Ex Parte 7737809 et al

Patent Trial and Appeal Board

May 27, 2016

95001992 (P.T.A.B. May. 27, 2016)

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.
95/001,992 05/16/2012 7737809 40041-703.999 1051
73609 7590 05/31/2016
Leviton Manufacturing Company Incorporated (CDFS)
c/o Carter, DeLuca, Farrell & Schmidt, LLP
445 Broad Hollow Rd. Ste. 420
Melville, NY 11747
EXAMINER
TON, MY TRANG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/31/2016 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
________________

ZHEJIANG TRIMONE ELECTRIC SCIENCE & TECHNOLOGY CO.,
LTD. and FUJIAN HONGAN ELEC. CO.,
Third Party Requesters,

v.

LEVITON MANUFACTURING CO., INC.,
Patent Owner.
____________

Appeal 2015-004513
Inter Partes Reexamination Control No. 95/001,992
Patent US 7,737,809 B2
Technology Center 3900
________________

Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, AND
JENNIFER L. McKEOWN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
This proceeding arose from a Request for Inter Partes Reexamination
Under 35 U.S.C. §§ 311–318 (“Request”)1 of US Patent 7,737,809 B2,
which is entitled “CIRCUIT INTERRUPTING DEVICE AND SYSTEM
UTILIZING BRIDGE CONTACT MECHANISM AND RESET
LOCKOUT” (issued to Frantz Germain et al. on June 15, 2010 from
Application 10/690,776, filed Oct. 23, 2003) (“the ’809 Patent”).
Owner notes various other proceedings that involve the ’809 Patent.
PO App. Br. 2. These related proceedings include one before the
International Trade Commission and three US District Court cases. Id. We
refer to the Owner’s Appeal Brief for the details.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We review the
appealed rejections for error based upon the issues identified by Appellants,
and in light of the arguments and evidence produced thereon. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm.

1 Inter Partes Reexamination Request 95/001,992 (“Request”) was filed
May 16, 2012 by Zhejiang Trimone Electric Science & Technology Co. Ltd.
and Fujian Hongan Elec. Co. (“Requesters”). In addition to this Request, we
also refer to various other documents throughout this Opinion, including
(1) the Right of Appeal Notice, mailed March 27, 2014 (“RAN”); (2) the
Revised Patent Owner’s Brief on Appeal, filed July 16, 2014 (“PO App.
Br.”); and (3) the Examiner’s Answer, mailed December 10, 2014
(incorporating the RAN by reference) (“Ans.”). The record indicates that
Requester did not file a Respondent Brief on appeal and Owner did not file a
Rebuttal Brief.
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THE INVENTION AND CLAIMS
The ’809 Patent describes the invention as follows:
A [ground fault circuit interrupter] GFCI device which has
reverse wiring protection is provided where no power is present
at the face terminals even when the device is reverse wired. The
device has a pair of movable bridges connected to its terminals.
The terminal bridge pair makes contact with the load and face
terminals providing power to these terminals when the device is
reset. The device also has a reset lockout feature that prevents it
from being reset after having been tripped if the circuit
interrupting portion of the device is non-operational.
Abstract.
Independent claim 1 is illustrative of the appealed claims:
1. A circuit interrupting device comprising:
a first pair of electrical conductors including a phase and
neutral, the first pair of electrical conductors adapted to
electrically connect to a source of electric current;
a second pair of electrical conductors including a phase
and neutral;
a third pair of electrical conductors including a phase and
neutral, wherein the first, second, and third pairs of electrical
conductors are electrically isolated from each other and
positioned to electrically connect to at least one user accessible
receptacle;
a lifter having a first opening defined therein and
configured to move between a first position which provides
electrical continuity between the first pair of electrical
conductors and at least one of the second and third pairs of
electrical conductors and a second position which breaks
electrical continuity between at least two of the electrical pairs of
electrical conductors;
a circuit interrupter configured to movably engage a latch
having a second opening defined therein and positioned to
substantially align with the first opening of the lifter to move the
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lifter from the first position to the second position upon the
occurrence of an electrical abnormality; and
a reset arm configured to movably reorient the lifter to the
first position when the latch is disengaged by the circuit
interrupter to reestablish electrical continuity between the pairs
of electrical conductors after resolution of the electrical
abnormality.

THE APPEALED REJECTIONS
Claims 1–3, 8, 9, 11, 13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable of Echtler (US 5,239,438; issued Aug. 24,
1993) in view of Marcou (US 6,199,264 B1; issued Mar. 13. 2001).
PO App. Br. 2, 4.2

CONTENTIONS and ANALYSIS
Owner presents three general arguments in relation to this
obviousness rejection. We address these general arguments separately.
I.
First, Owner argues that “the Examiner has failed . . . to make a prima
facie case of obviousness because she has failed to demonstrate any
teaching, suggestion, or motivation in these references or elsewhere to add
elements to, or modify the device of Echtler based on the teaching of
Marcou.” PO App. Br. 6; accord id. 4–8.
More specifically, Owner surmises that the Examiner is substituting
for Echtler’s switching lock S, the components of Marcou’s latch block 82

