Ex Parte EllisDownload PDFPatent Trial and Appeal BoardMay 18, 201612567063 (P.T.A.B. May. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/567,063 21127 7590 POLSINELLI PC 100 Cambridge Street Suite 2101 BOSTON, MA 02114 0912512009 05/20/2016 FIRST NAMED INVENTOR Lawrence A. Ellis 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. B039-7018US2 3571 EXAMINER MILLISER, THERON S ART UNIT PAPER NUMBER 2835 NOTIFICATION DATE DELIVERY MODE 05/20/2016 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): dcdocketing@novakdruce.com thendricks@polsinelli.com athumann@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LA WREN CE A. ELLIS Appeal2014-006076 Application 12/567,063 Technology Center 2800 Before ELENI MANTIS MERCADER, JEFFREY S. SMITH, and BRUCE R. WINSOR, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-21, which constitute all the claims pending in this application. We have jurisdiction under 3 5 U.S. C. § 6(b ). Oral arguments were heard April 21, 2016. A transcript of that hearing is included in the record. We affirm. 1 The real party in interest identified by Appellant is Boston Retail Products, Inc. (App. Br. 2.) Appeal2014-006076 Application 12/567,063 RELATED PROCEEDINGS The present application and Application 12/567 ,021 both claim priority to Provisional Application 61/144,163. Application 12/567,021 (now abandoned) is identified by Appellant as being the subject of an appeal (Notice of Appeal filed May 2, 2013) related to the instant appeal. (App. Br. 3.) The appeal in 12/567,021 was docketed as Appeal 2013-010093 ("'093 Appeal") and decided February 2, 2016. STATEMENT OF THE CASE The Invention Appellant's disclosed invention "relates to electrical power distribution and mounting systems and more particularly to a modular system for mounting and displaying electrically powered devices, where the mounting system provides for the distribution of power." (Spec. i-f 2.) Claim 14, which is illustrative, reads as follows: 14. An apparatus for delivering electrical power to an electrically powered device, the apparatus comprising: a housing comprising a mounting wall having a front side, a rear side, a width from side to side and a height from top to bottom; the electrically powered device having a weight and being mountable on or to the front side of the mounting wall, the mounting wall bearing the weight of the device; one or more elongated struts attached to the rear side of the mounting wall at a plurality of positions across the width of the mounting wall; the mounting wall having a plurality of apertures and the electrically powered device comprising a base including at least one mounting pin protruding from the base, the apertures in the mounting wall being configured and arranged such that the 2 Appeal2014-006076 Application 12/567,063 mounting pin of the electrically powered device is readily receivable through and retainable within an aperture against lateral or axial movement and against the weight of the device to mount the electrically powered device on the wall when the wall is disposed in an upright position; and, the device being connected to a source of power on receipt and retention of the mounting pin through the aperture in the mounting wall. The Rejections Claim 14 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Slesinger et al. (US 6,527,406B1; Mar. 4, 2003) ("Slesinger"). (See Final Act. 2-3.) Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Slesinger. (See Final Act. 4--8.) Claims 1, 2, 4--10, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Slesinger and Mou et al. (US 6,382,999 B 1; May 7, 2002) ("Mou"). (See Final Act. 8-16.) Claims 3, 11-13, 17, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Slesinger, Mou, and Stahl et al. (US 5,873,553; Feb, 23, 1999) ("Stahl"). (See Final Act. 17-28.) The Record Rather than repeat the arguments here, we refer to the Briefs ("App. Br." filed Feb. 19, 2014; "Reply Br." filed Apr. 28, 2014), the transcript of the oral hearing ("Tr."), and the Specification ("Spec." filed Sept. 25, 2009) for the positions of Appellant and the Final Office Action ("Final Act." mailed Sept. 12, 2013) and Answer ("Ans." mailed Apr. 21, 2014) for the reasoning, findings, and conclusions of the Examiner. We also refer to the Decision in Appeal 2013-010093 ("'093 Dec'n") and the transcript of the 3 Appeal2014-006076 Application 12/567,063 oral hearing ("Tr."). Only those arguments actually made by Appellant in the Briefs have been considered in this decision. Arguments that Appellant does not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). Accordingly, arguments made for the first time at the oral hearing (see, e.g., Tr. 13: 19-14:6) have not been considered.2 See 37 C.F.R. § 41.47(e)(l); cf Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.") (discussing arguments raised for the first time in a reply brief). Were we to automatically consider such newly raised arguments, "[r]ather than reviewing a record for error, the Board would be considering, in the first instance, findings of fact proposed by the Appellants, but not weighed by the Examiner [in the Examiner's Answer] against the other evidence of record." Borden, 93 USPQ2d at 1475. ISSUES The issues timely presented by Appellant's arguments are as follows: Whether the Examiner errs in finding Slesinger discloses 2 The fact that arguments presented for the first time at the oral hearing relate to limitations reproduced in the Briefs (see Tr. 13:25, 14:3) does not, in itself, amount to presentation of the arguments in the Briefs. See 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). 4 Appeal2014-006076 Application 12/567,063 [an] electrically powered device ... being mountable on or to the front side of [a] mounting wall [,] ... the electrically powered device comprising a base including at least one mounting pin protruding from the base, . . . such that the mounting pin of the electrically powered device is readily receivable through and retainable within an aperture against lateral or axial movement (the "device limitation"), as recited in claim 14. Whether the Examiner errs in finding Slesinger discloses "one or more elongated struts attached to the rear side of the mounting wall at a plurality of positions across the width of the mounting wall" (the "strut limitation"), as recited in claim 14. Whether the Examiner errs in finding the combination of Slesinger and Mou teaches or suggests the electrically powered device ... [has] a primary pin[,] . . . the mounting wall [has] a primary aperture that is adapted to receive and retain the primary pin against lateral or axial movement out of the primary aperture[,] and wherein the power receiving and ground contacts of the electrically powered device are routed or guided into engagement with . . . power delivery contacts and ground contact of the power delivery member upon receipt of the primary pin within the primary aperture (the "primary pin limitation") as recited in claim 21. Whether the Examiner errs by improperly combining Slesinger and Mou. ANALYSIS The Device Limitation The Examiner maps the "electrically powered device" recited in claim 14 to Slesinger's spot-light 26 (Slesinger col. 4, 11. 38--41, Figs. 1, 13), inter alia, having a jack 143 (id. col. 8, 11. 51-55, Figs. 12, 13) (i.e., a plug) that 5 Appeal2014-006076 Application 12/567,063 acts as a mounting device and electrical power connector for spot-light 26. (See Final Act. 2-3.) Slesinger's Figure 12 is reproduced below, with added annotations in boxes. FIG. 12 Slesinger's Figure 12 is a perspective view of a jack (i.e., plug) resembling a Y4-inch phone jack and a mating electrical socket resembling a panel-mount socket for a Y4-inch phone jack. (See Slesinger col. 8, 11. 46-51.) The Examiner maps the recited "base including at least one mounting pin protruding from the base" to jack 143 (Slesinger Fig. 12), mapping the mounting pin to tip portion 141 (id.; see also id. Fig. 13) of the jack and the base to that portion of jack 143 not comprising tip portion 141. (Final Act. 3.) The Examiner maps the recited "aperture" to electrical socket 25 (Slesinger Fig. 12; see also id. Fig. 1 ). (Final Act. 2.) In the Appeal Brief Appellant argues that various items disclosed by Slesinger and identified by the Examiner do not disclose the device 6 Appeal2014-006076 Application 12/567,063 limitation. (See App. Br. 14--16, 17-18.) Appellant's arguments in the Appeal Brief are unpersuasive because they do not address all of the disclosure of Slesinger relied on by the Examiner. In particular, Appellant's arguments in the Appeal Brief do not address the Examiner's reliance on Slesinger's spot-light 26. (See id.) In the Reply Brief Appellant addresses the Examiner's reliance on the Slesinger's spot-light 26 to disclose the device limitation and, more particularly on the Examiner's reliance on Slesinger's jack 143 and tip portion 141 to disclose the recited "base including at least one mounting pin protruding from the base." (Reply Br. 1-3.) Appellant first contends the Examiner's reliance on Slesinger is "is based entirely on the Examiner's own understanding and experience (theorized re-invention) and not on any actual 'evidence' of record." (Reply Br. 1 (citing In re Wallen, 565 F. App'x 867, 869 (Fed. Cir. 2014)).) We disagree. Unlike the examiner in Wallen, here the Examiner cites to specific evidence in the record, and in particular to Slesinger's Figures 1 and 12 and to Slesinger's discussions at lines 37--41 of column 4 and lines 53-55 of column 8, to support the mapping of the device limitation to Slesinger (see Final Act. 2-3). Appellant argues Slesinger's tip portion 141 is "a highly polished metal, smooth surfaced cylindrical tube (141a) having a pointed conical end (141c), the undisputed purpose of which is to enable the user to quickly and easily slide the cylindrical plug [i.e., tip portion] 141 laterally back and forth into and out of the socket 25." (Reply Br. 2.) Appellant concludes Slesinger's tip portion 141 "not only does not disclose, but is purposely contrary to the claim language of every independent claim of this application" (id.) which recite, for example, that the "the mounting pin of the 7 Appeal2014-006076 Application 12/567,063 electrically powered device is readily receivable through and retainable within an aperture against lateral or axial movement" (claim 14 ). We note that although the claim recites "lateral or axial" directions of movement, Appellant's Specification uses both "lateral" and "axial" to refer to the direction perpendicular to the opening of the recited aperture. (See Spec. i-fi-f 165, 167, 171-72, Figs. 4, 30.) The only evidence Appellant identifies to support Appellant's characterization of Slesinger's tip portion 141 is Slesinger's Figure 12. (See Reply Br. 2.) That the "undisputed purpose"3 of the conical tip is to "enable the user to quickly and easily slide the ... [tip portion] 141 laterally back and forth into and out of the socket 25" (id.) is attorney argument based solely on Figure 12, the associated description, and Appellant's own understanding and experience, i.e., that of a person skilled in the art. We agree that one of ordinary skill in the art reading Slesinger would understand how a Y4-inch phone jack and socket function. We agree with Appellant that a person of ordinary skill in the art would understand the conical tip of Slesinger's jack to have a purpose of enabling the tip portion to be "readily receivable through ... an aperture" (claim 14) by, inter alia, deflecting a resilient detent in socket 25. The tip portion 141 of the jack 143 illustrated in Figure 12 also has a concave recess formed annularly around the tip portion between items 141 b and 141 c. We further find that one of ordinary skill in the art, understanding how a Y4-inch phone jack and socket function, would understand the annular concave recess in the jack to mate with the resilient detent in the socket to provide 3 We note that the purpose of the conical tip is "undisputed" at least in part because Appellant presents this argument for the first time in the Reply Brief, after the mailing of the Examiner's Answer. 8 Appeal2014-006076 Application 12/567,063 resistance to hold the jack in the socket, so that the tip portion 141 is "retainable within [the] aperture [i.e., socket 25] against lateral or axial movement" (claim 14). Therefore, we agree with the Examiner that Slesinger discloses the device limitation recited in claim 14, and similarly recited in claims 1, 11, 18, and21. In view of the foregoing, we find Appellant's contentions regarding the fastening of Slesinger's socket (Reply Br. 3) to be moot. Also in view of the foregoing, we find no teaching away from the claimed invention in Slesinger. (See id.) The Strut Limitation The Examiner maps the recited "struts" to Slesinger's sill member 68 (Slesinger Fig. 1 ), vertical members 12 (id. Figs. 8B-C), and horizontal members 14, 52 (id. Fig. 2). (Final Act. 2-3.) Appellant contends Slesinger's "[e]lements 68, 12, 13 [sic; 14] are edge or border frames, not struts." (App. Br. 16.) We are not persuaded of error. The ordinary meaning of "strut" is "a structural piece designed to resist pressure in the direction of its length." MERRIAM-WEBSTER'S NEW COLLEGIATE DICTIONARY 1167 (10th ed. 1999) (noun, def. 1). The Specification provides no definition of "strut," describing the "struts" as "reinforcing struts" (Spec. i-f 190) or "reinforcement struts" (id. i-f 191 ), which is consistent with the ordinary meaning. We conclude the broadest reasonable interpretation of "struts" is the ordinary meaning. (See also Ans. 8.) Considering Slesinger's vertical supports 12 (Slesinger Fig. 1 ), for example, they are attached to the rear of powered panel 24 (id.), i.e., the 9 Appeal2014-006076 Application 12/567,063 recited "mounting wall" (claim 14), at each edge of the powered panel, i.e., "at a plurality of positions [two] across the mounting wall" (id.). When the powered panel 24 is attached, the vertical supports 12 carry the weight of the powered panel 24 and any devices (e.g., spot-light 26) attached to the powered panel 24, resisting pressure from the weight of the panel and devices in the vertical direction, i.e., the direction of its length. Furthermore, by framing the powered panel 24 (App. Br. 16) the vertical supports 12 reinforce the attached panel. That Slesinger may disclose that its panel has additional reinforcing elements 137 does not affect the function of the vertical supports 12. (See App. Br. 17.) Furthermore, Appellant's contentions that Slesinger does not disclose a standalone single sheet mounting wall or strut anywhere between the edges of the walls (id.) are not probative of whether Slesinger vertical supports 12 are "struts" as recited in claim 14. Accordingly, we agree with the Examiner that Slesinger discloses the strut limitation recited in claim 14, and similarly recited in claims 1, 11, 18, and 21. The Primary Pin Limitation The Examiner maps the "electrically powered device" recited in claim 14 to Slesinger's spot-light 26 (Slesinger col. 4, 11. 38--41, Figs. 1, 13), having a jack 143 (id. col. 8, 11. 51-55, Figs. 12, 13) that acts as a "primary pin" and having "power receiving ... contacts" for spot-light 26. (See Final Act. 27.) The Examiner maps the recited "primary aperture" and "power delivery contacts" to electrical socket 25 (Slesinger Fig. 12; see also id. Fig. 1). (Final Act. 26-27.) 10 Appeal2014-006076 Application 12/567,063 In the Appeal Brief Appellant argues that various items disclosed by Slesinger and identified by the Examiner do not disclose the primary pin limitation. (See App. Br. 25-27.) Appellant's arguments in the Appeal Brief are unpersuasive because they do not address all of the disclosure of Slesinger relied on by the Examiner. In particular, Appellant's arguments in the Appeal Brief do not address the Examiner's reliance on Slesinger's jack 143 and socket 25. (See id.) To the extent that Appellant addresses the Examiner's reliance on Slesinger's jack 143 and socket 25 in the Reply Brief, we have addressed those arguments supra regarding the device limitation. We note, for emphasis only, that although claim 21 recites a "primary pin" mating with a "primary aperture," nothing in claim 21 precludes the recited "one or more selected ... apertures" through which the recited "power receiving ... contacts" extend from being the "primary aperture." Furthermore, nothing in claim 21 precludes the "power receiving ... contacts" from being located on the recited "primary pin." Therefore, we agree with the Examiner that Slesinger when combined with Mou, teaches primary pin limitation as recited in claim 21. The Combination of Slesinger and Mou Appellant's contentions regarding the combination of Slesinger and Mou (see App. Br. 12-13, 18-25, 27-31; Reply Br. 4) are substantially the same as those presented in the '093 Appeal (see '093 Dec'n 4). In addition, the Ellis Declaration of February 12, 2013 (7 pages) relied on in the present appeal appears to be identical to the Ellis Declaration of February 12, 2013 11 Appeal2014-006076 Application 12/567,063 (7 pages) relied on the '093 Appeal. 4 (But see Tr. 14:7-24.) We have reviewed the relevant passages of the '093 Decision (see '093 Dec'n 4--7 (sub-heading "Second Issue")) and find them to be well reasoned and correctly decided. Accordingly, we adopt the reasons, findings, and conclusions at pages 4--7 of the '093 Decision as our own. Summary Appellant has not persuasively rebutted the Examiner's findings that Slesinger discloses the device limitation and the strut limitation. Accordingly, we sustain the rejection of claim 14 under 3 5 U.S. C. § 102(b) as anticipated by Slesinger and the rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable over Slesinger. Appellant has not persuasively rebutted the Examiner's findings that Slesinger teaches the device limitation and the strut limitation and the Examiner's conclusion that it would have been obvious to combine Slesinger and Mou. Accordingly, we sustain the rejections under 35 U.S.C. § 103(a) of claims 1, 2, 4--10, 15, and 16 as unpatentable over Slesinger and Mou and of claims 3, 11-13, 17, and 20 as unpatentable over Slesinger, Mou, and Stahl. Appellant has not persuasively rebutted the Examiner's findings that Slesinger teaches the device limitation, the strut limitation, and the primary pin limitation, and the Examiner's conclusion that it would have been obvious to combine Slesinger and Mou. Accordingly, we sustain the rejections under 35 U.S.C. § 103(a) of claim 21 as unpatentable over Slesinger, Mou, and Stahl. 4 Note the reference to "claim 23" at line 5 of page 7 of both declarations. There is no claim 23 pending in the instant Application. 12 Appeal2014-006076 Application 12/567,063 DECISION The decision of the Examiner to reject claims 1-21 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)(l). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation