Ex Parte Ruhlander

Board of Patent Appeals and Interferences

Jan 14, 2009

10159755 (B.P.A.I. Jan. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY PHILLIP RUHLANDER
____________

Appeal 2008-2864
Application 10/159,755
Technology Center 3600
____________

Decided: January 14, 2009
____________

Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Gregory Phillip Ruhlander (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-6, 8, 9, and 13. The
Examiner has withdrawn claims 7 and 14-17 from consideration and
objected to claims 10-12 as depending from a rejected claim but otherwise
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being allowable. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).
The Invention
Appellant’s invention is directed to terminal assemblies, and fittings
for terminal assemblies, of motion-transmitting cable assemblies.
Specification 1, ¶ 1. Claims 1, 8, and 13, reproduced below, are further
illustrative of the claimed invention.
1. A fitting for a terminal sub-assembly, adapted to
receive a connector pin, comprising:
a generally annular isolator having a
generally central bore defining a connector pin
socket adapted to receive a connector pin, and a
reverse clip cap socket; and
a reverse clip cap configured to be received
substantially concentrically by the reverse clip cap
socket of the isolator and defining a connector pin
end socket configured to engage a connector pin,
and having a deflectable wall with a configuration
for securing a connector pin to be received into the
connector pin socket of the isolator,
wherein the reverse clip cap and isolator are
operative to interlock when the fitting is mated
with a connector pin.

8. A terminal sub-assembly, adapted to be
mounted on a connector pin, comprising:
a housing defining a laterally extending
isolator socket,
a generally annular isolator configured to be
received substantially concentrically by the
isolator socket of the housing and having a
generally central bore defining a connector pin
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socket, adapted to receive a connector pin, and a
reverse clip cap socket; and
a reverse clip cap configured to be received
substantially concentrically by the reverse clip cap
socket of the isolator and defining a connector pin
end socket configured to engage a connector pin,
and having a deflectable wall with a configuration
for securing a connector pin to be received into the
connector pin socket of the isolator, that in
assembly with the isolator is substantially coaxial
with the connector pin socket,
wherein the reverse clip cap and isolator are
designed to interlock with one another when the
terminal sub-assembly is mated with a connector
pin so as to prevent extraction of the connector pin
from the terminal sub-assembly.

13. An assembled terminal sub-assembly adapted
to mate with a connector pin comprising:
a housing defining a laterally extending
isolator socket;
a generally annular isolator seated
substantially concentrically in the isolator socket
of the housing and having a generally central bore
defining a connector pin socket, adapted to receive
a connector pin, and a reverse clip cap socket; and
a reverse clip cap seated substantially
concentrically in the reverse clip cap socket of the
isolator and defining a connector pin end socket
adapted to engage a connector pin, and having a
deflectable wall with a configuration for securing a
connector pin received into the connector pin
socket of the isolator, that is substantially coaxial
with the connector pin socket,
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wherein the reverse clip cap and isolator
have corresponding configurations such that when
a connector pin is inserted into the connector pin
end socket of the reverse clip cap the deflectable
wall is pressed against the central bore of the
isolator thereby engaging the corresponding
configuration interlocking the reverse clip cap and
isolator and securing the connector pin.

The Rejections
Appellant seeks review of the Examiner’s rejections of claims 1-3, 5,
and 6 under 35 U.S.C. § 102(b) as being anticipated by Corcoran (US
2,784,987, issued March 12, 1957); claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Corcoran; and claims 8, 9, and 13 under 35 U.S.C.
§ 102(b) as being anticipated by Bung (US 5,265,495, issued November 30,
1993).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ISSUES
The first issue presented to us is whether Appellant demonstrates the
Examiner erred in finding that Corcoran’s sleeve 41 is an “isolator” as called
for in claims 1-6. This issue turns in part on the meaning that the claim term
“isolator” would have to a person of ordinary skill in the field of Appellant’s
invention. Appellant urges that an “isolator,” as that term is used in the
present application and in the relevant art, must be made of suitable material
and configured and positioned suitably to perform the function of an
isolator, that is, to absorb vibration. Appeal Br. 13. The Examiner, on the
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other hand, asserts that an “isolator,” given its broadest reasonable
interpretation, is a structure which isolates, or separates, other components
from each other or from the environment. Answer 8.
Appellant argues that the Examiner erred in rejecting claims 8 and 9
as being anticipated by Bung because:
(1) Bung’s socket member 24 cannot satisfy the requirement for a
“reverse clip cap” because it cannot be inserted into the Bung
device from the side opposite a connector pin. Appeal Br. 18.
(2) Bung’s second socket member 26 does not define a connector pin
socket. Reply Br. 3.
(3) Bung fails to disclose that the connector pin is prevented from
extraction from the terminal sub-assembly when the reverse clip
cap and isolator are interlocked with one another. Id.
Thus, a second issue in this appeal is whether any of the above three
arguments demonstrates error in the Examiner’s rejection of claims 8 and 9.
A third issue before us is whether Appellant’s argument that Bung’s
second socket member 26 does not define a connector pin socket
demonstrates error in the Examiner’s rejection of claim 13. Reply Br. 4.

