Ex Parte Yoshida et al

Board of Patent Appeals and Interferences

Jul 14, 2008

10779880 (B.P.A.I. Jul. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HARUKI YOSHIDA and YOSITAKA ITO
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Appeal 2008-2205
Application 10/779,880
Technology Center 2800
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Decided: July 14, 2008
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Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 6 from the
Examiner’s final rejection of claims 1, 4, 5, 7-9, 12, and 13. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2008-2205
Application 10/779,880

Appellants’ claimed invention is directed to a female terminal having
a resilient contact piece portion that extends substantially parallel to a
bottom wall on either side of a first curved portion thereof. The portions of
the resilient contact that extend substantially parallel to a bottom wall of the
terminal insertion portion of the female terminal provide for a predetermined
clearance with the bottom wall (Figs. 1 and 2). Claim 1 is illustrative and
reproduced below:
1. A female terminal comprising:
a terminal-inserting portion having a bottom wall and a resilient
contact piece portion extending rearwardly from a front end edge of the
bottom wall to a free end portion thereof;
wherein a convex portion projecting toward said bottom wall is
formed at the free end portion of said resilient contact piece portion,
when said resilient contact piece portion is resiliently deformed upon
insertion of a male terminal, said convex portion is brought into contact with
said bottom wall;
wherein said resilient contact piece portion includes a first curved
portion by which said male terminal is clamped; and
wherein said resilient contact piece portion includes a beginning
portion extending from said front end edge to said first curved portion and
an intermediate portion extending from said first curved portion to said
convex portion, that are provided substantially in parallel to said bottom wall
at a predetermined clearance, so that said resilient contact piece portion
extends substantially parallel to said bottom wall except for said first curved
portion and said convex portion.

In addition to admitted prior art (APA) in drawing Figure 3 of the
subject Patent Application, the Examiner relies on the following prior art
reference as evidence in rejecting the appealed claims:
Ichida 6,851,976 B2 Feb. 8, 2005

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Appeal 2008-2205
Application 10/779,880

Claims 1, 4, 5, 7-9, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ichida in view of APA.
We reverse the stated rejection for reasons set forth in Appellants’ Brief.
The Examiner relies on items 38, 39 and 41 as shown in drawing
Figures 8 and 9 of Ichida as allegedly showing a resilient contact piece
having portions on either side of a curved portion that run substantially
parallel to a terminal wall as required by the appealed claims (Ans. 3-4). As
explained by Appellants, however, the portions of Ichida’s connector
terminal resilient contact piece (38, Figs 8 and 9) that the Examiner relies on
for disclosing the substantially parallel portions relative to terminal wall (33)
are, in fact, disclosed by Ichida to be inclined portions of item 38 that
cooperate with bulge (39) to form a triangular shape (Br. 8-9; Ichida, col. 7,
ll. 7-15). Thus, Appellants contend that the Examiner’s obviousness
rejection is in error in that it is bottomed on an erroneous interpretation of
Ichida and the independent claim 1 requirement for a resilient contact piece
with beginning and intermediate portions on opposite sides of a first curved
portion “that are provided substantially in parallel to said bottom wall at a
predetermined clearance, so that said resilient contact piece portion extends
substantially parallel to said bottom wall except for said first curved portion
and said convex portion.” We agree with Appellants.
In proceedings before the PTO, claims in an application are to be
given their broadest reasonable interpretation consistent with the
specification, and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Here, it is clear that a

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Appeal 2008-2205
Application 10/779,880

broadest reasonable interpretation of the claim language in question requires
that a predetermined clearance is formed between substantially parallel
sections of a resilient contact piece and a terminal wall whereas Ichida
discloses non-substantially parallel sections on opposing sides of a bulge
that form a triangular shaped resilient contact that does not furnish a
predetermined clearance as would be formed between a wall and
substantially parallel resilient contact portions.
We note that the Examiner does not rely on the additionally applied
APA for this missing teaching from Ichida. Indeed, the APA, like Ichida,
does not disclose the claimed parallel arrangement for portions of a resilient
contact, as here claimed.
Rejections based on § 103(a) must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the invention
from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). On this record, we reverse the
Examiner’s obviousness rejection.

CONCLUSION
The Examiner’s decision to reject claims 1, 4, 5, 7-9, 12, and 13 under
35 U.S.C. § 103(a) as being unpatentable over Ichida in view of APA is
reversed.

REVERSED

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Appeal 2008-2205
Application 10/779,880

tc

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