Ex Parte 7323639 et al

Patent Trial and Appeal Board

Apr 9, 2014

90012086 (P.T.A.B. Apr. 9, 2014)

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.
90/012,086 01/10/2012 7323639 1326-0001 9071
1609 7590 04/10/2014
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
WHITTINGTON, KENNETH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/10/2014 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 HUBBELL INCORPORATED
Appellant
____________________

Appeal 2014-003866
Reexamination Control 90/012,086
U.S. Patent 7,323,639 B1
Technology Center 3900
____________________

Before JEAN R. HOMERE, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s final
rejection of claims 1-23, which are subject to reexamination. Claims 24-27
are indicated to be allowable and/or confirmed. Final Office Action 2 (Mar.
19, 2013) [hereinafter FOA]. We have jurisdiction under 35 U.S.C. §§ 6(b)
and 306.
We AFFIRM.

STATEMENT OF THE CASE
Reexamination Proceedings
A request for ex parte reexamination of U.S. Patent No. 7,323,639 B1
(the ’639 patent) was filed on January 10, 2012, requesting the
reexamination of claims 1-23 and assigned Reexamination Control No.
90/012,086. New claims 24-27, added by the Amendment filed February 14,
2013, are indicated to be allowable and/or confirmed. Claims 1-23 stand
rejected under 35 U.S.C. § 103(a).
The ’639 patent, entitled “Convertible Electrical Device Cover and
Method for Installing Same,” issued January 29, 2008, to Michael J. Shotey,
Marcus J. Shotey, and Edgar Maltby, based on Application No. 11/548,047,
filed October 10, 2006, which is said to be a continuation of Application No.
11/257,888, filed on October 24, 2005, now U.S. Patent No. 7,119,277,
which is said to be a continuation of Application No. 10/881,288, filed on
June 29, 2004, now U.S. Patent No. 6,987,225, which is said to be a
continuation of Application No. 10/700,737, filed on November 3, 2003,
now U.S. Patent No. 6,770,816, which is said to be a continuation of
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Application No. 09/948,920, filed on September 7, 2001, now U.S. Patent
No. 6,642,453.
The ’639 patent is said to be assigned to Hubbell Incorporated, said to
be the assignee and real party in interest.

Appellant’s Invention
Appellant’s invention relates to a convertible electrical device cover
including a base plate and an adapter plate that are both configured to
accommodate an electrical device. When the convertible electrical device
cover is placed in an operative position over the electrical device the adapter
plate may be located between the electrical device and a rear side of the base
plate. A method for installing a convertible electrical device includes placing
the convertible electrical device cover in an operative position over an
electrical device so that an adapter plate may be located between the
electrical device and a rear side of a base plate. Abstract.

The Claims
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. An in-use weather protective electrical outlet cover for an
electrical outlet comprising at least one socket face and at least
one mounting screw aperture, the electrical outlet cover
comprising:
a base assembly comprising an adapter coupled to a base;
wherein the adapter has at least one opening extending
through the adapter, the at least one opening comprising a size
large enough to receive the at least one socket face, the at least
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one opening configured to surround the at least one socket face
when the base assembly is installed on the electrical outlet;
wherein the base assembly comprising at least one base
hinge member on a side of the base assembly and at least one
keyhole slot extending through the base assembly, the keyhole
slot positioned to align with the at least one mounting screw
aperture when the base assembly is installed on the electrical
outlet; and
a protective cover comprising at least one cover hinge
member configured for hinged attachment to the at least one
base hinge member;
wherein the at least one keyhole slot is accessible for
selective adjustment of the base assembly after the base
assembly is installed on the electrical outlet.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hartmann
Berlin
Shotey
Hayduke
US 1,557,526
US 5,280,135
US 5,763,831
US 6,133,531
Oct. 13, 1925
Jan. 18, 1994
Jun. 9, 1998
Oct. 17, 2000

The Rejections
The Examiner made the following rejections:
Claims 1-3, 18, 19, 22, and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hayduke and Hartmann. FOA 3-8.1