FACTS PERTINENT TO THE ISSUES
1. Appellant’s invention is directed to terminal assemblies, and fittings for
terminal assemblies, of motion-transmitting cable assemblies.
Specification 1, ¶ 1.
2. Appellant’s Specification discusses traditional isolators within
Appellant’s field of invention as follows:
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Traditionally, the problem of lash is mitigated by
the use of an isolator at the interconnection
between the pin and the terminal sub-assembly,
designed to absorb vibration. The problem with
traditional isolators is that by their very nature they
must be made of a softer material that has
significant give or resiliency to absorb the
vibration and as a result suffer from increased wear
and breakdown in areas were [sic: where] the force
or load is concentrated, i.e. where the pin contacts
the isolator.
Specification 2, ¶ 4.
3. Bung’s invention relates to motion-transmitting cable assemblies and,
more particularly, to core element terminals for interconnecting a core
element and a control element. Bung, col. 1, ll. 6-10. Bung’s invention,
therefore, is in Appellant’s field of invention.
4. Bung explains, in the background of the invention, that ideally, the
isolator will absorb all of the vibration from the control member so that
no vibration travels along the core element to the gear shifter. Bung, col.
1, ll. 19-22. Bung further characterizes the terminal socket member
disclosed in US 4,581,953 to Watson as “soft enough to serve as an
isolator.” Bung, col. 1, ll. 29-31.
5. On the basis of Facts 1-4 above, we find that a person of ordinary skill in
Appellant’s field of invention, namely, terminals for motion-transmitting
cable assemblies, would understand an “isolator” to be an element made
of a material suitable for absorbing substantially all vibration transmitted
to it from a controlled member via the core element so as to isolate
components on the other end, such as a gear shifter or other actuator,
from vibration. We further find, on the basis of the above facts, and Fact
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4 in particular, that such a person would understand that not all materials
are sufficiently soft to function as an isolator.
6. Corcoran discloses a pipe coupling which is capable of being operated
without the use of tools and yet is locked against release by vibration or
other unintentional force. Corcoran, col. 1, ll. 15-20. Corcoran describes
operating sleeve 41 as being slidably assembled upon portion 42 of
female pipe coupling member 20 and optionally knurled or otherwise
provided with a similar frictional surface to facilitate manipulation of the
sleeve 41. Corcoran, col. 3, ll. 12-13 and 28-32. To couple female
member 20 to male member 10, male member 10 is thrust into female
member 20 as shown in Figure 3 until pilot 16 of member 10 bottoms on
packing 18. Corcoran, col. 3, ll. 33-37. Sleeve 41 is then moved to the
right until the chamfer thereof rides over the camming surfaces 46 of
heads 33 to drive heads 33 into clearance space 23 of male member 10
against surface 22, whereupon the groove 44 of sleeve 41 will have
moved into position to receive the heads 33 as seen in Figure 6.
Corcoran, col. 3, ll. 41-48.
7. Corcoran teaches that the positive locking of the pipe coupling in its
coupled state suits it ideally to applications in which vibration is
encountered without the need for safety wiring. Corcoran, col. 5, ll. 5-8.
Corcoran, does not, however, provide any hint that the coupling is
designed to absorb vibration, much less that the sleeve 41 thereof is
designed for, or even capable of, absorbing vibration.
8. The Examiner has not made a finding that Corcoran’s sleeve 41 is
designed for, or even capable of, absorbing vibration.
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9. Corcoran teaches that the device can be fabricated in virtually any
material, including non-metallic materials such as plastic compositions
and glass. Corcoran, col. 1, ll. 40-43. Corcoran does not explicitly teach
making the sleeve 41 of soft plastic.
10. Resilience is “the ability to bounce or spring back into shape, position,
etc.” Webster's New World Dictionary 1210 (David B. Guralnik ed., 2nd
Coll. Ed., Simon & Schuster, Inc. 1984).
11. The term “soft” means “giving way easily under pressure, as a feather
pillow or moist clay” or “not hard.” Id. at 1353.
12. Bung’s second socket member 26 has a central bore defining an upper
socket at the top thereof (labeled A7 in the reproduced Figure 4 on page
15 of the Answer) and a lower socket at the bottom thereof (labeled A3 in
the reproduced Figure 4 on page 15 of the Answer). The upper socket is
capable of receiving, and thus adapted to receive, a suitably sized and
configured connector pin, at least without first socket member 24 being
received in the central bore of second socket member 26. The lower
socket is capable of receiving first socket member 24. Bung, fig. 4.
13. Bung’s upper socket is not capable of receiving, and thus not adapted to
receive, a connector pin when first socket member 24 is received in the
lower socket of the second socket member 26 as illustrated in Figure 4.
14. Bung’s first socket member 24 is configured to be received by the lower
socket of second socket member 26 and defines a socket (labeled A5 in
the reproduced Figure 4 on page 15 of the Answer) configured to engage
a suitably sized and configured connector pin.
15. Bung’s first socket member 24 has a deflectable wall. Bung, col. 3, ll.
27-37 and 49-53.
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16. Bung’s second socket member 26 has flanges 32 and 36 that engage with
flanges 34 and 30 of first socket member 24 so that the first and second
socket members interlock with one another when the device is
assembled. Bung, col. 3, ll. 20-25 and 39-45. When a connector pin,
such as a ball connection 41, is retained in the ball socket of first socket
member 24, the interlocking of the first and second socket members
prevents extraction of the connector pin from the assembly by preventing
extraction of first socket member 24 from second socket member 26.

