Ex Parte Petersen

Board of Patent Appeals and Interferences

Feb 27, 2007

10199986 (B.P.A.I. Feb. 27, 2007)

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for publication and is not binding precedent of the Board.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 CYLE D. PETERSEN
____________

Appeal 2006-2599
Application 10/199,986
Technology Center 2800
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Decided: February 27, 2007
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Before JAMES D. THOMAS, KENNETH W. HAIRSTON, and
ALLEN R. MACDONALD, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant has appealed to the Board
from the Examiner’s Final Rejection of claims 1 through 18.
Appeal 2006-2599
Application 10/199,986

Representative independent claim 1 is reproduced below:
1. A telecommunications connector comprising:

a connector body; and

a housing that mounts over the connector body, the housing including
a front end and a rear end, the housing also including structure for providing
a snap-fit within a mounting opening defined by a piece of
telecommunications equipment, the structure including first and second
cantilevers, each of the first and second cantilevers having first and second
snap-fit elements positioned thereon, the first and second snap-fit elements
permitting insertion of the housing into the mounting opening from both a
forward direction and a rearward direction to allow the housing to be snap fit
within the mounting opening.

The following references are relied on by the Examiner:
Lucius US 3,989,343 Nov. 2, 1976
Yuzawa US 6,352,444 B1 Mar. 5, 2002
Claims 1 through 18 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the Examiner relies upon Yuzawa in view of
Lucius.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the Brief and Reply Brief for Appellant’s positions, and
to the Answer for the Examiner’s positions.
OPINION
We affirm.
At the outset, we note that Appellant presents arguments in the Brief
and Reply Brief only as to independent claims 1, 7 and 14 on appeal, and
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appears to duplicate these arguments among these independent claims. No
arguments are presented as to any dependent claim on appeal.
Even through we affirm the rejection of the claims on appeal, we do
not do so for any rationale of the Examiner based upon mere duplication of
parts. This portion of the Examiner’s reasoning, such as at page 4 of the
answer, appears to brute force argue that it would have been obvious for the
artisan to have duplicated the single cantilever 22 in his various figures of
Yuzawa based upon a reasoning that indicates the mere duplication of
essential working parts of a device involves only routine skill in the art. The
Examiner appears to base this reasoning upon a consideration of Yuzawa
alone. Mere duplication of parts is an older per se rule of unpatentability
that is highly disfavored in recent case law since it basically eliminates a
need for fact specific analysis of claims and the prior art. See e.g. In re
Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995).
Independently of any per se rule of unpatentability, the Examiner’s
rationale expressed at page 4 of the answer “in order to have more security
between the connector and the mounting opening” appears to be
presumptuous and not based upon any teachings or suggestions within
Yuzawa alone. From our review of this reference there appears to be no
apparent basis for the artisan to have duplicated this reference’s cantilever
element 22.
On the other hand, we do sustain the rejection of all claims on appeal
based upon the additional teachings and suggestions of Lucius as best
expressed by the Examiner’s rationale at page 7 of the Answer for:
providing another latching arm (22) on an opposite side of the
Yuzawa’s connector or the connector with two latching arms on
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Application 10/199,986

opposite sides can be inserted to any mounting opening (for example,
a panel with a mounting opening only not necessary to insert into the
connector housing as shown in Yuzawa), this would provide more
security and more easier to engage/disengage between the connector
and the mounting opening.

Notwithstanding the Examiner’s rather awkward wording of this
rationale, panel 32 and its opening 30 in figures 1 through 3 of Lucius
correspond to the Appellant’s specification figures 4 and 5 and their panel
120 with corresponding opening 119. Representative independent claim 1
on appeal does not actually require the insertion of a housing into a
mounting opening and does not require the housing to be snap-fitted within
this opening. Corresponding features as to the mere insertability are found
in independent claims 7 and 14 on appeal. Indeed, the mounting opening
and the telecommunications equipment of these claims are merely passively
recited anyway.
The Examiner’s quoted reasoning of combinability is consistent with
the teachings and showings in Lucius and such are broadly represented in
the Abstract indicating that the contribution of Lucius in the art permits
electrical connectors to be mounted within openings of a panel from either
side of this panel. This approach expands upon the limited application of the
coax plug connector 20 to the housing 70 within Yuzawa alone as reasoned
by the quoted portion from page 7 of the Answer.
Additionally, the Examiner’s remarks at pages 6 and 7 of the Answer
address Appellant’s principal position at page 10 of the Brief as to
independent claim 1 on appeal that even if properly combined within 35
U.S.C. § 103, the combination of Yuzawa and Lucius does not meet the
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Application 10/199,986

subject matter of this claim. The Examiner maintains that Yuzawa teaches
only one cantilever but Lucius shows the ability to use more than one, or
otherwise duplicate the one in Yuzawa to yield advantageous results as
explained earlier. Page 6 of the Answer also brings out the point that
combinability of references within 35 U.S.C. § 103 is not based upon a
combination of structural elements of them but a combination of teachings
among them. Rather than contradicting the teachings of Yuzawa and
rendering the combined device inoperable for its intended use, the
Examiner’s rationale and the teachings of Lucius actually expand upon the
usability of the electrical connector arrangement of Yuzawa’s coax plug
connector 20 enabling it to be flexibly used with a panel arrangement, such
as panel arrangement 32 in the figures of Lucius.
In view of the foregoing, we therefore conclude that the artisan would
have found adequate motivation to have combined the teachings of Yuzawa
and Lucius and that the artisan would also not have found that Yuzawa
teaches away from the combination. Appellant’s responsive remarks at the
bottom of page 2 of the Reply Brief failed to address any teaching value of
Lucius and the Examiner’s remarks at page 7 of the answer noted earlier in
this opinion.
The decision of the Examiner rejection claims 1 through 18 under
35 U.S.C. § 103 is affirmed.

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Appeal 2006-2599
Application 10/199,986

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR §1.136(a). See 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED

PGC

Merchant & Gould PC
P.O. Box 2903
Minneapolis, MN 55402-0903.
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