Ex Parte Gentsch et alDownload PDFPatent Trial and Appeal BoardMay 17, 201612277490 (P.T.A.B. May. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/277,490 134603 ABB 7590 FILING DATE 11125/2008 05/19/2016 C/O Buchanan Ingersoll & Rooney PC 1737 King Street, Suite 500 Alexandria, VA 22314 FIRST NAMED INVENTOR Dietmar GENTSCH 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. 0070996-000090 6121 EXAMINER THOMAS, LUCY M ART UNIT PAPER NUMBER 2836 NOTIFICATION DATE DELIVERY MODE 05/19/2016 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): ADIPDOC 1@BIPC.com Taft-IP-Docket@taftlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIETMAR GENTSCH and HARALD FINK Appeal2014-002776 Application 12/277,490 Technology Center 2800 Before JEFFREYS. SMITH, DANIEL N. FISHMAN, and JON M. JURGOV AN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL 1A..ppellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-14. 1 We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We affirm-in-part and enter new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 In this Decision, we refer to the original Specification ("Spec.," filed Nov. 25, 2008, as amended); the Final Office Action ("Final Act.," mailed Sept. 19, 2012); Appellants' Appeal Brief ("App. Br.," filed Aug. 19, 2013); the Examiner's Answer ("Ans.," mailed Oct. 24, 2013); and Appellants' Reply Brief ("Reply Br.," filed Dec. 24, 2013). Appeal2014-002776 Application 12/277,490 THE INVENTION Appellants' invention is directed to an electrical switch including a shorting element connected between each phase of a three-phase conductor system. Spec. i-fi-12, 25. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method for quenching a fault arc in a medium- voltage and high-voltage switchgear assembly having a shorting switching element connected between each phase of a three- phase conductor structure, the switching element including a piston located on a moving supply line connected to a first phase of a three-phase distribution, a stationary supply line connected to a conical contact structure, and an explosive charge connected to the piston on the moving supply line, the method comprising: detecting a fault arc by means of a sensor in an area of the shorting switch; firing an explosive charge to accelerate the piston and the moving supply line towards the conical contact structure, and retaining the moving supply-line in the conical contact structure such that complementary contours of the shorting switching element and the conical contact structure result in self-locking retention in the shorting position, without any holding force. 2 Appeal2014-002776 Application 12/277,490 THE REJECTIONS2 Claims 1 and 2 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 4-- 5. Claims 1, 2, 13, and 14 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 5---6. Claims 1-14 stand rejected under 35 U.S.C. § 102(b) as anticipated by Shea (US 2003/0231443 Al, published June 14, 2003). Final Act. 6-9. ANALYSIS Only those arguments actually made by Appellants have been considered in this Opinion. Arguments that Appellants did not make in the Briefs have not been considered and are waived. See 37 C.F.R. § 41.37(c)(l)(iv). LVDEFLVJTE1VESS REJECT!Ol'l Before addressing the section 112, first paragraph rejection and the section 102(b) anticipation rejection, we find it necessary to address the 2 The Examiner withdrew a rejection of claims 1-14 under 35 U.S.C. § 103(a). Ans. 2. The Examiner also issues a number of objections to the drawings, the Specification, claim 1, and claim 2. Final Act. 2--4. We decline to address these objections. The objections relate to petitionable subject matter under 37 C.F .R § 1.181. Therefore, these objections are not before us because we generally lack jurisdiction over petitionable matters. See, e.g., MPEP § 706.01 ("[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board."); see also MPEP § 1201 ("The Board will not ordinarily hear a question that should be decided by the Director on petition .... "). 3 Appeal2014-002776 Application 12/277,490 section 112 definiteness requirement as this is dispositive of the remaining issues on this appeal. The test for definiteness is "whether those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F .2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). When "no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious [ (or anticipated) ]-the claim becomes indefinite." In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Claims 1, 2, 13, and 14 stand rejected by the Examiner under section 112, second paragraph, as being indefinite. Final Act. 5---6. Other than pointing to a typographical error on page 6 of the Final Action (App. Br. 6), Appellants have presented no arguments regarding this section 112 rejection. At least in view of Appellants' lack of substantive response, we summarily sustain the rejection of claims 1, 2, 13, and 14 under 35 U.S.C. § 112, second paragraph. As to independent claim 3, we also note the following deficiencies that render the claim scope vague and indefinite. The recitation of "the three phase supply" in claim 3 lacks antecedent basis. Thus, it is unclear what "three phase supply" Appellants intends to claim. Further, claim 3 recites "a piston provided with an operating explosive charge and is connected to a moving supply line of the three phase supply, via which the piston is accelerated." The recitation "via which" is unclear whether the claimed "piston" is accelerated via the recited "operating explosive charge" or via "a moving supply line." Additionally, it is unclear how the recited "contact structure" can be "connected to a single supply line" if, as claimed, it is also 4 Appeal2014-002776 Application 12/277,490 "electrically connected between two phases of the three-phase conductor structure." Still further, referring to Figures 1--4 and paragraphs 25-35, Appellants' Specification discloses at least two distinct embodiments for a switch assembly. After a careful review of all features disclosed in the Specification, it remains unclear whether claim 3 is intended to read on the embodiment disclosed in Figure 1 or the embodiment disclosed in Figure 2. Referring to the embodiment disclosed in Figure 1, the contact structure is connected to two phases Rand B of a three-phase supply, as required by the second clause of claim 3. See Spec. i-f 32 (as amended Feb. 19, 2013), ("contact pieces 7 and 12" denote the contact structure towards which piston 2 is accelerated). If we assume, arguendo, that claim 3 is meant to read on Figure 1, this first embodiment does not provide for the piston being "accelerated onto a single-phase," as required by the first paragraph of claim 3, because as noted above the contact structure as claimed is connected to two phases Rand B. Referring to the embodiment disclosed in Figure 2, a similar paradox arises. The contact piece of this second embodiment is connected only to a single phase R or B. See id. i-f 33 (the contact piece that houses "contact area 15" denotes the contact structure towards which piston 2 is accelerated). Although this second embodiment provides for a piston being "accelerated onto a single-phase," as required by the first paragraph of claim 3, it does not provide for the "contact structure" to be connected to two separate phases Rand B of a three-phase supply, as required by the second clause of claim 3. In view of the above discussion, it is unclear what is meant by accelerating a piston "onto a single-phase of a three-phase conductor 5 Appeal2014-002776 Application 12/277,490 structure," where the remaining portion of claim 3 recites "a contact structure, which is electrically connected between "two phases of the three- phase conductor structure." We also note that because the embodiments disclosed in Figures 1 and 2 are structurally and electrically distinct, claim 3 cannot be construed to read on both. We conclude "those skilled in the art would [not] understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F .2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Because "no reasonably definite meaning can be ascribed to certain terms in the claim ... the claim becomes indefinite." See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). In view of the ambiguities discussed above, comparing the invention of claim 3 (and its dependent claims) with the prior art would require "considerable speculation as to [the] meaning of the terms employed and assumptions as to the scope of [the] claims." In re Steele, 305 F.2d 859, 862 (CCP A 1962). It is improper to rely on such "speculative assumptions as to the meaning of the claims" to maintain an art-based rejection thereon. Id. at 863. Accordingly, avoiding such improper speculation as to the scope of the claims, we are constrained to reverse, proforma, the Examiner's rejection of independent claims 1-14 under 35 U.S.C. §§ 102(b) and 112, first paragraph. We hasten to add, however, that the reversal is a procedural reversal (proforma) rather than one based upon the merits of these rejections. NEW GROUND OF REJECTION We enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Independent claim 3, and claims 4--13 depending therefrom, are rejected 6 Appeal2014-002776 Application 12/277,490 under 35 U.S.C. § 112, second paragraph as indefinite for the reasons discussed above. DECISION For the above reasons, the Examiner's decision rejecting claims 1, 2, 13, and 14 under 35 U.S.C. § 112, second paragraph is affirmed. For the above reasons, the Examiner's decision rejecting claims 1-14 under 35 U.S.C. § 102(b) and rejecting claims 1and2 under 35 U.S.C. § 112, first paragraph is reversed. For the above reasons, we enter a new ground of rejection of claims 3- 13 under 35 U.S.C. § 112, second paragraph, as indefinite. 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 IN PART 37 C.F.R. § 41.50(b) 7 Copy with citationCopy as parenthetical citation