Ex Parte Bazayev et al

Patent Trial and Appeal Board

Jun 6, 2016

13234791 (P.T.A.B. Jun. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/234,791 09/16/2011
128168 7590 06/08/2016
Michael Best & Friedrich LLP (Hubbell)
100 East Wisconsin A venue
Suite 3300
Milwaukee, WI 53202
FIRST NAMED INVENTOR
Edward BAZA YEV
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
58392 4318
EXAMINER
FIGUEROA, FELIX 0
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
06/08/2016 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):
mkeipdocket@michaelbest.com
kmbarner@michaelbest.com
webradley@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD BAZA YEV and THOMAS LOUIS SCANZILL0 1
Appeal2015-001694
Application 13/234, 791
Technology Center 2800
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1---6, 8, and 10-22, all remaining claims of the application.2 We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Hubbell Incorporated as the real party in interest.
Appeal Brief 3.
2 In this Decision, we refer to Appellants' Appeal Brief ("App. Br.," filed
July 3, 2014); Appellants' Reply Brief ("Reply Br.," filed October 22,
2014); the Final Office Action ("Final Act.," mailed January 6, 2014); the
Examiner's Answer ("Ans.," mailed on August 27, 2014); and the original
Specification ("Spec.," filed September 16, 2011 ).
Appeal2015-001694
Application 13/234,791
THE INVENTION
Appellants' invention is directed to "an electrical connector having
dual latches for connecting to an electrical device." Spec. i-f 1.
Independent claim 1, reproduced below, is representative:
1. An electrical plug connector, comprising:
a housing;
first and second latching arms directly pivotally connected to
said housing;
first and second barriers connected to said housing to protect
said first latching arm, said first latching arm being directly connected
to said housing at a location spaced from and between said first and
second barriers; and
third and fourth barriers connected to said housing to protect
said second latching arm, said second latching arm being directly
connected to said housing at a location spaced from and between said
third and fourth barriers.
THE REJECTIONS
Claims 1---6, 10-19, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kobayashi (US 7,575,464 B2; Aug. 18,
2009) and Shimizu et al. (US 7,114,982 B2; Oct. 3, 2006). Final Act. 2---6.
Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi, Shimizu, and Benoit (US 2009/0197461 Al;
Aug. 6, 2009). Final Act. 6-7.
ANALYSIS
Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants did not make in the
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Appeal2015-001694
Application 13/234,791
Briefs have not been considered and are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We are not persuaded by Appellants' contentions of Examiner error
(App. Br. 7-13; Reply Br. 2--4). We adopt as our own the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2-9) and as set forth by the Examiner in the Answer
(Ans. 2---6). We highlight and address specific arguments and findings for
emphasis as follows.
Claims 1, 3-6, 8, 10, and 11
Regarding claim 1, the Examiner relies on Kobayashi for disclosing a
first latching arm positioned between first and second barriers and relies on
Shimizu, in combination with Kobayashi, only for disclosure of a second
latching arm with third and fourth barriers. Final Act. 2-3. The Examiner
further finds "[i]t would have been obvious to a person of ordinary skill in
the art at the time the invention was made to [modify] the connector of
Kobayashi with two latching arms and four barriers, as taught by Shimizu, in
order to provide better/redundant retention." Final Act. 3.
Appellants contend Shimizu teaches away from the proposed
combination. App. Br. 10-11. In particular, Appellants argue column 1,
line 36 to column 4, line 44 of Shimizu disparages "direct connection
hinges" as lock arms. Id. (citing Shimizu 1:47-51, 13:42-54, Fig. 5). A
prior art reference does not teach away from the claimed subject matter
unless the prior art reference criticizes, discredits or otherwise discourages
the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
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Appeal2015-001694
Application 13/234,791
F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away,
however, if it merely expresses a general preference for an alternative
invention but does not 'criticize, discredit, or otherwise discourage'
investigation into the invention claimed.") (citing Fulton, 391 F.3d at 1201).
Appellants have not persuaded us Shimizu discourages, discredits, or
criticizes the claimed solution to thereby teach away from the proposed
combination with Kobayashi. Appellants specifically contend Shimizu's
disclosure of high manufacturing costs for devices requiring two slide dies
teaches away from the invention. App. Br. 10 (citing Shimizu 1:47-51).
Appellants suggest other portions of Shimizu similarly teach away from the
proposed combination. 3 Id. We are not persuaded any of these cited
teachings discourage the ordinarily skilled artisan from considering
Shimizu's second latch with associated barriers in combination with
Kobayashi's first latch with barriers to teach or suggest the claimed
invention.
Accordingly, we sustain the Examiner's rejection of independent
claim 1. For similar reasons, we sustain the Examiner's rejection of
dependent claims 3---6, 8, 10, and 11, which are not argued separately.
App. Br. 12-13.
3 We note Appellants cite Shimizu column 1, lines 4 7-51 for disclosure of
accommodation of desirable fulcrum positions and for the need to increase
thickness of a lock arm. App. Br. 10. We find no such disclosures at this
cited location of Shimizu but find related teachings elsewhere in Shimizu.
Regardless, we remain unpersuaded of Examiner error.
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Appeal2015-001694
Application 13/234,791
Claims 12 and 14-22
Regarding independent claim 12, Appellants contend the Examiner
erred in finding Kobayashi teaches or suggests a plurality of wires adapted
"for connection to building wiring" as recited in claim 12 (and as similarly
recited in claim 21 dependent from claim 12). App. Br. 12. In particular,
Appellants argue the Examiner "appears to give no patentable weight to the
phrase after the term adapted." Id.
We are not persuaded the Examiner erred. The Examiner explains "a
recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order
to patentably distinguish the claimed invention from the prior art." Ans. 5.
We agree. Our reviewing court guides, "[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). The
recited intended use of wires "adapted for connection to building wiring," as
recited in claim 12 (or adapted for connection to a building wiring box as
recited in claim 21 ), does not modify or limit the structure of the claimed
wiring device. Thus, we agree with the Examiner and afford no patentable
weight to the above-identified disputed limitation of claims 12 and 21.
Accordingly, we sustain the Examiner's rejection of independent
claim 12 and claim 21 dependent therefrom. For similar reasons, we sustain
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Appeal2015-001694
Application 13/234,791
the Examiner's rejection of dependent claims 14--20 and 22, which are not
argued separately. App. Br. 12-13.
Claims 2 and 13
Claim 2 depends from claim 1 and further recites "wherein said first
and second latching arms are oppositely disposed on opposite sides of said
housing." Claim 13 includes a similar recitation and depends from claim 12.
As discussed supra, the Examiner relies on Kobayashi for teaching a first
latch between two barriers and relies on Shimizu for teaching a second latch
between two barriers. Final Act. 2-3. The Examiner also relies on Shimizu
for teaching the second latch is at the opposing side of a housing relative to
the first latch. Final Act. 3. The Examiner also notes the mere duplication
of parts generally involves only routine skill in the art. Final Act. 3.
Appellants argue a duplicate latch could be located "90 degrees away
on the side" of the original latch and, thus, the Examiner "has not suggested
how any alleged mere duplication of parts would have resulted in such
merely duplicated part oriented on opposing sides of the housing." Reply
Br. 3. Further, Appellants contend the Examiner has not considered
"Appellants' stated benefits of permitting the installer to manipulate the
latch with just two fingers in at least certain embodiments." Id.
Appellants' contentions are unpersuasive of Examiner error. At the
outset, we note Appellants' statement that Kobayashi and Shimizu does not
disclose Appellants' stated benefit of using two fingers to manipulate the
latch is not commensurate with the scope of claim 1 and, thus, does not
persuade us of error in the Examiner's rejection. See In re Self, 671 F.2d
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Application 13/234,791
1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be
relied upon for patentability).
Further, Appellants' argument is not responsive to the Examiner's
rejection. Figure 2 of Shimizu is illustrative and is reproduced below:
Fig. 2
20
3B ;-
40A
40
406
11
90
Figure 2 of Shimizu illustrates plug 1 for connecting to receptacle 2.
Shimizu col. 11, 1. 24---col. 12, 1. 17. As shown, plug 1 includes housing 10
and lock mechanisms 11 on opposing sides of housing 10. Each lock
mechanism 11 includes torque rods supporting lock arms 3. The Examiner
finds, and we agree, "Shimizu discloses the first and second latching arms
being oppositely disposed on opposite sides of the housing." Final Act. 3.
Thus, Shimizu, in the proposed combination, explicitly teaches the latches
and associated barriers at opposing sides of the housing as claimed.
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting claim 2 or claim 13 argued together with claim 2. App.
Br. 12-13.
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Appeal2015-001694
Application 13/234,791
DECISION
We affirm the Examiner's decision to reject claims 1---6, 8, and 10-22.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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