Michael GzybowskiDownload PDFPatent Trials and Appeals BoardNov 5, 20202020000591 (P.T.A.B. Nov. 5, 2020) Copy Citation 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. 15/888,805 02/05/2018 Michael S. Gzybowski 5856 7590 11/05/2020 Michael S. Gzybowski 832 Earhart Road Ann Arbor, MI 48105 EXAMINER PATEL, HARSHAD C ART UNIT PAPER NUMBER 2831 MAIL DATE DELIVERY MODE 11/05/2020 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 MICHAEL S. GZYBOWSKI ____________ Appeal 2020-000591 Application 15/888,805 Technology Center 2800 ____________ Before CHRISTOPHER C. KENNEDY, SHELDON M. MCGEE and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–20.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the inventor, Michael S. Gzybowski, as the real party in interest. Corrected Appeal Brief filed July 18, 2019 (“Appeal Br.”) at 1. 2 Final Office Action entered December 20, 2018 (“Final Act.”) at 1. Appeal 2020-000591 Application 15/888,805 2 CLAIMED SUBJECT MATTER Appellant claims a modular two-prong polarized electrical plug (independent claim 1), a modular polarized electrical plug adaptor (independent claim 7), and a kit for marking the top of a two-prong polarized electrical plug (independent claim 13). Appeal Br. 2–4. Claims 1 and 7 illustrate the subject matter on appeal, and read as follows: 1. A modular two-prong polarized electrical plug that provides visual confirmation of proper orientation with respect to a wall mounted polarized electrical receptacle or outlet before and after the modular two-prong polarized electrical plug is plugged into the wall mounted polarized electrical receptacle or outlet which comprises: a plug housing having a top and a bottom and a front face; an electrically conductive polarized prong or blade that extends outward from front face of the plug housing; an electrically conductive non-polarized prong or blade that extends outward from the front face of the plug housing; indicia module receiving structures provided on both the top and bottom of the plug housing; and an indicia module having an indicia element provided thereon, wherein the indicia[l] module is configured to be attached to one of either of the indicia module receiving structures provided on the top and bottom of the plug housing. 7. A modular polarized electrical plug adaptor configured to be coupled to a polarized two-prong electrical plug, wherein the polarized electrical plug adaptor provides for visual confirmation of proper orientation with respect to a wall mounted polarized electrical receptacle or outlet before and after the modular polarized electrical plug adaptor is plugged into the wall mounted polarized electrical receptacle or outlet, the polarized electrical plug adaptor comprises: a body having a top and a bottom and a front and a back; Appeal 2020-000591 Application 15/888,805 3 an electrically conductive polarized prong or blade that extends outward from the front of the body; an electrically conductive non-polarized prong or blade that extends outward from the front of the body; a polarized socket provided in the back of the body; a non-polarized socket provided in the back of the body, said polarized socket and non-polarized socket being configured to receive a two-prong polarized electrical plug therein; electrical conductive elements within the body that connect the polarized socket to the polarized prong or blade and connect the non-polarized socket to the non-polarized prong or blade; indicia module receiving structures provided on both the top and bottom of the body; and an indicia module having an indicia element provided thereon which indicia module is configured to be attached to one of either of the indicia module receiving structures provided on the top and bottom of the body. Appeal Br. 27–29 (Claims Appendix) (emphasis and spacing added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered September 5, 2019 (“Ans.”): I. Claims 1–6 and 13–20 under 35 U.S.C. § 103 as unpatentable over Friedman3 in view of Siemon4 or Worrell;5 and II. Claims 7–12 under 35 U.S.C. § 103 as unpatentable over Lee6 3 Friedman, US 4,861,288, issued August 29, 1989. 4 Siemon, US 5,620,335, issued April 15, 1997. 5 Worrell, GB 2,045,546 A, published October 29, 1980. 6 Lee, US 2012/0045926 A1, published February 23, 2012. Appeal 2020-000591 Application 15/888,805 4 in view of Friedman and Siemon or Worrell.7 FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s timely contentions,8 we affirm the Examiner’s rejection of claims 1–6 and 13–20 under 35 U.S.C. § 103 for the reasons set forth in the Final Action, the Answer, and below, and we reverse the Examiner’s rejection of claims 7–12 under 35 U.S.C. § 103 for the reasons set forth in the Appeal and Reply briefs, and below. We review appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue the Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). Rejection I We first address the Examiner’s rejection of claims 1–6 and 13–20 under 35 U.S.C. § 103 as unpatentable over Friedman in view of Siemon or 7 Like the rejection of claims 1–6 and 13–20 (Rejection I), the Examiner appears to rely on Siemon and Worrell in the alternative in the rejection of claim 7–12 (Rejection II). Final Act. 9–12. 8 We do not consider any new argument Appellant presents in the Reply Brief that Appellant could have presented in the Appeal Brief. 37 C.F.R. § 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first time in the Reply Brief that could have been raised in the Appeal Brief will not be considered by the Board unless good cause is shown). Appeal 2020-000591 Application 15/888,805 5 Worrell. Appellant presents arguments for this rejection that are not directed to any particular claim, but are based on subject matter recited in claim 1. Appeal Br. 5–21. We, therefore, select claim 1 as representative, and decide the appeal as to claims 1–6 and 13–20 based on claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 recites a modular two-prong polarized electrical plug that comprises, in part, a plug housing, indicia module receiving structures provided on the top and bottom of the plug housing, and an indicia module on which an indicia element is provided that is configured to be attached to one of the indicia module receiving structures. Friedman discloses a two-prong cordset that includes plug member 10 (plug housing) having a front face and a back face, first and second terminals 18 (prongs) extending outward from the front face, cord 14 extending outward from the back face and into the back of connector member 12. Friedman col. 2, ll. 3–8; Fig. 2. Friedman discloses that connector member 12 has a front face that includes first and second receptacles 16. Id. Figure 2 of Friedman shows that the first and second terminals 18 (prongs) have different shapes and sizes, and shows that the first and second receptacles 16 also have different shapes and sizes. One of ordinary skill in the art would have understood from these disclosures in Friedman that plug member 10 (plug housing) is polarized due to the different shapes and sizes of first and second terminals 18 (prongs). One of ordinary skill in the art would have further understood that terminals 18 (prongs) are designed to plug into a polarized electrical outlet, while receptacles 16 are designed to receive prongs from the plug of an electrical Appeal 2020-000591 Application 15/888,805 6 device or appliance, such that Friedman’s cordset is designed to function as an extension cord to indirectly connect the plug of an electrical device or appliance to a polarized electrical outlet. The Examiner finds that Friedman does not disclose that the top and bottom of plug member 10 (plug housing) include indicia module receiving structures, and does not disclose an indicia module including an indicia element configured to be attached to one of the indicia module receiving structures. Final Act. 3. The Examiner relies on Siemon or Worrell for suggesting inclusion of such features in Friedman’s plug member 10 (plug housing). Final Act. 3–4. Siemon discloses that telecommunication consoles include numerous jacks for receiving cables connected to different devices or pieces of equipment. Siemon col. 1, ll. 17–27. Siemon discloses that because a multiplicity of cables are usually associated with a single telecommunication console, it is difficult to determine the type of device or equipment being connected to each jack in the console. Id. Siemon addresses this problem by providing strain relief boot 70 disposed on plug 84 of a telecommunications cable having top and bottom recesses for receiving and retaining inserts 76, 76’, which each include an icon. Siemon col. 1, ll. 43– 48; col. 4, ll. 7–12; Fig. 10. Siemon discloses that the icon may be a symbol or wording, or may be color coded, and may allow identification (at the location of the plug) of the device or equipment to which the telecommunications cable is attached. Siemon col. 1, ll. 7–9, 60–64. Figure 5A of Siemon illustrates a computer terminal icon and Figure 5B illustrates a telephone icon, while Figure 10 of Siemon illustrates an arrow icon. Siemon col. 3, ll. 8–15. Appeal 2020-000591 Application 15/888,805 7 Worrell discloses that a single power supply point or socket is often used for multiple electric appliances, but “it may not be possible or convenient for all the appliances which may need a current supply from a particular power point to be permanently connected thereto by means of their plugs.” Worrell p. 1, ll. 5–16. Worrell discloses that, consequently, “care has to be taken to identify correctly the . . . plug which has to be inserted in a socket in order that a selected appliance may be used.” Worrell p. 1, ll. 18–21. To facilitate such identification, Worrell discloses a plug for an electric appliance that includes a recess on an outward face for receiving and displaying a label that indicates the appliance to which the plug is connected. Worrell p. 1, ll. 29–36, 42–53; Fig. 1. Worrell discloses that the “intention is that a plug of this kind with a suitably appropriate identifying label would be attached to the electrical lead of each of a collection of appliances in order positively to identify the appliance which is being connected or is connected to a power point at any particular time without the necessity for tracing backwards from the plug along the electrical lead to the appliance.” Worrell p. 1, ll. 54–62. In view of these disclosures in Siemon or Worrell, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify the top and bottom surfaces of plug member 10 (plug housing) of Friedman’s cordset to include recesses (indicia module receiving structures) for receiving an icon or label (indicia module having an indicia element provided thereon) to allow identification of the device or appliance to which Friedman’s cordset is attached “so as to provide a visual confirmation of proper orientation with respect to a polarized electrical receptacle or outlet before and after being plugged into the outlet.” Final Act. 3–4. Appeal 2020-000591 Application 15/888,805 8 Appellant argues that the strain relief boot disclosed in Siemon “has no applicability at all to Friedman” because “the problem Siemon’s invention is directed to addressing and solving—identifying what telecommunication signals are being transmitted through multiple telecommunication cables—is not found in or relevant to or associated with the use of the cord sets of Friedman since all such cord sets are connected to standard 110 volt outlet power currents (not like different cord sets [that] can be plugged into sockets that supply different types of signals).” Appeal Br. 10. Appellant argues that, therefore, “Siemon’s reasons for providing the strain relief boots for telecommunication cables does not lead to modifying the cord sets of Friedman.” Id. As discussed above, however, Siemon and Worrell both address the problem of identifying a particular device to which a plug is connected through a cable or electrical lead. Siemon discloses that when a multiplicity of cables are associated with a single telecommunication console, it is difficult to determine the type of device or equipment being connected through each cable to the jacks in the console. Siemon addresses this problem by forming recesses on the top and bottom of a telecommunications cable strain relief boot, and disposing inserts in the recesses that include an icon identifying the device or equipment to which the telecommunications cable is attached. Similarly, Worrell discloses that when a single power supply point or socket is used for multiple electric appliances whose plugs are not permanently connected to the socket, care must be taken to correctly identify which plug must be inserted in the socket to allow use of a selected appliance. Worrell discloses identifying the correct plug “without the necessity for tracing backwards from the plug along the electrical lead to the Appeal 2020-000591 Application 15/888,805 9 appliance” by including a recess on the plug’s outward face for receiving and displaying a label that indicates the appliance to which the plug is connected. Although Friedman’s cordset may connect to a standard outlet as Appellant argues, one of ordinary skill in the art would have recognized that multiple cordsets (extension cords) as disclosed in Friedman are often used to connect numerous devices or appliances to a single socket or power strip, as disclosed in Worrell. One of ordinary skill in the art seeking to permit identification of a particular device or appliance to which Friedman’s cordset is connected—without having to trace backwards from plug member 10 (plug housing) along cord 14 to the device or appliance—reasonably would have been led to modify the top and bottom surfaces of plug member 10 (plug housing) of Friedman’s cordset to include recesses (indicia module receiving structures) for receiving an icon or label (indicia module having an indicia element provided thereon) that identifies the particular appliance to which the cordset is attached, as disclosed in Siemon. Contrary to Appellant’s arguments, Siemon’s disclosures are, therefore, applicable to Friedman’s cordset. Appellant argues that “[n]one of Friedman, Siemon or Worrell teach providing an indicia element on a plug for purposes of confirming proper orientation with respect to a polarized electrical receptacle or outlet before and after being plugged into the outlet. Appeal Br. 11. Appellant argues that, therefore, “the function of providing visual confirmation of proper orientation with respect to a polarized electrical receptacle or outlet before and after being plugged into the outlet is novel over, and not recognized or appreciated by, the teachings of the prior art and cannot be relied upon as a Appeal 2020-000591 Application 15/888,805 10 basis for supporting a combination of the prior art in an obviousness rejection.” Appeal Br. 11; see also Reply Br. 3–4, 7, and 14. We point out initially that, as discussed above, the Examiner’s rationale for combining the relied-upon disclosures of Siemon and Worrell with those of Friedman is not based solely on allowing confirmation of proper orientation of first and second terminals 18 (prongs) of Friedman’s cordset with respect to a polarized electrical receptacle or outlet before and after being plugged into the outlet. Rather, the Examiner proposes modifying Friedman’s plug member 10 (plug housing) to include recesses (indicia module receiving structures) for receiving an icon or label (indicia module having an indicia element provided thereon) to allow identification of a device or appliance to which Friedman’s cordset is attached. Final Act. 3–4. Furthermore, the recitation in the preamble of claim 1 that the claimed modular two-prong polarized electrical plug “provides visual confirmation of proper orientation with respect to a wall mounted polarized electrical receptacle or outlet before and after the modular two-prong polarized electrical plug is plugged into the wall mounted polarized electrical receptacle or outlet” is directed to a function or intended use of the electrical plug, rather than a structural element or feature of the plug. It has long been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Consequently, the “patentability of apparatus claims must depend upon structural limitations and not upon statements of function.” In re Michlin, 256 F.2d 317, 320 (CCPA 1958); see also In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (it “is not the law” Appeal 2020-000591 Application 15/888,805 11 that “a structure suggested by the prior art, and, hence, potentially in the possession of the public, is patentable . . . because it also possesses an [i]nherent, but hitherto unknown, function which [the applicants] claim to have discovered.”). A claimed device, therefore, must be distinguished from the prior art on the basis of its structure, and where there is reason to believe that the structure of the prior art is inherently capable of performing a claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). There is no dispute on the record before us that Friedman’s cordset modified as disclosed in Siemon and Worrell to include recesses (indicia module receiving structures) in the top and bottom surfaces of Friedman’s plug member 10 (plug housing) for receiving an icon or label (indicia module having an indicia element provided thereon) that identifies a particular appliance to which the cordset is attached meets the structural limitations of claim 1. Compare Final Act. 2–4, with Appeal Br. 5–21. A reasonable basis therefore exists for finding that Friedman’s cordset as so modified would be capable of confirming proper orientation of first and second terminals 18 (prongs) with respect to a polarized electrical receptacle or outlet before and after terminals 18 (prongs) are plugged into the outlet. The burden, therefore, shifts to Appellant to show otherwise. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). On the record before us, Appellant does not meet this burden because Appellant does not demonstrate through objective evidence that Friedman’s cordset modified as proposed by the Examiner would not be capable of providing visual confirmation of proper orientation Appeal 2020-000591 Application 15/888,805 12 with respect to a wall-mounted polarized electrical receptacle or outlet before and after terminals 18 (prongs) are plugged into the wall-mounted polarized electrical receptacle or outlet, as recited in claim 1. Appellant argues that, as disclosed in Appellant’s Specification, “absent the indicia modules of the present invention one cannot readily confirm that a plug that has been previously inserted into an outlet or receptacle was/is proper oriented for safety purposes prior to being inserted.” Appeal Br. 12 (citations to Specification not provided). Appellant argues that Appellant’s invention, therefore, solves a particular problem concerning safety that the prior art—which only teaches identifying a component or signal associated with a plug or jack—does not teach, suggest or appreciate. Appeal Br. 12–13 (citing In re Kaslow, 707 F.2d 1366 (Fed. Cir. 1983). The court in Kaslow, however, indicated that “a patentable invention may be in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified.” Kaslow, 707 F.2d at 1373 (quoting In re Sponnoble, 405 F.2d 578, 585 (CCPA 1969) (emphasis added). Appellant asserts that the prior art does not teach, suggest, or appreciate the problem that Appellant’s invention is said to solve, rather the source of the problem. Appellant’s reliance on Kaslow, therefore, does not support Appellant’s argument. One of ordinary skill in the art would have readily appreciated the need to properly orient the prongs of a polarized plug in a polarized outlet. The discovery of a solution to such a problem that is readily noticeably by one of ordinary skill in the art does not impart patentability. In re Ludwig, 353 F.2d 241, 244 (CCPA 1965) (“appellant says . . . that he ‘recognized that the trend toward heavier arms created new problems’ and that this is an Appeal 2020-000591 Application 15/888,805 13 ‘essential contribution’ . . . However, the act of perceiving that heavier arms caused problems not encountered with light weight arms formerly used was not the discovery of the source of the trouble. The trouble was the twisting distortion of the lighter weight arms when they were lengthened to accommodate larger windshields . . . That trouble needed no ‘discovery,’ only simple observation of the fact that the arms twisted when in operation. . . Appellant’s discovery, if he discovered anything, was the solution to the problem (seam welding the arm), not the problem itself.”). As discussed above, a reasonable basis exists for finding that Friedman’s cordset modified as proposed by the Examiner in view of the relied-upon disclosures of Siemon and Worrell would be capable of confirming proper orientation of terminals 18 (prongs) with respect to a polarized electrical receptacle or outlet before and after terminals 18 (prongs) are plugged into the outlet, and Appellant does not meet Appellant’s burden of demonstrating otherwise. As the Supreme Court explained, “[i]t is not invention to perceive that the product which others had discovered had qualities they failed to detect.” Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249 (1945). Appellant argues that Siemon is not “reasonably pertinent to the particular problem with which the applicant was concerned,” because Siemon does not teach a two-prong polarized electrical plug, Siemon’s plug cannot be plugged into a jack in an improper orientation, Siemon provides icons only to identify devices to which plugs and cables are connected, and Siemon’s plug/boot combination inherently includes a structure used to orient a plug with respect to a jack. Appeal Br. 15. “A reference is reasonably pertinent if . . . it is one which, because of Appeal 2020-000591 Application 15/888,805 14 the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Appellant’s Specification explains that Appellant’s invention addresses a problem that arises from polarized electrical outlets that have different ground socket configurations. Spec. ¶¶ 28, 29. The Specification indicates that a polarized outlet’s ground socket orientation determines how a polarized plug must be oriented when plugged into the outlet, requiring consumers to orient plugs differently for outlets having different ground socket configurations. Spec. ¶ 3. According to the Specification, conventional plugs “present a significant challenge that involves having consumers who purchase and use the plugs . . . choose the correct plugs . . . to use in instances where the ground sock of a particular electrical outlet is oriented downward or upward . . . [which] determines which surface of a plug . . . will be the top when oriented to and plugged into the outlet.” Id. Siemon’s disclosure of an arrow icon disposed in a recess of a strain relief boot for a telecommunications plug logically would have commended itself to the attention of one of ordinary skill in the art seeking to address this problem because such a skilled artisan would have recognized that the arrow icon would provide information that would allow a user to correctly orient a plug with respect to a jack or socket. Consequently, regardless of whether the plug disclosed in Siemon is a two-prong polarized electrical plug, and regardless of whether it cannot be plugged into a jack in an improper orientation due to its “inherent” structure as Appellant argues, one of ordinary skill in the art nonetheless would have recognized that an arrow icon as illustrated in Siemon’s Figure 10 that can be inserted in a recess in Appeal 2020-000591 Application 15/888,805 15 either the top or bottom surface of a plug boot would allow a user to correctly orient the plug before inserting it into a socket or jack, avoiding potential damage to the plug, socket, or jack caused by an attempt to insert an incorrectly oriented plug. One of ordinary skill in the art, therefore, would have found Siemon’s disclosures to be reasonably pertinent to the particular problem with which Appellant was concerned: providing a means to allow consumers to determine the correct orientation of a polarized plug with respect to a polarized electrical outlet. Appellant argues that “the present invention properly considered structurally and functionally meets a long felt need that has existed since the introduction of polarized electrical plugs and outlets” because the invention “addresses problems with two-prong polarized electrical plugs that are caused by such plugs being visually indistinguishable from the top and bottom, and the possibility of inadvertently plugging such plugs into electrical outlets in an improper orientation which can result in hazardous electrical situations.” Appeal Br. 13. Appellant’s unsupported argument, however, is insufficient to meet the evidentiary burden required to establish a long-felt need that was solved by Appellant’s invention. In re Gershon, 372 F.2d 535, 538–39 (CCPA 1967) (Establishing long-felt need requires objective evidence showing existence of a persistent problem recognized by those of ordinary skill in the art for which a solution was not known.). On the record before us, Appellant provides only attorney argument, and does not provide any objective evidence that demonstrates that there was a long-felt need—an unsolved problem—that was solved by Appellant’s invention. In re Mixon, 470 F.2d 1374, 1377 (CCPA 1973) (“appellants’ arguments are tempered by the fact Appeal 2020-000591 Application 15/888,805 16 there is little, if any, tangible evidence to support a contention that their invention actually has provided a long awaited, widely-accepted, and promptly-adopted solution to the problem extant in the art.”). Therefore, considering the totality of the evidence relied upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner’s conclusion of obviousness. We, accordingly, sustain the Examiner’s rejection of claim 1–6 and 13–20 under 35 U.S.C. § 103. Rejection II We turn now to the Examiner’s rejection of claims 7–12 under 35 U.S.C. § 103 as unpatentable over Lee in view of Friedman and Siemon or Worrell. Claim 7 recites a modular polarized electrical plug adaptor that comprises, in part, a body having a top and a bottom and a front and a back, and polarized and non-polarized sockets provided in the back of the body. Claim 7 requires the polarized and non-polarized sockets to be configured to receive a two-prong polarized electrical plug. The Examiner finds that Lee discloses modular polarized electrical plug adaptor 10 comprising body 101 having a top, bottom, front, and back. Final Act. 9–10 (citing Lee Fig. 3). The Examiner finds that Lee discloses two non-polarized sockets 104 provided in the back of body 101, but does not disclose that one of sockets 104 is polarized. Final Act. 10. The Examiner finds, however, that Friedman discloses plug 12 that includes polarized and non-polarized sockets. Final Act. 10; see also Friedman Fig. 2. In view of this disclosure in Friedman, the Examiner concludes that it Appeal 2020-000591 Application 15/888,805 17 would have been obvious to one of ordinary skill in the art to modify Lee’s plug adaptor 10 to include a polarized socket as taught by Friedman “in order to guide and avoid the incorrect electrical connection.” Final Act. 10. On the record before us, however, the Examiner does not adequately establish that a combination of the relied upon disclosures of Lee and Friedman would have suggested a modular polarized electrical plug adaptor comprising a polarized socket and a non-polarized socket configured to receive a two-prong polarized electrical plug, as required by claim 7, for reasons expressed by Appellant and discussed below. Figure 3 of Lee cited by the Examiner illustrates identifiable plug 10 (adapter) having body 101 including first power output port 104 (non- polarized socket) capable of receiving third power input port 301 (first prong) of plug 30. Lee ¶ 23; Fig. 3. Figure 3 of Lee shows that plug 30 includes a second (unlabeled) prong having the same shape as third power input port 301 (first prong), and shows that body 101 includes a second (unlabeled) non-polarized socket shaped and positioned to receive the second prong. Figure 3 of Lee also shows that plug 30 includes a third prong having a different shape from the first and second prongs, and shows that body 101 includes a third socket shaped and positioned to receive the third prong. Figure 3 of Lee shows that the three prongs of plug 30 are arranged in a triangular configuration, which one of ordinary skill in the art would have understood to indicate that plug 30 is a three prong grounded plug, rather than a two-prong polarized plug as recited in claim 7. As Appellant points out (Appeal Br. 22–23), because Lee’s plug 30 has three prongs arranged in a triangular configuration, and because the third prong has a different shape from the first and second prongs, it would be Appeal 2020-000591 Application 15/888,805 18 impossible to insert plug 30 into the three sockets of Lee’s identifiable plug 10 (adapter) in an “incorrect electrical connection” because only a single orientation of plug 30 will allow the three prongs to align with corresponding sockets. Consequently, the Examiner’s rationale for modifying one of Lee’s socket to be polarized as taught by Friedman “in order to guide and avoid the incorrect electrical connection” lacks rational underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On the record before us, the Examiner does not provide a reasoned explanation supported by objective evidence for why one of ordinary skill in the art would have modified Lee in the manner proposed in view of the relied-upon disclosures of Friedman so as to arrive at a modular polarized electrical plug adaptor comprising a polarized socket and a non-polarized socket configured to receive a two-prong polarized electrical plug, as required by claim 7. Because the Examiner does not meet this burden, we do not sustain the Examiner’s rejection of claim 7, and claims 8–12, which each depend from claim 7, under 35 U.S.C. § 103. Appeal 2020-000591 Application 15/888,805 19 CONCLUSION Claims 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–6, 13–20 103 Friedman, Siemon or Worrell 1–6, 13–20 7–12 103 Lee, Friedman, Siemon or Worrell 7–12 Overall Outcome 1–6, 13–20 7–12 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). AFFIRMED IN PART Copy with citationCopy as parenthetical citation