Ex Parte Qiao

Patent Trial and Appeal Board

May 17, 2017

13700234 (P.T.A.B. May. 17, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/700,234 11/27/2012 YunLong Qiao 66016US005 1830
32692 7590 05/19/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
GILMAN, ALEXANDER
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
05/19/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUNLONG QIAO
Appeal 2016-003329
Application 13/700,2341
Technology Center 2800
Before ROMULO H. DELMENDO, ELIZABETH M. ROESEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter “Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1,3,
and 5.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real parties in interest are listed as: “3M Company . . . and its affiliate
3M Innovative Properties Company” (Appeal Brief filed on August 26,
2015, hereinafter “Appeal Br.,” 2).
2 Appeal Br. 4—6; Reply Brief filed on February 11, 2016, hereinafter “Reply
Br.,” 2—\ (not paginated); Final Office Action (notice emailed on October 2,
2014), hereinafter “Final Act.,” 2—6; Examiner’s Answer (notice emailed
December 22, 2015), hereinafter “Ans.,” 1—4.
Appeal 2016-003329
Application 13/700,234
BACKGROUND
The subject matter on appeal relates to a gasket for use with an
electromagnetic interference (EMI) shielding cage (Specification, hereinafter
“Spec.,” 1,11. 7—9). Figure 4 is illustrative and is reproduced from the
Drawings, as follows:
Figure 4 above shows an exemplary gasket 1000 according to the invention,
wherein the gasket includes, inter alia: (A) a conductive body 1100 having
(i) a plurality of sides that are interconnected to form a continuous structure
with an opening 1110 configured to receive a first end 2100 of an EMI
shielding cage 2000 (as shown in Figures 2 and 3), (ii) a first face 1210,
(iii) a second face 1220, (iv) an inner perimeter 1310, and (v) an outer
perimeter 1320; (B) a plurality of engagement tabs 1400 disposed along the
outer perimeter 1320 and extending away from the first face 1210; and (C) a
plurality of spring tabs 1500 disposed along the inner perimeter 1310 and
extending away from the second face 1220 (Spec. 7,1. 22—8,1. 2).
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Appeal 2016-003329
Application 13/700,234
Representative claim 1 is reproduced from page 7 of the Appeal Brief
(Claims Appendix), with key disputed limitations highlighted, as follows:
1. A gasket for use with an electromagnetic interference
(EMI) shielding cage for a connector, the gasket comprising:
a conductive body having an opening configured to
receive a first end of the EMI shielding cage near a gasket
mating wall incorporated on the EMI shielding cage, wherein
the conductive body comprises a first face designed to face away
from the gasket mating wall, a second face designed to face the
gasket mating wall, an inner perimeter and an outer perimeter;
a plurality of engagement tabs disposed along the outer
perimeter and extending away from the first face; and
a plurality of spring tabs disposed along the inner
perimeter and extending away from the second face wherein
when the first end of the EMI shielding cage is inserted into the
opening of the conductive body and an opening of an optional
complementary faceplate with the engagement tabs facing the
faceplate and the spring tabs facing the gasket mating wall of the
EMI shielding cage, the engagement tabs and the spring tabs
cooperatively maintain a predefined separation distance D1
between the gasket mating wall and the optional complementary
faceplate.
Claim 5, the only other independent claim on appeal, is directed to an
EMI cage assembly including a gasket having the same disputed limitations
highlighted in reproduced claim 1 above (Appeal Br. 7).
REJECTION ON APPEAL
On appeal, the Examiner maintained a rejection under pre-AIA 35
U.S.C. § 102(b) of claims 1, 3, and 5 as anticipated by Avery et al. (US
6,206,730 Bl, iss. Mar. 27, 2001; hereinafter “Avery”) (Ans. 2-4; Final Act.
2-6).
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Appeal 2016-003329
Application 13/700,234
DISCUSSION
The Examiner finds that Avery describes every limitation recited in
claim 1 (Final Act 2—3). In addition, the Examiner makes a similar finding
with respect to claim 5 {id. at 3—4).
The Appellant submits various arguments against the Examiner’s
rejection (Appeal Br. 4—6). Specifically, with respect to independent claims
