Ex Parte 7114990 et al

Patent Trial and Appeal Board

Aug 31, 2016

90013380 (P.T.A.B. Aug. 31, 2016)

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.
90/013,380 10/21/2014 7114990 11355.8055-00000 5626
22928 7590 09/01/2016
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/01/2016 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
____________________

Ex parte CORNING OPTICAL COMMUNICATIONS RF LLC1
Appellant
____________________

Appeal 2016-005115
Reexamination Control 90/013,380
Patent 7,114,990 B22
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Corning Optical Communications RF LLC is the real party in interest
(Appeal Brief (hereinafter “App. Br.”) 1).
2 Issued October 3, 2006 to Bence et al. (hereinafter “the ’990 patent”).
Ex parte Reexamination Certificate Number US 7,114,990 C1 issued
April 18, 2014.
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The Patent Owner appeals from a Final Rejection of claims 1–5, 7–12,
22, 24, 26–34, and 39–42 of U.S. Pat. No. 7,114,990 B2 (“the ’990 patent”)
that are subject to reexamination (App. Br. 2). We have jurisdiction under
35 U.S.C. §§ 134(b) and 306 (2002). The ’990 patent is presently involved
in an infringement litigation styled Corning Gilbert Inc. v. John
Mezzalingua Associates, Inc. d/b/a PPC, Civil Action 2:12-cv-02208-PHX-
SMM (D. Ariz.) (App. Br. 1).
In the Examiner’s Answer (hereinafter “Ans.”), the Examiner relies
on portions of a declaration of Mr. Charles Eldering, which was filed with
the Request for Ex Parte Reexamination that resulted in the present
reexamination proceeding. In addition to its Appeal Brief, the Patent Owner
also relies on its Reply Brief and declarations from Mr. Ronald Locati in
support of patentability. An oral hearing with the Patent Owner’s
representative was held before the Patent Trial and Appeal Board on
August 10, 2016, a transcript of which will be entered into the record in due
course.
The invention is directed to a coaxial cable connector with a
grounding member (the ’990 patent, title). Representative independent
claim 1, and dependent claim 39, read as follows (App. Br. 32, 39, Claims
App’x, emphasis added):
1. A coaxial cable connector for coupling a coaxial cable to
an equipment port, the coaxial cable including a center
conductor surrounded by a dielectric material, the dielectric
material being surrounded by an outer conductor, the coaxial
cable connector comprising in combination:
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a. a tubular post having a first end adapted to be inserted into
the prepared end of the coaxial cable between the dielectric
material and the outer conductor, and having a second end
opposite the first end thereof;
b. a coupler having a first end rotatably secured over the second
end of the tubular post, and having an opposing second end, the
coupler including a central bore extending therethrough, a
portion of the central bore proximate the second end of the
coupler being adapted for engaging the equipment port;
c. a body member secured to the tubular post and extending
about the first end of the tubular post for receiving the outer
conductor of the coaxial cable, wherein the body member
contacts the coupler; and
d. a resilient, electrically-conductive grounding member
disposed between the tubular post and the coupler, the
grounding member contacting both the tubular post and the
coupler for providing an electrically-conductive path
therebetween.

39. The coaxial cable connector of claim 1 wherein the
electrically-conductive path provided by the grounding member
is maintained between the coupler and the tubular post even
when the coupler is not fully tightened onto the equipment port,
wherein the grounding member provides the electrically-
conductive path between the coupler and the tubular post by
maintaining contact between the coupler and a radially
extending surface of the tubular post.

The Examiner rejects claims 1–5, 7–12, 22, 24, 26–34, and 39–42
under 35 U.S.C. § 103(a) as unpatentable over the combination of Youtsey3
in view of Burris4 and Nash.5

3 U.S. Patent No. US 6,712,631 B1 issued March 30, 2004.
4 U.S. Patent No. US 6,790,081 B2 issued September 14, 2004.
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We AFFIRM.

