Ex parte GEROW

Board of Patent Appeals and Interferences

Jul 30, 1998

08156741 (B.P.A.I. Jul. 30, 1998)

Application for patent filed November 24, 1993.1
Paper No. 5, the final rejection, erroneously indicates2
that claim 2 was included in the rejection. However, claim 2
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN B. GEROW
__________
Appeal No. 96-0555
Application No. 08/156,7411
__________
ON BRIEF
__________
Before MEISTER, ABRAMS and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1 and 3-9, which constituted all of
the claims of record in the application at that time. Since2
Appeal No. 96-0555
Application No. 08/156,741
was canceled in Paper No. 4.
2
the final rejection, however, claim 5 has been canceled (Paper
No. 6) and the examiner has withdrawn the final rejection of
claims 1-4, 6 and 7, having been convinced by the appellant's
arguments that they are allowable (Paper No. 11). Therefore,
only claims 8 and 9 are before us on appeal.
The appellant's invention is directed to an electrical
connection system. The claims on appeal can be found in an
appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Webber 2,379,942 Jul. 10,
1945
Carr et al. (Carr) 2,754,487 Jul. 10,
1956
Vrobel 3,649,956 Mar. 14,
1972
Powell 4,653,839 Mar. 31,
1987
THE REJECTION
Appeal No. 96-0555
Application No. 08/156,741
The Answer erroneously states that the rejection also3
includes claims 5 and 7, the former of which was canceled,
while the latter was allowed.
3
Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Powell or Vrobel in view of Carr or
Webber.3
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The rejection is under 35 U.S.C. § 103, which means that
the examiner bears the initial burden of presenting a prima
facie case of obviousness (see In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)), which is
established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). This is not to say,
however, that the claimed invention must expressly be
suggested in any one or all of the references. Rather, the
Appeal No. 96-0555
Application No. 08/156,741
4
test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in
the art (see Cable Electric Products, Inc. v. Genmark, Inc.,
770 F.2d 1015, 1025, 226 USPQ 881, 886-87 (Fed. Cir. 1985)),
considering that a conclusion of obviousness may be made from
common knowledge and common sense of the person of ordinary
skill in the art without any specific hint or suggestion in a
particular reference (see In re Bozek, 416 F.2d 1385, 1390,
163 USPQ 545, 549 (CCPA 1969)), with skill being presumed on
the part of the artisan, rather than the lack thereof (see In
re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir.
1985)).
The crux of the argument advanced by the appellant with
regard to claims 8 and 9 is that there would have been no
reason for one of ordinary skill in the art to modify the
connector devices of Powell and Vrobel by providing them with
elastomeric material in the manner required by the claims. We
agree with the appellant with regard to Vrobel, but not with
regard to Powell.
Appeal No. 96-0555
Application No. 08/156,741
5
Claim 8 is directed to a connection system which includes
first and second mateable connector assemblies, the first of
which is provided with a plurality of pin contacts and the
second having sockets for receiving pins. The front end of
the first assembly has a layer of elastomeric material, and
the pins project through and forward of the elastomeric
material. The "characterized by" portion of claim 8 requires
that the second connector have a front portion forming
passages "which are tapered to guide said pin-type front ends
into said sockets," and that it be formed of rigid material.
Vrobel discloses a cable connector that incorporates some
of the components described in claim 8. The examiner points
to unnumbered tapered portions in the face of ceramic insert
40 as being the tapered entrances to passages which receive
pins 34. However, this face is deep within the device and
would not appear to be in need of additional sealing
protection. This being the case, we fail to perceive any
teaching, suggestion or incentive which would have led one of
ordinary skill in the art to install an elastomeric material
on the face of member 22, from which the pins protrude.
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Application No. 08/156,741
6
For this reason, it is our opinion that a prima facie
case of obviousness is not established with regard to either
of the rejections in which Vrobel is the primary reference,
and we will not sustain these rejections.
That is not the case, however, with Powell. The
connection system disclosed in this reference comprises a
first insulator 23 having an exposed face from which a
plurality of contacts 32 protrude, and a second insulator 40
having an exposed face in which there are sockets to receive
pins. The entrance 54 to each socket is tapered. The patent
teaches that the connection system "is designed for use in
hostile environments where [it] . . . might be subjected to
dirt and corrosive materials," and that it is designed to mate
with male and female "push-on" socket connectors (column 2,
lines 12-17). Powell does not disclose or teach providing an
elastomeric material on the face through which the pins
protrude, and it would appear that both that face and the face
having the sockets are of rigid material.
Webber discloses a connector comprising a plug member 6
which terminates in a convex resilient end surface 35 through
which a pin 8 protrudes. Jack member 7 terminates in an end
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Application No. 08/156,741
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surface 36 having a socket 9. The patent teaches that
"provided the convex surface 35 has sufficient resiliency, the
plane surface 36 need not be of resilient material" (page 2,
column 1, lines 34-36). The purpose of the elastomer material
is to insure that air, which is considered detrimental to the
connection, is not present (page 2, column 1, line 15 et
seq.).
From our perspective, it would have been obvious to one
of ordinary skill in the art, in view of Webber, to modify the
Powell connector by placing a layer of elastomeric material
over the face through which the pins protrude and, to the
extent that it might not be implicit in Powell that the face
in which the sockets are installed is rigid, to so construct
it. Motivation for doing so is found in the explicit
teachings of Webber that such improves the soundness of the
connection, considered with the explicit requirement of Powell
that the connector be useable in a hostile environment. The
requirement in dependent claim 9 that the elastomeric face be
convex is taught by Webber.
Appeal No. 96-0555
Application No. 08/156,741
8
The rejection of claims 8 and 9 based upon Powell and
Webber therefore is sustained.
We reach the same conclusion with regard to the rejection
on the basis of Powell in view of Carr. The latter reference
discloses a curved face 16a of "soft silicone Rubber" (column
2, line 52) through which a pin extends. The pin is received
in the tapered entrance 36a of a socket located in a front
face that can be, at least in part, of a "somewhat harder
material." The reference teaches that the convex surface
presses "firmly and completely" upon the other surface (column
7, line 14). It is our conclusion that, in view of the
teachings of Carr, one of ordinary skill in the art would have
found it obvious to cover the face of Powell through which the
pins protrude with a convex elastomeric material.
We are not persuaded by the appellant's arguments that
those rejections which we have sustained are without merit.
Our position with regard to them should be apparent. In
addition, we point out that, in large part, the appellant's
arguments focus upon limitations which were not present in
claims 8 and 9, and therefore fail at the outset. See In re
Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982).
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Application No. 08/156,741
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SUMMARY
The rejections of claims 8 and 9 on the basis of Vrobel
in view of Webber and Vrobel in view of Carr are not
sustained.
The rejections of claims 8 and 9 on the basis of Powell
in view of Webber and Powell in view of Carr are sustained.
A rejection of each of the claims having been sustained,
the decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES M. MEISTER )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
Appeal No. 96-0555
Application No. 08/156,741
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) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 96-0555
Application No. 08/156,741
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Leon D. Rosen
Freilich, Hornbaker & Rosen
10960 Wilshire Boulevard
Suite 840
Los Angeles, CA 90024