Ex Parte Lubinsky et al

Board of Patent Appeals and Interferences

Oct 30, 2009

11420547 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL W. LUBINSKY, MARIE T. LUBINSKY,
JAMES L. ZAHNEN, and ROY E. JAZOWSKI
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Appeal 2009-003899
Application 11/420,547
Technology Center 2800
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Decided: October 30, 2009
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Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-30. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
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BACKGROUND
Claim 1 is illustrative of Appellants’ invention:
1. A reusable insulating and sealing structure for an electrical cable
end to be positioned in an electrically conductive body of an electrical
connector, the reusable insulating and sealing structure comprising:
an insulating tube having an open proximal end to be positioned
adjacent the electrically conductive body of the electrical connector and an
open distal end opposite the open proximal end;
a frusto-conical seal having an enlarged diameter open distal end
carried by the open distal end of said insulating tube and having a reduced
diameter open proximal end extending into said insulating tube, the reduced
diameter open proximal end being resiliently deformable to accommodate a
range of sizes of cable ends therethrough;
a removable seal closure cap for removable positioning in the
enlarged diameter open distal end of said frusto-conical seal; and
an integrally molded tether connecting said removable seal closure
cap to said frusto-conical seal adjacent the enlarged diameter open distal end
thereof.

Appellants appeal the following rejection:
Claims 1-30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of Cawood1 and Burwell2.
Appellants argue the claims as a group and focus on claim 1.
Accordingly, we shall focus on claims 1 in our analysis below. See 37
C.F.R. § 41.37(c)(1)(vii).

1 US 2004/0161968 A1, published August 19, 2004
2 US D478,318 S, issued August 12, 2003
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DISPOSITIVE ISSUE
The dispositive issue on appeal is as follows:
have Appellants shown the Examiner reversibly erred in determining
that it would have been prima facie obvious to use the seal closure cap and
integrally molded tether of Burwell’s three pole connector housing tube in
the insulating boot (i.e., housing tube) of Cawood’s electrical connector?
We answer this question in the negative.

PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
FACTUAL FINDINGS (FF)
The Invention
Appellants’ invention is illustrated as shown in Fig. 1 below:
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Fig. 1 shows an insulating boot/tube 22 with a frusto-conical seal 34
into which cable end 38 is inserted into the conductive post 13 of an
electrical connector 11, and a seal closure cap 20 attached via an integral
tether 21 (Spec. [0019] to [0021]).
The Prior Art
Fig. 4B of Cawood is reproduced below:

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Fig. 4B of Cawood illustrates boot 30’ including an insulating tube
31’ with the electrical cable 35’ inserted via a seal 34’ into an electrical
conductive post of an electrical connector (not shown in Fig. 4B; but see Fig.
1A) (e.g., [0035], [0041]).
One of ordinary skill in the art would have appreciated that the boot
30’ of Cawood is reusable, that is, one cable could be removed and another
cable inserted through the seal after its initial rupture (see, e.g., Cawood
[0017] (“The at least one rupturable seal may also be compliant to
accommodate different sized cable ends”)).
One of ordinary skill in the art would have appreciated that after the
first time the insulating boot 30’ of Cawood is used (i.e., after the first time
an electrical cable end is inserted), there would have been an “open proximal
end” as required by claim 1 (see, e.g., Ans. 7).
Fig. 7 of Burwell is reproduced below:

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Fig. 7 of Burwell exemplifies a three pole electrical connector with a
sealing cap and tether to cover a housing tube when not in use.
ANALYSIS
The Examiner’s findings reasonably establish that the combined prior
art would have suggested the obviousness of the claimed reusable insulating
and sealing structure, including a removable seal closure cap and tether, for
an electrical cable end (Ans. 3-7).
Appellants’ contend that the frusto-conical seal of Cawood does not
have a “reduced diameter open proximal end” as recited in claim 1, because
the “rupturable” seal portion 34’ of Cawood is not an open end as required
by claim 1 (Br. 6-9). These arguments are not persuasive of error.
Even assuming that the frusto-conical seal of Cawood does not
initially have a “reduced diameter open proximal end” as recited in claim 1,
there is no dispute that the rupturable seal portion 34’ of Cawood is ruptured
upon its first use. As the Examiner aptly points out, after the first time the
boot 30’ of Cawood is used, there indeed would have been an open end as
required by the claim (Ans. 7; see FF). Appellants have not refuted the
Examiner’s finding that the insulating boot of Cawood is reusable (see
generally Br.)3.
Accordingly, it would have been no more than the predictable use of a
known prior art element, that is, the molded tether and seal closure cap as
exemplified in Burwell, for its known purpose to protect the passageway of
an electrical connector housing, here the interior of the insulating boot/tube
30’ of Cawood, after its first use.

3 No Reply Brief has been filed.
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The Appellants also contend that the Examiner “has also improperly
combined [the references] based upon hindsight.” (Br. 5). The Appellants
do not otherwise explain why the combinations of references proposed by
the Examiner are based on a hindsight reconstruction.
We find that the Appellants’ contention is nothing more than a general
disagreement with the Examiner's rejection and does not amount to a
developed argument. See United States v. Dunkel, 927 F.2d 955, 956 (7th
Cir. 1991) (“A skeletal ‘argument’, really nothing more than an assertion,
does not preserve a claim.”).
In particular, the Appellants have failed to direct us to any portion of
the Examiner’s rejection that relies on knowledge that was outside the level
of ordinary skill at the time the claimed invention was made and/or includes
knowledge gleaned only from the Appellants’ disclosure. In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). Thus, Appellants’ contention is not
persuasive of reversible error.
Accordingly, we affirm the rejection of all the claims based on the
combined prior art of Cawood and Burwell.
CONCLUSION
Appellants have not shown that the Examiner reversibly erred in
determining that it would have been prima facie obvious to use the seal cap
and tether of Burwell with the insulating/sealing boot of Cawood.
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 C.F.R. § 1.136(a).

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ORDER
AFFIRMED

sld

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