Ex Parte Werthman et al

Board of Patent Appeals and Interferences

May 29, 2012

11986934 (B.P.A.I. May. 29, 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.
11/986,934 11/26/2007 Paul A. Werthman 087A.0111.U1(US) 4604
29683 7590 05/29/2012
HARRINGTON & SMITH
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
HAMMOND, BRIGGITTE R
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
05/29/2012 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 PAUL A. WERTHMAN,
DEBORAH L. WERTHMAN, RUSSELL LEE SCHOEPF,
REGINALD B. PHELPS, and EARLE TEMPLE
____________________

Appeal 2010-0034481
Application 11/986,934
Technology Center 2800
____________________

Before JEAN R. HOMERE, CARL W. WHITEHEAD, JR., and
JAMES R. HUGHES, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is FCI Americas Technology, Inc. (App. Br. 1.)

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Application 11/986,934

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-23. (App. Br. 4.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm in part.
Appellants’ Invention
Appellants invented an electrical connector (32) including a tube
section (34) connected to a lug section (36) having two Underwriters
Laboratories (UL) certified lug portions (38, 40), each containing a hole (18)
separated by a weakened section (42) such that one of the lug portions (38)
can be removed from the other (40) at the weakened section (42) thereby
reconfiguring the lug section (36) to have a single UL certified lug portion
instead of two. (Spec., ¶¶ [0025]- [0029], Fig. 4, 5.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. An electrical connector comprising:

a first connection section adapted to connect the
electrical connector to a first conductor; and

a second connection section connected to the first
connection section, wherein the second connection section
comprises a lug with a plurality of lug portions with at
least one weakened section between the lug portions,
wherein each lug portion has a hole adapted to be located
onto a respective mounting post, wherein a first one of
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the lug portions is configured to be removed from a second one
of the lug portions at the weakened section to reconfigure the
second connection section to have one less lug portion.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Krueger US 2,406,079 Aug. 20, 1946
Appellants’ Admitted Prior Art, Fig. 3 of instant application. (AAPA).

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 11-20, 22 and 23 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly
point out and distinctly claim the invention.
2. Claims 1-3, 5-9, and 21-23 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Krueger.
3. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Appellant’s Admitted Prior
Art (APA) and Krueger.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 6-23.
Indefiniteness Rejection
Appellants argue that the Examiner erred in concluding that claims
11-20, 22 and 23 are indefinite because one of ordinary skill in the art
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having read the Specification would have been apprised that the
“predetermined product safety certification” recited therein refers to the
configurations of the lug section being UL certified. (App. Br. 9-12, Reply
Br. 1-5.) We note the Examiner provided in the Answer no response to
Appellants’ arguments beyond the initial conclusion that the cited expression
is undefined in the claims, and that it can be changed by anyone at any time.
(Ans. 3.) We therefore, find persuasive Appellants’ un-rebutted arguments
in light of the additional evidence provided by Appellants in the evidence
appendix to show that the terms in question are known in the art, and that the
scope of the claim would therefore have been readily apprised by an
ordinarily skilled artisan. It follows that Appellants have shown error in the
Examiner’s indefiniteness rejection.
Anticipation Rejection
Representative Claim 1
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding that Krueger’s disclosure describes a first one of the lug portions is
configured to be removed from a second one of the lug portions at the
weakened section thereof to reconfigure the lug section to have one less lug
portion, as recited claim 1?

Appellants argue that the Examiner erred in finding that Krueger
anticipates claim 1 because Krueger does not describe the disputed
limitations emphasized above. According to Appellants, while Krueger
discloses a first head portion and a second head portion separated by a hinge
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portion, Krueger does not discloses that the first head portion can be
removed from the second head portion. (App. Br. 13-14.) In response, the
Examiner finds that because the claim only requires that one lug portion be
capable of being removed from the other at a weakened section, Krueger’s
disclosure of a head element being connected to another head element via a
hinge section describes the disputed limitations. (Ans. 8-9.)
On the record before us, we agree with the Examiner’s findings and
ultimate determination of anticipation. In particular, we agree with the
Examiner that the recitation of a lug portion being configured to be removed
from another lug portion is a mere statement of intended use. Our reviewing
Court has held that a statement of intended use in an apparatus claim cannot
distinguish over a prior art apparatus that discloses all the recited limitations
and is capable of performing the recited function. See In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). We also note that “[a]n intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . .
appear in the claim's preamble,” a statement of intended use or purpose can
appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987).
Even if we were to consider the statement of intended use, we find
that it is fully met by an equivalent prior art structure disclosed in Krueger,
which appears to be capable of performing the recited function. In
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particular, we find that Krueger discloses a first head element (13) that is
capable of being removed from a second head element (12) from the hinge
that connects them. (Fig. 1.) Further, we have not found on the record
before us any evidence, nor have Appellants shown that Krueger’s head
elements are incapable of being removed from each other. Consequently,
because Krueger discloses an identical structure to that in the claimed
invention, we find that absent any evidence to the contrary, the disclosed
structure is similarly capable of performing the same functions set forth in
the disputed limitations. It follows that Appellants have not shown error in
the Examiner’s anticipation rejection of claim 1.
Claims 2, 3, 5, 8, and 9 not separately argued fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii).
As to claims 6-7, Appellants argue that Krueger discloses a linear
score or nick on the top side, but not along a bottom side. Therefore,
Krueger does not describe a weakened section having a laterally extending
recess along a bottom side of the lug. (App. Br. 15.) This argument is not
persuasive. We find that because Krueger’s disclosed hinge is a two sided
element that extends between the lugs, it therefore extends along both the
top side and the bottom side of the lugs that it connects.
As to claim 21, Appellants reiterate the same arguments previously
submitted for patentability of claim 1, except that claim 21 recites that the
first lug portion is adapted to be removed from another lug portion. (App.
Br. 15.) We find that similar to the “configured to” language, “adapted to” is
a statement of intended use, which is fully met by Krueger’s equivalent
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structure as discussed above. Further, regarding the argument that Kruger
discloses a single post for mounting the holes and not two (App. Br. 16,) we
find that because each of Krueger’s disclosed apertures (17, 21) have a
binding post extending therethrough (col. 1,ll. 50-52, col. 2, ll. 12-15),
Krueger discloses a post for each of the apertures.
As to claims 22-23, Appellants argue that Krueger does not discuss
UL certification of a first configuration and a second configuration of an
electrical connector. (App. Br. 16-17.) In response, the Examiner finds that
in light of the ambiguities surrounding such recitations, no weight has been
provided thereto. (Ans. 10.) We find error in the Examiner’s rejection. As
discussed above, we find no such ambiguities in the cited recitations.
Further, we find no discussion of UL certification in Krueger.
Consequently, Appellants have shown error in the Examiner’s anticipation
rejection of claims 22 and 23.
Obviousness Rejection
Because we found Krueger’s disclosure anticipates claims 1-3, 5-9,
and 21 above, the combination of APA and Krueger also renders the cited
claims unpatentable. Similarly, we find that the proposed combination
renders claims 4, 10, 16, 17, and 20 unpatentable.
Regarding claims 11-15, 18 and 19, as discussed above, Krueger
discloses a double sided hinge that is capable being taken apart in order to
remove a first lug from a second lug connected thereto thereby transforming
a two lug connector into a single lug connector. Further, AAPA discloses
that two lug connectors are UL certified. (Spec. ¶ [0004]). We find one of
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ordinary skill in the art would have readily recognized that, similar to the
claimed invention, Krueger discloses a structure that is capable of being
reconfigured from a two lug section into a single lug section, and that
Krueger’s single lug configuration would have been similarly UL certified
as the two-lug configuration. We are therefore satisfied that the proffered
combination of APA and Krueger discloses known prior art elements that
perform ordinary functions to predictably result in a single lug UL certified
lug section. It follows that Appellants have not shown error in the
Examiner’s obviousness rejection of claims 11-15, 18, and 19.
DECISION
We affirm the Examiner’s anticipation rejection of claims 1-3, 5-9,
and 21. We also affirm the Examiner’s obviousness rejection of claims 1-
20. However, we reverse the Examiner’s indefiniteness rejection of claims
11-20, 22, and 23 as well as the anticipation rejection of claims 22 and 23 as
set forth above
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-INPART

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