1 In connection with this rejection, Appellant argues the rejection of claim 1.
Separate patentability is not argued for claims 2, 3, 18, 19, 22, and 23. “A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(vii). Further, merely restating with respect to a second claim
an argument, previously presented with respect to a first claim, is not an
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Claims 4, 5, 7-16, 20, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hayduke, Hartmann, and Shotey. FOA 8-16.2
Claims 1-3, 6, 18, 19, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Berlin and Hartmann. FOA 17-22.3
Claims 4, 5, 7-17, 20, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Berlin, Shotey, and Hartmann. FOA 22-30.4

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (FOA 3-30) and

argument for separate patentability of the two claims. Therefore, based on
Appellant’s arguments, we decide the appeal of the rejection of claims 1-3,
18, 19, 22, and 23 under 35 U.S.C. § 103(a) over Hayduke and Hartmann
based on claim 1 alone.
2 In connection with this rejection, Appellant argues the rejection of claims 7
and 8. Separate patentability is not argued for claims 4, 5, 9-16, 20, and 21.
Therefore, we decide the appeal of the rejection of claims 4, 5, 9-16, 20, and
21 under 35 U.S.C. § 103(a) over Hayduke, Hartmann, and Shotey based on
claim 1 and the appeal of claims 7 and 8 separately. See 37 C.F.R.
§ 41.37(c)(1)(vii).
3 In connection with this rejection, Appellant argues the rejection of claims 1
and 23. Separate patentability is not argued for claims 2, 3, 6, 18, 19, and 22.
Therefore, we decide the appeal of the rejection of claims 1-3, 6, 18, 19, and
22 under 35 U.S.C. § 103(a) Berlin and Hartmann based on claim 1 alone
and claim 23 separately.
4 In connection with this rejection, Appellant argues the rejection of claims 7
and 8. Separate patentability is not argued for claims 4, 5, 9-17, 20, and 21.
Therefore, we decide the appeal of claims 4, 5, 9-17, 20, and 21 under 35
U.S.C. § 103(a) over Berlin, Shotey, and Hartmann based on claim 1 and the
appeal of claims 7 and 8 separately.
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(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 2-23) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis seriatim as they are presented in the Appeal Brief, pages 5-35.

A. Rejection of Claims 1-3, 18, 19, 22, and 23
over Hayduke and Hartmann
Appellant’s Contentions
A.1. Hartmann does not establish that it would have been
obvious to one skilled in the art to modify the adapter
plate or the device of Hayduke, which prevents access to
the keyhole slot, in a manner to provide access to the
keyhole slot in the housing for adjusting the position of
the assembly after the base assembly is installed on the
electrical receptacle [as required by claim 1].
App. Br. 5-6 (emphasis omitted).
A.2. Hayduke does not disclose an outlet cover with an accessible keyhole
slot or a cover that is adjustable after installation. Id. at 6.
A.3. Hartmann does not teach a final assembly having an accessible
keyhole slot for adjusting the position of the assembly. Id. at 7.
A.4. Claim 1 is not obvious over Hayduke in view of Hartmann. Id. at 8.
A.5. The claimed invention has commercial success. Id. at 13.

Analysis
Contention A.1
In connection with contention A.1 Appellant argues neither Hayduke
nor Hartmann discloses an assembled device having an accessible keyhole
slot. Id. at 5. According to Appellant, partial disassembly of either device
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would be required to access the keyhole slot after installation. Id. Appellant
further argues,
Hartmann does not establish that it would have been obvious to
one skilled in the art to modify the adapter [wall] plate or the
device of Hayduke, which prevents access to the keyhole slot,
in a manner to provide access to the keyhole slot in the housing
for adjusting the position of the assembly after the base
assembly is installed on the electrical receptacle.
Id. at 5-6. The Examiner responds, finding “Hartmann teaches a
modification of outlet covers to make the mounting screws accessible after
mounting the outlet cover to allow for aligning of the cover and tightening of
the mounting screws, and further providing such access even through
interfering structures.” Ans. 4.
We find Appellant’s arguments unpersuasive for the reasons
articulated by the Examiner, which we adopt herein. Id. at 2-6. That is,
Hartmann teaches modifying an outlet cover unit having an aperture
providing access to screw holes after mounting of the outlet cover unit. Id. at
4. The Examiner finds the motivation for providing access is to allow
tightening of the mounting screws after installation of the outlet cover. Id. at
5. We agree with the Examiner, “[t]he [asserted] combination is merely
applying one improvement taught in Hartmann, i.e., accessible mounting
screws, to Hayduke in a predictable manner to yield predictable results.” Id.
We disagree with Appellant that “Hartman [sic] only suggest modifying a
support hook and not modifying a cover plate or an adapter plate.” Reply Br.
2. Hartmann’s hook 17 is an integral part of the plate 14 (Hartmann p. 1, ll.
60-68) with opening 17b formed in hook 17 of plate 14. Therefore,
modifying the hook results in modifying the plate, of which it is a part.
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Accordingly, for the reasons supra, we find contention A.1 unpersuasive of
Examiner error.

