Ex Parte 6379190 et al

Board of Patent Appeals and Interferences

Jul 30, 2007

90006327 (B.P.A.I. Jul. 30, 2007)

This opinion is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL PRAZOFF
____________

Appeal 2007-2577
Patent 6,379,1901
Technology Center 2800
____________

Decided: July 30, 2007

Before McKELVEY, Senior Administrative Patent Judge, and TORCZON
and MEDLEY, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
The claims on appeal relate generally to a connector for electrically
connecting two rope lights. The examiner has rejected claims 1-8 under
35 U.S.C. 102(b) as having been anticipated. The examiner has rejected
claims 1-11 under 35 U.S.C. 103 as unpatentable based on obviousness. The
patentee (Prazoff) seeks review of these rejections. We affirm.

1 Michael Prazoff, Ropelight connector, US 6,379,190 (issued 30 April
2002). The Prazoff patent is the subject of three merged reexaminations:
90/006,327; 90/006,328; and 90/006,344.
Appeal 2007-2577
Application 90/006,344

THE CLAIMS AND REJECTIONS
Claims 1-8 are unamended patent claims. Claims 9-11 were added
during reexamination. Claims 1 and 9 are independent. Claims 2-8 depend
directly or indirectly from claim 1, while claims 10 and 11 depend directly
from claim 9.2 Prazoff has divided the claims into four groups for the
purposes of appeal: 1 and 5; 2, 6, and 8; 3, 4 and 7; and 9-11.3 We will
accordingly analyze a representative claim from each group.4
The examiner rejected5 claims 1-8 under 35 U.S.C. 102(b) as having
been anticipated by a patent to Lin.6
The examiner rejected7 claims 1-11 under 35 U.S.C. 103 as having
been obvious in view of patents to Chen8 and Tsui.9
Analysis of both anticipation and obviousness begin with construction
of the contested claim terms. In proceedings before the Office, unexpired
patent claims must be given their broadest reasonable construction, taking
into account any definitions in the specification.10 We focus on the
contested limitations.

2 Claims appendix to the appeal brief (Br.). All claim language is
reproduced from the appeal brief.
3 Br. 15. It is unclear where claim 7 was intended to be grouped. We have
grouped it with its parent claim 3.
4 37 C.F.R. § 41.37(c)(1)(vii) (single claim represents group).
5 Examiner's Answer (Ans.) 3.
6 Ta-Yeh Lin, Non-neon light, US 4,607,317 (issued 1986) (Lin).
7 Examiner's Answer (Ans.) 3.
8 Scott Chen, Flexible lamp-string device, US 4,812,956 (issued 1989)
(Chen).
9 Pui-Hing Tsui, Joy light structure, US 5,150,964 (issued 1992).
10 In re Bass, 314 F.3d 575, 577, 65 USPQ2d 1156, 1158 (Fed. Cir. 2002),
citing In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir.
1984).
2
Appeal 2007-2577
Application 90/006,344

ANTICIPATION
To anticipate, each and every claim limitation must be found, either
expressly or inherently, in a single prior art reference. Moreover, the
reference must enable one skilled in the art to make and use the invention.
Patents, such as the Lin patent, are presumed to have been enabling.11
Claim 1
Claim 1 defines the invention as follows—
1. A ropelight connector for connecting a first
ropelight with a second ropelight, comprising:
a first connecting member having a first member head
portion and a first member tail portion affixed to an end of said
first ropelight, wherein a pair of parallel locking sockets is
longitudinally formed on said first member head portion and a
pair of tubular conductors, which are electrically extended from
a pair of wires inside said first ropelight respectively, outwardly
protruded from said first member head portion along said
locking sockets respectively;
a second connecting member, having a second member
head portion and a second member tail portion affixed to an end
of said second ropelight, comprising a tubular shelter frame
coaxially extended from said second member head portion
wherein a pair of conductive terminals, which are electrically
connected to a pair of wires inside said second ropelight, are
outwardly extended from said second member head portion and
adapted for fittingly inserting into said locking sockets to
engage with said tubular conductors respectively for securely
connecting said second connecting member with said first
connecting member, so as to electrically connecting said first
and second ropelights together; and
a locking means comprising a sleeve locker slidably
wearing on said first connecting member and a ring-shaped

11 E.g., Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354,
65 USPQ2d 1385, 1416 (Fed. Cir. 2003).
3
Appeal 2007-2577
Application 90/006,344

stopper for blocking an inwardly projected end shoulder of said
sleeve locker in such a slidably movable manner along said first
connecting member, wherein said sleeve locker, which has a
diameter slightly larger than a diameter of said tubular shelter,
has an inner threaded portion for screwing with an outer
threaded portion of said tubular shelter, so as to fasten said first
connecting member with said second connecting member.

As an initial matter, the claim uses the phrase "locking means", which
raises the threshold question of whether "locking means" invokes
paragraph 6 of 35 U.S.C. 112. In his appeal brief, Prazoff has not requested
the limitation be construed under paragraph 6.12 Nor it is apparent how a
function for the "locking means" is set out in the claim. In any case, the
specification expressly describes a locking means 50, with a sleeve locker 51
and a ring-shaped stopper 52. The sleeve locker is described as screwing
onto a threaded portion 431 of the tubular shelter 43.13 From this we infer,
at a minimum, that the locking means can include a sleeve with interior
threads that screws onto a surface with exterior threads.

12 See 37 C.F.R. § 41.37(c)(1)(v), which require specific identification of
means-plus-function limitations and their corresponding structure.
13 Specification (Spec.) 4:13-24. Both the examiner and Prazoff rely on the
6,379,190 patent as the relevant specification.
4
Appeal 2007-2577
Application 90/006,344
Claim 1 paints a
detailed picture of the
claimed apparatus. As an aid
to understanding the
rejection, the following table
sets forth how the examiner
applies the Lin patent to
claim 1. The reference
numbers come from Lin
FIG. 3 (right), which shows
an exploded view of Lin's
rope-light connector. Since
some of the examiner's
reference numerals do not
align precisely with FIG. 3 or
are ambiguous because Lin
uses the same numerals for
different elements, we slightly refine the references where appropriate.
Structure
Examiner's
application
of Lin
Refined
application
of Lin
a first ropelight 10a ←
a second ropelight 10b ←
a first connecting member 20b 24-27
a first member head portion 24 25 front ←
a first member tail portion 25 rear ← esp. 252
a pair of parallel locking
sockets 241 ←
5
Appeal 2007-2577
Application 90/006,344
Structure
Examiner's
application
of Lin
Refined
application
of Lin
a pair of tubular conductors in 241 ←
a pair of wires inside said first
ropelight
111
112
←
in 10a
a second connecting member 20a 21-23
a second member head portion 230 ←
a second member tail portion 231 ←
a tubular shelter frame 232 ←
a pair of conductive terminals 242 ← in 21
a pair of wires inside said
second ropelight
111
112
←
in 10b
a locking means 27 27 251
a sleeve locker (27) 27
a ring-shaped stopper 251 ←

Facially, Lin has structures meeting the limitations of claim 1.
Prazoff urges several points of difference, however; any of which would
undermine a finding of anticipation.
first connecting member
Prazoff questions the association of the claimed "first connecting
member" with Lin's connecting socket 20b (24 and 250 in our refinement)
because Lin's socket is an assembly of members rather than a single
member.14 This argument is not commensurate with the scope of the claim.
The claim does not require the "first connecting member" to be constructed

14 Br. 17-19.
6
Appeal 2007-2577
Application 90/006,344

of one (and only one) piece.15 Lin expressly describes the "connecting
socket 20b [as] consist[ing] of a socket 24, a connecting cylinder 25, a large
nut 26, and a small nut 26." Thus, in the mind of Lin's readers, the
connecting socket 20b is a functional unit made up of subunits. Giving
claim 1 its broadest reasonable construction—as we must16—we cannot read
claim 1 to exclude a first connecting member consisting of subunits.
first member tail portion
Prazoff objects to the examiner's association of the tail portion with
the rear of Lin's connecting cylinder 25 for the same reasons stated more
broadly for the first connecting member. In addition, however, Prazoff
questions whether the threaded portion 252 in Lin can truly be said to be
"affixed to the end of said first ropelight". Lin shows the threaded
cylinder 252 with notches 253 such that tightly screwing on small nut 26
clamps cylinder 25 to a bulb-holding bar 10a.17 One of skill in the art would
have understood the threaded portion 252 of connecting cylinder 25 to be
"affixed" to rope light 10a by operation of this clamping. Claim 1 does not

15 Cf. In re Morris, 127 F.3d 1048, 105_, 44 USPQ2d 1023, 1029 (Fed. Cir.
1997), in which "integrally formed as a portion of" (emphasis added) was
read to be broader than "fused together". If anything, Prazoff is in a weaker
position since "member" is if anything even less suggestive of a unitary
construction than "integral".
16 See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989) (reversing for reliance on a construction narrower than the broadest
reasonable construction).
17 Lin 4:26-30.
7
Appeal 2007-2577
Application 90/006,344
exclude the use of additional elements, such as the small nut 26,18 in affixing
the tail portion to the rope light.
tubular conductors
Prazoff argues that Lin does not show tubular conductors protruding
outwardly from the first member head.19 It is true that Lin does not show
the conductors in sockets 241 protruding beyond the outer surfaces of
socket 24 or connector 25. Claim 1, however, does not require the tubular
conductors to extend so far. In understanding this limitation, it is instructive
to consider Prazoff's disclosure. Prazoff discloses a first member head
portion 31 with locking
sockets 33 and tubular
conductors 34.20 A detail
from Prazoff FIG. 3 (right)
shows the structure. The
detail shows the tubular
conductors 34 projecting in
an outward direction (away
from the first ropelight 10),
but not beyond the outer
face of the first member
head portion 31. Prazoff
has not pointed us to

18 Recall that Lin considers the small nut to be part of the connecting socket,
so it is really an additional subunit of the same assembly.
19 Br. 19.
20 Spec. 3:7-14.
8
Appeal 2007-2577
Application 90/006,344

alternative embodiments that he might instead be claiming. Claim
constructions that exclude the disclosed embodiment are disfavored.
Consequently, we understand the outward protrusion of the tubular21
conductors to include protrusion into but not beyond the locking sockets.
Prazoff's argument is not consistent with the broadest reasonable
construction of this limitation.22
second connecting member
Prazoff repeats his arguments that the assembly of subunits in Lin
cannot satisfy the requirements of this limitation. The arguments fail as they
did for the first connecting member. The word "member" in itself does not
require a unitary construction or exclude an assembly of subunits. We
cannot construe claim 1 more narrowly than Prazoff elected to write it.
a pair of conductive terminals…outwardly extended from said
second member head portion
Prazoff notes that Lin's terminals 242 extend from plug 21. From this
fact, Prazoff argues that the terminals do not extend from the second
member head portion.23 We cannot agree. The examiner associates the
second member head portion with Lin's connecting socket 20a, which
includes the plug 21, a nut 22, and a connecting cylinder 23.24 Thus, the

21 We note that the "tubular" conductors in Prazoff's disclosure do not appear
to be tubular in shape. Hence, we construe "tubular" broadly to mean
"associated with the tube-shaped socket" rather than imposing a tube-shape
on the conductor itself.
22 We are concerned that an argument would be advanced for a construction
so at odds with the supporting disclosure.
23 Br. 20.
24 Spec. 3:63-68.
9
Appeal 2007-2577
Application 90/006,344

plug 22 is part of the head portion from which the terminals 242 must
extend.
second member tail portion
As with the first member tail portion, Prazoff argues that Lin fails to
teach a tail portion affixed to the second rope light.25 The argument fails
again for analogous reasons. The examiner associates the tail portion with
the threaded portion 231 (which has notches 233) of Lin's connecting
cylinder 23. The nut 22, which is part of the overall connecting socket 20b,
is used to compress the threaded portion 231 such that it is connected to
clamp onto the other rope light 10b. One skilled in the art would understand
from Lin that the connecting socket 20b was composed of subunits,
including the threaded portion 231 and nut 22, which cooperate to fix the
socket to the rope light.
Claim 1 was anticipated
When claim 1 is properly construed as broadly as is reasonable in
view of Prazoff's specification, the scope of the claim is too broad to be
consistent with Prazoff's arguments. Properly construed, claim 1 reads on
the disclosure of the Lin patent. We find claim 1 to have been anticipated.
Claim 2
Claim 2 depends from claim 1 and adds the following limitations
(emphasis added)—
wherein said first member tail portion of said first connecting
member and said second member tail portion of said second

25 Br. 21.
10
Appeal 2007-2577
Application 90/006,344
connecting member are respectively tubular holders, each of
which having a diameter slightly larger than a diameter of said
respective ropelight, wherein said tubular holders are securely
affixed to said ends of said first and second ropelights in such
an air tight manner, so as to permanently connect said first
connecting member and said second connecting member to said
first ropelight and said second ropelight respectively.

The examiner applies Lin as follows:
Structure
Examiner's
application
of Lin
Refined
application
of Lin
first member tail portion
= tubular holder 25 rear
←
esp. 252
second member tail portion
= tubular holder 231 ←
first ropelight 10a ←
second ropelight 10b ←

Again, the structures of the claim are facially present. Prazoff focuses
on the functional "air tight" and "permanently connect" limitations to
distinguish Lin.
Permanently connect
Prazoff argues that the connecting members in Lin are not
permanently connected to their respective rope lights.26 The examiner notes
that "permanent" can be broadly construed to include a connection that is
permanent unless intentionally disconnected. Resolution of this issue

26 Br. 22-23.
11
Appeal 2007-2577
Application 90/006,344

depends on claim construction. The question is a close one, depending
heavily on the understanding of those in the art.27
The evidence we have for how those skilled in the art would
understand "permanently connect" in this context is the Prazoff
specification, the Lin patent, and a dictionary definition Prazoff has
supplied. From Prazoff, one of skill would understand "permanently
connect" to mean "securely affix" and to include molding the connectors to
their respective rope lights.28 Lin explains how the connectors are attached
to the respective rope lights,29 but does not describe a situation in which the
connectors are removed from the rope lights. This omission is remarkable
since Lin does address disassembly of connectors from each other, removal
of power plugs, and removal of a protective cylinder.30 Thus, one of skill
would understand that while the connectors could be removed, Lin does not
intend the connectors to be removed from the rope lights once they have

27 We are aware of precedent holding that "permanently affixed" meant
"unremovable". K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363,
52 USPQ2d 1001, 1004 (Fed. Cir. 1999) (affirming a trial court
construction). We are also aware, however, of the pitfalls inherent in
extending constructions from infringement cases to claims before the Office.
Morris, 127 F.3d at 105_, 44 USPQ2d at 1029 (explaining the differences
between claim construction in court infringement actions versus agency
patentability determinations). Ultimately, claim construction must be
anchored in the understanding of those in the particular art at issue. K-2
Corp., 191 F.3d at 1363, 52 USPQ2d at 1006.
28 Spec. 3:49-63.
29 Lin 3:58-4:32.
30 Lin 3:58-63 and 4:41-55. The antecedent for "removal and disassembly"
cited in the brief (at 23) is "light". Lin 1:11-18. Lin expects the user to
connect and disconnect the rope lights from each other. As noted in the text,
Lin does not indicate that the connectors are ever to be removed from the
rope lights.
12
Appeal 2007-2577
Application 90/006,344

been installed.31 Finally, Prazoff provides a dictionary definition of the
adjective "permanent" (emphasis added):32
continuing or enduring (as in the same state, status, place)
without fundamental or marked change : not subject to
fluctuation or alteration : fixed or intended to be fixed :
LASTING, STABLE

Bearing in mind our obligation to construe the claim as broadly as is
reasonable in view of the specification, we conclude that "permanently
connected" is satisfied if the connectors are "securely affixed" or "intended
to be fixed". Molding may be preferred, but we cannot legitimately limit the
scope of the claim to a preferred embodiment. Lin's connectors are intended
to be securely fixed to the respective rope lights.33 As we noted above, the
question is a close one, but where the art is close the onus lies with the claim
drafter to draft claims more precisely.34
Air tight
Prazoff notes that Lin intends the invention to be waterproof, but does
not discuss any specific means of achieving this object. Prazoff contends
that simple mechanical connections are not generally thought of as water

31 It is difficult to see why the end user would want to remove the connectors
from the rope lights in any case.
32 Br. Exhibit C: Webster's 3d New Int'l Dictionary [page number not
visible] (1976).
33 One skilled in the art would understand that failure to securely affix the
connectors to the rope lights would adversely affect end-user safety and
product durability.
34 Morris, 127 F.3d at 1056, 44 USPQ2d at 1029 (placing "the burden of
precise claim drafting squarely on the applicant").
13
Appeal 2007-2577
Application 90/006,344

proof.35 Prazoff cites no evidence for this contention. We cannot accept
attorney argument as evidence.36
Lin does more than aspire to a waterproof rope-light assembly, he
purports to provide "assured waterproofness [and] resistance to pressure".37
In view of this assurance, we must presume that Lin enabled those of skill to
make a waterproof rope-light assembly, including connectors, by following
the teachings of the Lin patent.38 Given the lack of evidence to the contrary,
the preponderance of evidence supports a finding that Lin's connectors are
waterproof and pressure-resistant.
The contested limitation, however, is "air tight". According to the
examiner, the fact that the connections are waterproof and pressure-resistant
"indicat[es] that the connections are air tight".39 The examiner cites no
evidence for this inference, but Prazoff does not really contest it either
(focusing instead on whether Lin is actually waterproof as discussed above).
We find the examiner's inference to be more likely than not within the
tolerances of this technology.40 Since at least one source of water that can
interfere with the operation of an electrical device is airborne humidity,
being waterproof would require the connector to resist the diffusion of
fluids, including air.

35 Br. 22.
36 In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir.
1997).
37 Lin 1:57-24.
38 Amgen, Inc., 314 F.3d at 1354, 65 USPQ2d at 1416 (presuming patents to
be enabled).
39 Ans. 8.
40 We appreciate, of course, that the fabrication of selectively permeable
barriers is an art unto itself.
14
Appeal 2007-2577
Application 90/006,344
Claim 2 was anticipated
When claim 2 is properly construed as broadly as is reasonable in
view of Prazoff's specification and the cited evidence, a preponderance of
the evidence supports the examiner's finding that claim 2 was anticipated.
Claim 3
Claim 3 depends from claim 1 and adds the following limitations—
wherein said tubular shelter is integrally extended from said
second member head portion of said second connecting member
and encircling said conductive terminals for protecting thereof,
wherein said tubular shelter has a diameter slightly larger than a
diameter of said first member head portion for fittingly
receiving said first member head portion therein.

The examiner applies Lin as follows:
Structure
Examiner's
application
of Lin
Refined
application
of Lin
a first connecting member 20b 24-27
a first member head portion 24 25 front ←
a second connecting member 20a 21-23
a second member head portion 230 ←
a tubular shelter frame 232 ←
a pair of conductive terminals 242 ← in 21

Again, the structures of the claim are facially present. Prazoff focuses
on the phrase "said tubular shelter is integrally extended from said second
member head portion" to distinguish Lin. Lin's large threaded cylinder 232
(which the examiner associates with the tubular shelter) does extend
integrally from the rest of Lin's connecting cylinder 23 (which the examiner
15
Appeal 2007-2577
Application 90/006,344

associates with the second connecting member). Prazoff argues, however,
that Lin's conductors 242 (in plug 21) do not extend outwardly from second
connecting member.
Although this argument is styled as separate, it relies on a limitation in
claim 1. We explained in the context of claim 1 that Prazoff's construction
of the second connecting member is unduly narrow. The entire second
connecting member can include subunits. The examiner associates the
second connecting member with Lin's connecting plug 20a, which includes
both plug 21 and connecting cylinder 23. When properly construed,
Prazoff's second connecting member limitation reads on Lin's connecting
plug 20a, which includes sheltered terminal 242 (projecting from plug 21)
and a shelter 232 integrally extending from cylinder 23.
When claim 3 is properly construed as broadly as is reasonable in
view of Prazoff's specification, a preponderance of the evidence supports the
examiner's finding that claim 3 was anticipated.
OBVIOUSNESS
In analyzing obviousness, the scope and content of the prior art must
be determined, the differences between the prior art and the claims
ascertained, and the ordinary level of skill in the art resolved. Objective
evidence of the circumstances surrounding the origin of the claimed subject
matter (so-called secondary considerations) may also be relevant. Such
secondary considerations guard against the employment of impermissible
hindsight.41

41 Graham v. John Deere Co., 383 U.S. 1, 17, 36 (1966), cited with approval
in KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007).
16
Appeal 2007-2577
Application 90/006,344
Claim 9
Claim 9 defines the invention as follows—
9. A ropelight connector for connecting a first
ropelight with a second ropelight, comprising:
a first connecting member having a first member head
portion and a first member tail portion, said first member head
portion and first member tail portion being formed as a single,
unitary structure,
said first member tail portion being molded to an end of
said first ropelight in a permanent, airtight connection,
said first connecting member including a pair of parallel
locking sockets longitudinally formed on said first member
head portion and electrically coupled by a pair of conductors to
respective wires inside said first ropelight;
a second connecting member having a tubular shelter, a
second member head portion, and a second member tail portion,
said tubular shelter, second member head portion and second
member tail portion being formed as a single, unitary structure,
said second member tail portion being molded to an end
of said second ropelight in a permanent, airtight connection,
said tubular shelter extending coaxially from said second
member head portion and having an inside diameter sufficient
to receive a forward portion of the first connecting member
head portion,
said tubular shelter having external threads thereon,
said second connecting member including a pair of
conductive terminals extending from said second member head
portion and being electrically connected to respective wires
inside said second ropelight,
said conductive terminals extending outwardly from said
second member head portion and being configured to be
inserted into said parallel locking sockets, thereby electrically
connecting said first and second ropelights together;
a sleeve locker movable axially along said first
connecting member, said sleeve locker having a diameter
slightly larger than a diameter of said tubular shelter, said
sleeve locker having inside threads configured to engage said
outside threads of said tubular shelter so that said sleeve locker
17
Appeal 2007-2577
Application 90/006,344
can be screwed onto said tubular shelter, said sleeve locker
having an inwardly projecting end shoulder; and
a ring-shaped stopper integrally formed on an external
surface of said first connecting member, said ring-shaped
stopper having a diameter larger than a distance defined by said
inwardly-projecting end shoulder, said stopper thereby blocking
said end shoulder and limiting the amount of axial movement of
said sleeve locker along said first connecting member and onto
said tubular shelter, so that said sleeve locker and stopper
secure said first connecting member to said second connecting
member.

The connector uses the open-ended "comprising" transition, which
permits the inclusion of elements not listed in the claim.
Scope and content of the art
Claim 9, which
was added during
reexamination, defines
the invention in even
greater detail than
claim 1. As with
claim 1, it is helpful to
understand the rejection
in terms of a table and
figures. The first figure
is an annotated version
of Chen's FIG. 3, which
the examiner labeled
"Sketch-2" (right)
18
Appeal 2007-2577
Application 90/006,344
during prosecution.42 Sketch-2 shows a rope light with a male connector 51
and a female connector 52. The examiner's marginal note explains that for
the second rope light the corresponding units would use the same reference
numerals with the addition of a prime sign. Chen expressly discloses the
serial connection of "many lamp-strings".43 A flashing control unit 57 with
a connecting end sleeve 55 and a terminal conducting contact 56 complete
the circuit. The following table shows the examiner's application of Chen to
claim 9.44
Structure Chen
a first ropelight not labeled
a second ropelight not labeled
a first connecting member 502
a first member head portion 505
a first member tail portion 52
a pair of parallel locking sockets 510
a pair of conductors inside 510
a pair of wires inside said first ropelight 31-33 in FIG. 1
a second connecting member 602′
a second member head portion 53′
a second member tail portion 51′
a tubular shelter frame 53′
a pair of conductive terminals 610′
a pair of wires inside said second ropelight 31′-33′
a sleeve locker difference
a ring-shaped stopper difference

42 Examiner T.C. Patel, Office Action in Ex Parte Reexamination 17 (entered
14 March 2003), in Reexam. Control No. 90/006,327.
43 Chen 1:18-21 (disclosing serial bulbs and serial lamp-strings); 2:67-68
(disclosing serial lamp-strings connected using the disclosed connectors).
44 Ans. 5-6.
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Application 90/006,344
Tsui discloses a "joy light" structure, which appears to be a main
conductor to which string lights are connected through sockets on the main
conductor.45 The examiner relies on Sketch-4, based on Tsui FIG. 2, to
explain the relevance
of Tsui to the
invention in claim 9.
Sketch-4 (left) shows
detail from Tsui's
invention in which a
female connector 22
on the main conductor
aligns with a male
conductor 31 on a
string-light strand.
Note the waterproofing gasket 323 in the male connector 31.46 As before, a
table succinctly summarizes the examiner's application of Tsui to the
invention of claim 9.
Structure Tsui
a first connecting member 31
a second connecting member 22
a tubular shelter frame 715
—outer threads 725
a sleeve locker 701
— inwardly projecting end shoulder 710

45 Tsui 1:40-44. Christmas tree lights are an example of string lights. Tsui
1:8-12.
46 See also Tsui 1:54-56 (describing the gasket as a "water-proof rubber ring
to avoid moisture permeation and thus [permitting] indoor and outdoor
application").
20
Appeal 2007-2577
Application 90/006,344
Structure Tsui
—inner threads 720
a ring-shaped stopper 705

Argued differences
Prazoff notes that Chen does not illustrate the serial connection of
rope lights, but rather connects to a power source and a terminal plug.47 As
noted before, however, Chen discusses serial connection of rope lights48 and
explains that it is accomplished "according to the same technology of the
invention as required."49 Prazoff is wrong to characterize the examiner's
discussion of serial rope lights in Chen as "speculative"50 since Chen
provides explicit support for such series.51
Prazoff argues that the inside of the sleeve 505 on Chen's female
connector 52 is "plainly visible" and "shows utterly no threading".52 It is
true that Chen does not show threading inside the sleeve 505. It is
nevertheless clear that such threading must exist to engage the threading on
the terminal plug 56 and on the male connector 53′ any serial rope light. A

47 Br. 29.
48 Chen 1:18-21.
49 Chen 2:67-68.
50 Br. 29.
51 Prazoff notes, Br. 29, that the "written disclosure of Chen is negligible."
Chen's written disclosure is little more than one page (two columns) long. It
is thus remarkable that Prazoff would argue that there is no evidence in Chen
for serial combination of rope lights using the same connectors despite the
express teaching in Chen.
52 Br. 30.
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Appeal 2007-2577
Application 90/006,344

preponderance of the evidence supports an inference that the sleeve 505 has
threading inside.53
Prazoff argues that Chen will not work without the terminal
conducting contact plug 56, while Prazoff requires no such plug. This
argument has little relationship to the scope of claim 9. First, the plug 56 is
a feature of Chen's overall rope-light system. Claim 9 is more narrowly
directed to a connector (or, more precisely, paired connectors) within a rope-
light system. Thus, the presence or absence of the plug has no relevance to
the claim on appeal. Alternatively, claim 9 uses the open-ended
"comprising" transition, which would permit the inclusion of other elements
in the claim beyond those listed. Thus, the plug 56 could be an alternative
accessory for use with the female half of Prazoff's connector. Finally, we
note that the claim does not specify how current flows through a series of
rope lights so we have no basis for crediting the argument that Prazoff's rope
lights necessarily operate without some sort of terminal conductor.
Prazoff correctly notes that Tsui is not directed to rope lights.54 Tsui
teaches a main conductor with connections for string lights. We understand
Prazoff to be arguing that Tsui is not analogous art. Art is analogous if it
can satisfy one or more of at least two tests. First, is the art from the same
field of endeavor, regardless of the problem addressed? Second, if not, then
is the reference reasonably pertinent to the particular problem with which the
inventor is involved?55 Tsui is analogous under both tests.

53 Even if it did not, adding such threading to better engage the threading on
its opposite connectors would be an obvious improvement.
54 Br. 35.
55 In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir.
2004).
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Prazoff, Chen, and Tsui all operate in the same field, providing linear
arrays of decorative or novelty lighting for indoor and outdoor use to
technically unsophisticated end-users.56 End-users would see the rope lights
of Prazoff and Chen and the joy light of Tsui as competing and largely
interchangeable solutions to indoor and outdoor decorative or novelty
lighting challenges. Moreover, Tsui's connectors are directly pertinent to the
problem both Prazoff and Chen face: how to provide an easily connected
(and disconnected), physically secure, fluid-tight connector for lighting
conductors.
Prazoff correctly notes that Tsui is directed to a power cord connected
to lamp-strings rather than rope lights in series.57 We note, however, that
Chen contemplates connection with either a power cord or other rope lights.
Prazoff faults the cited art for lacking an "explicit suggestion…to
substitute Tsui's sleeve and stopping ring for Chen's connector."58 This
omission is true, but not particularly relevant since explicit motivation to
combine has never been a requirement for obviousness.
Prazoff argues that Tsui uses the connectors for a different purpose.59
Let us assume for the sake of argument that Tsui's connection of lamp-
strings to a power cord differs meaningfully from Prazoff's connection of
rope lights to each other or from Chen's connection of a rope light to either a

56 Both Chen and Tsui identify Christmas lights as an application for their
inventions.
57 Br. 35-36. Tsui probably uses the independent locking sleeve 505 to
reduce the twisting forces generated between the power cord and the added
lamp-lights. Such twisting would be less of a problem between two short
rope lights in series, but would become a problem with longer rope lights (or
with many rope lights connected in series).
58 Br. 36.
59 Br. 37.
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Application 90/006,344

power cord or another rope light. The case law does not require the
reference and the claimed invention to have precisely the same purpose.60
Prazoff argues that Tsui does not explicitly disclose that the
sleeve 505 is axially slidable.61 Prazoff is correct that Tsui neither illustrates
nor describes the sleeve 505 as moving axially. A reference, however, must
be considered together with the knowledge of one of ordinary skill in the
pertinent art. A reference need not explain every detail since it is speaking
to those skilled in the art.62 Tsui's sleeve 505 has a shoulder 710 that abuts a
ring stopper 705 on the connector. Moreover, the connector has a face
abutting the shoulder 710 that is broader than needed for the sleeve to rotate
freely. Finally, the inner threads 720 on the sleeve 505 are spaced apart
from both the stopper ring 705 and the gasket 323, providing room for the
sleeve 505 to move axially. Despite Tsui's silence on the question, we find a
preponderance of the evidence supports the examiner's position that one of
skill in the art would understand that Tsui's sleeve 505 moves axially.
Level of skill in the art
We look to the evidence of record—the applicant's disclosure, the
cited references, and any declaration testimony—in resolving the ordinary
level of skill in the art.63 In particular, we are interested in what those of
skill in the art knew and could do at the time of filing. Prazoff's disclosure

60 In re Dillon, 919 F.2d 688, 692-94, 16 USPQ2d 1897, 1901-02 (Fed. Cir.
1990) (en banc); In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042
(Fed. Cir. 1992)
61 Br. 37 n.3. The functional limitation in claim 9 is "movable axially".
62 In re Paulsen, 30 F.3d 1475, 14_, 31 USPQ2d 1671, 1675 (Fed. Cir.
1994).
63 Ex parte Jud, 2006 WL 4080053 at *2 (BPAI) (rehearing with expanded
panel).
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Application 90/006,344

does not expressly say anything about what was known at the time of filing.
Prazoff provides little or no guidance on the materials and methods used to
fabricate the components of his invention. From Prazoff's silence we infer
that those skilled in the art were proficient in fabricating rope lights with
little or no additional guidance.64
Chen and Tsui, which predate Prazoff by roughly a decade, provide
some additional guidance. Chen discloses different lighting-circuit options65
and discusses the use of polyvinyl chloride tubing for protection and water
proofing.66 Tsui also provides lighting-circuit diagrams67 and suggests the
use of a rubber gasket for water-proofing the connections. Both Chen and
Tsui close their written disclosures with expressions of confidence that those
in the art will readily appreciate modifications that can be made to their
respective inventions.
Prazoff has not pointed us to testimony regarding the level of skill in
the art. We have reviewed the two Prazoff declarations regarding
commercial success for the sake of completeness. The declarations, to the
extent they could be considered relevant on the question of skill, are
consistent with the discussion above.
We find that one of skill in the art at the time the Prazoff application
was filed would have been broadly familiar with materials and methods of
fabrication used in making rope lights and similar flexible lighting devices.
In particular, the artisan would have known of materials and structures used

64 We presume for the purposes of this appeal that Prazoff's disclosure is
enabling. Ex parte Bhide, 42 USPQ2d 1441, 1447 (BPAI 1996).
65 Chen FIGS. 2 and 5.
66 Chen 1:42-45, noting that "PVC" is flexible, but shock and water resistant.
67 Tsui FIGS. 4 and 5.
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Application 90/006,344

to make electrical connections in such devices easy to use, yet secure and
safe. The artisan would have understood the advantages of using threaded
sleeves to connect male and female. The artisan would have understood that
threaded connections are desirable because they are safe, easy to use, and
fluid-resistant (permitting outdoor use). They would have appreciated that
leakage could be avoided by integrating the connector into the protective
jacket over the rope light or by adding a gasket where it would be desirable
to have a moving part.
Secondary considerations
As an initial matter, we note that Prazoff argues the examiner
improperly ignored evidence of secondary considerations until too late.68
We review the merits of the rejection. A defect in procedure must be
addressed by petition not appeal.69 Moreover, Prazoff had—and used—an
opportunity to address the merits70 so there would be no due-process
problem in reaching merits as any procedural irregularity is minor and
harmless. Rather than remand at this late date and delay resolution of the
matter further, we exercise our discretion to reach the merits on the record
before us.71
Objective evidence contrary to a conclusion of obviousness must be
considered, but may be unavailing particularly in the face of a strong facial

68 Prazoff's Response To The Examiner's Sept. 29, 3006 Paper 1-7 (filed
18 Oct. 2006) (Resp.).
69 E.g., In re Voss, 557 F.2d 812, 816, 194 USPQ 267, 270 (CCPA 1977)
(affirming board refusal to review a petitionable matter).
70 Resp. 8-11.
71 "All reexamination proceedings under this section, including any appeal to
the Board of Patent Appeals and Interferences, will be conducted with
special dispatch within the Office." 35 U.S.C. 305.
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Appeal 2007-2577
Application 90/006,344

case of obviousness.72 For instance, in Graham, the court was decidedly
underwhelmed by the secondary considerations in view of the very close
prior art:73
However, these factors do not, in the circumstances of this case,
tip the scales of patentability. The Scoggin invention, as limited
by the Patent Office and accepted by Scoggin, rests upon
exceedingly small and quite non-technical mechanical
differences in a device which was old in the art. At the latest,
those differences were rendered apparent in 1953 by the
appearance of the Livingstone patent, and unsuccessful attempts
to reach a solution to the problems confronting Scoggin made
before that time became wholly irrelevant. It is also irrelevant
that no one apparently chose to avail himself of knowledge
stored in the Patent Office and readily available by the simple
expedient of conducting a patent search-a prudent and
nowadays common preliminary to well organized research.

Moreover, in an ex parte process, the burden of showing with hard evidence
a nexus between commercial success and the claimed invention lies with the
applicant (or in this case, patentee).74 Unlike a party in an invalidity action,
the examiner has little ability to develop independent objective evidence
supporting or refuting a claim of commercial success.
Prazoff offers in evidence two declarations from himself. The
examiner raised three objections to the declaration evidence.75 The first two
are a quibble about whether or not all rope-light sales in the United States

72 Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372, 82 USPQ2d 1321, 1338
(Fed. Cir. 2007); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768,
9 USPQ2d 1417, 1426 (Fed. Cir. 1988).
73 Graham, 383 U.S. at 36.
74 In re Huang, 100 F.3d 135, 139-140, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996); Paulsen, 30 F.3d at 1482, 31 USPQ2d at 1676 (reexamination).
75 Acknowledgement of Reply Brief 4 (entered 29 Sept. 2006).
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Application 90/006,344

use the claimed invention. The second objection notes that advertising
rather than innovation could explain the alleged sales success.
The examiner's quibble about the degree of market dominance is
misplaced. It hardly makes a difference whether all or just nearly all sales
fall within the scope of the claims. What matters more is that massive
copying in the face of an issued patent is equivocal evidence at best.
Prazoff's patent issued in early 2002. When Prazoff declared in 2003 that
substantially all rope lights used his invention, he listed limitations of the
patent claims.76 By definition, added claims 9-11 cannot have broadened the
scope of the patent claims.77 Thus, if we credit Prazoff's testimony, the
market used the structures Prazoff claims despite Prazoff's issued patent
claiming exclusive rights to the structure. In such cases, copying suggests
that the market respects the product, but not the patent.78
The examiner's concern about advertising is more to the point. In the
second declaration, Prazoff states:79
Due to the success of my invention, L'Image [Prazoff's
company] won a 2001 Target Bullseye Award.

The award states, in part:80

76 Declaration of Michael Prazoff 6 (¶16) (submitted 12 May 2003) (1st
Declaration).
77 "No proposed amended or new claim enlarging the scope of a claim of the
patent will be permitted in a reexamination proceeding under this chapter."
§ 305.
78 Cable Elec. Prod. v. Genmark, Inc., 770 F.2d 1015, 1028, 226 USPQ 881,
889 (Fed. Cir. 1985); Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567,
224 USPQ 195, 199 (Fed. Cir. 1984).
79 Second Declaration of Michael Prazoff 4-5 (¶29) (submitted 12 May
2003) (2d Declaration).
80 2d Declaration, attachment.
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The first ad in February proved to be a great success. L'Image
reacted immediately and was able to produce and ship from
overseas nearly double what was originally forecasted on eight
new items, and did so in time for the second ad that ran just 5
weeks later. At the same time they were working nonstop to
bring new colors and designs to the assortment.

The examiner's interpretation of this accolade is reasonable. The award
specifically attributes success to the February advertisement. It credits
L'Image with logistical skill and with innovation on features not covered by
the claims, such as new colors. The award does not mention the claimed
connectors at all.
We note two additional points for consideration. First, both
declarations are from the inventor and assignee. While inventor or assignee
testimony are not inherently incredible, the declarant's interest (financial,
emotional, etc.) in the outcome is a highly material fact to consider when
assigning weight to the evidence.81 Second, Prazoff notes that Underwriters
Laboratories changed its safety standards such that multi-part connectors
(such as the one in the Lin patent) are no longer allowed.82 If we credit
Prazoff's testimony, the change in the standard alone could explain (and
even motivate) the stated industry shift to connectors with unitary
constructions. Prazoff does not point us to sufficient information (such as
when the standard changed) for us to evaluate the significance of this point
further.

81 Cf. Ferring B.V. v. Barr Labs. Inc., 437 F.3d 1181, 1188, 78 USPQ2d
1161, 1167 (Fed. Cir. 2006) (withheld relationship information was highly
material for purposes of inequitable conduct).
82 2d Declaration 4 (¶28).
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Application 90/006,344

In sum, Prazoff's evidence of secondary considerations is equivocal at
best. One could infer commercial success based on the limitations of the
claims, but one could just as easily attribute the success to other
considerations such as advertising, logistical skill, other design features, or
changing industry standards. Prazoff has failed to establish adequate nexus
between the commercial success and the claim limitations.
The subject matter of claims 9-11 would have been obvious
The examiner has successfully shown that all of the limitations of
claim 9 existed in two related prior art references. The combination of
Tsui's locking sleeve and Chen's rope light unites existing elements in a
predictable way to achieve an expected result. Tsui's sliding locking sleeve
would be an improvement over Chen's static locking sleeve since it would be
easier for consumers to use.
Prazoff has not argued claims 10 and 11 separately. We conclude that
their claimed subject matter would have been obvious as well.
Claims 1-8
We have already found claims 1-8 to have been anticipated, so the
obviousness question is moot. Alternatively, claims 1-8 would have been
obvious. The claims are not argued separately so they all stand or fall with
claim 9.83

83 We noted that Prazoff mentions limitations of claims 1, 2, 9, and 11 in a
footnote. Br. 48 n.6. The footnote, however, erroneously assumes that Chen
does not teach serial connection of rope lights. Once the full scope of
Chen's teachings are considered, the differences noted in the footnote
become irrelevant.
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Appeal 2007-2577
Application 90/006,344
HOLDING
The examiner's finding that claims 1-8 were anticipated is
AFFIRMED. The examiner's conclusion that claims 1-11 would have been
obvious is AFFIRMED. Consequently, the examiner's final rejection is—
AFFIRMED

Edward D. Manzo
COOK, ALEX, McFARRON, MANZO,
CUMMINGS & MEHLER LTD.
200 W ADAMS ST STE 2850
CHICAGO IL 60606

JS
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