Ex Parte Swantner et al

Board of Patent Appeals and Interferences

Apr 15, 2008

10759637 (B.P.A.I. Apr. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. SWANTNER, SHANE BROWN,
and DOUGLAS G. SEYMOUR
____________

Appeal 2007-3822
Application 10/759,637
Technology Center 2800
____________

Decided: April 15, 2008
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-5. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an electrical connector. According to
Appellants, one aspect of the invention entails an insulating body
surrounding an electrically conductive member and pin. Another aspect
Appeal 2007-3822
Application 10/759,637

entails the insulating body comprising at least one compressible leg. (Spec.
5: par. 0022; Abstract, Fig. 3).
Claims 1 and 3 are illustrative of the claims on appeal:
1. A connector comprising:
an electrically conductive member having a longitudinal section at
least a portion of which provides a cylindrical hollow end;
an electrically conductive pin positioned with respect to said
electrically conductive member, a first part of said electrically conductive
pin being substantially centrally located within said hollow end: and
a single-piece electrically insulating body surrounding said
electrically conductive member and said electrically conductive pin, said
electrically conductive member having at least one leg extending in a
direction transverse to said longitudinal axis and having a length sufficient to
extend beyond a surface of said electrically insulating body.

3. The connector of Claim 1 wherein said electrically insulating body is
provided with at least two spacing feet and at least one compressible leg.

The Examiner relies on the following prior art references:
Tanaka US 4,556,264 Dec. 3, 1985
Sheesley US 4,666,231 May 19, 1987

Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § 102 (b) as being
anticipated by Sheesley.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sheesley in view of Tanaka.

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Application 10/759,637

ISSUES
For claim 1, the issue is whether Sheesley discloses an “insulating
body surrounding said electrically conductive member and said electrically
conductive pin.”
For claim 3, the issue is whether the Examiner has established a prima
facie case that the collective teachings of Sheesley and Tanaka teach the
limitation of “said electrically insulating body is provided…at least one
compressible leg.”
We affirm-in-part.

PRINCIPLES OF LAW
1. Anticipation
“Implicit in our review of the [Examiner’s] anticipation analysis is
that the claim must first have been correctly construed to define the scope
and meaning of each contested limitation.” Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997). During examination proceedings, claims are
“given their broadest reasonable interpretation consistent with the
specification”. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Although claims are to be interpreted in light of the
specification, limitations from the specification are not to be read into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). The scope
of a disputed term is not limited by the preferred embodiments absent an
express disclaimer by Appellant of a broader definition. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004).

2. Obviousness
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Appeal 2007-3822
Application 10/759,637

On appeal, Appellant bears the burden of showing that the Examiner
erred. Appellant may sustain this burden by showing that, where the
Examiner relies on a combination of disclosures, the Examiner failed to
provide sufficient evidence to show that one having ordinary skill in the art
would have done what Appellant did. In re Kahn, 441 F.3d 977, 987-88
(Fed. Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick, Co., 464 F.3d 1356, 1360-61 (Fed. Cir. 2006). Appellant may also
show that the Examiner has failed to meet his initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). If that initial burden is met, then the burden shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Id.
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d at 988 (Fed. Cir. 2006).
Furthermore, “‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness’ . . .
[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

FINDINGS OF FACT (FF)
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Application 10/759,637

1. Sheesley discloses an insulative body 29 having a cavity 40 with
cavity portions 40 and 42 encircling, enclosing, and receiving portions of
electrical terminal 12 (col. 4, ll. 3-35, Figs. 1-3, 6-7). Electrical terminal 12
comprises a split tubular shell portion 13 and an elongated blade portion 14.
The end of the blade 14 serves as a terminal end 17, projecting out of the
cavity 40 for connection to a circuit board 50 (col. 3, ll. 1-15, col. 4, ll. 34-
35, col. 5, ll. 32-37, Figs.1, 3, 6). Contact 2 having tube 3 is received in
center contact receiving cavity 36 extending axially of the insulative body
(col. 3, ll. 55-66, Fig. 5). “A hollow cylindrical web 39 of the insulative
body 29 concentrically encircles the tube 3” (col. 3, ll. 62-63). Cavity 36
also extends axially of the insulative body 29 and receives the blade portion
5 of contact 2, with terminal end portion 6 projecting outwardly of the cavity
36 (col. 3, l. 64 to col. 4, l. 2, Fig. 5) for connection to the circuit board 50
(col. 5, ll. 32-37).
2. Tanaka discloses mounting legs 18 so that “it is possible to fix the
body 1 in a printed circuit board (not shown) by bringing the legs into
resilient engagement with fitting holes of the printed board.” (Col. 4, ll. 45-
50).
3. Appellants disclose a “single-piece electrically insulating body 32”
having “at least one but preferably two compressible legs 36” (Spec. 5: par.
0022; Fig. 3).
4. Appellants depict portions of the connector 19 at Figure 3 as
outside of the insulating body 32 and not touching the circuit board in at
least two areas: 1) between the circuit board 50 and the body 32, and 2)
below the circuit board, so as to be exposed to the environment.

