Preputnick v. Provencher

1 Based on Application 08/882,795, filed June 26, 1997.
Accorded the benefit of Application 08/714,024, filed September
11, 1996. The real party in interest is Tyco International, Ltd.
2 Filed January 5, 1999. The real party in interest is
Teradyne, Inc.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
AND IS NOT BINDING PRECEDENT OF THE BOARD
Filed by: Trial Section Merits Panel Paper No. 60
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
GEORGE PREPUTNICK, JAMES LEE FEDDER,
SCOTT K. MICKIEVICZ and RICHARD N. WHYNE
Junior Party
(Patent No. 5,795,191)1,
v.
DANIEL B. PROVENCHER, and
PHILIP T. STOKOE,
Senior Party
(Application 09/225,439)2
Patent Interference No. 104,693
Before LEE, TORCZON and SPIEGEL, Administrative Patent Judges.
LEE, Administrative Patent Judge.
MEMORANDUM OPINION AND JUDGMENT
Introduction
Junior party Preputnick's preliminary statement does not
allege a date of invention prior to senior party Provencher's

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accorded benefit date and junior party has not attacked senior
party's accorded benefit date. Thus, Provencher's preliminary
motions are moot and judgment as to the subject matter of the
count will be entered against Preputnick.
Preputnick, however, has filed three preliminary motions,
each alleging unpatentability of all Provencher claims
corresponding to the count. We exercise our discretion to take
up these preliminary motions despite the absence of dispute on
priority.
Because all of Provencher's claims corresponding to the
count are unpatentable over prior art, judgment as to the subject
matter of the count will also be entered against Provencher.
Findings of Fact
1. This interference was declared on April 30, 2001.
2. Junior party Preputnick is involved on the basis of its
Patent No. 5,795,191, based on application 08/882,795, filed on
June 26, 1997.
3. Senior party Provencher is involved on the basis of its
application 09/225,439, filed January 5, 1999.
4. There is only one count in this interference, Count 1;
it reads as follows:
Claim 17 of Application 09/225,439
or
Claim 12 of Patent No. 5,795,191

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5. Junior party Preputnick's claims 9-14 were designated
as corresponding to Count 1 and senior party Provencher's claims
17-19 were designated as corresponding to Count 1.
6. Junior party Preputnick was accorded the benefit of
application 08/714,024, filed September 11, 1996.
7. Senior party Provencher was accorded the benefit of
application 08/977,285, filed November 24, 1997, now Patent No.
5,860,816, issued January 19, 1999, and application 08/623,582,
filed March 28, 1996, now Patent No. 5,702,258, issued December
30, 1997.
8. Junior party Preputnick's real party in interest is
Tyco International, Ltd.
9. Senior party Provencher's real party in interest is
Teradyne, Inc.
10. The subject matter of Count 1 relates to an electrical
connector assembly and a method for making an electrical
connector terminal module.
11. Junior party Preputnick filed preliminary motions 1, 2
and 3: (1) Preliminary Motion 1 alleging that senior party
Provencher's claims 17-19 are unpatentable under 35 U.S.C.
§ 102(b) for anticipation by Japanese Utility Model Application
6-88065 (Hashiguchi); (2) Preliminary Motion 2 alleging that
senior party Provencher's claims 17-19 are unpatentable under

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35 U.S.C. § 103 over various combinations of prior art
references; and (3) Preliminary Motion 3 alleging that senior
party's claims 17-19 are unpatentable under 35 U.S.C. § 112,
first paragraph, as lacking written description in the
specification.
12. Junior party Preputnick has not filed any preliminary
motion to attack the benefit accorded senior party Provencher at
the commencement of this interference.
13. Senior party Provencher filed preliminary motions 1 and
2: (1) Preliminary Motion 1 attacking the benefit accorded
junior party's involved patent; and (2) Preliminary Motion 2
alleging that junior party Preputnick's claims 12-14 are
unpatentable under 35 U.S.C. § 102 as being anticipated by U.S.
Patent No. 5,702,258, and that junior party Preputnick's claims
9-11 are unpatentable under 35 U.S.C. § 103 as being obvious over
U.S. Patent No. 5,702,258 in view of U.S. Patent Nos. 4,705,332
and 5,224,867.
14. Junior party Preputnick filed no opposition or any
other response to Senior party Provencher's preliminary motions 1
and 2.
15. Junior party Preputnick's preliminary statement states
that the invention of the count was conceived as early as
June 10, 1996.

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16. Junior party Preputnick's alleged date of conception is
subsequent to the accorded benefit date of senior party
Provencher.
17. On page 8, lines 3-5 of Provencher's specification, it
is stated: "The same contacts 410A . . . 410F can be used to
make [e]ither wafers 112 or 114. The only difference is in the
housing molded around the contacts." That means each physical
set of contacts 410A - 410F can be used to make either, not both,
wafers 112 and 114.
18. The level of ordinary skill in the art with respect to
the subject matter of the count is represented by that comparable
to a Bachelor degree in electrical engineering, mechanical
engineering, or physics, and 3 to 8 years of actual experience in
developing electrical connectors.
19. Provencher's claim 17 includes the step of: "securing
said first and second half-modules together by engaging
complementary fastening portions to define said terminal module."
20. Hashiguchi does not disclose complementary fastening
portions on its modules 1 and 2 which engage each other to secure
the modules together. See explanation in the discussion section
of this opinion.

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21. Provencher's specification describes the following
features of Provencher's claim 17 (see explanation in the
discussion section of this opinion):
providing a first lead frame having said first
contacts;
providing a second lead frame having said second
contacts;
overmolding said intermediate portions of said first
contacts in said first lead frame with insulating
material,
overmolding said intermediate portions of said second
contacts in said second lead frame with insulating
material;
22. Hashiguchi's disclosure does not "teach away" from
having complementary fastening portions on its modules 1 and 2
which act to engage each other to secure the modules together.
See explanation in the discussion section of this opinion.
23. U.S. Patent No. 5,171,161 ("the Kachlic patent")
discloses complementary fastening portions on contiguous modules,
which act to engage each other to secure the modules together.
See explanation in the discussion section of this opinion.
24. The placement of a conduction ground shield along one
side of a terminal module to define a shielded terminal module
was well known to one of ordinary skill in the art by March 1995.
See ¶ 22 of the Granitz declaration.

