Ex Parte Nielsen et al

Patent Trial and Appeal Board

May 30, 2013

10463750 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTIAN S. NIELSEN and TIMOTHY T. BOMSTAD
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Appeal 2011-003916
Application 10/463,750
Technology Center 3700
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Before EDWARD A. BROWN, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Christian S. Nielsen and Timothy T. Bomstad (Appellants) appeal
under 35 U.S.C. § 134(a) from the decision of the Examiner rejecting claims
1, 9-13, and 56. App. Br. 3, 5-6. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim and is
illustrative:
1. A miniature insulative feedthrough for
receiving an electrical lead therethrough, said
feedthrough comprising:
a ferrule having first and second open ends,
the first open end having a first diameter that is
larger than a second diameter of the second open
end, the second open end further including a first
retaining portion;
a first insulating ring disposed entirely
within said ferrule and having an aperture
therethrough for receiving said electrical lead;
a second insulating ring disposed within said
ferrule in engagement with the second open end
and having an aperture therethrough for receiving
the lead;
a compression ring disposed within said
ferrule between the first insulating ring and the
second insulating compression ring having an
aperture therethrough for receiving said electrical
lead; and
a second retaining portion in direct contact
with the first insulating ring, the second retaining
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portion compressing the first insulating ring, the
compression ring and the second insulating ring
against the first retaining portion, and wherein the
compression of the second retaining portion
deforms the compression ring to sealingly engage
the electrical lead.

REJECTIONS
Claims 1, 9, 10, 12, and 56 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kyle (US 4,456,786; iss. Jun. 26, 1984).
Claims 11 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kyle.

ANALYSIS
Claims 1, 9, 10, 12, 56 – Kyle
The Examiner found that Kyle discloses a ferrule (ferrule 14)
including a first insulating ring (insulating material third portion 26), second
insulating ring (insulating material second portion 24), compression ring
(insulating material first portion 22), electrical lead (terminal pin 18), and
second retaining portion (spacer 34). Ans. 4-5; see also Kyle, col. 3, ll. 16-
50, col. 4, ll. 20-30; fig. 2. The Examiner also found that the claimed “first
retaining portion” is “satisfied by the smaller diameter of the second open
end of the ferrule” in Kyle. Ans. 4. The Examiner further found that:
It should be noted that when an object such as
terminal pin 18 is drawn through the terminal
assembly as shown in Kyle, in the direction of the
compression ring 22 from the insulating ring 24,
friction would be applied to that object based on
the fixation of the components therein. This
friction causes a compression or tension on the
object, based on the direction on which the object
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is pulled. Therefore the compression or tension is
natural to the system based on the fixed
relationship of the components of the terminal
assembly.
Ans. 7-8 (emphasis added).
Appellants contend that the second insulating ring 24 of Kyle extends
beyond the purported first retaining portion, which thereby makes it
practically impossible for the smaller diameter of the ferrule 14 to provide
lateral compression of the first insulating ring 26 and second insulating ring
24, as well as the compression ring 22. App. Br. 7; see also Kyle, fig. 2.
Appellants also contend that the Examiner failed to clearly demonstrate that
placing the terminal pin 18 in tension would create the compression recited
in claim 1. Reply Br. 5. Finally, Appellants contend that Kyle does not
teach a second retaining portion that compresses the three rings disposed
within the ferule, or teach that the compression ring 22 is compressed and
deformed to sealingly engage the electrical lead. App. Br. 6, 8. Appellants’
contentions are persuasive.
Kyle discloses that the insulating portions 22, 24, and 26 are
individually formed as beads, and then disposed between the terminal pin 18
and the ferrule 14. See Kyle, col. 9, l. 64 – col. 10, l. 1. The assembly is
then heated to fuse the insulating portions 22, 24, and 26 to one another, and
also to the terminal pin 18 and ferrule 14. See Kyle, col. 10, ll. 3-8.
The Examiner did not provide adequate evidence or reasoning that the
second retaining portion 34 in Kyle necessarily compresses each ring
22/24/26 against a first retaining portion, where the first retaining portion is
considered to be “the smaller diameter of the second open end.” See Ans. 4,
7-8. Additionally, the Examiner did not provide adequate evidence or
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reasoning that compression of the second retaining portion 34 would
necessarily result in deformation of the compression ring 24 to sealingly
engage the terminal pin 18. Rather, Appellants correctly note that the fusion
process described in Kyle appears to result in any sealing engagement
between the insulating portions 22/24/26 and the terminal pin 18. See Reply
Br. 5 and Kyle, col. 7, ll. 67-68. The Examiner’s finding that “compression
or tension [that] is natural to the system” of Kyle is not supported by
sufficient reasoning or evidence that makes certain that such compression is
present in the ferrule of Kyle, and “[t]he mere fact that a certain thing may
result from a given set of circumstances is not sufficient [to establish
inherency.]” In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (citing In re
Oelrich, 666 F.2d 578, 581-82 (CCPA 1981)). Accordingly, we do not
sustain the rejection of claim 1 and its dependent claims 9, 10, 12, and 56.

