Appeal 2007-2577
Application 90/006,344
preponderance of the evidence supports an inference that the sleeve 505 has
threading inside.53
Prazoff argues that Chen will not work without the terminal
conducting contact plug 56, while Prazoff requires no such plug. This
argument has little relationship to the scope of claim 9. First, the plug 56 is
a feature of Chen's overall rope-light system. Claim 9 is more narrowly
directed to a connector (or, more precisely, paired connectors) within a rope-
light system. Thus, the presence or absence of the plug has no relevance to
the claim on appeal. Alternatively, claim 9 uses the open-ended
"comprising" transition, which would permit the inclusion of other elements
in the claim beyond those listed. Thus, the plug 56 could be an alternative
accessory for use with the female half of Prazoff's connector. Finally, we
note that the claim does not specify how current flows through a series of
rope lights so we have no basis for crediting the argument that Prazoff's rope
lights necessarily operate without some sort of terminal conductor.
Prazoff correctly notes that Tsui is not directed to rope lights.54 Tsui
teaches a main conductor with connections for string lights. We understand
Prazoff to be arguing that Tsui is not analogous art. Art is analogous if it
can satisfy one or more of at least two tests. First, is the art from the same
field of endeavor, regardless of the problem addressed? Second, if not, then
is the reference reasonably pertinent to the particular problem with which the
inventor is involved?55 Tsui is analogous under both tests.
53 Even if it did not, adding such threading to better engage the threading on
its opposite connectors would be an obvious improvement.
54 Br. 35.
55 In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir.
2004).
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