Ex Parte Smith

Patent Trial and Appeal BoardMar 14, 2017

12924773 (P.T.A.B. Mar. 14, 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. 12/924,773 10/04/2010 Lawrence Smith 302-211.145 4656 4955 7590 03/16/2017 WARE, FRESSOLA, MAGUIRE & BARBER LLP BRADFORD GREEN, BUILDING 5 755 MAIN STREET MONROE, CT 06468 EXAMINER BYRD, EUGENE G ART UNIT PAPER NUMBER 3675 NOTIFICATION DATE DELIVERY MODE 03/16/2017 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): mail @ warefressola. com uspatents @ warefressola. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAWRENCE SMITH Appeal 2014-006361 Application 12/924,7731 Technology Center 3600 Before MICHAEL W. KIM, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’ decision rejecting claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appellant identifies Bridgeport Fittings, Inc. as the real party in interest. Appeal Br. 3. Appeal 2014-006361 Application 12/924,773 ILLUSTRATIVE CLAIM 1. A sealing reducing washer comprising: - a metallic reducing washer having a front surface, a rear surface, an outer periphery, and an inner periphery having a diameter, wherein the metallic reducing washer is substantially planar and wherein the rear surface is displaced downwardly in a region adjacent the inner periphery; - a pliable rim secured over the outer periphery of the metallic reducing washer, a portion of the rim circumferentially depending below the rear surface of the metallic reducing washer adjacent the outer periphery of the metallic reducing washer so as to form a weathertight seal against a surface of an electrical enclosure when the sealing reducing washer is secured to the enclosure, wherein the pliable rim is configured to deform radially outwardly when the sealing reducing washer is secured to the enclosure, thereby allowing the rear surface of the metallic reducing washer to come into contact with the surface of the electrical enclosure; and - a pliable toroid having a central opening, the pliable toroid circumferentially secured adjacent the inner periphery of the metallic reducing washer and extending circumferentially above the front surface of the metallic reducing washer in the region adjacent the inner periphery of the metallic reducing washer, the toroid having a periphery that extends radially inward relative to the inner periphery of the metallic reducing washer so as to have a minimum inside diameter less than the diameter of the inner periphery of the metallic reducing washer, the toroid dimensioned to form a weathertight seal with threads of an electrical conduit or an outer surface of an electrical raceway when the electrical conduit/electrical raceway is positioned through the central opening of the pliable toroid and the sealing reducing washer is secured to the electrical enclosure. 2 Appeal 2014-006361 Application 12/924,773 REJECTION Claims 1—17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wilder (US 2,834,998, iss. May 20, 1958) and Smith (US 5,020,951, iss. June 4, 1991). FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Independent claim 1 recites, among other features, a “pliable rim” that is “secured over the outer periphery of the metallic reducing washer” and includes (emphasis added): a portion of the rim circumferentially depending below the rear surface of the metallic reducing washer adjacent the outer periphery of the metallic reducing washer so as to form a weathertight seal against a surface of an electrical enclosure when the sealing reducing washer is secured to the enclosure, wherein the pliable rim is configured to deform radially outwardly when the sealing reducing washer is secured to the enclosure, thereby allowing the rear surface of the metallic reducing washer to come into contact with the surface of the electrical enclosure. The Final Office Action (pages 2—3) states that Wilder’s annular lip 23 (see Wilder, Fig. 4) satisfies the requirements of the claimed “pliable rim.” Specifically, Wilder’s annular lip 23 is characterized as “depending below the rear surface” of element 18 (described in Wilder, col. 4,1. 46 as a “dished or concave, hard, rigid metallic lamina”), “form[ing] a . . . seal against” bolt 26, and “allowing the rear surface of’ element 18 “to come into contact with the surface of’ the mounting and attachment unit 15. Final Action 2—3 (citing Wilder, Fig. 4, col. 5,11. 4—9, 10—14, col. 6,11. 54—65). 3 Appeal 2014-006361 Application 12/924,773 Contending that the rejection of claim 1 is erroneous, the Appellant argues that the Examiner’s mapping of claimed features to Wilder fails to show any “portion” of Wilder’s annular lip 23 that both “depend[s] below the rear surface” of element 18 and “form[s] a . . . seal against” bolt 26, because no portion of Wilder’s annular lip 23 comes in contact with bolt 26. Appeal Br. 10. In response, the Answer states that Wilder’s attachment unit 15 includes bolt 26 and panel 12, the latter of which is in contact with (and, thus, can “form a . . . seal against,” per claim 1) a portion of annular lip 23. Answer 4. Further, the Answer states that this portion of annular lip 23 “depend[s] below the rear surface of the metallic reducing washer,” as in claim 1, because the downward-facing side of Wilder’s flange 21 of element 18 (labeled 22a, in the Answer’s annotated version of Wilder’s Figure 4) may be regarded as the claimed “rear surface of the metallic reducing washer.” Id. Yet, as the Appellant point out (see Appeal Br. 10 n.2), a mapping such as the Answer provides does not meet claim 1 ’s requirement of “allowing the rear surface of the metallic reducing washer to come into contact with the surface of the electrical enclosure.” Indeed, under the approach articulated in the Answer, the underside of Wilder’s flange 21 — which is said to correspond to the claimed “rear surface of the metallic reducing washer” (see Answer 4) — cannot “come into contact with” any surface that might be said to correspond to the claimed “surface of the electrical enclosure.” Rather, the underside of Wilder’s flange 21 contacts only the elastomeric structure that forms annular lip 23. See Wilder, Figs. 3^4. 4 Appeal 2014-006361 Application 12/924,773 With regard to the dependent claims, there is also no explanation provided of how the insufficiency of Wilder might be overcome. Accordingly, the rejection of claims 1—17 under 35 U.S.C. § 103(a) is not sustained. DECISION We REVERSE the Examiner’s decision rejecting claims 1—17 under 35 U.S.C. § 103(a). REVERSED 5