Ex Parte Bonavia et al

Board of Patent Appeals and Interferences

Sep 13, 2010

11061564 (B.P.A.I. Sep. 13, 2010)

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.
11/061,564 02/18/2005 Neal Bonavia 24305/1 5769
21710 7590 09/13/2010
BROWN RUDNICK LLP
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
DINH, PHUONG K
ART UNIT PAPER NUMBER
2839
MAIL DATE DELIVERY MODE
09/13/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte NEAL BONAVIA and MARIO ALVAREZ
________________

Appeal 2009-014195
Application 11/061,564
Technology Center 2800
________________

Before ROBERT E. NAPPI, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014195
Application 11/061,564

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. §§ 6(b) and 134(a) from the
Examiner’s rejection of claims 1 and 3-19. Claim 2 has been canceled (see
MISCELLANEOUS COMMUNICATION, mailed July 31, 2009).
We affirm.
[Appellants’ invention relates to a] resilient quick-
connector system having an engagement force below a first
threshold to facilitate manual engagement and a disengagement
force between a second threshold and a third threshold. The
disengagement force above the second threshold prevents
manual or accidental disengagement. The disengagement force
below the third threshold allows the connector system to
disengage upon application of an excessive break-away force
before damage to connected equipment occurs. A monolithic
receptacle shell having snap arms engages a coupling sleeve
adapted to retain a plug to the receptacle within the
predetermined force thresholds. The receptacle shell and/or the
coupling sleeve is mountable to substantially fixed equipment.
(Abstract).
Independent claim 1 is illustrative, reading as follows:
1. A connector system comprising:
a connector plug;
a connector receptacle adapted for engagement with said
connector plug, said connector receptacle having an annular
wall defining a distal opening and a radial array of snap arms
formed in said annular wall and extending distally around said
distal opening; and
a coupling sleeve disposed coaxially around said
connector plug, said coupling sleeve having a first internal step
portion adapted for engagement with said snap arms, and a
second internal step portion adapted for engagement with said
connector plug.
Appeal 2009-014195
Application 11/061,564

3
Claims 1 and 3-13 stand rejected under 35 U.S.C. § 112, ¶ 2 as being
indefinite.
Claims 1, 3, 5, 6, 8-10, 12, 14-16, 18, and 19 stand rejected under 35
U.S.C. § 102(b) as anticipated by Kipnes (US 3,525,973; Aug. 25, 1970).
Claims 7, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kipnes.2
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as obvious
over Kipnes in view of Reis (US 4,420,209; Dec. 13, 1983).

I.
THE INDEFINITENESS REJECTION OF CLAIMS 1 AND 3-13
The Examiner finds claims 1 and 3-13 to be indefinite because (1) the
claim language of independent claims 1 and 12, “‘a second internal step
portion adapted for arrangement with connector plug[,]’ is unclear and no
basis in specification is seen and just what internal step is referred to is
unclear” (Ans. 3); and (2) “[s]ince part 102 is only mentioned in speciation
[sic] on page 9, lines 27. Page 10, plug shell 60, but not as a [sic: an]
‘internal step’ nor does it appear to be an internal step as does step 76” (Ans.
8).
We understand the Examiner’s position to be that the claims are
indefinite because the claim language is not adequately supported by the
written disclosure of the Specification. Regardless, though, of whether this

2 We understand Appellants’ recitations of “[c]laims 7, 11 and 14” in their
briefs (App. Br. 21; Reply Br. 21 (emphasis added)) to be clerical errors
because Appellants alternatively refer to claims 7, 11, and 17 (App. Br. 15-
16; Reply Br. 15, 22) and because claim 17 – not 14 – sets forth force ranges
that are the subject of Appellants’ arguments.
Appeal 2009-014195
Application 11/061,564

4
may potentially be so,3 such a reason would not be a basis for finding the
claims to be indefinite under 35 U.S.C. § 112, ¶ 2. “The Supreme Court has
stated that ‘[t]he statutory requirement of particularity and distinctness in
claims is met . . . when [the claims] clearly distinguish what is claimed from
what went before in the art and clearly circumscribe what is foreclosed from
future enterprise.’” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
1244, 1249 (Fed. Cir. 2008) (citation omitted).
The Examiner has not alleged why one of ordinary skill would be
unable to determine the metes and bounds of claim protection being sought
by independent claims 1 and 12. Accordingly, The Examiner has not
established a prima facie showing that claim 1 or 12 is indefinite, so we will
not sustain the rejection of those claims or of dependent claims 3-11, and 13.

II.
THE ANTICIPATION REJECTION OF
CLAIMS 1, 3, 5, 6, 12, 14-16, 18, AND 19
Appellants argue that independent claims 1, 12, 14, and 18 are not
anticipated by Kipnes because “each of the independent claims requires a
coupling sleeve that is a separate component from the connector plug and
the connector receptacle which cannot be monolithically formed with one or
the other” (Reply Br. 18-19), whereas Kipnes discloses that flange stop 16 is
monolithically formed with the female member 12 (Reply Br. 19).
Even if we assume for the sake of argument that the language of the
independent claims precludes the coupling sleeve and connector plug from

3 Since the Examiner has not issued a written description rejection under 35
U.S.C. § 112, ¶ 1, we do not address that question.
Appeal 2009-014195
Application 11/061,564

5
being formed monolithically, Appellants’ argument does not explain why
Kipnes fails to anticipate the independent claims according to the
Examiner’s interpretation.
The Examiner concludes that (1) the resilient pin supporting sections
23, 24 correspond to the claimed connector plug; and (2) the female member
12, which is disposed coaxially around the pin supporting sections,
corresponds to the claimed coupling sleeve (Ans. 8). Appellants have not
argued why the pin supporting sections, either alone or alternatively in
combination with contact pin 18, cannot be interpreted as constituting a
connector plug as claimed. Nor have Appellants have argued why the entire
housing section of female member 12 cannot be interpreted as constituting a
coupling sleeve as claimed.
For the foregoing reasons, then, we will sustain the Examiner’s
rejection of independent claims 1, 12, 14, and 18, as well as dependent
claims 3, 5, 6, 15, 16, and 19 that depend from these claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).

III.
THE ANTICIPATION REJECTION OF CLAIMS 8 AND 9
Claim 8 depends from claim 1, setting forth that the connector system
“further compris[es] an annular groove extending into said snap arms and
adapted to accept an o-ring” (emphasis added). The Examiner has asserted
that “Kipnes discloses an annular groove at 25 (between 14 and 35)
extending into said snap arms 37” (Ans. 5). The Examiner further finds that
the annular groove corresponds to the claim language “adapted to accept an
Appeal 2009-014195
Application 11/061,564

6
o-ring” because the claim term “adapted” only requires that the groove is
capable of receiving an o-ring (id.).
Appellants argue (1) “the annular locking recess 31 of Kipnes is not
adapted to accept an o-ring” (App. Br. 20); and (2) “the Examiner’s logic is
flawed in” finding that the claim language “adapted to” does not require the
presence of an o-ring or an annular ring (Reply Br. 20).
Appellants’ first argument is not persuasive because the Examiner’s
rejection is not based upon the locking recess being adapted to accept an o-
ring. Rather, it is premised upon the region 25 between the stop flange 14
and the terminal portion or locking head 35 constituting an annular region
(Ans. 5). Appellants have not addressed this rationale.
Appellants’ second argument is not persuasive because we agree with
the Examiner that the claim language “adapted to” is directed to an intended
use of the claimed annular groove. As such, and because the claim does not
affirmatively recite an o-ring, the claim does not require the actual presence
of an o-ring. The claim limitation merely requires that the annular region be
capable of accepting an o-ring. Appellants have not, though, provided any
arguments as to why Kipnes’s annular region is incapable of accepting an o-
ring.
Furthermore, the Examiner has never asserted that the claim language
does not require the presence of an annular ring.
Accordingly, we sustain the Examiner’s rejection of claim 8 and claim
9 that depends from claim 8.

Appeal 2009-014195
Application 11/061,564

7
IV.
THE ANTICIPATION REJECTION OF CLAIM 10
Claim 10 depends from claim 1, setting forth that “said snap arms
include tapered lead-in surface such that the distal end external diameter of
said radial array of snap arms is less than the proximal openings of said
coupling sleeve.” The Examiner finds that the ends of the longitudinal
prongs 37 are tapered and satisfy the claim language (Ans. 5). Appellants,
in turn, contend that Kipnes does not disclose the language of claim 10,
specifically asserting
even if Kipnes were to disclose a tapered arm, which Applicant
disagrees with, there still is nothing in Kipnes that even teaches
or suggests snap arms including a tapered lead-in surface such
that the distal end external diameter of said radial array of snap
arms is less than the proximal opening of said coupling sleeve.
(Reply Br. 21).
Appellants’ arguments are not persuasive. Kipnes depicts (see, e.g.,
Fig. 4) prongs 37 having the ends of their retaining fingers 38 being
provided with beveled corners, or a “tapered lead-in surface,” as recited in
claim 10. Moreover, even though Kipnes does not expressly state that the
external diameter at this distal end is less than the diameter of the coupling
sleeve’s proximal opening, one of ordinary skill in the art would understand
this dimensional relationship to be either inherent or at least implied because
Kipnes’s device would only work as intended if the respective diameters
satisfy this relationship. That is, if the external diameter of the retaining
fingers was greater than or equal to the diameter of the coupling sleeve’s
proximal opening, Kipnes’s male plug portion 11 would not be able to
perform its intended function of being inserted into the female plug portion
12. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting that “in
Appeal 2009-014195
Application 11/061,564

8
considering the disclosure of a reference, it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom”).

V.
THE OBVIOUSNESS REJECTION OF CLAIMS 7, 11, AND 17
(a) Claims 7 and 17
Claims 7 and 17 both set forth that the force required to engage the
connector receptacle with the connector plug is “about between 15 lbs and
30 lbs” (“about 25 lbs” in claim 17) while the force to disengage these
components is “about between 75 and 110 lbs” (“about 80 lbs” in claim 17).
The Examiner rejected these claims as obvious over Kipnes because
“discovering the optimum or workable ranges involves only routine skill in
the art” (Ans. 6, 10).
Appellants contend
Kipnes fails to teach, suggest or disclose anything even
remotely related to a socket insert force between 15 and 30lbs.
Applicant does not agree that such an insert force would be
obvious to one skilled in the art. Even if workable ranges are
used in the art, there is no disclosure even related to such ranges
or even inserting a workable range in Kipnes.
(Reply Br. 21-22).
Appellants’ arguments are not persuasive. Kipnes discloses
The said enlarged terminal portion, hereinafter referred to
as the locking contact head, is thus in yieldably locked
engagement with the said annular recessed portion, hereinafter
referred to as the annular locking recess, the required effort to
disengage the two components from their said locked positions
obviously being greater than that required for slidably bringing
Appeal 2009-014195
Application 11/061,564

9
said components together towards their final operative
positions.
(Kipnes, col. 2, l. 71 – col. 3, l. 6 (emphasis added)). As such, Kipnes does
disclose the general condition of forming the components such that a greater
force is required to disengage them than is required to engage them. We
agree with the Examiner, then, that the record indicates discovering the
optimum or workable ranges involve only routine skill in the art.
We therefore sustain the Examiner’s obviousness rejection of claims 7
and 17.
(b) Claim 11
Claim 11 sets forth that the receptacle is made from aluminum alloy.
The Examiner acknowledges that Kipnes does not disclose aluminum alloy,
but finds that discovering the optimum material involved only routine skill
in the art (Ans. 6). Appellants have not addressed this rejection or its
underlying rationale. Appellants only argue the limitation relating to the
requisite engagement and disengagement forces that alternatively appears in
claims 7 and 17. Accordingly, we sustain the Examiner’s rejection of claim
11 pro forma.

VI.
THE OBVIOUSNESS REJECTION OF CLAIMS 4 AND 13
We likewise sustain the Examiner’s obviousness rejection of claims 4
13 over Kipnes in view of Reis. The Examiner reasons that it would have
been obvious to modify Kipnes’s coupling with Reis’s teaching of conduit
terminal inserts that include connector pins or connector sockets. Appellants
have not particularly pointed out any errors in the Examiner’s reasoning for
this modification. Rather, Appellants merely reiterate the same arguments
Appeal 2009-014195
Application 11/061,564

10
with respect to the alleged deficiencies of Kipnes in connection to (1) the
coupling sleeve being separate from the plug, and (2) the engagement and
disengagement forces being distinct (Reply Br. 22-23). We are not
persuaded by these arguments, however, for the same reasons discussed
above. The rejection of claims 4 and 13 is, therefore, sustained.

CONCLUSIONS
We do not sustain the Examiner’s rejection of claims 1 and 3-13 as
indefinite under 35 U.S.C. § 112, ¶ 2.
We sustain the Examiner’s anticipation rejection of claims 1, 3, 5, 6,
8-10, 12, 14-16, 18, and 19 under 35 U.S.C. § 102(b).
We sustain the Examiner’s obviousness rejections of claims 4, 7, 11,
13, and 17 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1 and 3-19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED

babc

BROWN RUDNICK LLP
ONE FINANCIAL CENTER
BOSTON, MA 02111