Ex Parte Chubb

Patent Trial and Appeal Board

Mar 3, 2016

12798806 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121798,806 04/12/2010
7590 03/03/2016
Francis C. Hand, Esq.
c/o Byrne, Cecchi, Olstein Brody and Angello, P.C.
5 Becker Farm Road
Roseland, NJ 07068
Richard A. Chubb
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9163
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
03/03/2016 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
Ex parte RICHARD A. CHUBB
Appeal2014-001658
Application 12/798,806
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard A. Chubb ("Appellant") appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-21 in this application. The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2014-001658
Application 12/798,806
CLAIMED SUBJECT MATTER
Claims 1, 9, and 12 are independent. Claims 1 and 9 illustrate the
subject matter on appeal:
1. A comer key assembly for an electrically heated insulating
glass unit, said assembly comprising
a housing having a pair of parts disposed in mating
relation; and
a spring clip having a mounting portion disposed between
said housing parts and a reversely curved portion extending from
said mounting portion and said housing.
9. A comer key assembly for an electrically heated insulating
glass unit, said assembly comprising
an electrically non-conductive housing having a pair of
arms disposed in perpendicular relation to each other and a
central post extending in parallel to one of said arms; and
an electrically conductive spring clip having a mounting
portion mounted in said post and a reversely curved portion
extending from said post.
Br. 17, 18 (Claims App., emphases added).
REJECTIONS ON APPEAL
Claim 15 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 9, 12-14, and 16-18 are rejected under 35 U.S.C. § 102(a) as
anticipated by Newman (US 3,760, 157, iss. Sept. 18, 1973).
Claims 1, 2, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Newman in view of either Grewe (US 5,076,736, iss.
Dec. 31, 1991) or Johansson (US 4,636,105, iss. Jan. 13, 1987).
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Application 12/798,806
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Newman in view of either Grewe or Johansson, and further in view of
Lockard (US 4,682,840, iss. July 28, 1987).
Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Newman in view of either Grewe or Johansson, and Lockard, and
further in view of either Niekrasz (US 4,691,486, iss. Sept. 8, 1987) or
Nelson (US 3,200,913, iss. Aug. 17, 1965).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Newman in view of either Grewe or Johansson, and further in view of either
Marriott (US 3,379,859, iss. Apr. 23, 1968) or Davis (US 6,247,948 Bl, iss.
June 19, 2001).
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Newman in view of either Grewe or Johansson, and further in view of either
Beinhaur (US 4,987,283, iss. Jan. 22, 1991) or DuRocher (US 3,918,783,
iss. Nov. 11, 1975).
Claims 10, 11, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Newman in view of either Niekrasz or Nelson.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Newman in view of either Weidler (US 4,845,589, iss. July 4, 1989) or
Feher (US 4,684,191, iss. Aug. 4, 1987).
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Newman in view of either Marriott or Davis.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Newman in view of Kessler (US 4,113,905, iss. Sept. 12, 1978).
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Application 12/798,806
ANALYSIS
A. Indefiniteness (claim 15)
The Examiner rejects claim 15 as indefinite, on the basis that it is
unclear if the "electrical connector" of claim 15 is the same electrical
connector of claim 14, from which claim 15 depends. Final Act. 2, 9;
Ans. 9.
Appellant responds that "[t]he electrical connector recited in claim 15
is not the same electrical connector as recited in claim 14." Br. 5.
According to Appellant, claim 14 positively claims a passageway for
passage of an electrical connector, but does not positively claim an electrical
connector. Id.
We agree with Appellant that claim 14 requires a passageway capable
of receiving an electrical connector, but does not require an electrical
connector to be received in the passageway. Thus, there is no confusion as
to whether "an electrical connector" in claim 15 is the same electrical
connector as in claim 14. We, therefore, do not sustain the rejection of
claim 15 as indefinite.
B. Anticipation by Newman (claims 9, 12-14, and 16--18)
The Examiner finds the combination of Newman's comer gusset 15
and grommet 23 discloses, as recited in claim 9, "an electrically non-
conductive housing having a pair of arms" (i.e., gusset 15) and "a central
post" (i.e., grommet 23). Final Act. 2-3, 9; Adv. Act. 2; Ans. 10. The
Examiner determines claim 9 is broad in scope, merely requiring a housing
"having" a central post, met by "grommet [23] which is shown attached or in
abutment with the gusset 15 in Figure 3." Ans. 10.
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Application 12/798,806
Appellant contends the Examiner errs, because Newman's gusset 15
and grommet 23 are separate components, so they do not form "a housing
having" a pair of arms and a central post as recited in claim 9 (emphasis
added). Br. 6-7. According to Appellant: "The plain meaning of claim 9 is
that the center post is a part of the housing contrary to being a separate
element in abutment with the housing." Id. at 9. Appellant also contends
"grommet 23 is made of an electrically conductive material (since the
grommet 23 secures the spring clip 24 to the conductor 22 in an electrical
connection)," so grommet 23 cannot be considered part of the claimed
"electrically non-conductive housing." Id. at 7. Appellant further asserts the
Examiner's finding that grommet 23 is "attached to" gusset 15 is not
supported by a preponderance of the evidence. Id.
We are not persuaded of Examiner error. We find no limitation in
claim 9 that would require the housing to be made of one component instead
of two components. Indeed, Appellant's claim construction is belied by
Appellant's Specification, which indicates a housing may be "formed of a
pair of parts (or two non-symmetrical 'halves') 19, 20 that are disposed in
mating relation." Spec. 10: 11-13, Fig. 3; see also Claims App., claim 1.
Moreover, Appellant offers no evidentiary support for the proposition that
grommet 23 must be made of an electrically conductive material to secure
spring clip 24 to electrical lead 22 in electrical connection, and we find none
in Newman. See Newman, 3:53---61. We agree with the Examiner's finding
that grommet 23 is shown "in abutment with" gusset 15 in Figure 3
(Ans. 10), and we further add that both grommet 23 and gusset 15 house
electrical lead 22, so we are not persuaded of error in the Examiner's finding
that grommet 23 and gusset 15 together form a housing as recited in claim 9.
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Application 12/798,806
We therefore sustain the rejection of claim 9 as anticipated by
Newman. Appellant contends for the patentability of claims 12-14 and 16-
18 based solely on the arguments presented for claim 9. Br. 9. Accordingly,
we likewise sustain the rejection of claims 12-14 and 16-18 as anticipated
by Newman.
C. Obviousness based on Newman and either Grewe or Johansson
(claims 1, 2, and 6)
The Examiner finds Newman discloses most of claim 1, but lacks the
recited "housing having a pair of parts disposed in mating relation." Final
Act. 3. Grewe is cited as showing "a comer piece that can be formed of one
piece or two pieces (144A, 144B) that are in mating relation to form a
housing element." Id. at 4; see Grewe, Figs. 3---6, 4: 10-15, 4:39--42.
Johansson is cited as showing "it is well known to provide a comer piece
formed of a housing element with a pair of mating parts." Final Act. 4; see
Johansson, Fig. 1, 2:55---61. The Examiner determines it would have been
obvious to modify Newman, in view of either Grewe or Johansson, to
provide a housing with a pair of mating parts, as the substitution of one
known element for another. Final Act. 4, 9-10 (citing KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398 (2007)); Ans. 10-11.
Appellant contends the Examiner fails to provide any articulated
reasoning to support the conclusion of obviousness. Br. 10. We are not
persuaded. The Examiner contends the modification is the substitution of
one known element for another, and cites the KSR decision. Final Act. 9-10.
That decision states: "The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." KSR, 550 U.S. at 416. As one illustration of that
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Application 12/798,806
doctrine, the decision further provides: "[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result." Id. We agree with the Examiner's application of
such principles in this case, as we do not find anything unpredictable in
substituting a comer piece housing made of a pair of parts in mating relation
for Newman's gusset 15 and grommet 23.
Appellant also contends Grewe and Johansson are directed to frames
for receiving a poster or a sheet, so a person of ordinary skill in the art of
electrically heated windows would not have been motivated to modify
Newman's heated window in light of Grewe or Johansson. Br. 10. We are
not persuaded. "A person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR, 550 U.S. at 420-21. The respective
comer assemblies of Grewe and Johansson are analogous art to comer
assemblies used in heated windows, because both kinds of assemblies
connect rail members at a comer to form a support structure for a rectangular
element or elements (glass panes, a poster, or a sign). See In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (prior art reference is analogous to an
application if it is reasonably pertinent to the particular problem with which
the inventor is involved).
