Ex Parte Van SwearingenDownload PDFPatent Trial and Appeal BoardJan 31, 201713170958 (P.T.A.B. Jan. 31, 2017) Copy Citation 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 Claim 15 is objected to as being dependent from a rejected base claim, and claims 1—8 and 20 are withdrawn.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. 2 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 3 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. 4 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 5 Copy with citationCopy as parenthetical citation