Andreas Dürr et al.Download PDFPatent Trials and Appeals BoardAug 28, 201914117493 - (D) (P.T.A.B. Aug. 28, 2019) 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. 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). Appeal 2019-000073 Application 14/117,493 2 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 3 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 Appeal 2019-000073 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 Appeal 2019-000073 Application 14/117,493 5 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 Appeal 2019-000073 Application 14/117,493 6 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 Copy with citationCopy as parenthetical citation