ANALYSIS
The Patent Owner argues the claims together as a group in the Appeal
Brief, and further argues dependent claims 39–42 separately (App. Br. 28–
31). Thus, we select representative claims 1 and 39 to decide the appeal.
See 37 C.F.R. § 41.37(c)(1)(vii). We also note that only those arguments
timely made in the briefs of record in this appeal have been considered.
Other arguments not made or those not properly presented to the Board have
not been considered and are deemed to be waived. See 37 C.F.R. § 41.37
(c)(1)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”).
Furthermore, within its Appeal Brief and Reply Brief, the Patent
Owner cites to various paragraphs from the declarations from Mr. Ronald
Locati in support of patentability of the claims. Thus, while the declarations
of Mr. Locati have been fully considered in this decision, we omit specific
citations thereto in view of the Patent Owner’s citations to the declarations
in its briefs, the briefs being cited herein.
The Examiner rejects claims 1–5, 7–12, 22, 24, 26–34, and 39–42 as
unpatentable over the combination of Youtsey in view of Burris and Nash
(Ans. 2). The Examiner finds that Youtsey discloses most of the structural
limitations of independent claim 1, including lock washer 50 made of metal,
which the Examiner finds as corresponding to the grounding member recited

5 U.S. Patent No. 2,694,187 issued November 9, 1954.
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in claim 1 (Ans. 3–4; Youtsey, col. 4, ll. 59–65). However, the Examiner
concedes that:
Youtsey does not specifically disclose that lock washer 50 is a
grounding member providing an electrically conductive path
therebetween tubular post 40 and coupler 30 because Youtsey
does not explicitly disclose that the tubular post 40 and coupler
30 both comprise metal and would form an electrically
conductive path with the lock washer 50.
(Ans. 4, emphasis added).
The Examiner relies on Burris for disclosing a cable connector
including tubular post 170 and coupler 110 made of metal so that an
electrically conductive path would be formed when they are in contact.
(Ans. 4, citing Burris, col. 11, ll. 27–29). Indeed, Burris specifically
discloses:
Preferably, both the nut 110 and the post 170 comprise, and
more preferably consist of, a metallic, conductive material, such
as brass or plated brass.
(Burris, col. 11, ll. 27–29).
The Examiner also relies on Nash for disclosing a cable connector
including a coupling nut (i.e., coupler) wherein “an electrically conductive
grounding path is formed through the coupling nut 38.” (Ans. 4, citing
Nash, col. 2, ll. 68–75).
Based on the above findings of fact, the Examiner concludes, inter
alia, that:
it would have been obvious to one of ordinary skill in the art to
include a conductive, metal tubular post and a conductive,
metal coupler in Youtsey (with the metal washer already
disclosed by Youtsey), as taught by Burris and Nash in order to
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advantageously form an electrically conductive grounding path
through the tubular post, washer, and coupler.
(Ans. 4–5).
Thus, the Examiner’s finding is that while Youtsey discloses all of the
structural limitations of claim 1, it lacks explicit disclosure of the material of
which the coupler is made, so that it correspondingly fails to disclose the
claimed electrically conductive grounding path through the coupler. The
Examiner’s rejection is based on this deficiency of Youtsey being remedied
by the disclosure of Burris that teaches that the coupler should preferably be
metallic and conductive, and by Nash, which discloses a grounding path
through the coupler.
Indeed, in responding to the various arguments submitted by the
Patent Owner in its Appeal Brief (which we address infra), the Examiner
makes additional statements further clarifying the basis of the rejection. For
example, the Examiner finds:
Youtsey is silent with respect to the material of the coupler, but
the use of a metal coupler in coaxial cable connectors has been
known in the art (as shown by Burris and Nash).
(Ans. 20).
The Examiner further states:
If tubular post 40 and coupler 30 [of Youtsey] were both made
of metal, these elements would form an electrically conductive
path with the lock washer 50.
(Id. at 21).
The Examiner further clarifies the rejection in stating that:
recognition of an advantageous property (i.e., a grounding
conductive path) naturally resulting from the suggestion of the
prior art (i.e., the coaxial cable connector of Youtsey with a
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metal coupler as taught by Burris and Nash) cannot be the basis
for patentability when the differences would otherwise be
obvious.
(Id. at 20, emphasis added).
We agree with the Examiner’s findings and conclusion that claims 1–
5, 7–12, 22, 24, 26–34, and 39–42 are unpatentable over the combination of
Youtsey, Burris, and Nash for the reasons reproduced above. Youtsey
discloses all of the structural limitations of claim 1 except for the material of
the coupler, which is explicitly taught in Burris and disclosed in Nash relied
upon in the rejection as discussed supra. A preponderance of the evidence
indicates that when the coupler of Youtsey is made of metal as suggested by
the applied secondary references, the claimed electrically conductive
grounding path through the coupler naturally results.

