Ex Parte Olson

Board of Patent Appeals and Interferences

Apr 9, 1999

08480964 (B.P.A.I. Apr. 9, 1999)

1 Application for patent filed June 7, 1995. According to
appellant, this application is a continuation of Application No.
08/317,284, filed October 3, 1994, now U.S. Patent 5,489,220,
issued February 6, 1996; which is a continuation of Application
No. 08/053,486, filed April 28, 1993, now abandoned; which is a
continuation of Application No. 07/968,694, filed October 30,
1992, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STANLEY W. OLSON
____________
Appeal No. 97-2481
Application No. 08/480,9641
____________
HEARD: March 12, 1999
____________
Before CALVERT, COHEN, and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 and
2, the only claims in the application.
Appeal No. 97-2481
Application No. 08/480,964
2
Claim 1 is representative of the subject matter on appeal,
and reads:
A filter connector arrangement
comprising:
a ferrite barrel having a bore therein,
the bore having an axis therethrough, and
an electrical connector disposed in said
bore, said electrical connector having an
axis therethrough and a substantially
rectangular cross sectional configuration in
a plane perpendicular to the axis of the
connector;
wherein the improvement comprises:
the cross sectional configuration of the
bore through the barrel in a plane
perpendicular to the axis thereof is
substantially rectangular and said bore
accepts said electrical connector therein so
as to provide improved mating alignment of
said electrical connector with a mating
structure within said bore and to provide a
substantial increase in both differential and
common mode inductances over a filter
connector arrangement comprising said
electrical connector and a ferrite barrel
having a cylindrical bore for accepting said
electrical connector.
The prior art applied in the final rejection is:
Reynolds 2,032,501 Mar. 3, 1936
Anderson 2,089,844 Aug. 10, 1937
The admitted prior art shown in Fig. 1 and described on page
1, line 15 to page 2, line 22 of the application (APA).
Appeal No. 97-2481
Application No. 08/480,964
3
Claims 1 and 2 stand finally rejected on the following
grounds:
(1) Unpatentable under 35 U.S.C. § 102(f), on the ground that the
claimed subject matter was invented by Jerry E. Ponesmith;
(2) Unpatentable over APA in view of Reynolds and Anderson, under
35 U.S.C. § 103.
Rejection Under 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claims 1 and 2 are rejected
for failure to comply with the second paragraph of 35 U.S.C.
§ 112.
The test for compliance with § 112, second paragraph, is
whether the claim language, when read by one
of ordinary skill in the art in light of the
specification, describes the subject matter
with sufficient precision that the bounds of
the claimed subject matter are distinct.
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975).
See also In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d, 1754,
1759 (Fed. Cir. 1994). ("The legal standard for definiteness is
whether a claim reasonably apprises those of skill in the art of
its scope").
In the present case, both claims recite "so as . . . to
provide a substantial increase in both differential and common
mode inductances" (emphasis added). The use of a term of degree,
such as "substantial," in a claim does not render the claim
Appeal No. 97-2481
Application No. 08/480,964
4
indefinite if the specification provides some standard for
measuring that degree. Seattle Box Co., Inc. v. Industrial
Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74
(Fed. Cir. 1984). Here, however, we do not find any such
standard in appellant’s specification. The only disclosure in
the specification concerning an increase in inductance is found
on page 6, line 23, to page 7, line 7, wherein it is stated that
simulations of the magnetic performance of a filter connector
using a ferrite barrel having a cylindrical bore and using a
ferrite barrel having a rectangular bore indicated that the
inductance of the latter was approximately five times that of the
former. However, it is not apparent whether or not this
disclosure constitutes a standard for measuring the recited
"substantial increase," i.e., whether the expression "a
substantial increase" in the claims should be interpreted as "an
approximately five-fold increase," or, if not, how great an
increase must be before it constitutes a "substantial increase."
In view of the lack of a clear standard, we do not consider that
one of ordinary skill could reasonably determine the scope of
claims 1 and 2.
The Examiner’s Rejections
Before considering the rejections under §§ 102(f) and 103
individually, we note that a rejection over prior art of claims
Appeal No. 97-2481
Application No. 08/480,964
2 Copies of these four declarations were filed in the
present application on September 11, 1995.
