Ex Parte Balsells

Patent Trial and Appeal BoardJan 22, 2014

12614769 (P.T.A.B. Jan. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER J. BALSELLS ____________ Appeal 2013-009527 Application 12/614,769 Technology Center 3600 ____________ Before MICHAEL W. KIM, GAY ANN SPAHN, and NINA L. MEDLOCK, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 2, 7-10, 12, and 14-17. An oral hearing in accordance with 37 C.F.R. § 41.47 was held on January 9, 2014. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2013-009527 Application 12/614,769 2 Claimed Subject Matter The claimed subject matter relates to “the use of canted coil springs in connecting a piston and a housing for mechanical and electrical connection purposes.” Spec. 1, ll. 11-13.1 Claim 1, reproduced below with emphasis added, is illustrative of the appealed subject matter. 1. A spring latching connector comprising: a housing having a bore therethrough; a piston slidably received in said bore; a housing groove formed in said housing bore and a piston groove formed in said piston, the housing bore and piston being axially abutted to eliminate axial play; a coil spring disposed in the housing and piston grooves for latching said piston and housing together, the grooves being sized and shaped for controlling, in combination with a spring configuration, disconnect and connect forces of said spring latching connector; and opposing surfaces in the housing and piston grooves configured for positioning a point of spring/piston contact to create an axial load on the coil spring for enabling the spring to maintain the abutting relationship between the housing bore and piston. App. Br., Clms. App’x. Independent claim 15 is also directed to ‘[a] spring latching connector” and includes, inter alia, a housing groove and a piston groove, “the grooves being sized and shaped for controlling, in combination with a spring configuration, disconnect and connect forces of said spring latching connector.” App. Br., Clms. App’x. Emphasis added. 1 All references to “Spec.” are to the original Specification filed on November 9, 2009. Appellant attempted to file a Substitute Specification on December 15, 2009; however, the Substitute Specification failed to comply with 37 C.F.R. § 1.125(c) in that “[a]n accompanying clean version (without markings) [was not] supplied.” Therefore, the Substitute Specification could not be entered. Appeal 2013-009527 Application 12/614,769 3 Rejections The following Examiner’s rejections are before us for review: I. claims 1, 2, 7-10, and 15-17 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290 (US 4,804,290, issued Feb. 14, 1989); II. claim 14 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290 and Balsells ʼ806 (US 5,161,806, issued Nov. 10, 1992); III. claim 10 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290; and IV. claim 12 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290 and Sugiura2 (JP 60-113908 A, published Jun. 20, 1985). OPINION Rejection I – Anticipation based on Balsells ʼ290 Independent claim 1 and dependent claim 2 Appellant argues independent claim 1 and does not separately argue dependent claim 2. See App. Br. 6-9. We select independent claim 1 as the representative claim and dependent claim 2 falls with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Balsells ʼ290 anticipates independent claim 1 and points to Figures 3a-3c to show a spring latching connector including, inter alia, “a housing groove 90 and/or 92 . . . and a piston groove 104 and/or 106 . . . , the grooves being sized and shaped for controlling, in 2 Although both the Examiner and Appellant refer to this reference as “JP ‘908,” we will refer to it by the first named inventor’s last name of “Sugiura.” Appeal 2013-009527 Application 12/614,769 4 combination with a spring configuration, disconnect and connect forces of the spring latching connector.” Ans. 4-5. Appellant argues that the Examiner “does not explain or cite to any page or line number of the ʼ290 patent to support the position that the ʼ290 patent discloses . . . a connector that can ‘disconnect,’” and “the ʼ290 patent teaches a locking connector and therefore does not teach opposing surfaces that permit disconnection,” because “the seal element 82 and the cylindrical core 100 of the ʼ290 patent cannot disconnect.” App. Br. 6. More particularly, Appellant cites to column 5, lines 8-21 of Balsells ʼ290, which describes Figure 3c, and argues that “the core 100 is locked to the seal member 82 due to the locking surfaces (120, 124, 126, 128) to prevent disconnection of the core 100 from the seal member 82” so that Balsells ʼ290 “does NOT teach a connector having grooves being sized and shaped for controlling, in combination with the spring configuration, disconnect and connect forces.” App. Br. 7-8. It is noted that Appellant’s Specification has a section within the “DETAILED DESCRIPTION” entitled “DEFINITIONS” (beginning at Spec. 9); however, this section does not specifically define the claim terminology “disconnect and connect forces of said spring latching connector.” We turn to a general purpose dictionary for the ordinary and customary meaning of the word “disconnect,” namely, “to sever the connection of or between: DETACH » disconnect the fuse from the bomb« : SEPARATE, DISUNITE » disconnect church and state«.” Webster's Third New International Dictionary, Unabridged, Merriam-Webster, Incorporated, © 1993, available at http://lionreference.chadwyck. Appeal 2013-009527 Application 12/614,769 5 com (last visited: Jan. 18, 2014). We also turn to the general purpose dictionary for the ordinary and customary meaning of the word “force,” namely, “power to affect in physical relations or conditions »the force of the blow was somewhat spent when it reached him« »the rising force of the wind«.” Id. Thus, one of ordinary skill in the art would understand a “disconnect force” to be the power to affect a disconnection, detachment, separation or disuniting. Applying this understanding to the case at hand, we are not persuaded by Appellant’s argument that grooves 90, 92 and 104, 106 of Balsells ʼ290 are not sized and shaped for controlling, in combination with a spring configuration, a disconnect force just because seal element 82 is not disclosed as disconnecting from cylindrical core 100. That seal element 82 is not intended to disconnect from cylindrical core 100 does not mean that there is not some power that would affect the disconnection, detachment, separation or disuniting of seal element 82 from cylindrical core 100. Thus, we are not persuaded that a disconnect force does not exist or that grooves 92 or 94 and 104 or 106 of Balsells ʼ290 are not capable of controlling, in combination with a spring configuration, that disconnect force. Appellant also argues that “the Examiner relies on FIGs. 3a-3c of the . . . Balsells [ʼ290] reference to disclose: ‘ . . . opposing surfaces in the housing and piston grooves for enabling the spring to maintain the abutting relationship between the housing bore and piston,’” but “the ʼ290 patent teaches a locking connector and therefore does not teach opposing surfaces that permit disconnection.” App. Br. 6 (quoting Final Rej. 2). For the same reason as discussed supra, we are not persuaded that just because seal element 82 and cylindrical core 100 are not intended to disconnect, the Appeal 2013-009527 Application 12/614,769 6 opposing surfaces in the housing and piston grooves are not capable of enabling the spring to maintain the abutting relationship between the housing bore and piston. Accordingly, we sustain the Examiner’s rejection of independent claim 1, and dependent claim 2 which falls therewith, under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290. Dependent claim 7 Claim 7 depends from claim 1 and recites that “said housing bore, grooves and piston are oriented for enabling production of an audible sound indicating a connection between said housing and said piston upon abutting of said housing bore and piston.” App. Br., Clms. App’x. Appellant argues that the final Office Action “is silent regarding how the ʼ290 patent anticipates claim 7,” and “[a] close review of the ʼ290 patent specification, including a word search for tactile, sound, or audible feedback failed to uncover any teaching.” App. Br. 9. The Examiner responds that “the claim language only functionally requires that the components of the connector are oriented such that they are capable of enabling production of an audible sound upon connection,” but “[t]he claim does not positively recite a sound.” Ans. 8. The Examiner also responds that “Balsells ʼ290 states that the spring which cooperates with the housing bore and the piston ‘snaps’ into the groove,” and “such a snap inherently produces an audible sound.” Id. (citing Balsells ʼ290, col. 4, l. 24). We agree with the Examiner that Balsells ʼ290 explicitly discloses an audible snap. Accordingly, we sustain the Examiner’s rejection of claim 7 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290. Appeal 2013-009527 Application 12/614,769 7 Dependent claim 8 Claim 8 depends from claim 1 and recites that “the opposing surfaces in the housing and piston grooves position the point of contact proximate the coil major axis in order to maximize the disconnect force.” App. Br., Clms. App’x. Appellant argues that “the [Balsells] ʼ290 [patent] does NOT disclose a connector having grooves sized and shape[d] to permit disconnection and therefore does not disclose a connector with a disconnect force,” and that “the [Balsells] ʼ290 patent [thus] also does not disclose any structure between opposing surfaces of the housing and piston grooves and the point of contact proximate the coil major axis to maximize the disconnect force since the connector of the ʼ290 patent is only a locking connector and does NOT permit separation between the piston and the housing.” App. Br. 9. We are not persuaded by Appellant’s argument because for the reasons discussed supra with respect to claim 1, we are not persuaded that Balsells ʼ290 does not disclose grooves being sized and shaped for controlling, in combination with a spring configuration, a disconnect force. In addition, Appellant’s argument with respect to “any structure” between opposing surfaces is not commensurate with the scope of claim 8 which does not recite any structure between