Argument Based on Youtsey
The Patent Owner argues that Youtsey does not disclose that lock
washer 50 participates in the electrically grounding path (App. Br. 21), and
that because the lock washer of Youtsey secures the hex nut coupling:
a direct ground path (i.e., a ground path formed from direct
contact between the male connector and the flanged insert)
would already exist, there would have been no reason to modify
the Youtsey connector to establish an electrical connection
between the hex nut coupling (coupler) and the lock washer.
(App. Br. 7; see also id. at 11–12).
Accordingly, the Patent Owner argues that the Examiner:
fails to provide reasoning with rationale underpinnings as to
why it would have been obvious to establish an electrically
conductive ground path through the flanged insert (tubular
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post), lock washer, and hex nut coupling (coupler) of the
Youtsey connector.
(App. Br. 8; see also id. at 22; Reply Br. 1, 3–4).
The Patent Owner also argues that the Examiner fails to articulate
reasoning as to “why it would have been obvious to modify Youtsey to have
a conductive metal coupler for the purpose of providing an alternative
ground path through the post, washer, and coupler.” (Reply Br. 4).
However, this line of argument is unpersuasive because it ignores the
principal basis of the rejection of the Examiner discussed above, which is
that a person of ordinary skill in the art would have applied the disclosure of
Burris (explicitly teaching that it is preferable to make the coupler from
“metallic, conductive material, such as brass or plated brass”), and Nash
(teaching of electrically conductive coupler), to make the coupler of Youtsey
out of a metallic, conductive material. The rejection is that such coupling
would naturally occur upon forming the coupler of Youtsey out of a
metallic, conductive material (see Ans. 20). In this regard, the motivation
for combining Youtsey with the teachings of Burris and Nash need not be
for the same purpose that may have motivated the inventor of the
’990 patent. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (“any need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed)”; see also id. at 418–19 (“the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim”).
The Patent Owner (in the context of its arguments directed to Burris)
also argues that the applied prior art (including Youtsey):
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which are directed to connector designs for providing a reliable
ground path (Nash and Youtsey), as well as the ’990 patent
itself, reflect that incidental or unstable contact that may or may
not exist between conductive components is insufficient for
providing a reliable ground path.
(Reply Br. 9).
However, we disagree with this assertion that the connector of
Youtsey, when implemented with a metallic coupler 30, would result in
“incidental or unstable contact” between the conductive components. To the
contrary, we agree with the Examiner that “a grounding conductive path[]
naturally result[s] from the suggestion of the prior art (i.e., the coaxial cable
connector of Youtsey with a metal coupler as taught by Burris and Nash).”
(Ans. 20). Figure 3 of Youtsey clearly shows lock washer 50 in contact with
flange 44 of conductive insert 40 (i.e., tubular post), as well as coupler 30 at
its radially inwardly extending end wall that defines the opening into which
the conductive insert extends. Correspondingly, a preponderance of the
evidence indicates that when the coupler of Youtsey is made of metal in
view of Burris and/or Nash, the electrically-conductive path through the
coupler is established.
While the Patent Owner’s argument appears to imply that the
Examiner must somehow provide additional proof of the recited electrically-
conductive path through the coupler of Youtsey, we observe that, as
discussed supra, the connector of Youtsey is structurally substantially
identical to the invention claimed in the ’990 patent when Youtsey is
implemented with metallic, conductive coupler. Thus, the burden of
production is on the Patent Owner to establish why the connector of
Youtsey, when so modified, would not establish an electrically-conductive
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path through the coupler like the claimed invention of the ’990 patent. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”). See also In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990). We again agree that the Examiner has
established by a preponderance of the evidence that “a grounding conductive
path naturally results” (Ans. 20) when the coupler of Youtsey is
implemented using a metallic, conductive material.

