John Siemon et al.

Patent Trials and Appeals Board

Aug 25, 2020

2020005518 (P.T.A.B. Aug. 25, 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.
13/944,262 07/17/2013 John A. Siemon SIE0447R 8252
23413 7590 08/25/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. SIEMON,
RANDY J. BELOW, BRIAN CELELLA, JAMES A. FREY,
MAXWELL K. YIP, VINICIO CRUDELE, JOSEPH M. FAVALE, and
MARC J. PARDEE
Appeal 2020-005518
Patent 7,980,899 B2
Application 13/944,262
Technology Center 3900
Before ALLEN R. MacDONALD, ERIC B. CHEN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 5–10, and 13–16, which are all of the claims
pending in the application. Claims 3, 4, 11, 12, and 17–41 have been
canceled.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the Siemon Company as the real party
in interest. Appeal Br. 1.
2 Appellant misstates that claim 2 has been cancelled. Appeal Br. 1.
Appeal 2020-005518
Patent 7,980,899 B2
Application 13/944,262

2
TECHNOLOGY
The application relates to a “telecommunications connector having
reduced termination variability to improve performance (e.g., crosstalk
reduction) of the mated connectors.” U.S. Patent No. 7,980,899 B2 at 2:1–4.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below:
1. A telecommunications connector assembly comprising:
a cable having a first pair of twisted wires and a second
pair of twisted wires;
a first connector having a first substrate having a first
termination area, the first pair of twisted wires provided for
electrical termination on a first side of the first substrate, the
second pair of twisted wires provided for electrical termination
on a second side of the first substrate, the second side of the first
substrate opposite the first side of the first substrate;
a second connector having a second substrate having a
second termination area, the second pair of twisted wires
provided for electrical termination on the second substrate, the
first pair of twisted wires provided for electrical termination on
the second substrate;
wherein the first pair of twisted wires is provided for
electrical termination on the first substrate at insulation
displacement contacts;
wherein the first connector is a first plug and the second
connector is a second plug;
the first connector further comprising first plug contacts
installed in the first substrate, the first plug contacts engaging
outlet contacts upon the first plug mating with a modular jack;
wherein the insulation displacement contacts are
positioned in first plated through holes on the first substrate and
Appeal 2020-005518
Patent 7,980,899 B2
Application 13/944,262

3
the first plug contacts are positioned in second plated through
holes on the first substrate;
wherein the first plug is an RJ-45 type plug and the second
plug is an RJ-45 type plug;
wherein the first plug includes a first plug housing having
slots therein, the first plug contacts extending through the slots
in the first plug housing.
REFERENCE
The Examiner relies on the following prior art references:
Name Number Date
Crudele US 2004/0116081 A1 June 17, 2004
Hackman US 7,223,915 B2 May 29, 2007
Herman US 5,741,155 Apr. 21, 1998
Smith US 5,608,757 Mar. 4, 1997
Su US 5,905,637 May 18, 1999
REJECTIONS
Claims 1, 2, 5–10, and 13–16 stand rejected under 35 U.S.C. § 251
based on a defective reissue declaration. Final Act. 3.
Claims 1, 2, 5–9, and 13 stand rejected under 35 U.S.C. § 103 as
obvious over Hackman and Su. Final Act. 3.
Claims 10 and 16 stand rejected under 35 U.S.C. § 103 as obvious
over Hackman, Su, and Crudele. Final Act. 7.
Claim 14 stands rejected under 35 U.S.C. § 103 as obvious over
Hackman, Su, and Herman. Final Act. 9.
Claim 15 stands rejected under 35 U.S.C. § 103 as obvious over
Hackman, Su, and Smith. Final Act. 9.
Appeal 2020-005518
Patent 7,980,899 B2
Application 13/944,262

4
ANALYSIS
§ 251
“Appellant does not present any argument in the appeal brief on the
rejection . . . under 35 U.S.C. § 251 as being based upon a defective reissue
declaration.” Ans. 4.
Accordingly, we sustain the Examiner’s rejection of claims 1, 2, 5–10,
and 13–16 under § 251.
§ 103
Appellant makes four arguments against the Examiner’s rejection
under § 103. First, Appellant argues:
Hackman is specifically concerned with the size of the connector
and cable terminations. . . . The proposed modification of
Hackman with the disclosure of Su . . . would greatly expand the
height of the connectors 102 and 104, contrary to Hackman’s
objective of providing a compact connector. This proposed
modification renders Hackman unsatisfactory for [its] intended
purpose.
Appeal Br. 9.
However, we agree with the Examiner that “Appellant fails to show
any evidence why the placement of the wire terminal 24 in Fig. 3 of Su on
the circuit boards 132 and 146 in Fig. 1 of Hackman would expand the
height of connectors 102 and 104 in Fig. 1 of Hackman.” Ans. 7–8. We
similarly agree with the Examiner that Appellant fails to show that a
compact connector is Hackman’s “intended purpose,” rather than other
purposes such as “devising a wire management configuration to make the
wires easily align with the signal contacts of the opposing circuit boards for
reducing the need to manipulate and rearrange the wires at the opposite end
Appeal 2020-005518
Patent 7,980,899 B2
Application 13/944,262

5
of the cable” at the time of manufacture. Id. at 7; see also Hackman 1:34–37
(“Rearranging the wires increases the manufacturing time and complexity”).
Second, the Examiner determines that it would have been obvious to
combine Su and Hackman “for the advantage of allowing the positions of
the electrical wires of the signal line to be conveniently interchanged.” Final
Act. 5 (citing Su 1:41–44). Appellant argues that “the statement of the
motivation to combine Hackman and Su . . . is directly contrary to the
teachings of Hackman” because “Hackman states that rearranging wires is to
be avoided.” Appeal Br. 10 (citing Hackman 1:34–37). However, we agree
with the Examiner that
Su’s motivational feature for combining Hackman with Su (i.e.,
interchangeable connections of the arranged electrical wires)
does not teach away from the Hackman’s key feature of wire
management configuration to make the wires easily align with
the signal contacts of the opposing circuit boards for reducing the
need to manipulate and rearrange the wires at the opposite end of
the cable because Su provides an advantage of allowing the
positions of the [well-arranged] electrical wires of the signal line
to be conveniently interchanged [for a different signal
connection], for example.
Ans. 9 (brackets in original). Thus, the Examiner finds that Su helps
alleviate some of the rearrangement concerns identified in Hackman.
Third, Appellant argues that “the proposed modification to Hackman
(i.e., using the terminals 23 extending [through] slots 12 of Su) would render
the connector of Hackman unable to mate with an intended receptacle.”
Appeal Br. 11. However, the Examiner correctly notes that “the proposed
modification . . . renders the terminals . . . able to mate with a modular jack
in Fig. 1 of Su.” Ans. 11. As the Federal Circuit has explained, “one of
ordinary skill would have been motivated to pursue the desirable properties
Appeal 2020-005518
Patent 7,980,899 B2
Application 13/944,262

6
taught by [one prior art reference], even if that meant foregoing the benefit
taught by [another prior art reference].” In re Urbanski, 809 F.3d 1237,
1244 (Fed. Cir. 2016).
Fourth, Appellant argues that “[i]f Hackman is modified to use the
wire termination of Su, then the wire termination will all be on one side of
the circuit board, rather than on two sides as recited in pending claim 1.”
Appeal Br. 11. In particular, claim 1 recites “a first substrate” and “the first
pair of twisted wires provided for electrical termination on a first side of the
first substrate, the second pair of twisted wires provided for electrical
termination on a second side of the first substrate, the second side of the first
substrate opposite the first side of the first substrate.” However, Appellant
fails to address sufficiently the Examiner’s determination that “the primary
reference Hackman alone teaches the argued limitation,” including
“termination on a first side of the first substrate (i.e., differential pair 160 of
the wire pair #1 and #2 is on top signal layer 164 in Fig. 3 . . . )” and
“termination on a second side of the first substrate (i.e., differential pair 160
of the wire pair #3 and #4 is on bottom signal layer 166 in Fig. 4 . . . ).”
Ans. 12. The Examiner finds these top and bottom connections would still
remain even after modifying with Su’s insulation displacement contacts. Id.
Appellant has not sufficiently addressed these determinations by the
Examiner.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2, 5–10, and 13–16, which Appellant argues are patentable for similar
reasons. See Appeal Br. 11–12; 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2020-005518
Patent 7,980,899 B2
Application 13/944,262

7
OUTCOME
The following table summarizes the outcome of each rejection:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–10,
13–16
§ 251 Defective declaration 1, 2, 5–10,
13–16

1, 2, 5–9, 13 § 103 Hackman, Su 1, 2, 5–9, 13
10, 16 § 103 Hackman, Su, Crudele 10, 16
14 § 103 Hackman, Su, Herman 14
15 § 103 Hackman, Su, Smith 15
Overall
Outcome
1, 2, 5–10,
13–16

TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED