Ex Parte Douglass et al

Patent Trials and Appeals Board

Apr 16, 2019

14321038 - (D) (P.T.A.B. Apr. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/321,038 07/01/2014
81735 7590 04/18/2019
Armstrong Teasdale LLP (16463)
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Robert Stephen Douglass
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.
14-BUS-018 US CIPl 1944
EXAMINER
VORTMAN, ANATOLY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
04/18/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT STEPHEN DOUGLASS and
JOHN MICHAEL FINK
Appeal2018-005623
Application 14/321,038
Technology Center 2800
Before LINDA M. GAUDETTE, LILAN REN, and
JANEE. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification
filed July 1, 2014 ("Spec."); Final Office Action dated August 7, 2017
("Final Act."); Appeal Brief filed February 23, 2018 ("Appeal Br.");
Examiner's Answer dated April 5, 2018 ("Ans."); and Reply Brief filed May
10, 2018 ("Reply Br.").
Appeal2018-005623
Application 14/321,038
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-3, 5, 6, 8-29, and 39--46. Appeal Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The invention relates to electrical circuit protection fuses. Spec. ,r 2. In
particular, the invention is directed to "[a] compact, full-range power fuse."
Appeal Br. 33 (claim 1), 35 (claim 20). "[F]ull-range power fuses" are
described as "operable in high voltage power distributions to safely interrupt
both relatively high fault currents and relatively low fault currents with equal
effectiveness." Spec. ,r 4.
Figure 4, reproduced below, illustrates a compact, full-range power
fuse in accordance with the invention.
Figure 4 is a perspective view of an exemplary high voltage, full-range
power fuse, revealing its internal construction. Spec. ,r,r 7-9. Power fuse 200
2 The Appellant is the Applicant, Eaton Intelligent Power Limited.
Application Data Sheet, filed March 13, 2019. The Appellant identifies
Eaton Corporation plc, the parent company of Eaton Intelligent Power
Limited, as the real party in interest. Appeal Br. 3.
2
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Application 14/321,038
includes housing 202, terminal blades 204, 206 configured for connection to
line and load side circuitry, and fuse element assembly 208 that completes
an electrical connection between terminal blades 204, 206. Id. ,r 39. Arc
extinguishing filler medium/material 232 surrounds fuse element assembly
208. Id. ,r 50. According to the Specification, fuse 200 has a significantly
reduced size and volume as compared to a conventional power fuse, yet
offers comparable fuse protection performance. Id. ,r 41. The Specification
discloses that "fuse 200 can operate at higher system voltages due to the fuse
element design features in the assembly 208 that further facilitate reduction
in size of the fuse 200." Id. ,r 54.
"[F]use element assembly 208 includes a first fuse element 218 and a
second fuse element 220 that each respectively connect to terminal contact
blocks 222,224 provided on end plates 226, 228." Spec. ,r 47. "[F]ull range
time-current operation is achieved by employing two fuse element melting
mechanisms, one mechanism for high current operation ( or short circuit
faults)[, i.e., fuse element 218,] and one mechanism for low current
operation (or overload faults)," i.e., fuse element 220. Id. ,r 61. "[E]ach of
the fuse elements 218, 220 is generally formed from a strip of electrically
conductive material into a series of coplanar sections 240 connected by
oblique sections 242, 244." Id. ,r 55. "[F]use elements 218,220 are generally
formed in substantially identical shapes and geometries, but inverted relative
to one another in the assembly 208[,] ... resulting in a ... compact and
space saving construction." Id. "[P]lanar sections 240 define a plurality of
areas of reduced cross-sectional area, referred to in the art as weak spots."
Id. ,r 57. The weak spots will experience heat concentration as current flows
through fuse elements 218, 220, causing fuse elements 218, 220 to open at
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Application 14/321,038
the location of the weak spots if specified electrical current conditions are
experienced. Id.
Of the appealed claims, claims 1 and 20 are independent. See
generally Appeal Br. 33-38. Claims 1 and 20 are reproduced below from the
Claims Appendix to the Appeal Brief.
1. A compact, full-range power fuse comprising:
a housing;
first and second terminal fabrications coupled to the
housing, each of the first and second terminal fabrications
comprising an end plate and a terminal and each of the first and
second terminal fabrications being one of a single piece or a
two piece assembly;
a short circuit fuse element and an overload fuse element
distinct from the short circuit fuse element, each of the short
circuit fuse element and the overload fuse element respectively
extending internally in the housing and between the first and
second terminal fabrications;
the short circuit fuse element being specifically
responsive to a high current or short circuit fault in an
electrical power system that initially will not affect the
overload fuse element, the short circuit fuse element
including a first end mechanically and electrically
connected to the first terminal fabrication and a second
end mechanically and electrically connected to the
second terminal fabrication;
the overload fuse element being specifically
responsive to a low overcurrent or overload fault current
condition in the electrical power system that initially will
not affect the short circuit fuse element, wherein the
overload fuse element includes a first end mechanically
and electrically connected to the first terminal fabrication
and a second end mechanically and electrically
connected to the second terminal fabrication; and
a filler surrounding the short circuit fuse element and the
overload fuse element in the housing, wherein the filler is
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Application 14/321,038
mechanically bonded to at least one of the short circuit fuse
element and the overload fuse element.
