Ex Parte GENTSCH et al

Patent Trial and Appeal Board

May 17, 2016

12277490 (P.T.A.B. May. 17, 2016)

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.
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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 .... ").
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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
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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
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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
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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)
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