Delphi Technologies, Inc.Download PDFPatent Trials and Appeals BoardApr 15, 202015007272 - (D) (P.T.A.B. Apr. 15, 2020) 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. 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 Copy with citationCopy as parenthetical citation