Ex parte Edward F. Allina

Board of Patent Appeals and Interferences

Oct 29, 1997

08014379 (B.P.A.I. Oct. 29, 1997)

Application for patent filed February 5, 1993. According1
to appellant, the application is a continuation-in-part of
Application 07/479,856, filed February 14, 1990, now abandoned,
which is a continuation-in-part of Application 06/923,524, filed
October 28, 1986, now U.S. Patent No. 4,931,895, issued June 5,
1990.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EDWARD F. ALLINA

_____________
Appeal No. 97-1002
Application 08/014,3791
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and CRAWFORD, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-1002
Application 08/014,379
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 1-27, which
constituted all the claims in the application. An amendment
after final rejection was filed on February 22, 1996 and was
entered by the examiner. This amendment cancelled claims 6-13
and 22-27. An initial (revised) appeal brief was filed on
February 22, 1996 appealing the rejection as to claims 1-5 and
14-21. The examiner entered several new grounds of rejection in
response to the appeal brief. Appellant filed a reply brief on
June 21, 1996 in which the appeal was waived (withdrawn) with
respect to claims 1-3. Accordingly, this appeal now involves
only claims 4, 5 and 14-21.
The claimed invention pertains to a method and apparatus
for protecting an electrical utility watt-hour meter and the
corresponding metered circuitry from the damage caused by
transient voltage surges.
Representative claim 14 is reproduced as follows:
14. Transient voltage surge suppression (TVSS) apparatus
adapted to protect a watt-hour meter and electrical equipment
metered thereby from lightning or switching transient voltage
surges, comprising a circuit board
(i) carrying means substantially non-conductive at normal
power voltage but conductive at higher voltages, including
varistors as the sole variable resistance components thereof
adapted to clip transient voltage surges and shunt surge currents
to ground,
Appeal No. 97-1002
Application 08/014,379
3
(ii) being adapted to fit around the blade-like terminals
normally protruding from a watt-hour meter into jaws of a powered
socket within an electrical utility box or panel, and
(iii) further adapted to be supported at least in part by
contact with whatever blade-like terminals may engage the jaws of
the socket.
The examiner relies on the following references from
rejections made in the final rejection:
St. John 2,606,232 Aug. 05, 1952
Zisa 3,725,745 Apr. 03, 1973
Melanson 3,914,657 Oct. 21, 1975
Farrar et al. (Farrar) 4,726,638 Feb. 23, 1988
Rozanski et al. (Rozanski) 4,875,137 Oct. 17, 1989
Brady 5,010,438 Apr. 23, 1991
The examiner relies on the following reference from new
rejections made in the examiner’s answer:
Dell Orfano 4,089,032 May 09, 1978
Claims 4, 5 and 14-21 stand rejected under 35 U.S.C.
§ 103. The rejections of the appealed claims are set forth by
the examiner as follows:
1. Claims 4, 5 and 14-17 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Zisa in view of Melanson.
2. Claims 18 and 19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Zisa in view of Melanson, Rozanski and
Brady.
3. Claims 20 and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over St. John in view of Farrar.
4. Claims 4, 5 and 14-17 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Zisa in view of Melanson and
Dell Orfano.
Appeal No. 97-1002
Application 08/014,379
4
5. Claims 18 and 19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Zisa in view of Melanson and Dell Orfano,
and further in view of Brady and Rozanski.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner's
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner's answers.
It is our view, after consideration of the record before
us, that the collective evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set
forth in claims 4, 5 and 14-21. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
Appeal No. 97-1002
Application 08/014,379
5
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
1. The rejection of claims 4, 5 and 14-
17 as unpatentable over Zisa and
Melanson.
Appeal No. 97-1002
Application 08/014,379
6
We note at the outset that dependent claims 4 and 5
depend from non-appealed independent claim 1. The briefs
primarily argue two limitations of these claims which are
allegedly not taught by the applied references. First, appellant
argues that neither Zisa nor Melanson teaches “varistors as the
sole components...adapted to clip transient voltage surges and to
shunt surge current to ground” as recited in independent claims 1
and 14. Second, appellant argues that neither Zisa nor Melanson
teaches the supporting of the surge suppression apparatus by the
blade-like terminals of a watt-hour meter.
With respect to the first point, the examiner argues that
it would have been obvious to the artisan to remove the spark gap
in Zisa or Melanson so as to operate with varistors alone. The
motivation would allegedly be to reduce the number of components
[answer, page 9]. With respect to the second point, the examiner
relies on Zisa as teaching supporting the surge suppression
apparatus on the blade-like terminals of the watt-hour meter.
After a careful review of the applied references and the
arguments of appellant and the examiner, we find ourselves in
agreement with appellant on both points. The examiner and
appellant agree that Zisa discloses a circuit made up of a
variable resistance current limiter in series with an arc
Appeal No. 97-1002
Application 08/014,379
7
discharge arrangement. There is agreement that Melanson teaches
the use of a disk-shaped varistor wafer in series with a gap
electrode. Thus, neither of these references teaches a transient
voltage surge suppression circuit using only varistors as
claimed. Although the examiner argues that it would have been
obvious to eliminate the spark gap from the references, there is
no suggestion for this modification in either Zisa or Melanson.
If Zisa and Melanson could have achieved the same function
without the spark gap, they were apparently not aware of it. Any
suggestion to use only varistors with no other components for
clipping transient voltage surges and shunting surge currents to
ground comes from appellant’s own disclosure and not from the
teachings of the applied prior art. Thus, this particular
feature of independent claims 1 and 14 is not taught or suggested
by the applied references. This finding alone is sufficient for
us not to sustain this particular rejection of claims 4, 5 and
14-17.
Notwithstanding our decision to reverse this rejection of
claims 4, 5 and 14-17 based on the first point argued above, we
consider the second point as well in order to provide guidance to
appellant and the examiner. It is sufficient to say that the
patents to Zisa and Melanson do not support the teachings
Appeal No. 97-1002
Application 08/014,379
8
attributed to them by the examiner. Melanson clearly shows the
surge suppression circuitry connected within and supported by the
baseplate 10 of the watt-hour meter. There is no support
received from the blade-like terminals of the meter. Zisa shows
a blade like terminal 20 connected to the meter circuitry but not
connected to the surge suppression circuitry. It is also clear
that the terminal 20 does not provide support for the surge
suppression circuitry 24 because this device is clearly supported
by base 18 as described by Zisa [column 2, lines 60-63]. Thus,
based upon this record, the applied prior art does not support
the teachings found by the examiner. Therefore, this reason
alone would also have been sufficient for us to reverse this
particular rejection of claims 4, 5 and 14-17.
2. The rejection of claims 18 and 19 as
unpatentable over Zisa, Melanson,
Rozanski and Brady.

These claims depend from independent claim 14 and,
therefore, incorporate all the limitations of claim 14 just
discussed. Zisa and Melanson are insufficient to support the
rejection for reasons discussed above. Rozanski and Brady were
cited to meet particular mounting features of the varistors, but
they do not overcome the innate deficiencies of Zisa and Melanson
Appeal No. 97-1002
Application 08/014,379
9
which were discussed above. Therefore, we do not sustain the
rejection of claims 18 and 19 for the reasons discussed above.
3. The rejection of claims 20 and 21 as
unpatentable over St. John and Farrar.
Claims 20 and 21 are independent claims which contain
neither of the features discussed above. Rather, claims 20 and
21 recite a transient voltage surge suppression circuit board
means having “sidewise flexing contactors” contacting the
protruding terminals of a watt-hour meter. Appellant makes two
main arguments in opposition to this rejection. First, appellant
argues that there is no basis to combine the low voltage d.c.
transient suppression teachings of Farrar with the watt-hour
meter of St. John [brief, page 18; reply brief, pages 7-8].
Second, appellant argues that there is no teaching of the
sidewise flexing contactors in Farrar as alleged by the examiner
[brief, page 19]. The examiner responds that the breadth of
these claims permits the combination of Farrar’s teachings with
those of St. John, and the flexing contactors are taught either
by contacts 32 and 36 of Farrar or contacts 34 and 36 of St. John
[answer, pages 11-12]. We have again carefully considered the
record before us, and we find ourselves in agreement with
appellant.
Appeal No. 97-1002
Application 08/014,379
10
Although Farrar does teach a device for protecting
against voltage surges, the invention is for use in protecting
integrated circuit components which are packed into extremely
small spaces and for retrofitting existing electrical circuit
connectors. We fail to see how the Farrar device which is
designed for closely packed integrated circuits would have
relevance to the watt-hour meter of St. John. None of the
problems sought to be overcome by Farrar would be expected to
exist in the St. John watt-hour meter. Therefore, we agree with
appellant that the teachings of Farrar and St. John do not
suggest their combination in a manner to meet the invention of
claims 20 and 21.
We also agree with appellant that neither Farrar nor St.
John suggests anything comparable to a sidewise flexing contactor
as recited in claims 20 and 21. The items identified by the
examiner are simply apertures or contact points and have nothing
to do with contactors for contacting the protruding terminals of
a watt-hour meter as claimed. Thus, even if Farrar and St. John
could be combined as proposed by the examiner, there would still
be no teaching of the “sidewise flexing contactors” as recited in
claims 20 and 21. Therefore, we do not sustain this rejection of
claims 20 and 21.
Appeal No. 97-1002
Application 08/014,379
11
4. The rejection of claims 4, 5 and 14-
17 as unpatentable over Zisa, Melanson
and Dell Orfano.
This rejection is similar to the first rejection
discussed above except that Dell Orfano is added to the
collective teachings. Dell Orfano is added to the combination
because it teaches a transient voltage surge suppressor using
only varistors to clip the voltage and shunt the surge current to
ground. We agree with the examiner that Dell Orfano would be
sufficient to overcome the first deficiency in the Zisa-Melanson
combination discussed above. That is, we agree that Dell Orfano
would have suggested to the artisan the obviousness of using
varistors only to clip voltage surges and shunt surge currents to
ground. Nevertheless, the second deficiency of the Zisa-Melanson
combination discussed above is not corrected by the addition of
Dell Orfano as applied by the examiner. The examiner does not
rely on Dell Orfano at all to teach supporting the surge
suppressor circuit on the blade-like terminals of a watt-hour
meter. The examiner still relies on Zisa and Melanson for this
teaching which, as noted above, is not supported by the reference
teachings. Therefore, this rejection still lacks a valid
explanation as to why the claimed support by the blade-like
terminals would have been obvious in view of the applied prior
Appeal No. 97-1002
Application 08/014,379
12
art. Accordingly, we do not sustain this rejection of claims 4,
5 and 14-17.
5. The rejection of claims 18 and 19 as
unpatentable over Zisa, Melanson, Dell
Orfano, Brady and Rozanski.
This rejection is just like the second rejection
discussed above except that Dell Orfano is again added to the
combination of patents used to reject these claims. For the same
reasons we have just discussed, Dell Orfano does not overcome the
deficiencies previously noted in the rejection of claims 18 and
19. Therefore, we also do not sustain this rejection of claims
18 and 19.
In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 4, 5 and 14-21 is reversed.
REVERSED
Appeal No. 97-1002
Application 08/014,379
13
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Charles A. McClure
P. O. Box 1168
Tampa, FL 33601