Ex Parte Torii

Board of Patent Appeals and Interferences

Mar 19, 2004

09100346 (B.P.A.I. Mar. 19, 2004)

1 Claim 17 was amended subsequent to the final rejection.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHIEKO TORII
____________
Appeal No. 2003-0471
Application No. 09/100,346
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 9, 10
and 13 to 21, which are all of the claims pending in this application.1
We REVERSE.
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Application No. 09/100,346
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BACKGROUND
The appellant's invention relates to a connector mounting structure. A copy of
the dependent claims under appeal is set forth in the appendix to the appellant's brief.
Claims 15 and 17, the independent claims on appeal, read as follows:
15. A connector mounting structure, comprising:
a base board;
a housing having a plurality of terminal accommodating chambers;
a plurality of terminals respectively disposed in said terminal
accommodating chambers, said plurality of terminals including at least one
electrical terminal and a pair of dummy terminals, respectively disposed at
opposite ends of said housing relative to said at least one electrical terminal,
an electrical wire only being connected to said at least one electrical
terminal; and
fastening means for fastening said housing to said based [sic, base]
board, said fastening means consisting of fixing portions provided on said at
least one electrical terminal and on said dummy terminals and passing through
said based [sic, base] board to fix said terminals, and attendantly, said housing
to said base board, whereby said housing is only indirectly fastened to said base
board through said terminals.
17. A connector mounting structure, comprising:
a base board;
a housing having a plurality of terminal accommodating chambers;
a plurality of terminals respectively disposed in said accommodating
chambers, said plurality of terminals including at least one electrical terminal and
a pair of dummy terminals, respectively disposed at opposite ends of said
housing relative to said at least one electrical terminal,
an electrical wire only being connected to said at least one electrical
terminal; and
a plurality of fixing portions provided on said at least one electrical
terminal and on said dummy terminals and passing through said base board to
fix said terminals, and attendantly, said housing to said base board, whereby
said housing is only indirectly fastened to said base board through said
terminals,
wherein all of said at least one electrical terminal and said dummy
terminals have the same shape, and said fixing portions of said dummy terminals
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reinforce fastening of said housing to said base board by said fixing portion of
said at least one electrical terminal.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Anderson et al. (Anderson) 4,054,767 Oct. 18, 1977
Kikuchi et al. (Kikuchi) GB 2 197 548 A May 18, 1988
Claims 9, 10 and 13 to 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kikuchi in view of Anderson.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant in the brief (Paper No. 23, filed May 4,
2001) and the reply brief (Paper No. 25, filed July 22, 2002) and the examiner in the
answer (Paper No. 24, mailed May 21, 2002). Upon evaluation of all the evidence
before us, it is our conclusion that the evidence adduced by the examiner is insufficient
to establish a prima facie case of obviousness with respect to the claims under appeal.
Accordingly, we will not sustain the examiner's rejection of claims 9, 10 and 13 to 21
under 35 U.S.C. § 103. Our reasoning for this determination follows.
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In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
In the rejection before us in this appeal, the examiner (answer, p. 4) found that
Kikuchi discloses a connector mounting structure having a base board 9, a housing 5
with a plurality of terminal accommodating chambers 6 for receiving wires 4, a plurality
of terminals 1 (shaped the same) disposed in the chambers with the terminals disposed
from one end of the housing to the other end and the terminals including fastening
means which include fixing portions 3 for indirectly fastening the housing to the base
board. The examiner next declared that although Kikuchi has terminals and chambers
that appear not to be used, Kikuchi does not disclose the terminals as being dummy
terminals disposed at opposite ends of the housing. The examiner also found that it is
well known in the art to use dummy terminals as evidenced by Anderson's disclosure of
the use of dummy terminals 67c, 67e and 67f for added capacity. Lastly, the examiner
concluded that it would have been obvious to one of ordinary skill in the art to use as
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2 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
many or as few terminals as needed (thereby creating dummy terminals) in Kikuchi's
connector mounting structure at whatever end desired to provide additional connections
for the connector as taught by Anderson.
In our view, the combined teachings of Kikuchi and Anderson do not establish a
prima facie case of obviousness with respect to the claimed subject matter since they
fail to present evidence that would have led one of ordinary skill in the art to modify
Kikuchi's connector mounting structure to arrive at the claimed invention. The first
difficulty we have with the rejection under appeal is that the examiner has not correctly
set forth the teachings of Kikuchi. Kikuchi does not teach having a terminal in each of
terminal accommodating chambers 6 (see Figure 4 as well as Figure 1 which depict
that only the chambers receiving wires 4 have terminals 1). Thus, Kikuchi does not
disclose or suggest "dummy terminals" (i.e., terminals in chambers that are not
connected to wires 4).
The second difficulty we have with the rejection is that the examiner did not
ascertain all of the differences between Kikuchi and the independent claims at issue.2
Based on our analysis and review of Kikuchi and claims 15 and 17, it is our opinion that
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the differences include: (1) the connector mounting structure including a pair of dummy
terminals (claims 15 and 17); (2) the pair of dummy terminals being respectively
disposed at opposite ends of the housing relative to at least one electrical terminal with
an electrical wire only being connected to the at least one electrical terminal (claims 15
and 17); (3) fixing portions provided on the pair of dummy terminals and passing
through the base board to fix the dummy terminals, and attendantly, the housing to the
base board (claims 15 and 17); and (4) all of the electrical terminals and the pair of
dummy terminals have the same shape (claim 17).
The third and final difficulty we have with the rejection is that the examiner did
not determine that all of the above-noted differences between Kikuchi and the
independent claims at issue would have been obvious at the time the invention was
made to a person of ordinary skill in the art. In our view, Anderson provides no
teaching, suggestion or motivation for an artisan to have modified Kikuchi to place
terminals 1 in the terminal accommodating chambers 6 at opposite ends of the housing
5 and not connect an electrical wire to those terminals (i.e., to create "dummy terminals"
at opposite ends of the housing 5). In our view, the only possible suggestion for
modifying Kikuchi to meet the above-noted limitations would be hindsight knowledge
derived from the appellant's own disclosure. The use of such hindsight knowledge to
support an obviousness rejection under 35 U.S.C. § 103 is, of course, impermissible.
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See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the examiner to reject
independent claims 15 and 17, and claims 9, 10, 13, 14, 16 and 18 to 21 dependent
thereon, under 35 U.S.C. § 103 is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 9, 10 and 13 to 21
under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 09/100,346
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SUGHRUE MION ZINN
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