Argument Based on Nash
The Patent Owner argues that “the advantages attained by Nash’s
cupped washer are irrelevant because the Patent Office does not employ
such cupped washer in its proposed modification,” and Nash attributes
higher efficiency signal transfer and lower signal losses to the cupped
washer, which bites into the collar (i.e., tubular post) (App. Br. 7, 16–18; see
also Reply Br. 4–7). This argument is also unpersuasive. The Examiner
“acknowledges that the rejections do not rely on Nash’s teaching of washer
44,” but instead, relies on Nash’s disclosure of a conductive coupling nut
(i.e., coupler) (Ans. 22).
The Patent Owner also argues that “Youtsey’s lock washer is not
design to function as a grounding member and does not bite into the surface
of the neck portion (post) upon compression” like the cupped washer of
Nash (App. Br. 18). However, the proper inquiry is not whether Youtsey’s
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lock washer was designed to function as a grounding member, or whether it
bites into the surface of the tubular post, but rather, whether Youtsey’s lock
washer would have functioned as a grounding member recited in claim 1
when its coupler is made of a metallic, conductive material as taught in
Burris and Nash. As the Examiner finds (Ans. 21), Youtsey’s lock washer
would have functioned as a grounding member when its coupler is made of a
metallic, conductive material.

Arguments Based on Burris
The Patent Owner argues that “Burris does not disclose or suggest an
electrically conductive path between the post and the nut” (App. Br. 7, 18–
19), and that Burris’s disclosure of a metal nut does not provide a reason to
form such an electrically conductive grounding path through the tubular
post, washer, and coupler (id. at 19). However, this argument is
unpersuasive because the basis of the rejection discussed supra is that in
view of Youtsey’s silence as to the material composition of its coupler, it
would have been obvious to make the coupler out of a conductive, metallic
material as explicitly taught in Burris. Again, such combination naturally
results in the claimed electrically conductive path, regardless of whether
there was a reason to form such a grounding path. KSR, 550 U.S. at 420.
The Patent Owner also argues that because Burris discloses free-
spinning movement of the nut, that means that contact between the nut and
its tubular post would be undesirable, so that there would no electrically
conductive path between the post and nut (App. Br. 20; see also Reply Br.
8–9). In this regard, the Patent Owner further argues that there is “no
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reasoned explanation as to why such free-spinning movement of Burris
would necessarily have resulted in the contact between such components.”
(Reply Br. 8). Burris does not teach undesirability of such contact, however,
and we disagree with the Patent Owner’s assertion that that free-spinning
movement would preclude an electrically conductive path. In any event, this
line of argument by Patent Owner is unpersuasive because, as already
explained, Burris is merely relied upon for explicitly teaching that the
coupler in cable connectors such as that disclosed in Youtsey, should be
preferably made of a metallic, conductive material.
Arguments Based on Other Statements of the Examiner
In conjunction with the arguments addressed above, the Patent Owner
submits arguments based on other statements made by the Examiner in
rejecting the claims over the combination of Youtsey, Burris, and Nash.
Specifically, in rejecting claim 1, the Examiner also stated:
