the circuit card. (Col. 2,
ll. 12-17; Abstract.) Bellamy addresses the problems of current surge in the
card as the decoupling capacitors in the circuit card are charged and arcing at
the individual pin connections, which produces high frequency noise.
(Col. 2, ll. 61-68.)
The Examiner found that "Bellamy teaches the use of a resistive
coating (13) in grounding elements in order to prevent surge currents when
mating the connectors" (Ans. 3-4) and therefore found that it would have
been obvious to form the shell of Brunker with a resistive coating "to
prevent surge currents between the grounding elements when mating the
connectors" (Ans. 4). Although we do not necessarily disagree with the
finding that Bellamy teaches the use of a resistive coating in grounding
elements, we do not find sufficient evidence presented to support the
proposed addition of a resistive coating to the shroud 14 of Brunker.
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Brunker is silent as to whether shrouds 14 and 114, or any other
elements for that matter, are the first to come into electrical contact when
connectors 10 and 100 are mated. Brunker also is silent as to whether
shrouds 14 and 114 perform a grounding function in connectors 10 and 100.
However, Brunker describes connector 10 as including a ground plate 68
and describes complementary connector 100 as including a second ground
plate 104 that form a cross-shaped grounding structure when the connectors
10, 100 are mated. (Col. 4, ll. 57-58; col. 5, l. 54; col. 6, ll. 47-50.) Since
grounding plates 68 and 104 are clearly identified as grounding elements and
are similar to the resistively-coated ground pins taught by Bellamy, the
coated pin teachings of Bellamy possibly could be applied to the ground
plates 68 and 104 of Brunker under the obviousness rationale articulated by
the Examiner (Ans. 4). However, there is no evidence before us to
demonstrate a reason, nor do we see one, for further extending the coated pin
teachings of Bellamy to the metal shroud 14 of Brunker.
Therefore, we conclude that Appellant has shown that the Examiner
erred in rejecting claims 2, 4, 6, 8, 10, 12, 21, 24, and 29-32.
Independent claim 27 is of different scope than independent claims 1
and 7, in that independent claim 27 recites a "conductive shell having
thereon a resistive layer" rather than an "inhibited shell." The metal shroud
14 of Brunker meets the recited "conductive shell" without a resistive layer.
However, as discussed above, we do not see a sufficient reason to extend the
resistor-coated coated pin teachings of Bellamy to the metal shroud 14 of
Brunker.
Therefore, we conclude that the Appellant has shown that the
Examiner erred in rejecting claim 27. Claim 33 depends from claim 27, and
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we find that the Examiner erred in rejecting claim 33 for the same reason as
discussed with respect to claim 27.

Claims 3, 9, 22, 23, 25, 26, and 28
With respect to claims 3, 9, 22, 23, 25, 26, and 28, we agree with
Appellant that Limoge does not teach a resistive coating made from a
conductive polymer material. (App. Br. 13.) Limoge teaches an electrical
trailer plug device with a current protection device. (Abstract.) The current
protection device uses polymeric positive temperature coefficient (PTC)
resettable fuses with "conductive polymer technology to limit the flow of
dangerously high current during fault conditions." (Col. 1, l. 66 to col. 2, l.
2.) We find Limoge merely teaches the use of a conductive polymer
material, but does not teach a resistive coating made from a conductive
polymer material.
Therefore, we conclude that Appellant has shown that the Examiner
erred in rejecting claims 3, 9, 22, 23, 25, 26, and 28.

Claims 5 and 11
Although Appellant does not separately argue the rejection of claims 5
and 11, we find that the Examiner erred in rejecting these claims under 35
U.S.C. § 103 for the reasons discussed with respect to Brunker and Limoge.

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CONCLUSION OF LAW
We conclude that:
(1) Appellant has shown that the Examiner erred in rejecting claims 1, 7,
and 13 for anticipation under 35 U.S.C. § 102.
(2) Appellant has shown that the Examiner erred in rejecting claims 2-6, 8-
12, and 21-33 for obviousness under 35 U.S.C. § 103.

DECISION
The rejection of claims 1, 7, and 13 for anticipation under 35 U.S.C.
§ 102(b) is reversed.
The rejection of claims 2-6, 8-12, and 21-33 for obviousness under 35
U.S.C. § 103 is reversed.

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REVERSED

eld

MICHAEL O. SCHEINBERG
P.O. BOX 164140
AUSTIN, TX 78716-4140
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