5
which are indefinite normally should not be considered. In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Nevertheless, in the interest of avoiding piecemeal appellate
review, we have considered the examiner’s rejections on the
merits, assuming that the claims would be unpatentable over
prior art which corresponds to that disclosed in appellant’s
Fig 2. Note, however, the rejection under § 112, first
paragraph, infra.
Rejection (1): 35 U.S.C. 102(f)
This rejection is based on declarations by Mr. Ponesmith and
by Stanley Wayne Olson (the appellant). A declaration by each
declarant was filed in parent application 07/968,694 on April 28,
1993, and an additional declaration by each was filed in parent
application 08/053,486 on June 6, 1994. 2 It appears to be the
examiner’s position that a rejection under § 102(f)is proper
because the declarations show that Mr. Ponesmith conceived the
invention on October 16, 1990, prior to conception by Mr. Olson.
We will not sustain this rejection. As held in OddzOn
Products Inc. v. Just Toys Inc., 122 F.3d 1396, 1401, 43 USPQ2d
1641, 1644 (Fed. Cir. 1997):
Section 102(f) provides that a person
shall be entitled to a patent unless "he did
Appeal No. 97-2481
Application No. 08/480,964
6
not himself invent the subject matter sought
to be patented." This is a derivation
provision, which provides that one may not
obtain a patent on that which is obtained
from someone else whose possession of the
subject matter is inherently "prior." It
does not pertain only to public knowledge,
but also applies to private communications
between the inventor and another which may
never become public.
Appeal No. 97-2481
Application No. 08/480,964
7
Thus, since § 102(f) is "a derivation provision," a rejection
thereunder cannot be based solely on the fact that the claimed
subject matter was conceived by another prior to conception by
the applicant, but rather, there must also be evidence that the
applicant obtained the subject matter from that other person,
i.e., that the prior conception was communicated to the applicant
prior to the applicant’s own alleged date of conception. In
other words, for a § 102(f) rejection it must be shown that the
applicant "acquired knowledge of the claimed invention from
another, or at least so much of the claimed invention as would
have made it obvious to one of ordinary skill in the art." New
England Braiding Co. Inc. v. A.W. Chesterton Co. , 970 F.2d 878,
883, 23 USPQ2d 1622, 1626 (Fed. Cir. 1992).
We will assume in this case that Mr. Ponesmith conceived the
claimed subject matter, as shown in Exhibit A, prior to
appellant. The record does not show, however, that Mr.
Ponesmith’s conception was communicated to appellant or that
appellant otherwise acquired knowledge of it, prior to the filing
of appellant’s original (great-grandfather) application
07/968,694 on October 30, 1992. The only evidence in the record
is to the contrary, namely, appellant states in paragraph 6 of
his second declaration that "Prior to February, 1993, I had no
knowledge of Exhibit A attached hereto or of the device shown in
Appeal No. 97-2481
Application No. 08/480,964
3 Appellant’s alleged conception is corroborated by Taj F.
Hanna in paragraph 6 of a declaration filed in this application
on November 29, 1995.
8
Exhibit A," and describes in paragraph 7 how he conceived the
subject matter of claim 1 during a meeting in March, 1992. 3 In
the absence of any evidence in the record showing that appellant
acquired his knowledge of the invention from another, there is no
basis for rejecting the claims under § 102(f).
Rejection (2): 35 U.S.C. § 103
The basis of this rejection is stated on pages 3 and 4 of
the examiner’s answer. The two secondary references, Reynolds
and Anderson, appear to be cumulative, so we will confine our
consideration to Anderson.
As the examiner notes, Anderson discloses an advantage to
using a non-circular, e.g., rectangular, contact in a
correspondingly-shaped bore in the insulator barrel in which the
contact (male or female) is located, namely, to prevent rotation
of the contact in the bore, and "thus prevent[ing] liability of
faults occurring, due to loosening of the connection between the
contact members and the wires soldered to them" (page 2, col. 1,
lines 39 to 46). We consider that this disclosure would have
suggested to one of ordinary skill in the art disposing the
rectangular cross-section connectors C of the APA in similarly-
shaped bores in order to achieve the advantage disclosed by
Appeal No. 97-2481
Application No. 08/480,964
4 As discussed previously, this determination is made in
light of the fact that modification of the APA in view of
Anderson would yield a structure corresponding to that disclosed
in appellant’s Fig. 2.
9
Anderson, and thus, that the claimed subject matter would have
been prima facie obvious.4
Appellant argues that "Anderson merely suggests the
notoriously well known concept of shaping corresponding male and
female contact sockets so that they fit together but do not fit
into adjacent sockets" (brief, page 12). This is somewhat
inaccurate, as the portions of Anderson’s male and female
contacts which fit together are not of different shapes; note
page 1, col. 2, lines 30 to 34. In the Anderson apparatus, it is
only the parts of the contacts which are within the insulating
barrels 22, 24 which are of non-circular shapes (see page 2,
col. 1, lines 32 to 39). The alignment of Anderson’s male and
female contacts is by means of recess 18 and lip 20 (page 1,
col. 2, lines 43 to 52).
Appellant also contends that Anderson is not concerned with
improving a mating connection within the bore, improving
electrical characteristics, or preventing contamination by
overmolding material (brief, page 12). While this may be, it is
settled that "[a]s long as some motivation or suggestion to
combine the references is provided by the prior art taken as a
Appeal No. 97-2481
Application No. 08/480,964
5 In the brief (page 1), appellant identifies the assignee
as Berg Technology, Inc.
10
whole, the law does not require that the references be combined
for the reasons contemplated by the inventor." In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). See
also In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed.
Cir. 1996) ("the motivation in the prior art to combine the
references does not have to be identical to that of the applicant
to establish obviousness").
We now turn to the rebuttal evidence submitted by appellant
to determine whether it is sufficient to overcome the prima facie
case of obviousness. In re Beattie, 974 F.2d at 1311, 24 USPQ2d
at 1042-43. This evidence consists of the declarations of Mr.
Hanna (note 3, supra) and of Dr. Richard A. Elco, filed on June
7, 1995.
Mr. Hanna (named as a coinventor in parent application
08/317,284) states that he has been responsible for the connector
program of Berg Electronics, Inc. (formerly DuPont Connector
Systems)5 from approximately 1989 to the present (the declaration
was signed on November 22, 1995). In essence, Mr. Hanna declares
that (1) the five-fold improvement in EMI shielding resulting
from Mr. Olson’s invention was unexpected, and (2) in his
Appeal No. 97-2481
Application No. 08/480,964
11
opinion, Reynolds and Anderson do not suggest improving the APA
of Fig. 1 by forming rectangular bores in the ferrite filter.
With regard to (1), a prima facie case of obviousness may be
rebutted by a showing of unexpected results, but in order to do
so, "objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to
support." In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296
(CCPA 1980). See also In re Kulling, 897 F.2d 1147, 1149, 14
USPQ2d 1056, 1058 (Fed. Cir. 1990). Mr. Hanna and Dr. Elco both
state in their declarations that Dr. Elco mathematically modeled
or simulated the circular bore and rectangular bore
configurations, and found that the inductance or EMI shielding of
the latter was approximately five times that of the former.
According to Mr. Hanna (declaration paragraphs 9 to 13), a person
of apparently at least ordinary skill in this art, the magnitude
of this improvement was "quite unexpected" to himself and others,
and in his opinion "it would not have been obvious to one skilled
in the art that changing a cylindrical bore to a rectangular bore
in a device of the type claimed would result in such a
significant improvement in EMI shielding performance" (paragraph
13).
The problem with this evidence, however, is that Mr. Hanna
also states in his declaration that "EMI shielding would not
Appeal No. 97-2481
Application No. 08/480,964
12
necessarily be enhanced by simply filling the area of bores B 1
and B2 formerly filled by air with ferrite material" (paragraph
11), and "it is not necessarily true that providing more ferrite
material closer to the connector would necessarily result in
better EMI shielding characteristics" (paragraph 12). Assuming
these statements to be correct, it appears that achieving the
claimed "substantial increase" in inductance must involve more
than merely placing a rectangular cross-section connector in a
rectangular cross-section bore in the ferrite barrel, but this is
all that is required both by the claims and by appellant’s
disclosure. Since the claims do not include any restriction on
the size of the connector relative to the size of the bore, and
it appears from Mr. Hanna’s statement that placing a rectangular
cross-section connector in a rectangular cross-section bore would
not necessarily result in increased inductance, the evidence of a
five-fold increase in inductance is not commensurate with the
scope of the claims, and therefore does not rebut the prima facie
case of obviousness.
Mr. Hanna’s opinions to the effect that the claimed subject
matter is not suggested by Anderson is entitled to some weight.
