Ex Parte Marquardt et al

Board of Patent Appeals and Interferences

Jun 1, 2009

10924017 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRY L. MARQUARDT and CHRISTIAN H. PASSOW
____________

Appeal 2008-004829
Application 10/924,017
Technology Center 2800
____________

Decided:1 June 2, 2009
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY, III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11 and 13-28, which are all of the claims remaining in
this application. Claim 12 is cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

Invention
Appellant’s invention relates to a system and a method for connecting
a removable coil to fixed coil terminals to form an electromechanical device.
(Spec. 1, ll. 13-15).

Representative Claim
1. A system for connecting a removable coil to a fixed coil
terminal in an electrical device, comprising:

a housing;
a fixed terminal mounted to the housing;
a removable coil removably mountable in the housing;
a coil terminal clip mounted to the coil, wherein the fixed
coil terminal makes electrical contact with the coil
terminal clip when the removable coil is inserted in the
housing and the coil terminal clip provides clamping
pressure to restrain movement of the removable coil in
the housing.

Prior Art
The Examiner relies on the following references as evidence in
support of the rejections:
Ostby US 3,453,569 Jul. 1, 1969
(filed Aug. 31, 1967)
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Examiner’s Rejections
Claims 1-11 and 13-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ostby.

II. ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
With respect to claims 1, 10, 11 and 21-23, have Appellants shown
that the Examiner erred in rejecting claims 1, 10, 11, and 21 as being
unpatentable over Ostby? The issue turns on whether the modification of
Ostby is based on the impermissible hindsight that relies on the teachings of
the present invention. If the modification of Ostby is not based on the
hindsight, the issue then turns on whether Ostby teaches or fairly suggests
that the spring clips provide clamping pressure to restrain the movement of
the removable coil in the housing.
With respect to independent claim 25, have Appellants shown that the
Examiner erred in rejecting claim 25 as being unpatentable over Ostby, in
particular, whether Ostby teaches or fairly suggests that the spring clips
provide electrical connection to the fixed terminal by clamping onto the
fixed terminal?
With respect to dependent claims 2, 3, 14 and 17, have Appellants
shown that the Examiner erred in rejecting claims 2, 3, 14 and 17 as being
unpatentable over Ostby, in particular, whether Ostby teaches or fairly
suggests that the coil terminal clip resiliently clamps to the fixed coil
terminal?
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With respect to dependent claims 4, 15, and 26, have Appellants
shown that the Examiner erred in rejecting claims 4, 15, and 26, in particular,
whether Ostby teaches or fairly suggests that the clamp terminals comprise
an enlarged opening for aligning with fixed coil terminals?
With respect to dependent claims 5, 18, and 27-28, have Appellants
shown that the Examiner erred in rejecting claims 5, 18, and 27-28, in
particular, whether Ostby teaches or fairly suggests that the clamp terminals
comprise a planar blade and the clamp terminals clamp against peripheral
edges or planar surfaces of the blades?
With respect to dependent claims 6 and 16, have Appellants shown
that the Examiner erred in rejecting claims 6 and 16, in particular, whether
Ostby teaches or fairly suggests the leaf spring?
With respect to dependent claim 7, have Appellants shown that the
Examiner erred in rejecting claim 7, in particular, whether Ostby teaches or
fairly suggests that the fixed coil terminal resiliently clamps to the coil
terminal clip?
With respect dependent claims 9 and 20, have Appellants shown that
the Examiner erred in rejecting claims 9 and 20, in particular, whether Ostby
teaches or fairly suggests the spring loaded terminal?
With respect dependent claims 8 and 19, have Appellants shown that
the Examiner erred in rejecting claims 8 and 19, in particular, whether Ostby
teaches or fairly suggests a bifurcated clip?
With respect to dependent claim 24, have Appellants shown that the
Examiner erred in rejecting claim 24, in particular, whether Ostby teaches or
fairly suggests that the coil terminal clips are integral with coil pins of the
removable coil?
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PRINCIPLES OF LAW

