Lee, Gregory S. et al.

Patent Trials and Appeals Board

Dec 30, 2019

15008368 - (D) (P.T.A.B. Dec. 30, 2019)

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.
15/008,368 01/27/2016 Gregory S. Lee 20150060-02 5133
126149 7590 12/30/2019
Keysight Technologies, Inc.
C/O CPA Global
900 Second Avenue South
Suite 600
Minneapolis, MN 55402
EXAMINER
OUTTEN, SAMUEL S
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GREGORY S. LEE and LEWIS R. DOVE
____________________

Appeal 2019-000655
Application 15/008,368
Technology Center 2800
____________________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
January 25, 2018 decision finally rejecting claims 1–49 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Keysight Technologies, Inc. as the
real party in interest (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to an electrical connector which
includes an inner electrical conductor, an outer electrical conductor, a
dielectric region between the inner electrical conductor and the outer
electrical conductor, and an electrically thin resistive layer within the
dielectric region and concentric with the inner electrical conductor and the
outer electrical conductor (Abstract). The electrically thin resistive layer is
said to be a resistive layer configured to be transparent to a substantially
transverse-electromagnetic (TEM) mode of transmission, while absorbing
higher order modes of transmission (id.). Details of the claimed structures
are set forth in representative claims 1 and 18, which are reproduced below
from the Claims Appendix to the Appeal Brief:
1. An electrical connector configured to electrically couple
a signal transmission line to another signal transmission line,
the electrical connector comprising:
a first electrical conductor;
a second electrical conductor; and
an electrically thin resistive layer disposed between the
first and second electrical conductors.

18. A signal transmission line comprising:
a first electrical conductor;
a second electrical conductor;
a dielectric region between the first electrical conductor
and the second electrical conductor; and
an electrically thin resistive layer disposed within the
dielectric region and disposed between the first electrical
conductor and the second electrical conductor, the electrically
thin resistive layer being configured to be substantially
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transparent to a substantially transverse-electromagnetic (TEM)
mode of transmission while substantially completely
attenuating higher order modes of transmission.

REJECTIONS
1. Claims 18 and 36 are rejected under 35 U.S.C. § 112(b) as
indefinite for use of the phrase “substantially completely.”
2. Claims 1–3, 5–9, 11–14, 16–27, 29–38, and 40–49 were
provisionally rejected on the grounds of nonstatutory double patenting over
claims 3, 7–11, 13–16, 18, 19, 22–25, and 28–36 of Application No.
14/823,997, which matured into US 10,109,904 B2, issued October 23, 1994.
3. Claims 18–20, 22, 23, 25, 26, 30–32, 36, 37, 41, 42, 46, 47, and
49 are rejected under 35 U.S.C. § 102(a) as anticipated by Keiter.2
4. Claims 24, 34, 35, 38, 39, 44, 45, and 48 are rejected under
35 U.S.C. § 103 as unpatentable over Keiter.
5. Claims 21 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Keiter in view of Geissler.3
6. Claim 28 is rejected under 35 U.S.C. § 103 as unpatentable
over Keiter in view of Salmela.4
7. Claims 29 and 40 are rejected under 35 U.S.C. § 103 as
unpatentable over Keiter in view of Langlois.5

2 Keiter, US 3,544,928, issued December 1, 1970.
3 Geissler, US 4,004,257, issued January 18, 1977.
4 Salmela et al., US 2003/0151476 A1, published August 14, 2003.
5 Langlois, US 5,894,197, issued April 13, 1999.
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8. Claims 1–10 and 12–17 are rejected under 35 U.S.C. § 103 as
unpatentable over Keiter in view of Ziegler.6
9. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable
over Keiter in view of Ziegler and Langlois.

DISCUSSION
Rejection 1 - § 112(b). Appellant states that they filed an amendment
to address the rejection by amending the phrase “substantially completely”
in claims 18 and 36 to “substantially” (Appeal Br. 5–6). However, as noted
by the Examiner (Ans. 3), no such amendment was actually filed (see, Rule
111 Amendment, filed December 11, 2017). Accordingly, we summarily
affirm the rejection under § 112(b).
Rejection 2 – Provisional Obviousness-type Double Patenting.
Appellant does not specifically contest this rejection, stating only that a
terminal disclaimer might be filed to address it in the future. Accordingly,
we also summarily affirm this rejection. We note that the application which
is used in the rejection has now issued as US 10,109,904. The Examiner and
Appellant may wish to review the issued claims to determine if the
provisional rejection is still applicable.
Rejection 3 – Anticipation over Keiter. Appellant argues claims 18
and 36 together (Appeal Br. 7), and does not argue other claims separately
(Appeal Br. 11). Accordingly, we focus our discussion on the anticipation
rejection of claim 18 over Keiter.

