3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Oct 23, 2020

2019005455 (P.T.A.B. Oct. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/819,142 11/21/2017 Vincent Tan 74344US008 1316
32692 7590 10/23/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PATEL, HARSHAD C
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
10/23/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VINCENT TAN, KOK HOE LEE, RAO VITTAPALLI,
YUNLONG QIAO, and SAUJIT BANDHU

Appeal 2019-005455
Application 15/819,142
Technology Center 2800
____________

Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 2. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as 3M
Company. Appeal Br. 2.
Appeal 2019-005455
Application 15/819,142

2
Appellant’s invention is directed to connectors suitable for data
transmission between various devices including computer peripherals (Spec.
1: 4−5; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. An electrical connector comprising a unitary insulative
housing defining an elongated slot bound by opposing first and
second major surfaces, a blade removably attached to the housing
and extending from a back surface of the slot toward a front of
the slot and disposed between and spaced apart from the first and
second major surfaces, a first plurality of contacts disposed on
the first major surface and facing the blade, and a second
plurality of contacts disposed on the second major surface and
facing the blade.
Appellant appeals the following rejections:
1. Claims 1 and 2 are rejected under 35 U.S.C. § 103 as
unpatentable over Yi (US 7,445,505 B1, issued Nov. 4, 2008) in
view of Yang (US 2013/02733774 A1, published Oct. 17, 2013).
2. Claims 1 and 2 are rejected under 35 U.S.C. § 103 as
unpatentable over Takano (US 2006/0276060 A1, published
Dec. 7, 2006) in view of Yang.

FINDINGS OF FACT & ANALYSIS
Rejection (1)
The Examiner’s findings and conclusions regarding the rejection of
claim 1 over Yi in view of Yang are located on pages 3 to 4 of the Final
Action. The Examiner finds Yi teaches the limitations of claim 1 except for
the blade removably attached to the housing (Final Act. 3). The Examiner
finds Yang discloses a contact module as a blade, which is removably
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attached to a housing 10 (Final Act. 3). The Examiner concludes it would
have been obvious to have Yi’s blade 17 removably attached to the housing
as taught by Yang in order to make repair of a broken blade easier and less
costly (Final Act. 4). Citing the Board’s interference decision Nerwin v.
Erichman, 168 USPQ 177, 179 (BPI 1969), the Examiner further finds that
combining Yang’s removable blade with Yi would have been obvious
because constructing a formerly integral structure in various elements
involves only routine skill in the art (Final Act. 3).
Appellant argues the Examiner’s combination of Yang’s blade on the
contact module 30 is flawed because the Examiner has not shown that a
person of ordinary skill in the art would have considered Yang’s contact
module to correspond to element 17 of Yi, which the Examiner finds to be a
blade (Appeal Br. 3). Appellant contends the Examiner’s rejection lacks a
reason for the modification other than impermissible hindsight (Appeal Br.
3, 4). Appellant argues the Examiner’s reasoning for making Yi’s blade
removable based upon making the blade 17 easier to repair fails to establish
that the ordinarily skilled artisan would have been concerned with damage to
blade 17 relative to elements 14 and 15 (Appeal Br. 3). Regarding the
Examiner’s citation to Nerwin, Appellant argues the Board’s decision in that
case does not establish a per se rule that constructing a formerly integral
structure in various elements would have been obvious (Appeal Br. 4).
Appellant contends the Examiner’s reasoning (i.e., ease of repair) fails to
provide rational underpinning to support the Examiner’s reliance on the
Nerwin holding that constructing a formerly integral structure in various
elements involves only routine skill in the art (Appeal Br. 4).
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The Examiner responds that Yi’s element 17 is the front face of
middle flange 16 which corresponds to the blade recited in claim 1 (Ans. 3).
The Examiner determines that it would have been obvious to make Yi’s
flange 16 (i.e., blade) removably attachable to the housing in order to permit
replacement of only the blade portion if only the blade is damaged (Ans. 4).
The Examiner responds that a reason for the combination was provided in
the replacement time reduction and lower material cost (Ans. 6).
We have fully considered the Examiner’s findings and conclusions
and Appellant’s arguments. We determine that the Examiner has engaged in
impermissible hindsight in concluding that it would have been obvious to
make Yi’s flange 16 removable. Appellant properly points out that the
Examiner has not indicated any problem or concern with Yi’s flange 16.
Rather, the Examiner’s conclusion is based on the ease of replacing flange
16 when it is made to be removable (Final Act. 4). The Examiner’s
conclusion is based on Yang’s teaching that “the contact module (as blade)
is removably attached to the housing 10.” (Final Act. 3). Yang teaches a
combination electrical connector wherein a contact module 30 is made to
nest inside of a metal shielding shell 20 inside of an insulated housing 10
(Yang ¶¶ 17, 20-21). The Examiner provides no citation or explanation
regarding how Yang’s disclosure regarding contact module 30 constitutes a
blade (Final Act. 3). The Examiner is referring to the entirety of Yang’s
contact module 30 as the blade.
Yang’s structure of contact module 30 is similar to Yi’s disclosure of
an electrostatic discharge (ESD) protected plug having an insulated housing
10 surrounded by a metal shield 30 surrounding the insulated housing 10
(Yi, col. 2, ll. 52-62; col. 3, ll. 4−14; Fig. 3). Yang uses the contact module
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Application 15/819,142

