Ex Parte Zahnen et al

Board of Patent Appeals and Interferences

Nov 17, 2011

11381012 (B.P.A.I. Nov. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL W. LUBINSKY, JAMES L. ZAHNEN,
and ROY E. JAZOWSKI
____________

Appeal 2010-001032
Application 11/381,012
Technology Center 2800
____________

Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-6, 9-15, and 17-24. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
Claim 1 is illustrative of Appellants’ invention:
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1. An electrical connector for a plurality of electrical cables
comprising:
an electrically conductive body having a plurality of
spaced apart cable-receiving passageways for receiving respective
electrical cable ends therein, each cable-receiving passageway
having a cable inlet opening;
said electrically conductive body also having at least
one respective fastener-receiving passageway intersecting each of
the cable-receiving passageways;
a respective fastener in each of the fastener-receiving
passageways;
an insulating cover on said electrically conductive
body and comprising an integrally molded respective tubular cable
inlet aligned with each of the cable inlet openings; and
a respective insulating boot to be received in each of
said tubular cable inlets, each of said insulating boots
comprising
a tubular sidewall having a progressively
increasing diameter to an open outer end thereof,
a removable boot closure cap for removable
positioning in the open outer end of said tubular
sidewall, and
an integrally molded tether connecting said
removable boot closure cap to said tubular sidewall.

Appellants appeal the following rejections under 35 U.S.C. § 103(a):
Claims 1-6, 12, and 17-23 as being unpatentable over the combined
prior art of Fillinger1 and Burwell2;
Claim 9 as being unpatentable over the combined prior art of
Fillinger, Burwell, and Michaud Connector3; and

1 US 5,533,912, issued July 9, 1996.
2 US D478,318 S, issued August 12, 2003.
3 Pictures of Michaud Connector, K 197 6-35mm Cu, 100A IPPC (pp. 1-4)
undated.
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Claims 10, 11, 13-15, and 24 as being unpatentable over the combined
prior art of Fillinger, Burwell, and Borgstrom.4
Appellants argue the claims in the first ground of rejection as a group
and focus on claim 1. Accordingly, we shall focus on claims 1 in our
analysis below. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants also do not
present any further substantive arguments against the remaining two grounds
of rejections.
DISPOSITIVE ISSUE
The dispositive issue on appeal is as follows:
Have Appellants shown the Examiner reversibly erred in determining
that it would have been prima facie obvious to use the seal closure cap and
integrally molded tether of Burwell’s three pole connector housing tube in
the insulating boot (i.e., housing tube) of Fillinger’s electrical connector?
We answer this question in the negative.

PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.

4 US 6,817,910 B2, issued November 16, 2004.

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The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
ANALYSIS
The Examiner’s findings reasonably establish that the combined prior
art would have suggested the obviousness of the claimed electrical
connector, including an insulating boot with closure cap and tether, for a
plurality of electrical cables (Ans. 3-7).
Appellants contend that there is “no proper motivation” to combine
the teachings of the references (Br. 7; see also Br. 8-11). The Appellants
contend that the Examiner has also improperly combined the references
based upon hindsight. (Br. 9-10). Appellants specifically contend that one
of ordinary skill in the art would have replaced a used boot with a new boot
that does not have the tip cut off, rather than use a known cap and tether on
each boot/sleeve of Fillinger as proposed by the Examiner (Br. 11).
These arguments are not persuasive of error.
Specifically, the Examiner’s finding that one of ordinary skill in the
art would have appreciated that after the first time an insulating boot of
Fillinger is used (i.e., after the first time an electrical cable end is inserted),
there would have been a hole in the boot is undisputed (see, e.g., Ans. 7, Br.
11). Likewise, the Examiner’s implicit finding that one of ordinary skill in
the art would have appreciated that the boot of Fillinger is reusable, such
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that after an initial use, the use of a tether and cap to protect the open end
from moisture is also reasonable (Ans. 7).5
Furthermore, the Appellants have failed to direct us to any portion of
the Examiner’s rejection that relies on knowledge that was outside the level
of ordinary skill at the time the claimed invention was made and/or includes
knowledge gleaned only from the Appellants’ disclosure. In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971).
Accordingly, it would have been no more than the predictable use of a
known prior art element, that is, the molded tether and seal closure cap as
exemplified in Burwell, for its known purpose to protect the passageway of
an electrical connector housing, here the interior of the insulating
boot/sleeve of Fillinger, after its first use.
Accordingly, we affirm all of the Examiner’s § 103 rejections before
us.

5 Indeed, Appellants admit that the prior art includes a “similar tether and
cap in U.S. Patent No. 6,688,921 to Borgstrom” to their flexible tether 70
and cap 53 (Spec. 14, para. [0032]), stating that Borgstrom 921 shows “a
tether, its associated cap, and an insulating boot” in a similar electrical
connector, that is however integrally molded with the insulation cover versus
Appellants’ “separate tether and cap and separate insulating boot” (id.). See
Constant Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir.
1988) (“A statement in a patent that something is in the prior art is binding
on the applicant and patentee for determinations of anticipation and
obviousness.”). See also In re Reuning, 276 Fed. Appx. 983, 986 (Fed. Cir.
2008) (having acknowledged that a claimed element is taught by the prior
art, an appellant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest this element).
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CONCLUSION
Appellants have not shown that the Examiner reversibly erred in
determining that it would have been prima facie obvious to use the seal cap
and tether of Burwell with the insulating/sealing boot of Fillinger.
The decision of the Examiner 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).

ORDER
AFFIRMED

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