Providing such a grounding path allows for higher efficiency
signal transfer and lower signal losses while deterring harmful
interference when connected (Nash, column 1, lines 15–20 and
lines 40–43; column 2, lines 68–75). See also Eldering
Declaration, paragraphs 142 and 143.
(Ans. 5; see also id. at 11, 15, 19 with respect to claims 26, 29, and 33,
respectively).
Based thereon, the Patent Owner argues that the Examiner’s rejection
of the claims over the combination of Youtsey, Burris, and Nash
fails to provide reasoning with rationale underpinnings as to
why it would have been obvious to establish an electrically
conductive ground path through the flanged insert (tubular
post), lock washer, and hex nut coupling (coupler) of the
Youtsey connector.
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(App. Br. 8; see also id. at 22; Reply Br. 1, 3–4).
Specifically, as noted above, the Patent Owner argues that there is no
reason to modify the Youtsey connector because a direct ground path
already exists in Youtsey (App. Br. 7), such modification would not be
better than this direct ground path (id. at 12), and Nash attributes its higher
efficiency signal transfer and lower signal losses to the cupped washer,
which is not utilized in the rejection (id. at 16–18; see also Reply Br. 4–7).
However, these arguments are unpersuasive because they do not
persuasively address the principal basis of the rejection discussed supra.
It is evident from the focus the Patent Owner’s Appeal Brief and the
Reply Brief that the Patent Owner has chosen to focus on the above noted
statement of the Examiner in rejecting the claims. In this regard, during the
oral hearing, the Patent Owner’s representative argued that the above noted
statement is the basis for the rejection because it provides the rationale for
combining the teachings of Youtsey, Burris, and Nash.
However, the Patent Owner views the Examiner’s rejection too
narrowly. As evident from the portions of the Answer reproduced and
addressed above, the principal basis for the Examiner’s rejection, and the
rationale for combining the references, is that because Youtsey does not
explicitly disclose the material of the coupler, a person of ordinary skill in
the art would have applied the disclosure of Burris (explicitly teaching that it
is preferable to make the coupler from metallic, conductive material), and
Nash (teaching of electrically conductive coupler), to make the coupler of
Youtsey out of a metallic, conductive material (Ans. 4). As the Examiner
finds (id. at 20), and as discussed supra, once the coupler of Youtsey is
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made from a metallic, conductive material, the recited conductive path
would naturally result. The Examiner further elaborated that this was the
rejection being made in response to the Patent Owner’s Appeal Brief (id. at
20–21).
While the Patent Owner focuses on the above noted additional
statement of the Examiner, that statement does not detract from the above
discussed basis of the rejection, which is set forth by the Examiner with
reasonable clarity so as to give the Patent Owner sufficient notice of the
rejection being made as required by law.6

Arguments Based on “Inserted” Limitation
The Patent Owner also argues that:
When read in light of the specification, a person of ordinary
skill in the art would have understood that the claim recitation
“a first end adapted to be inserted into the prepared end of the
coaxial cable between the dielectric material and the outer
conductor” refers to the first end being adapted to be inserted
into the interior of the prepared end of the coaxial cable,

