HARTING Electric GmbH & Co. KG

Patent Trials and Appeals BoardMay 19, 2021

2020003963 (P.T.A.B. May. 19, 2021)

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. 15/756,393 02/28/2018 Alexander SCHÖNFELD 430213.416USPC 2389 136767 7590 05/19/2021 SEED IP LAW GROUP LLP/GENERAL FIRM (EMAIL) 701 FIFTH AVE SUITE 5400 SEATTLE, WA 98104 EXAMINER IMAS, VLADIMIR ART UNIT PAPER NUMBER 2831 NOTIFICATION DATE DELIVERY MODE 05/19/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USPTOeAction@SeedIP.com pairlinkdktg@seedip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER SCHÖNFELD, HEIKO HERBRECHTSMEIER, and HEIKO MEIER Appeal 2020-003963 Application 15/756,393 Technology Center 2800 Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and denominate our affirmance a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as HARTING Electric GmbH & Co. KG (Appeal Br. 1). Appeal 2020-003963 Application 15/756,393 2 CLAIMED SUBJECT MATTER The claims are directed to a holding frame. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A holding frame for retaining plug type connector modules and for installing in plug type connector housings or for screwing to wall faces, wherein the holding frame has opposing side portions which have recesses which cooperate in order to receive the plug type connector modules, wherein the holding frame comprises two halves which are connected to each other in an articulated manner and which each include a respective one of the side portions and which are connected by two articulations, wherein the two articulations form a longitudinal axis which is orientated parallel with the side portions and about which the side portions can be rotated, and wherein securing ends are arranged with respect to the side portions of the holding frame in such a manner that, when the holding frame is screwed onto a securing face, the halves are orientated in such a manner that the side portions of the holding frame are orientated at an angle greater than 90° with respect to the securing face. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Harting US 6,004,162 Dec. 21, 1999 Lewis US 2006/0035501 A1 Feb. 16, 2006 REJECTION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–5 103 Harting, Lewis Appeal 2020-003963 Application 15/756,393 3 OPINION The Appellant argues only the sole independent claim, i.e., claim 1. (Appeal Br. 10). We therefore limit our discussion to that claim. Claims 2–5 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv (2013). Claim 1 requires a holding frame (1) comprising two halves (4, 5) each having a respective one of opposing side portions (8) connected by two articulations (3) which form a longitudinal axis (A) parallel with the side portions (8) and about which the side portions (8) can be rotated, and securing ends (6) arranged with respect to the side portions (8) such that when the holding frame (1) is screwed into a securing face (using screws 7), the halves are oriented such that the side portions are at an angle greater than 90º with respect to the securing face.2 Harting discloses a holding frame having those claim 1 features identified by the same numbers and letter, except Harting’s side portions (side parts 8) are disclosed as being at right angles to a fastening surface when the holding frame is screwed into the fastening surface (col. 1, ll. 46– 51; col. 2, ll. 4–10, 39–50; Fig. 1).3 Harting does not indicate that “right angles” means “exactly 90º” and excludes angles such as 91º. Harting’s concern is that the plug connector modules (2) are held securely in place within the holding frame (1) due to holding means (9) on the plug connector modules (2) passing through recesses (11) in the holding frame (1)’s side parts (8) when the holding frame (1) is closed (col. 2, ll. 39–50; Fig. 2). To provide that secure 2 The Appellant provides the item numbers and letter in the Specification (pp. 4–5) and Fig. 1. 3 A discussion of Lewis is not necessary to our decision. Appeal 2020-003963 Application 15/756,393 4 connection, one of ordinary skill in the art, through no more than ordinary creativity, would have selected, as Harting’s right angle, either 90º or angles somewhat greater than 90º that move the recesses (11) toward the holding means (9) and the plug connector module (2) to better enable the holding means (9) to penetrate completely through the recesses (11) and better enable the side parts (8) to press against the plug connector module (2), thereby better achieving the goal of holding the plug connector module (2) securely in place when the holding frame (1) is closed (col. 2, ll. 46–50; Fig. 2). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Moreover, it does not reasonably appear that the manufacturing tolerance of a plug connector holding frame of the type made by Harting is such that the side wall angles vary by less than 1º. Thus, it reasonably appears that a side wall angle of 91º, which is within the Appellant’s claim 1, is within Harting’s manufacturing tolerance.4 The Appellant asserts that Harting “has frame halves connected together in an articulated manner, and which has perpendicularly arranged side portions that result in a small gap between the holding frame and a plug type connector module received therein, similar to the prior art arrangement 4 In response to this new rejection, the Appellant (Harting) may wish to make of record the manufacturing tolerance of the side walls of Harting’s plug connector holding frame. Appeal 2020-003963 Application 15/756,393 5 shown in Figure 4 of the present application” (Appeal Br. 7). The Appellant, however, does not point to where Harting requires such a gap. For the above reasons, we conclude that Harting would have rendered the Appellant’s claimed holding frame prima facie obvious to one of ordinary skill in the art. Accordingly, we affirm the Examiner’s rejection. Because our rationale differs substantially from that of the Examiner, we denominate the affirmance as involving a new ground of rejection under 37 C.F.R. § 41.50(b). CONCLUSION The Examiner’s decision to reject claims 1–5 is AFFIRMED; 37 C.F.R. § 41.50(b). DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Grounds 1–5 103 Harting, Lewis 1–5 1–5 Overall Outcome 1–5 1–5 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . Appeal 2020-003963 Application 15/756,393 6 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. AFFIRMED; 37 C.F.R. § 41.50(b)