Ex Parte REUBER et al

Patent Trial and Appeal BoardApr 29, 2016

13447910 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/447,910 134603 ABB 7590 FILING DATE 04/16/2012 05/03/2016 C/O Buchanan Ingersoll & Rooney PC 1737 King Street, Suite 500 Alexandria, VA 22314 FIRST NAMED INVENTOR Christian REUBER 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. 0070996-000186 4122 EXAMINER TALPALATSKI, ALEXANDER ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 05/03/2016 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): ADIPDOC 1@BIPC.com stacy.shaw@bipc.com deborah.thodos@bipc.com PTOL-90A (Rev. 04/07) L11'-~ITED ST ATES PATENT AND TRADE~'v1ARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN REUBER, DIETMAR GENTSCH, and PHILIPP MAS MEIER 1 Appeal2014-007458 Application 13/447,910 Technology Center 2800 Before GEORGE C. BEST, CHRISTOPHER L. OGDEN, and JULIA HEANEY, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1---6, 8-14, and 16-18 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is ABB Technology AG. Appeal Br. 2. Appeal2014-007458 Application 13/447,910 BACKGROUND Appellants' invention relates to "a pole part of a circuit-breaker for switching medium-voltage to high-voltage circuits." Spec. i-f 2. An embodiment as shown in Appellants' Drawing is reproduced below: The Drawing shows "a schematic side view of a medium-voltage circuit- breaker actuated by a bistable electromagnetic actuator for operating a corresponding pole part." Id. at i-f 16. 2 Appeal2014-007458 Application 13/447,910 Sole independent claim 1 is representative: 1. A pole part [ 1] of a circuit-breaker for switching medium-voltage to high-voltage circuits, the pole part compnsmg: a cup-shaped housing [ 4] made of insulating material for accommodating an interrupter insert [3] operated by a drive rod [12], wherein the cup-shaped housing is divided into an upper housing part [5] in which the interrupter insert [3] is arranged, and a lower housing part [ 6] for accommodating a magnetic actuator [2], and wherein the drive rod [12] of the interrupter insert [3] is coaxially arranged to an armature [13] of the magnetic actuator [2], and wherein the magnetic actuator [2] comprises an outside screw thread [ 17] which corresponds to an inside screw thread in an opening area of the cup-shaped housing [4]. Appeal Br. Claims Appendix 1 (emphasis and reference numbers to the Drawing added); see also Appeal Br. 9-10 (reference list). The Examiner maintains the following grounds of rejection: I. Claims 1---6, 8-11, 13-14, and 16-18 under 35 U.S.C. Â§ 103(a) as unpatentable over U.S. Patent No. 6,794,596 B2 [hereinafter Rhein] (issued Sept. 21, 2004) in view of U.S. Patent No. 5,050,840 [hereinafter Kondo] (issued Sept. 24, 1991). Final Action 2--4; see also Answer 2. II. Claim 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Rhein in view of Kondo, and further in view of U.S. Patent No. 7,425,687 B2 [hereinafter Morita] (issued Sept. 16, 2008). Final Action 4; see also Answer 2. 3 Appeal2014-007458 Application 13/447,910 DISCUSSION Claims 1, 2, 9-12, and 16--18 The Examiner cites Rein as the primary reference for rejecting claim 1, but finds that Rein does not teach a screw interface. Final Action 2-3. However, the Examiner finds that Kondo teaches a screw interface between an actuator and a housing. See id. at 3 (citing Kondo Figs. 1-18); see also Answer 2 (citing Kondo 4:5-10). Kondo's Figure 1 is reproduced below: """'6 â€¢ f"f T. ! Figure 1 depicts "a longitudinal section of a solenoid valve." Kondo 2:65. According to the Examiner, the outside and inside screw threads of claim 1 are items 13 and 13a in Kondo's Figure 1, the electromagnetic actuator is item A, and the cup-shaped housing is item B. See Answer 2; see also Final Action 3. The Examiner further finds that it would have been obvious to one of ordinary skill in the art at the time the invention was made to have used a screw type interface between the housing and the actuator as taught by 4 Appeal2014-007458 Application 13/447,910 Kondo in the device of Rhein in order to provide a more precise and secure positioning for the actuator. Final Action 3. Appellants argue that "the present disclosure provides a special integration of the magnetic actuator into pole part 1." Reply Br. 2. Appellants argue that the benefits of the design include that "there is no need for separate housing," and "[ d]ue to the compact design, the number of parts is strongly reduced and the assembling time is significantly shorter." Reply Br. 2 (citing Spec. i-f 20). Appellants argue that in Kondo, "in contrast to claim 1, the stationary core 7 is not screwed into an inside screw thread in an opening area of the valve body B. On the contrary, the stationary core 7 is screwed into an external area proximate to the spool returning spring 4." Appeal Br. 5. Thus, according to Appellants, "Kondo does not cure the deficiencies of Rhein for failing to disclose or suggest the feature of a magnetic actuator comprising an outside screw thread which corresponds to an inside screw thread in an opening area of the cup-shaped housing, as recited in claim 1." Id. We are not persuaded that the Examiner reversibly erred in determining that Kondo describes a part of an actuator 7 that has an outside screw thread 13 which corresponds to an inside screw thread 13a in an opening area of a cup shaped housing B. Appellants do not explain why the presence of spool returning spring 4 negates the Examiner's findings. Appellants also do not explain on what basis a distinction may be made between an "external area," as Appellants describe the area encompassed by threads 13a, and an "opening area" as required by claim 1. In Appellants' Drawing, the screw threads 17 are similarly situated near an opening to the exterior to the housing. See Spec. i-f 31 ("The lower plunger 19 is visible 5 Appeal2014-007458 Application 13/447,910 from outside in order to indicate the current position of the armature 13 which corresponds with the switching position of the circuit breaker.") For the above reasons, we determine that the evidence of obviousness of claim 1, on balance, outweighs the evidence of nonobviousness relied upon by Appellants, and we affirm the Examiner's decision to reject claim 1. Because appellants offer no distinct arguments for reversing the Examiner's decision to reject claims 2, 9-12, and 16-18, which depend directly or indirectly from claim 1, we affirm the Examiner's decision to reject claims 1, 2, 9-12, and 16-18. Claims 3-5and13-14 The Examiner determines that claims 3-5 are product-by-process claims, and that the process limitations (a casting process for claim 3 and a screwing process for claims 4 and 5) are entitled to no patentable weight. See Final Action 3; Answer 2. Claim 3 contains the limitation "wherein the axis rod [ 14] is casted into a lower end of an insulating material of the drive rod [12]." Appeal Br. Claims Appendix 1 (emphasis and reference numbers to the Drawing added). We determine that the term casted into in the context of claim 1 is properly construed as a structural limitation. See In re Garnero, 412 F.2d 27 6, 279 (CCP A 1979) (holding the term inter bonded by interfusion to limit structure, and noting that prior cases had construed terms such as welded, intermixed, ground in place, press fitted, and etched as structural limitations). Because the Examiner has made no findings sufficient to establish that claim 3 would have been obvious to one of ordinary skill in the art, we reverse the Examiner's decision to reject claim 3. Because the Examiner's additional findings regarding claim 13, which depends from 6 Appeal2014-007458 Application 13/447,910 claim 3, do not address the deficiencies addressed above, we likewise reverse the Examiner's decision to reject claim 13. Claim 4 contains the limitation "an axis rod configured to be screwed in the drive rod to attach the armature adjustable relative to the interrupter insert." Appeal Br. Claims Appendix 2 (emphasis added). We determine that the phrase "configured to be screwed in" is a limitation on structure, and entitled to patentable weight. The Examiner states that "a screwing process is already taught in Rhein." Answer 2 (citing Rhein 7:55---60). However, Rhein describes an axis rod 60 connected to a drive rod 34 via an intermediate adapter 96. See Rhein 7:55-60. Rhein, therefore, does not describe an axis rod "configured to be screwed in the drive rod." Because the Examiner has not established that claim 4 would have been obvious in view of the prior art, we reverse the Examiner's decision to reject claim 4. Because the Examiner's additional findings regarding claims 5 and 14, which depend directly or indirectly from claim 4, do not address the deficiencies addressed above, we likewise reverse the Examiner's dec1s10n to reject claims 5 and 14. Claim 6 Claim 6 contains the limitation "wherein the magnetic actuator [2] is placed directly below the interrupter insert [3] in an opening area of the cup- shaped housing [1]." Appeal Br. Claims Appendix 1 (emphasis and reference numbers to the Drawing added). The Examiner finds that Rhein teaches that the actuator 20 is placed directly below the interrupter insert 18. Answer 3. The Examiner interprets the term below "to be an arbitrary one since the orientation of the device is based on design choice and/ or can change if positioned in a moving vehicle for example." Id. 7 Appeal2014-007458 Application 13/447,910 Appellants argue that "[Rhein ]2 discloses that adapter 96 is positioned between the first part 60 of the shaft 58 and the movable contact 34," and therefore the magnetic actuator is not placed "directly" below the interrupter insert within the opening area of the cup-shaped housing. Appeal Br. 6. The Examiner does not directly respond to this argument, apparently mistaking Appellants' argument as being directed to Kondo. See Answer 3. We give claim terms "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, 211F.3d1367, 1372 (Fed. Cir. 2000). The Specification states that in one embodiment, "the magnetic actuator is placed directly below the interrupter insert in the opening area of the cup shaped housing. Therefore, there is no need for additional mechanical linkage." Spec. i-f 22 (emphasis added). The word additional appears to refer to one of the means described in the previous paragraph of connecting the axis rod of the actuator to the drive rod of the interrupt insert inside the cup-shaped housing, by casting the two parts together or screwing them directly together with an optional locking means. Id. at i-f 21. The term mechanical linkage thus appears to refer broadly to means of joining together mechanical parts. Therefore, the broadest reasonable interpretation of the phrase directly below, consistent with the Specification, excludes the presence of a joining adapter linking the mechanical parts of the actuator to the mechanical parts of the interrupt insert inside the cup-shaped housing, such as the adapter 96 described by Rhein. Because the Examiner reversibly 2 Although Appellants cite Kondo, it is clear from the context, citation, and reference numbers that the argument is directed to an embodiment in Rhein. 8 Appeal2014-007458 Application 13/447,910 erred in interpreting the phrase directly below in light of the Specification, we reverse the Examiner's decision to reject claim 6. DECISION The Examiner's decision rejecting claims 1, 2, 9-12, and 16-18 is affirmed. The Examiner's decision rejecting claims 3---6, 13, and 14 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 9