Ex Parte McCoy et al

Patent Trial and Appeal BoardMar 28, 2014

11796995 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/796,995 04/30/2007 Brian Timothy McCoy 2006P08747US01 4729 28524 7590 03/31/2014 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER TALPALATSKI, ALEXANDER ART UNIT PAPER NUMBER 2837 MAIL DATE DELIVERY MODE 03/31/2014 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 BRIAN TIMOTHY MCCOY and THOMAS WILLIAM HOLLAND ________________ Appeal 2012-000614 Application 11/796,995 Technology Center 2800 ________________ Before TERRY J. OWENS, PETER F. KRATZ, and BEVERLY A. FRANKLIN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000614 Application 11/796,995 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-5 and 7-15. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claims a system for shunting a circuit breaker. Claim 1 is illustrative: 1. A system comprising: a bimetal restraint adapted to restrain a bimetal of a circuit breaker from deformation beyond a predetermined threshold during a short circuit event, said bimetal restraint adapted to act as a shunt during said short circuit event to transfer electrical energy from an electrical energy source to a load side lug of said circuit breaker, said bimetal restraint not attached to a cover of said circuit breaker and said bimetal restraint releasably seated in a circuit breaker case of said circuit breaker. The Reference Lias US 6,515,569 B2 Feb. 4, 2003 The Rejection Claims 1-5 and 7-15 stand rejected under 35 U.S.C. § 102(b) over Lias. OPINION We reverse the rejection. We need to address only the sole independent claim, i.e., claim 1. That claim requires a bimetal restraint releasably seated in a circuit breaker case. Appeal 2012-000614 Application 11/796,995 3 “‘[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.’” In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ Specification defines “releasably” as “capable of being freed, in a substantially non-destructive manner, from something that binds, fastens, or holds back” (Spec. ¶ 108). Lias discloses a circuit breaker (1) comprising an electrically insulating housing (3) and, within the housing (3), a metal bypass conductor (101) (which the Examiner relies upon as corresponding to the Appellants’ bimetal restraint (Ans. 4)) (col. 3, ll. 47-48; col. 5, ll. 44-45; Fig. 1). The Examiner argues that because Lias’ “case (3) made of insulating material and a bimetal restraint (101) made of conductive metal (see lines 44-45 of column 5 of the specification) . . . are made of different materials and are clearly shown in the drawings as two separate structures, they are inherently capable of being separated and therefore the bimetal restraint (101) is releasably seated in the circuit breaker case (3)” (Ans. 6-7). An inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). The Examiner has not established that Lias’ bypass conductor (101) inevitably is capable of being freed, in a substantially non-destructive manner, from within the circuit breaker housing (3). The Examiner’s mere assertion that Lias’ bypass conductor (101) is “capable of being freed in a Appeal 2012-000614 Application 11/796,995 4 substantially non-destructive manner from the circuit breaker case due to the fact that these elements comprise completely distinct physical structures” (Ans. 7) is not sufficient for establishing that the bypass conductor (101) inevitably can be unseated from within the circuit breaker housing (3) in that manner. Accordingly, we reverse the rejection. DECISION/ORDER The rejection of claims 1-5 and 7-15 under 35 U.S.C. § 102(b) over Lias is reversed. It is ordered that the Examiner’s decision is reversed. REVERSED kmm