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Appeal 2007-3822
Application 10/759,637

ANALYSIS

1. 35 U.S.C. § 102 Rejection
Appellants argue that Sheesley’s single-piece electrically insulating
body 29 does not surround the electrically conductive member 12 and
electrically conductive pin 2 (Br. 2). Appellants base their argument on the
following:
The term “surrounding” as used in the specification and
claims and as shown in the drawings (see Fig. 3 of the subject
application) is obviously to be interpreted as meaning that the
electrical components are covered by an insulating material
except where necessary for electrical connection to be made
thereto.
A review of the Sheesley reference…clearly shows that
the electrical contacts (members or pins) are not “surrounded”
by an insulating body as required by the claims. Actually,
entire sections of the Sheesley contacts 20, 6, and 17 have
exposure to the environment, as seen in Fig. 2 of Sheesley.

(Br. 2-3).
The Examiner counters that “the electrical member 12 and pin 2 are
surrounded by an insulating body (29)” because “[a]lthough the claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims.” (Ans. 6).
We agree with the Examiner’s position. Appellant’s argument that
portions of Sheesley’s conductive pin 2 and member 12 are not surrounded
by the insulating body amounts to a tacit acknowledgement that portions
thereof are surrounded. Appellants’ claim 1 does not require the whole pin
or member to be surrounded, nor does it specify the degree of “surrounded.”
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Application 10/759,637

Our determination is consistent with the Specification, since, contrary
to Appellants’ characterization, supra, the disclosed conducting pin 22 and
member 19 (Fig. 3), like Sheesley’s, are not surrounded by the insulating
body everywhere “except where necessary for electrical connection to be
made thereto” (Br. 2, FF 4, Sheesley, Fig. 4). At a minimum, the conducting
pin section 22 and member 19 section below the circuit board 50 are not
required for electrical connection to the circuit board since they can be
eliminated. (See Spec. Fig. 3). Further, “entire sections of” Appellants’
conducting pin 22 and member 19 above and below the circuit board 50
“have exposure to the environment” (Br. 3, supra; FF 4; Spec. Fig. 3).
Accordingly, Appellants’ claim lacks support for the argued distinctions.1
Consequently, we concur with the Examiner’s determination that
Sheesley’s single-piece electrically insulating body 29 surrounds conducting
pin 2 and member 12 as claimed, because the pin and member are not only
depicted as surrounded, but are also described as within cavities of and
encircled by the insulating body (FF 1).
In view of the above discussions, since Sheesley discloses the argued
claim limitations, the Examiner’s rejection of independent claim 1, and
dependent claims 2, 4 and 5 not separately argued by Appellants, is
sustained.

1 Even if Appellants’ disclosed pin and member were as Appellants describe,
(i.e., surrounded by the insulating body everywhere except as necessary for
electrical connection), our broader determination of the scope of
“surrounded” would not be inconsistent with the Specification. A difference
in the degree of “surrounded” is not a difference in kind.
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Appeal 2007-3822
Application 10/759,637

2. 35 U.S.C. § 103 Rejection
Turning to claim 3, we agree with Appellants that the combination of
Sheesley and Tanaka does not suggest “at least one compressible leg” (Br.
3). As Appellants correctly point out, the Examiner cited Tanaka for
teaching the “compressible leg.” But, as Appellants argue, Tanaka teaches
“deflectable” and “resilient” legs (Br. 3, FF 2). In our view, the Examiner
does not respond directly to the Appellants’ argued distinction between
Tanaka’s resilient leg and Appellants’ compressible leg (Br. 3, Ans. 7).
While we note that the term “compressible” is not defined in the
Specification, we find the plain and ordinary meaning of the term to be
distinct from “deflectable” or “resilient.” In Meyers Multi District Patent
Infringement Litigation, Nos. 95-1194 to 95-1198, 1996 WL 84667, at *2,
78 F.3d 605 (Fed. Cir. Mar. 28, 2006) (“Meyers improperly equates the term
‘resiliency’ in the Cavanaugh patent with ‘compressibility’.”).
Accordingly, based on the Examiner’s stated interpretation of the
teachings of the prior art with respect to claim 3 as outlined, supra; we
determine that the Examiner has not provided a rational underpinning to
support a legal conclusion of obviousness.
CONCLUSION
Appellants have failed to show error in the Examiner’s rejection as to
claim 1. In re Kahn, 441 F.3d at 987-88. Accordingly, we sustain the
Examiner’s rejection of claim 1. Since Appellants have not separately
argued claims 2, 4, and 5, we also sustain the Examiner’s rejection of claims
2, 4 and 5.
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Appeal 2007-3822
Application 10/759,637

On the other hand, Appellants have shown that the Examiner erred in
rejecting claim 3. Accordingly, we will not sustain the Examiner’s rejection
of claim 3.

DECISION
The decision of the Examiner is affirmed-in-part. The Examiner’s
decision rejecting claims 1, 2, 4, and 5 is affirmed. The Examiner’s decision
rejecting claim 3 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART

gvw

William H. McNeill
OSRAN SYLVANIA INC
100 ENDICOTT Street
Danvers, MA 01923

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