Claims 11 and 13 – Kyle
Claims 11 and 13 depend from claim 1. As we agree with Appellants
that Kyle does not disclose every feature of claim 1, and the Examiner’s
application of design choice rationales for the rejection of claims 11 and 13
does not cure the deficiencies of Kyle discussed supra, we do not sustain the
rejection of claims 11 and 13 as unpatentable over Kyle.

New ground of rejection of claims 1, 9-13, and 56 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement
Claim 1 requires “a ferrule having first and second open ends, the first
open end having a first diameter that is larger than a second diameter of the
second open end” and “a second retaining portion . . . compressing the first
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insulating ring . . . against the first retaining portion.” Appellants indicate
that support for these limitations is found at paragraphs [0053] and [0054],
and paragraph [0055], respectively, of the Specification. App. Br. 4.
However, neither these paragraphs nor the Figures referenced therein
describe or show such a claimed configuration. Figures 11 and 12 show a
ferrule 32 having a first open end 34 and a second open end 36, where the
first open end 34 has a first diameter larger than a second diameter of the
second open end 36, but these figures do not show the second retaining
portion 52 compressing the first insulating ring 40, compression ring 48, or
second insulating ring 42. See Spec., figs. 11 and 12; see also para. [0054].1
Figure 20 shows the second retaining portion 52 compressing the first
insulating ring 40, but does not show the first diameter of the first open end
34 being larger than the second diameter of the second open end 36.2 See
Spec., fig. 20; see also para. [0055]. Additionally, Appellants do not cite to,
and we could not find, any other disclosure in Appellants’ written
description that would clearly allow persons of ordinary skill in the art to
recognize that the inventors possessed a ferrule having both a first diameter
larger than a second diameter, and a second retaining portion compressing
the first insulating ring, the compression ring, and the second insulating ring
against the first retaining portion. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1562-63 (Fed. Cir. 1991). Thus, we determine that claim 1 and its

1 We refer to both the original drawings filed on June 17, 2003, and the
replacement drawings filed on October 8, 2003.
2 We note that original Figure 20 shows a crimped second retaining portion
50. However, replacement Figure 20 does not show a crimped retaining
portion, but appears to show a pre-compressed state of the ferrule similar to
the configuration shown in replacement Figure 11.
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dependent claims 9-13 and 56 do not comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.

DECISION
The rejection of claims 1, 9, 10, 12, and 56 under 35 U.S.C. § 102(b)
as anticipated by Kyle is REVERSED.
The rejection of claims 11 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Kyle is REVERSED.
This decision also contains a new ground of rejection of claims 1, 9-
13, and 56 pursuant to 37 C.F.R. § 41.50(b), which provides “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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