Ex Parte Gass et al

Patent Trial and Appeal Board

Sep 15, 2014

12336058 (P.T.A.B. Sep. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RANDALL JAMES GASS, RODNEY POWELL,
NICK CAMPBELL, TIMOTHY JOHN LUKSETICH, ROGER WOLF,
and JERRY SCHEEL
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Appeal 2013-000369
Application 12/336,058
Technology Center 2800
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Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3–15, and 17–20 under 35 U.S.C. §103(a) as being
unpatentable over the combined prior art of Stopperan (US 5,428,190,
patented June 27, 1995) and Mills (US 7,170,376 B2, issued Jan. 30, 2007).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter:
1. A circuit breaker comprising:
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a circuit breaker housing enclosing a two-pole arc fault assembly;
a handle assembly coupled to a handle for resetting the circuit breaker,
the handle protruding from the circuit breaker housing;
a movable contact coupled to the handle assembly and positioned in
direct contact with a fixed contact when the circuit breaker is in an ON
position;
a trip mechanism coupled to the movable contact such that the
movable contact and the fixed contact are separated when a tripping action
occurs;
a first rigid circuit board mounted inside the circuit breaker housing in
a first orientation position, the first rigid circuit board having a first surface
for mounting a first electronic component;
a second rigid circuit board mounted inside the circuit breaker housing
in a second orientation position, the second rigid circuit board having a
second surface for mounting a second electronic component, at least one of
the first electronic component and the second electronic component being
selected from a group consisting of a sensor and a trip solenoid; and
a flexible circuit board coupling the first rigid circuit board to the
second rigid circuit board such that the first orientation position of the first
rigid circuit board is capable of being in a non-parallel plane relative to the
second orientation position of the second rigid circuit board.
Claim 10, the only other independent claim, recites a circuit breaker
that is similar to that of claim 1 (Claims App’x). Claim 10 requires that a
flexible circuit board has a first end that is directly attached to the edge of a
rigid circuit board within the circuit breaker housing 96 (id.).
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
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The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden in this case. A preponderance of the evidence supports Appellants’
assertions that the Examiner’s rejection is based on improper hindsight in
proposing to modify Mills to have the configuration of elements including
flexible and rigid circuit boards required by either of claims 1 and 10.
As detailed by the Appellants in their Briefs, Mills’ circuit breaker has
two printed circuit boards mounted on the outside of housing halves 130,
132 that are thermally and mechanically isolated from the operating
mechanism 134 contained therein (App. Br. 6, 7; Mills, e.g., Figs. 5, 6, col.
5, ll. 48–50). The Examiner merely concludes that it would have been
obvious to use the rigid-flex board assembly of Stopperan in the circuit
breaker of Mills “to provide additional configurations for the housing and
minimize size” (Final Rej. 3). Even assuming that the Examiner’s position
that the “over-molded” material 156 encasing the circuit boards 120, 122 of
Mills may be considered part of the required circuit breaker housing (Ans. 2)
is reasonable, the Examiner has not come forward with an adequate
explanation indicating why one of ordinary skill in the art would have
incorporated connected rigid and flexible circuit boards into Mills’ circuit
breaker housing (e.g., App. Br. 5–8; Reply Br. 2).
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Accordingly, we agree with Appellants that the Examiner has not
articulated a sufficient reason for combining Stopperan’s teachings with
Mills absent the use of impermissible hindsight. KSR, 550 U.S. at 421.
Thus, we are constrained to reverse the Examiner’s § 103 rejection on
appeal.
CONCLUSION
In summary, the appealed rejections are reversed.
REVERSED

cdc