Ex Parte Whiteman et al

Patent Trial and Appeal BoardJun 24, 2016

12758102 (P.T.A.B. Jun. 24, 2016)

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. 12/758,102 04/12/2010 ROBERT NEIL WHITEMAN JR. CS-01121 (958-2413) 4241 75750 7590 06/24/2016 ROBERT J. KAPALKA TYCO TECHNOLOGY RESOURCES 4550 NEW LINDEN HILL ROAD SUITE 140 WILMINGTON, DE 19808 EXAMINER TSUKERMAN, LARISA Z ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 06/24/2016 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 ROBERT NEIL WHITEMAN JR. and CHRISTOPHER DAVID RITTER ____________________ Appeal 2014-006995 Application 12/758,102 Technology Center 2800 ____________________ Before CARL W. WHITEHEAD JR., DANIEL N. FISHMAN, and ADAM J. PYONIN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 2, and 4–22, all remaining claims of the application.1 We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 In this Opinion, we refer to the original Specification (“Spec.,” filed April 12, 2010); the Non-Final Office Action (“Non-Final Act.,” mailed April 29, 2013); Appellants’ Appeal Brief (“Br.,” filed September 27, 2013); and the Examiner’s Answer (“Ans.,” mailed March 31, 2014). Appeal 2014-006995 Application 12/758,102 2 THE INVENTION Appellants’ invention is directed to a backshell structure in an electrical connector assembly. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A connector assembly comprising: a connector having a connector housing holding contacts, the contacts being configured to be terminated to cables extending rearward from the connector housing; and a backshell having walls defining a cavity receiving the connector housing and cables, the backshell being configured to be electrically connected to cable shields of the cables, the backshell having fingers extending from the walls, the fingers being configured to engage a grounded component exterior of the cavity, distal ends of the fingers being captured interior of the cavity, the fingers have fixed ends opposite the distal ends, the fingers being arc shaped between the fixed ends and the distal ends with a majority of each finger being exterior of the cavity and with the distal ends interior of the cavity. THE REJECTIONS Claims 1, 6, 21, and 22 are rejected under 35 U.S.C § 103(a) as unpatentable over Ji (US 2005/0026500A1; Feb. 3, 2005) and Rathnam (US 6,822,879 B2; Nov. 23, 2004). Non-Final Act. 1–3. Claims 2, 4, 5, 8, and 9 are rejected under 35 U.S.C § 103(a) as being unpatentable over Ji, Rathnam, and Kwiat (US 5,746,626; May 5, 1998). Non-Final Act. 3–5. Claim 7 is rejected under 35 U.S.C § 103(a) as being unpatentable over Ji, Rathnam, and Reed (US 5,496,195; Mar. 5, 1996). Non-Final Act. 5–6. Appeal 2014-006995 Application 12/758,102 3 Claims 10 and 12–15 are rejected under 35 U.S.C § 103(a) as being unpatentable over Ji and Kwiat. Non-Final Act. 6–8. Claims 11 and 16–20 are rejected under 35 U.S.C § 103(a) as being unpatentable over Ji, Rathnam, and Kwiat. Non-Final Act. 8–11. ANALYSIS Only those arguments actually made by Appellants have been considered in this Decision. Arguments that Appellants did not make in the Briefs have not been considered and are waived. See 37 C.F.R. § 41.37(c)(1)(iv). We are not persuaded by Appellants’ contentions of Examiner error (Br. 11–19). We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Non-Final Act. 1– 11) and as set forth by the Examiner in the Answer (Ans. 2–3). However, we highlight and address specific arguments and findings for emphasis as follows. Independent Claims 1, 10, and 16 Independent claims 1, 10, and 16 each include recitations regarding a conductive backshell of a connector, the backshell defining a cavity and having fingers extending outward of the cavity. The fingers engage a grounded component external to the cavity. In rejecting claims 1, 10, and 16, the Examiner finds Ji teaches the recited structures but relies on Rathnam and/or Kwiat, in combination with Ji, for disclosing fingers external to the cavity of the backshell. See Non-Final Act. 1–2, 6–7, 9–10. The Examiner articulates a reason for the combination as improving connection quality for the contact fingers of Ji. See Non-Final Act. 2, 7, 10. Appeal 2014-006995 Application 12/758,102 4 Regarding claim 1, Appellants argue Ji’s fingers (401 and 411) extend inward toward the cavity of its backshell to make contact a grounding bar (62) within the cavity of the backshell. See Br. 13–14 (referring to Ji Fig. 5). Thus, Appellants contend combining Rathnam with Ji is improper because Rathnam’s outward directed fingers would not contact Ji’s grounding bar 62 within the cavity of the backshell and, hence, would render Ji unsatisfactory for its intended purpose. See Id. at 13–15. Specifically, Appellants argue, “The combination and modification suggested in the Office Action would result in a bizarre situation where Ji's shell 4 would include the springs of Rathnam but would not include any features that engage the ground bar 62 of the cables 61.” Id. at 13. Appellants further contend there is no suggestion or motivation to make the proposed combination because “a person of ordinary skill in the art would not have a reason to combine these features as suggested and that further, the combination thereof would frustrate the principle of operation of Ji.” Id. at 14. We are not persuaded by Appellants’ arguments. To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Appellants’ arguments improperly presume a need for physically replacing the inwardly oriented fingers of Ji with the outward oriented tabs of Appeal 2014-006995 Application 12/758,102 5 Rathnam. Instead, the Examiner finds the proposed combination teaches or suggests a portion (a middle portion) of Ji’s fingers can be directed (arc shaped) outward from the backshell as taught by Rathnam or Kwiat (see Ans. 2) and that a person of ordinary skill would be motivated to do so to improve contact between the Ji’s fingers and the ground bar inside the cavity (see Non-Final Act. 2, 7, 9–10). The Examiner further finds the proposed combination does not render either reference unsatisfactory for its intended purpose. Ans. 2–3. Thus, we find the Examiner has articulated a reason for the proposed combinations based on rational underpinnings and Appellants have not persuaded us of error in the Examiner’s findings. Independent claims 10 and 16 include similar recitations and are rejected for similar reasons and are rejected over the combination of Ji and Kwiat and Ji, Kwiat, and Rathnam, respectively. Appellants argue the Examiner erred in these rejection for essentially the same reasons as claim 1. Br. 16–18. For the same reasons as claim 1, we are unpersuaded of Examienr error in the rejection of claims 10 and 16. We are similarly unpersuaded of error in rejection of: (1) claims 2, 4– 9, 21, and 22, dependent from claim 1 and not separately argued (Br. 16); claims 11–15, dependent from claim 10 and not separately argued (Br. 18); and (3) claims 17–20 dependent from claim 16, and not separately argued (Br. 18). Thus, we sustain the Examiner’s rejections of claims 1, 2, and 4–22 Appeal 2014-006995 Application 12/758,102 6 DECISION For the above reasons, the Examiner’s decision rejecting claims 1, 2, and 4–22 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)(1)(iv). AFFIRMED