PRINCIPLES OF LAW
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991). It is not necessary that the reference teach what the subject
application teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be found in or fully
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met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772
(Fed. Cir. 1983).
There must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007).

ANALYSIS
Claims 1-6
Independent claim 1 requires, inter alia, an “isolator.” As noted
above, we find that a person of ordinary skill in Appellant’s field of
invention, namely, terminals for motion-transmitting cable assemblies,
would understand an “isolator” to be an element made of a material suitable
for absorbing substantially all vibration transmitted to it from a controlled
member via the core element so as to isolate components on the other end,
such as a gear shifter or other actuator, from vibration. We further find, on
the basis of the above facts, and Fact 4 in particular, that such a person
would understand that not all materials are sufficiently soft to function as an
isolator. Thus, consistent with Appellant’s Specification (see Fact 2), we
construe the term “isolator” in claim 1 as it would be interpreted by a person
of ordinary skill in the field of Appellant’s invention, that is, as an element
made of a material suitable for absorbing substantially all vibration
transmitted to it from a controlled member via the core element so as to
isolate components on the other end, such as a gear shifter or other actuator,
from vibration. Corcoran does not provide any hint that the coupling is
designed to absorb vibration, much less that the sleeve 41 thereof is designed
for, or even capable of, absorbing vibration. (Fact 7) Nor has the Examiner
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made a finding that Corcoran’s sleeve 41, on which the Examiner reads the
claimed “isolator,” is designed for, or even capable of, absorbing vibration.
(Fact 8) We thus conclude the Examiner erred in finding that Corcoran’s
sleeve 41 is an “isolator” as called for in independent claim 1. Accordingly,
we cannot sustain the rejection of claim 1 and claims 2, 3, 5 and 6 depending
from claim 1 as being anticipated by Corcoran.
In rejecting claim 4 under 35 U.S.C. § 103(a) as being unpatentable
over Corcoran, the Examiner reasons that “since the fingers 31 in Corcoran
are resilient, one skilled in the art will use a soft plastic for its flexibility and
further compose the other components from the same material to save cost
instead of using different materials.” Answer 7. Consequently, the
Examiner determines it would have been obvious to make all of Corcoran’s
components, including the sleeve 41, of soft plastic. Id. This reasoning is
flawed. The property of resilience cannot be equated with softness.
Resilience is “the ability to bounce or spring back into shape, position, etc.,
while softness is the property of “giving way easily under pressure, as a
feather pillow or moist clay” or “not hard.” (Facts 10 and 11) An element
can be resilient without being soft. Thus, the Examiner’s articulated
reasoning to support the conclusion of obviousness does not have a rational
underpinning. Accordingly, we cannot sustain the rejection of claim 4.

