Ex Parte Fitzpatrick et al

Patent Trial and Appeal Board

Jan 18, 2017

13185583 (P.T.A.B. Jan. 18, 2017)

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.
13/185,583 07/19/2011 KEVIN J. FITZPATRICK SUB-01730-US-NP 2580
173 7590 01/20/2017
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
EXAMINER
VORTMAN, ANATOLY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
01/20/2017 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):
whirlpool_patents_co@whirlpool.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN J. FITZPATRICK and RYAN K. ROTH
Appeal 2015-004304
Application 13/185,583
Technology Center 2800
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
DONNA M. PRAISS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1—
17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants state that the real party in interest is “Whirlpool
Corporation” (Appeal Brief filed October 14, 2014, hereinafter “Appeal
Br.,” 2).
2 Appeal Br. 2, 5—20; Final Office Action delivered electronically on May
14, 2014, hereinafter “Final Act.,” 3—8; Examiner’s Answer delivered
electronically on December 26, 2014, hereinafter “Ans.,” 2—12.
Appeal 2015-004304
Application 13/185,583
BACKGROUND
The subject matter on appeal relates to a circuit board for use in
appliances such as automatic dishwashers (Specification, hereinafter
“Spec.,” 11). The Specification explains that the circuit board is provided
with a fuse region, which evanesces to separate the circuit board’s power
input pins from the circuit board’s other components and thus disconnect the
power supply when arc tracking occurs {id. H 41—42; Fig. 7—8).
Representative claim 1 is reproduced from page 22 of the Appeal
Brief (Claims Appendix), with key disputed limitations highlighted in
italicized text, as follows:
1. A circuit board comprising:
a substrate;
a slot in the substrate defining a peninsula element;
a power input connector provided on the peninsula
element; and
an electrical trace provided on the substrate and
extending onto the peninsula element and conductively
connected with the power input connector;
wherein the power input connector is spaced from a
junction of the peninsula element and the substrate to define a
fuse region in the peninsula element, between the junction
and the power input connector, that evanesces with heat in
response to arc tracking along the electrical trace to the power
input connector to electrically open the power input connector
relative to the electrical trace.
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Application 13/185,583
REJECTIONS ON APPEAL3
The Examiner rejected the claims as follows:
I. Claims 1—3 under 35 U.S.C. § 102(b) (pre-AIA) as
anticipated by McGalliard4 (Final Act. 3; Ans. 2—6);
II. Claims 4—17 under 35 U.S.C. § 103(a) (pre-AIA) as
unpatentable over McGalliard (Final Act. 6—8; Ans. 2,
11—12); and
III. Claim 1 under 35 U.S.C. § 102(b) (pre-AIA) as
anticipated by Still5 (Final Act. 4—5; Ans. 2, 6—11).
DISCUSSION
We address the Examiner’s rejection in a different order than that
presented in the Final Action.
I. Anticipation by McGalliard
The Appellants argue claims 1—3 together (Appeal Br. 6—10).
Therefore, we confine our discussion to claim 1, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by this
rule, claims 2 and 3 stand or fall with claim 1.
The Examiner found that McGalliard describes every limitation
recited in claim 1 (Final Act. 3). Specifically, the Examiner found that
McGalliard’s Figure 12 discloses a substrate 262 provided with a slot 264
3 On page 2 of the Answer, the Examiner withdrew a final rejection under 35
U.S.C. § 102(b) (pre-AIA) of claim 1 as anticipated by Fischer (US
5,280,262, issued January 18, 1994). Therefore, that rejection is not before
us.
4 US 4,394,639, issued July 19, 1983.
5 US 4,404,536, issued September 13, 1983.
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Application 13/185,583
“defining a peninsula element” as required by claim 1 (Final Act. 3). The
Examiner found further that substrate 262 is provided with electrical traces
(referred to as printed fuse circuits by McGalliard) 270 (not labeled in Fig.
12) and 272, each extending into what may be considered as the “peninsula
element” (grayed out area shown in the Examiner’s annotated Figure 12) and
being connected to a power input connector in a manner similar to that
shown in Figure 6 (id.). Additionally, the Examiner found that substrate 262
is provided with fuse regions (referred to as fuse elements by McGalliard)
274 and 276, which would evanesce with heat in response to arc tracking
(id.).
The Appellants contend that McGalliard does not disclose certain
limitations recited in claim 1 (Appeal Br. 6—10). Specifically, the
Appellants identify and base their arguments on the following:
1. “circuit board”;
2. “a slot in the substrate defining a peninsula element”; and
3. “a fuse region in the peninsula element, between the junction
and the power input connector, that evanesces with heat in
response to arc tracking along the electrical trace to the power
input connector to electrically open the power input connector
relative to the electrical trace.”
For the reasons discussed below, the Appellants’ arguments fail to
identify a reversible error in the Examiner’s anticipation findings as to
claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
1. The “circuit board” limitation
Regarding the “circuit board” limitation, the Appellants argue that
McGalliard’s substrate 262 is a substrate of fuse element 260, not a circuit
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Application 13/185,583
board (Appeal Br. 8). Although the Appellants acknowledge that
McGalliard’s fuse assembly 260 is inserted into connectors (as shown in
Figure 6) to be within a circuit board, they urge that “[a] fuse that may be
applied to a circuit board is not the same thing as a circuit board having a
slot in the substrate defining a peninsula element” (id. at 9).
“[DJuring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
“Only in this way can uncertainties of claim scope be removed, as much as
possible, during the administrative process.” Id. at 322. “[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Applying these principles, we are in complete agreement with the
Examiner’s analysis (Ans. 5). Here, the Appellants do not direct us to any
special definition in the Specification for “circuit board,” or any credible
evidence (e.g., expert declaration testimony), that would compel a finding
that McGalliard does not describe a “circuit board” as required by claim 1.
Absent sufficient basis to construe “circuit board” narrowly, the Examiner
did not err by giving the terms their broadest reasonable interpretation as
would be understood by one skilled in the relevant art, as reflected in the
Examiner’s unrebutted dictionary definition (defining “circuit board” as
including “a sheet of insulating material used for the mounting and
interconnection (often by a printed circuit) of components in electronic
equipment”) (id. (citing hftp://www.dictionary.com/browse/circuit-board).
ICON Health, 496 F.3d at 1379 (“[W]e look to the specification to see if it
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Application 13/185,583
provides a definition for claim terms, but otherwise apply a broad
interpretation. ”))).
Under the broadest reasonable interpretation consistent with the
Specification, as offered by the Examiner, we share the Examiner’s finding
that McGalliard’s dual in-line fuse element 260 itself, as shown in Figure 12,
is a “circuit board” as recited broadly in claim 1. Consistent with its
ordinary meaning, fuse element 260 includes a substrate board 262 with
electronic components, such as printed fused circuit 272, formed on it (col.
15.11. 3—7). Moreover, as acknowledged by the Appellants (Appeal Br. 9),
McGalliard’s fuse element 260 may be incorporated into a circuit board in a
manner similar to that as shown in Figure 6 and, in that instance, the entire
assembly can be considered a “circuit board.” Indeed, McGalliard explicitly
describes forming fuse elements directly on a printed circuit board (e.g., col.
2.11. 41—44; col. 4,11. 22-32).
Accordingly, we find no basis to overturn the Examiner’s rejection on
the basis of the “circuit board” limitation.
2. The “a slot in the substrate defining a peninsula element”
limitation
Referring to the Examiner’s annotated Figure 12 (Final Act. 3), the
Appellants argue that “the Examiner has identified a piece of a fuse as the
peninsula region that, at best, might be described as defined by the outer
dimensions of the substrate including two slots (264)” (Appeal Br. 8).
According to the Appellants, “[t]his is completely different from the claimed
limitation of a slot in the substrate defining a peninsula region in a circuit
board” (Appeal Br. 8).
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Application 13/185,583
We disagree for the reasons well-stated by the Examiner (Ans. 3—4).
Specifically, McGalliard’s Figure 12, as annotated by the Examiner, is
reproduced below:
Annotated Figure 12 above depicts fuse element 260 including a substrate
board 262, the contours of which are defined partially by slots 264
(McGalliard, col. 14,11. 65—68).
The Examiner found that the grayed out region of substrate 262 in
annotated Figure 12 constitutes a “peninsula element” (Final Act. 3).
Although the Appellants contend that this is “completely different from the
claimed limitation” (Appeal Br. 8), their arguments are devoid of any
meaningful explanation on why the grayed out region cannot be considered a
“peninsula element” as recited in the claim. Again, the Appellants do not
direct us to any special definition for “defining” or “peninsula element” that
would serve to distinguish claim 1 over McGalliard (see, e.g., Reply Brief
filed February 24, 2015 at 2). Under the broadest reasonable interpretation
consistent with the Specification, we find no error in the Examiner’s
determination that any projection, such as that indicated by the grayed out
region, may be considered a “peninsula element.” McGalliard’s slots 264
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Application 13/185,583
define—at least partially—the contours of the grayed out projection.
Because claim 1 does not require a “slot” to fully define the “peninsula
element,” we find that the grayed out region in the annotated figure can
reasonably be considered as disclosing “a slot in the substrate defining a
peninsula element” as required by claim 1.
3. The “fuse region in the peninsula element, between the junction
and the power input connector, that evanesces with heat in
response to arc tracking along the electrical trace to the power
input connector to electrically open the power input connector
relative to the electrical trace ” limitation
The Appellants contend that “[t]he peninsula also provides for arc
tracking protection because, when it evanesces, it has a surrounding air gap
from the rest of the circuit board, which protects the rest of the substrate”
and that “[n]o special circuitry is used for [the] Appellants’ fuse” (Appeal
Br. 9). The Appellants argue that McGalliard, by contrast, teaches
“traditional fuse circuitry” and that “[sjimply put there is no teaching in
McGalliard . . . that a region of the peninsula element (a portion of the
substrate defined by the slot) will evanesce with heat in response to arc
tracking” (Appeal Br. 10).
We find no merit in the Appellants’ argument. McGalliard explicitly
teaches that when current passes through the fuse element and the current
exceeds the fuse element’s rated value, the generated heat causes the neck of
the fuse element to bum out or vaporize (col. 5,11. 30—37; col. 15,11. 16—18).
Therefore, it would reasonably appear that McGalliard’s fuse elements
would evanesce with heat in the event arc tracking occurs. The Appellants
offer no evidence to the contrary. In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
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Application 13/185,583
Because the Appellants’ arguments do not identify a reversible error
in the Examiner’s anticipation finding as to claim 1, we uphold Rejection I.
II. Obviousness in View of McGalliard
The Appellants appear to be relying on the alleged differences
between claim 1 and McGalliard to argue that the Examiner failed to
ascertain the differences between the claimed subject matter and the prior
art, as required under 35 U.S.C. § 103(a) (Appeal Br. 18—20). Because we
disagree with the Appellants that claim 1 differs from McGalliard for the
reasons discussed above, we find the Appellants’ argument unpersuasive.
III. Anticipation by Still
We agree with the Appellants that the Examiner failed to establish a
prima facie case of anticipation (Appeal Br. 14—18). In particular, we find
that the Examiner failed to show that Still describes, either explicitly or
inherently, a fuse region that evanesces, or would evanesce, with heat in
response to arc tracking. The Examiner states that “[tjhis is an inherited
[sic] function of [Still’s] fuse region, since it [is] designed to bum out (open)
in order to protect the electrical circuit connected thereto” (Ans. 11). But the
Examiner failed to direct us to any disclosure in Still, or sufficient technical
reasoning, to establish that Still’s fusible conductor 8 as shown in Figure 3
would necessarily evanesce in the event of arc tracking.
Therefore, we cannot uphold Rejection III.
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Application 13/185,583
SUMMARY
Rejections I and II are affirmed. Rejection III is reversed. Therefore,
the Examiner’s final decision to reject claims 1—17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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