Ex Parte 7,828,595 et al

Patent Trial and Appeal Board

Dec 13, 2013

95001691 (P.T.A.B. Dec. 13, 2013)

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.
95/001,691 07/19/2011 7,828,595 PPC.4089US2RE-NY 3719
116246 7590 12/13/2013
Hiscock & Barclay LLC/PPC
One Park Place
300 South State Street
Syracuse, NY 13202
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/13/2013 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
________________

FOLEY & LARDNER LLP
1

Respondent, Requestor
v.
PPC BROADBAND, INC.
2

Appellant, Patent Owner
________________

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Technology Center 3900

1
The record indicates that Foley & Lardner LLP represented Thomas &
Betts Corporation in John Mezzalingua Associates, Inc. v. Thomas & Betts
Corp., Case No. 6:11-cv-6327 (W.D.N.Y.), in which the patent under
reexamination was at issue. The record also indicates that the pertinent
business of Thomas & Betts Corporation was acquired by Belden Inc. (See
Declaration of Dr. James Crivello, para. 3).

2
The Appellant/Patent Owner identifies its real party in interest as John
Mezzalingua Associates, Inc., doing business as PPC. The records of the
Patent & Trademark Office identify the owner of the patent under
reexamination as PPC Broadband, Inc. [“PPC”] of East Syracuse, New
York. It is understood that PPC also was acquired by Belden Inc. (See, e.g.,
Belden Inc., press release dated December 11, 2012).

3
Issued November 9, 2010 to Roger Mathews (the “′595 patent”). The
′595 patent issued from Appl. No. 12/397,087, filed March 3, 2009.
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________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
DANIEL S. SONG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant/Patent Owner appeals from a final rejection of claims 2
1-33. No claims were amended or cancelled. Claims 22-33 were added 3
during the proceeding. (Ans. 21). We have jurisdiction under 35 U.S.C. 4
§ 134(b) (2011) and 35 U.S.C. § 315(a) (2011). 5
The Examiner‟s position is set forth in an Answer (“Answer” or 6
“Ans.”) mailed March 25, 2013 and a Right of Appeal Notice (“RAN”) 7
mailed August 27, 2012. The Examiner adopts, or adopts with modification, 8
twelve grounds of rejection of one or more of claims 1-33: 9
1. claims 1-5, 7-11 and 13-21 under 35 U.S.C. 10
§ 103(a) (2011) as being unpatentable over Youtsey (US 11
6,042,422, issued Mar. 28, 2000), Lionetto (US 4,929,188, 12
issued May 29, 1990) and Horak (US 3,879,102, issued Apr. 13
22, 1975) (Ans. 5 and 6); and claims 6 and 12 under § 103(a) as 14
being unpatentable over Youtsey, Lionetto, Horak and Montena 15
(US 6,558,194 B2, issued May 6, 2003) (Ans. 14); 16
2. claims 1-9, 11-13 and 15-21 under 35 U.S.C. 17
§ 102(a) (2011) and 35 U.S.C. § 102(e) (2011) as being 18
anticipated by Palinkas (US 6,716,062 B1, issued Apr. 6, 2004) 19
(Ans. 5 and 16); 20
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3. claims 33/1, 33/8 and 33/13
4
under § 103(a) as 1
being unpatentable over Youtsey, Lionetto and Horak (Ans. 6 2
and 22); 3
4. claims 33/1, 33/8 and 33/13 under § 102(a) and 4
§ 102(e) as being anticipated by Palinkas (Ans. 16 and 22); 5
5. claims 22-32, 33/22, 33/25, 33/27, 33/30 and 33/32 6
under § 103(a) as being unpatentable over Youtsey, Lionetto 7
and Horak (Ans. 22 and 23); 8
6. claims 22-25, 27, 29-31, 33/22, 33/25, 33/27 and 9
33/30 under § 102(a) and § 102(e) as being anticipated by 10
Palinkas (Ans. 22 and 32); 11
7. claims 22-24 and 33/22 under 35 U.S.C. § 112, 12
second paragraph (2011), as being indefinite (Ans. 22 and 39); 13
8. claims 27, 28 and 33/27 under § 112, second 14
paragraph, as being indefinite (Ans. 22 and 40); 15
9. claim 24 under § 112, second paragraph, as being 16
indefinite (Ans. 22 and 40); 17
10. claims 25, 26 and 33/25 under § 112, second 18
paragraph, as being indefinite (Ans. 22 and 41); 19
11. claim 29 under § 35 U.S.C. § 112, first paragraph, 20
as failing to comply with the written description requirement 21
and as failing to comply with the enablement requirement (Ans. 22
22 and 41);
5
and 23

4
Claims “33/1, 33/8 and 33/13” refer to dependent claim 33 as
dependent from independent claims 1, 8 and 13, respectively. Claims
“33/22, 33/25, 33/27, 33/30 and 33/32” infra refer to dependent claim 33 as
dependent from independent claims 22, 25, 27, 30 and 32, respectively.

5
The Examiner did not adopt the Requester‟s proposed rejection of
claims 22-33 under the first paragraph of § 112. (See RAN 44-46). The
Examiner‟s rejection of claim 29 under the first paragraph of § 112 relies on
facts different from those underlying the Requester‟s proposed rejection of
claims 22-33. (See Ans. 41-43; RAN 46-47).
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12. claims 22-32, 33/22, 33/25, 33/27, 33/30 and 1
33/32 under 35 U.S.C. § 314(a) (2011) as enlarging the scope 2
of the claims of the patent being reexamined (Ans. 22 and 43). 3
We sustain grounds of rejection 1, 3, 5 10 and 11. We also sustain 4
grounds of rejection 2, 4 and 6 against claims 1, 3, 20, 22, 31, 33/1 and 5
33/22; and grounds of rejection 12 against claims 27, 28, 30, 33/27 and 6
33/30. We do not sustain the remaining grounds of rejection. 7
The Patent Owner relies on an Appeal Brief (“Appeal Brief” or 8
“App. Br. PO”) dated November 27, 2012 and a Rebuttal Brief (“Reb. Br. 9
PO”) dated April 25, 2013. The Appeal Brief refers to two declarations of 10
record, a Declaration of Dr. Charles A. Eldering (“Eldering Declaration” or 11
“Eldering Decl.,” Exhibit C to the Appeal Brief) and a Declaration of Dr. 12
James Crivello (“Crivello Declaration” or “Crivello Decl.,” Exhibit D to the 13
Appeal Brief).
6
Although the Requester has not filed any briefs in this 14
appeal, this opinion will refer to the Request for Inter Partes Reexamination 15
(“Request”) dated July 19, 2011 and to the Third Party Requester Comments 16
(“Req‟r Comments”) dated December 29, 2011. 17
The claims on appeal relate to connectors for coaxial cables. (′595 18
patent, col. 1, ll. 11-12). According to the Specification of the ′595 patent, a 19
connector 100 for a coaxial cable 10 includes a post 40 having a flange 46 at 20
a second end 44. (′595 patent, col. 3, ll. 34-38; col. 4, ll. 42-48; col. 5, ll. 18-21

6
The Patent Owner argues that its declarations should be believed in
their entirety because the Requester did not provide expert testimony to
contradict the Patent Owner‟s declarations. (See App. Br. PO 5-6). “The
Board has broad discretion as to the weight to give declarations offered in
the course of prosecution,” In re American Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004), and may give little weight to expert testimony
lacking persuasive factual corroboration.
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23; and figs. 1 and 3). A fastener member 60 clamps a deformable 1
connector body 50 onto the post 40 such that both the post 40 and the 2
connector body 50 engage portions of the cable 10. (′595 patent, col. 5, ll. 3
29-37; col. 5, l. 61 – col. 6, l. 5 and fig. 1). A threaded nut 30 encircles the 4
post 40. (See ′595 patent, col. 4, ll. 56-59 and figs. 1 and 2). A mating edge 5
conductive member 70 in the form of a resilient and electrically conductive 6
O-ring seal sits against the flange 46 within the nut 30. When the nut 30 is 7
threaded onto a stub shaft connector 20, a mating edge 26 on the axial end of 8
the stub shaft connector 20 presses against the mating edge conductive 9
member 70 of the connector 100 to form both an environmental seal and an 10
unbroken electrical connection between the mating edge 26, the flange 46 11
and the nut 30. (′595 patent, col. 7, ll. 41-61 and figs. 1 and 3). 12
Claims 1, 8, 13, 16, 17, 20, 22, 25, 27 and 29-32 are independent. 13
Claim 1 recites: 14
1. A connector for coupling an end of a coaxial 15
cable and facilitating electrical connection with a 16
male coaxial cable interface port, the coaxial cable 17
having a center conductor surrounded by a 18
dielectric, the dielectric being surrounded by a 19
conductive grounding shield, the conductive 20
grounding shield being surrounded by a protective 21
outer jacket, the connector comprising: 22
a connector body; 23
a post; 24
a threaded nut; and 25
a conductive seal, said conductive seal 26
electrically coupling the post and the 27
threaded nut, wherein the conductive 28
seal is positioned to physically and 29
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electrically contact the male interface 1
port. 2
(App. Br. PO 30 (Claims App‟x)). 3
4
ISSUES 5
Only issues and findings of fact contested by the Patent Owner have 6
been considered. See 37 C.F.R. § 41.67(c)(1)(vii) (2011); In re Jung, 637 7
F.3d 1356, 1365 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 8
(BPAI 2010). Six issues are dispositive of the appeal: 9
First, is claim 22, claim 24, claim 25 or claim 27 10
indefinite? (See App. Br. PO 28-29; Reb. Br. PO 10-12). 11
Second, is the recitation of claim 29 “wherein the means 12
[for conductively sealing and electrically coupling a flange of 13
the post and the threaded nut] physically and electrically 14
contact a mating edge of the male coaxial cable interface port to 15
stop an axial progression of the connector into the male coaxial 16
cable interface port” adequately described and enabled by the 17
Specification? (See App. Br. PO 29). 18
Third, did Youtsey teach away from the proposed 19
substitution of an electrically conductive material for the 20
unidentified material used to fabricate the o-ring 82 described 21
by Youtsey? (See App. Br. PO 7-15 and 20-24; Reb. Br. PO 3-22
7). 23
Fourth, would one of ordinary skill in the art have had a 24
reasonable expectation that the proposed substitution of an 25
electrically conductive material for the unidentified material 26
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used to fabricate the o-ring 82 described by Youtsey would 1
have been successful? (See App. Br. PO 15-18). 2
Fifth, does Palinkas anticipate claims 1-9, 11-13, 15-25, 3
27, 29-31, 33/1, 33/8, 33/13, 33/22, 33/25, 33/27 and 33/30? 4
(See App. Br. PO 18-20 and 24-28; Reb. Br. PO 7-10). 5
Sixth, do claims 22-32, 33/22, 33/25, 33/27, 33/30 and 6
33/32 enlarge the scope of the claims of the ′595 patent? (See 7
App. Br. PO 29). 8
9
FINDINGS OF FACT 10
The record supports the following findings of fact (“FF”) by a 11
preponderance of the evidence. 12
13
Youtsey 14
1. We adopt and incorporate by reference the Examiner‟s findings 15
at page 6, lines 8-19 of the Answer (starting with “[w]ith respect to the 16
limitations of claims 1, 8, 13 and 16, Youtsey discloses a connector . . .” and 17
ending with “. . . the seal is positioned to physically contact the male 18
interface port (male connector 16).”). (See also Youtsey, col 2, ll. 49-52 and 19
65-67; id., fig. 3). 20
2. Youtsey‟s connector 10 includes two o-rings 82, 84. (Youtsey, 21
col. 5, ll. 45-49). Figure 3 of Youtsey depicts the first o-ring 82 as being 22
positioned in an annular groove 80 in the interior surface of the nut or 23
receptacle 30. (See Youtsey, col. 5, l. 45). The annular groove 80 is 24
depicted as being positioned axially between a flange 70 of the post or inner 25
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tube 28 and the internal threads 72 of the receptacle 30. (See Youtsey, col. 1
5, ll. 39-44). 2
3. Youtsey teaches that the o-rings 82, 84 seal the interior of the 3
connector 10 from moisture and environmental contaminants. (Youtsey, col. 4
5, ll. 50-53). Youtsey additionally teaches that the “o-rings 82 and 84 also 5
function to retain the parts of the coaxial cable end connector 10 together 6
until the connector 10 is fixed to the end of a coax cable by crimping.” 7
(Youtsey, col. 5, ll. 53-56). 8
4. Youtsey does not describe the o-ring 82 as being electrically 9
conductive. (See Ans. 10). 10
5. The Patent Owner argues that “Youtsey teaches away from 11
compressing the O-ring between the post-face and the port-face; the mere 12
existence of a groove (80) in the nut to accommodate the O-ring (82) 13
suggests that the O-ring should not be compressed between the port-face and 14
the post-face.” (App. Br. PO 8; see also Reb. Br. PO 3-5). Youtsey does 15
not state that the o-ring 82 is not compressed between the flange 70 and a 16
mating edge of a male connector 16, much less criticize or disparage 17
compressing the o-ring 82 between the two. (See RAN 54). 18
6. Based on a preponderance of the evidence, as set forth below, 19
we adopt the Examiner‟s finding that Youtsey describes a connector 10 in 20
which the o-ring 82 is compressed between the flange 70 of the inner tube 21
28 and the mating edge of the male connector 16. 22
7. The Examiner correctly finds that: 23
the intent of the o-ring member (82) is to prevent 24
moisture, etc. from getting into the connector when 25
the connector (10) is engaged to male connector 26
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(16). This essentially provides a compressed seal. 1
(Youtsey; column 5, lines 50-53). This 2
“compressed” seal would inherently make contact 3
with both the edge of male connector (16) and the 4
flange (first flange 70) of the second end of the 5
post (inner tube 28) or the o-ring (82) would [not] 6
perform a “sealing” functionality. 7
(Ans. 49; see also RAN 56). 8
8. The Examiner correctly finds that Figure 3 of Youtsey depicts 9
only about 50% of the o-ring 82 extending into the annular groove 80. (See 10
RAN 55). In other words, approximately half of the cross-section of the o-11
ring 82 is located over the flange 70, in the path of the connector 16 as it is 12
received in the receptacle 30. (See Req‟r Comments 10). This finding 13
follows from the position of the gap between the flange 70 and the interior 14
surface of the nut or receptacle 30 relative to the position of the o-ring 82 as 15
depicted in Figure 3. The finding is not dependent on Figure 3 being drawn 16
to any particular scale. The Examiner‟s finding that approximately half of 17
the o-ring 82 extends radially into the receptacle 30 over the flange 70 is 18
consistent with Youtsey‟s teaching that the o-ring 82 retains the parts of the 19
connector 10 together until the connector is crimped to the end of a cable 12. 20
(See FF 3). 21
9. The Examiner also correctly finds that the o-ring 82 makes 22
contact with the flange 70 of the inner tube 28 before the connector 16 enters 23
the receptacle 30. (See RAN 55-56; Req‟r Comments 10). Conversely, the 24
fact that the annular groove 80 is only large enough to accommodate 25
approximately half of the o-ring 82 at rest implies that the groove 80 would 26
have little space in which to accommodate substantially the entirety of the o-27
ring 82 if displaced outwardly by the male connector 16. These facts imply 28
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that the connector 16, on entering the receptacle 30, contacts the portion of 1
the o-ring 82 extending into the receptacle 30; and compresses at least a 2
portion of the o-ring between the flange 70 and a mating edge of the 3
connector 16 to thereby perform its disclosed sealing function. (See Ans. 4
49-51). These facts also imply that the o-ring 82 stops the axial progression 5
of the connector 16 onto the coaxial cable interface port and prevents the 6
connector 16 from contacting the post or inner tube 28 when the connectors 7
engage. 8
9
Eldering Declaration 10
10. Dr. Charles A. Eldering (“Eldering”) declares that a coaxial 11
cable “create[s] a waveguide structure that, among other things, contain[s] 12
the RF [that is, radio frequency] signal of interest and act[s] as an 13
electromagnetic container that keeps external signals and noise from 14
interfering.” (Eldering Decl., para. 7). Eldering additionally declares that: 15
in the cable television industry there had been a 16
long standing and unresolved problem with 17
connectors either not being fully tight or loosening 18
over time. When this occurs, the waveguide 19
structure of the cable‟s sheath is not extended all 20
the way to the port and, therefore, unwanted 21
electromagnetic noise can interfere with the signal 22
traveling down the center conductor. 23
(Eldering Decl., para. 8). 24
11. Eldering declares that Youtsey‟s 25
O-ring 82 is not conductive and, therefore, cannot 26
extend the waveguide structure of the cable‟s 27
sheath. If anything, it interferes with that process 28
by acting as a non-conductive barrier that must be 29
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overcome in order for flange 70 of inner tube 28 to 1
make electrical contact with the male interface 2
port. Because the connector must necessarily 3
operate to frequencies of up to 1 GHz (also termed 4
Radio Frequencies, or RF) it is critical that 5
[Youtsey‟s] flange 70 come into solid and firm 6
contact with the face of male connector 16 (the 7
mating edge of the port) in order to establish good 8
electrical continuity and create a continuous 9
waveguide structure that is required to maintain 10
signal integrity and keep key connector 11
performance parameters such as return loss and 12
insertion loss within acceptable ranges. 13
(Eldering Decl., para. 9). 14
12. Eldering suggests that the annular groove 80 in the interior 15
surface of Youtsey‟s nut or receptacle 30 16
avoid[s] the positioning of any component between 17
the interface port and the post. As one of at least 18
ordinary skill in the art, it is clear to me [that is, 19
Eldering] that O-ring 82 is compressed into special 20
O-ring groove 80 avoiding contact with the mating 21
edge of male connector 16 and providing a 22
physical seal by compression against the threaded 23
outer surface of male connector 16. 24
(Eldering Decl., para. 9). Eldering infers that o-ring 82, which is contained 25
within the annular groove 80, at most minimally contacts the flange 70. For 26
this reason, Eldering concludes that one of ordinary skill in the art would not 27
have substituted electrically conductive material for the material of the o-28
ring 82 described by Youtsey in order to provide an unbroken electrical 29
circuit between the cable‟s sheath and the port. (See Eldering Decl., para. 30
10). 31
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13. As support for this reasoning, Eldering reports having made 1
“working samples” of Youtsey‟s connector 10. Eldering had these “working 2
samples” encased in epoxy material; cross-sectioned; and then polished in an 3
attempt to demonstrate how the o-ring 82 would behave when the connector 4
10 was actually connected to a port 16. Eldering interpreted the tests as 5
proving that the male connectors 16 would have forced the o-rings 6
substantially entirely into the annular grooves, so that the o-rings would not 7
have made effective contact with a mating edge of the port, nor would have 8
prevented the port from contacting the post during mating. (Eldering Decl., 9
para. 12). 10
14. The Examiner‟s finding and technical reasoning are more 11
persuasive than Eldering‟s testimony. In particular, the Examiner‟s findings 12
and reasoning are more persuasive than the results of Eldering‟s tests. As 13
the Examiner correctly finds, Youtsey discloses recessing no more than 14
about half of the cross-section of an o-ring 82 into an annular groove 80 in 15
the interior surface of the receptacle 30. (FF 8). If Eldering‟s belief that the 16
male connector 16 compresses the o-ring 82 into the groove 80 were correct, 17
approximately half of the material of the o-ring would have to be displaced 18
radially into the groove by the male connector. When one considers that the 19
central o-ring 82 already sits on the flange 70 when the mating surface of the 20
male connector 16 contacts the o-ring 82 (FF 9), at least a portion of an o-21
ring 82 made of a material firm enough to retain the parts of the connector 22
10 together until the connector is crimped to the end of a cable 12 (see FF 3) 23
would be trapped by the advancing male connector 16 against the stationary 24
flange 70 rather than received and accommodated in the annular groove 80. 25
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15. The one photograph reproduced in the Eldering Declaration 1
which purports to show the “working samples” before the working samples 2
were coupled to male connectors does not clearly show how far the o-rings 3
were recessed into the annular grooves in the interior surfaces of the nuts 4
before the working samples were coupled to male connectors. (See Exhibit 5
E to the Appeal Brief, corresponding to Appendix C to the Eldering 6
Declaration). The drawing reproduced in Exhibit F to the Appeal Brief 7
(corresponding to Appendix B to the Eldering Declaration) suggests that 8
significantly more than half of the cross-sections of the o-rings in the 9
working samples may have been recessed into the annular grooves before 10
the working samples were coupled to male connectors. The additional 11
portion of the entirety of the o-ring which the annular groove of the 12
connector would have to receive if the male connector forced the o-ring 13
outwardly into the groove would be smaller in the connector shown in 14
Exhibit F to the Appeal Brief than in the connector depicted in Figure 3 of 15
Youtsey. 16
16. Therefore, Eldering‟s test results do not persuasively 17
demonstrate that a male connector coupled to Youtsey’s connector 10 would 18
succeed in forcing Youtsey‟s o-ring 82 substantially entirely into the annular 19
groove 80. Because the differing degrees to which the o-rings were recessed 20
into the annular grooves may have affected whether the male connectors 21
forced those o-rings substantially entirely into the annular grooves, 22
Eldering‟s test results are entitled to little weight as evidence of the behavior 23
of the o-ring 82 of Youtsey‟s connector 10. (See RAN 54-57; Req‟r 24
Comments 9-10). 25
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17. Eldering also offers the opinion that one of ordinary skill in the 1
art would have designed Youtsey‟s connector 10 so as to enable a male 2
connector 16 to force the o-ring 82 substantially entirely into the annular 3
groove 80 in order to allow the male connector 16 to make direct metal-to-4
metal contact with the flange 70 for improved RF shielding. Consistent with 5
this opinion, Eldering asserts that Youtsey‟s o-ring 82 “provid[es] a physical 6
seal by compression against the threaded outer surface of male connector 7
16.” (Eldering Decl., para. 9). Youtsey‟s o-ring 82 would require a certain 8
degree of deformability in order to provide effective sealing. Nevertheless, a 9
greater reaction force would be imposed by the engaged threads of the male 10
and female connectors 10, 16 onto a portion of the o-ring 82 trapped 11
between the forward end of the male connector 16 and the flange 70 than 12
would be imposed on an o-ring pushed radially outwardly by the sides of 13
the male connector. This fact indicates that an o-ring 82 at least partially 14
trapped between the forward end of the male connector 16 and the flange 70 15
would provide more effective sealing than an o-ring abutting against the 16
irregular (that is, threaded) radial side surface of the male connector 16. In 17
this sense, the Examiner correctly finds that “[t]his „compressed‟ seal would 18
inherently make contact with both the edge of male connector (16) and the 19
flange (first flange 70) of the second end of the post (inner tube 28) or the o-20
ring (82) would [not] perform a „sealing‟ functionality.” (Ans. 49; see also 21
FF 7). 22
18. Eldering‟s testimony regarding the approach of an expert in the 23
pertinent art to designing a connector of the type described by Youtsey is 24
useful in illuminating how one of ordinary skill might have understood 25
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Youtsey‟s teachings. Nevertheless, the Examiner‟s finding that Youtsey 1
describes a connector 10 in which the o-ring 82 is compressed between the 2
flange 70 of the inner tube 28 and the mating edge of the male connector 16 3
is more persuasive than Eldering‟s proposed findings and reasoning to the 4
contrary. 5
6
Lionetto 7
19. The Examiner correctly finds that Lionetto “teaches a sealing 8
member (conductive elastomer 34) in a coaxial cable connector assembly 9
being conductive (i.e. conductive), resiliently deformable and compressible 10
(i.e. an elastomer being deformable and compressible) in order to present a 11
means to facilitate electrical contact (column 2, lines 31-36; see Figures 1-12
2).” (Ans. 11). 13
20. Lionetto describes a microminiature coaxial connector 14
assembly including an outer male shield conductor 10 and a female outer 15
conductor 12. (Lionetto, col. 1, ll. 4-7; col. 2, ll. 1-5; and fig. 1). The 16
female outer conductor 12 of Lionetto‟s connector assembly includes an 17
internal sleeve 14 which fits within an inner surface 15 of the outer male 18
shield conductor 10. (Lionetto, col. 2, ll. 1-5). Lionetto teaches that, where 19
the outer male shield conductor 10 and the female outer conductor 12 of 20
Lionetto‟s connector assembly are aligned, “electrical contact is essentially 21
through [a] leaf spring 22 and a conductive elastomer 34 against which [a] 22
tapered surface 27 [of the internal sleeve 14] abuts.” (Lionetto, col. 2, ll. 31-23
36 and fig. 1). 24
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21. Lionetto further describes the conductive elastomer 34 as an 1
“electrically conductive elastomer gasket ring, carried on said male member 2
against which said outer end taper of said female member may engage and 3
compensates for misalignment of said male and female connector halves 4
when fully engaged, providing continuous circumferential electrical contact 5
and RFI [that is, radio frequency interference] suppression.” (Lionetto, col. 6
3, ll. 14-20 (claim 3)). 7
22. Lionetto does not describe further the material used to fabricate 8
the electrically conductive elastomer gasket ring 34. In particular, Lionetto 9
does not describe any evaluation or iterative testing used to select the 10
conductive elastomer used to fabricate the gasket 34. 11
12
Horak 13
23. The Examiner correctly finds that “Horak teaches a sealing 14
member (conductive rubber ring 18) in a coaxial cable connector (Abstract) 15
assembly being conductive (i.e. conductive), resiliently deformable and 16
compressible (i.e. rubber being deformable and compressible) in order to 17
provide weather sealing and eliminate RFI (i.e. electromagnetic interference) 18
at the same time (column 4, line 60 – column 5, line 11).” (Ans. 11). 19
24. Horak describes a connector including a nut section 12 and a 20
pin section 14. (Horak, col. 2, ll. 43-44). When the pin section 14 is 21
fastened to the nut section 12, axial compression of a rubber ring 18 between 22
a cylindrical mandrel 24 and a conductive body 16 of the nut section 12 23
causes the rubber ring 18 to expand radially inwardly against an outer 24
conductive jacket 62 of the coaxial cable 60. This action provides a 25
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weather-proof seal between the rubber ring 18 and the cable 60. (Horak, col. 1
4, ll. 25-41 and fig. 3). 2
25. Horak teaches that the signal-carrying central conductor 66 of a 3
coaxial cable 60 must be surrounded by a continuous conductive shield in 4
order to prevent the introduction of RFI into the signal carried by the central 5
conductor 66. (Horak, col. 4, ll. 60-63). Horak additionally teaches that 6
using conductive rubber for the rubber ring 18 not only provides weather 7
sealing but also prevents the introduction of RFI into the signal carried by 8
the central conductor 66. (Horak, col. 5, ll. 2-7). 9
26. Horak does not describe further the material used to fabricate 10
the rubber ring 18. In particular, Horak does not describe any evaluation or 11
iterative testing required to select the material used to fabricate the rubber 12
ring 18. 13
14
Bell 15
27. Bell (US 5,882,226, issued Mar. 16, 1999) describes a 16
connector and cable termination system 10 including a “plug body 12 17
provided with a coupling ring 14 secured to it by a retaining ring 16. The 18
plug body 12 contains an insulator 18 through which pass two (in this case) 19
male connector pins 20. The connector pins 20 mate with female connector 20
receptacles on a mating fixed connector (not shown).” (Bell, col. 1, ll. 48-54 21
and fig. 1). A portion of the plug body 12 is surrounded by an outlet body 22
22. (Bell, col. 2, ll. 6-7). “The wider portion 28 of the plug body has a 23
recess 32 for receiving a conductive resilient O-ring 34, which provides a 24
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degree of sealing between the plug body 12 and the outlet body 22.” (Bell, 1
col. 2, ll. 17-20). 2
28. Bell does not describe further the material used to fabricate the 3
conductive O-ring 34. In particular, the Requester correctly observes that 4
“Bell discloses the use of a conductive O-ring 34 in a coaxial connector (see 5
col. 2, ll. 19-20), without mentioning any particular difficulties encountered 6
with its selection and use.” (Req‟r Comments 8). 7
8
Palinkas 9
29. We adopt and incorporate by reference the Examiner‟s findings 10
at page 16, line 12 of the Answer (beginning with “[w]ith respect to the 11
limitations of claims 1, 8, 13 and 16 . . .”) through page 17, line 3 of the 12
Answer (ending with “. . . and facilitate grounding of the coaxial cable (44) 13
(column 5, lines 9-13; column 6, lines 14-18).”). 14
30. We adopt and incorporate by reference the Examiner‟s findings 15
at page 32, line 11 of the Answer (beginning with “[w]ith respect to the 16
limitations of claims 22, 25, 27 and 29, . . .”) through page 33, line 18 17
(ending with “. . . and/or the male coaxial cable interface port (externally 18
threaded stub shaft 56) from contacting the post (14) during mating.”). 19
31. Palinkas describes an “F” type connector 10 for a coaxial cable 20
44. (Palinkas, col. 1, ll. 53-59 and col. 4, ll. 41-43). Palinkas‟ connector 10 21
includes a post 14. (Palinkas, col. 3, ll. 40-42). A compression ring 20 22
clamps a compressible body 18 over the post 14 such that both the post 14 23
and the deformable body 18 engage portions of the cable 44. (Palinkas, col. 24
4, ll. 58-63). A nut 12 encircles the post 14 for threaded engagement with a 25
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stub shaft 56 of a port of a television receiver or other electronic equipment. 1
(See Palinkas, col. 4, ll. 25-27; col. 4, l. 66 - col. 5, l. 1 and col. 5, ll. 6-10; 2
and figs. 1-3 and 3d). 3
32. Palinkas describes the post 14 by saying that a “[f]lange 26 at 4
one end of post 14 is integrally attached to stem portion 28, the flange and 5
stem cooperatively defining constant diameter bore 30, extending fully 6
through post 14.” (Palinkas, col. 3, ll. 45-48). 7
33. Palinkas describes the flange 26 as a “metal flange.” (Palinkas, 8
col. 6, ll. 41-44 (claim 1)). Palinkas does not identify the metal. Figures 1-3 9
depict the flange 26 as being disc-shaped and unitary, without internal faces. 10
34. Furthermore, Palinkas teaches “metal-to-metal” contact 11
between the flange 26 and the stub shaft 56 to provide acceptable RFI 12
shielding and to substantially eliminate noise ingress and signal degradation. 13
(Palinkas, col. 5, ll. 10-15). This teaching implies that the flange 26 is an 14
electrically conductive member and that the flange 26 is electrically engaged 15
with the stem portion 28. More precisely, the teaching implies that the 16
flange 26 is electrically engaged with the shielding electrode of the coaxial 17
cable 44 through the stem portion 28. 18
19
ANALYSIS 20
First Issue 21
Claim 22 recites a connector including “a post having a first end and a 22
second end, wherein a flange is located at the second end of the post.” 23
Claim 22 further recites a conductive seal “electrically coupling the flange of 24
the post and the threaded nut.” (Italics added for emphasis.) The Examiner 25
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concludes that claim 22 is indefinite because “[i]t is unclear and indefinite 1
[as] to whether „a flange‟ is part of the „post‟ or a separate element located at 2
an end of the post.” (Ans. 39; see also id. at 64-65; Req‟r Comments 26-27). 3
The limitation “the flange of the post” indicates possession of the 4
flange by the post, that is, that the flange is integral with the post. (See Reb. 5
Br. PO 10; see also Req‟r Comments 26-27). The limitation “a post having 6
a first end and a second end, wherein a flange is located at the second end of 7
the post” says nothing about whether the flange is integral with the post or a 8
separate element. The two limitations may be understood as requiring that 9
the flange be an integral part of the post located at the second end of the 10
post. The claim is not ambiguous; instead, the alleged ambiguity identified 11
by the Examiner suggests that an interpretation sufficiently broad to 12
encompass a flange separate from the post would be unreasonable in the 13
context of the claim as a whole.
7
We do not sustain the rejection of claims 14
22, 23 and 33/22 under the second paragraph of § 112 as indefinite. 15
Claim 24 recites the “connector of claim 22, wherein the conductive 16
seal is located proximate the flange of the post and contacting said face.” 17
The Examiner merely states that “[t]here is insufficient antecedent basis for 18
this limitation in the claim.” (Ans. 41; see also Req‟r Comments 28). The 19
Patent Owner appears at first blush to argue no more than that, on remand, it 20
would request entry of an amendment which the Examiner declined to enter 21
after the Action Closing Prosecution. (See App. Br. PO 28). Nevertheless, 22

7
The Examiner also cites MANUAL OF PATENT EXAMINING PROCEDURE
§ 2172.01 as legal support for this rejection. (See Ans. 39). The alleged
ambiguity identified by the Examiner is not evidence that claim 22 fails to
recite what the named inventors regarded as the invention.
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the Patent Owner‟s position regarding the definiteness of claim 24 may be 1
gleaned from the Patent Owner‟s argument contesting the rejection of claim 2
27 as indefinite. (See id.) 3
Lack of antecedent basis for a term, in and of itself, does not imply 4
indefiniteness. This is particularly true where an antecedent basis for the 5
term can be identified by implication. Energizer Holdings, Inc. v. 6
International Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006). 7
Here, neither the Requester nor the Examiner has identified a face other than 8
the face of the flange of the post which a conductive seal located proximate 9
that flange might contact. This implies that the term “said face” would be 10
readily understood as referring to the face of the flange. We do not sustain 11
the rejection of claim 24 under the second paragraph of § 112 as indefinite. 12
Claim 27 recites a connector with “a post, . . . including a first end and 13
a second end, the second end of the post having a face.” Claim 27 further 14
recites “a conductive member positioned on the face of the second end of the 15
post and contacting the face of the post.” The Examiner concludes that “[i]t 16
is unclear and indefinite whether „the face‟ is the same face i.e. the one at the 17
second end of the post or an additional face of the post.” (Ans. 40; see also 18
Req‟r Comments 27). 19
Neither the Requester nor the Examiner has identified a face of the 20
post other than the face of the second end of the post which a conductive 21
member positioned on the face of the second end of the post might contact. 22
Given the proximity with which the two recitations of the word “face” 23
appear in the limitation “a conductive member positioned on the face of the 24
second end of the post and contacting the face of the post,” one reasonably 25
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would conclude that terms “the face of the post” and “the face of the second 1
end of the post” refer to the same face. We do not sustain the rejection of 2
claims 27, 28 and 33/27 under § 112, second paragraph, as being indefinite. 3
On the other hand, claim 25 recites, with italics added for emphasis, a 4
connector including 5
a conductive member located proximate the flange 6
of the post and contacting said face, said 7
conductive member facilitating grounding of the 8
coaxial cable and physically contacting a mating 9
edge of the male coaxial cable interface port, 10
wherein the physical contact between a mating 11
edge of the male coaxial cable interface port and 12
the conductive seal stops an axial progression of 13
the connector onto the male coaxial cable interface 14
port. 15
The use of the article “the” in the term “the conductive seal” indicates that 16
the term “the conductive seal” has an antecedent basis, that is, that there is a 17
previous recitation of the same element identified by the term “the 18
conductive seal.” One familiar with the Specification and the other claims 19
of the ′595 patent would identify the previous recitation as that of the 20
“conductive member.” Nevertheless, a conductive member “facilitating 21
grounding of the coaxial conductor and physically contacting a mating edge 22
of the male coaxial cable interface port” is not necessarily a conductive seal, 23
that is, it does not necessarily form a seal within the connector. 24
Ordinarily, the use of different terms in a claim connotes different 25
meanings. CAE Screenplates, Inc. v. Heinrich Fiedler GmbH, 224 F.3d 26
1308, 1317 (Fed. Cir. 2000). Claim 25 does not indicate whether the term 27
“conductive seal” is to be interpreted in accordance with its ordinary usage 28
or as being coincident in meaning with its broader antecedent “conductive 29
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member.” The Patent Owner‟s argument, which consists merely of an offer 1
to request on remand entry of an amendment which the Examiner declined 2
to enter after the Action Closing Prosecution (see App. Br. PO 28), does not 3
assist us in ascertaining a reasonable interpretation of claim 25 as presented 4
in this appeal. We sustain the rejection of claims 25, 26 and 33/25 under the 5
second paragraph of § 112 as indefinite. 6
7
Second Issue 8
Claim 29 recites, with italics added for emphasis, a connector 9
“wherein the means [for conductively sealing and electrically coupling a 10
flange of the post and the threaded nut] physically and electrically contact a 11
mating edge of the male coaxial cable interface port to stop an axial 12
progression of the connector into the male coaxial cable interface port.” As 13
the Examiner correctly finds, the Specification of the ′595 patent fails to 14
describe how to progress a connector having the threaded nut and other 15
structure recited in claim 29 into rather than onto a male coaxial cable 16
interface port. (See Ans. 42-43). Neither is it apparent that the level of 17
ordinary skill in the art would have been such as to enable one of ordinary 18
skill in the art to progress such a connector into rather than onto a male 19
coaxial cable interface port. 20
The Patent Owner‟s sole argument is that “the written description and 21
enablement rejection would have been rendered moot by the proposed 22
amendments to claim 29 submitted in the Response to [the Action Closing 23
Prosecution].” (App. Br. PO 29). The Patent Owner represents that, “[o]n 24
remand, [the Patent Owner] would request entry of the proposed amendment 25
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to correct these minor informalities.” (Id.) This argument does not address 1
how the Examiner may have erred in the decision to reject claim 29 as 2
presented in this appeal. We sustain the rejection of claim 29 under the first 3
paragraph of § 112 as not enabled and as failing to comply with the written 4
description requirement. 5
6
Third Issue 7
The Examiner finds that Youtsey describes a connector including each 8
limitation of independent claims 1, 8, 13, 16, 17, 20, 22, 25, 27 and 29-32 9
except the conductive seals recited in claims 1 and 22; the conductive 10
members recited in claims 8, 13, 17, 20, 27, 30 and 31; the means for 11
conductively sealing and electrically coupling the post and the threaded nut 12
recited in claim 16; and the means for conductively sealing and electrically 13
coupling a flange of the post and the threaded nut recited in claim 29. (See 14
Ans. 10 and 29). The Requester proposes, and the Examiner adopts, the 15
reasoning that it would have been obvious to substitute a compressible, 16
electrically conductive material for the unidentified material used to 17
fabricate the o-ring 82 described by Youtsey. (See Ans. 11-12 and 30; 18
Request 18). The Examiner concludes that one of ordinary skill in the art 19
would have had reason to make this substitution so that the o-ring 82 might 20
provide both environmental sealing and enhanced electrical conduction 21
between the outer conductor 24 of the cable 12 to which the connector 10 22
was secured and a male connector 16 to which the connector 10 was 23
connected. (See Ans. 11-13 and 30-31). 24
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The Patent Owner argues that “Youtsey teaches away from 1
compressing an O-ring between the post-face and the port-face; the mere 2
existence of a groove (80) in the nut to accommodate the O-ring (82) 3
suggests that the O-ring should not be compressed between the port-face and 4
the post-face.” (App. Br. PO 8; see also Reb. Br. PO 3-5; FF 5). The 5
Examiner correctly finds that the connector 16, on entering the receptacle 6
30, compresses the o-ring between the flange 70 and a mating edge of the 7
connector 16. (See Ans. 49-51). The Examiner also correctly finds that the 8
o-ring 82 stops the axial progression of the connector 16 onto the coaxial 9
cable interface port and prevents the connector 16 from contacting the post 10
or inner tube 28 during mating. 11
The Examiner‟s findings are supported by a preponderance of the 12
evidence. (See FF 6-9). While the Patent Owner cites the Eldering 13
Declaration as evidence that “O-ring 82 is compressed into special O-ring 14
groove 80 avoiding contact with the mating edge of male connector 16” (see 15
Eldering Decl., para. 9; see also Reb. Br. PO 3; Crivello Decl., para. 13), the 16
Examiner‟s findings and technical reasoning are more persuasive (see FF 17
14-18). Youtsey did not teach away from the combination proposed by the 18
Requester and adopted by the Examiner. 19
The Patent Owner‟s argument on page 15 of the Appeal Brief, that the 20
proposed modification of Youtsey‟s connector would have changed the 21
connector‟s principle of operation, is based on the same erroneous factual 22
assertions underlying the “teaching away” argument. The assertion of a 23
change in the principle of operation is unpersuasive as it is based on 24
erroneous factual assertions with respect to Youtsey. 25
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Fourth Issue 1
The Patent Owner also argues that: 2
those with ordinary skill in the art would have 3
[had] no motivation to modify Youtsey with the 4
teachings of either Lionetto or Horak, because 5
their knowledge of the structural characteristics of 6
Youtsey coupled with their knowledge of how 7
conductive elastomers behave would [have left] 8
them with no reasonable expectation that such a 9
combination would [have been] successful. In 10
particular, they would [have known] that “it would 11
not be obvious that the O-ring 82 of Youtsey could 12
simply be replaced by a conductive sealing 13
member, such as the conductive sealing members 14
of either Lionetto or Horak.” 15
(App. Br. PO 16-17 (quoting Crivello Decl., para. 13)). Paragraph 8 of the 16
Crivello Declaration states that: 17
[T]hose in the art appreciate that elastomers are not 18
naturally conductive, and making them such 19
involves a myriad of oppositely ranging variables; 20
the material choice involves substantial complexity 21
and is not tantamount to a simple and predictable 22
substitution. Significant evaluation and iterative 23
testing is needed to determine performance 24
capability for each unique design. Those in the art 25
understand that the incorporation of a compressible 26
conductive seal into a particular structural 27
geometry to accomplish specific physical and 28
electrical sealing functionality requires non-29
obvious consideration, and that other conductive 30
sealing members incorporated in different 31
structures (such as those taught by Lionetto and 32
Horak) will not merely work as substitute 33
components. Hence, it would not [have been] 34
obvious to those of ordinary skill in the art to 35
simply modify the sealing member of Youtsey by 36
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substituting the conductive seal members of either 1
Lionetto or Horak to achieve the inventive 2
structure and functionality of Mathews. 3
(Crivello Decl., para. 8). 4
Neither the Examiner nor the Requester appears to propose merely 5
substituting the electrically conductive elastomer gasket ring 34 described by 6
Lionetto or the conductive O-ring 34 described by Horak for Youtsey‟s o-7
ring 82. (See, e.g., Ans. 12; Request 20). Instead, the Examiner concludes 8
that it would have been obvious to substitute a conductive elastomeric 9
material for the unspecified elastomeric material used to fabricate the o-ring 10
82 described by Youtsey. Therefore, any argument that the Examiner erred 11
by proposing a mere substitution of the particular conductive seals described 12
by Lionetto or Horak for the o-ring 82 described by Youtsey is not 13
persuasive. 14
More generally, the fact that some experimentation might have been 15
required in order to substitute a conductive material for the unspecified 16
material of the seal 82 described by Youtsey does not lead to the conclusion 17
that one of ordinary skill in the art would have lacked a reasonable 18
expectation that the substitution would have been successful. See Pfizer, 19
Inc. v. Apotex, Inc., 480 F.3d 1348, 1364-65 (Fed. Cir. 2007). The fact that 20
one of ordinary skill in the art may have had to engage in significant 21
evaluation and iterative testing to identify an effective conductive elastomer 22
does not suggest that one of ordinary skill in the art would have lacked a 23
reasonable expectation of successfully identifying such an elastomer. 24
Nothing beyond conclusory statements in the Crivello Declaration suggests 25
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that any necessary evaluation or iterative testing would have been beyond 1
the level of ordinary skill in the art. 2
For example, Lionetto and Horak describe the use of conductive, 3
compressible gaskets or rings in their connectors without describing how the 4
conductive material is to be chosen. (See FF 21, 22, 25 and 26). Similarly, 5
the Requester points out that Bell describes the use of a conductive O-ring 6
34 to seal between the plug body 12 and the outlet body 22 without 7
providing any further guidance. (See Req‟r Comments 8; see also FF 27 and 8
28). The Requester points out, and the Examiner finds, that the ′595 patent 9
itself does not describe any significant evaluation or iterative testing that 10
must be performed in order to identify an effective conductive seal material. 11
(See RAN 51-52; Req‟r Comments 3-7). These findings indicate that the 12
level of ordinary skill in the art was sufficient to identify an effective 13
conductive material for use in a conductive seal in a coaxial connector, even 14
if the identification of the material required evaluation and testing. 15
Because the Examiner articulates persuasive reasoning with some 16
rational underpinning to support the conclusion of obviousness, we sustain 17
the rejection of claims 1-5, 7-11 and 13-33 under § 103(a) as being 18
unpatentable over Youtsey, Lionetto and Horak; and of claims 6 and 12 19
under § 103(a) as being unpatentable over Youtsey, Lionetto, Horak and 20
Montena. 21
22
Fifth Issue 23
Claim 1 recites a connector including “a post; a threaded nut; and a 24
conductive seal, said conductive seal electrically coupling the post and the 25
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threaded nut, wherein the conductive seal is positioned to physically and 1
electrically contact the male interface port.” Claim 22 recites a connector 2
including “a post . . . ; a threaded nut; and a conductive seal, said conductive 3
seal electrically coupling the flange of the post and the threaded nut, wherein 4
the conductive seal is positioned to physically and electrically contact a 5
mating edge of the male coaxial cable interface port.” Claim 31 recites a 6
method including steps of providing a connector including “a post, a 7
threaded nut, and a conductive member electrically coupling and physically 8
sealing a flange of the post and the threaded nut;” and “completing an 9
electromagnetic shield by threading the nut onto the male coaxial cable 10
interface port so that the conductive member physically contacts a mating 11
edge of the male cable interface port.” Claim 20 recites a method including 12
steps similar to those recited in claim 31. 13
The Examiner finds that Palinkas‟ flange 26 corresponds to the 14
“flange” recited in claim 31. The Examiner additionally finds that the “far 15
end of flange 26 that makes contact with [the] mating edge of stub shaft 56,” 16
corresponds to the “conductive seal” recited in claims 1 and 22; and the 17
“conductive member” recited in claim 31. (See Ans. 33). 18
The Patent Owner argues that the terms “conductive seal” and 19
“conductive member” cannot be interpreted so broadly as to read on the 20
flange 26 of Palinkas, which is “integrally attached” to a stem portion 28 of 21
the post 14. (See App. Br. PO 18-19; Reb. Br. PO 7-10; see also Eldering 22
Decl., para. 18). In so doing, neither the Patent Owner nor the supporting 23
Eldering Declaration appears to identify any formal definition or disclaimer 24
which might exclude the far end of Palinkas‟ flange 26 from the scope of the 25
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term “conductive member.” Because the far end of Palinkas‟ flange 26 is 1
electrically conductive (FF 33), it is within the ordinary usage of the term 2
“conductive member.” 3
Even if one concludes, as the Patent Owner and the Eldering 4
Declaration argue, that the term “post” as used in claims 1 and 31 is limited 5
to a combination of a stem portion and a flange (see Reb. Br. PO 7; Eldering 6
Decl., para. 18), post 14 described by Palinkas includes both a stem portion 7
28 and a flange 26 (FF 31). Even if one assumes,for example, that the 8
separate terms “post” and “conductive” seal must have different meanings in 9
claim 1 (see App. Br. PO 24-25; Reb. Br. PO 7 and 8), the Examiner has 10
given the terms different meanings by identifying only the far end of the 11
flange 26 as corresponding to the “conductive seal” recited in claims 1 and 12
22; and to the “conductive member” recited in claim 31. 13
Neither the Patent Owner nor the Eldering Declaration identifies any 14
formal definition or disclaimer which might imply that the far end of the 15
flange 26 fails to electrically couple the post and the threaded nut as recited 16
in claim 1; or fails to electrically couple the flange and the threaded nut. For 17
example, the Specification of the ′595 patent states that an O-ring 70 “may 18
facilitate electrical coupling of the post 40 and threaded nut 30 by extending 19
therebetween an unbroken electrical circuit.” (′595 patent, col. 7, ll. 58-61). 20
The far end of Palinkas‟ flange 26 facilitates electrical coupling of the 21
remainder of the flange 26 of the post 14 and the threaded nut 12 by 22
providing an electrical path between the two. (See Ans. 62-63). Because 23
Palinkas describes a connector including the limitations of independent 24
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claims 1, 22 and 31, we sustain the rejection of claims 1, 3, 20, 22, 31, 33/1 1
and 33/22 under §102(a) and § 102(e) as being anticipated by Palinkas.
8
2
Claims 2, 8, 13, 23, 25 and 27 recite connectors, each with a post 3
including a second end, “the second end having a face.” Claims 17, 21 and 4
30 recite methods performed using such connectors. As discussed earlier, 5
the Examiner finds that the “far end of flange 26 that makes contact with 6
[the] mating edge of stub shaft 56” corresponds to the “conductive seal” or 7
“conductive member” recited in the claims rejected as anticipated by 8
Palinkas. (See Ans. 33). The Patent Owner correctly points out that, if one 9
makes this finding, the second end of Palinkas‟ post 14 no longer has a face. 10
(See App. Br. PO 26). 11
The far end of Palinkas‟ flange 26, which corresponds with the 12
“conductive seal” or “conductive member” recited in the claims rejected as 13
anticipated by Palinkas, is integral with the remainder of Palinkas‟ post 14. 14
Therefore, the only face proximate the second end of the post 14 is part of 15
the conductive seal or conductive member. Because Palinkas fails to 16
describe a connector including the limitation of a post with a second end 17
having a face as required by claims 2, 8, 13, 23, 25 and 27, we do not sustain 18
the rejection of claims 2, 4-9, 11-13, 15-19, 21, 23-25, 27, 30, 33/8, 33/13, 19
33/25, 33/27 and 33/30 under either § 102(a) or § 102(e) as being anticipated 20
by Palinkas. 21

8
The Patent Owner additionally argues that Palinkas does not describe
a connector including a conductive seal or a conductive member which is
compressible. (See App. Br. PO 27-28). The Patent Owner does not
identify any claim on appeal reciting a “compressible conductive seal” or a
“compressible conductive member.”
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Claim 16 recites a connector including “a post; a threaded nut; and 1
means for conductively sealing and electrically coupling the post and the 2
threaded nut, wherein the means physically and electrically contact the male 3
interface port.” Claim 29 recites a connector including: 4
a post; 5
a threaded nut; and 6
means for conductively sealing and 7
electrically coupling a flange of the post and the 8
threaded nut, wherein the means physically and 9
electrically contact a mating edge of the male 10
coaxial cable interface port to stop an axial 11
progression of the connector into the male coaxial 12
cable interface port. 13
The use of the term “means” in the last indented limitation of both claim 16 14
and claim 29, and lack of any recitation of structure to perform the recited 15
functions, indicates that the two limitations are to be interpreted in 16
accordance with the sixth paragraph of 35 U.S.C. § 112 (2011). See Rodime 17
PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999). The 18
corresponding structure described in the Specification of the ′595 patent is 19
an O-ring 70 which merely contacts the post 40. (See ′595 patent, col. 7, ll. 20
53-61). 21
The Patent Owner argues that the “means” recited in claims 16 and 29 22
cannot be interpreted so broadly as to read on the flange 26 of Palinkas, 23
which is “integrally attached” to a stem portion 28 of the post 14. (See App. 24
Br. PO 18-19; Reb. Br. PO 7-10; see also Eldering Decl., para. 18). A 25
limitation interpreted in accordance with the sixth paragraph of § 112 “shall 26
be construed to cover the corresponding structure, material, or acts described 27
in the specification and equivalents thereof.” Neither the Examiner nor the 28
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Requester articulates technical reasoning to explain how Palinkas‟ flange, or 1
even merely the far end of the flange, might be structurally equivalent to the 2
O-ring 70 of the ′595 patent. (See, e.g., Ans. 18-19 and 36; RAN 71-72 and 3
73-74; Request 35; see also Request 28-30). For this reason, we do not 4
sustain the rejection of claims 16 and 29 under either § 102(a) or § 102(e) as 5
being anticipated by Palinkas. 6
7
Sixth Issue 8
Claims 22-33 were added during the course of the reexamination. 9
Claims 22, 25, 27, 29, 30, 31 and 32 are independent. The Examiner adopts 10
the Requester‟s proposed rejection of claims 22-33 under § 314 as enlarging 11
the scope of the claims of the patent being reexamined. 12
The Examiner‟s rejection of newly added independent claim 22 is 13
premised on the Examiner‟s interpretation of the term “a post having a first 14
end and a second end, wherein a flange is located at the second end of the 15
post” as being sufficiently broad to encompass “flanges” which are separate 16
from the recited posts. (See Ans. 43). As discussed in connection with the 17
First Issue supra, this claim interpretation is unreasonable. When claim 22 18
is interpreted correctly so that the flange is integral attached to the post, the 19
limitation of claim 22 reciting a conductive seal “electrically coupling the 20
flange of the post and the threaded nut” is no broader than the corresponding 21
limitation of patent claim 1 reciting “said conductive seal electrically 22
coupling the post and threaded nut.” (See App. Br. PO 29). 23
Similar analysis results in the conclusion that the scope of newly 24
added independent claim 25 is no broader than the scope of patent claim 8 25
Appeal 2013-009124
Reexamination Control 95/001,691
Patent No. US 7,828,595 B2

34
(See Ans. 44); that the scope of newly added independent claim 29 is no 1
broader than the scope of patent claim 16 (See Ans. 44-45); that the scope of 2
newly added independent claim 31 is no broader than the scope of patent 3
claim 20 (See Ans. 45); and that the scope of newly added independent 4
claim 32 is no broader than the scope of patent claims 1 and 8 (See Ans. 45-5
46). Therefore, we do not sustain the rejections of claims 22-26, 29, 31, 32, 6
33/22, 33/25 and 33/32 under § 314 as enlarging the scope of the claims of 7
the ′595 patent. 8
On the other hand, the Examiner finds that newly added independent 9
claim 27 “duplicates the limitations of original claim 13, however, drops the 10
requirement of „wherein said conductive member facilitates grounding of the 11
coaxial cable‟.” (Ans. 44). The Examiner also finds that newly added 12
independent claim 30 “duplicates the limitations of original claim 17, 13
however, drops the requirement of at least „facilitating grounding through 14
the connector‟.” (Ans. 45). The Examiner concludes that the omission of 15
these limitations enlarge the scope of claims 27 and 30 beyond the scope of 16
the claims of the ′595 patent prior to reexamination. The Patent Owner does 17
not appear to address the rejection of claims 27 and 30 under § 314, except 18
to say that “the proposed amendments in the Response to ACP would have 19
obviated this rejection.” (App. Br. PO 29). This argument does not address 20
how the Examiner may have erred in the decision to reject claims 27 and 30 21
as presented in this appeal. We sustain the rejection of claims 27, 28, 30, 22
33/27 and 33/30 under the first paragraph of § 112 as not enabled and as 23
failing to comply with the written description requirement. 24
25
Appeal 2013-009124
Reexamination Control 95/001,691
Patent No. US 7,828,595 B2

35
DECISION 1
We AFFIRM the Examiner‟s decision rejecting claims 1-33. 2
Requests for extensions of time in this inter partes reexamination 3
proceeding are governed by 37 C.F.R. § 1.956 (2011). 4
5
AFFIRMED 6

alw

Patent Owner:
7
JOHN MEZZALINGUA ASSOCIATES, INC. 8
C/O SCHMEISER OLSEN & WATTS 9
22 CENTURY HILL DRIVE, SUITE 302 10
LATHAM, NY 12110 11
12
13
14
15
Third Party Requester: 16
17
HISCOCK & BARCLAY LLC/PPC 18
ONE PARK PLACE 19
300 SOUTH STATE STREET 20
SYRACUSE, NY 13202 21