Claims 8 and 9
Appellant does not present any separate arguments for the
patentability of claim 9 apart from independent claim 8 from which it
depends. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2008),
claim 9 stands or falls with representative claim 8.
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We begin our analysis by making the following observations about
claim 8. The phrase “a connector pin” appears several times throughout the
claim. None of the appearances of “a connector pin” is positively tied back
to any earlier appearance of “a connector pin.” Consequently, claim 8 does
not require that the connector pin which the connector pin socket is adapted
to receive be the same connector pin which the connector pin end socket is
configured to engage or with which the terminal sub-assembly is mated.
Claim 8 also does not require that the reverse clip cap be received by the
reverse clip cap socket of the isolator at the same time that a connector pin is
received in the connector pin socket of the isolator.1 Claim 8 also does not
require that the mating of a connector pin cause the reverse clip cap and
isolator to interlock with one another.
Appellant asserts that “[t]he term ‘reverse clip cap’ refers to a clip cap
that is inserted from the reverse, or opposite side, of the terminal sub-
assembly, that is, the opposite side from the connector pin.” Appeal Br. 18.
Appellant points to ¶ 9 of the present Specification for support for this
assertion. While the cited portion of the Specification states that the reverse
clip cap is inserted into the reverse clip cap socket on one side of the
terminal sub-assembly and the connector pin is inserted into the connector
pin end socket on the other side of the terminal sub-assembly, we find
therein no express definition of the term “reverse clip cap.” Nevertheless,
even assuming arguendo that “reverse clip cap” were so defined, Bung’s
reverse clip cap would satisfy this definition, as it is inserted into the lower
socket (A3) opposite the upper socket (A7) into which a connector pin is

1 Claim 8 merely recites a reverse clip cap “configured to be received … by
the reverse clip cap socket of the isolator.”
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capable of being inserted. (Facts 12 and 14) For the above reasons,
Appellant’s argument (1) does not demonstrate error in the Examiner’s
rejection.
Appellant’s argument that Bung’s second socket member 26 does not
define a connector pin socket likewise is not persuasive. The upper socket
(A7) of Bung’s second socket member 26 (the structure on which the
Examiner reads the isolator) is capable of receiving, and thus adapted to
receive, a suitably sized and configured connector pin, at least without first
socket member 24 being received in the central bore of second socket
member 26.2 (Fact 12) Bung’s second socket member 26 therefore defines
a connector pin socket as called for in the claim. The lower socket (A3) is
capable of receiving first socket member 24, which, as discussed above,
satisfies the requirements of a reverse clip cap. The lower socket (A3) thus
is a reverse clip cap socket.
Appellant argues that Bung fails to disclose that the connector pin is
prevented from extraction from the terminal sub-assembly when the reverse
clip cap and isolator are interlocked with one another. This argument also is
not persuasive of error in the Examiner’s rejection. As noted above, claim 8
does not require that the mating of a connector pin cause the reverse clip cap
and isolator to interlock with one another. Bung’s second socket member 26
has flanges 32 and 36 that engage with flanges 34 and 30 of first socket
member 24 so that the first and second socket members interlock with one
another when the device is assembled. When a connector pin, such as a ball

2 As noted above, claim 8 does not require that the reverse clip cap actually
be received by the reverse clip cap socket of the isolator when a connector
pin is received in the connector pin socket.
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connection 41, is retained in the ball socket of first socket member 24, the
interlocking of the first and second socket members prevents extraction of
the connector pin from the assembly by preventing extraction of first socket
member 24 from second socket member 26. (Fact 16) Accordingly, we find
that Bung satisfies the limitations in the final paragraph of claim 8.
For the above reasons, Appellant’s arguments fail to demonstrate error
in the Examiner’s rejection of claim 8. We therefore sustain the rejection of
claim 8 and claim 9, which stands or falls with claim 8.

Claim 13
Unlike claim 8, claim 13 positively requires a reverse clip cap seated
in the reverse clip cap socket of the isolator. The Examiner reads the
connector pin socket of the isolator on the upper socket (A7) of second
socket member 26 of Bung. Answer 6. Bung’s upper socket is not capable
of receiving, and thus not adapted to receive, a connector pin when first
socket member 24 is received in the lower socket of the second socket
member as illustrated in Figure 4. (Fact 13) Bung’s upper socket (A7) thus
does not satisfy the limitation in claim 13 of “a connector pin socket,
adapted to receive a connector pin.” Appellant’s argument that Bung’s
second socket member 26 does not define a connector pin socket thus
demonstrates error in the Examiner’s rejection of claim 13. We cannot
sustain the rejection of claim 13.

CONCLUSIONS OF LAW
Appellant demonstrates the Examiner erred in finding that Corcoran’s
sleeve 41 is an “isolator” as called for in claims 1-6.
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None of Appellant’s arguments demonstrates error in the Examiner’s
rejection of claims 8 and 9.
Appellant’s argument that Bung’s second socket member 26 does not
define a connector pin socket demonstrates error in the Examiner’s rejection
of claim 13.
Accordingly, we sustain the rejection of claims 8 and 9 as being
anticipated by Bung. We reverse the rejections of claims 1-3, 5, and 6 as
being anticipated by Corcoran, the rejection of claim 4 as being unpatentable
over Corcoran, and the rejection of claim 13 as being anticipated by Bung.

DECISION
The Examiner’s decision is affirmed as to claims 8 and 9 and
reversed as to claims 1-6 and 13.
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) (2008).
AFFIRMED-IN-PART

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