Ex Parte 7283340 et al

Patent Trials and Appeals BoardAug 30, 2013

95001224 - (D) (P.T.A.B. Aug. 30, 2013)

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. 95/000,477 06/16/2009 7283340 26166-186902 8889 44564 7590 08/30/2013 BOND, SCHOENECK & KING, PLLC 10 BROWN ROAD, SUITE 102 ITHACA, NY 14850-1248 EXAMINER NGUYEN, LINH M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) 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. 95/001,224 10/22/2009 7283340 29268-0013 1988 44564 7590 08/30/2013 BOND, SCHOENECK & KING, PLLC 10 BROWN ROAD, SUITE 102 ITHACA, NY 14850-1248 EXAMINER NGUYEN, LINH M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ SHANGHAI MEIHAO ELECTRIC INC. AND GENERAL PROTECHT GROUP INC. Requesters v. PASS & SEYMOUR, INC. Patent Owner and Appellant ________________ Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 1 Technology Center 3900 ________________ Before HOWARD B. BLANKENSHIP, MAHSHID D. SAADAT, and STANLEY M. WEINBERG, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON APPEAL 1 The patent involved in this reexamination appeal proceeding (the “’340 Patent”) issued to David A. Finlay, Sr. et al. on October 16, 2007. Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 2 A. STATEMENT OF THE CASE Introduction This reexamination proceeding arose from two third-party requests for inter partes reexamination filed on June 16, 2009 (Control Number 95/000,477 filed by Shanghai Meihao Electric (“Meihao”)) and October 22, 2009 (Control Number 95/001,224 filed by General Protecht Group, Inc. (“GPG” or “Requester”)), respectively. 2 The two reexaminations were sua sponte merged by the Office in an Order mailed on June 10, 2010. Pass & Seymour, Inc., the owner of the patent under reexamination (Appellant), 3 appeals under 35 U.S.C. §§ 134(b) and 315(a) from a Right of Appeal Notice (RAN) mailed on April 29, 2011 finally rejecting claims 14-18, 21- 24, 28, and 29. 4 The rejections are based on DiSalvo, 5 Li, 6 Bodkin, 7 Packard, 8 Marcou, 9 Baer, 10 McDonald, 11 and Nestor. 12 RAN 8-12. 2 GPG’s filings in this Reexamination proceeding usually refer to itself as “General Protecht Group, Inc.” See its Brief at 2, ¶¶ 1, 2; and its October 22, 2009 Corrected Request For Inter Partes Reexamination at 74 ¶VI. We therefore conclude that its Statement of the Real Party In Interest as General Protect Group, Inc. on page 1 of its Brief is a typographical error. 3 See Patent Assignment Abstract of Title, Reel 018344 Frame 0939 recorded October 4, 2006 and entered into the record of Control No. 95/000,477 as “Title Report” on June 1, 2009 and the record of Control No. 95/001,224 on September 24, 2009. 4 Appellant relies on its Appeal Brief (Br.) filed October 26, 2011. Requester GPG relies on its Respondent Brief (Resp. Br.) filed January 9, 2012. Requester Meihao has not filed a brief. 5 DiSalvo et al., US 6,246,558 B1. 6 Li, US 6,442,007 B1. Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 3 Claims 2-7, 10, 19, 20, 25-27 and 30-35 are not subject to reexamination. Unamended patent claims 1, 8, 9, 11-13, and 36 are confirmed. See RAN. Requester GPG’s August 26, 2011 Corrected Notice of Cross Appeal regarding claims 1, 8, 9, 11-13 and 36 was dismissed by the Office in a decision mailed on November 17, 2011. We are not aware of any appeal from the Office’s decision to dismiss GPG’s Corrected Notice of Cross Appeal regarding claims 1, 8, 9, 11-13, and 36. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). We affirm. Related Proceedings Appellant has informed us that there are no related appeals or interferences before the Board. Appellant and Requester have also informed us about the following proceedings that may be related to, directly affect or be directly affected by, or have a bearing on the Board’s decision in the present reexamination proceeding: In re Certain Ground Fault Circuit Interrupters, No. 337-TA- 615 (U.S.I.T.C. filed August 16, 2007), Administrative Law Judge Initial Determination September 24, 2008; Commission Opinion March 26, 2009. 7 Bodkin, US 4,979,070. 8 Packard, US 4,574,324. 9 Marcou et al., US 5,594,398. 10 Baer et al., US 5,177,657. 11 McDonald, US 5,418,678. 12 Nestor et al., US 3,872,354. Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 4 Pass & Seymour, Inc. v. ITC, 617 F.3d 1319 (Fed. Cir. 2010). General Protecht Group, Inc. v. ITC, 619 F.3d 1303 (Fed. Cir. 2010). Pass & Seymour, Inc. v. Hubbell, Inc., No. 5:07-cv-945 (N.D.N.Y. filed Sept. 12, 2007), including a claim construction decision at 2009 WL 7296903 (N.D.N.Y. Dec. 30, 2009). Br. 1 and its Related Proceedings App’x; Resp. Br. 1-2 its Related Proceedings App’x. The Invention The invention pertains generally to protective wiring devices (col. 1, ll. 19-20); specifically ground fault circuit interrupters (GFCIs). Col. 1, ll. 38-39. More specifically, the present invention provides a protective device that inhibits operation if the device is miswired. Col. 2, ll. 29-31. Miswiring occurs when the installer couples the line terminals to the load and couples the load terminals to the AC power source. Col. 2, ll. 14-16. The invention generates a signal, not simulating a ground fault, when the GFCI is properly wired. The signal allows the GFCI to be reset such that contacts within the GFCI are closed, so that current can flow through