Contention A.2
In connection with contention A.2 Appellant argues, “Hayduke
requires partial disassembly to access the mounting screws and screw holes
to enable adjustment of the position of the cover.” App. Br. 6. The Examiner
responds explaining, “this is the reason the teachings of Hartmann [are]
being combined with those of Hayduke in the rejections.” Ans. 5. We agree
with the Examiner and find Appellant is responding to the rejection by
attacking the Hayduke reference individually, even though the rejection is
based on the combined teachings of the references. Nonobviousness cannot
be established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We are also not persuaded of
error by Appellant’s argument that modifying Hayduke’s wall plate or
housing to provide access to the keyhole slots would “result in the wall plate
not covering the rear wall of the housing as required by the disclosure of
Hayduke.” App. Br. 7 (emphasis added). While Hayduke discloses wall plate
90 covering the electrical box opening, Appellant has not shown that
Hayduke requires the outlet cover cannot have an aperture. See Ans. 5.
Therefore, we find contention A.2 unpersuasive of Examiner error.

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Contention A.3
In connection with contention A.3 Appellant argues Hartmann’s
keyhole slots are covered by an electrical fixture in final assembly and,
therefore, are not accessible during the normal use of the fixture support.
App. Br. 7. The Examiner responds finding: (a) the electrical fixture is not
part of Hartmann’s outlet cover plate (Ans. 6); (b) claim 1 does not require
the keyholes slots be accessible through an electrical device or fixture
plugged into the outlet (id. at 7); (c) plugging an electrical device into an
outlet does not make the device an integral part of the outlet cover plate
(id.); (d) if an electrical device were hung on Hartmann’s hook, one skilled
in the art would know to remove the device as necessary to adjust the cover
plate (id. at 7-8); and (e) Appellant has provided no evidence that an
electrical device would cover the plate so as to render the keyhole slots
inaccessible (id. at 8). We agree with the Examiner and find contention A.3
unpersuasive of Examiner error.

Contention A.4
In connection with contention A.4 Appellant argues Hartmann does
not suggest adjustment of the final assembly. However, while claim 1 recites
a keyhole slot is accessible for selective adjustment of the base assembly, we
find the highlighted language is merely a statement of intended use and,
therefore, fails to patentably distinguish claim 1 over the applied
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combination of Hayduke and Hartmann.5 Appellant further argues
Hartmann’s keyhole slots are only accessible when plate 14 is initially
mounted to cover 10, not after assembly is completed with an electrical
fixture attached to the hook, such that “Hartmann . . . does not suggest the
ability or the desirability of the completed assembly having accessible
keyhole slots for adjusting the position of the assembly of a base and plate
after installation.” App. Br. 10. We disagree for the reasons set forth by the
Examiner (Ans. 9-10) and for the reasons supra, having found the electrical
fixture not to be part of the outlet cover.
For the reasons articulated by the Examiner (id. at 10-13) we further
disagree with Appellant’s contention that the combination of Hayduke and
Hartmann is improper because (i) there was no motivation to make the
combination (App. Br. 10), and (ii) the combination is based on hindsight
(id.). We find the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness. See
FOA 5-6; Ans. 10-11. In contrast, Appellant fails to provide sufficient
evidence or argument that the combination yields anything other than
predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401

