Delphi Technologies, Inc.

Patent Trials and Appeals Board

Apr 15, 2020

15007272 - (D) (P.T.A.B. Apr. 15, 2020)

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.
15/007,272 01/27/2016 Terry A. Morgan DP-322423 7567
22851 7590 04/15/2020
Aptiv Technologies Limited
P.O. Box 5052
M/C 483-400-502
Troy, MI 48007-5052
EXAMINER
TSO, STANLEY
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
04/15/2020 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):
kandace.k.powell@aptiv.com
michele.m.piscitelli@aptiv.com
patent@aptiv.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRY A. MORGAN, WILLIAM C. KETTERER,
BRUCE D. TAYLOR, and ERIC B. POMA

Appeal 2018-005032
Application 15/007,272
Technology Center 2800

Before JEAN R. HOMERE, JEREMY J. CURCURI, and
RUSSELL E. CASS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 2–9 and 11–17.2 Appeal Br. 2. Claims
1 and 10 have been canceled. Claims App. We have jurisdiction under
35 U.S.C. § 6(b).

1 We refer to the Specification, filed Jan. 27, 2016 (“Spec.”); the Final
Office Action, mailed Oct. 19, 2017 (“Final Act.”); the Appeal Brief, filed
Feb. 6, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed Mar. 26, 2018
(“Answer”); and the Reply Brief, filed Apr. 16, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “[A]pplicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Delphi Technologies, LLC as the
real party-in-interest. Appeal Br. 2.
Appeal 2018-005032
Application 15/007,272

2
We affirm in part.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
terminal assembly having a resiliently compressible inner ferrule to
terminate an electrically shielded wire cable without rupture. Spec. ¶¶ 1, 5.
Figures 5 and 6, discussed and reproduced below, are useful for
understanding the claimed invention:

Figures 5 and 6 illustrate terminal assembly (10) including cylindrical outer
ferrule (32) formed of a conductive material, and cylindrical inner ferrule
(22) formed of a resilient compressible dielectric material having a Shore A
durometer hardness between 30 and 80. Id. ¶¶ 21–22.
Appeal 2018-005032
Application 15/007,272

3
As depicted in Figures 5 and 6 above, shielded cable (12) includes
inner conductor (14) surrounded by inner insulator (16) surrounded by outer
conductor (18) surrounded by outer insulator (20) (not shown in Figures 5
and 6). Id. ¶ 21. At least a portion of shielded cable (12) is disposed within
inner ferrule (22), which is, in turn, disposed within the outer ferrule (32).
Id. A portion of the outer conductor (18) is disposed intermediate inner
ferrule (22) and outer ferrule (32) and is in intimate contact with outer
ferrule (32). Id. ¶¶ 21–26.
Claims 3 and 12 are independent. Claim 3, reproduced below with
disputed limitations emphasized in italics, is illustrative of the claimed
subject matter:
3. A terminal assembly configured to terminate a
shielded cable having an inner conductor, an inner insulator
surrounding the inner conductor, an outer conductor
surrounding the inner insulator, and an outer insulator
surrounding the outer conductor, said terminal assembly
comprising:
a generally cylindrical outer ferrule formed of a
conductive material; and
a generally cylindrical inner ferrule formed of a resilient
compressible dielectric material having a Shore A durometer
hardness between 30 and 80, wherein the at least a portion of
the inner ferrule is disposed within the outer ferrule and a
portion of the shielded cable is disposed within the inner ferrule
and wherein a portion of the outer conductor is disposed
intermediate the inner ferrule and the outer ferrule and is in
intimate contact therewith.
Appeal Br. 21 (Claims App.)

Appeal 2018-005032
Application 15/007,272

4
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Warrick US 2,460,795 Feb. 1, 1949
Meshel US 5,102,351 Apr. 7, 1992
Pastrick US 5,823,654 Oct. 20, 1998
Gump US 2008/0214049 A1 Sept. 4, 2008

IV. REJECTIONS
The Examiner rejects the claims as follows:
1. Claims 2–6 and 11–14 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Poma, Meshel, and Pastrick. Final
Act. 3–9.
2. Claims 7–9 and 15–17 are rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Poma, Meshel, Pastrick and
Gump. Id. at 9–15.
3. Claims 3 and 12 are rejected over the combination of Poma and Meshel.
Final Act. 11–15.

4. Claims 3 and 12 are rejected over the combination of Poma, Meshel, and
Warrick. Final Act. 15–19.
V. ANALYSIS
1. Poma, Meshel, and Pastrick
Appellant argues that the Examiner erred in finding that Poma,
Meshel, and Pastrick are properly combined to teach or suggest “a generally

3 All reference citations are to the first named inventor only.
Appeal 2018-005032
Application 15/007,272

5
cylindrical inner ferrule formed of a resilient compressible dielectric
material having a Shore A durometer hardness between 30 and 80,” as
recited in independent claim 3. Appeal Br. 9. In particular, Appellant
argues that Pastrick is nonanalogous art to the claimed subject matter
because Pastrick relates to a universal exterior vehicle security light,
whereas the claimed subject matter pertains to the field of cable design. Id.
at 11. Further, Appellant argues that because Pastrick is concerned with
sealing a light module positioned in an exterior mirror assembly of a vehicle,
it is not reasonably pertinent to the same problem with which the claimed
subject matter is concerned, namely providing increased insulation
protection for an inner conductor in a shielded cable. Id. at 11–12 (citing
Pastrick 9:63–10:14; Spec. ¶¶ 2, 3, 22, 36). According to Appellant,
Pastrick teaches using a dielectric material to seal the security light to the
exterior mirror assembly of a vehicle, whereas the claimed subject matter
relates to using the dielectric material to reinforce the inner conductor of a
shielded cable. Id.
Appellant’s arguments persuade us of reversible error by the
Examiner. As an initial matter, we note it is undisputed that Pastrick teaches
using a resilient compressible dielectric material (having a Shore A
durometer hardness between 50 and 95) to seal a light socket to the exterior
of a mirror enclosure of a vehicle. Pastrick 9:57–10:14. We agree with
Appellant that Pastrick’s disclosure of a dielectric material for use in an
external light is nonanalogous art because it is not within Appellant’s field of
designing a shielded cable with a reinforced inner conductor. Further, we
agree with Appellant that because Pastrick is concerned with the problem of
sealing a light to an exterior mirror of vehicle, it is not reasonably concerned
Appeal 2018-005032
Application 15/007,272

6
with the problem of reinforcing the inner conductor of the shielded cable.
Because the record before us is devoid of any evidence that Pastrick’s
dielectric material is intended to be applied to a cable, the Examiner’s
conclusion that it would be reasonably used to address the problem of
electrical shorting due to mechanical failure of the insulation is, at best,
speculative. Answer 5–6; Reply 5.
Because Appellant has shown at least one reversible error in the
Examiner’s obviousness rejection of claim 3, we do not reach Appellant’s
remaining arguments. Accordingly, we do not sustain the Examiner’s
obviousness rejection of independent claims 3 and 12, each of which
includes the argued limitation. Likewise, we do not sustain the rejections of
claims 2, 4–9, and 11–17, which also recite the disputed limitation.
2. Poma and Meshel
The Examiner finds that because Poma inherently teaches a resilient
compressible dielectric material that inherently has a Shore A durometer
hardness, discovering an optimal hardness value between 30 involves only
routine skill in the art, and therefore would have been obvious to the
ordinarily-skilled artisan. Final Act. 13; Answer 6–7 (citing In re Boesch4,
In re Aller5). According to the Examiner, the selection of the Shore A
hardness would be a matter of choice for the ordinarily-skilled artisan who
would have been able to discover the optimum value through routine
experimentation. Answer 7. The Examiner submits that because Appellant
has failed to explain why the specified range would result in a different
function or would provide an unexpected result as compared to Poma’s inner

4 In re Boesch, 617 F.2d 272 (CCPA 1980).
5 In re Aller, 220 F.2d 454 (CCPA 1955).
Appeal 2018-005032
Application 15/007,272

7
ferrule made of a dielectric material, the claimed range would have been
within the purview of the ordinarily-skilled artisan. Id. at 7–8.
We do not agree with the Examiner. As persuasively argued by
Appellant, the Examiner’s rejection is premised upon an “obvious to try”
rationale. Appeal Br. 13–14; Reply Br. 6. As noted by Appellant, the
Examiner failed to establish on this record that Poma’s disclosed dielectric
material achieves a recognized result, and therefore cannot be properly relied
upon to determine an optimal or workable range of the variable during a
routine experimentation. Reply 6 (citing In re Antonie, 559 F.2d 618 (CCPA
1977). We likewise agree with Appellant that, because the Examiner has not
established that there is a finite number of solutions, the “obvious to try”
rationale does not apply here. Id. (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007)).
Because Appellant has shown at least one reversible error in the
Examiner’s obviousness rejection of claim 3, we do not reach Appellant’s
remaining arguments. Accordingly, we do not sustain the Examiner’s
obviousness rejection of independent claims 3 and 12, each of which
includes the argued limitation.
3. Poma, Meshel, and Warrick
Appellant argues that the Examiner erred in finding that Poma,
Meshel, and Warrick are properly combined to teach or suggest “a generally
cylindrical inner ferrule formed of a resilient compressible dielectric
material having a Shore A durometer hardness between 30 and 80,” as
recited in independent claim 3. Appeal Br. 14. In particular, Appellant
argues that Warrick is nonanalogous art because, although it is directed to
the composition of a strong and compressible dielectric material, it is
Appeal 2018-005032
Application 15/007,272

