Ex Parte Degner et al

Patent Trial and Appeal Board

Jun 18, 2014

12242712 (P.T.A.B. Jun. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL
BOARD
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Ex parte BRETT WILLIAM DEGNER, JOSHUA BANKO,
JOHN RAFF, and CHRIS LIGTENBERG
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Appeal 2012-007167
Application 12/242,712
Technology Center 2800
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Before TERRY J. OWENS, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

Opinion for the Board filed by HASTINGS, Administrative Patent Judge.

Opinion dissenting filed by NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007167
Application 12/242,712

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 9-15 and 26-37 under 35 U.S.C. § 103(a) as
being unpatentable over Nishio (US 7,252,549 B2 , issued Aug. 7, 2007) in
view of Chiou (US 6,109,967, issued Aug. 29, 200). We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 9 is illustrative of the claimed subject matter:
Claim 9. A connector receptacle comprising:
a shell having a top portion and a bottom portion;
a rail on the top portion of the connector receptacle shell
and between the top portion and the bottom portion of the
connector receptacle shell, the rail extending a majority of a
depth of the connector receptacle shell; and
a first finger on the bottom portion of the connector receptacle
shell.

Appellants state that “claims 10-16 and 25-37 may stand or fall with
respect to independent claim 9” (App. Br. 4).

ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claims 9 is unpatentable under
§ 103 in view of the applied prior art. Accordingly, we will sustain the
Examiner’s prior art rejections, and we add the following primarily for
emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
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improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
It is also well established that in evaluating references it is proper to
take into account not only the specific teachings of the references but also
the inferences which one skilled in the art would reasonably be expected to
draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).
We are not persuaded by Appellants’ main argument that neither
Nishio, nor the combination of Nishio and Chiou show or suggest a rail as
claimed (App. Br. 5). First, the argument as directed solely to Nishio is
unconvincing because it is directed to Nishio alone rather than the
combination of Nishio and Chiou as proposed by the Examiner. See In re
Merck & Co., Inc., 800 F.2d 1091, 1098 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.").
Appellants’ argument that turning the receptacle of Nishio over merely
results in a tongue 23 being the top portion of the receptacle rather than
being between a top portion and a bottom portion (App. Br. 5) ignores the
proposed modification made to Nishio by the Examiner, that is, to form the
tongue/rail 23 of Nishio as “the rail on the top portion and between the top
portion and the bottom portion, as taught by Chiou, in order to provide a
more restrictive/secure receptacle for the mating plug” (Ans. 5).
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Second, Appellants’ arguments that the combination does not “yield
the required rail” because it “results in a finger in a top of a shell” (App. Br.
5-6) and that since both references disclose a finger there is “no reason to
combine these features” (id) are also not directed to the Examiner’s
proposed modification of Nishio. Furthermore, as pointed out by the
Examiner, merely turning the connector receptacle shells over results in the
claimed finger in the bottom and rail at the top (e.g., Ans. 8-10). Appellants
do not dispute the Examiner’s finding that the unlabeled rail of Chiou
occupies a position similar to the tongue/rail of Nishio (e.g., see Figures A,
B at Ans. 8, 9; no Reply Brief has been filed).
Appellants have not provided persuasive reasoning or credible
evidence why one of ordinary skill in the art would not have, using no more
than ordinary creativity, predictably used a known receptacle configuration,
such as the closed shell with a “rail on the top portion and between the top
portion and the bottom portion, as taught by Chiou, in order to provide a
more restrictive/secure receptacle [in Nishio] for the mating plug” (e.g., Ans.
5, 12; App. Br. generally). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
Accordingly, we affirm the Examiner’s § 103 rejection of all the
claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED
Appeal 2012-007167
Application 12/242,712

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NAGUMO, Administrative Patent Judge, dissenting.
I respectfully dissent.
In my view, the Majority misapprehends Appellants’ arguments
concerning the Examiner’s finding that Nishio tongue 23 is somehow “a rail
on the top portion of the connector receptacle shell,” as required by claim 1,
and the further determination that it would have been obvious to form
“tongue/rail 23 of Nishio as the rail on the top portion and between the top
portion and the bottom portion as taught by Chiou . . . ” (Majority at 3, last
sentence.) Nishio tongue 23 is, as Appellants argue (App. Br. 4, last
sentence; 5, ll. 15-17, 25-26), not a “rail” on a surface (top or bottom) inside
a receptacle. Rather it is a portion of the conductive shell (shield case) wall.
(Nishio, col. 5, ll. 20-47, Figs. 1 and 4.) The unlabeled (and apparently not
described in the text of the Chiou Specification) bump on the distal end of
outer mating portion 36 (the extension of front wall 24; see Figs. 3-5),does
not occupy a position corresponding to Nishio tongue portion 23 that
engages with a recess 63 on male plug 5, providing both shielding and
protection against erroneous insertion (Nishio col. 5, ll. 39-47; col. 6,
ll. 54-66; Fig. 6.) It is harmful error to identify tongue 23 as a rail or as a
structure analogous to a rail on the top portion of the connector shell, etc., as
required by claim 1. The Examiner’s findings are not supported by credible
or substantial evidence in the record. I therefore conclude that the Examiner
has not come forward with a credible reason to modify the receptacle
described by Nishio in a way that would result in a receptacle within the
scope of the claims.
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I would reverse the appealed rejections.

lp