Ex Parte 7060900 et alDownload PDFPatent Trial and Appeal BoardMay 21, 201595001982 (P.T.A.B. May. 21, 2015) 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. 95/001,982 04/27/2012 7060900 38629-13REEX 5577 30010 7590 05/21/2015 The Jackson Patent Group, LLC 1500 Forest Avenue, Suite 212 RICHMOND, VA 23229 EXAMINER NASSER, ROBERT L ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/21/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ BRIDGEPORT FITTINGS, INC. Requester, Appellant v. ARLINGTON INDUSTRIES, INC. 1 Patent Owner, Respondent ____________________ Appeal 2014-008599 Inter partes Reexamination Control 95/001,982 Patent US 7,060,900 B1 2 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, DANIEL S. SONG and BRETT C. MARTIN, Administrative Patent Judges. Per Curium. DECISION ON APPEAL 1 Arlington Industries, Inc., is the real party in interest (Respondent Brief (hereinafter "Resp. Br.") 1). 2 Patent US 7,060,900 B1 (hereinafter "the ’900 patent") issued June 13, 2006 to Gretz. Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 2 STATEMENT OF THE CASE The Requester appeals under 35 U.S.C. §§ 134 and 315 from the Examiner's refusal to adopt various proposed rejections of claims 3, 4 and 6, which have been determined to be patentable by the Examiner (Appeal Brief (hereinafter "App. Br.") 4; Right of Appeal Notice 3 (hereinafter "RAN") PTOL-2066). We have jurisdiction under 35 U.S.C. §§ 134 and 315. The Requester relies on its Appeal Brief and Rebuttal Brief (hereinafter "Reb. Br."). The Patent Owner relies on a Respondent Brief (hereinafter "Resp. Br.") in support of the Examiner's decision. We REVERSE and denominate the proposed rejections as New Grounds of Rejection. Figure 7 of the ’900 patent is reproduced below: 3 The Examiner's Answer mailed May 2, 2014 incorporates by reference the RAN, so we cite to the RAN herein. Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 3 Figure 7 of the ’900 patent illustrates a sectional view of snap engagement connector assembly 20 secured to electrical panel 62 and connector assembly 20. Connector assembly 20 includes connector body 22 and snap fit retaining ring 32. Snap fit retaining ring 32 has locking tangs 42 and grounding tangs 44 (col. 2, ll. 58–60; col. 5, ll. 15–30; Fig. 7; see also col. 3, ll. 48–50 (describing features common to Figures 1 and 7)). The grounding tangs 44 have leg portions 59 that provide surface contact and grounding to panel 62 (col. 5, ll. 15–30; Fig. 7). Leg portions 59 are disclosed as being bent outwardly from grounding tangs 44 at an angle between 100° and 115° (col. 4, ll. 44–48; see Fig. 4). Independent claim 6, which was added during the reexamination, reads as follows (Claims App., underlining removed, italics added): 6. (New) A snap engagement connector assembly for securing an electrical cable or conduit to an electrical box comprising: a connector body having a leading end portion, a trailing end portion, and a bore extending therethrough; said leading end portion terminating in an outlet opening for insertion through a hole in said electrical box; a snap fit retaining ring having a face portion and a circumscribing frusto-conical configuration; said snap fit retaining ring having a leading end and a trailing end; said leading end of said snap fit retaining ring having a diameter; said trailing end of said snap fit retaining ring having a diameter wherein said diameter of said trailing end of said snap fit retaining ring is greater than said diameter of said leading end of said snap fit retaining ring; a locking tang on said snap fit retaining ring; a grounding tang extending at a first angle from said face portion of said snap fit retaining ring; Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 4 said grounding tang including an integral leg portion bent outward at an angle from said grounding tang, said angle of said leg portion of said grounding tang with respect to said grounding tang is between 100 and 115 degrees; a retaining tab on said snap fit retaining ring; said locking tang, said grounding tang, and said retaining tab bent outward radially from said face portion of said snap fit retaining ring; and an arrangement for securing said snap fit retaining ring onto said leading end portion of said connector body. PROPOSED REJECTIONS NOT ADOPTED The Examiner refuses to adopt the following proposed obviousness rejections under 35 U.S.C. §103(a): 4 A. Claim 6 over Auray 5 in view of Neuroth. 6 B. Claims 3 and 4 over Auray and Neuroth in view of Gretz. 7 C. Claim 6 over Auray in view of Moran. 8 D. Claims 3 and 4 over Auray and Moran in view of Gretz. E. Claim 6 over Auray in view of Paskert. 9 F. Claims 3 and 4 over Auray and Paskert in view of Gretz. G. Claim 6 over Auray in view of Stikeleather. 10 4 We utilize the same sequential lettering used by the Requester to identify the proposed rejections not adopted by the Examiner (App. Br. 5–6). 5 Auray et al. ("Auray"), US 6,916,988 B1, issued Jul. 12, 2005. 6 Neuroth, US 4,621,166, issued Nov. 4, 1986. 7 Gretz, US 6,596,939, issued July 22, 2003. The inventor of this prior art reference is also the named inventor of the ’900 patent, which is the subject of the present appeal. This patent should not be confused with Gretz, US 6,957,968 B1, issued Oct. 25, 2005, which is also of record. 8 Moran et al. ("Moran"), US 4,012,578, issued Mar. 15, 1977. 9 Paskert, US 3,858,151, issued Dec. 31, 1974. Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 5 H. Claims 3 and 4 over Auray and Stikeleather in view of Gretz. I. Claim 6 over Auray in view of Pyron. 11 J. Claims 3 and 4 over Auray and Pyron in view of Gretz. TEACHINGS OF AURAY Each of the rejections on appeal relies on Auray as a primary reference. Auray describes an electrical connector assembly 10 for securing an electrical cable (that is, a wire conductor 25) to an electrical box 15 (see Auray, col. 3, ll. 21–22; col. 4, ll. 45–47; and Fig. 9). The electrical connector assembly 10 is a snap engagement or snap fit connector assembly (see Auray, col. 1, ll. 19–25). The electrical connector assembly 10 includes a metallic connector body 11. The connector body 11 has a leading end portion (that is, an outlet end portion 11B) and a trailing end portion (that is, an inlet end portion 11A). A bore 12 extends through the connector body 11 (see Auray, col. 3, ll. 22–27 and Fig. 9). Auray describes the outer surface S of the outlet end portion 11B of the connector body 11 as sloping, tapering or converging toward an outlet opening 16 located at the terminus of the outlet end portion 11B (see Auray, col. 3, ll. 33–37). Figures 8 and 9 of Auray depict the tapered outlet end portion 11B of the connector body 11 inserted through a knockout hole 14 in the electrical box 15 (see Auray, col. 4, ll. 24–30). Auray's electrical connector assembly 10 also includes a snap fit retaining ring 18 integrally formed from a cruciform blank 19 of spring steel 10 Stikeleather et al. ("Stikeleather"), US 4,880,387, issued Nov. 14, 1989. 11 Pyron, US 2005/0269122 A1, published Dec. 8, 2005. Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 6 material. The blank 19 as depicted in Figure 2 of Auray includes two arms AA extending in opposite directions from a central face portion 20. Each of the two arms AA includes a retaining slot 21 (Auray, col. 3, ll. 42–52, col. 4, ll. 1–8 and Fig. 2). Each of the arms AA constitutes a retaining tab. The combination of the projecting lugs 17 and the retaining tabs (that is, the arms AA) constitutes an arrangement for securing the snap fit retaining ring 18 onto the outlet end portion 11B of the connector body 11. During the assembly of the electrical connector assembly 10, the retaining slots 21 engage the lugs 17 so as to retain the snap fit retaining ring 18 on the outlet end portion 11B of the connector body 11 (see Auray, col. 3, ll. 37–41, col. 4, ll. 12–19 and Figs. 1 and 8). The blank 19 from which the snap fit retaining ring 18 is formed also includes two arms BB extending outwardly from the face portion 20 at right angles to the arms AA (Auray, col. 3, ll. 42–50 and Fig. 2). Each of the two arms BB of the snap fit retaining ring 18 defines a locking tang 22 surrounded by a pair of grounding tangs 23 (see Auray, col. 3, ll. 52–55 and Fig. 2). In forming the retaining ring 18 from blank 19, the respective arms AA and BB are subjected to a series of progressive bending dies which will gradually bend the respective arms relative about a foldline f, which defines the face or front portion 20, whereby the arms AA and BB form a cup having circumscribing frusto-conical or outwardly flaring sides to define a ring which complements the conical surface S of the outlet end portion 11B [of the connector body 11], as seen in FIG. 1. Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 7 (Auray, col. 4, ll. 1–8; see also id, col. 2, ll. 44–49). In other words, the fully-formed snap fit retaining ring 18 as depicted in Figures 3–6 of Auray defines a circumscribing frusto-conical configuration between a leading end (to the left in the sectional view of Figure 6) and a trailing end (to the right in Figure 6). The leading and trailing ends of the snap fit retaining ring 18 as depicted in Figures 3–6 of Auray define circumscribing circles having diameters. Auray's description of the snap fit retaining ring 18 as having "circumscribing frusto-conical or outwardly flaring sides" implies that the diameter of the trailing end of the snap fit retaining ring is greater than the diameter of the leading end of the snap fit retaining ring. Even in the fully- formed snap fit retaining ring 18, as depicted in Figures 3–6 of Auray, the locking tangs 22, grounding tangs 23 and the retaining tabs are bent radially outwardly from the face portion 20 of the retaining ring. When the electrical connector assembly 10 is inserted through a knockout hole 14 in a wall of an electrical box 15 as depicted in Figures 7–9 of Auray, the locking tangs 22 help hold the electrical connector assembly in place in the knockout hole (Auray, col. 4, ll. 32–35). The grounding tangs 23 and the retention tabs AA engage the wall of the electrical box 15 surrounding the knockout hole 14 to provide an electrical grounding pathway from a sheath of a wire connector 25 held by the electrical connector assembly to the electrical box. In particular, Auray teaches that "the tangs 22, 23, which are formed integral with the ring 18, are shaped and formed so that the locking tangs 22 secure the assembly 10 to an electric box 15 while the grounding tangs 23 ensure a positive electrical ground of the Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 8 assembly 10 with the associated electric box 15." (Auray, col. 4, l. 67 – col. 5, l. 5). Auray also teaches that the "inherent resiliency of the grounding tangs 23, 23 and the free end 24 of the arms AA are normally biased in engagement with the internal periphery of the knockout hole 14 to ensure a positive electrical ground with the electric box 15." (Auray, col. 4, ll. 35– 39). Auray's connector body 11 includes a radially outwardly projecting flange 13. The radially outwardly projecting flange 13 acts as a stop to limit how far the connector body 11 can be inserted through the knockout hole 14 (see Auray, col. 3, ll. 27–32; col. 4, ll. 24–30; and Fig. 9). Figure 9 of Auray indicates that the flange 13 makes flush contact with the outside surface of the wall of the electrical box 15 when the electrical connector assembly 10 is inserted into the knockout hole 14. Auray's description of the snap fit retaining ring 18 as being "frusto- conically shaped" (see Auray, col. 2, ll. 44–49) implies that the angle between the face portion 20 and the grounding tangs 23 must fall within a finite range. The angle between the face portion 20 and the grounding tangs 23 must be greater than 90° and less than 180°. When the electrical connector assembly 10 is inserted into a knockout hole in a wall of an electrical box 15, the plane of the face portion 20 will remain approximately parallel with the outer surface of the wall (see Auray, Figs. 8 and 9). Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 9 ANALYSIS Proposed Rejection A The Requester argues that Auray discloses each of the limitations of claim 6 other than the limitation requiring the grounding tang to include "an integral leg portion bent outward at an angle from said grounding tang . . . between 100 and 115 degrees." (App. Br. 7). The record indicates that the Examiner agrees with the Requester's assessment (see RAN 16; see also RAN 12–13; Action Closing Prosecution (hereinafter "ACP") 10). The Requester relies on Neuroth for disclosing gripper arm 26 including a hooked end 32 bent outwardly at an angle, and argues that "modification of the grounding tang of Auray to include an outwardly bent 'leg portion,' as taught by Neuroth, is a simple replacement," with predictable results (App. Br. 7, citing Neuroth, col. 2, ll. 62–63; Fig. 16). As to the recited angle between the leg portion and the grounding tang, the Requester argues that: The leg portion of Neuroth is substantially parallel to the junction box. Neuroth, Fig. 6. If a leg portion substantially parallel to the junction box were added to the grounding tang 23 of Auray, the angle of the leg portion with respect to the grounding tang would be between 100 and 115 degrees. (App. Br. 7). The Requester also asserts that Auray discloses a grounding tang at an angle of approximately 105° based on angle measurements of Figure 9 (App. Br. 7–9; annotated Figure 9 and photograph). The Requester argues that "if the grounding tang of Auray were modified to include a leg portion substantially parallel to the junction box, as taught by Neuroth, the angle of Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 10 the leg portion of the grounding tang with respect to the grounding tang would be approximately 105 degrees." (App. Br. 9). The Examiner declines to adopt the proposed rejection, stating that there is "insufficient evidence to establish that the angle of the legs with respect to the grounding tang in the combination is between 100 and 115 degrees" (RAN 5). According to the Examiner, "the drawings are not evidence of proportions;" and because "the dimensions are not known, one cannot properly measure the angle." (RAN 12–13). It is also the Examiner's position that "proving that the angle is approximately in the range is not the same thing as establishing that the angle is actually in the claimed range. The burden is on [the Requester] to establish that the angle is actually in the claimed range." (RAN 12). The Requester argues that even if the angle from Figure 9 of Auray cannot be relied upon, the text of Auray is sufficient to establish obviousness of claim 6 (App. Br. 12). In this regard, the Requester argues that "the grounding tang 23 must actually be angled outward from the longitudinal axis of the connector assembly 10, because Auray teaches that the snap fit retaining ring is a 'frustro-conically shaped cup-like member.'" (Id. at 14, citing Auray, col. 2, ll. 44–49). The Requester further argues that "the disclosure of an angle which was 'close enough' to the claimed range would have been sufficient for a prima facie case of obviousness." (Id. at 15, citing MPEP 2144.05(I) and Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985)). While we do not agree with the Requester that the angle of 105° can be determined from Figure 9 of Auray, we do agree that in view of what Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 11 Figure 9 reasonably discloses, together with Auray's disclosure of a frusto- conically shaped retaining ring 18, the invention of claim 6 would have been obvious to one of ordinary skill in view of Auray and Neuroth. Drawings can be relied upon for what they reasonably disclose and suggest to one of ordinary skill in the art, and Figure 9 of Auray reasonably discloses an angle slightly greater than 90°. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re Heinrich, 268 F.2d 753, 755–56 (CCPA 1959). Neuroth establishes that it was known to provide a grounding tang (gripper arm 26) including an integral leg portion (hooked end 32) that is bent outwardly at an angle from the grounding tang to contact the outlet box (Neuroth, Fig. 6; col. 2, ll. 59– 65; see also Figs. 1, 11). The retaining ring (insert 24) of Neuroth is cylindrical and the integral leg portion extends generally radially outwardly from the grounding tang to contact the outlet box (Neuroth, Fig. 6). However, the retaining ring of Auray is frusto-conical in shape (Auray, Figs. 1, 4, 5, 8, 9; col. 2, ll. 44–49). When a leg portion is provided in Auray's grounding tang in the manner taught by Neuroth, it would have been obvious to provide it at an angle slightly greater than 90° to allow for contact with the outlet box. The proposed rejection is that of obviousness, and the proper inquiry is whether claim 6 would have been obvious to a person of ordinary skill in the art in view of Auray and Neuroth. The fact that the recited angle range is not explicitly disclosed is not dispositive. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418–19 (2007) ("the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 12 can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."); In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not . . . that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). It would have been obvious to angle a provided leg portion (such as that taught in Neuroth) relative to the grounding tang based on the angle of the grounding tang so as to increase contact with the surface of the outlet box. Thus, we agree with the Requester that in view of the teachings of Auray, both in its drawings and the text of its specification as to the frusto- conical shape which results in angling of the grounding tang at an angle slightly greater than 90°, the recited angling of claim 6 would have been obvious to one of ordinary skill (App. Br. 11, 15; Reb. Br. 3). While it is unclear whether the prior art discloses an angle within the range of 100° and 115°, the disclosure of the grounding tang at an angle slightly greater than 90° is very clear. We discern no unobvious significance of the recited range other than to account for the frusto-conical shape of the recited retaining ring. As discussed, such frusto-conical shape and angling of the grounding tang is disclosed in Auray, and accommodation therefor in provision of a leg portion would have been obvious to one of ordinary skill. Based on Auray's disclosure that "the free ends of the grounding tangs 23 are biased in engagement with the internal periphery of the knockout hole 14," the Patent Owner argues that Auray teaches away from adding the leg portion as proposed (Resp. Br. 6, quoting Auray, col. 3, ll. 62-64). Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 13 However, we discern nothing in Auray that would have discouraged a person of ordinary skill in the art from the path proposed. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . .."). We agree with the Requester that "[b]ecause modifying Auray by adding a bent leg portion . . . would actually increase the amount of mechanical contact between the grounding tangs and the junction box, a person of ordinary skill in the art would [have been] motivated to modify the grounding tang 23 with an additional leg portion." (Reb. Br. 4). Indeed, during the reexamination, the Examiner also found provision of legs would have been obvious (see ACP 5). 12 The Patent Owner also argues that the angle shown in Auray is measured with "the grounding tang 23 in a biased position, wherein it is compressed inwardly by the periphery of the knockout hole," and there is no way to determine the angle when the grounding tang is unbiased (Resp. Br. 6–7). However, claim 6 does not require the recited angle range to be measured when the grounding tang is unbiased (see also Reb. Br. 4), and we also fail to see how this establishes nonobviousness of the recited angle range for the reasons already discussed. 12 In rejecting claim 1, which has been canceled, the Examiner stated "[i]t would have been obvious to modify Auray to use the hooked ends on the grounding tangs, to improve the mechanical contact of the grounding tangs with the electrical box. In addition, it would have been a simple substitution of one known grounding element for another (see the discussion on pages 25 and 26 of the request)." (ACP 5). Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 14 The Patent Owner further argues that, whereas the device of Auray includes radially outwardly extending flange 13, which functions as a stop to limit the insertion of the connector body 11, modifying the device of Auray in the manner proposed would negate this teaching and is not a simple replacement (Resp. Br. 7, citing Auray, col. 3, ll. 28–32). However, as noted by the Requester and agreed to by the Examiner (see ACP 20–21), Neuroth shows that both a flange and leg portions of grounding tangs can be in contact with an outlet box so that the leg portions "are not required to extend between an outlet box and a flange" due to openings in the flange (Reb. Br. 5). It is also not apparent why it would not have been obvious to alternatively eliminate the flange, the function thereof being performed by the leg portion, or to reposition the flange so that the flange abuts against the leg portions, which in turn, abuts against the outlet box. The Patent Owner further argues that Neuroth's gripping arms 26 secure the parts of the Neuroth connector and thus, are equivalent to Auray's arms AA (Resp. Br. 7). However, as found by the Examiner, 13 the gripping arms also function as grounding tangs (ACP 5; see also Reb. Br. 5–6). Therefore, in view of the above, we agree with the Requester that claim 6 would have been obvious in view of the combination of Auray and Neuroth. We reverse the Examiner's determination to the contrary and denominate the rejection as a new ground. 13 In rejecting claim 1, which has been canceled, the Examiner stated "[w]hile Neuroth does not explicitly state that gripper arms are grounding tangs, the examiner notes that the gripper arms are metallic and contact the electrical box, which is grounded. As such, it is clear that gripper arms 26 perform a grounding function." (ACP 5). Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 15 Proposed Rejection B Claim 3 depends on claim 6 and further recites "wherein said retainer tab includes a U-shaped cut therein; and a retainer tang formed by said U- shaped cut and bent inward radially of said snap fit retaining ring having said frusto-conical configuration." (App. Br., Claims App.). Claim 4 depends from claim 3 and recites "an opening on said leading end portion of said connector body for receiving said inward bent retainer tang of said snap fit retaining ring." (Id.). The Requester argues that these claims are also unpatentable because "Gretz ‘939 discloses a U-shaped cut defining a retainer tang 18 that is bent inwardly," and "[t]he substitution of the retaining structure of Gretz ‘939 (i.e. a retainer tang 18 on the retaining ring, and an aperture 20 on the connector body) for the ring retaining structure of Auray (i.e. a slot 21 in the retaining ring, and a lug 17 on the connector body) is a simple replacement with no complexity," which would have been obvious to a person of ordinary skill (App. Br. 16–17). The Patent Owner argues that in Gretz, openings 30 and locking tab 18 are "lanced from the body of the blank" so there is no disclosure of a U- shaped cut being formed within a retainer tab, or a retaining tang 18 (i.e., locking tab) within a retainer tab (Resp. Br. 8, quoting Gretz, col. 3, ll. 12– 13). Thus, the Patent Owner asserts that even if the ring of Auray were modified according to Gretz, the retaining tang would be formed directly in the blank or ring of Auray (Resp. Br. 8). Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 16 This argument is unpersuasive because it argues the references separately. In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986). As noted by the Requester (Reb. Br. 6–7), Auray already discloses a retainer tab (i.e., each of arms AA) including a feature (i.e., retaining slot 21 that engages lug 17) for securing the retaining ring and the connector body together (Auray, col. 4, ll. 12–19; Fig. 1). The proposed rejection modifies this retention feature of Auray to instead provide in each of its arms AA, retainer tang 18 formed via a U-shaped cut as disclosed in Gretz, which engages a corresponding aperture. In this regard, the Examiner also previously rejected the Patent Owner's argument along the same lines (ACP 23). 14 Therefore, in view of the above, we agree with the Requester that claims 3 and 4 would have been obvious in view of the combination of Auray, Neuroth and Gretz, and reverse the Examiner's determination to the contrary, denominating the rejection as a new ground. Proposed Rejections C to J Proposed Rejections C to J are all based on Auray in combination with an alternative secondary reference: Moran, Paskert, Stikeleather or 14 In addressing the Patent Owner's arguments against the combination of Auray and Gretz, the Examiner agrees "that it would have been obvious to modify Auray by replacing the cutout 21 and nub 17 with the structure of Gretz, that includes a U-shaped cutout to form tang 18, which is bent inwardly, as it is merely a simple substitution of one known engaging mechanism for another. The arrangement of Gretz and the arrangement of Auray are disclosed to perform the same function, to attach a snap ring to a body in a cable. As such, the two structures are functional equivalents and the combination satisfies the simple substitution rationale of KSR, rationale B." (ACP 23). Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 17 Pyron. All of the proposed rejections of dependent claims 3 and 4 also rely on Gretz. The alternative secondary references disclose, and are relied upon for disclosing, a grounding tang having an integral leg portion, just like Neuroth in Proposed Rejections A and B discussed supra. In this regard, the issues raised and arguments proffered with Proposed Rejections C to J are substantively identical to those in Proposed Rejections A and B (see generally, RAN 6–10, 13–16; App. Br. 17–29; Resp. Br. 8–14). Correspondingly, we also reverse the Examiner's refusal to adopt the Proposed Rejections C to J for substantially the same reasons already discussed, and denominate them as new grounds of rejection. Alternative Analysis: Proposed Rejections I and J In the above analysis, we referred to the drawings of Auray as reasonably disclosing an angle of the grounding tang slightly greater than 90°. However, as discussed infra, the drawings need not be relied upon to reach the conclusion of obviousness. In addition, as we also noted supra, it would have been obvious to alternatively eliminate the flange of Auray in combining the teachings of Auray and the secondary references so that the function of the flange of Auray would be performed by the leg portion. We further enter a new ground of rejection as to Proposed Rejections I and J based on such alternative analysis. As discussed earlier, Auray's description of the snap fit retaining ring 18 as being "frusto-conically shaped" (see Auray, col. 2, ll. 44–49) implies that the grounding tangs 23 necessarily extend at angles in the range greater than 90° and less than 180° relative to an outer surface of a wall of an Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 18 electrical box 15 when the connector assembly is inserted into a knockout hole 14 in the wall (see App. Br. 14–15). This range encompasses grounding tangs extending at angles in the range of 100° to 115° relative to the outer surface of the wall. The overlapping of the ranges implies that it would have been prima facie obvious to design the grounding tangs 23 of Auray's electrical connector assembly 10 so as to extend at angles in the range of 100° to 115° relative to an outer surface of a wall of an electrical box 15 when the connector assembly is inserted into a knockout hole 14 in the wall. See In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003). Proposed Rejections I and J rely on Pyron, which describes an electrical connector 10 used to connect a cable 12 to a knockout hole 14 in a wall 16 of an electrical enclosure 18 (see Pyron, para. 19 and Fig. 20) as well as to provide electrical continuity (that is, a grounding path) between a sheath of the cable 12 and the electrical enclosure 18 (see Pyron, para. 20). The electrical connector 10 includes a one-piece connector body 22 made of a conductive metal. The electrical connector 10 has a leading or forward end 24 and a trailing or rearward end 26 (see Pyron, para. 20 and Fig. 1; see also id., para. 22 and Fig. 2 (teaching that the connector body is fabricated from a metallic, one-piece blank)). Pyron's one-piece connector body 22 defines a face portion (that is, the circular forward end 24) and a plurality of inwardly-deflectable side walls 29 that cooperate to enable the connector body 22 to snap fit into a knockout hole 14 (see Pyron, para. 20; see also id., paras. 7 and 28; Figs. 1 and 9). The plurality of inwardly-deflectable side walls 29 together define a generally cylindrical wall 28. The generally cylindrical wall 28 encompasses a connector interior 30 communicating with Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 19 a central opening 32 in the forward end 24 for the passage of electric wires (see Pyron, para. 20; Figs. 1, 15 and 19). Pyron’s electrical connector 10 also includes front tabs 34a and back tabs 34b punched from the side walls 29 of the connector body 22 (see Pyron, paras. 20 and 23). As depicted in Figures 1, 7 and 19 of Pyron, each front tab 34a extends rearwardly and outwardly from the cylindrical wall 28 defined by the side walls 29. Each back tab 34b likewise includes an inner portion extending rearwardly and outwardly from the cylindrical wall 28. Each back tab 34b also includes an integral outer or leg portion. Pyron also teaches forming inwardly directed fingers 36 for maintaining a cable 12 in mechanical and electrical engagement with the electrical connector 10 (see Pyron, paras. 25, 29, 32 and 33). As depicted in Figures 14–19, these fingers 36 are defined by U-shaped cuts in two of the side walls 29 making up the cylindrical wall 28 of the electrical connector 10. The fingers 36 constitute retainer tangs formed by the U-shaped cuts that are bent radially inwardly of the electrical connector 10 for engagement with the cable 12 (see Pyron, para. 25). The external surface of the cable 12 as depicted in Figures 1 and 20 has a helical convolution 12b defining a groove or opening 12a for receiving the inwardly bent retainer tangs (that is, the inwardly bent fingers 36) of the electrical connector 10. The receipt of the fingers 36 in the grooves of the cable 12 provides strain relief against forces tending to pull the cable 12 out of the electrical connector 10; and enhances the grounding connection between the cable 12 and the electrical connector 10 (see Pyron, paras. 29, 30, 32 and 33). Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 20 When the electrical connector 10 is inserted through a knockout hole 14 in a wall 16 of an electrical enclosure 18 as depicted in Figures 1 and 20 of Pyron, the portion of the wall immediately surrounding the knockout hole is captured between the front tabs 34a and the back tabs 34b. Pyron teaches that the "cylindrical wall 28 inwardly deflects to allow insertion into the knockout 14. Front tabs 34a pass through the knockout so that the front tabs 34a abut against the inside surface of wall 16 while the rear tabs 34b abut against the outside surface of wall 16." (Pyron, para. 28). The fact that the leg portions of the rear tabs 34b abut against the wall 16 when the electrical connector 10 is inserted into the knockout hole 14 implies that the leg portions act as a stop to limit how far the electrical connector can be inserted through the knockout hole. Pyron teaches that the electrical connector 10 provides electrical continuity, that is, a grounding path, between the sheath of the cable 12 and the electrical enclosure 18 through the front and rear tabs 34a, 34b (see Pyron, paras. 20 and 29). In this sense, the rear tabs 34b act as grounding tangs. The integral leg portions of the rear tabs 34b as depicted in Figure 19 of Pyron are bent outwardly at an angle from the remainder of the grounding tangs, that is, the remainder of the rear tabs 34b. As depicted in Figure 1 of Pyron, the leg portions of the rear tabs 34b make flush contact with the outside surface of the wall 16 of the electrical enclosure 18. Thus, Auray and Pyron describe similar devices, namely, electrical connectors designed to connect electrical cables to electrical boxes; and to provide ground paths from sheaths of the electrical connectors to the electrical boxes. The grounding tangs 23 of Auray's electrical connector Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 21 assembly 10 and the rear tabs 34b of Pyron's electrical connector 10 are similar in structure and perform similar functions, namely, providing at least portions of grounding paths from the electrical cables to the electrical boxes. The flange 13 of Auray's connector body 11 and the leg portions of Pyron's rear tabs 34b perform similar functions, that is, abutment against the outside surfaces of electrical boxes; and do so in similar ways, namely, by flush contact. In view of the teachings of Pyron, it would have been obvious to replace the combination of the straight grounding tangs 23 and the separate flange 13 described by Auray with grounding tangs having outwardly extending leg portions for abutting against an outside surface of an electrical box (see ACP 40; Request 121). Pyron would have provided both sufficient guidance to one of ordinary skill in the art to implement this substitution and a reasonable expectation that the substitution would have been successful. The Patent Owner argues that Auray taught away from the proposed substitution. The Patent Owner argues that substituting grounding tangs having outwardly bent leg portions would have prevented the flange 13 from abutting the electrical box 15 when the electrical connector assembly 10 was inserted into a knockout hole 14 (see Resp. Br. 7). Rather than a teaching away, the opportunity to use the leg portions of the modified grounding tangs, rather than the flange 13, to abut against the wall of the electrical box 15 to act as an insertion stop would have been a reason to make the proposed substitution rather than a reason not to make the substitution. The proposed substitution would have provided one of ordinary skill in the art opportunity to eliminate the flange 13 and transfer its function to the leg portions of the grounding tangs. Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 22 To the extent one of ordinary skill in the art might have required additional reason for making this substitution beyond any simplification in structure, which the substitution would have provided, the Requester correctly argues that "a person of ordinary skill in the art would [have] underst[ood] the relationship between mechanical contact between the connector and the junction box[,] and good electrical continuity." (Reb. Br. 13). In other words, one of ordinary skill in the art would have understood, as a matter of common sense, the elementary principle that increased contact area would improve the electrical continuity between two electrically conductive parts. In view of this principle: One of ordinary skill in the art would [have] look[ed] to Pyron for teaching a grounding tang having an integral leg portion bent outwards so as to provide additional surface contact between the grounding tang and the panel or junction box so as to provide good electrical continuity and low millivolt drop between the fitting and the junction box. (Request 121; see also Reb. Br. 13). Figure 9 of Auray depicts relatively little contact area between the grounding tangs 23 and the wall of the electrical box 15. Figure 1 of Pyron, on the other hand, depicts flush contact between the outer or leg portions of the rear tabs 34b and the wall 16 of the electrical enclosure 18. It would have been obvious to one of ordinary skill in the art to increase the limited contact area between the grounding tangs 23 and the electrical box 15 described by Auray and, to some extent, incorporate the teaching to bias the free ends of the grounding tangs 23 into engagement with the internal periphery of the knockout hole 14, by replacing Auray's straight grounding Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 23 tangs 23 and flange 13 with grounding tangs having leg portions extending parallel to the outside surface of a wall of an electrical box when the electrical connector assembly was inserted into a knockout hole through the wall. Flush contact between the leg portions and the wall of the electrical box would have increased the contact area between the grounding tangs and the electrical box, thereby improving electrical continuity (see Reb. Br. 4). The Patent Owner argues that Auray taught away from the proposed substitution by teaching that one should bias the free ends of the grounding tangs 23 into engagement with the internal periphery of the knockout hole 14 in order to place the free ends of the grounding tangs into engagement with the electrical box 15 (see Resp. Br. 6 and 13; see also Auray, col. 3, ll. 57–64). The Patent Owner does not identify any functional difference between electrical contact between the grounding tangs and the internal periphery of a knockout hole, as described in Auray, and electrical contact between the grounding tangs and the portion of the outside wall surrounding the knockout hole. One of ordinary skill in the art desirous of increasing the contact area between the grounding tangs of an electrical connector assembly and a wall of an electrical box would have had reason to prefer flush contact between leg portions of modified grounding tangs and the outside surface of a wall surrounding a knockout hole over line contact between end portions of straight grounding tangs and the internal periphery of a knockout hole. The Patent Owner's argument that Auray taught away from the proposed substitution is not persuasive. As mentioned earlier, it would have been obvious from the disclosure of Auray to design the grounding tangs 23 of Auray's electrical connector Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 24 assembly 10 so as to extend at angles in the range of 100° to 115° relative to an outer surface of a wall of an electrical box 15 when the connector assembly is inserted into a knockout hole 14 in the wall. Combining the teachings of Auray and Pyron, it would have been obvious to replace the straight grounding tangs 23 and flange 13 of Auray's electrical connector assembly 10 with modified grounding tangs extending at angles in the range of 100° to 115° relative to an outer surface of a wall of an electrical box 15; and which terminated in outwardly integral, bent leg portions extending parallel to the outside surface of a wall of the electrical box, when the connector assembly was inserted into a knockout hole 14 in the wall. Such modified grounding tangs would have satisfied the limitation whereby at least one of the grounding tangs included "an integral leg portion bent outward at an angle from said grounding tang, said angle of said leg portion of said grounding tang with respect to said grounding tang [being] between 100 and 115 degrees." The modified electrical connector assembly as a whole would have satisfied all limitations of claim 6. The Patent Owner has not identified any objective evidence, such as evidence of unexpected results, which rebut the evidence demonstrating the obviousness of the claimed invention. Thus, claim 6 is also unpatentable under § 103(a) over the combined teachings of Auray and Pyron under the alternative analysis discussed above. To the extent that dependent claims 3 and 4 differ in scope from independent claim 6, the findings and conclusions regarding the modification of the arms AA and the lugs 17 of Auray's electrical connector assembly 10 in view of the teachings of Gretz is applicable as discussed supra. The Requester's arguments regarding claims Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 25 3 and 4 find additional support in Pyron’s teachings regarding the fingers 36 of the electrical connector 10, which are formed by U-shaped cuts in the side walls 29; and which are bent radially inwardly of the electrical connector 10 for receipt in the groove or opening 12a of the cable 12. On these bases, claims 3 and 4 are also unpatentable under § 103(a) over the combined teachings of Auray, Pyron and Gretz. CONCLUSION The Examiner's refusal to adopt Proposed Rejections A–J is REVERSED, and the proposed rejections are denominated as New Grounds of Rejection. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. §§ 1.956. REVERSED; 37 C.F.R. § 41.77(b) This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b), which provides that "[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 26 For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)–(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. … Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected." Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board's opinion reflecting its Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 27 decision to reject the claims and the patent owner's response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The examiner, after the Board's entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board's rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). Appeal 2014–008599 Reexamination Control 95/001,982 Patent US 7,060,900 B1 28 alw Patent Owner: The Jackson Patent Group, LLC 1500 Forest Avenue, Suite 212 Richmond, VA 23229 Third Party Requester: John F. Klos Briggs and Morgan P.A. 2200 IDS Center; 80 South 8 th Street Minneapolis, MN 55402 Copy with citationCopy as parenthetical citation