Ex Parte Herring et al

Patent Trials and Appeals BoardMay 27, 2014

12149924 - (D) (P.T.A.B. May. 27, 2014)

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. 12/149,924 05/09/2008 Nathaniel L. Herring 53719 2191 120225 7590 05/28/2014 Roylance, Abrams, Berdo & Goodman, L.L.P. -Hubbell 1300 19th Street, N.W. Suite 600 Washington, DC 20036 EXAMINER NGO, HUNG V ART UNIT PAPER NUMBER 2846 MAIL DATE DELIVERY MODE 05/28/2014 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 NATHANIEL L. HERRING, JOHN E. LAMOREUX, and BRIAN T. MARTINO ____________ Appeal 2012-005608 Application 12/149,924 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-10. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appellants’ invention is directed to an “enclosure box with removable sides or panels interchangeable with customized panels preferably having knockouts and/or louvers” (Spec. para. [0002]). Appeal 2012-005608 Application 12/149,924 2 Claim 1 is illustrative: 1. An enclosure for electrical devices comprising: a housing having an internal cavity for receipt of the electrical devices; a first opening in said housing; a first set of interchangeable panels; and said first set of interchangeable panels including at least two panels having different configurations and selectively engageable with said housing to substantially close said first opening, wherein at least one of said at least two panels includes a solid surface. Appellants appeal the following rejections: 1. Claim 1 is rejected under 35 U.S.C. § 102(b) as being unpatentable over Chang (US 5,542,757, patented Aug. 6, 1996). 2. Claim 1 is rejected under 35 U.S.C. § 102(b) as being unpatentable over Mazura (US 5,297,004, patented Mar. 22, 1994). 3. Claims 2-5 and 7-9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mazura. 4. Claims 6 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mazura in view Feeney (US 5,345,779, patented Sept. 13, 1994). REJECTION (1) ISSUE Did the Examiner reversibly err in finding that Chang discloses interchangeable panels with different configurations with one panel having a solid surface as required by the subject matter of claim 1? We decide this issue in the negative. Appeal 2012-005608 Application 12/149,924 3 FINDINGS OF FACT AND ANALYSES The Examiner’s findings regarding Chang are located on pages 4-5 and 7-9 of the Answer. Appellants argue that Chang fails to teach interchangeable panels of differing configuration and wherein at least one of the panels includes a solid surface (App. Br. 9-12). Appellants contend that interchangeable means in the context of the Specification that the panels are used in place of, and to the exclusion of, the other panel(s) in the set (App. Br. 11). Appellants submit a definition of interchangeable in the Appendix of their Brief as meaning “to put each in the place of the other” or “to cause (one thing) to change places with another” (Evid. App’x). Appellants further contend that solid surface within the meaning of the Specification means a surface without any knockouts or louvers (App. Br. 11-12). Appellants contend that Chang’s panels 20, 20a, and 30 have air vents 22 and 32, which do not constitute a solid surface within the meaning of the claim (App. Br. 12). Contrary to Appellants’ arguments, the Examiner correctly finds that Chang teaches that panels 20 and 30 include hooks 21 that engage vertical retaining grooves 12 (Ans. 8). Though Appellants contend that Chang requires the partition panel 30 be placed below panel board 20 (Reply Br. 4- 5), we agree with the Examiner that Chang’s vertical retaining grooves 12 that engage the hooks 21 of the panel permit the panels to be placed anywhere along grooves 12. Therefore, Chang structure is capable of interchanging the positions of panels 20 and 30. Appeal 2012-005608 Application 12/149,924 4 Regarding Appellants’ argument that “solid surface” means that no louvers or knockouts are formed on the panel, we find that the claim merely requires that at least one of the panels “includes a solid surface.” The claim does not recite that the entire surface of the panel is a solid surface free of knockouts, louvers or other openings. Moreover, paragraph 10 of the Specification appears to undermine Appellants’ argument. Paragraph 10 discloses that the “panels can be solid or include apertures such as knockouts, louvers, or a combination thereof.” We understand such disclosure to mean that the panel may include solid areas, louvers and knockouts. While paragraph 35 may describe the solid surface of panel 28 as being without knockouts or louvers, this description is limited to a “first embodiment” and does not undermine the apparent broader disclosure that includes panels with combinations of solid portions, louvers and knockouts. On this record, we affirm the Examiner’s § 102(b) rejection over Chang. REJECTIONS (2) TO (4) Appellants argue that Mazura fails to teach interchangeable panels because cover plate 5 cannot be used to the exclusion of louver plate 8 because cover plate 5 is nested onto the hooks 12 and spring clamps 13 of louver plate 8 prior to insertion in ventilation openings 4 (App. Br. 13). Appellants contend that interchangeable is defined as placing a thing in the place of another (App. Br. 14). We agree with Appellants’ argument of novelty and nonobviousness over Mazura. Mazura’s louver plate 8 and cover plate 5 are not interchangeable within the meaning of the claims. Cover plate 5 cannot be Appeal 2012-005608 Application 12/149,924 5 placed in place of louver plate 8 because louver plate 8 is required to hold cover plate 5 in position. Therefore, we reverse the Examiner’s § 102 rejection over Mazura. Because the Examiner relies only on Mazura to teach interchangeable panels without any obviousness analysis regarding the claimed subject matter that includes the interchangeable panels, we further reverse the Examiner’s § 103 rejection over Mazura. In the Examiner’s § 103 rejection over Mazura in view of Feeney, the Examiner does not rely on Feeney to address the missing interchangeable panels limitation. We further reverse the Examiner’s § 103 rejection over Mazura and Feeney. DECISION The Examiner’s decision is affirmed-in-part. 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)(iv). ORDER AFFIRMED-IN-PART cdc