Andreas Dürr et al.

Patent Trials and Appeals Board

Aug 28, 2019

14117493 - (D) (P.T.A.B. Aug. 28, 2019)

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.
14/117,493 11/13/2013 Andreas Dürr 32860-002197-US-NP 2410
30596 7590 08/28/2019
HARNESS, DICKEY & PIERCE, P.L.C.
P.O.BOX 8910
RESTON, VA 20195
EXAMINER
CRUM, JACOB R
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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):
dcmailroom@hdp.com
jhill@hdp.com
siemensgroup@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS DÜRR and XAVER LAUMER
Appeal 2019-000073
Application 14/117,493
Technology Center 2800
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and LILAN REN,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), the Appellants2 appeal from the
Examiner’s decision finally rejecting claims 1–14.3
We REVERSE.

1 This Decision includes citations to the following documents: Specification
filed Nov. 13, 2013, as amended (“Spec.”); Final Office Action dated
October 23, 2017 (“Final Act.”); Advisory Action dated January 31, 2018
(“Advisory Act.”); Appeal Brief filed April 26, 2018 (“Appeal Br.”);
Examiner’s Answer dated August 9, 2018 (“Ans.”); and Reply Brief filed
October 1, 2018 (“Reply Br.”).
2 We use the word “Appellants” to refer to the “Applicants” as defined in
37 C.F.R. § 1.42(a). The Appellants identify the real party in interest as
Siemens Aktiengesellschaft. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).

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Application 14/117,493

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CLAIMED SUBJECT MATTER
The invention relates to an overload release, in particular for a circuit
breaker used in a device with a high setting range, that includes an optimized
connection between the metal strip and the heating conductor. See Spec.
¶ 10. Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An overload release, comprising:
a metal strip, including at least two different types of
metal;
a heating conductor, wound around the metal strip and
welded onto the metal strip; and
an electrical insulator, arranged between the metal strip
and the heating conductor,
wherein substantially an entire end surface of the heating
conductor is welded to the metal strip through an arc weld, the
end surface being a transverse surface intersecting a
longitudinal surface and a lateral surface of the heating
conductor.
Appeal Br. 20 (Claims Appendix) (emphasis added). Of the appealed claims,
claims 6, 11, and 14 are also independent. Each of claims 6, 11, and 14
recites “[a] method for producing an overload release” and includes a step of
arc welding substantially an entire end (transverse) surface of a heat
conductor onto a metal strip. Id. at 21–22.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Appeal 2019-000073
Application 14/117,493

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Alban
Ellenberger
Licentia
Strympe

US 3,102,793
US 3,674,952
GB 1 230 398
DE 24 55 856

Sep. 3, 1963
July 4, 1972
April 28, 1971
Oct. 31, 1974
REJECTIONS
Claims 1, 2, 5–7, and 10–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Licentia in view of Ellenberger and Strympe (English
Abstract). Final Act. 2.
Claims 3, 4, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Licentia in view of Ellenberger, Strympe, and Alban.
Final Act. 13.
OPINION
The Examiner found that Licentia discloses an overload release as
recited in claim 1, including a heating conductor having an end surface
welded to a metal strip by means of spot welding, but with the exception that
Licentia does not disclose explicitly the features recited in the claim 1
wherein clause. Final Act. 3. The Examiner found Ellensberger discloses a
switch comprising a heating conductor having substantially an entire end
surface—a transverse surface—electrically connected to a metal strip. Id. at
3–4 (citing Figs. 1–2). The Examiner found one of ordinary skill in the art
would have modified Licentia’s device to weld substantially an entire end
surface of the heating conductor to the metal strip “in order to securely
electrically connect the heating conductor to the metal strip, and in order to
increase the surface area of the electrical connection and decrease electrical
resistance.” Id. at 4. The Examiner found one of ordinary skill in the art
would have used a tungsten inert-gas (TIG) weld to join Licentia’s heating
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Application 14/117,493

4
conductor end surface to the metal strip, based on Strympe’s teaching that it
was known in the art to use this technique to spot weld bimetallic structures
together. Id. at 5.
As an initial matter, we note that the Appellants and the Examiner
agree that the claim term “transverse surface” refers to the butt end of the
heating conductor. See Appeal Br. 17; Ans. 6–7. The Appellants contend the
evidence relied on by the Examiner is insufficient to support a finding that
the applied prior art teaches or suggests welding substantially an entire end
surface of a heating conductor onto a metal strip, wherein the end surface is
a transverse surface intersecting a longitudinal surface and a lateral surface
of the heating conductor. Appeal Br. 13. The Appellants argue the
Examiner’s characterization of Ellenberger as suggesting an electrical
connection of substantially an entire, heating conductor end surface to a
metal strip is not supported by Ellenberger’s figures or description thereof.
Id. at 14. More specifically, the Appellants argue that the geometry of the
ends of heating coils 16, 17 is not clear from Ellenberger’s disclosure. Id. at
15. The Appellants argue that, contrary to the Examiner’s finding that the
angles of Ellenberger’s heating coils 16, 17, as depicted in Figure 1, suggest
their butt ends are connected to metal strip 13, it “is evident from FIG. 1 . . .
that right hand ends 16 and 17 are likely sandwiched between the bimetal
strip 13 and another member by rivet 24.” Id. at 14.
The predecessor to our reviewing court has held that “an accidental
disclosure, if clearly made in a drawing, is available as a reference.” In re
Seid, 161 F.2d 229, 231 (CCPA 1947) (emphasis added); see also In re
Wagner, 63 F.2d 987, 988 (CCPA 1933) (“[I]f a drawing clearly suggests to
one skilled in the art the way in which the result sought is accomplished by a
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Application 14/117,493

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later applicant, it is immaterial whether the prior patentee’s showing was
accidental or intentional.” (citing In re Bager, 47 F.2d 951 (CCPA 1931))).
Neither the Examiner nor the Appellants have argued persuasively
that Ellenberger’s Figures clearly suggest a particular connection between
the butt ends of heating coils 16, 17, and metal strip 13. See Ans. 5
(“Examiner notes the left hand ends 18, 19 (of the heating coils/conductors
16, 17) and their connections are depicted in Fig. 1–2, and similarly Fig. 1
suggests that the right-hand end surfaces of 16, 17 at least partially abut the
bimetal 13 (due to the angles depicted).” (emphasis added)); Appeal Br. 14
(“Ellenberger’s figures suggest that a lateral or longitudinal surface of right
hand ends 16 and 17 of heating coils 14 and 15 are connected to the bimetal
strip 13, not a transverse surface of right hand ends 16 and 17.”).
“[W]here the prior art gives reason or motivation to make the claimed
[invention]…the burden (and opportunity) then falls on an applicant to rebut
that prima facie case.” In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir. 1990)
(en banc). In the present case, the Examiner did not satisfy the initial burden
of establishing a prima facie case of obviousness, because the Examiner did
not demonstrate that Ellenberger’s Figures clearly suggest “an entire end
surface of the heating conductor is . . . [connected] to the metal strip . . . , the
end surface being a transverse surface” as required by claim 8. See In re
Meng, 492 F.2d 843, 847 (CCPA 1974) (“We are aware, of course, that a
claimed invention may be anticipated or rendered obvious by a drawing in a
reference, whether the drawing disclosure be accidental or intentional. But,
as the solicitor correctly states, a drawing is available as a reference for all
that it teaches a person of ordinary skill in the art. The drawing here, Figure
10 of Beck, simply would not, in our view, teach or suggest the claimed
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invention to those who had never seen appellants’ disclosure.” (internal
citation omitted)). Therefore, the Examiner’s assertion that “there is no
explicit disclosure in Ellenberger to support that the portions 16 and 17 are
sandwiched by the rivet 24” (Ans. 7) is an improper attempt to shift the
burden of production to the Appellants. See In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (explaining that the prima facie case is a procedural
tool, and requires that the examiner initially produce evidence sufficient to
support a ruling of obviousness; thereafter the burden shifts to the applicant
to come forward with evidence or argument in rebuttal).
Accordingly, for the reasons explained above, we do not sustain the
rejection of independent claim 1 or the rejections of its dependent claims 2–
5, 7–9, and 13. Nor do we sustain the rejection of independent claims 6, 11,
and 14, which similarly require arc welding substantially an entire end
(transverse) surface of a heat conductor onto a metal strip, or the rejection of
their respective dependent claims 10 and 12.

REVERSED