5 Our reviewing Court has held that a statement of intended use in an
apparatus claim cannot distinguish over a prior art apparatus that discloses
all the recited limitations and is capable of performing the recited function.
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We also note that
“[a]n intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch
statements often . . . appear in the claim’s preamble,” a statement of intended
use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751,
754 (Fed. Cir. 1987).
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(2007) (The “combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”).
We are also not persuaded that combining the respective familiar elements of
the cited references in the manner proffered by the Examiner was “uniquely
challenging or difficult for one of ordinary skill in the art.” See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Therefore, we find the Examiner’s proffered
combination of familiar prior art elements according to their established
functions would have conveyed a reasonable expectation of success to a
person of ordinary skill at the time of the invention.
We are likewise not persuaded that Hayduke’s teaching of a wall plate
for preventing direct access to the underlying electrical box teaches away
from the proposed modification. App. Br. 12-13. As found by the Examiner,
Appellant has not provided explicit evidence from Hayduke specifically
discouraging or discrediting providing such accessibility. “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellant fails to provide sufficient evidence or argument that Hayduke so
disparages providing access to keyhole slots as taught by Hartmann to the
extent that one skilled in the art would be discouraged from making the
combination. Furthermore, Appellant has failed to show that the proposed
modification would permit substantial direct access to the underlying
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electrical box such that anything other than de minimis direct access would
be permitted.
For the reasons supra, we find Appellant’s contention A.4
unpersuasive of Examiner error.

Contention A.5
In connection with contention A.5 Appellant argues evidence of
commercial success supports the patentability and non-obviousness of the
claims. App. Br. 13-15. The Examiner responds, finding such success must
not be the result of other factors such as advertising, purchases by an
existing customer base of the producer, etc. Ans. 14. The Examiner finds,
“[g]ross sales do not show commercial success absent evidence as to market
share as to the time period during which the product was sold, or as to what
sales would normally be expected in the market.” Id. (citing MPEP
§ 716.03(b)(IV)). In conclusion, the Examiner finds Appellant has not
provided sufficient evidence of commercial success to overcome the
outstanding rejections.
We agree with the Examiner. If evidence of commercial success is
relied upon, Appellant must offer proof “that the sales were a direct result of
the unique characteristics of the claimed invention—as opposed to other
economic and commercial factors unrelated to the quality of the patented
subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). The
evidence must also demonstrate commercial success in the relevant market.
See id. In addition, there must be a nexus between the commercial success
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and merits of the claimed invention. Cable Elec. Prods., Inc. v. Genmark,
Inc., 770 F.2d 1015, 1026 (Fed. Cir. 1985).
Appellant argues, “[d]espite . . . similarities [between alleged
competing products], the TayMac products averaged 12 to 100 times the
number of units sold and revenue produced, depending upon the product
line, when compared to the sales of the Hubbell BELL D16 product line over
the same time period from 2006 through 2012.” App. Br. 14. Appellant
argues the greater sales of the TayMac products relative to the Hubbell
product are attributable to the TayMac products’ incorporation of the
claimed invention. Id. However, based on sales data provided by Appellant
(Declaration of Agus The, Exs. A, B), we note the TayMac products were
priced significantly lower than the Bell D16, the latter averaging $7.06 per
unit6 during the period from 2006-2012 while the MM2410, MM410, and
MX1050 were respectively priced at $6.43,7 $3.81,8 and $1.709 per unit on
average. Overall, the three TayMac products sold for an average price of
$3.35,10 less than half of the $7.06 average price of the Bell D16. Therefore,
the argued commercial success of the TayMac products in comparison to the
Bell D16 may have been reasonably attributable in part or in whole to its
significantly lower price rather than to the unique characteristics of the
claimed invention. Therefore, we agree with the Examiner and are
unpersuaded that the sales figures for the TayMac products are due to the

6 Total revenue of $681,185 divided by 96,524 units = $7.06 per unit.
7 Total revenue of $11,008,737 divided by 1,711,353 units = $6.43 per unit.
8 Total revenue of $46,393,485 divided by 12,189,135 units = $3.81 per unit.
9 Total revenue of $11,135,428 divided by 6,540,777 units = $1.70 per unit.
10 Total revenue of $68,537,650 divided by 20,441,265 units = $3.35 per
unit.
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claimed invention rather than price or a myriad of other factors. Accordingly,
we further agree with the Examiner that Appellant has not provided
sufficient evidence of commercial success to overcome the outstanding
rejections and find Appellant’s contention A.5 unpersuasive of Examiner
error.
Therefore, for the reasons supra, we are unpersuaded the Examiner
erred in rejecting claim 1. Accordingly, we sustain the rejection of
independent claim 1 and, for the same reasons, independent claim 18 under
35 U.S.C. § 103(a) over Hayduke and Hartmann together with the rejection
of dependent claims 2, 3, 19, 22, and 23 not separately argued.