the GFCI to downstream loads. Br. 3, citing 7:20-26; Fig. 4. Claim 14 is representative of the appealed subject matter and is reproduced below with disputed limitations emphasized (Br. Claims App’x): 14. An electrical wiring device comprising: line terminals and load terminals; at least one detection circuit including a circuit segment coupled between the line terminals and configured to generate a predetermined signal in response to Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 5 detecting a proper wiring condition, the predetermined signal not simulating a fault condition, a proper wiring condition being effected when the line terminals are connected to a source of AC power; and an interrupting contact assembly coupled to the at least one detection circuit, the interrupting contact assembly including four sets of interrupting contacts that are configured to provide electrical continuity between the line terminals and the load terminals in a reset state and configured to interrupt the electrical continuity in tripped state, the interrupting contact assembly being substantially prevented from effecting the reset state absent the predetermined signal being generated by the at least one detection circuit. Claim 14 relates to Fig. 4. Br. 3-5. B. ANALYSIS The Rejection of Claims 14-18, 21-24, 28, and 29 Under 35 U.S.C. § 102(b) as Anticipated by Bodkin An Electrical Wiring Device In the Action Closing Prosecution mailed on January 7, 2011 (ACP), the Examiner rejected claim 14 under 35 U.S.C. § 102(b) as anticipated by Bodkin for the reasons set forth on pages 23-29 of the ‘224 Request. ACP 8. In turn, page 23 of the ‘224 Request asserts that Bodkin’s Figs. 1-5 disclose an electrical wiring device. More specifically, the Examiner concludes that claim 14 recites a generic electrical wiring device. RAN 18. Appellant asserts that “GFCIs can be separated into distinct categories such as electrical wiring device GFCIs and portable GFCIs” (Br. 17 footnote 17); that “[c]laim 14 recites an ‘electrical wiring device’; and that “Bodkin Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 6 does not anticipate claim 14” because it discloses a portable GFCI instead of an electrical wiring device. Br. 17-18. More specifically, Appellant contends that Bodkin’s device is “not wired into an electrical distribution system, . . . has no screw terminals to which physical wires in the AC distribution system are connected,” and “is meant to be plugged into the system.” Br. 18. Appellant’s assertions are not persuasive because Appellant’s specification does not define “electrical wiring device” in a way that distinguishes Appellant’s GFCI from Bodkin’s GFCI and because claim 14 does not recite either wiring into an electrical distribution system or screw terminals and does not exclude Bodkin’s device to the extent that Bodkin’s device can be plugged into a system. We therefore agree with the Examiner that Bodkin discloses “[a]n electrical wiring device” as recited in claim 14. A Detection Circuit . . . Configured To Generate A Predetermined Signal In Response To Detecting A Proper Wiring Condition This limitation was a focus of a previous appeal involving the ‘340 Patent. In that case, General Protecht Group, Inc. v. International Trade Commission, 619 F.3d 1303 (Fed. Cir. 2010) (“the GPG case”), the International Trade Commission (“ITC”) found that certain devices of GPG infringed the ‘340 Patent and that the ‘340 Patent was not invalid. Id. at 1305. The Court reversed some infringement findings because the devices did not have a “detection circuit” as claimed. More specifically, the Court concluded that the “[t]he construed claims require the ‘detection circuit’ to Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 7 ‘generate a predetermined signal in response to detecting a proper wiring condition.’” Id. at 1308. The circuits identified by the ITC did not infringe, the Court held, because the circuits did not generate any signal in response to detecting a proper wiring condition. Id. The Court affirmed the ITC (including its validity determinations) “in all other respects.” 619 F.3d at 1305. In this reexamination proceeding, GPG’s October 22, 2009 Corrected Request (filed before the 2010 Federal Circuit decision) asserts that Bodkin has detection circuit 150 in Fig. 5 that generates a predetermined signal for providing power to detection circuit 1 when a proper wiring condition is detected, citing Bodkin col. 5, ll. 38-42. See Request 23-24. GPG’s Respondent Brief (Resp. Br.) (filed after the Court’s decision) takes the same position. GPG neither relies upon, nor contradicts, the Court’s construction of “predetermined signal.” Appellant’s brief in this reexamination proceeding, also filed after the Court’s decision, similarly does not rely upon the Court’s construction of “predetermined signal” nor contradict the construction. In this reexamination proceeding, Appellant focuses instead on claim 14’s phrase “a proper wiring condition.” According to Appellant, the claimed “proper wiring condition” is the opposite of an improper, i.e., miswired condition. Br. 19. More specifically, Appellant contends, a device does not have the claimed “proper wiring condition” if it cannot be miswired and therefore does not have the claimed “detection circuit . . . configured