Claim Interpretation
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re Ameri. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). “Construing claims broadly
during prosecution is not unfair to the applicant . . . because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage.” Ameri. Acad., 367 F.3d at 1364 (Citation omitted).
Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 415, 417. “If a
person of ordinary skill in the art can implement a predictable variation, and
would see the benefit of doing so, § 103 likely bars its patentability.” Id at
401.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
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skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417-
418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See
Kahn, 441 F.3d at 987-988; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such
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) (citation omitted).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence
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Ostby
1. Ostby teaches an electromagnetic contactor having a removable
coil (Fig. 12 element 14) with a pair of blade terminals mounted on (Fig. 12
element 14b) which electrically engage a pair of V shaped spring clip
terminals having two distal ends per terminal (Figs. 5 and 6 element 24)
mounted on the base (Figs. 5 and 6, element 6), when the removable coil is
inserted in the contactor (Col. 3, ll. 7-10).
2. Ostby also teaches in Fig. 12 that the blades have peripheral
planar surfaces and peripheral edges (14b) to engage with the distal ends of
the spring clips (Fig. 12; Col. 3, ll. 7-11 and ll. 40-43).
3. Ostby further teaches a leaf spring used to bias against the core
outwardly (Col. 4, ll. 37-39; Fig. 7, 46).

Japanese Patent Application 2000123702
4. Appellants filed an information disclosure on June 9, 2005
including Japanese Patent Application 2000123702 to Uotome Riichi (herein
Uotome) that is cited by the written opinion of the International Search
Authority of the European Patent Office.
5. Uotome teaches and evidences the use of a U-shaped spring clip
with enlarged opening (Fig. 11)[0044]. (A machine genereated translation is
attached hereto, but it is the Figures which are relied upon to evidence the
well known use of various connector configurations.)
6. Uotome teaches and evidences the use of a bifurcated clip [0056]
to provide electrical contact for a electromagnetic contact device (Fig. 18).
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7. Uotome also teaches and evidences the use of a integral pin
(Fig. 13 element 6c) of a U shaped coil terminal clip (Fig. 13 element 6) is
connected with the end of removable coil (Fig. 13 element 12) [0025].
Yamamoto
8. Appellants filed an information disclosure on June 9, 2005
including US Patent 5,517,167 to Yamamoto et al. (herein Yamamoto) that
is cited by the written opinion of the International Search Authority of the
European Patent Office.
9 Yamamoto teaches and evidences the use of a leaf spring (plate
spring 107c) as an electrical contact that
When the magnetic contactor is assembled, the terminal piece
105c formed on the second coil terminal 105 is connected in the
moving direction of the movable core 8 with the plate spring
107c constituting part of the external wiring portion 107, by
fixing the external wiring portion 107 constituting part of the
third coil terminal beforehand to the case 106 and placing the
magnetic coil 101 (manufactured separately) into the case 106.
The terminal piece 105c integrated with the second coil
terminal 105 is inserted into the center of the substantially U-
shaped plate spring 107c and the plate spring 107c presses the
terminal piece 105c by its own elasticity to hold the terminal
piece therein. (Col. 7, ll. 25-36).
10. Yamamoto also teaches and evidences the use of spring loaded
terminals (elements 503c and 504d, Fig. 11) that will engage with the
contact portions 505b and 506b respectively, when inserting the removable
coil. (Col. 13, l. 62-Col. 14, l. 19).

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ANALYSIS
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, we look to Appellant’s Briefs to show error in the
proffered prima facie case.
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

35 U.S.C. § 103(a)
We begin our analysis with claim construction. The argued
limitations in independent claim 1 (and similarly in independent claim 11)
are “[t]he fixed coil terminal makes electrical contact with the coil terminal
clip when the removable coil is inserted in the housing and the coil terminal
clip provides clamping pressure to restrain movement of the removable coil
in the housing.” We note that there is no limitation as to the shape or form
of the clip or the fixed coil terminal as long as they are engaged to make
electrical contact. We also note that there is no further limitation with
respect to how the clip provides clamping pressure, or the specific kind
movement, which is retrained for the removable coil.
Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. v. Intuitive
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Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003). Thus, the ordinary and
customary meaning attributed to “clamping” is “to fasten, grip, or support
with.” See Webster’s II New Riverside University Dictionary 267 (1984).
The argued limitation in claim 25 is “inserting the removable coil into
the housing wherein the coil terminal clip engages with and clamp onto the
fixed coil terminal to electrically connect the removable coil to the fixed coil
terminal.” We note that there is no limitation concerning restraining the
movement of the removable coil in the claim. The claim language only
requires that the clip clamps onto the fixed coil terminal, which it is engaged
with, to provide electrical connection.
We now review the merits of Appellants’ contentions.
With respect to claims 1, 10, 11, and 21-23, Appellants contend that
the fixed coil terminal clip and blade terminal mounted on the removable
coil taught by Ostby could not be interchanged, as the Examiner indicated in
the obviousness rejection, absent hindsight based on the teaching of the
present invention, because Otsby does not suggest the modification. (App.
Br. 5-6. ). “The standard for obviousness is not whether or not there is any
adverse effect, but rather whether the invention is obvious over
Ostby.”(Reply Br. 2).
We disagree with Appellants’ contention. In this case, we find that
interchanging the location of the blades and spring clips of Ostby with
regards to where they are mounted to provide electrical contact to be nothing
more than a “predictable use of prior art elements according to their
established functions” and, as such, is not a patentable distinction. KSR, 550
U.S. at 417. Moreover, we find that a skilled artisan’s modification of Ostby
by mounting the spring clips on the removable coil and the blades on the
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fixed coil terminal would have been in accordance with what would have
been considered “common sense at the time of the invention:”
Common sense teaches, however that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.
(KSR, 550 U.S. at 420.)
When there is design need or market pressure to solve a
problem and there are finite number identified, predictable
solutions, person of ordinary skill has good reason to pursue the
known options within his or her technical grasp. If this leads to
the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense.
(Id. at 421.)

With respect to the male and female parts of the two connectors, as
taught by Ostby, the limited choices are either male or female on the
removable portion and either male or female on the fixed portion. We find
these known options would have been well within the technical grasp of a
person of ordinary skill. Thus, we find the interchanging of the blades and
spring clips is not a product of innovation but rather the result of ordinary
skill and common sense. Furthermore, Appellants have presented no
evidence that the location of the blades and spring clips in the modified
device was uniquely challenging or difficult for one of ordinary skill in the
art or represented an unobvious step over the prior art. Therefore, we find
Appellants’ arguments that the Examiner’s modification of Ostby is based
on hindsight reconstruction to be unpersuasive of error in the Examiner’s
initial showing of obviousness.
Appellants further contend that there is no disclosure or suggestion
that either the blades or the spring clips provide clamping pressure to
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restrain the movement of the removable coil in the housing. Appellants
contend that the spring clips of Ostby, at most, provide only a biasing force
to maintain good electrical contact, but nowhere in Ostby is there mention of
a clamping force, let alone a clamping pressure to restrain the movement of
the removable coil. (App. Br. 6-7. Reply Br. 3-4).
We disagree with Appellants’ contention. We note that Ostby’s spring
clips are V shaped (FF1). Assuming Ostby was modified (by having the
blades mounted on the fixed coil end and the V shaped spring clips mounted
on removable coil end), when inserting the removable coil, both ends of the
V shaped spring clips would bias against the surfaces of the blades to create
contacts for an electrical connection. In that way, the clips would clearly
grip each blade. Thus, the V shaped spring clips create not only biasing
force, but also some level of clamping force against the surface of the blades.
Further, the points of contact would necessarily create some frictional
forces between the ends of the clips and the surfaces of the blade. These
frictional forces would necessarily restrain the movement of the removable
coil, to some degree. In the instant claim language, Appellants have set
forth no range or context, with which to determine what force would be
required to "clamp" versus a mere electrical connection. Furthermore,
Appellants have identified no express definition in Appellants’ Specification
for the "clamping pressure" to distinguish over the force required for an
electrical connection and associated frictional contact. In addition, we find
that the lateral movement of the removable coil against the ends of the clips
would be restrained because the clips clamp the blades.
Therefore, we find Appellants’ arguments are unpersuasive of error in
the Examiner's initial showing of obviousness for independent claim 1.
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Appellants have elected to group claims 10, 11, and 21-23 with independent
claim 1. Accordingly, we sustain the Examiner’s rejection of claims 1, 10,
11, and 21-23 as being unpatentable over Ostby.