8
otherwise unrelated to the field of the claimed subject matter or to the
problem of designing a shielded cable with reinforced inner insulation. Id.
Appellant’s arguments do not persuade us of reversible Examiner
error. Warrick relates to composing a resilient and compressible dielectric
material that can withstand temperatures up to 200 C degrees for use in
insulated motor lead wires and ignition cables. Warrick 1:19–23, 6:15–20,
10:55–59. Because Warrick pertains to the problem of using a flexible
dielectric material to design cables, we agree with the Examiner that Warrick
is analogous art to the claimed subject matter of generally reinforcing
electrical cables. Answer 8–9. Further, because the dielectric material
disclosed by Warrick has a Shore A durability hardness of 42, it is within the
30 and 80 range recited by the claim. Id. at 8; Final Act. 17 (citing Warrick
6:25–27, 52–55); Answer 8–9. We agree with the Examiner that:
It would have [been] obvious to a person of ordinary
skill, before the effective filing date of the claimed invention, to
have constructed Poma’s shielded wire cable assembly, as
modified by Meshel, with Warrick’s Shore durometer hardness
of 42, which is between 30 and 80, in order to provide for cable
insulation with appropriate heat resistance, flexibility, and
compression, as suggested by Warrick.
Final Act. 17 (citing Warrick 10:55–60).
Further, Appellant argues that Meshel does not teach or suggest that a
portion of the shielded electric cable is disposed within the inner ferrule, as
required by claim 3. Appeal Br. 16. According to Appellant, although
Meshel discloses the cable being inserted within an enclosure, which may be
construed as a ferrule, Meshel does not teach the disputed limitation because
it does not specify an inner ferrule disposed within an outer ferrule. Id. at
16–17 (citing Meshel, 2:33–36, Fig. 1).
Appeal 2018-005032
Application 15/007,272

9
These arguments do not persuade us of reversible Examiner error
because they are tantamount to an individual attack against the references as
opposed to the combination thereof. One cannot show non-obviousness by
attacking the references individually where the rejections are based on
combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this
case, the Examiner relies upon (1) Poma for its teaching of an inner ferrule
inserted in an outer ferrule; (2) Meshel for inserting a portion of a cable
within a ferrule; and (3) Warrick for teaching using a resilient compressible
dielectric material to reinforce an electrical cable. Final Act. 15–19; Answer
12–13. We find the Examiner’s proposed combination of the cited teachings
of Poma, Meshel, and Warrick is no more than a simple arrangement of old
elements with each performing the same function it had been known to
perform, yielding no more than one would expect from such an arrangement.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Therefore, the
ordinarily skilled artisan, being “a person of ordinary creativity, not an
automaton,” would have been able to fit the teachings of the cited references
together like pieces of a puzzle to predictably result in a terminal assembly
including a cylindrical inner ferrule formed of a resilient compressible
dielectric material having a Shore A durometer hardness of 42 (within the
durability range of 30 and 80). Id. at 420–21. Because Appellant has not
demonstrated that the Examiner’s proffered combination would have been
“uniquely challenging or difficult for one of ordinary skill in the art,” we
agree with the Examiner that the proposed modification would have been
within the purview of the ordinarily skilled artisan. See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
Appeal 2018-005032
Application 15/007,272

10
550 U.S. at 418). Consequently, we are satisfied that, on the record before
us, the Examiner has established by a preponderance of the evidence that the
combination of Poma, Meshel, and Warrick teaches the claimed subject
matter. Accordingly, we are not persuaded of error in the Examiner’s
obviousness rejection of claims 3 and 12. Therefore, we sustain the
Examiner’s rejection of claims 3 and 12 as being unpatentable over the
combination of Poma, Meshel, and Warrick.
VI. CONCLUSION
We reverse the Examiner’s obviousness rejections of claims 2–9 and
11–17 under 35 U.S.C. § 103 over the combination of Poma, Meshel, and
Pastrick/Gump. We likewise reverse the Examiner’s obviousness rejection
of claims 3 and 12 under 35 U.S.C. § 103 over the combination of Poma and
Meshel. However, we affirm the Examiner’s obviousness rejections of
claims 3 and 12 under 35 U.S.C. § 103 over the combination of Poma,
Meshel, and Warrick.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
2–6, 11–14 103 Poma, Meshel, Pastrick 2–6, 11–14
7–9, 15–17 103 Poma, Meshel, Pastrick, Gump 7–9, 15–17
3, 12 103 Poma, Meshel 3, 12
3, 12 103 Poma, Meshel, Warrick 3, 12
Overall
Outcome 3, 12
2, 4–6, 11,
13–17

Appeal 2018-005032
Application 15/007,272

11
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