6 The relevant statute 35 U.S.C. § 132 (a) entitled “Notice of rejection;
reexamination” states, inter alia:
(a) Whenever, on examination, any claim for a patent is
rejected, or any objection or requirement made, the Director
shall notify the applicant thereof, stating the reasons for such
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of his application; and if
after receiving such notice, the applicant persists in his claim
for a patent, with or without amendment, the application shall
be reexamined.
35 U.S.C. § 132 (a); see also 37 C.F.R. § 1.104(a).
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without any need to manually turn the outer jacket of the cable
to cover the tubular post after the post is slid over the dielectric.
(App. Br. 24).
According to the Patent Owner, the “inserted” limitation “refers to
inserting the first end to be inside of the prepared end of the coaxial cable
results in the first end separating the dielectric material from the outer
conductor.” (Id. at 27, emphasis added). The Patent Owner argues that
conductive insert 40 (i.e., tubular post) of Youtsey is not inserted, but
instead, is described as being installed by doubling over the shielding on to
the outer jacket, and being turned in an opposite direction to grip onto the
rear end of the insert (id. at 25). The Patent Owner further argues that such
an installation is not “an act of inserting the flanged insert to be inside of the
prepared end of the cable.” (Id. at 27).
The Examiner disagrees and applies the plain and ordinary meaning of
the term “inserted,” which is defined as “to put or set into, between, or
among,” and finds that conductive insert 40 of Youtsey, in addition to being
identified as an “insert,” is put or set so as to be between the dielectric
material and the outer conductor (Ans. 23, quoting The American Heritage
Dictionary of the English Language; see also Youtsey, Figs. 2 and 3). The
Examiner also finds that the Patent Owner’s interpretation of “inserted” to
require insertion “without any need to manually turn the outer jacket of the
cable to cover the tubular post after the post is slid over the dielectric”
imports limitations from the Specification of the ’990 patent into the claims
(Ans. 23).
We generally agree with the Examiner for the reasons set forth in the
Answer (Ans. 23). In addition, claim 1, and all of the claims on appeal, are
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apparatus claims for a connector wherein the tubular post is “adapted to be
inserted.” The claims are not method claims requiring the step of insertion,
much less such insertion step “without any need to manually turn the outer
jacket of the cable to cover the tubular post after the post is slid over the
dielectric” as asserted by the Patent Owner. Such a limitation is not recited
in the claims or clearly described in the Specification of the ’990 patent.
Similarly, the claims do not recite the step of separating dielectric material
from the outer conductor through such insertion. All that is required to
satisfy the claim limitation at issue is a tubular post having a first end which
is capable of being put or set between the dielectric material and the outer
conductor. Youtsey clearly discloses that its tubular post is put or set
between the dielectric material and the outer conductor (Youtsey, Figs. 1, 3).
Moreover, contrary to the Patent Owner’s assertion, the tubular post
of Youtsey is capable of being inserted “without any need to manually turn
the outer jacket of the cable to cover the tubular post after the post is slid
over the dielectric,” and separating the dielectric material from the outer
conductor. Specifically, the Patent Owner refers to Figures 1 and 2 of
Youtsey to argue that the radially extending ribs of conductive insert 40
“would prevent insertion of the Youtsey conductive insert 40 into a prepared
end of a coaxial cable between the dielectric material and the outer
conductor,” and thus, the conductive insert is not “adapted to be inserted into
the prepared end of the coaxial cable between the dielectric material and the
outer conductor” as required by claim 1 (App. Br. 26). However, the Patent
Owner ignores the distal portion of the conductive insert of Youtsey that is
before the first “rib” shown in Figure 2 (see Youtsey, Fig. 2). This distal
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portion, corresponding to the recited “first end” in claim 1, would have been
capable of being inserted between the dielectric material and the outer
conductor so as to separate these components. In this regard, we observe
that neither the Specification of the ’990 patent nor claim 1 defines the
extent (i.e., the length) of the recited first end that is adapted to be inserted.
Moreover, the Patent Owner also ignores Figure 3 of Youtsey that shows a
“modified female connector,” which does not include such radially
extending ribs, but instead, includes stepped diameter structure for the
conductive insert (see Youtsey, Fig. 3). Such configuration of the tubular
post clearly would have been also capable of being inserted between the
dielectric material and the outer conductor so as to separate these
components.
Therefore, in view of the above, we agree with the Examiner that
claim 1 is unpatentable based on the combination of Youtsey, Burris and
Nash, and affirm its rejection. Because claims 2–5, 7–12, 22, 24, and 26–34
are not separately argued, they fall with claim 1. See 37 C.F.R. § 41.37
(c)(1)(iv).