1 and 5, the Appellant contends:
1. Avery does not describe “a plurality of engagement tabs
that are disposed along an outer perimeter of a gasket and
extend away from the first face, where the first face of
the gasket is designed to face away from a gasket mating
wall of an EMI shielding cage” {id. at 4);
2. Avery does not describe “a plurality of spring tabs that
are disposed along an inner perimeter of a gasket and
extend away from a second face, where the second face
of the gasket is designed to face a gasket mating wall of
an EMI shielding cage” {id. at 4—5);
3. Avery does not describe “a conductive body of a gasket
having an opening that is configured to receive a first end
of an EMI shielding cage near a gasket mating wall of the
EMI shielding cage” {id. at 5); and
4. Avery does not describe “engagement tabs and spring
tabs of a gasket cooperatively maintaining a predefined
separation distance D1 between a gasket mating wall and
an optional complementary faceplate” {id. at 6).
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Appeal 2016-003329
Application 13/700,234
For the reasons discussed below, we agree with the Appellant as to
issue 3—i.e., that Avery does not describe “a conductive body having an
opening configured to receive a first end of the EMI shielding cage near a
gasket mating wall incorporated on the EMI shielding cage” as required by
the claims. Because this issue is dispositive, we do not reach the other
issues.
Avery’s Figure 6 is reproduced as follows:
Avery’s Figure 6 depicts an adapter frame assembly 16 in conjunction with a
board-mounted connector, wherein the assembly 16 includes, inter alia, a
diecast metal body 22, a metal shielding cover 24, and a metal gasket 26
including a plurality of flexible stamped and formed latch arms 62 for
snapping behind front wall 30 of body 20 to hold the gasket 26 to the body
surrounding front receptacle 32, a plurality of outwardly deformed flexible
fingers 64 on all four sides for engaging the panel about the rectangular
aperture therein, and a plurality of inwardly deformed flexible fingers 66 on
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Appeal 2016-003329
Application 13/700,234
the top and bottom of the gasket 26 to engage an exterior shield of plug-in
connector 18 (shown in Figure 4) (col. 3,11. 13—59).
Avery’s Figure 1 is reproduced as follows:
Avery’s Figure 1 shows the adapter frame assembly 16 with the gasket 26,
diecast metal body 22, and shielding cover 24 assembled together (col. 3,11.
1-7).
The Examiner finds that Avery’s diecast metal body 22 and shielding
cover 24 correspond to the Appellant’s “EMI shielding cage” (Final Act. 2).
According to the Examiner (Ans. 3), “[t]he receptacle 32 forms the first end
of the EMI shielding cage which is inserted into the opening of the
conductive body [gasket] 26.”
The Examiner’s finding that Avery’s receptacle 32 is inserted into the
opening of the conductive body constitutes reversible error. As shown in
Avery’s Figure 1, the opening in gasket 26 is not “configured to receive a
first end of the EMI shielding cage” as required by the claims. Specifically,
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Appeal 2016-003329
Application 13/700,234
Avery’s Figures 1 and 6 show that the front end defined by, e.g., front
receptacle 32 does not penetrate the opening in gasket 26 (i.e., the opening is
not configured to receive the front end of the shielding cage). Instead,
Avery teaches that latch arms 62 snaps behind front wall 30 of body 20 “to
hold the gasket to the body surrounding front receptacle 32” (col. 3,11. 50-
53) (bolding removed).
The Examiner states that because “the EMI shielding case is not part
of the claimed gasket” (claim 1), “the limitations regarding disposition of the
gasket with regard the EMI shielding case are related to the intended use of
the claimed gasket” and, therefore, do not serve to impart patentability (Ans.
2—3). As the Appellant points out (Reply Br. 3), the Examiner fails to direct
us to evidence or persuasive technical reasoning establishing that Avery’s
gasket is in fact capable of (i.e., “configured to”) receiving a first end of an
EMI shielding cage.
For these reasons, we cannot sustain the Examiner’s anticipation
finding.
SUMMARY
The Examiner’s final decision to reject claims 1,3, and 5 is reversed.
REVERSED
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