Ex Parte Mott et al

Board of Patent Appeals and Interferences

Jul 21, 2006

10820259 (B.P.A.I. Jul. 21, 2006)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ALLEN MOTT, LOUIS CARRER,
and JOHN JORDAN
________________

Appeal No. 2006-1867
Application No. 10/820,259
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ON BRIEF
________________

Before KIMLIN, KRATZ, and GAUDETTE, Administrative Patent
Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 18,
20-22, 25-28, and 30-32. Claims 7 and 9-12 have been allowed by
the examiner. Claims 18 and 25 are illustrative:
18. A method for forming a fuel flange, the method
comprising:

providing at least one electrical conductor comprising a
first plurality of ribs;

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Application No. 10/820,259

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jacketing said at least one electrical conductor with an
electrical insulating material to form a connector body,
said first plurality of ribs defining a first tortuous path
with said electrical insulating material for impeding the
passage of hydrocarbon based fuel components, said
connector body comprising a second plurality of ribs
comprising a substantially uniform series of ribs looping
around an exterior of the connector body; and,

molding said fuel flange around said connector body for
forming a second tortuous path, said second plurality of
ribs defining said second tortuous path for impeding
passage of hydrocarbon based fuel components between said
connector body and said fuel flange.

25. A method of forming a vehicle fuel tank combined fuel
flange and electrical connector comprising:

molding a pre-mold housing onto a plurality of
electrical conductors to form a pre-mold electrical
connector, wherein the electrical conductors
comprising ribs such that first tortuous joints are
formed between the pre-mold housing and the electrical
conductors; and

overmolding a flange member onto the pre-mold
electrical connector, wherein the pre-mold housing
comprises a series of circumferential ribs on an
exterior side which form a second tortuous joint
between the flange member and the pre-mold electrical
connector.

The examiner relies upon the following references as
evidence of obviousness:
Onoda 6,187,242 B1 Feb. 13, 2001
Bickford et al.(Bickford) 6,506,083 B1 Jun. 14, 2003

Appellants' claimed invention is directed to a method for
forming a fuel flange comprising forming a connector body by
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Application No. 10/820,259

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electrically insulating an electrical conductor comprising a
first plurality of ribs, wherein the exterior of the connector
body has a second plurality of ribs comprising a substantially
uniform series of ribs looping around the exterior. A fuel
flange is then molded around the connector body. The first and
second plurality of ribs define tortuous paths for impeding the
passage of hydrocarbon fuel.
Appealed claims 18, 20-22, 25-28 and 30-32 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Onoda in
view of Bickford.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
ourselves in agreement with appellants that the examiner has
failed to establish a prima facie case of obviousness for the
claimed subject matter. Accordingly, we will not sustain the
examiner's rejection.
Onoda, the primary reference, does not teach an electrical
conductor with the claimed first plurality of ribs, but
appellants concede that "it would be obvious to provide metal
terminals 4,5 of Onoda with ribs in view of the ribs 22 of the
contacts 12 in Bickford" (page 2 of Reply Brief, second
paragraph). The examiner also acknowledges that "Onoda does not
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Application No. 10/820,259

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show a series of ribs looping around the body," as presently
claimed (page 5 of Answer, last sentence). However, it is the
examiner's position that one of ordinary skill in the art would
have found it obvious "to form the ribs provided in any conven-
tional design, particularly in view of Bickford, which teaches a
threaded surface (readable on the claimed "series of loops") for
making an integral attachment with a second plastic body" (id.).
Upon thorough review of the Onoda and Bickford disclosures,
we share appellants' view that impermissible hindsight is
necessary to combine the teachings of Onoda and Bickford in the
manner submitted by the examiner. As explained by appellants,
threaded surface 28 of Bickford is for the purpose of screwing
the insulating body 14 into the pressure bulkhead 26, and not
for providing a mating surface for the claimed overmolded fuel
flange. Appellants correctly point out that "[t]he rib 8a of
the primary molded body 6 of Onoda is not intended to be screwed
into anything; such as the screw threads 28 of Bickford"
(sentence bridging pages 2 and 3 of Reply Brief). In essence,
we agree with appellants that the threaded surface 28 of
Bickford would not have motivated one of ordinary skill in the
art to modify the surface of Onoda's primary molded body 36 in
the manner claimed for mating with secondary molded body 37.
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Application No. 10/820,259

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While we have no doubt that one of ordinary skill in the art
could design the primary molded body 6 or 36 of Onoda in
accordance with the claimed invention, the proper test under
§ 103 is not what the skilled artisan could have done but,
rather, what would have been suggested by the cited prior art.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). For the above-stated reasons, we find that the requisite
suggestion to modify Onoda stems not from Bickford but from
appellants' own disclosure.
In conclusion, based on the foregoing, we are constrained
to reverse the examiner's rejection.
REVERSED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
PETER F. KRATZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
LINDA M. GAUDETTE )
Administrative Patent Judge )

ECK:clm
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Application No. 10/820,259

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