Id. at 33 ( emphasis added).
20. A compact, full-range power fuse comprising:
a housing including opposed first and second ends;
first and second end plates coupled to the respective first
and second ends;
first and second terminals extending from the respective
first and second end plates;
a full-range fuse element assembly having a first melting
mechanism uniquely responding to a high current or short
circuit fault and a second melting mechanism uniquely
responding to a low overcurrent or overload fault current
condition, each of the first and second melting mechanisms
extending internally in the housing and connected to the first
and second end plates;
a filler surrounding the full-range fuse element assembly
in the housing, wherein the filler is mechanically bonded to the
full-range fuse element assembly; and
wherein at least the first end plate and the first terminal
are defined by a single piece fabrication.
Id. at 35 ( emphasis added).
The Examiner maintains the following grounds of rejection on appeal
(see Ans. 2-3): 3
3 In the Final Office Action, claims 20 and 24--29 are identified as
provisionally rejected on the ground of nonstatutory double patenting as
unpatentable over claims 24, 25 and 27-31, respectively, of copending
Application 14/289,032. In the Answer, the Examiner does not list this
rejection as being maintained or withdrawn. Nor does the Examiner identify
the rejection as having been withdrawn in the Advisory Action, dated
October 16, 2017. In any event, we determine it would be premature to reach
the merits of this rejection. See Ex Parte Moncla, 95 USPQ2d 1884, 1885
(BP AI 2010) (precedential); Response After Final Action, filed September
29, 2017, 8 ("The provisional double patenting rejection is noted but
5
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Application 14/321,038
1. claims 1-3, 5, 6, 8-29, and 464 are rejected under 35 U.S.C.
§ 101 / 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as
not being supported by either a specific or substantial asserted utility or a
well-established utility;
2. claims 15 and 39--46 are rejected under 35 U.S.C. § 112(a) or
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement;
3. claims 1, 2, 5, 6, 8-10, 12-21, and 23-29 6 are rejected under 35
U.S.C. § 103 over Pimpis (US 5,426,411, issued June 20, 1995) in view of
either Douglass (US 5,736,918, issued April 7, 1998) or Panaro (US
4,219,795, issued August 26, 1980);
4. claims 3 and 22 are rejected under 35 U.S.C. § 103 over Pimpis
in view of Douglass or Panaro, and further in view of Chikamatsu (US
2008/0242150 Al, published Oct. 2, 2008); and
requires no action unless and until the claims of the commonly owned
application are patented.").
4 The Examiner identifies claims 30-38 as subject to this ground of
rejection. Ans. 2. This appears to be an inadvertent error, as claims 30-38
have been canceled.
5 In the Final Office Action, the Examiner did not include claim 1 in the
statement of claims subject to this ground of rejection, although claim 1 was
discussed in the discussion of the rejection. See Final Act. 7.
6 The Examiner identifies claims 3 and 22 as subject to this ground of
rejection. Ans. 2. We view this as an inadvertent error as claims 3 and 22
were not included in this ground of rejection in the Final Office Action. See
Final Act. 9. The Examiner does not include claim 24 in this ground of
rejection. However, claim 24 is discussed in the body of the rejection. See
Final Act. 14.
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Application 14/321,038
5. claims 39--46 are rejected under 35 U.S.C. § 103 over Pimpis in
view of Douglass or Panaro, and further in view of Ackermann (US
6,507,265 Bl, issued January 14, 2003).
Claim Construction
The respective positions of the Examiner and the Appellant in this
appeal are based, in part, on disagreements over the scope of the claim terms
"arc barrier material" (claims 12, 25, 39--46) "mechanically and electrically
connected" (claim 1) and "connected" (claims 20, 23). Accordingly, before
addressing the merits of the rejections, we construe the disputed claim terms.
See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1319 (Fed. Cir. 2011) ("[C]laim construction is inherent in any written
description analysis."); In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir.
1994) (explaining that a determination of anticipation or obviousness
necessarily hinges on the proper interpretation of a claim); Ratheon Co. v.
Roper Corp., 724 F.2d 951,956 (Fed. Cir. 1983) ("In determining utility, ...
the claims must first be interpreted to define the invention to be tested for
utility.").
"[T]he PTO must give claims their broadest reasonable construction
consistent with the specification .... Therefore, we look to the specification
to see if it provides a definition for claim terms but otherwise apply a broad
interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007).
"Mechanically and Electrically Connected" & "Connected"
Claim 1 requires that each of the short circuit fuse element and the
overload fuse element include "a first end mechanically and electrically
connected to the first terminal fabrication and a second end mechanically
and electrically connected to the second terminal fabrication" ( emphasis
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Application 14/321,038
added). Claim 20 recites that each of a first melting mechanism that uniquely
responds to a high current or a short circuit fault and a second melting
mechanism that uniquely responds to a low overcurrent or an overload fault
current condition "extend[ s] internally in the housing and [is] connected to
the first and second end plates."
The Examiner contends this claim language encompasses an
arrangement in which an end of each fuse element/mechanism is connected
indirectly to a terminal fabrication/end plate. See Final Act. 12. In other
words, the Examiner interprets claims 1 and 20 as encompassing fuse
elements/mechanisms connected both in series and in parallel. See id.
Based on the arguments advanced by the Appellant, we understand
the Appellant as more narrowly construing the above language in claims 1
and 20 as encompassing fuse elements/mechanisms connected only in
parallel. See Appeal Br. 27 (arguing the Douglass's short circuit interrupting
fusible element 136 and overcurrent trigger mechanism 34 are not
"mechanically and electrically connected" to the terminal fabrications
because they are connected in series); id. at 16-17 ( arguing the fuse
elements are "connected in parallel" inside the fuse); id. at 30 (stating that
the same arguments advanced in support of patentability of claim 1 over the
prior art apply to claim 20); Reply Br. 5 (arguing the fuse elements provide a
parallel current path).
Various views of inventive fuse element assembly 208 are illustrated
in Figures 4---6. Spec. ,r 4 7. Fuse element assembly 208 is described as
including "a first fuse element 218 and a second fuse element 220 that each
respectively connect to terminal contact blocks 222, 224 provided on end
plates 226, 228." Id. The Specification discloses that "[m]echanical and
electrical connections of the fuse elements 218, 210 and the terminal contact
8
Appeal2018-005623
Application 14/321,038
blocks 222, 224 [provided on end plates 226, 228] may be established using
known techniques, including but not limited to soldering techniques." Id.
The Specification also describes mechanically joining or connecting other
parts of the fuse. See, e.g., Spec. ,r 86 ( describing the connection between
terminal 204 and end plate 206); ,r 49 ( describing securing end plates 226,
228 relative to housing 202). We find no indication in the Specification that
components of the fuse described as "mechanically and electrically
connected" or "connected" ( e.g., the fuse elements/mechanisms and terminal
fabrications/end plates) must be directly connected.
In Figures 4---6, first fuse element 218 and second fuse element 220
are illustrated as connected in parallel, although the Specification does not
explicitly use the term "parallel" in describing the connections of the fuse
elements/mechanisms to the terminal fabrications/end plates. "Figure 7
illustrates the fuse element assembly 208 in further detail." Spec. ,r 54. In
Figure 7, "fuse elements 218, 220 are generally formed in substantially
identical shapes and geometries, but inverted relative to one another in the
assembly 208." Id. ,r 55. With reference to Figure 7, the Specification
discloses that "[ w ]hile a particular fuse element geometry and arrangement
is shown, other types of fuse elements, fuse element geometries, and
arrangements of fuse elements are possible in other embodiments .... [I]n
some embodiments a single fuse element may be utilized." Id. Based on this
description and the manner in which the terms "mechanically and
electrically connected" and "connected" are used in the Specification, we
agree with the Examiner that the broadest reasonable interpretation of claims
1 and 20 encompasses fuse elements/mechanisms connected both in series
and in parallel.
9
Appeal2018-005623
Application 14/321,038
"Arc Barrier Material"
Claims 39--46 require an "arc barrier material." The Examiner
contends this term encompasses the arc extinguishing filler medium/material
232 described in the Specification as being present within the fuse and in
contact with the entire fuse element. Final Act. 8. The Appellant argues the
Examiner's interpretation is overly broad. See Appeal Br. 22.
Turning first to the language of the claims, we note that independent
claims 1 and 20 recite "a filler surrounding [and] ... mechanically bonded
to" the fuse element. Appeal Br. 33, 35. Claims 6 and 24 depend from
claims 1 and 20, respectively, and recite that the filler comprises sodium
silicated sand. Id. at 34, 36. Claim 39 depends from claim 12, which recites
the following: "The compact, full-range power fuse of claim 1, wherein at
least a portion of the short circuit fuse element and at least a portion of the
overload element is provided with an arc barrier material." Id. at 34. Claim
39 recites that "the arc barrier material is provided only adjacent the first and
second terminal fabrications." Id. at 36 ( emphasis added). Claim 43
indirectly depends from claim 20 and similarly requires that "the arc barrier
material is provided only adjacent the first and second end plates." Id. at 37
(emphasis added); see also id. at 37 (claims 40, 44 ("the arc barrier material
being provided only on the section extending obliquely")). Claims 41, 42,
45, and 46 depend from claims 39 and 43, respectively, and recite that "none
of the weak spots" ( emphasis added) in the fuse elements are covered by the
arc barrier material. Id. at 37-38.
"[D]ifferent claim terms are presumed to have different meanings."
Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed.
Cir. 2008); see also Hamilton Beach Brands, Inc. v. f'real Foods, LLC, 908
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Appeal2018-005623
Application 14/321,038
F.3d 1328, 1340 (Fed. Cir. 2014). There is a presumption, therefore, that the
term "arc barrier material" has a different meaning than "filler."
The written description discloses that "[a]n arc extinguishing filler
medium or material 232 surrounds the fuse element assembly 208." Spec.
,r 50. Use of the term "filler" in the written description is only in connection
with filler medium/material 232 (see generally Spec. 1-35) and in reference
to conventional filler materials (see, e.g., Spec. ,r 53 ("Conventionally, a
filler material which may include sand only makes point contact with the
conductive portions of the fuse elements in a fuse, whereas the silicated sand
of the filler material 232 is mechanically bonded to the fuse elements.")). In
one embodiment, filler medium/material 232 comprises quartz silica sand
and a sodium silicate binder. Id. ,r 51. According to the written description,
"[t]he application of sodium silicate to the quartz sand aids with the
conduction of heat energy out and away from the fuse elements 218, 220."
Id. ,r 52. The term "filler" is used in a similar manner in the applied prior art.
See, e.g., Douglass 1 :43--45 ( describing the housing containing the fuse
elements as "filled with an arc-quenching filler material 33 such as quartz
sand"); Ackermann 3 :43--45 ("Chamber 34 is filled with filler material 54.
Suitable filler materials 54 include, for example, silica sand, powdered
gypsum, inert gasses, and the like."); Pimpis 5:32-35 ("[T]he void space
resulting in the housing is filled with a granular arc-quenching fill material
(e.g., 50/17 or 14/60 quartz ... ) .... ").
The written description discloses that due to the size, power handling,
and voltage operation requirements, "special element treatments must be
applied beyond the use of silicated quartz sand in the filler 232 and the
formed fuse element geometries .... In particular the application of arc
blocking or arc barrier materials 250 such as R TV silicones or UV curing
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Application 14/321,038
silicones are applied adjacent the terminal tabs 246 of the fuse elements 218,
220." Spec. ,r 60.
Based on the distinctions between the two materials in the claims and
written description, we agree with the Appellant that the broadest reasonable
interpretation of the claim term "arc barrier material" does not encompass
the arc extinguishing filler medium/material 232 described in the
Specification as present within the fuse and in contact with the entire fuse
element.
Rejection under§ 1 OJI§ 112 (enablement requirement)
To satisfy the enablement requirement of§ 112, ... a patent
application must adequately disclose the claimed invention so
as to enable a person skilled in the art to practice the invention
at the time the application was filed without undue
experimentation. The utility requirement of§ 101 mandates that
the invention be operable to achieve useful results. Thus, if the
claims in an application fail to meet the utility requirement
because the invention is inoperative, they also fail to meet the
enablement requirement because a person skilled in the art
cannot practice the invention.
In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000) (citations omitted). "The
PTO has the initial burden of challenging a patent applicant's presumptively
correct assertion of utility." Id. at 864 ( citation omitted). "If the PTO
provides evidence showing that one of ordinary skill in the art would
reasonably doubt the asserted utility, however, the burden shifts to the
applicant to submit evidence sufficient to convince such a person of the
invention's asserted utility." Id. (citation omitted). As explained by the
Federal Circuit, "[t]he bar for utility is not high .... A patent fails to satisfy
the utility requirement under 35 U.S.C. § 101 only if the invention is totally
incapable of achieving a useful result." Grunenthal GMBH v. Alkem Labs.
Ltd, 2019 WL 1387982, at *9 (Fed. Cir. March 28, 2019) (internal citations
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Application 14/321,038
and quotations marks omitted). "When a properly claimed invention meets at
least one stated objective, utility under§ 101 is clearly shown." Raytheon
Co. v. Roper Corp., 724 F.2d 951, 958 (Fed. Cir. 1983).
Claim 1 requires a short circuit fuse element and an overload fuse
element connected between first and second terminal fabrications. Appeal
Br. 33. Claim 1 requires that the short circuit fuse element is responsive to a
high current or a short circuit fault that initially will not affect the overload
fuse element. Id. Claim 1 further requires that the overload fuse element is
responsive to a low overcurrent or an overload fault current condition that
initially will not affect the short circuit fuse element. Id. Claim 20 requires
"a full-range fuse element assembly having a first melting mechanism
uniquely responding to a high current or short circuit fault and a second
melting mechanism uniquely responding to a low overcurrent or overload
fault current condition," the first and second melting mechanisms being
connected in parallel between first and second end plates. Id. at 35.
Before addressing the merits of the rejection, we note that, in the
claim construction section above, we determined the broadest reasonable
interpretation of claims 1 and 20 encompasses fuse elements/mechanisms
connected both in series and in parallel. The Examiner does not contend that
the claimed fuse is inoperative if the fuse elements/mechanisms are
connected in series. Therefore, the Examiner has not met the burden to show
lack of utility under 35 U.S.C. § 101. However, to avoid piecemeal
prosecution, e.g., in the event the Appellant files amended claims limited to
fuse elements/mechanisms connected in parallel, we address the arguments
directed to this embodiment.
There is no dispute that the asserted utility of the inventive fuse is to
interrupt both high fault currents and low fault currents in an electrical
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Application 14/321,038
power system. Appeal Br. 15; Final Act. 7; Spec. ,r,r 3, 4, 61. The Examiner
finds that when the two fuse elements/mechanisms are connected in parallel,
the fuse is inoperative because it would never interrupt current flow and
would not protect an electrical circuit, as only one of the fuse elements
would open during a fault condition while the other fuse element would
remain intact, i.e., current flow would never be interrupted. Final Act. 7. The
Examiner thus determines the claimed invention lacks utility and is not
enabled. Id.
The Appellant notes claim 1 specifies that the "high current or short
circuit fault" to which the short circuit fuse element is responsive "initially
will not affect the overload fuse element" and the low overcurrent or
overload fault current to which the overload fuse element is responsive
"initially will not affect the short circuit fuse element" ( claim 1 ( emphasis
added)). Appeal Br. 16. The Appellant argues this claim language "means
that the respective fuse elements, by design, do not respond in the same
time[]frame to different currents, and accordingly the time difference
required to open each element is not the same." Id. ( citing Spec. ,r 62). As to
claim 20, the Appellant notes the claim requires "a full-range fuse element
assembly having a first melting mechanism uniquely responding to a high
current or short circuit fault and a second melting mechanism uniquely
responding to a low overcurrent or overload fault current condition. Id. at
21. The Appellant explains ( with respect to fuse elements/mechanisms
connected in parallel) that "after the first fuse element initially opens, the
current flowing through the second fuse element significantly increases and
by design quickly causes the second fuse element to open." Id. at 17; see id.
at 21. The Appellant argues the ordinary artisan would understand that the
claimed "compact, full-range power fuse" operates in this manner from
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Figure 9, which illustrates "the full range time-current operation of ... fuse
200 that includes both of the short circuit and overload fuse elements at
issue." Id. at 18. The Appellant explains that "[i]n Figure 9, the short circuit
fault is shown to be initially limited and then fully cleared (i.e., current flow
through the fuse falls to zero)," which means that "the overload fuse element
must have opened too." Id.
In response, the Examiner argues Figure 9 "is a graphical
representation of the clearance of the short circuit fault only, i.e. it pertains
only to one (short circuit) fuse element and there is nothing in said Fig. 9
pertain[ing] to the overload fuse element." Ans. 7.
The Appellant also contends Specification paragraphs 3, 4, 35, 38, 39,
and 61 clearly describe the utility of the fuse. Appeal Br. 15. The Examiner
does not comment on these paragraphs individually, but maintains "[t]here is
no teaching in the original disclosure that upon opening of one fuse element,
another would open as well." Ans. 8; see also id. at 12 ("There is no
teaching in the original disclosure about any timeline (i.e. 'initially')
pertain[ing] to the operation of the short circuit and overload fusible
elements.").
Figure 9 of the Application is reproduced below.
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Application 14/321,038
Current Limitation
Effect of Fuses
Normal load current --
befure fault
i
a
~ Fault current if I\ .. .re~
I \
J \
I \
I \
II -"'----+--~ Fault <:ummt
I \ peak limitl'!d
\
\ Time , I
Fuse clears short\ /
circuit fault ln less \ /
than 1/2 cycle )
FIG. 9
Figure 9 illustrates "[a]n exemplary current limiting effect of the fuse 200."
Spec. ,r 63; see also id. ,r 14. More specifically, Figure 9 is a graph
illustrating current versus time for fuse 200. As noted above in the
description of Figure 4, fuse 200 comprises fuse element assembly 208
having first fuse element 218 and second fuse element 220 that each connect
to terminal contact blocks 222, 224 provided on end plates 226, 228. Id.
,r,r 39, 47. Figure 9 shows normal load current before a fault occurs at time 0.
Figure 9 further illustrates that the fault current peak is limited and that the
"ll]use clears [the] short circuit fault in less than Yz cycle." Figure 9
( emphasis added). The Specification discloses that
[ w ]hen subjected to predetermined current conditions, at least a
portion of the fuse element assembly 208 melts, disintegrates,
or otherwise structurally fails and opens the circuit path
between the terminal blades 204, 206. Load side circuitry is
therefore electrically isolated from the line side circuitry to
protect load side circuit components and circuit from damage
when electrical fault conditions occur.
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Application 14/321,038
Spec. ,r 39.
Figure 8 of the Application is reproduced below.
10,000 '" ., .
100
10
0 ,. .. ,., ..
0
0 +--'---'-'-"""'1---''-'-'-"'""1--~
100 1,000 10,000 100,000
Current (A)
overload
FIG. 8
"Figure 8 is an assembly view of the fuse element assembly .... " Spec.
,r 13. With reference to Figure 8, Specification paragraph 61 discloses that
"full range time-current operation is achieved by employing two fuse
element melting mechanisms, one mechanism for high current operation ( or
short circuit faults) and one mechanism for low current operation ( or
overload faults)." Figure 8 includes a graph of time, ranging from Oto
10,000 seconds, versus current, ranging from 100 to 10,000 amps. Figure 8
illustrates that at high current operation and time 0, short circuit fuse element
218 melts in areas of reduced cross-sectional area, i.e., weak spots, in planar
sections 240 that experience heat concentration as current flows through
short circuit fuse element 218. See Figure 8, ,r 57. The graph further
illustrates that current continues to drop over a time period of O to 10,000
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Application 14/321,038
seconds during which low current operation triggers melting of planar
sections 240 in overload fuse element 220. See Figure 8.
The above disclosures support the Appellant's explanation of the
operation of the inventive fuse when the fuse elements/mechanisms are
connected in parallel. See, e.g., Appeal Br. 1 7 ("Which one of the two fuse
elements initially opens first depends on the fault circuit experienced, but
both of the fuse elements necessarily open."); Reply Br. 5 ("Figure 9
inherently conveys that the short circuit fault is cleared. This cannot happen
in the fuse of the invention unless both of the fuse elements (the short circuit
fuse element and the overload fuse element open) since the overload element
provides a parallel current path through the fuse."). In other words,
Appellant has shown sufficiently that, at the time the Application was filed,
the invention was operable to achieve useful results and was adequately
disclosed so as to enable a person skilled in the art to practice the invention
without undue experimentation.
Accordingly, the Appellant has persuaded us that the Examiner
reversibly erred in rejecting claims 1-3, 5, 6, 8-29, and 46 under 35 U.S.C.
§ 101 / 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as
not being supported by either a specific or substantial asserted utility or a
well-established utility. We do not sustain this rejection.
Rejection under§ 112 (written description requirement)
Claim 1
As indicated above, claim 1 recites "the short circuit fuse element
being specifically responsive to a high current or short circuit fault in an
electrical power system that initially will not affect the overload fuse
element" and "the overload fuse element being specifically responsive to a
low overcurrent or overload fault current condition in the electrical power
18
Appeal2018-005623
Application 14/321,038
system that initially will not affect the short circuit fuse element." Appeal
Br. 33 ( emphasis added). The Examiner finds the term "initially," added by
an amendment filed June 28, 2017, lacks written descriptive support. Final
Act. 8. 7 The Examiner contends "[t]here is no teaching in the original
disclosure about any timeline (i.e. 'initially') pertain[ing] to the operation of
the short circuit and overload fusible elements." Id.
The Appellant contends the above claim language is supported by the
Specification and drawings as discussed in connection with the rejection of
claim 1 under§ 101 / § 112 (enablement requirement). Appeal Br. 22-23.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
"[D]rawings alone may be sufficient to provide the 'written description of
7 The Examiner contends the Appellant failed to address this rejection in the
Appeal Brief. Ans. 4. In the Reply Brief, the Appellant identifies where the
arguments were made in the Appeal Brief. Reply Br. 3--4 ( citing Appeal Br.
16, 22-23). Although these arguments are not presented under the heading
"2. Written Description" (Appeal Br. 2), due to the lack of clarity in the
Examiner's rejection under 35 U.S.C. § 112 (written description
requirement), we decline to view the Appellant's arguments as failing to
comply with the requirements under 37 C.F.R. § 4I.37(c)(iv) for arguing
claims as separately patentable. In the Final Office Action, the Examiner did
not include claim 1 in the statement of this ground of rejection. See Final
Act. 7. Although claim 1 is discussed in the body of the rejection, the
Examiner never states explicitly that claim 1 is rejected as failing to comply
with the written description requirement. See Final Act. 7-8; MPEP
§ 706.01 ("The term 'rejected' must be applied to ... claims [considered
unpatentable] in the examiner's action.").
19
Appeal2018-005623
Application 14/321,038
the invention' required by§ 112 .... " Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1565 (Fed. Cir. 1991).
We are persuaded that one of ordinary skill in the art would recognize
from Figures 8 and 9, and the corresponding description thereof in the
Specification, that the inventors invented a fuse comprising two fuse
elements that "do not respond in the same time[]frame to different currents,
and accordingly the time difference required to open each element is not the
same." Appeal Br. 16; see supra pp. 14--18.
We do not sustain the rejection of claim 1 under 35 U.S.C. § 112(a) or
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
Claims 39--46
The Examiner contends the language in claims 39--46 that limits the
location of the "arc barrier material" (see supra p. 10) is not supported by
the written description because "there is an arc barrier 'filling medium 232'
present within the fuse and in contact with the entire fuse element." Final
Act. 8 (citing Spec. ,r,r 50-53). In the claim construction section, above, we
determined the broadest reasonable interpretation of the claim term "arc
barrier material" does not encompass the filler material/medium 232 that
surrounds the fuse elements. See supra pp. 10-12. We agree with the
Appellant that the Examiner's rejection of claims 39--46 is based on an
erroneous claim interpretation. See Appeal Br. 22.
Accordingly, we do not sustain the rejection of claims 39--46 under 35
U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
20
Appeal2018-005623
Application 14/321,038
Rejections under 35 U.S. C. § 103
The Examiner maintains the rejection of independent claims 1 and 20
over Pimpis in view of either Douglass or Panaro. Figure 3 of Pimpis is
reproduced below.
