Ex Parte Paynter et al

Patent Trial and Appeal Board

May 10, 2018

14102042 (P.T.A.B. May. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/102,042
79207 7590
MYERS BIGEL, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
12/10/2013
05/10/2018
FIRST NAMED INVENTOR
Jeffrey D. Paynter
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
9833-18 2458
EXAMINER
OUTTEN, SAMUEL S
ART UNIT PAPER NUMBER
2842
MAILDATE DELIVERY MODE
05/10/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY D. PAYNTER and FRANK HAR W ATH
Appeal2017-009127
Application 14/102,042
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-20. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the applicant, CommScope Technologies LLC, which,
according to the Appeal Brief, is the real party in interest. Appeal Brief filed
December 28, 2016 ("App. Br."), 1.
Appeal2017-009127
Application 14/102,042
STATEMENT OF THE CASE
Appellant claims a coaxial connector junction. App. Br. 1--4. Claims
1 and 17 illustrate the subject matter on appeal and are reproduced below
with contested limitations italicized:
1. A coaxial connector junction, comprising:
(a) a first coaxial connector, comprising:
a first central conductor extension comprising a
substantially cylindrical post;
a first outer conductor extension spaced apart from and
circumferentially surrounding the first central conductor
extension; and
a first dielectric spacer interposed between the first
central conductor extension and the first outer conductor
extension;
(b) a second coaxial connector that is repeatedly
separable from the first coaxial connector, comprising:
a second central conductor extension, the second central
conductor extension including a substantially cylindrical cavity
therein;
a second outer conductor extension spaced apart from
and circumferentially surrounding the second central conductor
extension; and
a second dielectric spacer interposed between the second
central conductor extension and the second outer conductor
extension;
wherein the first coaxial connector engages the second
coaxial connector; the post of the first central conductor
extension being inserted into the cavity of the second central
conductor extension such that a capacitive element is created
between the first and second central conductor extensions by a
gap between the first central conductor extension and the
second central conductor extension.
17. A coaxial connector junction, comprising:
(a) a first coaxial connector, comprising:
a first central conductor extension;
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Application 14/102,042
a dielectric element attached to the first central
conductor extension, the dielectric element having a flat contact
surface;
a first outer conductor extension spaced apart from and
circumferentially surrounding the first central conductor
extension; and
a first dielectric spacer interposed between the first
central conductor extension and the first outer conductor
extension;
(b) a second coaxial connector that is repeatedly
separable from the first coaxial connector, comprising:
a second central conductor extension having a flat
contact swface;
a second outer conductor extension spaced apart from
and circumferentially surrounding the second central conductor
extension; and
a second dielectric spacer interposed between the second
central conductor extension and the second outer conductor
extension;
wherein the first coaxial connector engages the second
coaxial connector, the contact surface of the second central
conductor extension abutting the contact surface of the
dielectric element attached to the first central conductor
extension such that a first capacitive element is created solely
between the flat contact surface of the second central conductor
extension and the first central conductor extension.
App. Br. 12, 15 (Claims Appendix).
The Examiner sets forth the following rejections in the Final
Office Action entered August 4, 2016 ("Final Act."), and maintains
the rejections in the Examiner's Answer entered March 23, 2017
("Ans."):
I. Claims 1-5 and 7-16 under 35 U.S.C. § 103 as unpatentable
over Van Swearingen (US 2008/0170346 Al, published July 17, 2008) in
view of McKay (US 2009/0009271 Al, published January 8, 2009);
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Application 14/102,042
II. Claim 6 under 35 U.S.C. § 103 as unpatentable over Van
Swearingen in view of McKay and Alkan (US 2013/0100571 Al, published
April 25, 2013);
III. Claims 17, 19, and 20 under 35 U.S.C. § 103 as unpatentable
over Van Swearingen; and
IV. Claim 18 under 35 U.S.C. § 103 as unpatentable over Van
Swearingen in view of Alkan.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejections of
claims 1-20 under 35 U.S.C. § 103 for the reasons set forth in the Final
Action, the Answer, and below.
Rejections I and II
Claims 1-15
Appellant argues claims 1-15 as a group. Br. 4--8. We accordingly
select claim 1 as representative, and decide the appeal as to claims 1-15
based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Van Swearingen discloses a coaxial in-line capacitor assembly used as
a surge suppressor in a coaxial electrical transmission line. i-fi-12-5, 24. Van
Swearingen explains that the in-line capacitor assembly inserts a physical
break into the coaxial transmission line, and capacitive coupling across the
capacitor prevents lower frequency and/ or direct current from being passed
to down-line equipment, while allowing "only the desired operating
frequencies of the system" to pass. i1 5.
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Van Swearingen discloses connecting the in-line capacitor assembly
into a coaxial transmission line via standardized male and female connection
interfaces 1. i-f 24; Fig. 4a. Van Swearingen discloses that the in-line
capacitor assembly includes two inner conductor segments 7 having mating
ends 9 with mating surfaces 15 (first and second central conductor
extensions) separated by a dielectric spacer 11, and insulators 23 (first and
second spacers) positioned between the inner conductor segments 7 and an
outer conductor 21. i-fi-125, 28; Figs. 4a and 4b.
Van Swearingen discloses an enclosing outer conductor or housing 21
comprised of two mating portions 29 (first and second outer conductor
extensions) having complementary threads. i-fi-128, 35; Fig. 4a. Van
Swearingen discloses that when the mating portions 29 of the outer
conductor 21 are mated together, the insulators 23 retain the inner conductor
segments 7 coaxial with the outer conductor 21, and locate each of the inner
conductor segment 7 mating surfaces 15 at the correct spacing to achieve the
desired mating surface 15 gap. i-fi-125, 28, 36; Fig. 4a.
The Examiner finds that Van Swearingen does not disclose that the
first inner conductor segment 7 (first central conductor extension) comprises
a substantially cylindrical post that is inserted into a substantially cylindrical
cavity of the second inner conductor segment 7 (second central conductor
extension), and does not disclose that the insulators 23 are dielectric spacers,
as recited in claim 1, and the Examiner relies on McKay for suggesting these
features. Final Act. 3-7.
McKay discloses a non-contacting line junction used in coaxial cables
that allows transmission of alternating currents while blocking transmission
of DC currents, and eliminates passive intermodulation (PIM) generation.
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i-fi-1 2, 3. McKay discloses that the coaxial line junction includes an outer
conductor separated by an outer dielectric (first and second dielectric
spacers) from a first inner conductor having a protruding core (post) and a
second inner conductor having a protruding sleeve (cavity). i13; Fig. 1.
Appellant does not dispute the Examiner's finding that the core and sleeve
disclosed in McKay are substantially cylindrical. Compare Final Act. 6,
with Br. 4--8. McKay discloses that an inner dielectric is positioned between
the core and the sleeve, separating the first and second inner conductors.
i1 3; Fig. 1. McKay discloses that when the core is inserted into the sleeve,
the two inner conductors capacitively couple. Id.
The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time of the invention "to use the cylindrical
configuration of McKay for the contact region of Van Swearingen as an
equivalent/alternative geometric configuration that provides the benefit of
DC blocking in addition to the function of a capacitive coupling for junction
of coaxial transmission lines." Final Act. 7.
Appellant argues that "the Van Swearingen connector cited in the
Action does not create a capacitive element between two mating connectors,
as clearly recited in the claims, but instead discloses a capacitive structure
between the two inner conductor segments 7 that make up a single inner
contact of a single connector." Br. 16. Appellant contends that Van
Swearingen discloses a dielectric element 11 at a location internal to a single
connector, rather than at the interface between two mating connectors. Id.
Appellant further argues that McKay is directed to an inline capacitive
arrangement rather than an interface between two mating connectors. Br. 7.
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However, we note initially that the Examiner relies on Van
Swearingen, rather than McKay, for disclosing a capacitive element created
between the inner conductor segments 7 (first and second central conductor
extensions) of Van Swearingen's in-line capacitor assembly. Final Act. 3--4.
As discussed above, Van Swearingen discloses that the insulators 23 of Van
Swearingen's in-line assembly locate each of the mating surfaces 15 of the
inner conductor segments 7 at the correct spacing to achieve a desired
mating surface 15 gap, thus creating a capacitive element between the inner
conductor segments 7, as Appellant acknowledges. As also discussed above,
Van Swearingen discloses that the in-line capacitor assembly inserts a
physical break into a coaxial transmission line, and allows only desired
operating frequencies to pass down line of the assembly.
The complementary structures that connect the two segments of the
coaxial transmission line separated by the physical break-the inner
conductor segments 7 (first and second central conductor extensions) spaced
apart from the mating portions 29 of the outer conductor 21 (first and second
outer conductor extensions) by the insulators 23 (first and second spacers}-
of Van Swearingen's in-line capacitor assembly, therefore, reasonably
correspond to the first and second coaxial connectors recited in claim 1. We
find no definition or limiting description in Appellant's Specification
requiring a contrary interpretation of the recited first and second coaxial
connectors that would exclude the connecting structures formed by Van
Swearingen' s inner conductor segments 7, outer conductor 21, and insulators
23, and Appellant does not direct us to any such disclosure. Accordingly,
contrary to Appellant's arguments, Van Swearingen discloses a capacitive
element between two mating coaxial connectors.
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Appellant also argues that Van Swearingen does not disclose
repeatedly separable first and second connectors. Br. 6. Appellant asserts
that Van Swearingen discloses that the mating portions 29 of the outer
conductor 21 include "with a permanent swaged connection" rather than a
separable connection as claimed. Id. Appellant contends that the alternate
complementary thread connection disclosed in Van Swearingen relied on by
the Examiner "is not intended to be separated, but instead is intended to be
permanent ... while theoretically separable in a different environment, [it] is
threaded only for ease of connection, not to enable repeated separation." Br.
6-7.
However, although Van Swearingen does disclose that the outer
conductor 21 of the in-line capacitor assembly described in the reference can
have two mating portions 29 with a permanent swaged interconnection 31,
Van Swearingen also discloses that the "mating portions 29 may be formed
with alternative mating means such as complementary threads." i-f 35. One
of ordinary skill in the art would have recognized that such complementary
threads would advantageously allow the mating portions 29 of the outer
conductor 21 to be repeatedly separated, permitting inspection, and
replacement, of the inner conductor segments 7, dielectric spacer 11, and
insulators 23, as the Examiner correctly finds, rendering use of a threaded
connection prima facie obvious. Ans. 3--4. Appellant's arguments do not
identify any disclosure in Van Swearingen supporting Appellant's assertion
that the complementary thread connection described in the reference is
intended to be permanent. See, e.g., Icon Health & Fitness, Inc. v. Strava,
Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) ("[a]ttorney argument is not
evidence" and cannot rebut other admitted evidence); In re Schulze, 346
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F.2d 600, 602 (CCPA 1965) ("Argument in the brief does not take the place
of evidence in the record.").
Appellant further argues that Van Swearingen's illustration of various
embodiments that emphasize maximizing surface area between the mated
inner contacts of the inner conductor segments teaches away from the use of
a substantially cylindrical post and cavity, which would not have an
increased surface area. Br. 7. Appellant also contends that Van
Swearingen's disclosure of features, such as the conical arrangement
illustrated in Figure 4a, which increase the lateral movement interlock
between the mating surfaces, "further teaches away from the lower surface
area, easily disengaged cylindrical post and cavity recited in the claims." Br.
8 (citing Van Swearingen i-f 30).
However, Van Swearingen's disclosure that the surface area of the
mating ends 9 of the two inner conductor segments 7 "may" be increased by
forming the mating surfaces 15 of the mating ends 9 with folds, protrusions,
corrugations, steps, and/or ridges, indicates that such shapes having
increased surface area are merely an optional preference. This disclosure of
a preference for inner conductor segments having mating ends with
increased surface area does not criticize or discredit first and second inner
conductor segments 7 shaped as a substantially cylindrical post and cavity as
disclosed in McKay. Therefore, contrary to Appellant's arguments, Van
Swearingen does not teach away from first and second central conductor
extensions that include a substantially cylindrical post and cavity,
respectively, as disclosed in McKay and recited in claim 1. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) ("[t]he prior art's mere disclosure of
more than one alternative does not constitute a teaching away from any of
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Application 14/102,042
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed"); Meiresonne v. Google, Inc.,
849 F.3d 1379, 1382 (Fed. Cir. 2017) ("A reference that 'merely expresses a
general preference for an alternative invention but does not criticize,
discredit, or otherwise discourage investigation into' the claimed invention
does not teach away.") (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737
F.3d 731, 738 (Fed. Cir. 2013))
With respect to Appellant's assertion that Van Swearingen's
disclosure of a lateral movement interlock between the mating surfaces of
the inner conductor segments "further teaches away from the lower surface
area, easily disengaged cylindrical post and cavity recited in the claims,"
claim 1 does not require the cylindrical post and cavity to be "easily
disengaged." Appellant's argument therefore lacks persuasive merit because
it is directed to subject matter that is not recited in claim 1. In re Self, 671
F.2d 1344, 1348 (CCP A 1982) ("[A ]ppellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims.").
Considering the totality of the evidence relied upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner's conclusion
of obviousness. We accordingly sustain the Examiner's rejection of claims
1-15 under 35 U.S.C. § 103.
Claim 16
Independent claim 16 is similar to claim 1 (set forth above), but
recites that the first central conductor extension comprises a post that is at
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least partially covered by a first dielectric layer comprising a shrink sleeve. 2
The Examiner finds that Van Swearingen does not disclose this feature, and
relies on McKay's disclosure that the coaxial line junction described in the
reference includes an inner dielectric positioned between the protruding core
of the first inner conductor and the sleeve of the second inner conductor.
Final Act. 7. The Examiner determines that it would have been obvious to
one of ordinary skill in the art to at least partially cover Van Swearingen's
first inner conductor segment 7 with a dielectric layer as disclosed in
McKay, and for the dielectric layer to comprise "a shrink sleeve as an art-
recognized equivalent/alternative dielectric material that is commonly used
in the art as an insulator and dielectric for transmission lines and in bundled
wiring, providing desired impedance effects." Id. Appellant does not
challenge the Examiner's official notice that a shrink sleeve was an art-
recognized equivalent of the inner dielectric material disclosed in McKay
(Br. 8), and we accordingly accept this finding as fact. In re Kunzmann, 326
F.2d 424, 425 n.3 (CCPA 1964).
Appellant argues that "the Van Swearingen contact shown in Fig. 4a
is conical, which would not be easily covered with a typical shrink sleeve.
Moreover, any of the other configurations shown by Van Swearingen would
be even more difficult to cover with a shrink sleeve. McKay adds no
teaching of shrink sleeve." Br. 8.
However, Appellant's arguments are improperly based on Van
Swearingen and McKay individually, and do not take into consideration
2 Claim 16 further differs from claim 1 by not including a recitation that the
capacitive element is created "by a gap between the first central conductor
extension and the second central conductor extension."
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Application 14/102,042
what the combined disclosures of these references would have suggested to
one of ordinary skill in the art at the time of Appellant's invention. In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references."); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for obviousness "is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.")
In view of McKay's disclosure that the coaxial line junction described
in the reference blocks transmission of DC currents and eliminates passive
intermodulation (PIM) generation, one of ordinary skill in the art would
have been led to utilize a first inner conductor having a substantially
cylindrical protruding core (post), a second inner conductor having a
substantially cylindrical protruding sleeve (cavity), and an inner dielectric
positioned between the core and the sleeve, as disclosed in McKay, for the
inner conductor segments 7 of Van Swearingen's coaxial in-line capacitor
assembly, to blocks transmission of DC currents and eliminate passive
intermodulation (PIM) generation, as disclosed in McKay. The core and
sleeve of this modified version of Van Swearingen's coaxial in-line
capacitor would not be conical or have any of the other configurations
disclosed in Van Swearingen as Appellant argues, but rather would be
substantially cylindrical as disclosed in McKay.
In view of the undisputed art-recognized equivalence of a shrink
sleeve and the inner dielectric material disclosed in McKay, one of ordinary
skill in the art would have utilized either type of dielectric material in Van
Swearingen's modified coaxial in-line capacitor to separate the core and
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sleeve, rendering the use of a shrink sleeve to at least partially cover the core
of the modified structure, as recited in claim 16, prima facie obvious. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag
Pro, Inc., 425 U.S. 273, 282 (1976) ("[W]hen a patent 'simply arranges old
elements with each performing the same function it had been known to
perform' and yields no more than one would expect from such an
arrangement, the combination is obvious."); In re Fout, 675 F.2d 297, 301
(CCPA 1982) ("Express suggestion to substitute one equivalent for another
need not be present to render such substitution obvious.").
We accordingly sustain the Examiner's rejection of claim 16 under
35 U.S.C. § 103.
Rejections III and IV
Appellant argues claims 1 7-20 as a group on the basis of claim 1 7, to
which we accordingly limit our discussion. Br. 9-10; 37 C.F.R.
§ 41.37(c)(l)(iv).
As set forth above, claim 1 7 requires the first coaxial connector to
include a dielectric element attached to the first central conductor extension
that has a flat contact surface, and requires the second central conductor
extension to have a flat contact surface. Claim 17 further requires creation
of a first capacitive element solely between the flat contact surface of the
second central conductor extension and the first central conductor extension.
Appellant does not dispute the Examiner's finding that Van
Swearingen discloses that the dielectric spacer 11 separating the first and
second inner conductor segments 7 (first and second central conductor
extensions) of Van Swearingen's coaxial in-line capacitor assembly has a
flat contact surface 17. Compare Final Act. 9 (citing Van Swearingen Fig.
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4a), with Br. 9-10. Nor does Appellant dispute the Examiner's finding that
Van Swearingen discloses that the mating end 9 of the second (right) inner
conductor segment 7 also has a flat contact surface. Compare Final Act. 9
(citing Van Swearingen Fig. 4a), with Br. 9-10.
The Examiner finds that Van Swearingen does not explicitly disclose
creation of a first capacitive element solely between the flat contact surface
of the second (right) inner conductor segment 7 and the first inner conductor
segment 7. Final Act. 7. However, the Examiner determines that it would
have been obvious to one of ordinary skill in the art at the time of the
invention "to replace the in-line capacitor of Van Swearingen with a disc-
shaped parallel plate capacitor as an art-recognized alternative capacitor
capable of providing a desired capacitance as is well-known in the art." Id.
Appellant does not challenge the Examiner's official notice that a disc-
shaped parallel plate capacitor was an art-recognized alternative to Van
Swearingen's in-line capacitor (Br. 9-10), and we accordingly accept this
finding as fact. Kunzmann, 326 F.2d at 425 n.3.
The Examiner determines that as a consequence of replacing Van
Swearingen's in-line capacitor with a disc-shaped parallel plate capacitor,
the mating surfaces of Van Swearingen's first and second inner conductor
segments 7 (first and second central conductor extensions) would be flat,
and would be in contact with flat surfaces of the dielectric, thus creating a
first capacitive element solely between the flat contact surface of the second
(right) inner conductor segment 7 (second central conductor extension) and
the first inner conductor segment 7 (first second central conductor
extension), as recited in claim 17. Final Act. 10-11.
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Appellant argues that "[t]here is absolutely no suggestion in Van
Swearingen to employ flat contact surfaces as the sole components that
create the capacitive element." Br. 9. Appellant contends that Van
Swearingen's "emphasis on increasing surface area, particularly by
including contours like folds, threads, cones, and the like, would clearly
teach away from this arrangement." Id.
However, regardless of whether Van Swearingen would have
suggested flat contact surfaces as the sole components creating a capacitive
element, in view of the undisputed art-recognized equivalence of a disc-
shaped parallel plate capacitor and the in-line capacitor disclosed in Van
Swearingen, one of ordinary skill in the art would have found it obvious to
utilize either type of capacitor in Van Swearingen's assembly, rendering use
of a disc-shaped parallel plate capacitor prima facie obvious. KSR, 550 U.S.
at 417; Fout, 675 F.2d at 301.
Appellant does not challenge the Examiner's determination that such
use of a disc-shaped parallel plate capacitor in Van Swearingen's assembly
would result in the first and second inner conductor segments 7 (first and
second central conductor extensions) being flat and in contact with flat
surfaces of the dielectric, thus creating a first capacitive element solely
between the flat contact surface of the second (right) inner conductor
segment 7 (second central conductor extension) and the first inner conductor
segment 7 (first second central conductor extension), as recited in claim 17.
Compare Final Act. 10-11, with Br. 9. Furthermore, Appellant's arguments
do not direct us to any disclosure in Van Swearingen that criticizes,
discredits, or otherwise would have discouraged one of ordinary skill in the
art from utilizing this arrangement. Br. 9. Therefore, contrary to
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Appellant's arguments, Van Swearing en's disclosure of increasing the
surface area of the mating ends 9 of the two inner conductor segments 7 by
forming the mating surfaces 15 of the mating ends 9 with folds, protrusions,
corrugations, steps, and/or ridges does not teach away from the use of flat
contact surfaces as the sole components that create a capacitive element, as
recited in claim 17. Fulton, 391 F.3d at 1201.
We accordingly sustain the Examiner's rejection of claims 17-20
under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejections of claims 1-20 under 35 U.S.C.
§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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