Ex Parte Regnier et al

Board of Patent Appeals and Interferences

Jan 30, 2012

10461296 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/461,296 06/13/2003 Kent E. Regnier A3-303 US 2635
23683 7590 01/30/2012
MOLEX INCORPORATED
2222 WELLINGTON COURT
LISLE, IL 60532
EXAMINER
HARVEY, JAMES R
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
01/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KENT E. REGNIER and VICTOR ZADEREJ
________________

Appeal 2009-009953
Application 10/461,296
Technology Center 2800
________________

Before JOEPH F. RUGGIERO, THOMAS S. HAHN, and
ELENI MANTIS MERCADER, Administrative Patent Judges.
HAHN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-009953
Application 10/461,296
2
Appellants invoke our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-4, 6, 7, 14-20, 22, and 23.
1
We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appealed claims 1 and 7 are exemplary and read:

1. An electrical connector for mounting on a circuit board,
comprising:

a housing;

at least one terminal mounted in said housing, said terminal including
a contact portion and a tail portion;

at least one solder mass, a substantial portion of the solder mass
encapsulated by said tail portion, the solder mass being used to affix
the tail portion to the circuit board; and

means for mechanically attaching said solder mass to each said tail
portion.

7. An electrical connector, comprising:

a housing;

at least one terminal mounted in said housing, said terminal including
a contact portion and a tail portion;

at least one solder mass to be retainingly attached to said tail portion,
the retention of the solder mass to the tail portion being enhanced by a
plating that covers the solder mass and the tail portion.

1
Claims 5, 8-13, 21, and 24-29 have been withdrawn.
Appeal 2009-009953
Application 10/461,296
3
Rejections
The Examiner under 35 U.S.C. § 103(a) rejected:
1. Claims 1-4 and 17-20 as unpatentable over Takeuchi (US 6,679,709
B2; Jan. 20, 2004 (filed Feb. 1, 2002)) (Final Action 2-6);
2
and
2. Claims 6, 7, 14-16, 22, and 23 as unpatentable over Takeuchi and
Gorrell (US 5,786,270; July 28, 1998) (Final Action 6-10).
3

Appellants’ Contentions
Claim 1, inter alia, recites “a substantial portion of [a] solder mass
encapsulated by [a terminal] tail portion.” Appellants contend this limitation
is not taught or fairly suggested by Takeuchi (Br. 13).
Claim 7, inter alia, recites that a solder mass is “retainingly attached
to [a terminal] tail portion, the retention of the solder mass to the tail portion
being enhanced by a plating that covers the solder mass and the tail portion.”
Appellants contend that Takeuchi and Gorrell, alone or in combination, fail
to teach or fairly suggest this limitation (Br. 15).

ANALYSIS
Claims 1-4 and 17-20
The Examiner finds that “Takeuchi does not show []a substantial
portion of the solder mass encapsulated by the tail portion . . . , only a
portion is encapsulated” (Ans. 3). The Examiner then identifies that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to decrease the length of the

2
Appellants solely argue the patentability of independent claim 1 as
representative of this group of claims (Br. 10).
3
Appellants solely argue the patentability of independent claim 7 as
representative of this group of claims (Br. 10).

Appeal 2009-009953
Application 10/461,296
4
solder mass cylinder 6 of Takeuchi to be proportional to the
length of the tail portion 13 so that a substantial portion of the
solder mass was encapsulated by the tail portion 13, since such
a modification would have involved a mere change in the size
of a component.

(Id.)
Appellants do not contend Takeuchi is deficient by failing to teach the
claim 1 recited “solder mass being used to affix the [terminal] tail portion to
the circuit board.” Appellants are also silent on construing the claimed
“substantial portion of the solder mass encapsulated by said tail portion.”
What Appellants argue is that modifying Takeuchi to reach the claimed
subject matter requires:
such a drastic change in the amount of solder available to affix
the tail portion to the circuit substrate upon which the terminal
is to be mounted [as] will have significant, and perhaps,
catastrophic effect on the ability of the solder to retain the
terminal to the circuit substrate as there will be insufficient
solder to retain the tail portion to the circuit substrate. (See,
generally, Takeuchi, col. 12, line 62 to col. 13, line 4
(recognizing need to have sufficient solder)).

(Br. 14.) Relying on this attorney argument, Appellants contend that “a
person of skill in the art would expect Takeuchi to fail if the solder mass of
Takeuchi was reduced so that there was „a substantial portion of the solder
mass encapsulated by said tail portion‟ as recited in claim 1” (id.). We find
Appellants‟ conclusion problematic.
In particular, we agree with and adopt the Examiner‟s statements in
the Response to Argument section of the Answer that:
Appellant[s‟] remark of the ability of the size of the solder to
„retain‟ the terminal is not seen to be consistent with the claim
language that only requires the solder mass being used to affix
the tail portion to the circuit board. Further, Appellant[s‟]
Appeal 2009-009953
Application 10/461,296
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remark is only based upon an assertion without any teachings to
support such an assertion. Takeuchi teaches (column 14, line
12) that „the total length of the solder 6‟ can be changed and
figure 18 of Takeuchi teaches a smaller solder mass that is seen
to have the ability to make a reliable electrical connection
between Takeuchi‟s CPU 3 (cover sheet) and Takeuchi circuit
board 2.

(Ans. 11-12 (underlining omitted)). No Reply Brief was filed.
Our reviewing court has held that, where the only difference between
prior art and a claimed device is recitation of relative dimensions of the
claimed device that would not perform differently than the prior art device,
the claimed device is not patentably distinct from the prior art device.
Gardner v. TEC Systems, Inc. 725 F.2d 1338 (Fed. Cir. 1984). Accordingly,
based on the record, we sustain the Examiner‟s rejection of claim 1 and also
sustain the rejection of claims 2-4 and 17-20 that are not separately argued.
Claims 6, 7, 14-16, 22, and 23
The Examiner acknowledges that Takeuchi does not teach or fairly
suggest the argued claim 7 limitation that “the retention of the solder mass to
the tail portion [is] enhanced by a plating that covers the solder mass and the
tail portion” (Ans. 7). The Examiner finds though that Gorrell teaches
(column 7, lines 30-35) why skilled artisans are sometimes motivated to put
plating over solder, namely “solder often becomes oxidized and is difficult
to electroplate” (Ans. 7).
Appellants, inter alia, argue that Gorrell is not analogous art because
it is silent as to “enhanc[ing] retention of a solder mass to a terminal” (Br.
16). The Examiner responds that “[t]he fact that Appellant[s] use[] plating
over solder for a different purpose (i.e.[,] to enhance retention) does not alter
the conclusion that its use in a prior art device would be prima facie obvious
Appeal 2009-009953
Application 10/461,296
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from the purpose disclosed in the reference.[] In re Lintner, 173 USPQ 560”
(Ans. 13). We find the Examiner‟s reasoning problematic.
Our reviewing court has held that:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor‟s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.

In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Based on our review of
the record, we do not find Gorrell in the same field as Appellants‟ endeavor
or reasonably pertinent to the particular problem addressed by Appellants.
For the foregoing reasons, we do not sustain the rejection of claim 7
and also do not sustain the same rejection of claims 6, 14-16, 22 and 23.

DECISION
The Examiner‟s decision rejecting claims 1-4 and 17-20 is affirmed,
and the Examiner‟s decision rejecting claims 6, 7, 14-16, 22, and 23 is
reversed.
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)(v).

AFFIRMED-IN-PART

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