Dependent Claims 39–42
The Patent Owner argues dependent claims 39–42 as a group
separately from the claims discussed above. Representative claim 39 is
reproduced above. Claim 39 requires the electrically-conductive path
provided by the grounding member be maintained even when the coupler is
not fully tightened (App. Br. 28; see also id. at 39, Claims App’x). The
Examiner rejects these claims, finding that “the teachings of metal elements
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in contact with each other in the system suggested by Youtsey in view of
Burris and Nash, results in the claimed ground path even when the coupler
nut is not fully tightened.” (Ans. 26).
The Patent Owner argues that the Examiner erred and that these
dependent claims are patentable because none of the references disclose or
suggest this limitation (App. Br. 28; see also id. at 30–31). Specifically, the
Patent Owner argues that:
Youtsey requires the coupler to be fully tightened in order for
the lock washer to perform its mechanical locking function.
Youtsey is not directed to a lock washer which functions as a
grounding member for completing a ground path therethrough.
(App. Br. 13).
The Patent Owner also argues that Figure 3 of Youtsey does not
“provide any indication that the post 40, lock washer 50, and coupler 30
would still be connected in such partially tightened state,” (id. at 28), and its
inventive concept is to fully mate the components to establish grounding
path between the male connector and the flanged insert (id. at 29).
The Patent Owner’s arguments are not persuasive. While Figure 3 of
Youtsey illustrates the connector in a fully assembled configuration, we
agree with the Examiner that a person of ordinary skill in the art would have
known what a partially tightened connector looked like (Ans. 24; see also id
at 25–26). We further agree with the Examiner that a person of ordinary
skill in the art would have known
from Figure 3 that in the partially tightened state, there would
be a space between the end of male connector 60 and flange 44
of post 40 (as shown in the modified Figure 3), but post 40,
washer 50, and coupler 30 would remain in contact with each
other.
Appeal 2016-005115
Reexamination Control 90/013,380
Patent US 7,114,990 B2

19
(Ans. 25 (citing a modified Figure 3 reproduced on the same page)).
Furthermore, while not necessary to affirm the Examiner’s rejection
of claims 39–42, we observe that lock washer 50 is disclosed in Youtsey as
being “a split ring lock washer 52 (or ‘helical spring washer’),” which has a
slight, helical bend (see Youtsey, col. 4, ll. 59–61; Figs. 2 and 4). Thus,
during tightening of coupler 30, for example, there would be a period when
one end of the lock washer would be in contact with flange 44 of conductive
insert 40, while the other end of the lock washer would be in contact with
coupler 30 at its radially inwardly extending end wall that defines the
opening into which the tubular post extends. Correspondingly, when the
coupler of Youtsey is made of a metallic, conductive material, the
electrically-conductive path would be maintained even when the coupler is
not fully tightened, that is, for example, during tightening of coupler 30.
The Patent Owner’s further argument based on Nash as to these
dependent claims (App. Br. 13–14) is unpersuasive because, as previously
discussed, the Examiner’s rejection does not rely upon the washer of Nash
(Ans. 22).
Correspondingly, we agree with the Examiner that claims 39–42 are
also unpatentable based on the combination of Youtsey, Burris and Nash,
and affirm their rejection.

ORDER
The Examiner’s rejection of claims 1–5, 7–12, 22, 24, 26–34, and 39–
42 based on the combination of Youtsey in view of Burris and Nash is
AFFIRMED.
Appeal 2016-005115
Reexamination Control 90/013,380
Patent US 7,114,990 B2

20
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

CORNING INCORPORATED
ST-TI-3-1
Corning, NY 14831

Third Party Requester:

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
901 New York Avenue, NW
Washington, DC 20001-4413