Ex Parte GodbeyDownload PDFPatent Trial and Appeal BoardDec 30, 201311518682 (P.T.A.B. Dec. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/518,682 09/11/2006 Rodney Godbey E20050350 4124 7590 12/31/2013 ABB Inc. Legal Dept. - 4U6 29801 Euclid Avenue Wickliffe, OH 44092-1832 EXAMINER HINSON, RONALD ART UNIT PAPER NUMBER 2837 MAIL DATE DELIVERY MODE 12/31/2013 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 RODNEY GODBEY ____________ Appeal 2011-010964 Application 11/518,682 Technology Center 2800 ____________ Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and JO-ANNE M. KOKOSKI, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The prior art rejections maintained on appeal all rely upon the combined prior art of Reifel (U.S. 3,517,361, issued June 23, 1970) and Camilli (U.S. 2,297,605, issued Sep. 29, 1942) as evidence of obviousness under 35 U.S.C. § 103(a). (See, Ans. 3-8). Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this Appeal 2011-010964 Application 11/518,682 2 record supports the Examiner’s conclusion that the subject matter of Appellant’s claims is unpatentable over the applied prior art1. We sustain the above rejections based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Answer2. We add the following for emphasis. Appellant’s main argument, that the applied prior art fails to suggest providing an encasement for additional protection as exemplified in Camilli to the transformer of Reifel (Br. 4, 5), is not persuasive of error. It is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). As pointed out by the Examiner, providing additional protection to protect the transformer core is an appropriate reason to encase the transformer of Reifel (e.g., Ans. 4). See also KSR, 550 U.S. at 415-16 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. 1 Appellant mainly focuses the arguments on the common features of the independent claims 1 and 17 (Br. 3-5). To the extent the features of the dependent claims have been separately argued, we find that the preponderance of the evidence supports the Examiner’s findings and conclusions of obviousness. 2 No Reply Brief has been filed. Appeal 2011-010964 Application 11/518,682 3 Appellant’s arguments that Camilli’s casing is made of concrete (Br. 4, 5) are also not persuasive of error, since the claims do not preclude the use of any material for the encasement. The decision of the Examiner 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). AFFIRMED cam Copy with citationCopy as parenthetical citation