Eaton Corporation

Patent Trials and Appeals Board

Mar 25, 2021

2020002199 (P.T.A.B. Mar. 25, 2021)

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.
14/825,243 08/13/2015 Koustubh Dnyandeo Ashtekar 14-VCB-227 5918
101730 7590 03/25/2021
ECKERT SEAMANS CHERIN & MELLOTT, LLC
EATON CORPORATION
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
AMRANY, ADI
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
03/25/2021 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOUSTUBH DNYANDEO ASKTEKAR, JAMES JEFFREY
BENKE, JIONG CHEN, LI YU, FANGJI WU, and RONALD DALE
HARTZEL

Appeal 2020-002199
Application 14/825,243
Technology Center 2800
Before CHRISTOPHER C. KENNEDY, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.

RANGE, 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, 2, 6–12, and 16–20. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Eaton Intelligent Power Limited.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a circuit breaker
assembly with a modular component monitoring system. Spec. 1:5–8.
Claim 1 is illustrative:
1. A circuit breaker assembly component monitoring
system structured to monitor circuit breaker assembly
component characteristics, said system comprising:
a record assembly including selected nominal data for a
selected circuit breaker component;
a number of sensor assemblies structured to measure a
number of actual component characteristics of a number of
selected circuit breaker components and to transmit actual
component characteristic output data;
a comparison assembly structured to receive an electronic
signal from said record assembly and said sensor assemblies, to
compare said sensor assembly actual component characteristic
output data to said selected nominal data and to provide an
indication signal as to whether said sensor assembly output data
is acceptable when compared to the selected nominal data;
an output assembly including a communication assembly
and an output device;
said communication assembly structured to receive said
indication signal from said comparison assembly and to
communicate a signal to said output device;
each sensor assembly in electronic communication with
said comparison assembly; and
said comparison assembly in electronic communication
with said communication assembly.

2 In this Decision, we refer to the Final Office Action dated May 21, 2019
(“Final Act.”), the Appeal Brief filed September 18, 2019 (“Appeal Br.”),
the Examiner’s Answer dated November 26, 2019 (“Ans.”), and the Reply
Brief filed January 27, 2020 (“Reply Br.”).
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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Eastcott US 4,635,769 Jan. 13, 1987
Benke et al. US 6,286,377 B1 Sept. 11, 2001

REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1, 2, 7–12, and 17–20 under 35 U.S.C. § 102 as anticipated by
Benke. Final Act. 7.
B. Claims 6 and 16 under 35 U.S.C. § 103 as obvious over Benke in
view of Eastcott. Id. at 13.

