Ex Parte Ozai

Board of Patent Appeals and Interferences

Apr 25, 2005

10156568 (B.P.A.I. Apr. 25, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAZUYUKI OZAI
____________
Appeal No. 2005-0005
Application No. 10/156,568
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HEARD: April 7, 2005
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Before BARRETT, DIXON, and LEVY, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4,
which are all of the claims pending in this application.
We REVERSE.
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BACKGROUND
Appellant's invention relates to a multiconductor connector adapted to be
connected to a plurality of paired cables for high-speed transmission of a signal. An
understanding of the invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. A multiconductor connector adapted to be connected to a plurality
of paired cables for high-speed transmission of a signal, wherein each of
the paired cables comprise a first terminal and a second terminal, and a
distance between the first terminal and the second terminal is equal to a
predetermined distance, wherein the connector comprises:
an insulator plate having a predetermined thickness, wherein the
insulator plate comprises:
an upper surface comprising a first plurality of signal
contacts formed thereon; and
a lower surface opposite the upper surface, wherein the
lower surface comprises a second plurality of signal contacts formed
thereon, and each of the second plurality of signal contacts is aligned with
a corresponding one of the first plurality of signal contacts, wherein the
predetermined thickness is selected, such that each of the first plurality of
signal contacts are adapted to engage a corresponding one of the first
terminals and each of the second plurality of signal contacts are adapted
to engage a corresponding one of the second terminals, without altering
the predetermined distance.
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
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Hansell, III et al. (Hansell) 5,176,538 Jan. 5, 1993
Claims 1-4 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Hansell.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejection, we make reference to the examiner's
answer (mailed Feb. 26, 2004 ) for the examiner's reasoning in support of the rejection,
and to appellant's brief (filed Dec. 18, 2003) and reply brief (filed Apr. 26, 2004) for
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
An anticipating reference must describe the patented subject matter with
sufficient clarity and detail to establish that the subject matter existed in the prior art and
that such existence would be recognized by persons of ordinary skill in the field of the
invention. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
Appeal No. 2005-0005
Application No. 10/156,568
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1990); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 678, 7 USPQ2d 1315,
1317 (Fed. Cir. 1988).
In determining novelty, the first inquiry must be into exactly what the claims
define. In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). Further, as
pointed out by our reviewing court, we must first determine the scope of the claim.
"[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the language of
independent claim 1. Independent claim 1 recites a “multiconductor connector adapted
to be connected to a plurality of paired cables for high-speed transmission of a signal,
wherein each of the paired cables comprise a first terminal and a second terminal, and
a distance between the first terminal and the second terminal is equal to a
predetermined distance.” Therefore, while the actual paired cable need not be present
in the claimed conductor, the characteristics thereof and the two conductors with a
predetermined distance therebetween do establish that the characteristics of the
insulator plate must meet with respect to the terminals of the paired cables.
From our review of the teachings of Hansell, we do not find a teaching of an
insulator plate with the aligned first and second contacts which are taught to not alter
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the predetermined distance between the first and second terminals of the paired cables.
Hansell at column 3, lines 52 and 53 states that the conductor 15 is either
soldered or welded to the signal contact 12. Hansell discloses in figures 1, 4, 7, 9, and
11 that the conductors are coaxial cables and that other coaxial cables are suitable.
Therefore, there is no specific teaching of paired cables.
Figure 3 of Hansell and column 4, lines 5-8, disclose that the signal and ground
pins engage with a spring finger 8 which we find would tend to deflect the conductor and
would not teach the limitation of a lower surface of an insulator with contacts for
engagement “without altering the predetermined distance.” Additionally, the other
figures are silent with respect to the contacts, but Figure 17 does disclose the use of
the integral spring finger 8 as discussed above. (Hansell at column 5, lines 27-30)
Therefore, we do not find a disclosure of “an insulator plate having a predetermined
thickness” with “a first plurality of signal contacts formed thereon” and “a lower surface
opposite the upper surface, wherein the lower surface comprises a second plurality of
signal contacts formed thereon, and each of the second plurality of signal contacts is
aligned” and we find that the examiner has not clearly identified such teachings within
Hansell.
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The examiner maintains that the housing 2 of Hansell corresponds to the
insulator plate of the claimed invention and that the signal contacts correspond to the
signal contacts 12. (See answer at page 3.) We cannot agree with the examiner
because the claimed invention recites that the signal contacts are formed on the
insulator plate and that the engagement with the terminals does not alter the
predetermined distance between the terminals. Hansell states in column 3, lines 46-
47, that Fig. 1 also shows ”a plurality of signal contacts 12 positioned within the
housing cavities 5" [emphasis added] where the cavities 5 are within the housing 2.
Therefore, we cannot agree with the examiner that the contacts are formed on the
insulator plate. Therefore, we find that the examiner has not established a prima facie
case of anticipation, and we cannot sustain the rejection of independent claim 1 and its
dependent claims 2 and 3 nor independent claim 4.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-4 under 35 U.S.C.
§ 102 is reversed .
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
JLD/vsh
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