Ex Parte Gibboney

Board of Patent Appeals and Interferences

Jul 15, 2011

11269994 (B.P.A.I. Jul. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES W. GIBBONEY
____________

Appeal 2009-010700
Application 11/269,994
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SADDAT,
and ROBERT E. NAPPI, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-11, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Appeal Brief (filed December 5, 2007), the Answer
(mailed March 24, 2008), and the Reply Brief (filed April 21, 2008) for the
respective details. Only those arguments actually made by Appellant have
been considered in this decision. Arguments which Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived (see 37 C.F.R. § 41.37(c)(1)(vii)).

Appellant’s Invention
Appellant’s invention relates to a light for use in light strings which
includes a third terminal in addition to first and second terminals. A
filament is connected between the first and second terminals, a fuse is
connected between the second and third terminals, and a shunt connects the
first and third terminals. Upon burn out of the filament, the light, as well as
other lights in series, are protected from over-current conditions by the
passing of current to the fuse from the shunt. See generally Spec. ¶¶ [0013]-
[0015].
Claim 1 is illustrative of the invention and reads as follows:
1. A light for use in light strings, said light comprising:
a bulb;
a first terminal extending into said bulb from outside said bulb;
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a second terminal extending into said bulb from outside said bulb;
a third terminal in said bulb;
a filament electrically connecting said first terminal to said second
terminal;
a fuse electrically connecting said second terminal to said third
terminal, said fuse providing protection against an over-current condition;
and
a shunt connected between said first terminal and said third terminal.

The Examiner’s Rejections
The Examiner relies on the following prior art references to show
unpatentability:
Kotsch US 3,458,756 July 29, 1969
Gibboney, Jr. (Gibboney) US 6,583,536 B1 June 24, 2003
Claims 1-4 and 6-11 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Gibboney.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gibboney in view of Kotsch.

ANALYSIS
35 U.S.C. § 102(b) Rejection
Appellant’s arguments contend that, in contrast to the requirements of
independent claims 1, 8, and 10, Gibboney has no disclosure of a fuse which
connects the second and third terminals of a light to provide protection
against an over-current condition as claimed. According to Appellant (App.
Br. 4-11; Reply Br. 1-6), element 16 of Gibboney, relied upon by the
Examiner as corresponding to the claimed fuse, is in actuality a filament, and
is referred to as such in the Gibboney description. In Appellant’s view
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(App. Br. 8; Reply Br. 1), an ordinarily skilled artisan would recognize that
fuses and filaments are fundamentally different circuit elements.
We do not agree with Appellant. Although Appellant has given the
name “fuse” to the claimed over-current protective element, we find no
recited structural limitations for the claimed “fuse” that would structurally
distinguish over element 16 of Gibboney. A review of Appellant’s
Specification reveals that the claimed fuse is described as a conductive
element 44, illustrated as a wire in Figures 1 and 2 of Appellant’s drawings,
which will conduct current between second terminal 14 and third terminal 38
when filament 26 burns out (Spec. ¶ [0015]). Upon the occurrence of an
over-current condition, this conductive element 44 will burn out, thereby
acting as a fuse which protects other lights in the light string by preventing
current from flowing to lights in series with the light 10 (Spec. ¶ [0015]).
Similarly, wire conductive element 16, identified as a secondary
filament in Gibboney, will conduct current between second terminal 20 and
third terminal 22 when primary filament 14 fails (col. 3, ll. 11-25). As
explained by the Examiner (Ans. 7), secondary filament 16 will therefore act
as a fuse which provides protection from damage caused by failure of
primary filament 14 due to burn-out or an over-current condition as claimed.
Further, to whatever extent Appellant is contending that the
Examiner’s position is in error since Gibboney never refers to element 16 as
a “fuse,” we would point out that anticipation “is not an ‘ipsissimis verbis’
test.” In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v.
U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)).
“An anticipatory reference . . . need not duplicate word for word what is in
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the claims.” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d
1360, 1369 (Fed. Cir. 1991).
For all of the above reasons, since Appellant has not demonstrated
that the Examiner erred in finding that all of the claim limitations are present
in the disclosure of Gibboney, we sustain the Examiner’s 35 U.S.C. § 102(b)
rejection of appealed independent claims 1, 8, and 10, as well as dependent
claims 2-4, 6, 7, 9, and 11 not separately argued by Appellant.

35 U.S.C. § 103(a) Rejection
The Examiner’s obviousness rejection of dependent claim 5 based on
the combination of Gibboney and Kotsch is sustained as well. Appellant’s
arguments (App. Br. 11-12) rely on the arguments asserted previously
against the Examiner’s anticipation rejection, based on Gibboney, of claims
1-4 and 6-11, which arguments we have found to be unpersuasive for all of
the previously discussed reasons.

CONCLUSION
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1-4 and 6-11 for anticipation under 35 U.S.C. §
102(b) and claim 5 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-11 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)(1)(iv).

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AFFIRMED

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