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 examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejection 1. The Examiner rejects claims 1, 2, 7–12, and 17–20 under
35 U.S.C. § 102 as anticipated by Benke. Final Act. 7. The Appellant
presents separate arguments for claim 1 and for claims 7 and 17. Appeal Br.
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8–21. Consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013),
we limit our discussion to claims 1 and 7. Claim 17 will stand or fall with
claim 7. All other claims will stand or fall with claim 1.
As to claim 1, the Examiner finds that Benke teaches each recitation
of claim 1. Final Act. 7–10. As to claim 1’s recitation of “a comparison
assembly structured . . . to compare said sensor assembly actual component
characteristic output data to said selected nominal data,” the Examiner relies
on several different aspects of Benke and provides substantial explanation
supporting the Examiner’s position. Ans. 3–24. Most pertinent to this
decision, the Examiner finds that Benke teaches determining velocity of its
components and finds that Benke makes this determination by comparing
positions of components at different times. Id. at 6–8.
Appellant argues that Benke’s determination of velocity does not
necessarily require a comparison as claim 1 recites because a speedometer
could instead be utilized. Appeal Br. 13. Appellant’s argument is
unpersuasive because Benke does not use, for example, a speedometer to
determine velocity; rather, as the Examiner finds, Benke determines velocity
by comparing positions at different times. Ans. 6–8. Benke explicitly states
that its microprocessor “determines the time (t); open and closed
displacements (D); and actions in terms of time (t), speed (s=V=dD/dt), and
acceleration (a=dV/dt).” Benke 6:44–46. A person of skill in the art would
understand, in this context, that “dD/dt” refers to calculating a difference in
distance and dividing by a difference in time. The calculation of a difference
in distance is a mathematical comparison between distances. Appellant
admits as much. Appeal Br. 13 (“Appellants agree that some methods of
determining velocity/speed can utilize the comparison of position and
distance.”). Although the Specification describes more complicated
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calculations, the Specification similarly describes comparisons in terms of
math operations. See, e.g., Spec. 20:24–23:21.
To explain more specifically, Benke teaches determining position of
the driven part and saving the value in memory 149. Ans. 6 (quoting Benke
6:54–59). This corresponds to claim 1’s recitation of selected nominal data.
Spec. 16:4–9 (“’[S]elected nominal data,’ as used herein, are determined via
use, testing or determined theoretically and is utilized as a standard template
against which the acquired data is compared.”). Benke then determines
additional positions. Ans. 6 (citing Benke 6:59–67). This corresponds to
claim 1’s “actual component characteristic output data.” After these
determinations, the microprocessor determines motion. Id. (citing Benke
7:1–7). Benke’s system determines motion by, as explained above,
calculating change in position divided by change in time. Ans. 6–7; see also
Benke 6:44–46. As explained above, the evaluation of change in position is
a comparison. Benke ultimately transforms the operation data (such as
velocity into “charts, plots, or graphs” with data pertaining to performance
of the Benke circuit breaker. Id. at 7:48–55; see also Ans. 10–11 (explaining
that use of charts, plots, or graphs also involves comparison); Final Act. 8
(finding that Benke teaches providing an indication signal as to whether
sensor assembly output data is acceptable when compared to nominal data)
(citing Benke 5:46–56, 7:34–55). We, thus, are not persuaded of reversible
error in the Examiner’s rejection of claim 1.
Claim 7 recites:
7. The component monitoring system of Claim 2
wherein:
said comparison assembly includes a modular housing
assembly;
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said modular housing assembly including a number of
sidewalls and a selectable coupling;
said modular housing assembly sidewalls defining an
enclosed space; and
said processing assembly disposed within said modular
housing assembly enclosed space.
Appeal Br. 27 (Claims App.). The Examiner finds that Benke teaches a
microprocessor (143) (a comparison assembly) and that the microprocessor
will have a plastic or ceramic housing as well as legs that make it modular.
Ans. 24. The Examiner explains how Benke’s microprocessor and its
surrounding housing (whether or not the surrounding housing is considered
part of the microprocessor) meets each recitation of claim 7. Id. at 24–25.
The Examiner cites non-patent literature of record to support the Examiner’s
findings regarding a microprocessor’s components. Id.
Appellant does not persuasively dispute the Examiner’s findings
regarding structure that surrounds the computing portion of a
microprocessor. Instead, Appellant argues that the Examiner’s interpretation
of the term “housing assembly” is in error. Appeal Br. 18. Appellant,
however, does not identify any portion of the Specification that defines or
otherwise limits the meaning of “housing assembly” such that the structure
that surrounds a microprocessor would be excluded. Indeed, Appellant does
not suggest any construction of the term “housing assembly” at all.
Appellant also argues that a “microprocessor” is merely an integrated
circuit rather than including structure that holds that integrated circuit.
Appeal Br. 18–19. This argument does not identify harmful error. Appellant
does not persuasively dispute that the Examiner’s finding that the integrated
circuit portion of a microprocessor is surrounded by plastic or ceramic.
Whether or not this surrounding plastic or ceramic is considered part of the
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“microprocessor” does not impact whether or not it may be considered a
“housing assembly” within the scope of claim 7 and does not impact
whether or not Benke, by teaching a microprocessor, also teaches routine
structure that surrounds computing circuitry.
Appellant cites In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017),
as supporting Appellant’s position. Appeal Br. 17. Smith is distinguishable.
In Smith, our reviewing court held that the Board’s construction of “body”
was unreasonably broad because the specification consistently referred to
“body” as a component distinct from, for example, the mandrel, piston, and
drive ring. In re: Smith, 871 F.3d at 1382. Here, claim 7 explicitly states that
the “comparison assembly includes a modular housing assembly.” Appeal
Br. 27 (Claims App.). The Benke comparison assembly includes both the
computing circuitry of the microprocessor as well as the plastic or ceramic
packaging that surrounds the computing circuitry. Smith might be analogous
if, for example, the Examiner attempted to interpret “housing assembly” as
including computing circuitry, but the Examiner does not take such a
position. Rather, the Examiner acknowledges that housing assembly is
separate from computing circuitry and addresses Benke on that basis. Ans.
24–30.3
Because Appellant’s arguments do not identify Examiner error, we
sustain the Examiner’s rejection.
Rejection 2. The Examiner rejects claims 6 and 16 under 35 U.S.C.

3 In the event of further prosecution, the Examiner and Appellant may wish
to further consider art that places microprocessors and sensors within a
larger structure for purposes of protecting the microprocessor (for example,
phones, laptop computers, etc.) as demonstrating that, even if anticipation
were lacking, use of a “housing assembly” would have been obvious.
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§ 103 as obvious over Benke in view of Eastcott. Final Act. 13. Claim 6
recites, for example, “a stress sensor module.” Appeal Br. 27 (Claims App.).
Appellant does not dispute the Examiner’s findings regarding Benke or
Eastcott with regard to claims 6 and 16, and Appellant does not dispute the
Examiner’s stated reason to combine the teachings of these references.
Instead, Appellant argues that Benke and Eastcott are not analogous art.
Appeal Br. 21–24.
Our reviewing court has held that two separate tests define whether
art is analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Here, the Examiner relies only
on the second of these two tests. Ans. 32 (agreeing that Eastcott is not from
the same field of endeavor as the claimed invention).With regard to the
second test, Appellant does not persuasively dispute that Eastcott’s teachings
concerning a stress testing sensor are reasonably pertinent to the problem
with which the inventor is involved (for example, use of “ stress sensor
module” as claim 6 recites). Appeal Br. 21–24. Instead, Appellant argues
that Eastcott is not analogous because its title and abstract do not mention
performance verification and because the performance verification is a
“minor component” of Eastcott. Id. Appellant’s argument is unpersuasive
because it is not supported by law. Ans. 30–31.
Appellant’s focus on the title and abstract of Eastcott improperly
conflates the first analogous art test (field of endeavor) with the second
(reasonably pertinent to problem with which the inventor is involved). Our
reviewing court has routinely held that art that might be summarized as
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being different than the invention’s field (analogous art test one) may
nonetheless address problems with which the inventor is involved (test two).
See, e.g., Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355 (Fed. Cir.
2014) (holding caps for sealing beverage containers are analogous art for
claim having sealing cap for low pressure liquid chromatographic cartridge);
In re ICON Health and Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007)
(holding that prior art regarding folding bed was analogous art to claim for
folding treadmill); In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) (holding,
for example, that art regarding flaps for tents could be analogous to asbestos
remediation because same problem addressed); In re Paulsen, 30 F.3d 1475
(Fed. Cir. 1994) (holding that art relating to covers generally was analogous
to claims directed to portable computer in metal case).
Appellant’s argument regarding Eastcott’s verification being a “minor
component” of Eastcott is also unpersuasive because we must consider the
entirety of prior art references. See In re Lamberti, 545 F.2d 747, 750
(CCPA 1976) (“all disclosures of the prior art, including unpreferred
embodiments, must be considered”). As the Examiner explains, a person of
skill in the art searching for ways to address problems relating to verification
could find Eastcott’s pertinent teachings by reviewing Eastcott’s text or
engaging an electronic search. Ans. 31.
Because Appellant’s arguments do not identify error, we sustain this
rejection.

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10
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 7–12,
17–20
102 Benke 1, 2, 7–12,
17–20

6, 16 103 Benke, Eastcott 6, 16
Overall
Outcome
1, 2, 6–12,
16–20

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