B. Rejection of Claims 4, 5, 7-16, 20, and 21
over Hayduke, Hartmann, and Shotey
Appellant’s Contentions
B.1. Shotey does not cure the deficiencies of Hayduke and Hartmann
argued in connection with claim 1. App. Br. 18-19.
B.2. While Hayduke’s single wall plate with defined openings fails to teach
or suggest an adapter plate having a removable portion to
accommodate different electrical devices, Shotey’s cover plate fails to
teach an adapter in an outlet covering having an accessible keyhole
slot, both features required by claim 7. Id. at 19.

Analysis
Contention B.1
Because, for the reasons supra, we find no deficiencies in the
combined teachings of Hayduke and Hartmann in connection with the
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rejection of claim 1, Appellant’s contention B.1 that Shotey also fails to
teach the argued limitations is not persuasive of error.

Contention B.2
Appellant’s contention B.2 is unpersuasive because it attacks the
references individually when the Examiner relies on their combination. In
particular, Appellant argues Hayduke fails to teach an adapter plate having a
removable portion (App. Br. 19) when the Examiner relies on Shotey, not
Hayduke, for this feature (FOA 10; Ans. 17). Similarly, while Appellant
argues Shotey fails to teach an accessible keyhole slot (App. Br. 19), the
Examiner relies on Hartmann, not Shotey, for this feature (FOA 5; Ans. 17).
As such, Appellant is responding to the rejection by attacking the Hayduke
and Shotey references individually, even though the rejection is based on the
combined teachings of Hayduke, Hartmann, and Shotey. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck, 800 F.2d at 1097. Therefore, contention B.2 is unpersuasive of
Examiner error.
For the reasons supra, we sustain the rejection of claim 7 under 35
U.S.C. § 103(a) over Hayduke, Hartmann, and Shotey. Because Appellant
provides no substantive arguments for patentability in connection with
claims 4, 5, 8-16, 20, and 21 other than to either restate arguments made
with respect to another claim or merely allege that the prior art fails to
disclose or suggest the claimed limitations, we are not persuaded of
Examiner error. Merely citing a claim limitation and asserting it is not
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present falls short of identifying an error in the Examiner’s rejection as
required on appeal. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”); In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and naked assertion that the corresponding elements
were not found in the prior art.”). Therefore, we also sustain the rejection of
claims 4, 5, 8-16, 20, and 21 under 35 U.S.C. § 103(a) over Hayduke,
Hartmann, and Shotey.

C. Rejection of Claims 1-3, 6, 18, 19, 22, and
23 over Berlin and Hartmann
Appellant’s Contentions
C.1. “Hartmann does not disclose or suggest an accessible keyhole slot in
the completed assembly, and thus, fails to provide any motivation to
modify Berlin to substitute the round screw hole with a keyhole slot.”
App. Br. 25.
C.2. “[K]eyhole slots in the insert of Berlin would serve no useful purpose
of enabling adjustment of the assembly.” Id. at 26.
C.3. “The Office Action has not provided an adequate basis to support the
position that it would have been obvious to modify Berlin based on a
support plate of Hartmann since Hartmann does not reasonably teach
or suggest an accessible keyhole slot for adjusting the assembly after
installation.” Id.
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C.4. Berlin fails to disclose a coupling mechanism between the adapter
plate while the base and Berlin’s adapter plate contacts the front face
of the base rather than being located between the base and the
electrical receptacle as required by claim 6. Id. at 27-28.
C.5. “The outlet cover and the assembly of Berlin cannot be mounted in a
vertical orientation and a horizontal orientation where the cover will
close by gravity in both the horizontal orientation in a vertical
orientation [as required by claim 23.]” Id. at 29.

Analysis
Contention C.1
In support of contention C.1 Appellant argues Berlin fails to disclose a
keyhole slot or a mounting screw hole that enables adjustment after
installation and therefore there is no motivation to modify Berlin’s round
screw holes to incorporate Hartmann’s keyhole slots. Id. at 25. The
Examiner responds finding Hartmann teaches reasons for using keyhole
apertures including “to allow removal of the outlet cover without completely
removing the mounting screws, aligning the socket faces of the outlet cover
after installation, and allowing tightening of the outlet cover after
installation.” Ans. 18 (citing Hartmann p. 1, l. 73 – p. 2, l. 3; p. 2, ll. 58-
101). Because Berlin teaches accessible round mounting screw holes (id. at
17), and given the ease of installation and alignment provided by
Hartmann’s keyhole slots for outlet covers (id. at 19), the Examiner finds it
would be obvious to substitute Hartmann’s keyhole slots for Berlin’s
accessible round mounting screw holes (id.). The Examiner finds such a
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substitution obvious because “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious.”
Id. at 18-19 (citing KSR, 550 U.S. at 417).
We agree with the Examiner and find Appellant’s argument that there
is no motivation for making the asserted combination unpersuasive of
Examiner error. Instead, we find the Examiner has articulated reasoning with
rational underpinnings sufficient to justify the legal conclusion of
obviousness. See FOA 19; Ans. 18-19.

Contention C.2
In connection with contention C.2 Appellant argues, because Berlin’s
base is captured between the outer edge of the insert plate and the face of the
electrical device with the screw holes of the insert plate is positioned to mate
the screw holes in the electrical receptacle, there is no reason to adjust
Berlin’s insert plate. App. Br. 25-26. Appellant concludes, absent a need for
adjustment, “keyhole slots in the insert of Berlin would serve no useful
purpose of enabling adjustment of the assembly.” Id. at 26. The Examiner
responds “whether or not Berlin recognized a need for keyhole slots is not
persuasive since such need was recognized and overcome in Hartmann.”
Ans. 19. The Examiner finds Appellant’s argument
ignores the explicit teachings of Hartmann, which provide
reasons why such keyhole slots would provide a useful purpose
in outlet covers, i.e., to allow removal of the outlet cover
without completely removing the mounting screws, aligning the
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socket faces of the outlet cover after installation, and allowing
tightening of the outlet cover after installation.
Id.
We agree with the Examiner. Hartmann’s teaching of using keyhole
slots to permit mounting the assembly of Berlin without the need to
completely remove the requisite mounting screws is persuasive of a useful
purpose for the modification. Accordingly, contention C.2 is not persuasive
of Examiner error.

Contention C.3
We find Appellant’s contention C.3, that it would not have been
obvious to modify Berlin according to Hartmann, unpersuasive for the
reasons supra. We instead agree with the Examiner: “Hartmann teaches the
use of keyhole slots in outlet cover plates and multiple reasons to use them
as discussed above. Accordingly, Examiners find an adequate basis to
support the modification of Berlin in view of Hartmann.” Id. at 20.
For the reasons supra we find contentions C.1, C.2, and C.3
unpersuasive of Examiner error and sustain the rejection of claim 1 under 35
U.S.C. § 103(a) over Berlin and Hartmann. Because Appellant provides no
substantive arguments for patentability in connection with claims 2, 3, 18,
19, and 22 other than to either restate arguments made with respect to
another claim or merely allege that the prior art fails to disclose or suggest
the claimed limitations, we are not persuaded of Examiner error. Therefore,
we also sustain the rejection of claims 2, 3, 18, 19, and 22 under 35 U.S.C.
§ 103(a) over Berlin and Hartmann.

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Contention C.4
Appellant argues that there is no coupling mechanism between
Berlin’s insert (adapter plate) 14 and base 12 and Berlin’s adapter plate is in
front of base plate 12, not between the base plate and the electric outlet as
required by claim 6. App. Br. 27-28. The Examiner responds that Berlin
teaches an engaging mechanism as depicted in Figures 3 and 4 and described
at column 4, lines 5-15. Ans. 21. Addressing the position of the base plate
with respect to an electrical outlet and the base, the Examiner finds openings
52 and 54 (formed in central portion of Berlin’s adapter plate 14) surround
the outlet receptacles while an outer, peripheral portion of adapter plate 14 is
surrounded by base 12. See id. The Examiner concludes, “[t]hese teachings
in combination imply the adapter is located between the base plate and the
outlet.” Id.
We agree with the Examiner. Berlin describes flange 50 extending
around the periphery of insert (adapter plate) 14 securely fits with recess 40
of base plate 12 to form a connection with based plate 12, thereby teaching
or suggesting the disputed engaging mechanism. Berlin col. 4, ll. 6-10.
Furthermore, because an inner portion of adapter plate 14 surrounds the
outlet receptacles and, in turn, is surrounded by base 12, adapter plate 14 is
between the receptacles and the base, thereby teaching or suggesting the
adapter is located between the electrical outlet and the base when the base
assembly is installed on the electrical outlet. Accordingly, we are not
persuaded of error and sustain the rejection of claim 6 under 35 U.S.C.
§ 103(a) over Berlin and Hartmann.