opposing surfaces in the housing and piston grooves. Accordingly, we sustain the Examiner’s rejection of claim 8 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290. Dependent claim 9 Claim 9 depends from claim 1 and recites that “the opposing surfaces in the housing and piston grooves position the point of contact proximate the Appeal 2013-009527 Application 12/614,769 8 end point of the minor axis in order to minimize the disconnect force.” App. Br., Clms. App’x. Appellant argues that “the [Balsells] ʼ290 [patent] does NOT disclose a connector having grooves sized and shape[d] to permit disconnection and therefore does not disclose a connector with a disconnect force,” and that “the [Balsells] ʼ290 patent [thus] also does not disclose any structure between opposing surfaces of the housing and piston grooves and the point of contact proximate to the end point of the minor axis in order to minimize the disconnect force since the connector of the [Balsells] ʼ290 patent is only a locking connector and does NOT permit separation between the piston and the housing.” App. Br. 10. We are not persuaded by Appellant’s argument because, for the reasons discussed supra with respect to claim 1, we are not persuaded that Balsells ʼ290 does not disclose grooves being sized and shaped for controlling, in combination with a spring configuration, a disconnect force. In addition, Appellant’s argument with respect to “any structure” between opposing surfaces is not commensurate with the scope of claim 9 which does not recite any structure between opposing surfaces in the housing and piston grooves. Accordingly, we sustain the Examiner’s rejection of claim 9 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290. Dependent claim 10 Claim 10 depends from claim 1 and recites that “a coil height and a piston groove width are adjusted to control the disconnect and connect forces.” App. Br., Clms. App’x. Appeal 2013-009527 Application 12/614,769 9 Appellant argues that because “[t]he structure of the [Balsells] ʼ290 patent and the structure of claim 1, to which claim 10, depends is clearly different . . . the [Balsells] ʼ290 patent does not inherently disclose variation in the coil height and the piston groove width in order to adjust the disconnect and connect forces.” App. Br. 10. We are not persuaded by Appellant’s arguments. To the extent that Appellant is rearguing the claim 1 limitations, we are not persuaded for the reasons discussed supra. To the extent Appellant is simply reiterating the claim language of claim 10 and arguing that Balsells ʼ290 does not teach claim 10’s limitations, we note that our reviewing court has held that “the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.” In re Lovin, 642 F.3d 1349, 1357 (Fed. Cir. 2011); see also 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Appellant presents no substantive arguments regarding claim 10 other than merely restating the limitations called for in the claim. Accordingly, we sustain the Examiner’s rejection of claim 10 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290. Independent claim 15 Similar to claim 1, Appellant argues that “the connector of the [Balsells] ʼ290 patent is a locking connector that does NOT permit disconnection between the piston and the housing and therefore cannot anticipate claim 15.” App. Br. 11. For the same reasons as discussed supra with respect to claim 1, we disagree. Appeal 2013-009527 Application 12/614,769 10 Appellant also argues “[a] thorough search of the [Balsells] ʼ290 patent does not uncover any teaching or disclosure [of] grooves in combination with a spring that produces an audible sound upon connection.” App. Br. 11. We are not persuaded by Appellant’s argument for the same reasons as discussed supra with respect to claim 7. Accordingly, we sustain the Examiner’s rejection of claim 15 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290. Dependent claim 16 Claim 16 depends from claim 15 and recites that “the housing groove cavity positions the point of contact proximate the coil major axis in order to maximize the disconnect force.” App. Br., Clms. App’x. Appellant argues that because Balsells ʼ290 does not disclose the grooves sized and shaped to permit disconnection and therefore does not disclose a connector with a disconnect force, it cannot disclose claim 16’s limitation. For the reasons discussed supra with respect to claim 1, we are not persuaded by Appellant’s arguments. Accordingly, we sustain the Examiner’s rejection of claim 16 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290. Dependent claim 17 Claim 17 depends from claim 15 and recites that “the housing groove cavity positions the point of contact proximate the end point of the minor axis in order to minimize the disconnect force.” App. Br., Clms. App’x. Appellant argues that because Balsells ʼ290 does not disclose the grooves sized and shaped to permit disconnection, Balsells ʼ290 does not disclose a connector with a disconnect force, and cannot disclose claim 17’s Appeal 2013-009527 Application 12/614,769 11 limitation. For the reasons discussed supra with respect to claim 1, we are not persuaded by Appellant’s arguments. Accordingly, we sustain the Examiner’s rejection of claim 17 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290. Rejection II – Obviousness based on Balsells ʼ290 and Balsells ʼ806 Claim 14 depends from claim 1 and recites that “said spring is a counterclockwise radial spring.” App. Br., Clms. App’x. The Examiner finds that Balsells ʼ290 “is silent with regards to the spring being a counterclockwise radial spring,” and turns to Balsells ʼ806 to teach this. Ans. 6 (citing Balsells ʼ806, col. 3, ll. 24-26 and Figs. 7 and 7a). Appellant argues that “any modification of the [Balsells] ʼ290 patent connector will alter the principle [of] operation of the disclosed connector and is prima facie evidence of non-obviousness.” App. Br. 12. We are not persuaded by Appellant’s argument. First, Appellant has not identified the operation principle of Balsells ʼ290 that is being altered. We note that the term “principle of operation” actually relates to the “basic principles” under which the prior art device was designed to operate. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.” (Emphasis added)). In Ratti, the modification suggested by the Examiner changed the basic principle of sealing from attaining sealing through a rigid, press-fit, interface between the components, to attaining sealing by providing a resilient interface between the components. Id. at Appeal 2013-009527 Application 12/614,769 12 811-13. This modification fundamentally changed the technical basis of how a seal performed its sealing function and how a sealed interface was attained. In the case before us, Appellant has not explained why modifying the spring of Balsells ʼ290 to be a counterclockwise radial spring as taught by Balsells ʼ806 would be a “change in the basic principles” of operation. Accordingly, we sustain the Examiner’s rejection of dependent claim 14 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290 and Balsells ʼ806. Rejection III – Obviousness based on Balsells ʼ290 Claim 10 was discussed supra. The Examiner finds that the Manual of Patent Examining Procedure (MPEP) § 2113 “states that in an apparatus claim the patentability is not based on its method of production or use.” Ans. 6. Appellant argues that “[a]lthough Appellant does not agree since a structure is produced by the claim limitation, the rejection does not make up for the deficiencies of claim 1, to which claim 10 depends.” App. Br. 13. We are not persuaded by Appellant’s argument for the reasons discussed supra with respect to claim 1. Accordingly, we sustain the Examiner’s rejection of dependent claim 10 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290. Rejection IV – Obviousness based on Balsells ʼ290 and Sugiura Claim 12 depends from claim 1 and recites that “said spring is turnable in said piston groove for enhancing electrical conduction between Appeal 2013-009527 Application 12/614,769 13 said piston and said housing by removing oxidation on said spring.” App. Br., Clms. App’x. The Examiner finds that Balsells ʼ290 “is silent with regards to the spring being turnable,” and turns to Sugiura for its teaching of “the use of coils of a spring being turnable in a groove.” Ans. 6-7 (citing Sugiura, Engl. Abstr., Constitution). The Examiner also notes that “the claim merely requires the coils to be turnable[,] i.e.[,] capable of turning,” and the “Examiner notes that since the coils of the connector of Balsells ʼ290 are not fixedly attached to the surrounding components, the coils are turnable particularly during the assembly process.” Ans. 10. Appellant argues that “the [Balsells] ʼ290 patent is silent regarding any spring rotation and rotating the coils can cause the seal member 82 to separate from the core 100 . . . , which goes against the principle [of] operation of the disclosed connector.” App. Br. 13. We are not persuaded by Appellant’s arguments. As stated by the Examiner, the recitation of “turnable” in “said spring is turnable in said piston groove” is intended use and thus, it is not required that Balsells ʼ290 disclose that the spring is turnable; rather, the spring of Balsells ʼ290 only need be capable of performing the recited intended use of being turnable. Appellant has failed to show that the spring of Balsells ʼ290 is not turnable. In addition, Appellant has failed to adequately explain how modifying the spring of Balsells ʼ290 to be turnable within the piston groove would alter the principle of operation. Furthermore, Appellant has not persuasively explained how rotating the coils causes seal member 82 to separate from core 100. Appeal 2013-009527 Application 12/614,769 14 Accordingly, we sustain the Examiner’s rejection of dependent claim 12 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290 and Sugiura. DECISION We affirm the Examiner’s rejections of: claims 1, 2, 7-10, and 15-17 under 35 U.S.C. § 102(b) as anticipated by Balsells ʼ290; claim 14 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290 and Balsells ʼ806; claim 10 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290; and claim 12 under 35 U.S.C. § 103(a) as unpatentable over Balsells ʼ290 and Sugiura. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh