Ex parte Wurster

Board of Patent Appeals and Interferences

Apr 28, 1998

08394409 (B.P.A.I. Apr. 28, 1998)

Application for patent filed February 24, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WOODY WURSTER
_____________
Appeal No. 97-1400
Application 08/394,4091
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and ABRAMS
and FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3, 5 and 10 through 14. Claims 2, 4 and 6
Appeal No. 97-1400
Application 08/394,409
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through 9 have been canceled. In the brief (page 2), appellant
acknowledges that claims 1, 3, 5 and 10 through 14 are "pending"
in the application, but then indicates that "[c]laims 1, 3, 5
and 10-13" are on appeal. No mention is made in the brief of
claim 14. On page 1 of the examiner's answer (Paper No. 9),
the examiner has indicated that "[i]t is noted that claim 14 is
not stated as on appeal and is therefore not considered on
appeal." Subsequent to this indication by the examiner, the
appellant filed a reply brief on July 30, 1996 (Paper No. 10).
Again there was no comment made by appellant with regard to
claim 14. Accordingly, the appeal as to claim 14 is dismissed.
This leaves only claims 1, 3, 5 and 10 through 13 for our
consideration on appeal.
Appellant's invention relates to an electrical contact
having a compliant section for press-fit into a circuit board
hole. See, for example, Figures 1 and 2 of the application
drawings. The compliant section is of the "eye-of-the-needle"
type, which, as can be seen in Figures 2 through 5 of the
application drawings, is one which has an elongated vertical slot
(e.g., 44) that divides the section into a pair of beams (e.g.,
46, 48) that merge together into a lower portion (30). Figure 1
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Application 08/394,409
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of the drawings is labelled "Prior Art" and is described on
page 4 of the specification as including a lower section (Z)
which projects below the lower face of the circuit board and has
sharp corners, as at (SS), which can act as antennas for high
frequency signals on the order of 100 MHZ or higher. It is said
that this construction can result in undesirable "crosstalk"
between adjacent contacts, or allow the sharp edges to radiate
signals to adjacent circuitry and pick up stray signals. To
overcome these problems with the prior art electrical contacts,
appellant has provided an electrical contact with the particular
configuration seen in Figures 2 through 6 of the application
drawings. Of special importance to appellant is the rounded
configuration of the lower portion (30) of the contact as seen in
front elevation view Figure 5 and side elevation view Figure 6 of
the drawings and the relatively small dimension (N) between the
bottom of the slot (44) and the extreme lower end (32) of the
compliant section. As noted on page 10 of the specification,
the invention provides an electrical contact
with a large retention force, which minimizes
the emission and reception of high frequency
signals when installed in circuit board
holes, especially those of the most common
sizes. Emission and reception resulting in
crosstalk, is minimized by rounding the lower
surface of the contact, and by constructing
Appeal No. 97-1400
Application 08/394,409
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the compliant section so the portion below
the bottom of the slot is short so it does
not project below the bottom of most circuit
boards and projects minimally below the
bottom of thin boards. This is accomplished
while maintaining a high retention force, by
making the beams of a length that is at least
half the board thickness and by providing the
outer sides of the beam with convex surfaces
of moderately large radius of curvature.
Claims 1, 10 and 13 are representative of subject
matter on appeal and a copy of those claims may be found in the
Appendix to appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Rozmus 5,078,612 Jan. 7, 1992
Zell 5,090,912 Feb. 25, 1992
Prochaska et al. (Prochaska) 5,106,328 Apr. 21, 1992
Claims 1 and 3 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Prochaska in view of Rozmus.
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Claims 5 and 10 through 13 stand rejected under 35
U.S.C. § 103 as being unpatentable over Zell in view of Prochaska
and Rozmus.
Rather than reiterate the examiner's full explanation
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the final rejection (Paper No.
6, mailed December 6, 1995) and to the examiner's answer (Paper
No. 9, mailed July 8, 1996) for the examiner's reasoning in
support of the rejections, and to appellant's brief (Paper No. 8,
filed May 16, 1996) and reply brief (Paper No. 10, filed July 30,
1996) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
this review, we have made the determination that the examiner's
rejections under 35 U.S.C. § 103 will not be sustained. Our
reasons follow.
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After careful review of the basic combination of
Prochaska and Rozmus, we must agree with appellant (brief,
pages 4-7) that there is no teaching, suggestion or incentive
in the applied references which would have led one of ordinary
skill in the art to their combination as posited by the examiner
so as to arrive at the particular form of electrical contact as
claimed in independent claim 1 and dependent claim 3 on appeal.
Moreover, while the examiner is of the view that Rozmus, in
Figure 2, discloses a compliant pin section with an extreme upper
end having a radius of curvature "which appears to be at least
25% of thickness [sic] of the compliant section as seen in side
elevation view" (final rejection, page 3), we share appellant's
view that the rounded ends of the elongated connector tail (1)
and the wire wrap tail (2) seen in Figure 2 of Rozmus are far
removed from the compliant section (3) of the contact pin therein
and form no part thereof, and also that the radius of curvature
of the extreme ends of these tails would appear to be much
smaller than the 25% of the contact thickness that the examiner
sees therein.
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As for the examiner's further assertion that Prochaska,
Figure 4, when viewed upside down, shows the extreme lower end of
the contact therein having a distance (N) below the bottom of the
slot (20) that "appears to be no more than one-quarter of [the]
height of the slot" (final rejection, page 3), we find Figure 4
of Prochaska to be ambiguous due to the excessive inking of the
drawing, particularly in the area of the ends of the slot (20),
so that any such determination or measurement is at best
speculative. We note, however, that our own measurement of the
distance (N) relative to the length of the slot in Prochaska
Figure 4 is in accord with appellant's determination (brief,
pages 6-7 and 9), and shows that the distance (N) between the
bottom of the slot (20) and the extreme end of the contact is
most likely greater than 25% of the slot length.
Considering (1) the distinct differences between the
configurations of the contacts of Prochaska and Rozmus, and
(2) the arguments made by appellant in both the brief and the
reply brief, it is our opinion that the examiner's combination of
Prochaska and Rozmus is based on impermissible hindsight derived
from appellant's own teachings and not from the prior art
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references themselves as the teachings thereof would have been
understood by one of ordinary skill in the art at the time of
appellant's invention.
Having also reviewed the patent to Zell applied by the
examiner against claims 5 and 10 through 13 on appeal, we find
nothing therein which would overcome or provide for the
deficiencies noted above in the teachings or suggestions of
Prochaska and Rozmus.
Lacking any reasonable teachings in the prior art
itself which would appear to have fairly suggested the claimed
subject matter as a whole to a person of ordinary skill in the
art, or any viable line of reasoning as to why such artisan would
have otherwise found the claimed subject matter to have been
obvious in light of the teachings of the applied references, we
must refuse to sustain the examiner's rejections of claims 1, 3,
5 and 10 through 13 under 35 U.S.C. § 103.
In light of the foregoing, the decision of the examiner
is reversed.
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Application 08/394,409
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REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-1400
Application 08/394,409
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Leon D. Rosen
Freilich Hornbaker & Rosen
10960 Wilshire Boulevard
Suite 1434
Los Angeles, CA 90024