Ex Parte Fedder et al

Patent Trial and Appeal Board

Nov 21, 2013

12152553 (P.T.A.B. Nov. 21, 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.
12/152,553 05/15/2008 James L. Fedder E-CC-00326-A
(12494/41)
5696
7590 11/21/2013
Tyco Technology Resources
Suite 140
4550 New Linden Hill Road
Wilmington, DE 19808-2952
EXAMINER
NGUYEN, PHUONGCHI T
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
11/21/2013 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
________________

Ex parte JAMES L. FEDDER, ATTALEE S. TAYLOR,
and DAVID A. TROUT
________________

Appeal 2011-007325
Application 12/152,553
Technology Center 2800
________________

Before JAMES C. HOUSEL, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007325
Application 12/152,553

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 20. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to “an electrical terminal of the
type to be inserted into an aperture of an electrical panel member.” Spec.
[0006]. Claims 1, 5, 6, and 15 are illustrative:
1. An electrical terminal of the type to be inserted into an aperture of
an electrical panel member comprising:
a base; and
an insertion portion extending from the base to a first end, the
insertion portion having a first tapered segment extending from the
first end to a first location on a first side of the insertion portion, the
first tapered segment including a substantially continuous first taper,
and a second tapered segment on the first side of the insertion portion
extending from the first location to the base, the second tapered
segment including a substantially continuous second taper, wherein
the first taper is measured from the first end to the first location, and
the second taper is measured from the first location to the base.
5. The terminal of claim 1 wherein the second taper is between
zero and about 0.6 degrees and is sufficient to permit the
insertion portion to be inserted a distance into a panel member
aperture with a substantially uniform insertion force over a
substantial portion of the distance.
6. The terminal of claim 1 wherein the second taper is between
zero and about 0.3 degrees and is sufficient to permit the
insertion portion to be inserted a distance into a panel member
aperture with a substantially uniform insertion force over a
substantial portion of the distance.
15. The terminal of claim 14 wherein the deformed first leg
segment comprises a thickness that varies along a length of the
deformed first leg segment, wherein the thickness is a distance
between an upper surface and a lower surface of the deformed
first leg segment, and the deformed second leg segment
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comprises a thickness that varies along a length of the deformed
second leg segment, wherein the thickness is a distance between
an upper surface and a lower surface of the deformed second
leg segment.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Kikuchi U.S. 6,231,402 B1 May 15, 2001
Kaneko U.S. 6,984,135 B2 Jan. 10, 2006
The Examiner maintains, and Appellants appeal, the following
rejections:
1. Claims 1 through 17 under 35 U.S.C. § 102(b) as anticipated
by Kikuchi; and
2. Claims 18 through 20 under 35 U.S.C. § 103(a) as
unpatentable over Kikuchi in view of Kaneko.
OPINION1
The dispositive issues in this appeal are:
1. Did the Examiner err in determining that Kikuchi discloses a
“second tapered segment including a substantially continuous
second taper” where “the second taper is measured from the first
location to the base” (claim 1)?
2. Did the Examiner err in determining that Kikuchi discloses a
second taper “between zero and about 0.6 degrees (claim 5) or
between zero and about 0.3 degrees (claim 6)”?

1 Appellants have not presented separate substantive arguments addressing
claims 1-4, 7-14, and 16-20. In accordance with 37 C.F.R. §
41.37(c)(1)(vii), we select claim 1 as representative and claims 2-4, 7-14,
and 16-20 will stand or fall together with claim 1.
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3. Did the Examiner err in determining that Kikuchi discloses
deformed leg segments of the electrical terminal comprise a
thickness that varies along the length of the segments (claim 15)?
After review of the arguments and evidence presented by both
Appellants and the Examiner, we AFFIRM-IN-PART.
Issue 1: Claim 1
The Examiner finds that Kikuchi describes an electrical terminal of
the type to be inserted into an aperture of an electrical panel member having
a base and an insertion portion. Ans. 3. With reference to annotated
Figures 1 and 9 from Kikuchi, the Examiner finds, and Appellants do not
dispute, that Kikuchi discloses an electrical terminal having a base (B), an
insertion portion (I), a first end (E1), a first tapered segment (portion having
T1) extending from the first end (E1) to a first location (L1) on a first side
(S1) of the insertion portion (I), the first tapered segment (portion having
T1) including a substantially continuous first taper (T1), and a second
tapered segment (portion having T2) on the first side (S1) of the insertion
portion (I) extending from the first location (L1) to the base (B), wherein the
first taper (T1) is measured from the first end (E1) to the first location (L1)
and the second taper (T2) is measured from the first location (L1) to the base
(B). Id.; App. Br. 4-8. The Examiner further finds the second tapered
segment (portion having T2) includes a substantially continuous second
taper (T2). Ans. 3.
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{Kikuchi Figures 1 and 9 Annotated}

{Kikuchi Figures 1 and 9 Annotated}
Appellants argue that “Kikuchi fails to teach or suggest the claim
limitations requiring a ‘second tapered segment including a substantially
continuous second taper,’ where ‘the second taper is measured from the first
location to the base.’” App. Br. 4-5. Appellants argue that the Examiner
erred in measuring a T2 angle which, Appellants assert, the Examiner
measured from a first location to a second location rather than from a first
location to the base. Id. at 6. Appellants further contend that the angle
measured by the Examiner “is simply irrelevant to the ‘substantially
continuous second taper’ required by the claims[.]” Id. Appellants’ position
is that because “there are several different tapers that make up the portion of
the Kikuchi contact between the first location and the base . . . there cannot
be a substantially continuous taper that is measured from the first location to
the base.” Id. at 8.
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The Examiner responds that both Figures 1 and 2A of Kikuchi show
that the “lower post section 54 is narrower than the upper post section
between the concave shaped groove 51 and the corresponding base. Thus it
is readily apparent that the post section is tapered as required by the claim.”
Ans. 7.
We begin, as we must, with the language of claim 1. The “second
tapered segment” is defined in claim 1 as “extending from the first location
to the base”. Claim 1 further specifies that “the second tapered segment
include[s] a substantially continuous second taper” and that “the second
taper is measured from the first location to the base.” Thus the claim
requires that the second tapered segment include somewhere along the
region from the first location to the base a substantially continuous second
taper. The claim also requires that the substantially continuous second taper
be measured from the first location to the base.2 Claim 1 does not require
that the tapers be substantially linear, as depicted in the embodiment
illustrated in Figure 3 of Appellants’ Application, but substantially
continuous.
The Examiner correctly finds, and Appellants do not dispute, that
Kikuchi discloses a second tapered segment as claimed in claim 1. Ans. 3;
App. Br. 4-8. Appellants cite as support for the “second tapered segment”
element of claim 1 Figures 1 through 3 of their Application. App. Br. 3.
Figure 1 is copied below:

2 The ordinary meaning of the word “continuous” is being in immediate
connection or spatial relationship.
Dictionary.reference.com/browse/continuous?s=t.
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Appellants concede that Kikuchi teaches several tapers in the region
of the second tapered segment. App. Br. 8. Because these several tapers are
in immediate connection or spatial relationship, they are continuous. The
Examiner correctly finds that the substantially continuous second taper can
be measured from the first location to the base. The measurement from the
first location to the base does not require a linear progression from the first
location to the base. If that were not the case, then the embodiment shown
in Figure 1 of Appellants’ Application would not be encompassed by this
requirement of claim 1.
Therefore we find that the preponderance of the evidence supports the
Examiner’s rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by
Kikuchi.
Issue 2: Claims 5 and 6
Referring to the annotated figures of Kikuchi, supra, the Examiner
finds that Kikuchi discloses a terminal wherein “the second taper segment
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(portion having T2) or the second taper (T2) or the third taper (T3) being
between zero and about 0.3 or 0.6 degrees (see marked-UP 3).” Ans. 5. The
Examiner also finds that Kikuchi discloses “a substantially uniform insertion
force over a substantial portion of a distance” without citation to Kikuchi.
Id.
Appellants argue that Kikuchi does not teach or suggest a second
taper and therefore do not disclose a second taper of between zero and about
0.3 or 0.6 degrees. App. Br. 8-9. Appellants further argue that “Kikuchi
focuses on holding power (see, e.g., Kikuchi, col. 3, lns. 35-47; Fig. 13),
rather than obtaining a substantially uniform insertion force.” Id. at 9.
The Examiner responds with calculations of measurements made from
Figure 2A of Kikuchi to show an angle of about 0.6 degrees. Ans. 8-9. The
Examiner further states that it is “logical that once the insertion of the []
Kikuchi contact has progressed to the point where the press fitting sections
52 have been deformed to conform to the through-hole, the insertion force
from that point on until the base portion reaches the surface of the board will
be substantially uniform. . . . Since the claim merely recites an unspecified
distance, the prior art inherently anticipates the claim language.” Id. 9- 10.
We have thoroughly reviewed the evidence presented for both
anticipation and patentability of claims 5 and 6. However, we determine
that a preponderance of the evidence supports the Appellants’ argument that
the subject matter of claims 5 and 6 is not anticipated within the meaning of
§ 102 in view of the applied prior art.
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of § 102. In re Schaumann, 572 F.2d
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312, 317 (CCPA 1978). “[A]bsence from the reference of any claimed
element negates anticipation.” Kloster Speedsteel AB v. Crucible Inc., 793
F.2d 1565, 1571 (Fed. Cir 1986). It is well established that there is no
ipsissimis verbis test for determining whether a reference discloses a claim
element, i.e., identity of terminology is not required. In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990). Nor are specific examples of the claimed subject
matter necessary to establish anticipation. However, to anticipate, one
skilled in the art must be able to “at once envisage” the claimed subject
matter in the prior art disclosure. In re Petering, 301 F.2d 676, 681 (CCPA
1962).
The figure from Kikuchi that the Examiner enlarges and measures to
determine a precise angle does not appear to convey to one of ordinary skill
in the art the subject matter of claims 5 and 6, particularly where, as here,
the reference does not disclose that the drawings are to scale and is silent as
to dimensions, arguments based on measurement of the drawing features are
of little value. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222
F.3d 951, 956 (Fed. Cir. 2000). Therefore, we reverse the rejection of
claims 5 and 6 under 35 U.S.C. § 102(b) as anticipated by Kikuchi.
Issue 3: Claim 15
We interpret claim 15 to require a second tapered segment extending
from the first location to the base as claimed in claim 1 and further
comprising a deformed first leg segment and a third tapered segment on an
opposite side of the insertion portion extending from a second location
opposite the first location to the base further comprising a deformed second
leg segment “wherein the deformed first leg segment comprises a thickness
that varies along a length of the deformed first leg segment” and “the
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deformed second leg segment comprises a thickness that varies along a
length of the deformed second leg segment.”
Referring to the annotated Figures 1 and 9 of Kikuchi, supra, the
Examiner finds that Kikuchi discloses a “deformed first leg segment (portion
having 12right/52right) comprises a thickness (T1r, T2r, T3r) that varies
along a length of the deformed first leg segment . . . , and [a] deformed
second leg segment (portion having 12left/52left) comprises a thickness
(T1l, T2l, T3l) that varies along a length of the deformed second leg segment
. . . .” Ans. 5.
Appellants argue “the thicknesses identified by the Examiner appear
to be the same, and the specification does not teach or suggest otherwise.”
App. Br. 9.
The Examiner responds that “due to the bevel at the lower part of the
leg segment (i.e., press fitting section 12) . . . there is ‘a length’ where the
thickness of that segment will vary when measured from the upper surface to
the lower surface.” Ans. 10.
Based on this record, the preponderance of the evidence supports
Appellants’ position that the thicknesses identified by the Examiner at T1r,
T2r, T3r, T1l, T2l, T3l appear to be the same. We are not convinced that the
bevel depicted in Figure 9 of Kikuchi varies the thickness along a length of
either the deformed first leg segment or the second leg segment. Therefore
we reverse the rejection of claim 15 under 35 U.S.C. §102(b) as anticipated
by Kikuchi.

For the foregoing reasons, we affirm the rejection of claims 1-4, 7-14,
16-20, and reverse the rejections of claims 5, 6, and 15.
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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)(v).
AFFIRMED-IN-PART

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