16
FIG. 3
Pimpis Figure 3 is a plan view, partially in section, of a fuse. Pimpis 2:67-
68. As shown in Figure 3, opposite ends of each of two fusible elements 18
are attached to respective terminals 16. See id. at 3:33-36.
Figure 5 of Douglass is reproduced below.
21
Appeal2018-005623
Application 14/321,038
114
\.
i
I
1
' ' ' -·,
' ' '
172
(
116
FIG. 5
34 136 118 122
118 112 II 1~2 ) 120 J 133
/ / / (_., , ,/ 172
34! 1 1~
/ 158
170
I
170
.,,...,..,.~/ _._.._----------·
116
i
159
114
)
Douglass Figure 5 is a sectional view of a fuse. Douglass 4: 12-13. Douglass
discloses that the fuse preferably includes two types of fuse elements:
conventional, overcurrent trigger mechanism 34 and short circuit
interrupting fusible element 136. Id. at 5:7-10. One end of short circuit
interrupting fusible element 136 is joined by solder 38 to trigger 40 of
overcurrent trigger mechanism 34. Id. at 5:43--45. The opposite end of short
circuit interrupting fusible element 136 is connected to a first of two end
plates 116 that, in tum, is connected to a first of two terminals 114. Id. at
4:60-61, 5:45--46. Overcurrent trigger mechanism 34 is connected to the
second of end plates 116, that is connected to the second of terminals 114.
See Figure 5.
Figure 1 of Panaro is reproduced below.
I
B
Panaro Figure 1 "is an elevation of a fusible element." Panaro 2:44. Panaro
discloses that the fusible element is intended to conductively interconnect
22
Appeal2018-005623
Application 14/321,038
the terminal elements of a fuse to form a time-lag fuse. Panaro 1:13-14,
2:53-55. The fusible element includes a perforated center portion A having a
relatively low fusing i2·t value and non-perforated end portions B having a
relatively low fusing i2·t value. Id. at 2:55-55. Each of end portions Bis
folded along a respective transverse line 4 in such a way that a section 5 of
each of end portions B overlaps relatively closely a respective section 6 of
center portion A. Id. at 3: 6-10. Metal-severing ( or M-effect) element 7, 8
having a lower fusing point than the fusing point of center portion A, is
affixed to center portion A. Id. at 3: 11-15.
"As a result of this arrangement of parts, metal-severing
element 7, in addition to being directly heated by i2·r losses in
center portion A, is also heated by convection, conduction and
radiation occurring across the gap g between metal severing
element 7 and section 5 of the left end portion B."
Id. at 3: 17-22.
The Examiner finds Pimpis discloses the invention as recited in claims
1 and 20, with the exception that
Pimpis d[ oes] not explicitly teach that that the overload fuse
element is distinct from the short circuit fuse element, wherein
the overload fuse element being specifically responsive to a low
overcurrent or overload fault current condition in the electrical
power system that initially will not affect the short circuit fuse
element and that the short circuit fuse element being
specifically responsive to a high current or short circuit fault in
an electrical power system that initially will not affect the
overload fuse element.
Final Act. 10.
The Examiner finds Douglass discloses "a dual element fuse with two
parallel fuse elements (34, 136) performing functions of the overload and
8 "Fuses whose fusible elements are severed in a certain current range by a
metal diffusion process are known as M-effect fuses." Id. at 1 :47--49.
23
Appeal2018-005623
Application 14/321,038
short circuit protection." Final Act. 12. The Examiner finds the short circuit
fuse element (136) has a first end connected to a first terminal fabrication
(114, 116) and a second end connected, via the overload fuse element (34),
to a second terminal fabrication (114, 116). Id. The Examiner similarly finds
the overload fuse element (34) includes a first end connected, via the short
circuit fuse element (136), to the first terminal fabrication (114, 116) and a
second end connected to the second terminal fabrication (114, 116). Id. The
Examiner finds the short circuit fuse element (136) is specifically responsive
to a high current or short circuit fault in an electrical power system that
initially will not affect the overload fuse element (34), and the overload
element (34) is specifically responsive to a low overcurrent or overload fault
current condition in the electrical power system that initially will not affect
the short circuit fuse element (136). Id. The Examiner finds one of ordinary
skill in the art would have replaced Pimp is' s fusible elements with distinct
overload and short circuit fuse elements, as taught by Douglass, in order to
achieve effective protection from the overload and short circuit currents. Id.
Alternatively, the Examiner finds one of ordinary skill in the art
would have
provide[d] one of the fuse elements of Pimpis with [an] M-
effect metal-severing element, as taught by Panaro, so as to
achieve timelag characteristic thereof, in order to make it
responsive to the low overcurrent or overload fault current
condition in the electrical power system that initially will not
affect the short circuit fuse element, in order to achieve
effective protection from the overload and short circuit currents.
Final Act. 13.
The Appellant argues that " [ n] one of the cited art teaches a compact,
full-range power fuse generally or specifically." Appeal Br. 29. This
argument is not persuasive. "[A] compact, full-range power fuse" is recited
24
Appeal2018-005623
Application 14/321,038
only in the claim preambles. See generally Appeal Br. 33-38. Having
reviewed the entire Specification, we determine, the bodies of the claims
define structurally complete inventions and the preamble is unnecessary to
give meaning to the claims and properly define the invention. See Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) ("Where ... a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation."); In re Fritch, 972 F.2d 1260, 1262 (Fed. Cir. 1992)
( explaining that language in the preamble further limits the claim if such is
"necessary to give meaning to the claim[ s] and properly define the
invention").
Rejection over Pimpis and Douglass
The Appellant argues Douglass's short circuit interrupting fusible
element 136 and overcurrent trigger mechanism 34 are connected in series.
Appeal Br. 27. The Appellant argues that a current causing overcurrent
trigger mechanism 34 to operate necessarily causes short circuit interrupting
fusible element 136 to become disconnected. Id. at 28. The Appellant thus
contends a current condition to which overcurrent trigger mechanism 34 or
short circuit interrupting fusible element 13 6 responds does initially affect
short circuit interrupting fusible element 13 6 or overcurrent trigger
mechanism 34, respectively. Id.
In our claim construction analysis, we determined that the claims
encompass first and second fuse elements/mechanisms connected either in
series or in a parallel. Claim 20 does not include limitations relating to the
time frame in which a fault affecting one of the two melting mechanisms
affects the other of the two melting mechanisms. Accordingly, the
25
Appeal2018-005623
Application 14/321,038
Appellant's argument is not persuasive of error in the Examiner's rejection
of claim 20.
As discussed above, claim 1 requires that the current condition to
which the short circuit fuse element is responsive initially does not affect the
overload fuse element, and the current condition to which the overload fuse
element is responsive initially does not affect the short circuit fuse element.
In our analysis of the rejection of claim 1 under 35 U.S.C. § 112 (written
description requirement), we agreed with the Appellant that the
Specification provides written descriptive support for the phrase "initially
will not affect" because Figures 8 and 9, and corresponding descriptions
thereof, establish that the inventors were in possession of a fuse comprising
two fuse elements connected in parallel that do not respond in the same
timeframe to different currents, i.e., "the time difference required to open
each element is not the same" (Appeal Br. 16). See supra pp. 18-20. As
described in the Specification, when a fuse element is responsive to or
affected by a particular current, the fuse element melts, disintegrates, or
otherwise structurally fails and opens the circuit path through the fuse
element. See, e.g. Spec. ,r 38. When fuse elements are connected in series, a
current condition that causes melting, disintegration, or other structural
failure of the first fuse element opens the circuit such that current no longer
flows through the second fuse element and, therefore, the second fuse
element does not melt, disintegrate or structurally fail, i.e., once the first
fuse element opens, the second fuse element itself is not affected by the
current either initially or at some point in the future. Cf Appeal Br. 17
("Considering that the two fuse elements are electrically connected in
parallel, after the first fuse element initially opens, the current flowing
through the second fuse element significantly increases and by design
26
Appeal2018-005623
Application 14/321,038
quickly causes the second fuse element to open."). Thus, the Appellant's
argument that "[a] current that causes [Douglass's] trigger mechanism 34 to
operate ... does initially affect the short circuit elements 136 ... in a
mechanical and electrical sense" (Appeal Br. 28) is not consistent with the
Specification's description of the manner in which a fuse element is
responsive to, or affected by, a particular current.
Although claim 1 requires that the current condition to which one of
the short circuit fuse element and the overload fuse element is responsive
initially does not affect the other one of the two elements, there is no
requirement in claim 1 that the other one of the two elements is ever
affected. Accordingly, we are not persuaded of reversible error in the
Examiner's rejection of claim 1.
Any additional arguments made by the Appellant (see, e.g., Appeal
Br. 30) have been fully addressed by the Examiner and are not persuasive
for the reasons stated in the Final Office Action and in the Answer (see, e.g.,
Ans. 17-19).
As to the rejections of the dependent claims based on the
combinations of (1) Pimp is, Douglass, and Chikamatsu, and (2) Pimpis,
Douglass, and Ackermann, the Appellant merely argues that the additional
references do not cure the deficiencies in the Examiner's rejection of claims
1 and 20 over Pimpis and Douglass. See Appeal Br. 31.
Accordingly, we sustain all rejections based on the combination of
Pimpis and Douglass.
Rejections over Pimpis and Panaro
The Appellant argues the Examiner's rejection is based on improper
hindsight reconstruction. Appeal Br. 29. We agree that the Examiner's
explanation of why the ordinary artisan would have combined Pimpis and
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Appeal2018-005623
Application 14/321,038
Panaro is conclusory and lacks evidentiary support. See Final Act. 13-14;
Ans. 17. Accordingly, we do not sustain the rejections based on the
combination of Pimpis and Panaro.
ORDER