With respect to independent claim 25, Appellants present the same
arguments as presented with respect to independent claims 1 and 11 (App.
Br. 12-13). As discussed above, we disagree with Appellants. Furthermore,
we note that the scope of claim 25 does not include the limitation regarding
restraining the movement of the removable coil. As already discussed above,
the spring clips of Ostby grip the surface of the blades and thus “clamp” the
blade to provide an electrical contact. Therefore, we find Appellants’
arguments are unpersuasive of error in the Examiner's initial showing of
obviousness for claim 25. Accordingly, we sustain the Examiner’s rejection
of claim 25 as being unpatentable over Ostby.

With respect to dependent claims 2, 3, 14, and 17, Appellants contend
that neither of the terminals in Ostby resiliently clamps to other terminals
(App. Br. 8). We select claim 2 as the representative claim for this grouping.
We disagree with Appellants’ contention of lack of resiliently
clamping. First, Appellants have not identified any express definition for
“resiliently clamping” in Appellants’ Specification. Thus, we interpret the
word “resiliently” in accordance with the ordinary and customary meanings
attributed to it, i.e., “elastically or to regaining original shape or position
after being bent, stretched, or compressed”. See Webester’s II New
Riverside University Dictionary 1000 (1984).
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The modified Ostby reference would provide a pair of spring clips
mounted on the removable coil. The distal ends of the spring clips can
regain their original position since they are formed to spring and also clip or
clamp the fixed coil terminals, i.e., the blades, as already discussed above.
Thus, we find that the spring clips would resiliently clamp the fixed coil
terminals.
Therefore, we find that Appellants’ arguments are unpersuasive of
error in the Examiner's initial showing of obviousness for claim 2.
Appellants have elected to group claims 3, 14, and 17 with dependent claim
2. Accordingly, we sustain the Examiner’s rejection of dependent claims 2,
3, 14 and 17 as being unpatentable over Ostby.

With respect to dependent claims 4, 15, and 26, Appellant elected to
group these claims togther, Therfore, we select claim 4 as our representative
claim and address Appellants arguments thereto. Appellants contend that
Ostby does not teach or fairly suggest that the clamp terminals comprise an
enlarged opening for aligning with fixed coil terminals (App. Br. 8, 14).
We find ample support in the disclosure of Ostby to support the
Examiner’s rejection of the claim 4 such that the V shaped spring clips have
an enlarged opening for engaging with the planar surfaces of the blades
(FF2). The two distal ends (24) of the spring clip would open outwardly to
engage with the planar surface (14b) of the blades, when inserting the
removable coil (14) and thus, the spring clips can be viewed to have the
enlarged opening. Otherwise, we find that the mating of the two parts would
be very problematic.
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Furthermore, we direct attention to a Japanese Patent Application,
Uotome, cited by the European Patent Office’s International Search Report
to Appellants (FF4). Uotome teaches and evidences the well known use of
an enlarged opening of spring clips as electrical contacts of a removable coil
(FF5). It is our reasoned opinion that incorporating the clip with an enlarged
opening into the clip taught by Ostby is nothing more than a “predictable use
of prior art elements according to their established functions,” and, as such,
is not a patentable distinction. KSR, 550 U.S. at 417. Thus, based on Ostby
and the administrative record before us, which shows that a clip with an
enlarged opening was well known for providing electrical connections, we
affirm the obviousness rejection based on the predictable use of well known
prior art elements according to their established functions. Therefore, we
sustain the Examiner’s rejection of dependent claim 4, and claims 15 and 26
grouped with dependent claim 4 as being unpatentable over Ostby.

With respect to dependent claims 5, 18, and 27-28, Appellants
contend that Ostby does not teach or fairly suggest that the clamp terminals
comprise a planar blade and the clamp terminals clamp against peripheral
edges or planar surfaces of the blades. (App. Br. 9, 14-15).
We disagree with Appellants’ contention. The blades (14b) in Fig. 12
of Ostby clearly show the planar surfaces and the peripheral edges of the
blades to engage the V shaped spring clips (FF2). As discussed in claim 1,
the V-shaped spring clips clamp against the planar surface and the peripheral
edges of the blades to provide electrical contact when inserting the
removable coil. Furthermore, we find the intended use and relative size of
the coils and current flow would have influenced the size and shape of the
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planar surface needed for each specific use of the mated coils. Therefore,
we sustain the Examiner's rejection of claim 5, and dependent claims 18, 27
and 28, grouped therewith, as being unpatentable over Ostby.

