Ex Parte 7737809 et al

Patent Trial and Appeal BoardMay 27, 2016

95001992 (P.T.A.B. May. 27, 2016)

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. 95/001,992 05/16/2012 7737809 40041-703.999 1051 73609 7590 05/31/2016 Leviton Manufacturing Company Incorporated (CDFS) c/o Carter, DeLuca, Farrell & Schmidt, LLP 445 Broad Hollow Rd. Ste. 420 Melville, NY 11747 EXAMINER TON, MY TRANG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/31/2016 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 ________________ ZHEJIANG TRIMONE ELECTRIC SCIENCE & TECHNOLOGY CO., LTD. and FUJIAN HONGAN ELEC. CO., Third Party Requesters, v. LEVITON MANUFACTURING CO., INC., Patent Owner. ____________ Appeal 2015-004513 Inter Partes Reexamination Control No. 95/001,992 Patent US 7,737,809 B2 Technology Center 3900 ________________ Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, AND JENNIFER L. McKEOWN, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-004513 Patent 7,737,809 B2 Reexamination Control 95/001,992 2 SUMMARY This proceeding arose from a Request for Inter Partes Reexamination Under 35 U.S.C. §§ 311–318 (“Request”)1 of US Patent 7,737,809 B2, which is entitled “CIRCUIT INTERRUPTING DEVICE AND SYSTEM UTILIZING BRIDGE CONTACT MECHANISM AND RESET LOCKOUT” (issued to Frantz Germain et al. on June 15, 2010 from Application 10/690,776, filed Oct. 23, 2003) (“the ’809 Patent”). Owner notes various other proceedings that involve the ’809 Patent. PO App. Br. 2. These related proceedings include one before the International Trade Commission and three US District Court cases. Id. We refer to the Owner’s Appeal Brief for the details. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). We affirm. 1 Inter Partes Reexamination Request 95/001,992 (“Request”) was filed May 16, 2012 by Zhejiang Trimone Electric Science & Technology Co. Ltd. and Fujian Hongan Elec. Co. (“Requesters”). In addition to this Request, we also refer to various other documents throughout this Opinion, including (1) the Right of Appeal Notice, mailed March 27, 2014 (“RAN”); (2) the Revised Patent Owner’s Brief on Appeal, filed July 16, 2014 (“PO App. Br.”); and (3) the Examiner’s Answer, mailed December 10, 2014 (incorporating the RAN by reference) (“Ans.”). The record indicates that Requester did not file a Respondent Brief on appeal and Owner did not file a Rebuttal Brief. Appeal 2015-004513 Patent 7,737,809 B2 Reexamination Control 95/001,992 3 THE INVENTION AND CLAIMS The ’809 Patent describes the invention as follows: A [ground fault circuit interrupter] GFCI device which has reverse wiring protection is provided where no power is present at the face terminals even when the device is reverse wired. The device has a pair of movable bridges connected to its terminals. The terminal bridge pair makes contact with the load and face terminals providing power to these terminals when the device is reset. The device also has a reset lockout feature that prevents it from being reset after having been tripped if the circuit interrupting portion of the device is non-operational. Abstract. Independent claim 1 is illustrative of the appealed claims: 1. A circuit interrupting device comprising: a first pair of electrical conductors including a phase and neutral, the first pair of electrical conductors adapted to electrically connect to a source of electric current; a second pair of electrical conductors including a phase and neutral; a third pair of electrical conductors including a phase and neutral, wherein the first, second, and third pairs of electrical conductors are electrically isolated from each other and positioned to electrically connect to at least one user accessible receptacle; a lifter having a first opening defined therein and configured to move between a first position which provides electrical continuity between the first pair of electrical conductors and at least one of the second and third pairs of electrical conductors and a second position which breaks electrical continuity between at least two of the electrical pairs of electrical conductors; a circuit interrupter configured to movably engage a latch having a second opening defined therein and positioned to substantially align with the first opening of the lifter to move the Appeal 2015-004513 Patent 7,737,809 B2 Reexamination Control 95/001,992 4 lifter from the first position to the second position upon the occurrence of an electrical abnormality; and a reset arm configured to movably reorient the lifter to the first position when the latch is disengaged by the circuit interrupter to reestablish electrical continuity between the pairs of electrical conductors after resolution of the electrical abnormality. THE APPEALED REJECTIONS Claims 1–3, 8, 9, 11, 13, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable of Echtler (US 5,239,438; issued Aug. 24, 1993) in view of Marcou (US 6,199,264 B1; issued Mar. 13. 2001). PO App. Br. 2, 4.2 CONTENTIONS and ANALYSIS Owner presents three general arguments in relation to this obviousness rejection. We address these general arguments separately. I. First, Owner argues that “the Examiner has failed . . . to make a prima facie case of obviousness because she has failed to demonstrate any teaching, suggestion, or motivation in these references or elsewhere to add elements to, or modify the device of Echtler based on the teaching of Marcou.” PO App. Br. 6; accord id. 4–8. More specifically, Owner surmises that the Examiner is substituting for Echtler’s switching lock S, the components of Marcou’s latch block 82 2 Claims 4, 6, 10, 35–37, 39, and 41–46 are confirmed, and claims 5, 7, 12, 14, 17–34, 38, 40, 47–83 are not subject to reexamination. PO App. Br. 2. Appeal 2015-004513 Patent 7,737,809 B2 Reexamination Control 95/001,992 5 (PO App. Br. 7), and Owner argues that the Examiner never satisfactorily addresses why one would have wanted to do so (id.). Owner further argues that the prior art of record does not provide a teaching, suggestion, or motivation to make such a substitution (id. 7–8), that Echtler does not suggest that it would benefit from having Marcou’s components (id. 8), and that the prior art does not suggest that Echtler “is deficient in some fashion or suffers from a problem that could be mitigated or resolved by [Marcou’s] components” (id.). This argument is unpersuasive. Even assuming for the sake of argument that the Examiner has not recited any express motivation for combining the teachings of Echtler and Marcou, the Supreme Court has held that while the Examiner’s obviousness rejection must be based on “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” . . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (internal citation omitted). In the present case, the RAN sets forth additional functionalities that are missing from Echtler, but present in Marcou. E.g., RAN 7 (explaining the Echtler does not describe a lifter and describing the functionality of Marcou’s lifter/latch block 82); accord id. 5–10. As such, we understand the Examiner’s position to be that the inclusion of Marcou’s lifter/latch block 82 into Echtler’s device merely constitutes combining prior art elements according to known methods to yield predictable results (KSR, 550 U.S. 398 Appeal 2015-004513 Patent 7,737,809 B2 Reexamination Control 95/001,992 6 at 401) or possibly a simple substitution of one known element for another to obtain predictable results (KSR, 550 U.S. 398 at 417). In either case, as the Examiner has established a prima facie case of obviousness, the burden has shifted to Owner to overcome the prima facie case with argument and/or evidence. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In the present case, Owner has not persuasively shown error in the Examiner’s determination that combining the teachings would improve Echtler’s device in a predictable way and produce predictable results. II. Second, Owner argues that “[r]eplacing the switching lock S of Echtler with the latch block 82 of Marcou would frustrate the intended purpose of Echtler.” PO App. Br. 9 (citing MPEP § 2143.01.V for the proposition that “[if the] proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification”). Owner argues that the modification would render Echtler unsatisfactory for its intended purpose based upon “Echtler’s stated objective of a compact and economical device.” Id. According to Owner, modifying Echtler’s device with Marcou’s latch block would “[c]learly . . . have an associated cost not otherwise carried by the Echtler device.” Id. Owner further contends that “there [is] no evidence that making the Appeal 2015-004513 Patent 7,737,809 B2 Reexamination Control 95/001,992 7 modifications suggested by the Examiner . . . would not adversely impact the compactness and economics of the Echtler device.” Id. These arguments are unpersuasive of error. First, Owner’s assertions that the modification would increase the size and cost of Echtler’s device is unsupported by any evidence or declaration. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Even if we were to assume for the sake of argument, though, that the proposed combination would adversely impact both the compactness and economics of Echtler’s device, the arguments still would be unpersuasive. Regarding the economics, the fact “[t]hat a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility.” In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). In similar regard to the compactness, “[a] reference does not teach away […] if it merely expresses a general preference for an alternative invention[.]”). DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). III. Third, Owner argues that “[t]he Examiner and TPR have resorted to impermissible hindsight to reject the claims.” PO App. Br. 10. More specifically, the Examiner has relied upon impermissible hindsight on page 8 of the RAN in proposing replacing the switching lock S of Appeal 2015-004513 Patent 7,737,809 B2 Reexamination Control 95/001,992 8 Echtler with the latch block 82 of Marcou. As stated above, the TPR and the Examiner merely picked and chose among individual parts of the two prior art references to teach the claimed invention without providing any details or basis within the prior art that would support the combination or modification . . . Thus, the Examiner used the Appellant’s application as a road map to show that the prior art references teach the claimed invention which is impermissible as it resorts to hindsight. PO App. Br. 10 (citing In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999) for the proposition that “[c]ombining prior art references without evidence of a suggestion, teaching, or motivation simply takes the inventor’s disclosure as a blueprint for piecing together the prior art to defeat patentability—the essence of hindsight.”) This argument is unpersuasive. The Supreme Court rejected the wooden application of rigid preventative rules such as the teaching- suggestion-motivation test in determining obviousness. KSR, 550 U.S. at 402–03. As explained above, the adopted rejection is based upon the rationale that the proposed combination merely constitutes combining prior art elements according to known methods to yield predictable results, and we conclude that including Marcou’s lifter/latch block 82 into Echtler’s device merely constitutes combining prior art elements according to known methods to yield predictable results. CONCLUSION For the above reasons, Owner has not persuaded us of error in the obviousness rejection of independent claim 1 over the combination of Echtler and Marcou. We therefore affirm the rejection of this claim, as well as the rejection of claims 2, 3, 8, 9, 11, 13, 15, and 16, which were not Appeal 2015-004513 Patent 7,737,809 B2 Reexamination Control 95/001,992 9 argued separately. See PO App. Br. 4–11; see also 37 C.F.R. § 41.67(c)(1)(vii). DECISION The Examiner’s decision rejecting claims 1–3, 8, 9, 11, 13, 15, and 16 is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Patent Owner: LEVITON MANUFACTURING COMPANY INCORPORATED (CDFS) C/O CARTER, DELUCA, FARRELL & SCHMIDT, LLP 445 BROAD HOLLOW RD. STE. 420 MELVILLE, NY 11747 Third Party Requester: KRYSTYNA COLANTONI MEI & MARK LLP P.O. BOX 65981 WASHINGTON, DC 20035