Ex Parte Gretz

Board of Patent Appeals and Interferences

Jan 25, 2006

09956610 (B.P.A.I. Jan. 25, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS J. GRETZ
____________

Appeal No. 2005-2562
Application No. 09/956,610
____________

ON BRIEF
____________

Before McQUADE, NASE and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.

DECISION ON APPEAL

Thomas J. Gretz appeals from the final rejection (mailed May
30, 2003) of claims 1-11, all of the claims pending in the
application.

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Application No. 09/956,610

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THE INVENTION
The invention relates to a flexible plastic sleeve/extender
designed for use with an electrical box to position an electrical
device, such as an outlet or switch, mounted in the box flush with
the surface of a wall and/or to insulate the device from the box.
Representative claim 1 reads as follows:
1. [A] one piece plastic part for an electrical box
comprising:

a sleeve having an outer opening at an outer end and an inner
opening at an inner end;

two first sides opposite one another and two second flangeless
sides opposite one another;

corners connecting said first sides and said second flangeless
sides;

each of said first sides having an outer edge and an inner
edge;

a flange extending sideways from each of said outer edges of
said first sides;

said flanges being sufficiently thin to be recessed under a
cover plate;

each of said second flangeless sides having an outer edge and
an inner edge;

said outer opening having said outer edge of said first sides
and said outer edges of said second flangeless sides substantially
coplanar with each other;

said sides forming a generally tubular body sized to receive
an electrical device;
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Application No. 09/956,610

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said first sides and said second flangeless sides being made
of a flexible plastic having a thinness extending from ¼ inch just
below said outer edges to said inner edges of approximately 0.060
inches thick or less which allows said tubular body to be received
in a variety of electrical boxes; and

an opening in each of said flanges capable of passing screws
therethrough for fastening an electrical device to an electrical
box.

THE PRIOR ART
The references relied on by the examiner to support the final
rejection are:
Bachmann 2,297,862 Oct. 06, 1942
Gretz 5,736,674 Apr. 07, 1998
THE REJECTION
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gretz in view of Bachmann.
Attention is directed to the main and reply briefs (filed
January 26, 2004 and June 14, 2004) and answer (mailed April 14,
2004) for the respective positions of the appellant and examiner
regarding the merits of this rejection.
DISCUSSION
Gretz discloses a plastic part 10 which is conceded by the
examiner (see page 3 in the answer) to lack two second sides which
are “flangeless” as recited in claim 1. The appellant’s
specification indicates that this “flangeless” feature “is an
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Application No. 09/956,610

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important advantage since two parts can abut one another along
their wide [flangeless] sides and thus be ‘ganged’ together . . .
for some electrical boxes” (page 12). In contrast, the two first
sides and two second sides of the Gretz plastic part have
respective flanges 20, 22, 26 and 28. Gretz teaches that the
flanges 26 and 28, which are on the sides corresponding to the
second sides recited in claim 1, serve to stiffen the long sides of
the part (see column 3, lines 3-7) and position the part relative
to a wall by abutting the wall’s outer surface (see column 4, lines
50-53). The examiner’s reliance on Bachmann to overcome the
failure of Gretz to teach second sides which are “flangeless” is
not well founded.
According to the examiner, “Bachman[n], as seen in Fig. 4,
teaches a similar part for an electrical box with no flanges on the
wide side” (answer, page 3). In response to the appellant’s
argument that the structure shown in Bachmann’s Figure 4 is not a
plastic extender but part of the electrical box itself, the
examiner submits that
Bachmann teaches a metal extension for insertion into a
metal electrical box as seen in Figs. 2-4. The part seen
in Fig. 4 is the extension. The extension has sides that
are identified by number 2 which do not have flanges or
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Application No. 09/956,610

5
are flangeless. . . . The electrical box of Bachmann is
the part seen in Fig. 3 and identified by number 1. The
part of Bachmann shown in Fig. 4 is inserted into part
number 1 and extends the depth of the box (part 1) and
makes it adjustable for walls of different wall
thickness. Therefore the part identified by number 2 is
an insert for an electrical box [answer, pages 3-4]..
Based on the foregoing findings, the examiner concludes that
“[i]t would have been obvious to make the wide sides of Gretz ‘674
flangeless as taught by Bachman[n] to reduce the amount of plastic
necessary to make the product and/or to reduce costs or to
eliminate the unnecessary structure” (answer, page 3).
A fair reading of Bachmann, however, shows that the examiner’s
characterization of the elements illustrated in Figures 3 and 4 as
an electrical box and an extender is unreasonable. These elements
actually constitute two interlocking halves of “a through wall
switch box for two switches S so that a single cable C may be
employed to establish a circuit to two rooms” (page 1, column 2,
lines 9-11). Hence, together they are comparable to the electrical
box 46 with which Gretz’s part 10 is intended to be used. Box 46
is similar to Bachmann’s box 1, 2, in that it too has “flangeless”
sides. Nonetheless, the mere disclosure by Bachmann and Gretz of
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Application No. 09/956,610

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electrical boxes having “flangeless” sides would not have provided
the artisan with any suggestion or motivation to eliminate the
flanges on the second sides of Gretz’s plastic extender part 10.
To begin with, the extender part 10 serves a distinctly different
purpose than the electrical boxes. Moreover, the proposed removal
of the part’s side flanges would eliminate the stiffening and
positioning benefits desired by Gretz, the description of which
belies the examiner’s contention that the flanges are unnecessary.
The combined teachings of Gretz and Bachmann also fail to support
the examiner’s bald conjecture that the removal of the flanges
would reduce costs to any significant degree.
Thus, Gretz and Bachmann do not justify the examiner’s
conclusion that the differences between the subject matter recited
in claim 1 and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art. Accordingly, we shall
not sustain the standing 35 U.S.C. § 103(a) rejection of
independent claim 1, and dependent claims 2-11, as being
unpatentable over Gretz in view of Bachmann.
As a final matter, we note that the examiner makes mention in
the answer (see page 4) of four references which purportedly
disclose electrical box extenders having flangeless sides. The
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Application No. 09/956,610

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statement of the appealed rejection, however, does not include
these references. Where a reference is relied on to support a
rejection, whether or not in a minor capacity, there is no excuse
for not positively including the reference in the statement of the
rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407
n.3 (CCPA 1970). Consequently, we have not considered the cited
references in reviewing the merits of the examiner's rejection.
The examiner, of course, has the option of entering new rejections
based on these references, if such are deemed to be warranted, in
the event of further prosecution.
SUMMARY
The decision of the examiner to reject claims 1-11 is
reversed.
REVERSED

JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Appeal No. 2005-2562
Application No. 09/956,610

8
)
JENNIFER D. BAHR )
Administrative Patent Judge )

Auzville Jackson, Jr.
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Richmond, VA 23229

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