6 Ziegler, Jr., US 3,460,072, issued August 5, 1969.
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“A prior art reference anticipates a patent claim under 35 U.S.C.
§ 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d
1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet
Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). In this instance,
Appellant contends that Keiter does not disclose “an electrically thin
resistive layer disposed within the dielectric region and disposed between
the first electrical conductor and the second electrical conductor,” as recited
in claim 18 (Appeal Br. 6–7). The Examiner finds that this limitation is met
by Keiter’s annular resistive film 22, as shown in Keiter’s FIG. 2 reproduced
below:

Keiter’s FIG. 2 is a sectional side view of a coaxial transmission line.
As explained by Appellant (Appeal Br. 7) and agreed to by the
Examiner (Ans. 3–4), the phrase “electrically thin” is defined in the
Specification: “As used herein, an ‘electrically thin’ layer is one for which
the layer thickness is less than the skin depth δ at the (highest) signal
frequency of interest.” Spec. ¶ 35. Thus, the burden was on the Examiner to
show that Keiter’s annular resistive film 22 meets this limitation.
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The Examiner attempts to meet this burden with a finding that
Keiter’s annular resistive film inherently is electrically thin: “[T]he
behavior of the resistive layer as featured in the rejection under Keiter is
inherent” (Ans. 4). “It is well settled that a prior art reference may anticipate
when the claim limitations not expressly found in that reference are
nonetheless inherent in it. ‘Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.’” In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002) (citations omitted). “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
The Examiner finds that Keiter discloses an electrically resistive film
22 with 50-400 Ohm/sq that is as small as possible which has a minimal
impact on the TEM mode7 (Final Act. 30–31, citing Keiter 2:9–14, 2:23–26).
The Examiner further finds the signal frequency of interest is that of the
TEM mode, and that to achieve the result of providing “the smallest possible
loss to the normal TEM mode of the coaxial transmission line” (Keiter,
2:23–26) the annular resistive layer 22 must inherently have a thickness that
is less that the skin depth at the TEM mode (Final Act. 31). The Examiner
also cited several other references as evidence to support the finding of
inherency:
[T]he examiner provided references to Garg et al. and Huang et
al. as evidence that the resistive film of Keiter must inherently

7 The TEM mode is the transverse-electromagnetic (TEM) mode of
transmission (Spec. ¶ 25).
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be “electrically thin” as per the special definition provided by
the appellant to a TEM mode for “minimizing loss to the TEM
mode” (Keiter, col. 2 lines 23-26) or providing “the smallest
possible loss to the normal TEM mode of the coaxial
transmission line” (Keiter col. 2 lines 10-15) as stated by
Keiter. In the case where the limitation of “electrically thin” is
not met, the result is significant attenuation of the TEM mode,
as evidenced by Lorenz et al., the opposite of the behavior
disclosed by Keiter.
(Ans. 5).
Upon review of the arguments and evidence presented by both the
Examiner and Appellant, we determine that the preponderance of the
evidence of record does not support the Examiner’s finding that Keiter
inherently discloses an electrically thin resistive layer as recited in claims 18
and 36. That is, the evidence of record does not support a finding that
Keiter’s resistive layer 22 is necessarily an electrically thin resistive layer as
recited in the claims and defined in the Specification. Although an ideal
embodiment of Keiter’s disclosure might include an electrically thin
resistive layer as defined in Appellant’s Specification, it would not
necessarily have included such a layer. That Keiter’s resistive layer 22 may
be an electrically thin resistive layer is not sufficient for a finding of
inherency.8

8 Although the Examiner’s findings may support a determination that the
use of an electrically thin resistance layer as defined in Appellant’s
Specification would have been obvious, no such rationale has yet been
presented. The Board relies on the involved parties to focus the issues and
decides on those issues based on facts and arguments presented by the
involved parties. See Ex Parte Frye, 293 F. 1013 (BPAI 2010
(precedential)).
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Accordingly, we reverse the anticipation rejection of claims 18 and 36
over Keiter, as well as the anticipation rejections of those claims which
depend from it. Similarly, the remaining prior art rejections rely on the same
inherency finding, which we determine is deficient. Accordingly, we also
reverse those rejections.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. §  References(s)/Basis Affirmed Reversed
18, 36 112(b) 18, 36
1–3, 5–9, 11–
14, 16–27,
29–38, 40–49
Obviousness-type
double patenting
14/823,997 1–3, 5–9,
11–14, 16–
27, 29–38,
40–49

18–20, 22,
23, 25, 26,
30–32, 36,
37, 41, 42,
46, 47, 49
102(a) Keiter 18–20, 22,
23, 25, 26,
30–32, 36,
37, 41, 42,
46, 47, 49
24, 34, 35,
38, 39, 44,
45, 48
103 Keiter 24, 34, 35,
38, 39, 44,
45, 48
21, 27 103 Keiter, Geissler 21, 27
28 103 Keiter, Salmela 28
29, 40 103 Keiter, Langlois 29, 40
1–10, 12–17 103 Keiter, Ziegler 1–10, 12–17
11 103 Keiter, Ziegler,
Langlois
11
Overall
Outcome
1–3, 5–9,
11–14, 16–
27, 29–38,
40–49
4, 10, 15, 28,
39
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART