Ex Parte KnaptonDownload PDFPatent Trial and Appeal BoardJul 29, 201613259631 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/259,631 09/23/2011 22879 7590 08/02/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Edward Douglas Knapton 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82848290 8251 EXAMINER HAMMOND, BRIGGITTE R ART UNIT PAPER NUMBER 2833 NOTIFICATION DATE DELIVERY MODE 08/02/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD DOUGLAS KNAPTON Appeal2015-001458 Application 13/259,631 Technology Center 2800 Before MICHAEL P. COLAIANNI, MONTE T. SQUIRE, and DEBRA L. DENNETT, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals the Examiner's final rejection of claims 1-3, 5-8, and 9-17. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellant identifies Hewlett-Packard Development Company, LP as the Real Party in Interest. App. Br. 3. Appeal2015-001458 Application 13/259,631 The Claimed Invention Appellant's disclosure relates to a modular network connector configured to receive a network plug of a cable comprising a base and a moveable member, wherein the base includes a plurality of connection pins and network conductors and the moveable member is rotatably coupled to the base. Abstract. Claims 1 and 9 are representative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 13, 14) (emphasis added): 1. A modular network connector configured to receive a network plug of a cable, comprising: a base including a plurality of connection pins and network conductors on a bottom face, the base includes two opposing sides extending away from the bottom face at an angle; and a moveable member rotatably coupled to the base, the moveable member configurable to a first position in which the movable member extends parallel to and away from the bottom face of the base, and configurable to a second position substantially perpendicular to the base, wherein when in the second position the base and moveable member are configured to electrically and mechanically receive the network plug of a cable insertable parallel to the base. 9. A modular network connector comprising: a collapsible portion further comprising: a rotatable member having a first side, an opposing second side and third side between the first side and opposing second side; a base having a bottom face and two opposing sides extending from the base at an angle; wherein the opposing second and third sides of the rotatable member are coupled to the two opposing sides of the base; and a plurality of connection pins configured to releasably electrically couple to a network plug, wherein the plurality of 2 Appeal2015-001458 Application 13/259,631 connection pins additionally electrically couple to a printed circuit board, wherein the plurality of connection pins are positioned on the bottom face of the base, wherein the rotatable member is extended away from the bottom face of the base when the rotatable member is in a collapsed position. The References The Examiner relies on the following prior art in rejecting the claims on appeal: Chiba et al., US 6,005,774 Dec. 21, 1999 (hereinafter "Chiba") Liao us 6,142,834 Nov. 7, 2000 Wong US 6,398,564 B 1 June 4, 2002 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1-3 and 5-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wong in view of Chiba. 2. Claims 9-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wong and Chiba in view of Liao. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner's rejections for the reasons set forth in both the Answer to the Appeal Brief dated September 3, 2014 and the Final Office Action dated December 10, 2013, which we adopt as our own. Nevertheless, we highlight and address specific findings and arguments for emphasis as follows. 3 Appeal2015-001458 Application 13/259,631 Rejection 1 Appellant argues claims 1-3 and 5-8 as a group. We, therefore, select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the combination of Wong and Chiba suggests all of claim 1 's limitations and would have rendered claim 1 obvious. Final Act. 2, 3. The Examiner finds that Wong discloses nearly all of claim 1 's limitations, except that it does not disclose "the movable member extending parallel to and away from the base," as recited in the claim. Id. at 2. The Examiner, however, relies on Chiba for teaching this missing limitation. Id. In particular, the Examiner finds that Chiba discloses "a network connector 310 having a base (at 312 in fig[.] 6), a movable member 306 wherein the movable member extends parallel to and away from the base." Id. Based on the above findings, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention "to provide vVong with an extension that extends parallel as taught by Chiba et al. [in order] to accommodate various size plugs, i.e. thicker, larger, RJ45, RJI 1." Ans. 4; Final Act. 2. Appellant argues that the Examiner's rejection should be reversed because the "Wong Patent teaches away from the proposed modification including a movable member extending away from the bottom surface of the base," as required by claim 1. App. Br. 9. In particular, Appellant contends that the "Wong Patent and the Chiba Patent ... us[ e] fundamentally different structural configurations" and that the "proposed Wong/Chiba connector would no longer address the limited space objectives achieved by connector 100 of the Wong Patent." Id. 4 Appeal2015-001458 Application 13/259,631 We are not persuaded by Appellant's arguments because Appellant does not identify sufficient evidence in the record to support them, and we will not read into the references a teaching away where no such language exists. Cf DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellant's conclusory assertion that the proposed modification "would no longer address the limited space objectives achieved by connector 100 of the Wong Patent," without more, is insufficient to establish that Wong teaches away from the proposed modification. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellant also does not identify any teaching in Wong or Chiba which discourages one of ordinary skill in the art from a connector including a movable member extending parallel and away from the bottom face of the base, as claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (finding that there is no teaching away where the prior art's disclosure "does not criticize, discredit, or otherwise discourage the solution claimed"). Indeed, none of the portions of Wong and Chiba that Appellant relies on and identifies at pages 7 and 8 of the Appeal Brief teaches away from the proposed modification. See Wong, col. 3, 11. 9-11, 57-59, col. 4, 11. 45-57, col. 5, 11. 55-57; Chiba, col. 2, 11. 52-57, col. 3, 11. 9-14, col. 4, 1. 21, Figs. 4--8. Moreover, Appellant's argument regarding Wong and Chiba having "different structural configurations" (App. Br. 9) is not well taken because the mere fact that there may be certain differences between the two references, without more, is insufficient to establish a teaching away such that Wong and Chiba cannot be combined. In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992); cf also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to 5 Appeal2015-001458 Application 13/259,631 combine their specific structures."); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."). Appellant argues that "the Examiner has not established a prima facie case of obviousness" because the there is no motivation to combine "the Chiba Patent with the Wong Patent." App. Br. 10. In particular, Appellant argues that "there is no motivation to combine the extension of the movable housing 306 of the Chiba Patent with the connector 100 of the Wong Patent." Id. We do not find Appellant's argument persuasive. On the contrary, based on the record before us, we find that the Examiner's findings regarding Wong's and Chiba's combined teachings and stated rationale for why one of ordinary skill would have combined these teachings to arrive at the claimed invention, as set forth at pages 2 and 3 of the Final Office Action and pages 3 and 4 of the Answer, are supported by a preponderance r'" • .. .. "1 "1 "1 , "1 • "1 • ') "TT T "1 Al "1 Al -1 or ev10ence ana oasea on souna tecnmca1 reasomng.~ wong, col. 4, L 41, Figs. 1 and 2A; Chiba, Figs. 5, 6. We also concur with the Examiner's conclusion (Ans. 4) that it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of Wong and Chiba to arrive at the 2 Although we decline to enter a new ground of rejection in this Appeal, we observe that on the record before us the Chiba reference seems to be the closest prior art of record to Appellant's claimed invention and that, perhaps upon further examination, may well anticipate claim 1 under 35 U.S.C. § 102(b }-since it, alone, appears to disclose all of the limitations of the claim. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (To serve as an anticipatory reference "the reference must disclose each and every element of the claimed invention, whether it does so explicitly or inherently."). 6 Appeal2015-001458 Application 13/259,631 claimed invention, and the Examiner's finding (id.) that one of ordinary skill would have been motivated to do so in order to "accommodate various size plugs." The Examiner finds that Chiba's extension with a longer length would accommodate thicker, larger plugs such as "RJ45" or "RJI 1." Ans. 4. Although Appellant contends that Wong already solves the problem of accommodating various size plugs (Reply Br. 3), Appellant's arguments do not address the Examiner's reasonable finding that a longer extension would permit the accommodation of larger plug sizes. Appellant fails to direct us to adequate evidence or provide a persuasive technical explanation to show why the Examiner's articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. Appellant's disagreement with the Examiner's reason for combining the references, without more, is insufficient to establish reversible error in this regard. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed); cf also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of disagreement ... as to the existence of factual disputes do not amount to a developed argument."). Accordingly, we affirm the Examiner's rejection of claims 1-3 and 5-8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Wong and Chiba. Rejection 2 Appellant argues claims 9-17 as a group. We select claim 9 as representative, and claims 10-17 stand or fall with claim 9. 3 7 C.F .R. § 41.37(c)(l)(iv). 7 Appeal2015-001458 Application 13/259,631 The Examiner finds that the combination of Wong, Chiba, and Liao suggests all of the limitations of claim 9 and would have rendered claim 9 obvious. Final Act. 3, 4. The Examiner finds that the combination of Wong and Chiba discloses the majority of claim 9's limitations, but that it does not disclose "a plurality of connection pins being additionally electrically coupled to a printed circuit board (PC)." Id. at 3, 4. The Examiner, however, relies on Liao for disclosing that limitation. Id. at 4. In particular, the Examiner finds that Liao discloses "a modular network connector having a plurality of connection pins being additionally electrically coupled to printed circuit board 6." Id. at 4 (citing Liao, Fig. 13). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention "to modify the connector of Wong by providing the plurality of connection pins being electrically coupled to a printed circuit board as part of the circuitry as taught by Liao." Final Act. 4. Appellant argues that the Examiner's rejection should be reversed because the "cited references, either alone or in combination, do not teach or suggest that the rotatable member is extended away from the base when the rotatable member is in a collapsed position as required by independent claim 9" and that the references "do not teach or suggest, that in the first position the moveable member extends in a same plane as the base in a first direction away from the base as recited in independent claim 15." App. Br. 11. We do not find these arguments persuasive. On the record before us and contrary to what Appellants' argue, the Examiner's findings (Final Act. 2, 3, 5; Ans. 4, 5) that the combination of Wong, Chiba, and Liao suggests all of the limitations of both claims 9 and 15, respectively, are supported by 8 Appeal2015-001458 Application 13/259,631 a preponderance of evidence and based on sound technical reasoning. Wong, col. 4, 1. 41, Figs. 1 and 2A; Chiba, Figs. 5, 6; Liao, Fig. 13. As the Examiner found with respect to claim 9' s "wherein the rotatable member is extended away ... when the rotatable member is in a collapsed position" limitation (Ans. 4; Final Act. 3, 4), Wong discloses the rotatable member 20 being in an upright position and in a collapsed position (Wong, Figs. 1and2A) and Chiba discloses a network connector 310 having a rotatable member 306 extending away from a bottom face of the base at 312, wherein the rotatable member 306 is extended away from the base when the rotatable member is in a collapsed position (Chiba, Figs. 5 and 6). As the Examiner further found (Ans. 5; Final Act. 5), Chiba's moveable member 306 also reads on claim 15's "wherein in the first position the moveable member extends in a same plane as the base in a first direction away from the base" limitation. Chiba, Figs. 5 and 6. We discern no reversible error in the Examiner's factual findings in this regard. We also discern no reversible error in the Examiner's analysis and conclusion with respect to both claims 9 and 15 (Ans. 4, 5) that it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of the cited references to arrive at Appellant's claimed invention in order "to aid in accommodating various size plugs." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. at 420. Appellant's conclusory arguments that the "cited references ... do not teach or suggest" the limitations of claims 9 and 15 (App. Br. 11 ), without more, are insufficient to rebut or otherwise establish reversible error in the Examiner's conclusions and analysis in this regard. De Blauwe, 736 F.2d at 705; cf also In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011) (holding 9 Appeal2015-001458 Application 13/259,631 that a "naked assertion" that the references fail to disclose or suggest a claim limitation is not an argument in support of separate patentability). Accordingly, we affirm the Examiner's rejection of claims 9-17 under 35 U.S.C. § 103(a) as unpatentable over the combination of Wong, Chiba, and Liao. DECISION/ORDER The Examiner's rejections of claims 1-3, 5-8, and 9-17 are affirmed. It is ordered that the Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 10 Copy with citationCopy as parenthetical citation