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as in insert in the insulated housing of the combination electrical connector.
Yang does not make any blade removable on the contact module and the
Examiner does not find that Yang would have suggested making a
removable blade on the contact module (Final Act. 4). Rather, the Examiner
finds that Yang’s contact module 30 is the blade (Final Act. 3). It is unclear
how Yang’s contact module 30 being removable from insulated housing 10
would have suggested making a flange on Yi’s ESD plug removable. The
Examiner has not established that the teachings of Yang and Yi would have
suggested making Yi’s flange 16 on the ESD plug removable. As argued by
Appellant, the Examiner has not shown that Yang’s contact module 30
corresponds to element 17 of Yi (Appeal Br. 3). We agree with Appellant
that the Examiner engaged in impermissible hindsight in determining that
the teachings of Yang and Yi would have suggested making flange 16
removable.
The Examiner’s reliance on Nerwin as a legal basis for concluding
obviousness is faulty. Nerwin relied on the Supreme Court case Howard v.
Detroit Stove Works, 150 US 164 (1893), for the proposition that the fact
that a given structure is integral does not preclude it consisting of various
elements. Nerwin, 168 USPQ at 179. The Examiner has not established that
the principle in Detroit Stove Works applies to the facts of the present
appeal. The Examiner provides no comparison of the facts of the present
appeal to the facts in Detroit Stove Works (Final Act. 3–4). Rather, the
Examiner treats the holding as a per se rule in patent law, which is improper.
The Examiner has not dispensed with the obligation to establish a
prima facie case based on the preponderance of the evidence. On this
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Application 15/819,142

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record, we are constrained to reverse the Examiner’s § 103 rejection of
claims 1 and 2 over Yi and Yang.

Rejection (2)
The Examiner’s findings and conclusions regarding Takano and Yang
are located on pages 4 to 5 of the Final Action. The Examiner’s statement of
the rejection incorrectly lists the basis of the rejection as 35 U.S.C.
§ 102(a)(1) (Final Act. 4). The Examiner acknowledged this mistake and
indicated that the rejection is under 35 U.S.C. § 103 (Ans. 6). We will
address the rejection as under § 103.
The Examiner finds Takano teaches an electrical connector 50
comprising, inter alia, unitary insulative housing 60 with blade 61 (Final
Act. 4). The Examiner finds Takano does not teach that the blade is
removably attached to the housing (Final Act. 4). The Examiner finds Yang
teaches a contact module as a blade removably attached to housing 10 (Final
Act. 4). The Examiner concludes it would have been obvious to have
Takano’s blade 61 removably attached to the housing as taught by Yang in
order to facilitate repair if the blade is broken and based on the rationale
cited in Nerwin (Final Act. 5).
Appellant argues the Examiner has not shown that one of ordinary
skill in the art would have considered the contact module of Yang to
correspond to protrusion 61 of Takano, which the Examiner identified as the
blade (Appeal Br. 5). Appellant argues the Examiner provided no motive
for the modification of Takano based on Yang absent impermissible
hindsight (Appeal Br. 5−6). We agree with Appellant.
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Application 15/819,142

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As with rejection (1), the Examiner has not established that the
combined teachings of Takano and Yang would have suggested modifying
Takano’s protrusion 61 to make it removable. As noted above in our
discussion of rejection (1), Yang’s contact module 30 does not have
removable blades. Takano’s electrical connector appears to be similar to
Yang’s contact module 30 in that it connects electrical contacts with another
connector. In other words, the Examiner has not established that Takano
and Yang would have suggested making a blade removable on the
connector. The Examiner’s position seems to be that the contact module is
the blade which is removable from Yang’s combination electrical connector
(Final Act. 5). The Examiner has not established that Takano’s connector is
similar to Yang’s combination electrical connector so it would have been
obvious to modify Takano to use removable contact module/blade. We find
the Examiner engaged in impermissible hindsight in determining that
Takano and Yang would have suggested a removable blade in a connector as
recited in the claim.
The Examiner’s reliance on Nerwin is faulty for the same reasons
discussed with respect to claim 1.
On this record, we reverse the Examiner’s § 103 rejection of claim 1
and 2 over Takano and Yang.

CONCLUSION
In summary:
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Application 15/819,142

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 103 Yi, Yang 1, 2
1, 2 103 Takano, Yang 1, 2
Overall 1, 2

REVERSED