2 Claims 4, 6, 10, 35–37, 39, and 41–46 are confirmed, and claims 5, 7, 12,
14, 17–34, 38, 40, 47–83 are not subject to reexamination. PO App. Br. 2.
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(PO App. Br. 7), and Owner argues that the Examiner never satisfactorily
addresses why one would have wanted to do so (id.). Owner further argues
that the prior art of record does not provide a teaching, suggestion, or
motivation to make such a substitution (id. 7–8), that Echtler does not
suggest that it would benefit from having Marcou’s components (id. 8), and
that the prior art does not suggest that Echtler “is deficient in some fashion
or suffers from a problem that could be mitigated or resolved by [Marcou’s]
components” (id.).
This argument is unpersuasive. Even assuming for the sake of
argument that the Examiner has not recited any express motivation for
combining the teachings of Echtler and Marcou, the Supreme Court has held
that while the Examiner’s obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (internal citation
omitted).
In the present case, the RAN sets forth additional functionalities that
are missing from Echtler, but present in Marcou. E.g., RAN 7 (explaining
the Echtler does not describe a lifter and describing the functionality of
Marcou’s lifter/latch block 82); accord id. 5–10. As such, we understand the
Examiner’s position to be that the inclusion of Marcou’s lifter/latch block 82
into Echtler’s device merely constitutes combining prior art elements
according to known methods to yield predictable results (KSR, 550 U.S. 398
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at 401) or possibly a simple substitution of one known element for another to
obtain predictable results (KSR, 550 U.S. 398 at 417).
In either case, as the Examiner has established a prima facie case of
obviousness, the burden has shifted to Owner to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In the
present case, Owner has not persuasively shown error in the Examiner’s
determination that combining the teachings would improve Echtler’s device
in a predictable way and produce predictable results.

II.
Second, Owner argues that “[r]eplacing the switching lock S of
Echtler with the latch block 82 of Marcou would frustrate the intended
purpose of Echtler.” PO App. Br. 9 (citing MPEP § 2143.01.V for the
proposition that “[if the] proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation to make the proposed modification”).
Owner argues that the modification would render Echtler
unsatisfactory for its intended purpose based upon “Echtler’s stated
objective of a compact and economical device.” Id. According to Owner,
modifying Echtler’s device with Marcou’s latch block would “[c]learly . . .
have an associated cost not otherwise carried by the Echtler device.” Id.
Owner further contends that “there [is] no evidence that making the
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modifications suggested by the Examiner . . . would not adversely impact the
compactness and economics of the Echtler device.” Id.
These arguments are unpersuasive of error. First, Owner’s assertions
that the modification would increase the size and cost of Echtler’s device is
unsupported by any evidence or declaration. It is well settled that arguments
of counsel cannot take the place of factually supported objective evidence.
See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Even if we were to assume for the sake of argument, though, that the
proposed combination would adversely impact both the compactness and
economics of Echtler’s device, the arguments still would be unpersuasive.
Regarding the economics, the fact “[t]hat a given combination would not be
made by businessmen for economic reasons does not mean that persons
skilled in the art would not make the combination because of some
technological incompatibility.” In re Farrenkopf, 713 F.2d 714, 718
(Fed. Cir. 1983). In similar regard to the compactness, “[a] reference does
not teach away […] if it merely expresses a general preference for an
alternative invention[.]”). DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).

III.
Third, Owner argues that “[t]he Examiner and TPR have resorted to
impermissible hindsight to reject the claims.” PO App. Br. 10. More
specifically,
the Examiner has relied upon impermissible hindsight on page 8
of the RAN in proposing replacing the switching lock S of
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Echtler with the latch block 82 of Marcou. As stated above, the
TPR and the Examiner merely picked and chose among
individual parts of the two prior art references to teach the
claimed invention without providing any details or basis within
the prior art that would support the combination or modification
. . . Thus, the Examiner used the Appellant’s application as a
road map to show that the prior art references teach the claimed
invention which is impermissible as it resorts to hindsight.
PO App. Br. 10 (citing In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)
for the proposition that “[c]ombining prior art references without evidence
of a suggestion, teaching, or motivation simply takes the inventor’s
disclosure as a blueprint for piecing together the prior art to defeat
patentability—the essence of hindsight.”)
This argument is unpersuasive. The Supreme Court rejected the
wooden application of rigid preventative rules such as the teaching-
suggestion-motivation test in determining obviousness. KSR, 550 U.S. at
402–03. As explained above, the adopted rejection is based upon the
rationale that the proposed combination merely constitutes combining prior
art elements according to known methods to yield predictable results, and
we conclude that including Marcou’s lifter/latch block 82 into Echtler’s
device merely constitutes combining prior art elements according to known
methods to yield predictable results.

CONCLUSION
For the above reasons, Owner has not persuaded us of error in the
obviousness rejection of independent claim 1 over the combination of
Echtler and Marcou. We therefore affirm the rejection of this claim, as well
as the rejection of claims 2, 3, 8, 9, 11, 13, 15, and 16, which were not
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argued separately. See PO App. Br. 4–11; see also 37 C.F.R.
§ 41.67(c)(1)(vii).
DECISION
The Examiner’s decision rejecting claims 1–3, 8, 9, 11, 13, 15, and 16
is affirmed.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Patent Owner:

LEVITON MANUFACTURING COMPANY INCORPORATED (CDFS)
C/O CARTER, DELUCA, FARRELL & SCHMIDT, LLP
445 BROAD HOLLOW RD. STE. 420
MELVILLE, NY 11747

Third Party Requester:

KRYSTYNA COLANTONI
MEI & MARK LLP
P.O. BOX 65981
WASHINGTON, DC 20035