Ex Parte Natter

Patent Trial and Appeal Board

Dec 30, 2015

13213318 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/213,318 08/19/2011 Brantley Natter
34007 7590 01/04/2016
BROOKS KUSHMAN P,C, I LEAR CORPORATION
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LEAR50757PUS 8040
EXAMINER
PRASAD, CHANDRIKA
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
01/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANTLEY NATTER
Appeal2014-002271
Application 13/213 ,318
Technology Center 2800
Before JAMES C. HOUSEL, GEORGE C. BEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-9, 11-16, and 21-24 of
Application 13/213,318 under 35 U.S.C. § 102(b) as anticipated and claim
10 under 35 U.S.C. § 103(a) as obvious. Final Act. (April 11, 2013).
Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
1 Lear Corporation is identified as the real party in interest. App. Br. 1.
Appeal2014-002271
Application 13/213,318
BACKGROUND
The '318 Application describes an electrical connector. Spec. i-f 1. In
particular, the electrical connector has an insulating end attached to a
conducting body portion and is structured to prevent inadvertent contact
with the conducting body. Id. at i-f 3.
Claim 1 is representative of the '318 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. An electrical connector comprising:
a conductive body portion with an exposed exterior
having a tip at one end; and
a non-conductive end cap secured to the tip extending
beyond a leading end of the conductive body portion to reduce
inadvertent conductive contact at the tip, thereby limiting
conductive contact to the exposed exterior of the conductive
body portion.
App. Br. Claims App'x 1.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-9, 11-16, and 21-24 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Hanks. 2 Final Act. 2.
2. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Hanks and Yu. 3 Final Act. 3.
2 US 2007/0202735 Al, published August 30, 2007.
3 US 7,883,261 B2, issued February 8, 2011.
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Application 13/213,318
DISCUSSION
Rejection 1. The Examiner rejected claims 1-9, 11-16, and to 21-24
as anticipated by Hanks. Final Act. 2. Appellant argues for reversal of this
rejection with respect to three different groups of claims. We address each
group separately.
Claims 1-9 and 21-24. Appellant argues for reversal of this rejection
based upon the limitations of independent claim 1. App. Br. 7. We,
therefore, limit our discussion to claim 1; claims 2-9 and 21-24 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
In particular, Appellant argues that Hanks does not describe an
electrical connector having an end cap in which the "non-conductive end ...
limit[ s] conductive contact to the exposed exterior of the conductive body
portion" of the electrical connector. App. Br. 7 (quoting claim 1 ).
We begin by considering the language of claim 1. The claim
language at issue reads "a non-conductive end cap secured to the tip
extending beyond a leading and of the conductive body portion to reduce
inadvertent conductive contact at the tip, thereby limiting conductive contact
to the exposed exterior of the conductive body portion." App. Br. Claims
App'x 1 (emphasis added).
In our view, the "thereby clause" of claim 1 requires reversal of the
anticipation rejection. The normal rule is that a "whereby" or "thereby"
clause that "merely states the result of the limitations" in a claim does not
limit the scope of the claim. See, e.g., Texas Instruments, Inc. v. United
States Int 'l Trade Comm 'n, 988 F.2d 1165, 1172 (Fed. Cir. 1993). If,
however, such a clause does more than merely state the result of the claim's
structural limitations, it serves to specify critical properties of the claimed
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Application 13/213,318
invention and does limit the claim's scope. Hoffer v. Microsoft Corp., 405
F.3d 1326, 1329 (Fed. Cir. 2005).
In this case, we conclude that the "thereby clause" in claim 1 specifies
critical properties of the claimed invention and, thus, recites a positive claim
limitation. In particular, the crucial phrase is "limiting conductive contact to
the exposed exterior." We conclude that a person of ordinary skill in the art,
having read Appellant's Specification, would understand this phrase as
reciting that the claimed end cap has a structure that prevents conductive
contact with any part of the claimed connector's conductive body other than
the conductive body's exposed exterior.
In view of this construction, we agree with Appellant that Hanks does
not anticipate claim 1. As Appellant explains, end cap 2350 allows passage
of the coaxial cable 2302 so that central conductor 2304 comes into contact
with the conductive central portion 2334 of the conductive body. App. Br.
7; see also Hanks Fig. 22A; i-f i-f 100, 104--105.
We, therefore, reverse the rejection of claims 1-9 as anticipated by
Hanks.
Claims 11-15. Appellant argues for reversal of the rejection of this
group of claims on the basis of the limitations in independent claim 11.
App. Br. 7. We, therefore, limit our discussion to claim 11. Claims 12-15
stand or fall with claim 11. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that Hanks does not describe an electrical connector
in which the leading end of the end cap conceals the conductive connector to
prevent conductive contact at the leading end. App. Br. 7.
Once again, we begin by considering the language of claim 11. In
particular, claim 11 recites that "the leading end conceals the conductive
connector to prevent conductive contact at the leading and." Because claim
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Application 13/213,318
11 is directed to an end cap and the only antecedent basis for the phrase "the
leading end" refers to the leading end of the end cap, we conclude that a
person of ordinary skill in the art would understand that claim 11 is limited
to an end cap that prevents contact with the conductive connector at the
leading end of the end cap.
With this construction in mind, we tum to Hanks. As shown in Figure
24, when end cap 2350 is assembled with the conductive body in Hanks's
electrical connector, conductive contact is possible at locations within end
cap 2350, but not at the leading end of end cap 2350. Hanks's electrical
connector satisfies claim 11 's limitation that the end cap prevents conductive
contact at its leading end.
In view of the foregoing, we affirm the Examiner's rejection of claims
11-15 as anticipated by Hanks.
Claim 16. Claim 16 is directed to a charging assembly comprising,
inter alia, a connector assembly comprising a female connector. Appellant
argues that the rejection of claims 16 as anticipated by Hanks should be
reversed because Hanks does not provide the claimed female connector.
App. Br. 7. The Examiner responds that "the female connector is not
positively recited and a disclosed connector of Hanks is capable of meeting a
female connector." Ans. 4.
We reverse this rejection. As is apparent from claim 16' s language,
the female connector at issue is, in fact, positively recited in claim 16. See
also Reply Br. 6.
Rejection 2. The Examiner rejected claim 10 of the '318 Application
as unpatentable over the combination of Hanks and Yu. Final Act. 8. Claim
10 depends from claim 1. Appellant's arguments for reversal of the
rejection of claim 10 are based upon arguments advanced in support of the
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Application 13/213,318
patentability of claim 1. See App. Br. 8. Because we have reversed the
rejection of claim 1 and the Examiner has not relied upon Yu to remedy the
defects in the Hanks disclosure, we also reverse the rejection of claim 10.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 11-
15. We, however, reverse the rejection of claims 1-9 and 16 as anticipated
by Hanks and of claim 10 as unpatentable over the combination of Hanks
and Yu.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
tc
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