Jack E. Caveney et al.

Patent Trials and Appeals Board

Sep 3, 2020

2019000209 (P.T.A.B. Sep. 3, 2020)

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.
15/288,259 12/21/2016 Jack E. Caveney LCB457-CON-4-CIP 7691
32915 7590 09/03/2020
PANDUIT CORP.
18900 Panduit Drive
Tinley Park, IL 60487
EXAMINER
PATEL, HARSHAD C
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
09/03/2020 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):
patents@panduit.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK E. CAVENEY, MASUD BOLOURI-SARANSAR, SCOTT
M. LESNIAK, SATISH I. PATEL, and PAUL W. WACHTEL
Appeal 2019-000209
Application 15/288,259
Technology Center 2800
BEFORE ROMULO H. DELMENDO, KAREN M. HASTINGS, and
RAE LYNN P. GUEST, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3 and 4. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Panduit Corp.
Appeal Br. 1.
2 In our Decision, we refer to the Specification (“Spec.”) filed Oct. 7, 2016;
the Final Office Action dated Jan. 22, 2018 (“Final Act.”); the Appeal Brief
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CLAIMED SUBJECT MATTER
The claims on appeal are directed to a communications jack for
receiving a plug having a plurality of jack contacts and a structure attached
thereto “proximate to a plug/jack interface.” See Appeal Br. 7, Claim
App’x, Claim 1. According to the Specification, a printed circuit board
provided in a communications jack, in electrical contact with the contacts,
provides crosstalk compensation in the transmission of high frequency data
signals. Spec. ¶¶ 4–6. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A communication jack configured to receive a plug to form a
communication connection, comprising:
a plurality of jack contacts, the plurality of jack contacts at
least partially disposed within a plug receiving cavity in the jack;
a structure attached to at least one of the plurality of jack
contacts proximate to a plug/jack interface, the structure
connected to the at least one jack contact such as to route the
current to flow generally orthogonal the jack contact at a point
proximate to the plug/jack interface.
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Young et al. US 5,163,836 Nov. 17, 1992
Korsunsky et al. US 6,663,437 B2 Dec. 16, 2003
REJECTIONS
1. Claims 1 and 4 are rejected under 35 U.S.C. § 102 as being
anticipated by Korsunsky.

filed June 21, 2018 (“Appeal Br.”); the Examiner’s Answer dated Aug. 9,
2018 (“Ans.”); and the Reply Brief filed Oct. 9, 2018 (“Reply Br.”).
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2. Claims 3 is rejected under 35 U.S.C. § 103 as being unpatentable
over Korsunsky in view of Young.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we
affirm the Examiner’s decision to reject the claims on appeal.
Appellant presents arguments only for independent claim 1, as
representative of all of the claims on appeal. See Appeal Br. 6.
Accordingly, we limit our discussion below to the rejection of claim 1.
The Examiner finds that Korsunsky teaches the recited structural
relationship “proximate to a plug/jack interface” in that neither the term
“proximate” nor the Specification “specif[ies] one particular [] distance,
length, dimension or structure” to distinguish over the prior art. Final Act. 5.
The Examiner relies on dictionary definitions of “proximate” to mean
“extremely close” or “very near.” Id.; Ans. 3.
Appellant contends that the Examiner erred in applying an overly
broad meaning to the term “proximate” that is not consistent with
Appellant’s Specification, particularly the background of the Specification,
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allegedly distinguishing prior art3 that Appellant asserts teaches a structure
similar to Korsunsky. Appeal Br. 5–6; Reply Br. 4–5.
Appellant’s argument is not persuasive of error in the Examiner’s
rejection. “[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification.” In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027(Fed. Cir. 1997). We agree with the Examiner that Appellant has
directed us to no language in the Specification that would inform us as to the
meaning of the term “proximate,” which does not appear in the Specification
at all. Accordingly, a broad interpretation of the term is reasonable and not
inconsistent with the written description.
It would be error to read into the claims any particular meaning to the
term “proximate” relying only on the embodiments illustrated in the Figures
of Appellant’s application, as argued by Appellant. Appeal Br. 5 (arguing
the Figures illustrate structures “immediately adjacent to” and “no further
than a couple of millimeters from the plug/jack interface.”) Our reviewing
court has counseled that, absent claim language carrying a narrow meaning,
the PTO should only limit broad claim terms based on the specification
when those sources expressly disclaim the broader definition. In re Bigio,
381 F.3d 1320, 1324-25 (Fed. Cir. 2004). See also In re Van Geuns, 988

3 Appellant refers to U.S. Patent No. 6,305,950 as “Caveney;” yet the patent
issued October 23, 2001 naming Michael V. Doorhy as the sole inventor.
See Spec. ¶ 5. Accordingly, we refer to the patent here as the ’950 patent.
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F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the
claims from the specification.”); Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”). The
Specification indicates that the Drawings illustrate preferred, and not the
only, embodiments falling within the scope of the claimed invention. Spec.
¶¶ 88–159 (including heading labeled “Detailed Description of Preferred
Embodiments”); id. ¶ 160 (“While particular embodiments and applications
of the present invention have been illustrated and described, it is to be
understood that the invention is not limited to the precise construction and
compositions disclosed herein . . .”). Moreover, there is no indication that
the drawings are to any particular scale. Hockerson-Halberstadt Inc. v. Avia
Group Int’l Inc., 222 F.3d 951, 956 (Fed. Cir. 2000); see also In re Wright,
569 F.2d 1124, 1127 (CCPA 1977) (“Absent any written description in the
specification of quantitative values, arguments based on measurement of a
drawing are of little value.”).
Similarly, Appellant’s direct us to nothing in the Specification
distinguishing the ’950 patent based on any relative positioning of a
structure vis-à-vis a plug/jack interface by any particular amount. See
generally Appeal Br.; Reply Br. See also Spec. ¶¶ 5 (explaining the
problem of the ’950 prior art being a “high level of crosstalk . . . at very high
frequency signal rates”), 6 (summarizing the invention as “a
communications connector utilizes a flexible printed circuit to provide
crosstalk compensation. The flexible printed circuit is in electrical contact
with contacts of the communications connector.”), 145 (“One advantage of
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the present invention is that by having the signal perpetuate generally
orthogonal to the plug interface contacts through the flexible printed circuit
board, a shorter distance to compensation is enabled.”). Thus, Appellant has
not shown the Examiner’s broad interpretation is inconsistent with
Appellant’s Specification.
CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 4 102 Korsunsky 1, 4
3 103 Korsunsky,Young 3
Overall
Outcome
1, 3, 4

TIME PERIOD FOR RESPONSE
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).
AFFIRMED