Ex Parte Pipho

Board of Patent Appeals and Interferences

Apr 25, 2012

11788461 (B.P.A.I. Apr. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID A. PIPHO
____________

Appeal 2010-002743
Application 11/788,461
Technology Center 2800
____________

Before JOHN A. JEFFERY, JEFFREY S. SMITH, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Appellant’s invention detects when connectors and their contacts are
properly engaged. To this end, at least two contacts are offset a distance
away from other contacts which ensures that, upon insertion, a module’s
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contacts are properly engaged with those of a connector member before
engaging the offset contacts which, in turn, completes an electrical circuit
with an LED indicating a valid connection. See generally Spec. ¶¶ 0001,
0006-07; Figs. 1A-1C. Claim 1 is illustrative with key disputed limitations
emphasized:
1. An interconnect detection system, comprising:

a first connector member having a set of laterally spaced-apart
contacts for communicatively engaging a corresponding set of contacts of a
second connector member, at least two of the contacts of the first connector
member offset a predetermined distance in a non-lateral direction away
from at least two respective contacts of the second connector member; and

an indicator configured to provide an indication of contact between
the at least two offset contacts of the first connector member with respective
contacts of the second connector member to verify a valid interconnect
between the first and second connector members.

THE REJECTIONS
1. The Examiner rejected claims 1-6, 8, 9, 12, 13, 15-17, and 19
under 35 U.S.C. § 102(b) as anticipated by Inaba (US 2004/0266267 A1;
Dec. 30, 2004). Ans. 3-6.1,2

1 Throughout this opinion, we refer to (1) the Final Rejection mailed
December 5, 2008; (2) the Appeal Brief filed May 5, 2009; (3) the
Examiner’s Answer mailed August 5, 2009; and (4) the Reply Brief filed
October 5, 2009.
2 Although the Examiner’s rejection is based on Inaba’s published
application, the Examiner and Appellant nonetheless refer to Inaba’s
corresponding U.S. Patent 7,150,654 B2. See, e.g., Ans. 3; App. Br. 13
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2. The Examiner rejected claims 7, 10, 11, 14, and 18 under
35 U.S.C. § 103(a) as unpatentable over Inaba. Ans. 6-7.

THE ANTICIPATION REJECTION
The Examiner finds that Inaba discloses every recited feature of
independent claim 1 including a “first connector member” (connector 41 in
adapter device 3) with contacts 47 that engage corresponding contacts in a
“second connector member” (IC card 4). Ans. 3. According to the
Examiner, at least two of the first connector member’s contacts 47, namely
the first and last connecting terminals 47 in Figure 6 that the Examiner labels
as 47a and 47b, respectively, are offset a predetermined distance in a non-
lateral direction away from (1) other contacts 47 on the “first connector
member,” and (2) respective contacts 16 of the “second connector member”
(i.e., the IC card). Ans. 3-4, 7.
Appellant argues that Inaba’s connecting terminals 47 are offset
toward—not away from—the inserted IC card. App. Br. 12-13; Reply Br. 2-
3. Appellant adds that the relative offset noted by the Examiner regarding
contacts 47 pertains to the same connector member—not different connector
members as claimed. Reply Br. 2. The issue before us, then, is as follows:

(citing passages from the patent). For clarity and consistency, we likewise
refer to the ‘654 patent in this opinion.
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ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that at least two of the first connector member’s contacts are offset a
predetermined distance in a non-lateral direction away from at least two
respective contacts of the second connector member?

ANALYSIS
On this record, we find error in the Examiner’s anticipation rejection
of independent claim 1 for the reasons indicated by Appellant. App. Br. 12-
13; Reply Br. 2. As Appellant indicates (App. Br. 13), the first and last
connecting terminals 47 in Inaba’s Figure 6 that the Examiner labels as 47a
and 47b, respectively (Ans. 4) are offset in a direction toward—not away
from—the inserted IC card 4 and its associated contacts 16.
The Examiner, however, apparently takes the position that the recited
contact offset occurs when the first and second connectors are separated.
See Ans. 7 (noting that when the first and second connectors are separated,
the two contacts 47a, b “are offset away in a non-lateral direction with the
other contacts (such as the contacts 47s3 or the contacts of the second
connector[])”) (emphasis added). Although removing the IC card 4 from the
adapter device displaces their respective connector members and associated

3 In the reproduced detail view of Inaba’s Figure 6 in the Examiner’s
Answer, the Examiner labels certain connecting terminals located between
the first and last connecting terminals in Inaba’s Figure 6 as “47s.” Ans. 4.
The first and last connecting terminals are labeled “47a” and “47b.” Id.
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contacts away from each other, to say that this displacement meets the
recited contact offset strains reasonable limits on this record. Notably,
offsetting at least two contacts is a key aspect of the present invention which
ensures that, upon insertion, a module’s contacts 30 are properly engaged
with those of a connector member 14 before engaging the offset contacts
301, 302 which, in turn, completes an electrical circuit with an LED
indicating a valid connection. See Spec. ¶¶ 0006-07; Figs. 1A-1C.
The Examiner’s alternative position, based on the relative offset
between Inaba’s connecting terminals 47 (Ans. 7), is likewise unavailing.
As Appellant indicates (Reply Br. 2), this offset pertains to the same
connector member, namely Inaba’s connector 41—not different connector
members as claimed.
We also find the Examiner’s position problematic even if we were to
accept the Examiner’s depiction of Inaba’s IC card 4 in Figure 1 on Page 4
of the Answer.4 Notably, contacts 47a, b would still not be offset away

4 Although Appellant alleges that the Examiner’s depicting offset contacts
16a, b on Page 4 of the Answer altered Inaba’s Figure 1 which is said to
show parallel contacts (Reply Br. 2-3), this inconsistency was not raised in
the Appeal Brief despite a similar reproduction appearing the Final
Rejection from which the appeal was taken. Compare Fin. Rej. 3 with Ans.
4. Accordingly, Appellant’s argument regarding the inconsistency between
figures is therefore waived as untimely. See Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.”).
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from their respective contacts 16a, b in the Examiner’s figure, but rather
both sets of contacts share a similar offset in the same direction. See Ans. 4.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 9 and 15 which recite
commensurate limitations; and (3) dependent claims 2-6, 8, 9, 12, 13, 15-17,
and 19 for similar reasons. Since this issue is dispositive regarding our
reversing the rejection of these claims, we need not address Appellant’s
other arguments regarding claims 5, 12, and 19. App. Br. 13-14.

THE OBVIOUSNESS REJECTION
Since the Examiner’s obviousness rejection does not cure the
deficiencies noted above regarding the independent claims, we reverse the
obviousness rejection of dependent claims 7, 10, 11, 14, and 18 (Ans. 6-7)
for similar reasons.

CONCLUSION
The Examiner erred in rejecting (1) claims 1-6, 8, 9, 12, 13, 15-17,
and 19 under § 102, and (2) claims 7, 10, 11, 14, and 18 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-19 is reversed.

REVERSED

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