Ex Parte Uno et al

Patent Trial and Appeal Board

Sep 25, 2012

11723036 (P.T.A.B. Sep. 25, 2012)

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.
11/723,036 03/16/2007 Yutaka Uno UNOY3001/FJD 2401
23364 7590 09/25/2012
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
IMAS, VLADIMIR
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
09/25/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUTAKA UNO and KOJI MATSUMOTO

Appeal 2010-001676
Application 11/723,036
Technology Center 2800
____________

Before LANCE LEONARD BARRY, THU A. DANG, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, and 4. Claim 2 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a jack having a switch mechanism
therein of the single-butt contact type in which an on-off operation is
Appeal 2010-001676
Application 11/723,036
2
performed by insertion/extraction of a plug. See Spec. 23, Abstract of the
Disclosure.

Claim 1 is illustrative, with key disputed limitations emphasized:
1. A jack having a switch mechanism of a single-butt contact type
comprising:

a body defining a plug insertion hole;

a stationary contact piece mounted to said body;

a movable contact piece mounted to said body and having a plate
spring serving as a cantilevered beam with a basal end portion and a
tip end portion, said contact pieces being located opposite to each
other outside said plug insertion hole in a manner that, when a plug is
inserted, said contact pieces are not contacted with the plug; and

an insulator having an insulation wall, which projects into said plug
insertion hole in a manner that, when the plug is inserted, said
insulator is pressed by the plug to be displaced, and in which, when
the plug is inserted, a displacement load is applied by said insulator to
a middle portion in a length direction of said movable contact piece to
flex said movable contact piece while setting said basal end portion of
said movable contact piece as a fulcrum, wherein:

said tip end portion of said movable contact piece contacts said
stationary contact piece, and thereafter said middle portion in the
length direction of said movable contact piece is flexed while setting
said tip end portion as a fulcrum, to apply a contact pressure on a
contact; and

said insulation wall of said insulator is disposed in close contact with
a side of said stationary contact piece which is opposite to said
movable contact piece.

The Examiner relies on the following as evidence of unpatentability:
Appeal 2010-001676
Application 11/723,036
3
Chang US 6,835,080 B1 Dec. 28, 2004

THE REJECTION
The Examiner rejected claims 1, 3, and 4 under 35 U.S.C. §102(b) as
anticipated by Chang. Ans. 3-5.1

ISSUE
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issue to
be dispositive of the claims on appeal:
Under § 102, has the Examiner erred in rejecting claims 1, 3, and 4 by
finding that Chang anticipates a stationary contact piece and a movable
contact piece mounted such that said contact pieces are not contacted by a
plug during insertion of the plug, but wherein the movable contact piece is
urged into electrical contact with the stationary contact piece by a flexible
insulator in response to insertion of a plug?
ANALYSIS
Appellants argue that Chang fails to show anything resembling piece4
which is contacted by the inserted pin. App. Br. 5.
The Examiner finds that argument nonpersuasive, noting Appellants’
claims expressly recite that “said contact pieces are not contacted with the
plug.” Ans. 5.
In their Reply Brief, Appellants argue that, although the Examiner
finds that Chang discloses a stationary contact piece 3 and a movable contact

1 Throughout this opinion, we refer to the Appeal Brief filed May 4, 2009;
the Examiner’s Answer mailed August 7, 2009; and the Reply Brief filed
October 7, 2009.
Appeal 2010-001676
Application 11/723,036
4
piece 2, Appellants claim two contact pieces, one of which is stationary and
one of which is movable. As proof of this assertion, Appellants argue that
Chang discloses two contacts which each possess a flexible arm. Chang,
Fig. 5, elements 21 and 31.
We note that the Examiner characterized the contacts of Chang as
stationary (contact piece 3) and movable (contact piece 2) in the Final
Rejection dated May 1, 2008 and that Appellants failed to raise that issue in
their Appeal Brief filed May 4, 2009.
“Any bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not
raised by an appellant in its opening brief . . . is waived.”) (citations and
quotation marks omitted).
Here, the Examiner’s findings that Chang teaches the stationary and
movable limitations of claim 1 (Ans. 3) are identical to those in the Final
Rejection (p. 2), from which the instant appeal was taken. Because the
findings are identical, we find nothing that would have prompted the new
argument in the Reply Brief. The Appellants could have made the argument
in their Appeal Brief. The term “Reply Brief” is exactly that, a brief in reply
to new rejections or new arguments set forth in an Examiner’s Answer. The
Appellants may not present arguments in a piecemeal fashion, holding back
arguments until an examiner answers the original brief. This basis for
asserting error is waived.
Nevertheless, we also find the contact piece 3 of Chang, while
possessing a flexible arm 31, also includes a mounted base portion which
can be described as “stationary.”
Appeal 2010-001676
Application 11/723,036
5
We therefore find that the Examiner did not err in rejecting claims 1,
3, and 4 under 35 U.S.C. §102 as anticipated by Chang.

CONCLUSION
The Examiner did not err in rejecting claims 1, 3, and 4 under §102.

ORDER
The Examiner’s decision rejecting claims 1, 3, and 4 is affirmed.
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).

AFFIRMED

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