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Discussion
A. Preputnick's Preliminary Motion 3
By this preliminary motion, Preputnick seeks to have all of
Provencher's claims corresponding to the count, claims 17-19,
held unpatentable under 35 U.S.C. § 112, first paragraph, as
lacking written description in the specification.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later
claimed subject matter. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991); In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). One
shows that one is "in possession" of the invention by describing
the invention, with all its claimed limitations, not that which
makes it obvious. Lockwood v. American Airlines, Inc., 107 F.3d
1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
Preputnick argues that Provencher's specification does not
describe "a plurality of first and second contacts" as is recited
in Provencher's independent claim 17. Preputnick takes that
position despite the fact that Provencher's specification
discloses a plurality of contacts that is molded in its

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intermediate portion one way to form a first half-module and
another plurality of contacts that is molded in its intermediate
portion a different way to form a second half-module.
Preputnick's reasoning is that because the one set of plurality
of contacts used to make the first half-module is identical in
structure in every respect to the other set of plurality of
contacts used to make the second half-module, the two sets of
plurality of contacts cannot be regarded as "first and second"
contacts. According to Preputnick, the first and second contacts
cannot, by their own terms, be identical in structure to each
other.
We reject Preputnick's argument.
Provencher does not assert that its specification sets forth
a special definition for any term. Therefore, we read its
disclosure and claims according to the ordinary meaning and usage
of words in the English language. During proceedings before the
USPTO, claims are properly construed according to their broadest
reasonable interpretation consistent with the specification. In
re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983); see also In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989); In re Pearson, 494 F.2d 1399, 1404, 181
USPQ 641, 645 (CCPA 1974); In re Prater, 415 F.2d 1393, 1404, 162

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USPQ 541, 550 (CCPA 1969). Note the following passage in In re
Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978):
It is clear that the board did not consider the claimed
invention to be allowable, but instead found some other
non-claimed invention containing "inferential
limitations" to comply with the statute. . . .
* * *
Thus, the board was in error when it added an
"inferential limitation" to the claims. That error
requires corrective action by this court.
What Preputnick would have us do is to add the qualifier
"type of" or "kind of" between the words "first and second" and
the word "contacts" to arrive at the reformed term –- first and
second type of contacts –-, or –- first and second kind of
contacts –-. The evidence in the record does not support such a
contortion of the English language. Preputnick's contention not
only does not reflect the broadest reasonable interpretation of
the claim term "first and second contacts" but urges an
interpretation that is patently unreasonable.
Preputnick refers to U.S. Patent No. 5,174,770 ("the Sasaki
patent") as illustrating real or genuine "first and second
contacts" inasmuch as the first contacts in the Sasaki patent are
of a different configuration as the second contacts in the Sasaki
patent. But the fact that the first and second contacts in the
Sasaki patent are different in configuration does not mean that

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all first and second contacts, wherever found, must always have
different structure and configuration. The gap in logic is huge.
The fact that the two cars of A's family are of different make
and model does not mean the two cars of B's family must also be
different from each other.
If Provencher wanted to limit its claims so that the first
and second contacts are of different type, it easily could have
added the word "type" or "kind" to the claim. If it does not
want to so limit its claim, then it validly would not add the
limiting term "type" or "kind." If Preputnick's view is adopted,
Provencher would have to add to its claim 17 the lengthy
narrative "said first and second contacts may or may not have the
same structure and configuration" to set forth a broader scope.
That is both unreasonable and unnecessary. Merely stating "first
and second contacts" does the job.
Preputnick's motion cites to Paragraph 37 of the declaration
of Richard F. Granitz for support. That paragraph of the
declaration states as follows:
37. According to Provencher, the first and
second contacts are defined by the configuration of the
overmolded plastic web formed about the contacts and
not by the provision of two different types of
contacts. This definition is contrary to the
understanding of one of ordinary skill in the art. An
ordinarily skilled artisan would understand "first
contacts" and "second contacts" by the configuration of

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the contacts and not the overmolded plastic web that
surrounds the lead frame. An example of this common
understanding by those of ordinary skill in the art is
the Sasaki '770 patent, which discloses signal contact
blocks 11 and grounding contact blocks 12 that one of
ordinary skill in the art would consider half-modules,
inasmuch as the teaching of this patent is to combining
blocks 11 and 12 side by side to reduce cross-talk, and
the contacts of block 11 are clearly of a different
configuration from the second contacts of block 12.
Similarly, an ordinarily skilled artisan would
understand "first lead frame" and "second lead frame"
to denote a difference in shape or construction between
lead frames. (Preputnick Exhibit 2030, Sasaki '770
patent, col. 4, ll. 3-26, 40-59, Figs. 3C, 4-6C).
Mr. Granitz states his opinion in a conclusory manner, that
"[a]n ordinary skilled artisan would understand 'first contacts'
and 'second contacts' by the configuration of the contacts and
not the overmolded plastic web that surrounds the lead frame."
The reference to U.S. Patent No. 5,174,770, as an example does
not support that conclusion. That there are first contacts which
are different in structure or configuration from second contacts
does not mean there can be no first contacts which are identical
in structure with second contacts. Mr. Granitz does not explain
why one with ordinary skill in the art would necessarily assume
that first contacts are different in structure and configuration
from second contacts and not recognize a generic term when no
special condition or qualification is recited.
Mr. Granitz does not explain why where the contacts are all
identical in structure one with ordinary skill in the art would

