Ex Parte Van Swearingen

Patent Trial and Appeal Board

Jan 31, 2017

13170958 (P.T.A.B. Jan. 31, 2017)

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.
13/170,958 06/28/2011 Kendrick Van Swearingen 9833-376IP4 4715
79207 7590
MYERS BIGEL, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
PARVEZ, AZM A
ART UNIT PAPER NUMBER
3729
MAIL DATE DELIVERY MODE
01/31/2017 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 KENDRICK VAN SWEARINGEN
Appeal 2014-004788
Application 13/170,958
Technology Center 3700
Before JOHN C. KERINS, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kendrick Van Swearingen (Appellant) seeks our review under 35
U.S.C. § 134 of the final rejection of claims 9—14 and 16—19. Claim 15 is
objected to as being dependent from a rejected base claim, and claims 1—8
and 20 are withdrawn. Appeal Br. 5. We have jurisdiction under 35 U.S.C
§ 6(b).
We REVERSE.
Appeal 2014-004788
Application 13/170,958
THE INVENTION
Appellant’s claimed invention is directed to a method for
interconnecting a coaxial connector assembly with a solid outer conductor
coaxial cable. Claim 9, reproduced below, is illustrative:
9. A method for interconnecting a coaxial connector assembly
with a solid outer conductor coaxial cable, comprising the steps
of:
providing a monolithic connector body with a bore;
coupling the connector body to the outer conductor;
seating a desired interface end upon a mating surface of the
connector body and radial ultrasonic welding the interface end
to the mating surface.
THE REJECTION
The Examiner rejects claims 9—141 under 35 U.S.C.
§ 103(a) as being unpatentable over Mahlandt2 (EP 2 219 267 Al,
published Aug. 18, 2010) in view of Huenig (US 2010/0288819 Al,
published Nov. 18, 2010). The Examiner additionally rejects claims
16—19 under 35 U.S.C. § 103(a) as being unpatentable over Mahlandt
in view of Huenig and Prunier (US 4,176,909, issued Dec. 4, 1979).
1 The statement of this rejection includes reference to claim 16 as well,
however the record makes clear that the inclusion of claim 16 in this
rejection is inadvertent error because the Examiner consistently relies upon
Prunier, which is not included as a reference for Rejection I. See Final Act.
4—5; Ans. 5.
2 The Examiner refers to this reference over the course of prosecution as
“Mahlandt Erhard et al.” See, e.g., Final Act. 2.
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Appeal 2014-004788
Application 13/170,958
ANALYSIS
Claims 9—14—Unpatentability over Mahlandt and Huenig
The Examiner finds that Mahlandt meets both the claim limitations
directed to coupling a connector body to an outer conductor and to seating a
desired interface end upon a mating surface of the connector body in
disclosing a connection of connector body COAX_8WIl to outer conductor
CON_TUB2 and CON_TUB3. Final Act. 2-3.
In response to arguments made by Appellant to the effect that the
claim includes a recitation of an interface end that is an element separate
from the connector body and outer conductor (see, e.g., Appeal Br. 12), the
Examiner takes the position that the claimed interface end is “an interface
end of the mating surface between outer conductor coaxial cable and
monolithic connector body, not an ‘interface end element’ or ‘separate
interface end’” as argued by Appellant. Ans. 9. As pointed out by
Appellant, the Examiner’s position conjoins the separate steps of coupling
the connector body to the outer conductor and of seating an interface end
upon a mating surface of the connector body. Reply Br. 3^4 (“coupling . . .
[is] already explicitly identified in the previous lines of the same claim” and
is separate from seating and welding interface end to mating surface of
connector body). Appellant strenuously and repeatedly argues that the
broadest reasonable interpretation of claim 9, when viewed in light of
Appellant’s Specification as understood by those of ordinary skill in the art,
compels a construction that the recitation of an interface end in the separate
seating and welding step includes an interface end element that is distinct
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Appeal 2014-004788
Application 13/170,958
from the connector body and the outer conductor. See Appeal Br., passim;
Reply Brpassim.
Appellant has the better position here. The Examiner’s construction
of claim 9 involves the same two elements, and the same two surfaces
thereof, as meeting both the coupling and seating/welding steps of claim 9,
effectively rendering one of the limitations redundant or superfluous. See,
e.g., Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
2007) (denouncing claim constructions that render phrases in claims
superfluous); Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616
F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately,
the clear implication of the claim language is that those elements are distinct
components of the patented invention.”) (citations and quotations omitted).
Further, in arriving at that construction, the Examiner’s position that claim 9
does not require that the recited interface end be an element separate from
the claimed connector body or outer conductor is inconsistent with the
Specification, which invariably uses the term “interface end” to describe an
element separate from the outer conductor of a coaxial cable that is to be
secured to the connector body by welding. See, e.g.. Spec. 16,11. 7—9.
These two deviations from proper claim construction lead us to conclude
that the Examiner’s interpretation of claim 9 is unreasonably broad.
The rejection of claim 9 as being unpatentable over Mahlandt and
Huenig is therefore not sustained. The same rejection directed to dependent
claims 10-14 is also not sustained.
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Appeal 2014-004788
Application 13/170,958
Claims 16—19— Unpatentability over Mahlandt, Huenig, and Prunier
This rejection, too, is founded on the unreasonably broad
interpretation of claim 9, the claim from which these claims depend. The
rejection of claims 16—19 is therefore not sustained.
DECISION
The rejections of claims 9—14 and 16—19 under 35 U.S.C. § 103(a) are
reversed.
REVERSED
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