With respect to dependent claims 6 and 16, Appellants contend that
“there is no disclosure or suggestion of leaf springs in Ostby.” (App. Br. 9.)
Appellants’ contention is incorrect. Ostby clearly teaches the use of a
biasing leaf spring (FF3), but Ostby does not use the disclosed leaf spring
for an electrical connection. We find that the skilled artisan’s modification
of Ostby’s spring clips with well known leaf springs would have been an
obvious variation in the electrical connection art at the time the invention
was made, since the leaf springs would have provided a strong biasing force
against the surface of the blade to obtain a better electrical contact surface
than the distal ends of the spring clips. Additionally, we find that Ostby’s
spring clips may additionally be viewed as merely two leaf springs working
in opposition.
Moreover, we direct attention to the teachings of Yamamoto which
was cited by European Patent Office’s International Search Report to
Appellants (FF8). We find that Yamamoto teaches and evidences the well
known use of leaf spring clips as electrical contacts for a removable coil
(FF9). It is our reasoned opinion that incorporating the leaf spring contacts
for the spring clips taught by Ostby is nothing more than a “predictable use
of prior art elements according to their established functions” and, as such, is
not a patentable distinction. KSR, 550 U.S. at 417. Thus, based on the
modified Ostby reference, and the administrative record before us (which
shows the use of electrical contacts with leaf spring contacts was well
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known for providing electrical connections), we affirm the Examiner’s
obviousness rejection of claims 6 and 16.

With respect to dependent claim 7, Appellants further contend that
Ostby does not teach or suggest that “either of the terminals comprise clamp
terminals that resiliently clamp to other terminals.” (App. Br. 10.)
We disagree with Appellants’ contention. Ostby teaches a pair of
spring clips as fixed coil terminals (FF1) that resiliently clamp the blades
mounted on the removable coil (see discussion supra regarding claims 1 and
2). It is our reasoned view that replacing the blades of the removable coil
with the spring clips of Ostby to provide an electrical contact is nothing
more than a “predictable use of prior art elements according to their
established functions” and, as such, is not a patentable distinction. KSR, 550
U.S. at 417. Accordingly, we sustain the Examiner’s rejection of dependent
claim 7 as being unpatentable over Ostby.

With respect to dependent claims 9 and 20, Appellants also contend
that Ostby teaches a spring clip terminal, not a spring loaded terminal, as
illustrated in Figs. 16-22 of the present application (App. Br. 11).
We disagree with Appellants’ contention. During prosecution before
the USPTO, claims are to be given their broadest reasonable interpretation,
and the scope of a claim cannot be narrowed by reading disclosed limitations
into the claim. See In re Morris, 127 F.3d 1048, 1043-54 (Fed. Cir. 1997).
Here, there is no further limitation of the term “spring loaded terminal” in
the claims that requires the specifics of the disclosed coil terminal clip using
a coiled spring as part of the connector. It is our reasoned view that Ostby’s
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spring clip terminal teaches and/or fairly suggests the term “spring loaded
terminal,” giving the term a broad yet reasonable interpretation. Further, we
decline to read the characteristics of Appellant’s Figs. 16-22 (where Figs. 16
and 20-22 have different uses of the spring than Figs. 17-19) into the claims
to narrow the scope of the claims 9 and 20.
Nevertheless, we find that Yamamoto teaches and evidences spring
loaded terminals similar to those in Fig. 17-19 of the present invention
(FF10). It is our reasoned opinion that incorporating the spring loaded
terminal into the fixed terminal taught by Ostby is again nothing more than a
“predictable use of prior art elements according to their established
functions” and, as such, is not a patentable distinction. KSR, 550 U.S. at 417.
Thus, based on Ostby and the administrative record before us (which shows
the spring loaded terminal that were well known for providing electrical
connections), we affirm the Examiner’s obviousness rejection of claims 9
and 20.

With respect to dependent claims 8 and 19, Appellants contend that
Ostby does not teach a bifurcated clip (App. Br. 10).
We cannot identify that Ostby shows the details of the spring clips’
distal ends, and thus we find Ostby does not specifically teach the use of
bifurcated clips. However, we again direct attention to the Japanese Patent
Application, Uotome, cited by the European Patent Office’s International
Search Report to Appellants (FF4). Uotome teaches and evidences the well
known use of a bifurcated clip mounted to a removable coil as an electrical
contact (FF5). It is our reasoned view that incorporating the bifurcated clip
into the clip taught by Ostby is nothing more than a “predictable use of prior
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art elements according to their established functions” and, as such, is not a
patentable distinction. KSR, 550 U.S. at 417. Thus, based on the
administrative record before us (which shows a wide range of structures that
were well known for providing electrical connections and applying some
level of restraining force), we affirm the Examiner’s obviousness rejection
of claims 8 and 19.

With respect to dependent claim 24, Appellants contend that Ostby
does not teach that the coil terminal clips are integral with “coil pins” of the
removable coil.
Again, we cannot identify that Figures 6 and 12 of Ostby clearly teach
the integral pin as the Examiner maintains. However, we again direct
attention to the Uotome reference cited by the European Patent Office’s
International Search Report to Appellants (FF4). Uotome teaches and
evidences that a pin (6c) is integral with the clip (6), and the pin is connected
to the end of the removable coil (12) (FF6). We find that replacing the clips
of Ostby with that of Uotome would have been obvious at the time the
invention was made, since the integral pin would provide a better electrical
connection; The clips would clamp the fixed terminal so that the clip
structure would have high vibration and shock resistance, as well as high
connection reliability [0048]. “What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.”
KSR, 550 U.S. at 419. Therefore, based on the administrative record before
us, we affirm the Examiner’s obviousness rejection of claim 24.

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21
CONCLUSION
For the aforementioned reasons, we conclude that Appellants have not
shown the Examiner erred in setting forth a sufficient initial showing of
obviousness of the claimed invention in rejecting claims 1, 10, 11, and 21-23.
In particular, we find the proffered modification of Ostby is not based on
impermissible hindsight. We find Ostby teaches that the spring clips
provide clamping pressure to restrain the movement of the removable coil in
the housing.
We also conclude that Appellants have not shown that the Examiner
erred in setting forth a sufficient initial showing of obviousness of the
claimed invention in rejecting claim 25. Particularly, Ostby teaches that the
spring clips provide electrical connect to the fixed terminal by clamping onto
the fixed terminal.
We further conclude that Appellants have not shown the Examiner
erred in setting forth a sufficient initial showing of obviousness of the
claimed invention in rejecting claims 2, 3, 14,17, and 26. In particular,
Ostby teaches that the coil terminal clip resiliently clamps to the fixed coil
terminal.
We further conclude that Appellants have not shown that the
Examiner erred in setting forth a sufficient initial showing of obviousness of
the claimed invention in rejecting claims 4, 15, and 26.
We further conclude that Appellants have not shown that the
Examiner erred in setting forth a sufficient initial showing of obviousness of
the claimed invention in rejecting claims 5, 18 and 27-28.
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22
We further conclude that Appellants have not shown that the
Examiner erred in setting forth a sufficient initial showing of obviousness of
the claimed invention in rejecting claims 6 and 16.
We further conclude that Appellants have not shown that the
Examiner erred in setting forth a sufficient initial showing of obviousness of
the claimed invention in rejecting claim 7
We further conclude that Appellants have not shown that the
Examiner erred in setting forth a sufficient initial showing of obviousness of
the claimed invention in rejecting claims 9 and 20
We finally conclude that Appellants have not shown that the
Examiner erred in setting forth a sufficient initial showing of obviousness of
the claimed invention in rejecting claim 24, and we affirm the obviousness
rejection on this issue.
Therefore, claims 1-11 and 13-28 are not patentable.
DECISION
The decision of the Examiner rejecting claims 1-11 and 13-28
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)(iv).

AFFIRMED

erc

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SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830