to generate a predetermined signal in response to detecting a proper wiring condition.” That is, Appellant contends, “the claim term ‘proper wiring Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 8 condition’ limits the claim to a device that is capable of being miswired.” Id. The Examiner correctly concludes that claim 14 does not recite “miswiring.” For this reason alone, Appellant’s contentions are not persuasive. In addition, Requester correctly points out that Bodkin’s Figure 5 is an “arrangement [that] provides a means for confirmation of correct receptacle wiring.” Request 24, citing Bodkin col. 5, ll. 38-42. See also Resp. Br. 15- 16. Appellant contends that this portion of Bodkin does not pertain to the wiring of the Bodkin’s device “which, of course, is not ‘wired’ at all, but to the ordinary AC outlet that the device is plugged into.” Br. 20. This argument is not persuasive because claim 14 only recites generally “detecting a proper wiring condition” without reciting the location of the proper wiring condition that is being detected. We therefore agree with the Examiner that Bodkin discloses a “detection circuit . . . configured to generate a predetermined signal in response to detecting a proper wiring condition.” The Predetermined Signal Not Simulating A Fault Condition By incorporating the Request, the Examiner finds that the predetermined signal for providing power to detection circuit 1 does not simulate a fault condition “because when power is provided to detection circuit 1, power is also provided to a load.” Request 24, citing Bodkin, col. 12, ll. 12-36. Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 9 Appellant contends that simulating a fault condition is essential to the operation of the automatic reset circuit in the Bodkin device. Br. 21, citing Bodkin col. 3, ll. 28-32 and col. 8, ll. 9-21. This argument is not persuasive because, as the Examiner and Requester point out, these Appellant citations pertain to Bodkin’s element 45, which Requester and Examiner do not argue generates the claimed predetermined signal. Resp. Br. 17; RAN 18. Instead, Requester and the Examiner rely upon Bodkin’s fifth embodiment shown in Fig. 5, while Appellant attempts to counter the Examiner’s findings by relying upon Bodkin’s first embodiment in Fig. 1. Compare Requester’s citation to Bodkin col. 12, ll. 12-36 with Appellant’s citation to Bodkin col. 3, ll. 28-32 and col. 8, ll. 9-21. Appellant’s arguments regarding this limitation are therefore not persuasive because they do not rebut the Examiner’s findings which are reasonable and have a rational underpinning. An Interrupting Contact Assembly Including Four Sets Of Interrupting Contacts By incorporating the Request, the Examiner finds that Fig. 5 of Bodkin discloses an interrupting contact assembly comprising four sets of interrupting contacts: 21/23, 22/24, 102/103, and 105/106. Request 24. Appellant agrees that Bodkin has four sets of contacts; but contends the contacts “do not constitute the claimed ‘interrupting contact assembly.’” Br. 22 (emphasis omitted). More specifically, Appellant contends that an interrupting contact assembly “mean[s] that there is a relationship between the sets of contacts;” that “[t]he sets of contacts in the embodiments disclosed in the specification are related in function;” and the contacts “do Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 10 not operate in unison.” Br. 21-22. Appellant does not, however, cite anything in its Specification that defines “assembly” in any of the ways that it contends; or that defines the purportedly claimed “relationship;” or defines operating “in unison.” In addition, claim 14 does not recite any of these purported limitations. Requester, in contrast, points out a relationship among the contacts (Resp. Br. 17-18) and explains how all of the contacts act “in unison.” Resp. Br. 18. Appellant does not rebut either the Examiner’s findings or the Requester’s arguments. We conclude that the Examiner’s finding are reasonable and have a rational underpinning and we are therefore not persuaded that the Examiner erred in finding that Bodkin discloses an interrupting contact assembly as claimed. Accordingly, we will sustain the Examiner’s rejection of (1) claim 14; and (2) claims 15-18, 21-24, 28 and 29 not argued separately with particularity. See 37 CFR § 41.67(c)(1)(vii) (A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.). The Rejections Of the Claims Based On Other References In view of our conclusion that the Examiner did not err in rejecting the appealed claims based on Bodkin, we do not address any of the other rejections upon which the Examiner relies. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an anticipation rejection). Appeal 2013-003526 Reexamination Control 95/000,477 & 95/001,224 (Merged) Patent 7,283,340 B1 11 C. CONCLUSION Under § 102, the Examiner did not err in rejecting claims 14-18, 21- 24, 28, and 29. DECISION The Examiner’s decision rejecting claims 14-18, 21-24, 28 and 29 is affirmed. AFFIRMED PATENT OWNER: BOND, SCHOENECK & KING, PLLC 10 BROWN ROAD, SUITE 102 ITHACA, NY 14850-1248 THIRD PARTY REQUESTER: ANDREWS KURTH, LLP 1350 I STREET ,NW SUITE 1100 WASHINGTON, DC 20005 MALVERN U. GRIFFIN III SUTHERLAND ASBILL & BRENNAN LLP 999 PEACHTREE STREET ATLANTA, GA 30309 alw