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not accept or comprehend that if certain ones are labeled,
marked, or tagged in some way as Group 1, and the rest are
labeled, marked, or tagged in some way as Group 2, then there are
two groups of contacts, i.e., a plurality of first and second
contacts, even though all contacts are identical in structure.
Merely stating an opinion in a conclusory manner, without
revealing the underlying basis for that opinion, and where the
opinion is on its face illogical, Mr. Granitz has not provided
meaningful support for Preputnick's argument. We do not credit
the conclusory testimony Mr. Granitz with any meaningful weight.
Note that paragraph no. 42 of the Standing Order attached to the
Notice Declaring Interference states:
§ 42 Affidavits of expert witness
Affidavits expressing an opinion of an expert must
disclose the underlying facts or data upon which the
opinion is based. See Fed. R. Evid. 705 and 37 CFR §§
1.639(b) and 1.671(b).
Opinions expressed without disclosing the
underlying facts or data may be given little, or no,
weight. See Rohm and Haas Co. v. Brotech Corp., 127
F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. Cir. 1997)
(nothing in the Federal Rules of Evidence or Federal
Circuit jurisprudence requires the fact finder to
credit the unsupported assertions of an expert
witness).
We credit more the testimony of Mr. John L. Grant who states
(Exhibit 1015 at 12): "To one of ordinary skill in the art,
having differentiating characteristics is certainly a sufficient

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condition for characterizing two similar items as 'first' and
'second', however, it is not a necessary condition." Mr. Grant
refers to front and rear tires as an example. Front and rear
tires can certainly be referenced as first tires and second
tires, even though all tires may have identical structure. Thus,
as in ordinary use of the English language, location as well as
any other kind of label, marking, or tag, may serve to
differentiate a first set of an item from a second set of the
same item. As Mr. Grant further states with regard to the
contacts disclosed in Provencher's involved application (Exhibit
1015, at 13): "These two sets of contacts have the same size,
shape, and dimensions, but they are still two complete separate
sets of contacts (Emphasis in original)."
As is pointed out by Provencher, a plurality of first and
second contacts are illustrated on the half-modules 112 and 114
by first and second columns of contact elements in Fig. 1 of
Provencher's involved application. Also, first contacts are
illustrated in Figure 4B and second contacts are illustrated in
Figure 4C, each surrounded by a different style of overmolding.
For the foregoing reasons, we reject Preputnick's argument
that Provencher's specification does not have written description
for a plurality of first and second contacts.

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Preputnick further argues that Provencher's specification
does not describe the claim feature of "providing a second lead
frame having said second contacts." Preputnick cites to the
following disclosure of Provencher as providing just the opposite
(Emphasis in original quotation by Preputnick)(at 8, lines 3-5):
FIG. 4C shows a similar molding operation for wafer
112. The same contacts 410A . . . 410F can be used to
make wither [sic, either] wafers 112 or 114. The only
difference is in the housing molded around the contacts
(Preputnick Ex. 2003, '285 application, p.8, ll. 3-
5)(Emphasis added).
Also, Preputnick relies on Paragraph No. 41 of Mr. Granitz'
declaration which states, in pertinent part:
Here too, Provencher attempts to find two different
types of lead frames by pointing to the differences of
the overmolded plastic and not to a difference in the
lead frame. This disclosure, however, would not have
reasonably conveyed to one of ordinary skill in the art
the use of "a second lead frame having said second
contacts" as required by Provencher claim 17. To the
contrary, an ordinarily skilled artisan would
understand that this disclosure teaches that only one
lead frame having a plurality of contacts is used to
make both wafers 112 and 114, as expressly stated above
[page 8 of Provencher's specification, lines 3-5].
(Emphasis added.)
This is essentially the same argument as that presented by
Preputnick with respect to the rejected argument that
Provencher's specification does not describe first and second
contacts, only applied to first and second lead frames, and is no
more persuasive than that argument for the same reasons we have

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discussed. Preputnick would have us read into Provencher's
claim 17 the limiting term "type of" so that the reference to
"first lead frame" becomes –- first type of lead frame –-, and
the reference to "second lead frame" becomes –- second type of
lead frame –-. We decline. There is no basis for such
contortion of the English language. The references in
Provencher's claim 17 to a first lead frame and a second lead
frame do not require that the first and second lead frame be
different in structure or configuration. Preputnick's position
is contrary to the ordinary meaning and usage in the English
language. Mr. Granitz makes a contrary statement in his
declaration but his statement is conclusory. Mr. Granitz does
not explain why where two lead frames are identical in structure
one with ordinary skill in the art would not accept or comprehend
that if one of them is labeled, marked, or tagged in some way as
a first lead frame, and the other is labeled, marked, or tagged
in a different way as a second lead frame, then there is a first
lead frame and a second lead frame. Mr. Granitz does not explain
why one with ordinary skill in the art would assume that a
references to a first lead frame and to a second lead frame
necessarily means that the two lead frames do not have the same
structure or configuration. To the same extent that we do not
credit Mr. Granitz's testimony with regard to first and second

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contacts, we do not credit his testimony with regard to a first
and a second lead frame.
The way Preputnick has presented its argument has caused
confusion that made the job of its opposing counsel as well as
this panel more difficult than it needed to be. In connection
with its argument that the reference to first and second lead
frame must mean different types of lead frame, Preputnick dropped
the word "type" in immediate subsequent discussion on page 12 of
its motion, leading to this statement (page 12, lines 8-9):
"However, the Provencher applications disclose that the same
blank is used to make each of the two half modules.
(Fact 4(d))." Despite what it appears to say, the reference to
"same blank" does not mean the same actual physical blank, but an
identical version of the same blank. Note that the last sentence
in Fact 4(d) cited by Preputnick reads: "The blanks used to make
wafers (112, 114) are identical as shown in Figures 2, 3 and 4
(citations omitted.)." The same confusion is generated by
Paragraph No. 41 of the declaration of Mr. Grantiz, wherein first
he refers to a requirement for "two different types of lead
frames" and in two sentences thereafter while providing a
contrast, drops the word "type" and states that only one lead
frame having a plurality of contacts is used to make both wafers
112 and 114. To whatever extent Preputnick might be arguing that

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the same actual and physical piece of blank or lead frame is used
to make both half modules 112 and 114, the argument is rejected
for failing to provide sufficient proof.
The portion of Provencher's specification cited by
Mr. Granitz, page 8, lines 3-5, actually indicates two different
molding operations, one for wafer 112 and one for wafer 114 and
that the same material can be used to make "either" wafer 112 or
114, not both at once. Moreover, Provencher's Figure 4B
illustrates the lead frame immediately surrounding wafers 114 and
Figure 4C illustrates the lead frame immediately surrounding
wafers 112. The illustrated frame portions are not the same
physical components. In Provencher's brief description of the
drawings, it is stated:
FIG.4B illustrates the molding around the blank of FIG.
4A used to form a wafer as illustrated in FIG. 3;
FIG. 4C illustrates the molding around the blank of
FIG. 4A used to form a wafer as illustrated a wafer as
illustrated in FIG. 2; (Emphasis added.)
That description is consistent with the description in
Provencher's specification that the same blank is used to make
either wafers 112 and 114 and does not support any argument that
the same physical blank is used to make both wafers 112 and 114.
For the foregoing reasons, we reject Preputnick's argument
that Provencher's involved specification does not describe

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providing a first lead frame and also providing a second lead
frame.
Finally, Preputnick argues that Provencher's specification
does not describe the claimed overmolding step performed on
second contacts in the second lead frame. This argument is
dependent on Preputnick's two arguments already rejected above.
Preputnick's notion is that because Provencher's specification
does not describe second contacts or a second lead frame having
the second contacts, there is no description for an overmolding
step which overmold the intermediate portions of the second
contacts on the second lead frame. We have rejected Preputnick's
two underlying arguments and we have also already rejected
Preputnick's assertion that in Provencher's specification the
same physical blank is used to make both wafers. Accordingly,
the argument about there being no description for overmolding
second contacts on the second lead frame is without merit.
Preputnick's preliminary motion 3 alleging that Provencher's
claims 17-19 are unpatentable under 35 U.S.C. § 112, first
paragraph, for lack of written description in the specification
is denied.
B. Preputnick's Preliminary Motion 1
By this preliminary motion, Preputnick seeks to have all of
Provencher's claims corresponding to the count, claims 17-19,

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held unpatentable under 35 U.S.C. § 102 as being anticipated by
Japanese Utility Model Application 6-88065 (Hashiguchi).
Exhibit 2009 is a copy of Hashiguchi. Exhibit 2010 is an
English translation of Hashiguchi, provided by Preputnick.
Hereinafter, our references to Hashiguchi are intended as
references to Exhibit 2010 except as otherwise indicated.
To establish anticipation under 35 U.S.C. § 102, each and
every element in a claim, arranged as is recited in the claim,
must be found in a single prior art reference. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286,
1291 (Fed. Cir. 2001); Glaxo, Inc. v. Novopharm, Ltd., 52 F.3d
1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir. 1995).
On the issue of anticipation, only one feature of
Provencher's independent claim 17 is in dispute, i.e., the step
of "securing said first and second half-modules together by
engaging complementary fastening portions to define said terminal
module." The key to resolving this issue lies in the question --
does the claim feature require that something on the first half-
module and something on the second half-module be complementary
to and engage each other. In our view, it does.
Note that the recitation of the feature uses the term
"portions." Nothing has been defined in claim 17 to which a
fastening means can reasonably be deemed as a portion, except the

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first and the second half-module. It makes no sense for
"portions" to refer to something that is not yet defined, and the
closest items in the claim to the term "fastening portions" in
the recitation are the first and second half-modules. Indeed,
"said first and second half-modules" is a part of the same
recitation and is separated from "engaging complementary
fastening portions" by only two words. The sentence structure of
the recitation, according to ordinary English, is that the term
"fastening portions" modifies "first and second half-modules."
Provencher's specification also does not provide any basis to say
that the fastening portions are not a part of the first and
second half-modules. Thus, in this circumstance, the only
reasonable interpretation is that the fastening portions are
located on the first and second half-modules. Additionally, the
requirement that the fastening portions are complementary and
engaged for securing the first and second half-modules together
means there is direct engagement between the fastening portions.
If there is no direct engagement between fastening portions, the
characterization of the fastening portions as being
"complementary" makes little sense. Note that the word
"complementary" is located immediately next to the word
"engaging" in the feature at issue, which also leads us to
conclude that the complementary portions engage each other.

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Preputnick argues (Motion at 13):
Hashiguchi teaches that the first and second half-
modules are inserted in a mutually superposed state
into a housing. Thus, the two half-modules are
combined to form a module and are inserted, as a
module, into the housing. (Fact 4(e)). Once the
combined half-modules are inserted into the housing,
the forked pieces on each half-module engage a
protrusion on the housing to secure the module within
the housing 4. (Fact 4(f); Preputnick Ex. 2020, Decla.
Granitz, para. 53, 54,). Thus, the two piece, modular
connector taught by Hashiguchi inherently meets the
securing limitation of claim 17 under the "principles
of inherency." Verdegaal, supra, 814 F.2d at 631, 2
USPQ2d at 1053 (Fed. Cir. 1987).
The argument is without merit. The fact that modules 1 and 2 in
Hashiguchi are inserted in a mutually superposed state does not
mean that there is some fastening portion on module 1 and some
fastening portion on module 2 which engage each other.
Hashiguchi does not describe anything that fastens the two
modules together during the process of inserting them into the
housing. The two parts may simply be pressed together.
On page 14 of its motion, Preputnick relies on Mr. Granitz'
opinion that the complementary fastening portions feature is
necessarily shown in Hashiguchi. However, Mr. Granitz's opinion
is evidently based on the mistaken assumption that the fastening
portions on the first and second half-modules need not directly
engage each other. Note Paragraph No. 54 of Mr. Granitz's
declaration which is reproduced below:

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54. It is my opinion that the Hashiguchi 6-88065
application inherently discloses to one of ordinary
skill in the art the step of "securing the first and
second half-modules together by engaging complementary
fastening portions" required by Provencher claim 17.
As seen in figures 1-3, 5(a) and 6(a), it discloses
that first and second half-modules 1, 2 comprise forked
pieces 15 and 25, which engage protruding part 41 of
connector housing 4 (Preputnick Exhibit Nos. 2009 and
2010, Hashiguchi 6-88065, p.8, para. 14, ll. 1-10; p.9,
para. 20, ll. 1-5). An ordinary skilled artisan would
recognize that the forked pieces 15, 25 are
complementary in that they align with one another when
the half-modules 1 and 2 are paired together to thereby
form a channel that is engaged by protruding portions
41 of housing 4 to define terminal modules.
It is not enough that each half-module contains a fastening
portion which engages the same member 41 on a housing 4. The
fastening portions of Hashiguchi do not directly engage each
other and do not have a structure dependent on that of each
other. Rather, they engage an element on the housing and have a
structure complementary to that of the element on the housing.
Mr. Grant, the technical expert of Provencher also recognizes
that Hashiguchi teaches securing each of modules 1 and 2 to the
housing but not directly to each other. (Exhibit 1015, ¶ 14).
We find that Hashiguchi's modules 1 and 2 are each attached to
the housing 4 in a mutually aligned manner but are not directly
fastened to each other.
In its reply, Preputnick asserts that one with ordinary
skill in the art would have understood that "the first and second

Interference No. 104,693
Preputnick v. Provencher
- 23 -
half modules could be secured together either to each other
directly or via the housing. (Emphasis added)." But the ground
of unpatentability alleged in this preliminary motion is
anticipation, not obviousness. Preputnick provides no citation
to any portion of Hashiguchi which discloses an alternative
embodiment in which modules 1 and 2 are secured directly to each
other rather than separately to a common housing element.
For the foregoing reasons, Hashiguchi does not anticipate
Provencher's claim 17. Furthermore, according to Preputnick,
Provencher's claims 18 and 19 each includes the securing step
feature of claim 17. Consequently, it has not been shown that
Hashiguchi anticipates Provencher's claims 18 and 19.
Preputnick's preliminary motion 1 is denied.
C. Preputnick's Preliminary Motion 2
By its preliminary motion 2, Preputnick asserts that all of
Provencher's claims corresponding to the count, claims 17-19, are
unpatentable under 35 U.S.C. § 103 for obviousness over prior
art. According to ¶ 26 in the Standing Order issued together
with the Notice Declaring Interference, a motion shall begin with
a section setting forth the precise relief requested. In
Preputnick's statement of the precise relief requested, no less
than five, six if the connector "and/or" is counted as setting
forth two grounds, grounds of alleged unpatentability are listed,

Interference No. 104,693
Preputnick v. Provencher
3 Six prior art references have been previously noted in
the same paragraph.
- 24 -
one of which is hopelessly ambiguous –- "obvious in view of the
same in combination with . . . ."3 (Emphasis added.)
It appears that the grounds of unpatentability are divided
into two groups, one based on Hashiguchi as a primary reference,
and one based on any one of three catalogues collectively
referred to as AMPMODU catalogues as a primary reference. With
this understanding, we proceed, but not without further
frustration. One of the grounds of unpatentability relying on
Hashiguchi as the primary reference also relies on U.S. Patent
No. 4,729,727, referred to by Preputnick only as the '727 patent.
This reference, however, has not been furnished as an exhibit,
and does not appear to have been discussed with meaningful
specificity in Preputnik's motion with a citation to column and
line numbers. When we obtained a copy of this patent from the
database of the USPTO, we see that it is directed to a gear pump,
and evidently has nothing to do with electrical connectors.
Preputnick might have meant U.S. Patent No. 4,729,744 (Exhibit
2017), but we are not reasonably certain. U.S. Patent No.
4,846,727 is also listed as evidence relied upon by Preputnik.
Both patent numbers substantially overlap "4,729,727."

Interference No. 104,693
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- 25 -
Furthermore, Preputnick mis-identified U.S. Patent No.
4,729,744 as being issued to Glover et al. when none of the named
inventors in that patent is named Glover. U.S. Patent No.
4,846,727 (Exhibit 2016) is issued to Glover et al., but
Preputnick mis-identified that exhibit as Patent No. 4,846,747 in
the section of the motion entitled "Evidence Relied Upon" and
also mis-identified it as a patent to Bet et al., the inventors
of U.S. Patent No. 4,729,744. The situation is confusing.
Central to the conclusion of obviousness is a finding of
differences between the claimed invention and the prior art
reference on which the obviousness conclusion is based. See,
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). The question to be answered is whether despite such
differences, the claimed invention as a whole still would have
been obvious to one with ordinary skill in the art. The
established differences serve as the focus of the obviousness
analysis. If, in ex parte prosecution, an examiner rejects an
applicant's claim for obviousness without first establishing and
focusing on differences between the claimed invention and the
applied reference, the rejection should be reversed on appeal.
Likewise, when filing a motion attacking the patentability of an
opponent's claim on the ground of obviousness, it is incumbent
upon the moving party to establish differences between an

Interference No. 104,693
Preputnick v. Provencher
- 26 -
attacked claim and the prior art reference being applied and to
focus on such differences in discussing obviousness of the
claimed invention.
Without a specific identification of differences, an
examiner or a moving party frequently performs unfocused hand-
waving about what a reference shows and then concludes that a
certain claim would have been obvious. Such a presentation
leaves much in doubt about whether the proper analysis under
Graham v. John Deere for a determination of obviousness has been
made. As an aid for moving parties to not forget their need to
focus on differences between a prior art reference and the claim
under attack, ¶ 26(e) in the Standing Order, in no uncertain
terms, states with regard to preliminary motions attacking claims
on the ground of obviousness:
Any difference [from each primary prior art
reference] shall be explicitly identified.
We searched, in vain, through the entirety of Preputnick's
preliminary motion 2, for any statement that reasonably can be
viewed as setting forth what Hashiguchi does not disclose
relative to Provencher's claims 17-19 or relative to what the
three AMPMODU catalogues do not disclose relative to Provencher's
claims 17-19. Preputnick's failure to explicitly identify
differences between each Provencher claim under attack and

Interference No. 104,693
Preputnick v. Provencher
- 27 -
Hashiguchi and between each Provencher claim under attack and any
AMPMODU catalogue renders its preliminary motion 2 a bear to read
and understand insofar as how the conclusion of obviousness is
reached. Counsel for Provencher, at oral argument, expressed a
similar sentiment.
Counting the AMPMODU catalogues as three different
references, there are nine different references discussed in
Preputnick's preliminary motion 2. With no differences
explicitly identified, which Preputnick is required to do under
¶ 26 of the Standing Order, the preliminary motion presents an
exhibition of hand-waving, which somehow leads to its obviousness
conclusion.
Neither Provencher nor this panel should have to guess at
what Preputnick regards as the difference between each Provencher
claim and Hashiguchi or the difference between each Provencher
claim and an AMPMODU catalogue. Neither Provencher nor this
panel should have to interpret what difference Preputnick must
have meant in its preliminary motion, because interpretations are
prone to disagreement and uncertainties and the Standing Order
expressly requires the moving party, in this case Preputnick, to
explicitly identify the differences.
During oral argument on April 17, 2002, counsel for
Preputnick was asked by the panel, repeatedly, to point out where

Interference No. 104,693
Preputnick v. Provencher
4 See transcript of oral argument from page 11, line 17
through page 23, line 12.
5 See transcript of oral argument at page 17, lines 8-15.
6 See transcript of oral argument at page 17, lines 16-21,
from page 18, line 9 through page 19, line 7, and from page 20,
line 17 through page 21, line 9.
- 28 -
in Preputnick's preliminary motion 2 is there an explicit
identification of the differences between Provencher's claim 17
and the prior art references. The exchange between the panel and
counsel for Preputnick lasted approximately ten to fifteen
minutes, with counsel for Preputnick all the while insisting that
there is in Preputnick's papers an explicit identification of the
differences but also all the while unable to point to any such
explicit identification.4 To each pointed question from the
panel in this regard, counsel for Preputnick was consistently
evasive by resorting to generalities. Counsel for Preputnick was
advised that what we were asking about is not something from
which Preputnick's intended differences might be interpreted, but
an "explicit" statement identifying the differences.5 Still,
counsel's evasiveness persisted, despite his inability to point
to anything explicit in the preliminary motion.6
When the panel instructed counsel for Preputnick to read for
the court reporter whatever it is that he regards as an explicit
statement identifying differences between Provencher's claim 17

Interference No. 104,693
Preputnick v. Provencher
7 See transcript of oral argument at page 17, lines 16-21,
and from page 18, line 9 through page 19, line 7.
- 29 -
and the prior art, counsel read, instead, what the Hashiguchi
reference discloses rather than what it does not disclose.7 It
was apparent that counsel for Preputnick had made up his mind
that whatever it is that the Standing Order requires to be
present in Preputnick's motion he will say is present, no matter
how clearly contrary are the underlying facts. Such an attitude
is deplorable. Having observed counsel's demeanor, we find that
counsel's steadfast insistence on a fact so patently untrue and
for which he can provide no support was not based on ignorance or
inadvertence, but on specific intent to deny an omission or
mistake regardless of the facts. Such conduct is sanctionable.
Denials without support do not persuade. All Preputnick's
counsel managed to do is to add to the damage by losing his own
credibility with this panel.
We dismiss Preputnik's preliminary motion 2, insofar as it
is based on any of the AMPMODU catalogues as a primary reference,
on two separate and independent grounds either of which would
support the dismissal: (1) the motion's procedurally failing to
comply with the requirement of ¶ 26(e) of the Standing Order for
such a motion to explicitly identify the differences between the
claim under attack and the prior art reference being applied; and

Interference No. 104,693
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(2) as sanction for the persistent and wholly baseless assertions
by Preputnick's counsel during oral argument that Preputnick's
motion contains an explicit statement identifying the differences
between Provencher's claim and the applied prior art reference.
We will, however, consider Preputnick's preliminary motion 2
insofar as it is based on Hashiguchi as a primary reference.
Despite the failure of its preliminary motion 2 to
explicitly identify and focus on differences between Provencher's
claims and Hashiguchi, Preputnick is saved by the unique posture
in which we find this case, insofar as obviousness over
Hashiguchi is concerned. Preputnick filed preliminary motion 1
alleging that Provencher's claims 17-19 are each anticipated by
Hashiguchi. Provencher responded to Preputnick's preliminary
motion 1 by specifically identifying a difference between
Provencher's claim 17 and Hashiguchi, i.e., that Hashiguchi's
modules 1 and 2 do not engage each other through complementary
fastening portions on the modules as is required by Provencher's
claim 17. In connection with Preputnick's preliminary motion 1,
we specifically found that there is such a difference, as is
explained by Provencher, between Preputnick's claim 17 and
Hashiguchi. Preputnick's preliminary motion 2 will be considered
in light of this difference between Provencher's claim 17 and
Hashiguchi.

Interference No. 104,693
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- 31 -
According to Preputnick, it would have been well within the
skill of an ordinary artisan to fasten Hashiguchi's modules 1 and
2 together for securing them because "this is merely a reversal
of disclosed securing features in Hashiguchi" (Motion at 20).
The rationale is unpersuasive. The mere reverse of an action is
not automatically obvious. A reversal of the teachings of a
reference still requires a justifiable motivation on the part of
one with ordinary skill in the art, and does not itself serve as
an automatic motivation.
Preputnick next argues that "by 1994, the use of
complementary fastening pieces to secure modules and half-modules
together was well known in the art and the suggestions in the art
would have been combined with Hashiguchi's teachings to the
extent Hashiguchi is deficient in this regard." (Motion at 20).
From the bottom of page 20 to the top of page 21, Preputnick's
preliminary motion 2 discusses how each of the AMPMODU
catalogues, U.S. Patent No. 5,171,161 ("the Kachlic patent"),
U.S. Patent No. 4,846,747 ("the Bet patent"), U.S. Patent No.
4,701,138 ("the Key patent"), and U.S. Patent No. 4,820,169 ("the
Weber patent) discloses use of complementary fastening portions
on modules or half-modules to secure two modules or half-modules
together. We note, in particular, the Kachlic patent, which
discloses a corresponding notch and recess on contiguous modules

Interference No. 104,693
Preputnick v. Provencher
- 32 -
which are each attached to a common housing. The notch and
recess form complementary fastening portions on modules, which
engage each other to secure the modules together. As is stated
in the Kachlic patent in column 8, lines 59-68:
Specifically, as seen in FIGS. 9 and 10, one side of
each encasement 110 is provided with a projecting boss
124 and the opposite side of each encasement is
provided with a complementarily shaped indented recess
126 (FIG. 10). The bosses and detents are
rectangularly shaped such that when the terminal
modules are juxtaposed in their side-by-side
relationship, the bosses of the modules project into
the recesses of adjacent modules, thereby locking all
the modules together.
Since modules 1 and 2 of Hashiguchi are inserted into the
housing in a mutually superposed state and remain superposed in a
contiguous relationship with the housing, Kachlic's teachings
about complementary fastening portions on contiguous modules
within a common housing provides motivation for doing the same
with Hashiguchi's modules 1 and 2. A prima facie case of
obviousness has been made with respect to Provencher's claim 17.
Provencher responds by arguing that Hashiguchi actually
teaches away from the step of securing the first and second
modules together by engaging complementary fastening portions.
According to Provencher, it is an innovation of Hashiguchi and a
solution provided by Hashiguchi that the modules 1 and 2 are not

Interference No. 104,693
Preputnick v. Provencher
- 33 -
fastened to each other. Provencher cites to Paragraph 22 of
Hashiguchi, entitled "Effects of the Innovation," which states:
. . . . Because of this, connector assembly can
be carried out with increased efficiency and accuracy,
and also, even if one of the contacts in a module is
damaged in assembly of the connector, there is the
advantage that a module of the damaged type can be
easily substituted. (Emphasis added.)
Provencher argues (Opp. page 11, line 18 to page 12,
line 3):
[I]f module No. 1 and module No. 2 were secured to one
another and then inserted into the housing as opposed
to simply being interlocked to the housing in a
superposed state, then both module No. 1 and module No.
2 would have to be removed from the housing in order to
fix only one of the two modules. [Footnote omitted.]
Furthermore, if the two modules were firmly secured to
one another, it would be difficult to separate the
damaged module from the undamaged module without
damaging the otherwise damaged module. Exhibit 1015 ¶¶
21-23.
Although everything noted in the immediately preceding
quotation of Provencher's argument is true and also contrary to
the idea in Hashiguchi to provide for easy substitution of any
single damaged module, we reject Provencher's assertion that
Hashiguchi "teaches away" from fastening two modules together.
Provencher too narrowly focuses the concept of "teaching away" on
the point of innovation of a prior art reference or the invention
the prior art patent is attempting to protect. The concept of

Interference No. 104,693
Preputnick v. Provencher
- 34 -
"teaching away" is much broader than and is based on the entire
technical disclosure of a prior art reference.
As is indicated by the Court of Appeals for the Federal
Circuit in EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898,
907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied, 474 U.S. 843
(1985), a reference must be considered for everything it teaches
by way of technology and is not limited to the particular
invention it is describing and attempting to protect. Likewise,
a reference must be evaluated for all its teachings and is not
limited to its specific embodiments. In re Bode, 550 F.2d 656,
661, 193 USPQ 12, 17 (CCPA 1977); In re Snow, 471 F.2d 1400,
1403, 176 USPQ 328, 329 (CCPA 1973).
According to Hashiguchi, an advantage for not securing the
two modules together is that any one damaged module can be more
easily substituted. But it nowhere indicates that that
particular advantage is necessary or required for the connector
to have practical utility as a connector. While the advantage is
desirable and a part of the innovation of Hashiguchi, Hashiguchi
as a whole also indicates the operability of connectors made
without its particular innovation, albeit such connectors would
be without the advantage of easy single module substitution.
Considering the entire technical disclosure of Hashiguchi
and not simply the innovation Hashiguchi is attempting to

Interference No. 104,693
Preputnick v. Provencher
- 35 -
protect, the prior art reference does not "teach away" from
fastening two half-modules together as is required by
Provencher's claim 17, in the sense that the teachings of the
Kachlic patent is not combinable with that of Hashiguchi. The
point Provencher misses is that reasonable combinations of
teachings from two references does not necessarily preserve the
particular innovation of either reference. That is because a
reference is good for everything it discloses in technical
content and is not limited to the invention it seeks to protect.
For example, if a publication describes a fishing rod with a bell
that rings when a fish is hooked, its teachings about the
structure of the disclosed rod itself without the bell can also
be used as prior art in combination with other references. Note
also that an improvement invention is not a "teaching away" from
the basic invention from which the improvement arose.
On pages 12 of its opposition, Provencher discusses the
benefits of modularity in the making of a product. Generally
speaking, it is true that modularity reduces manufacturing costs
by allowing production of the same parts in higher volumes.
Provencher notes that in Hashiguchi, the structure of modules 1
and 2 are different, and argues on page 13 of its opposition:
If you secure together modules having different
configurations such as disclosed in Hashiguchi, then
the total number of each of the half modules is cut in

Interference No. 104,693
Preputnick v. Provencher
- 36 -
half contrary to the whole idea behind a modular
product. In addition, two sets of expensive molding
and stamping tools (plus the tooling required to
assemble and secure the modules together) would be
required. Exhibit 1015 ¶ 26. (Emphasis in original).
At the outset, we note that Provencher's claim 17 does not
specify whether the first and second half-modules must be the
same or different in configuration, and also does not require any
particular degree of modularity. Moreover, securing two half-
modules of different configuration together after they have been
produced does not reduce the number of each type of half-modules
made. Even assuming that the number of each type of half-modules
would be reduced, Provencher does not account for the benefits
that would be achieved by securing two half-modules together.
The issue involves a balancing costs and benefits depending on
the applicable goals. Provencher's argument is further
undermined by the Kachlic patent which discloses modules which
are different in structure and which are fastened together
through complementary means on the modules.
For the foregoing reasons, with regard to Provencher's claim
17, we grant Preputnick's preliminary motion 2 but only on the
ground of obviousness over Hashiguchi in combination with the
Kachlic patent (U.S. Patent No. 5,171,161), and dismiss
Preputnick's preliminary motion 2 with respect to Provencher's
claim 17 on all other grounds of obviousness.

Interference No. 104,693
Preputnick v. Provencher
- 37 -
As for Provencher's claim 18 and claim 19, Provencher's
response to Preputnick's preliminary motion 2 insofar as any
ground of unpatentability is based on Hashiguchi as a primary
reference is only that Hashiguchi "teaches away" from including
complementary fastening portions on the half-modules. See
Provencher's Opposition at page 16. We have, however, already
rejected Provencher's "teach away" argument. Consequently, in
patent parlance, Provencher's claims 18 and 19 stand or fall with
Provencher's claim 17. Accordingly, because Provencher's claim
17 is deemed obvious over Hashiguchi and Kachlic, Provencher's
claims 18 and 19 are also unpatentable over Hashiguchi and
Kachlic. In that connection, note that Provencher has not
disputed Preputnick's assertion (Motion at 22), with regard to
Provencher's claim 18, that "[t]he use of ground shields along
one side of a terminal module to define a shielded terminal
module was notoriously well known in the art by 1994."
Preputnick's assertion, insofar as it represents that the idea
was well known by March 1995, is supported by the declaration of
Mr. Richard F. Granitz who stated in ¶ 22 of his declaration:
22. The placement of a conduction ground shield
along one side of a terminal module to define a
shielded terminal module was well known to one of
ordinary skill in the art long before March 1995 and is
explained repeatedly in the patent literature, as shown
in the Soes '183 patent and the Gilissen '341 patent.

Interference No. 104,693
Preputnick v. Provencher
- 38 -
Based on the foregoing, we find that the placement of a
conduction ground shield along one side of a terminal module to
define a shielded terminal module was well known to one of
ordinary skill in the art by March 1995. See, for example, U.S.
Patent No. 5,496,183 ("Soes") and U.S. Patent No. 5,104,341
("Gilissen"), as is discussed in ¶ 22 of the Granitz declaration.
We note further that in its Request for Declaration of
Interference (Exhibit 2019, page 3), regarding a connector having
a conduction ground shield along one side of the terminal module,
Preputnick stated that "[s]uch ground shields are well known and
admitted prior art and it would have been obvious to use such a
shield with the terminal module of Count 1."
For the foregoing reasons, with regard to Provencher's
claims 18 and 19, we grant Preputnick's preliminary motion 2 but
only on the ground of obviousness over Hashiguchi in combination
with the Kachlic patent (U.S. Patent No. 5,171,161), and dismiss
Preputnick's preliminary motion 2 with respect to Provencher's
claims 18 and 19 on all other grounds of obviousness.
D. Senior Party Provencher's
Preliminary Motions 1 and 2
Senior party Provencher's preliminary motion 1 attacking the
benefit accorded junior party Preputnick is dismissed as moot, in

Interference No. 104,693
Preputnick v. Provencher
- 39 -
light of junior party Preputnick's failure to allege a date of
invention prior to the senior party's accorded benefit date.
Senior party Provencher's preliminary motion 2 alleging
unpatentability of junior party Preputnick's claims corresponding
to the count is dismissed as moot, in light of junior party
Preputnick's failure to allege a date of invention prior to the
senior party's accorded benefit date.
Conclusion
Provencher's preliminary motion 1 is dismissed.
Provencher's preliminary motion 2 is dismissed.
Preputnick's preliminary motion 1 is denied.
Preputnick's preliminary motion 2 is granted, but on only
one alleged ground of unpatentability, i.e., obviousness over
Hashiguchi and Kachlic, and is otherwise dismissed.
Preputnick's preliminary motion 3 is denied.
Judgment
It is
ORDERED that judgment as to the subject matter of the count
is herein entered against junior party GEORGE PREPUTNICK, JAMES
LEE FEDDER, SCOTT K. MICKIEVICZ, and RICHARD N. WHYNE;
FURTHER ORDERED that junior party GEORGE PREPUTNICK, JAMES
LEE FEDDER, SCOTT K. MICKIEVICZ, and RICHARD N. WHYNE are not

Interference No. 104,693
Preputnick v. Provencher
- 40 -
entitled to their patent claims 9-14 which correspond to the
count;
FURTHER ORDERED that judgment as to the subject matter of
the count is herein entered against senior party DANIEL B.
PROVENCHER and PHILIP T. STOKOE;
FURTHER ORDERED that senior party DANIEL B. PROVENCHER and
PHILIP T. STOKOE are not entitled to their application claims 17-
19 which correspond to the count;
FURTHER ORDERED that a copy of this paper will be entered in
the involved application or patent file of the respective
parties; and
FURTHER ORDERED that if there is an agreement between the
parties facilitating or leading toward the termination of this
interference, the parties' attention is directed to 35 U.S.C.
§ 1.135(c) and 37 CFR § 1.661.
Jameson Lee )
Administrative Patent Judge )
) BOARD OF PATENT
Richard Torczon ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
Carol A. Spiegel )
Administrative Patent Judge )