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Contention C.5
Appellant argues, because Berlin’s cover is hinged on one side, it will
only close by gravity when the hinge is positioned at the top of the outlet
cover. App. Br. 29. Therefore, “Berlin clearly does not disclose an outlet
cover that can be mounted in a horizontal or vertical orientation where the
cover will close by gravity in the horizontal orientation and vertical
orientation [as required by claim 23.]” Id. We disagree. As found by the
Examiner, Berlin describes insert 14 can be positioned in aperture 26 of base
plate 12 in two separate orientations 90º apart. Berlin col. 3, ll. 56-59. “Thus,
a single insert can be utilized with a single base plate but can be adapted for
use to cover an electrical outlet that is oriented in either a vertical or an
horizontal orientation.” Id. col. 3, ll. 59-62. Because only insert 14 (adapter
plate) is rotated to accommodate vertical and horizontal orientations, while
hinges 28 remain located at top side 18 of base plate 12 in both orientations,
protective housing 16 will close downwardly against base plate 12 under the
force of gravity in both orientations. Therefore, we find Berlin teaches or
suggests the disputed limitation and sustain the rejection of claim 23.

D. Rejection of Claims 4, 5, 7-17, 20, and 21
over Berlin, Shotey, and Hartmann
Appellant’s Contention
D.1. Berlin does not disclose or suggest an adapter plate having removable
portions while Shotey does not disclose the claimed adapter in an
outlet cover having an accessible keyhole slot as required by claim 7.
App. Br. 30-31.

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Analysis
Contention D.1
We find Appellant’s contention unpersuasive because Appellant is
responding to the rejection by attacking the Berlin and Shotey references
individually, even though the rejection is based on the combined teachings
of the references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. As found by the Examiner “Shotey teaches the
removable portions in outlet cover plates, Berlin teaches the accessible
screw holes and Hartmann teaches using keyhole slots. It is the combination
of Berlin in view of the teachings of Hartmann and Shotey that is applied in
the rejections, not the individual references.” Ans. 23. We agree with the
Examiner.
For the reasons supra, we find contention D.1 unpersuasive of
Examiner error and sustain the rejection of claim 7 under 35 U.S.C. § 103(a)
over Berlin, Shotey, and Hartmann. Furthermore, because Appellant
provides no substantive arguments for patentability in connection with
claims 4, 5, 8-17, 20, and 21 other than to either restate arguments made
with respect to another claim or merely allege that the prior art fails to
disclose or suggest the claimed limitations, we are not persuaded of
Examiner error. Therefore, we also sustain the rejection of claims 4, 5, 8-17,
20, and 21 under 35 U.S.C. § 103(a) over Berlin, Shotey, and Hartmann.

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CONCLUSIONS
We find
1. The Examiner did not err in rejecting claims 1-3, 18, 19, 22, and 23
under 35 U.S.C. § 103(a) over Hayduke and Hartmann.
2. The Examiner did not err in rejecting claims 4, 5, 7-16, 20, and 21
under 35 U.S.C. § 103(a) over Hayduke, Hartmann, and Shotey.
3. The Examiner did not err in rejecting claims 1-3, 6, 18, 19, 22, and 23
under 35 U.S.C. § 103(a) over Berlin and Hartmann.
4. The Examiner did not err in rejecting claims 4, 5, 7-17, 20, and 21
under 35 U.S.C. § 103(a) over Berlin, Shotey, and Hartmann.

DECISION
The Examiner’s decision that claims 1-23 are unpatentable over the
prior art is affirmed.
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) (2010).

AFFIRMED

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For Appellant/Patent Owner:

ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19th Street, N.W.
Suite 600
Washington, DC 20036

For Third Party Requester:

O’SHEA GETZ PC
1500 Main Street
Suite 912
Springfield, MA 01115