In re Lindell, 385 F.2d 453, 456, 155 USPQ 521, 524 (CCPA 1967).
Nevertheless, while he recognizes that Anderson discloses that
the corresponding shapes of the holes and contact members prevent
Appeal No. 97-2481
Application No. 08/480,964
13
rotation (paragraph 20), Mr. Hanna does not address why this
would not have made it obvious to modify the APA, but rather
states that Anderson does not suggest using a rectangular bore in
a ferrite barrel to improve a mating connection within the bore,
etc. (paragraph 21). These statements are essentially arguments,
and are not persuasive because one cannot show nonobviouness by
attacking references individually. In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 882 (CCPA 1981).
Rejection (2) will accordingly be sustained.
Rejections Under 37 CFR § 1.196(b)
The following rejections are additionally entered pursuant
to 37 CFR § 1.196(b):
35 U.S.C. § 112, First Paragraph
Claims 1 and 2 are rejected under 35 U.S.C. § 112, first
paragraph, as being based on a non-enabling disclosure.
In order to meet the enablement requirement of § 112, first
paragraph, "the specification must enable one of ordinary skill
in the art to practice the claimed invention without undue
experimentation." National Recovery Technologies Inc. v.
Magnetic Separation Systems Inc., 166 F.3d 1190, 1196, 49 USPQ2d
1671, 1676 (Fed. Cir. 1999) (original emphasis). As discussed
above, the claims in the present case require that the connector
provide a "substantial increase" in inductances over a filter
Appeal No. 97-2481
Application No. 08/480,964
14
connector comprising a rectangular cross-section connector and a
ferrite barrel with a cylindrical bore. The specification
discloses no relative dimensions or other parameters for the
connector and the bore, but in paragraphs 11 and 12 of his
declaration (quoted supra) Mr. Hanna indicates that putting a
rectangular cross-section connector in a bore of the same shape
does not necessarily result in increased inductance (EMI
shielding). It therefore appears that something more is required
for a "substantial increase in inductance" than simply putting a
rectangular cross-section connector in a rectangular cross-
section bore, which is not disclosed as being of any particular
size. Since the specification does not disclose what that
"something more" is, it does not appear that one of ordinary
skill in the art could construct a connector having the claimed
"substantial increase" in inductances without undue
experimentation, and the enablement requirement of § 112, first
paragraph, is not satisfied.
Double Patenting
Claims 1 and 2 are rejected on the ground of obviousness-
type double patenting over claim 3 of commonly-assigned parent
Patent No. 5,489,220. In re Longi, 759 F.2d 887, 892, 225 USPQ
645, 648-49 (Fed. Cir. 1985). While the electrical connector
recited in claim 3 of the patent is recited more narrowly than in
Appeal No. 97-2481
Application No. 08/480,964
15
claim 1 and 2, the electrical connector of claims 1 and 2 reads
on that recited in patent claim 3. Cf. In re Goodman, 11 F.3d
1046, 1052, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993). As for the
recitations of a "substantial increase" in inductances in claims
1 and 2, it is noted that the disclosure of the patent is the
same as that of the present application, and therefore, insofar
as can be determined, any properties of the filter connector
recited in claims 1 and 2 must be inherent in the filter
connector defined in the patent claim.
Conclusion
The examiner’s decision to reject claims 1 and 2 under
35 U.S.C. § 102(f) is reversed, and under 35 U.S.C. § 103 is
affirmed.
Claims 1 and 2 are rejected pursuant to 37 CFR § 1.196(b) on
the bases of (a) 35 U.S.C. § 112, first paragraph (enablement),
(b) 35 U.S.C. § 112, second paragraph, and (c) obviousness-type
double patenting.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains new grounds of rejection
pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
Appeal No. 97-2481
Application No. 08/480,964
16
37 CFR § 1.196(b) provides that "a new ground of rejection shall
not be considered final for purposes of judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision. . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims
so rejected, or both, and have the matter reconsidered
by the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
Appeal No. 97-2481
Application No. 08/480,964
17
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
Appeal No. 97-2481
Application No. 08/480,964
18
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
SLD
Appeal No. 97-2481
Application No. 08/480,964
19
Michael P. Dunnam
Woodcock, Washburn, Kurtz, Mackiewicz
and Norris
One Liberty Place 46th Floor
Philadelphia, PA 19103