Appellant moreover contends Newman "requires" gusset 15 to be
airtight to preserve dead air space between window panes 11, 12, and
making gusset 15 in two pieces as in Grewe or Johansson "would destroy
this requirement" because neither reference discloses an air tight connection.
Br. 11. We are not persuaded. Again, a person of ordinary skill is a person
of ordinary creativity, not an automaton. KSR, 550 U.S. at 420-21. We find
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Application 12/798,806
nothing unpredictable or beyond ordinary skill in forming a housing out of a
pair of parts with an air tight connection, if such a connection would be
required in the context of a heated window support frame.
For the foregoing reasons, we sustain the rejection of claim 1 as
unpatentable over Newman and either Grewe or Johansson. Appellant
contends for the patentability of claims 2 and 6 based solely on arguments
presented for claim 1 or claim 9 (Br. 12), which we have found unpersuasive
supra. Accordingly, we likewise sustain the rejection of claims 2 and 6 as
unpatentable over Newman and either Grewe or Johansson.
D. Obviousness based on Newman, either Grewe or Johansson, Lockard,
and either Niekrasz or Nelson (claims 4 and 5)
In rejecting claim 4, the Examiner relies on Niekrasz and Nelson as
disclosing, separately, "a bifurcated end for receiving a spacer strip therein"
as claimed. Final Act. 5; Adv. Act. 2. The Examiner finds "Niekrasz shows
a comer key (20a, 20b) having a branched out bifurcated end (24, 24b ), and
Nelson shows a comer key (13) having a bifurcated end with digitized
fingers (16) that meets a broad scope of a bifurcated end as claimed."
Ans. 11; see Niekrasz, Fig. 3; Nelson, Fig. 1.
Appellant contends the Examiner errs in finding Niekrasz and Nelson
both disclose the claimed bifurcated end for receiving a spacer strip therein.
Br. 13. We agree. Even ifNiekrasz's hub extension 24b on leg 24 of comer
key 20a is "bifurcated" as claimed, a preponderance of the evidence does not
establish that the bifurcated structure is capable of receiving a spacer strip
(such as tubular members 18) therein as further claimed. See Niekrasz,
Fig. 3, 3:27-35. Similarly, even if Nelson's connector member 13 is
bifurcated into two legs 14, 15, a preponderance of the evidence does not
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Application 12/798,806
establish that the legs are capable of receiving a spacer strip (such as frame
members 10 and 11) therein. See Nelson, Fig. 1. We, therefore, do not
sustain the obviousness rejection of claim 4.
Appellant contends for the patentability of claim 5 based solely on
arguments presented for claim 3 (Br. 13), which in tum are limited to the
arguments for claim 1 (id.), which we have found unpersuasive supra.
Accordingly, we sustain the obviousness rejection of claim 5.
E. Other Obviousness Rejections
Appellant contends for the patentability of claims 3, 7, 8, 11, 15, 19,
and 21 over the cited prior art based solely on arguments presented for
claim 1 or claim 9, which we have found unpersuasive supra. Br. 13
(claim 3), 14 (claims 7, 8, and 11), and 15 (claims 15, 19, and 21).
Accordingly, we sustain the obviousness rejections of claims 3, 7, 8, 11, 15,
19, and 21.
Appellant contends for the patentability of claims 10 and 20 based on
arguments presented for claim 4, which we have found persuasive supra.
Br. 14 (claim 10), 15 (claim 20). Accordingly, we do not sustain the
obviousness rejections of claims 10 and 20.
DECISION
The Examiner's decision to reject claim 15 under 35 U.S.C. § 112,
second paragraph, as indefinite is reversed.
The Examiner's decision to reject claims 9, 12-14, and 16-18 under
35 U.S.C. § 102 as anticipated by Newman is affirmed.
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Appeal2014-001658
Application 12/798,806
The Examiner's decision to reject claims 1-8, 10, 11, 15, and 19-21
under 35 U.S.C. § 103 as unpatentable over the prior art is affirmed as to
claims 1-3, 5-8, 11, 15, 19, and 21, and reversed as to claims 4, 10, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended, under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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