10583216 (P.T.A.B. Aug. 28, 2014)

Ex Parte Fink et al

Patent Trial and Appeal BoardAug 28, 2014

10583216 (P.T.A.B. Aug. 28, 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. 10/583,216 06/16/2006 Harald Fink 03-H36US 7714 7590 08/28/2014 Michael M Rickin ABB Legal Dept 4U6 29801 Euclid Avenue Wickliffe, OH 44092-1832 EXAMINER FISHMAN, MARINA ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 08/28/2014 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 HARALD FINK, MAIK HYRENBACH, and DIETMAR GENTSCH1 ____________ Appeal 2012-011120 Application 10/583,216 Technology Center 2800 ____________ Before TERRY J. OWENS, N. WHITNEY WILSON, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s non-final rejection of claims 8-11.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse. 1 According to the Appeal Brief, the Real Party In Interest is ABB Technology, AG. App. Br. 2. 2 Appellants filed this Appeal in response to the Examiner’s decision to reopen prosecution and issue a non-final action after considering Appellants’ Appeal Brief filed on August 22, 2011. Appeal 2012-011120 Application 10/583,216 2 BACKGROUND Appellants’ claimed invention relates to a switchgear assembly, wherein the switch disconnector is in the form of a three-position vacuum- chamber switch. Spec. ¶¶ 9, 12. Claim 8 is the only independent claim on appeal, and is reproduced below from the Claims Appendix (App. Br. 9): 8. A medium-voltage switchgear assembly comprising: an enclosure filled with an insulating gas; and a bushing extending through the enclosure such that an interior portion of the bushing is disposed inside the enclosure with the insulating gas and an exterior portion of the bushing is disposed outside the enclosure, the bushing comprising a vacuum switching chamber and a conductive edge board connected to and extending radially outward from the switching chamber, the edge board being connected to a wall of the enclosure and having a seal that engages an outer surface of the wall to form a gas tight seal therewith, the connection of the edge board to the wall forming a ground point for the switching chamber. The Examiner maintains,3 and the Appellants appeal, the rejection of claims 8-11 under 35 U.S.C. § 103(a) as being unpatentable over Nonken (US 3,812,314, issued May 21, 1974) in view of Renz (US 6,720,515 B2, issued Apr. 13, 2004). App. Br. 4. 3 In the Non-Final Action, dated November 9, 2011 (hereinafter referred to as “Non-Final Act.”), the Examiner rejected claims 8-11 under 35 U.S.C. § 112, second paragraph, as being indefinite. The Examiner, however, withdrew this rejection in the Examiner’s Answer to the Appeal Brief. Ans. 4. Appeal 2012-011120 Application 10/583,216 3 ANALYSIS The Examiner finds that “Nonken discloses the instant claimed invention except for a bushing comprising a three position switching chamber, and the connection of the edge board to the wall forming a ground point for the switching chamber.” Non-Final Act. 4. The Examiner further finds that “Renz et al. disclose a switchgear with a three position switch and having a conductive edge board [15] connected to and extending radially outward from the switching chamber[,] the wall forming a ground point for the switching chamber.” Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to provide Renz’s three position switching chamber and conductive edge board in Nonken’s switchgear assembly “in order to have a ground switch formed within the vacuum chamber” of Nonken. Id. Appellants contend that the Examiner failed to establish a prima facie case of obviousness because “the Examiner has not provided the rational underpinning to support a legal conclusion of obviousness.” App. Br. 5. The Examiner bears the initial burden of presenting evidence of a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Establishing a prima facie case of obviousness requires an apparent reason to modify the prior art as proposed by the examiner. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). After review of the respective positions provided by Appellants and the Examiner, we agree with Appellants that the Examiner erred in rejecting Appeal 2012-011120 Application 10/583,216 4 claims 8-11 under 35 U.S.C. § 103(a) as being unpatentable over Nonken in view of Renz. The Examiner has failed to establish that there was “an apparent reason to combine” the known elements of Renz and Nonken to achieve the claimed invention. For example, the Examiner has not offered any reason why one of skill in the art would want “a ground switch formed within the vacuum chamber” of Nonken. Non-Final Act. 4. Furthermore, the Examiner has not offered any persuasive evidence, such as “interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; [or] the background knowledge possessed by a person having ordinary skill in the art” (KSR, 550 U.S. at 418) to support the conclusion that it would have been obvious to combine the teachings of Renz and Nonken “in order to have a ground switch formed within the vacuum chamber” of Nonken. Thus, we are constrained by the record to find that the Examiner has not established a prima facie case of obviousness of the subject matter in Appellants’ claims 8-11. CONCLUSION For the reasons set forth above, we reverse the rejection under 35 U.S.C. § 103(a) of claims 8-11. REVERSED lp