Appeal No. 2006-0672
Application No. 10/112,176
biological, chemical (NBC) attack and moisture resistance,” with an example selected to
have high strength and thermal stability (col. 7, ll. 55-65). Accordingly, the selection of
an optimum dielectric material to achieve desired properties in the connector body of
Denninger would have been well within the ordinary skill in this art.
Appellants argue that the Denninger connectors are not for use in a downhole
tool or for use in an environment similar to that present in an oil well (Brief, page 5). As
correctly noted by the examiner (Answer, pages 5-6), the recitation of an intended use
(“for use in a downhole tool”), as found in claim 1 on appeal, does not distinguish the
method claimed from the method of Denninger, as modified by Moss and Gay. See In
re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673-74 (Fed. Cir. 1994)(preamble
does not limit scope of claim if it merely states the invention’s purpose or intended use,
but terms appearing in preamble may be deemed limitations if they give meaning to
claim and properly define invention). We also adopt the examiner’s comments
regarding the severe environment contemplated by Denninger for his electrical
connector (Answer, page 6; see Denninger, col. 1, ll. 24-29, and col. 7, ll. 59-65)).
Appellants argue that Moss is silent on the use of PEKK film in specific
configurations for use as dielectrics, the use of the film as a dielectric in a connector, or
the use of the film as a dielectric in a downhole tool (Brief, page 6). Appellants also
argue that no use of the Gay invention as a dielectric body on an electrical connector for
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