Ex Parte Grosskopf et alDownload PDFPatent Trial and Appeal BoardNov 30, 201712955340 (P.T.A.B. Nov. 30, 2017) Copy Citation United States Patent and Trademark Office 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. 12/955,340 11/29/2010 Andrew P. Grosskopf 67036-377PUSl;PA0015865US 7308 26096 7590 12/04/2017 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER TRUONG, THOMAS ART UNIT PAPER NUMBER 2834 NOTIFICATION DATE DELIVERY MODE 12/04/2017 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): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW P. GROSSKOPF, AARON M. FINKE, and DOUGLAS J. TURNER1 Appeal 2016-003421 Application 12/955,340 Technology Center 2800 Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and AVELYN M. ROSS, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL2 Appellants appeal the Examiner’s decision finally rejecting claims 1, 2, 4—18, 22—27, 29—33, and 35, which constitute all the claims pending in 1 Appellants identify United Technologies Corp. as the real party in interest. App. Br. 1. 2 In our Decision, we refer to the Specification filed November 29, 2010 (“Spec.”); Final Office Action mailed December 2, 2014 (“Final Act.”); Advisory Action mailed January 28, 2015 (“Adv. Act.”); Revised Appeal Brief filed August 11, 2015 (“App. Br.”); Examiner’s Answer to the Appeal Brief mailed December 22, 2015 (“Ans.”); and Reply Brief filed February 22, 2016. Appeal 2016-003421 Application 12/955,340 this application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Claimed Invention Appellants’ disclosure is directed to a generator or a generator/motor including a terminal block, and more specifically to an arc resistant terminal block design. Spec. H 1, 4. The arc resistant terminal block has a terminal post insulator and a terminal lead strap that, according to Appellants, increase the strike and creep distance of electrically charged components to grounded components by non-conductive terminal blocks and insulators. Abstract. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 12) (key disputed claim language italicized and bolded): 1. A generator having a terminal connection assembly comprising: a terminal lead insulator at least partially received in a terminal block slot of a terminal block and at least partially exposed to an external environment, wherein said terminal lead insulator includes a ring having a first extension section extending axially from said ring in a first direction and a second extension section extending axially from the ring in a second direction and wherein said ring is a circular cylindrical component having a vacant circular center and is a single, non-conductive piece; a terminal post having an exterior end and extending through said insulator and said terminal block slot; 2 Appeal 2016-003421 Application 12/955,340 a terminal lead strap electrically contacting said terminal post; and a threaded terminal electrically contacting said terminal lead strap. The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Fitzpatrick US 3,904,266 Sept. 9, 1975 Orr US 4,273,408 June 16, 1981 Nold US 4,712,029 Dec. 8, 1987 DeSantis US 5,063,314 Nov. 5, 1991 Paterek US 5,227,587 Jul. 13, 1993 Kuribayashi et al., US 7,288,866 B2 Oct. 30, 2007 (hereinafter “Kuribayashi”) Fukushima JP 2003-317821A Nov. 7, 2003 Miyazaki JP 2007-110832A Apr. 26, 2007 Ikeno JP 2008-182834A Aug. 7, 2008 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1,2, 4—8, 30, 32, and 33 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Fukushima in view of Miyazaki, Ikeno, and Kuribayashi (“Rejection 1”). Final Act. 4; Ans. 2. 2. Claims 9—11 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Fukushima in view of Miyazaki, Ikeno, and Kuribayashi as applied to claim 1 above, and further in view of Paterek (“Rejection 2”). Final Act. 12; Ans. 2. 3. Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Fukushima in view of Miyazaki, Ikeno, Kuribayashi, and 3 Appeal 2016-003421 Application 12/955,340 Paterek as applied to claim 9 above, and further in view of DeSantis (“Rejection 3”). Final Act. 13; Ans. 2. 4. Claims 13—17 and 31 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Fukushima in view of Miyazaki and Ikeno (“Rejection 4”). Final Act. 14; Ans. 2. 5. Claim 18 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Fukushima in view of Miyazaki and Ikeno as applied to claim 13 above, and further in view of Nold (“Rejection 5”). Final Act. 17; Ans. 2. 6. Claims 22 and 24 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ikeno in view of Miyazaki (“Rejection 6”). Final Act. 18; Ans. 2. 7. Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ikeno in view of Miyazaki as applied to claim 22 above, and further in view of Nold (“Rejection 7”). Final Act. 19; Ans. 2. 8. Claim 25 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ikeno in view of Miyazaki as applied to claim 22 above, and further in view of DeSantis (“Rejection 8”). Final Act. 20; Ans. 2. 9. Claims 26 and 27 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Fukushima in view of Ikeno (“Rejection 9”). Final Act. 20; Ans. 2. 10. Claim 26 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Miyazaki in view of Ikeno (“Rejection 10”). Final Act. 23; Ans. 2. 4 Appeal 2016-003421 Application 12/955,340 11. Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Miyazaki in view of Ikeno as applied to claim 26 above, and further in view of Fitzpatrick (“Rejection 11”). Final Act. 25; Ans. 2. 12. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Miyazaki in view of Ikeno as applied to claim 26 above, and further in view of Nold (“Rejection 12”). Final Act. 25; Ans. 2. 13. Claim 35 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Fukushima in view of Miyazaki, Ikeno, and Kuribayashi as applied to claim 5 above, and further in view of Orr (“Rejection 13”). Final Act. 26; Ans. 2. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner’s rejections based on the fact finding and reasoning set forth in the Answer to the Appeal Brief and Final Office Action, which we adopt as our own. We highlight and address specific findings and arguments below for emphasis. Rejection 1 Appellants argue claims 1, 2, 4—8, 30, 32, and 33 as a group. We select claim 1 as representative and the remaining claims subject to this rejection stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner determines that the combination of Fukushima, Miyazaki, Ikeno, and Kuribayashi suggests a generator satisfying all of the limitations of claim 1 and thus, would have rendered claim 1 obvious. Final Act. 4—8. 5 Appeal 2016-003421 Application 12/955,340 Appellants argue that the Examiner’s rejection should be reversed because the cited art does not teach or suggest a terminal lead insulator being “at least partially exposed to an external environment,” as required by claim 1. App. Br. 4—5. In particular, Appellants contend that because Miyazaki teaches a sealed enclosure designed to prevent the terminal, and the terminal lead insulator along with the terminal, from being exposed to the external environment, one of skill in the art would not have found it obvious to utilize a terminal lead insulator that is exposed to an external environment. Id. at 5. Appellants also contend that the Examiner’s interpretation of the term “external environment” is not consistent with the teachings of Miyazaki and Appellants’ Specification. Id.; see a Iso Reply Br. 1—3. Appellants further argue that one of skill in the art would not have found it obvious to alter Fukushima’s terminal lead insulator to include Ikeno’s grommet extensions as found by the Examiner; the Examiner’s proposed combination would require a “complete redesign of the primary reference”; and the Examiner’s proposed modification of Fukushima’s structure would not result in the terminals being exposed to an external environment. App. Br. 6; see also Reply Br. 3^4. Appellants also argue that “modification of the terminal lead insulator 12 to incorporate the shape, or features, of either Miyazaki or Ikeno” would not result in exposure of the terminal lead insulator to the exterior environment, as required by the claim. App. Br. 7. We do not find Appellants’ arguments persuasive of reversible error in the Examiner’s rejection. On the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner’s analysis and determination (Final Act. 4—8; Ans. 3—7) that the 6 Appeal 2016-003421 Application 12/955,340 combination of Fukushima, Miyazaki, Ikeno, and Kuribayashi suggests all of the limitations of claim 1 and conclusion that the combination would have rendered the claim obvious. Fukushima, 126, Figs. 1—4; Miyazaki || 15— 17, Fig. 2; Ikeno, Tflf 4, 39, Figs. 2, 4—6; Kuribayashi, col. 4,1. 26, col. 9,11. 1—6, Figs. 2, 11. We do not find Appellants’ argument that the Examiner’s interpretation of the term “external environment” is not consistent with the teachings of Miyazaki and the instant application (App. Br. 5; Reply Br. 1— 3) persuasive for the well-stated reasons provided by the Examiner at pages 3—7 of the Answer. In particular, we concur with the Examiner (Ans. 5) that Appellants’ argument is based on the assumption that the claimed “external environment” requires an open space outside of the motor housing without any housing/cover. As the Examiner correctly points out (Ans. 5), no such limitation is recited in the claims and/or defined or disclosed in the Specification. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). As the Examiner finds (Ans. 5), although the space 602 can be viewed as an external environment with respect to the space inside the insulator 630 as depicted in Figure 8 of the Drawings, the Specification does not disclose or require that the space 602 be completely uncovered without any means such as a casing/housing. We also determine that the Examiner properly construed the term “external environment” to include any space that is externally disposed with respect to the internal environment of the housing (Ans. 3—4), and the construction constitutes the broadest reasonable interpretation in light of the Specification and the language of the claims. In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 7 Appeal 2016-003421 Application 12/955,340 In particular, as the Examiner determines and depicted in annotated Figures 1 and 2 of Miyazaki (Ans. 3—4), because Miyazaki discloses a space that is externally disposed with respect to the internal environment of the housing 3, such space can be reasonably interpreted as an external environment with respect to the internal environment inside the housing 3. Miyazaki, Figs. 1, 2; || 12, 16. Moreover, as the Examiner further determines (Ans. 6—7), because the insulator 24 protrudes out of the internal environment of housing 3 and into the external environment outside of housing 3 (as depicted in annotated Fig. 2 of Miyazaki), the insulator 24 can be interpreted as being partially exposed to an external environment outside of the housing 3 whether or not the housing 12 is present. Miyazaki, Fig. 2,116. Appellants’ argument does not reveal reversible error in the Examiner’s analysis and findings in this regard. The Examiner also provides a reasonable basis and identifies a preponderance of the evidence in the record to evince why one of ordinary skill would have combined the teachings of the references to arrive at Appellants’ claimed invention. Final Act. 8. See also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed.). Appellants fail to direct us to sufficient evidence or provide an adequate technical explanation to establish why the Examiner’s articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. 8 Appeal 2016-003421 Application 12/955,340 We do not find Appellants’ arguments regarding the Fukushima and Ikeno references (App. Br. 6—7; Reply Br. 3 4) persuasive of reversible error in the Examiner’s rejection for the reasons provided by the Examiner at pages 7—8 of the Answer. Appellants’ argument that “Figure 5 of Ikeno does not illustrate an independent lead insulator whose feature could be incorporated into the disclosure of Fukushima” (App. Br. 6) is misplaced because, as the Examiner notes (Ans. 7), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Appellants’ assertions that the “structure of Fukushima would require significant modification, and a complete re-design, to incorporate the grommet arrangement of Ikeno” and “one of skill in the art would not have found it obvious to alter the terminal lead insulator of Fukushima to include the grommet extensions of Ikeno” (App. Br. 6) are not persuasive of reversible error because they are conclusory and Appellants do not provide an adequate technical explanation or direct us to sufficient evidence in the record to support them. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants’ arguments regarding modification of the terminal lead insulator and the Miyazaki and Ikeno references at pages 6 and 7 of the Appeal Brief are not persuasive of reversible error for the reasons set forth 9 Appeal 2016-003421 Application 12/955,340 by the Examiner at pages 9—10 of the Answer; which are essentially the same reasons previously discussed above with respect to the term “external environment” and the combination of the Fukushima and Ikeno references. Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 4—8, 30, 32, and 33 under 35 U.S.C. § 103(a) as obvious over the combination of Fukushima, Miyazaki, Ikeno, and Kuribayashi. Rejections 2, 3, 4, and 5 Appellants do not present any new or additional substantive arguments in response to the Examiner’s Rejections 2, 3, 4, and 5, stated above. Rather, Appellants rely on the same arguments presented above in response to the Examiner’s Rejection 1 regarding claim 1 and the combination of Fukushima, Miyazaki, and Ikeno. App. Br. 7—8. Accordingly, based on the findings and technical reasoning provided by the Examiner and for the same reasons discussed above for affirming Rejection 1, we affirm the Examiner’s Rejections 2, 3, 4, and 5. Rejection 6 Appellants argue claims 22 and 24 as a group. We select claim 22 as representative and claim 24 stands or falls with claim 22. 37 C.F.R. § 41.37(c)(l)(iv). Claim 22 recites: A terminal block comprising: a plurality of terminal lead slots, wherein each of said terminal lead slots comprises a recessed section for receiving a first terminal lead insulator extension section and an open section for receiving terminal leads', and a plurality of rings, each of said rings including a plurality of protrusions extending radially outward from said 10 Appeal 2016-003421 Application 12/955,340 ring, said first terminal lead insulator extension section extending axially from said ring beyond said plurality of protrusions in a first direction and received in one of said recessed sections, and a second extension section extending axially from said ring beyond said plurality of protrusions in a second direction, and wherein at least one of the first extension section and the second extension section is at least partially exposed to an external environment. App. Br. 14 (Claims App’x) (key disputed claim language italicized and bolded). The Examiner determines that the combination of Ikeno and Miyazaki suggests all of the limitations of claim 22 and thus, would have rendered claim 22 obvious. Final Act. 18—19. Appellants argue that the Examiner’s rejection should be reversed because the cited references do not teach or suggest an “open section for receiving terminal leads,” as required by the claim. App. Br. 9; see also Reply Br. 4. Appellants also argue that the Examiner’s rejection is improper because the Examiner is “reading one of the claimed ‘open section’ and the claimed ‘recessed section’ out of the claim language.” Reply Br. 5. We do not find Appellants’ arguments persuasive of reversible error in the Examiner’s rejection. Contrary to what Appellants argue, the cited art does teach this limitation. In particular, as the Examiner finds (Ans. 12), Ikeno teaches a slot 63 comprising a recessed section (opening) and an open section where terminal leads 18 and insulator 45 are inserted. Ikeno, Figs. 2, 7. We do not find Appellants’ argument regarding the Examiner effectively reading the terms “open section” or “recessed section” out of the claims persuasive of reversible error because it misconstrues the Examiner’s rejection. Contrary to what Appellants’ argument suggests, as shown in the 11 Appeal 2016-003421 Application 12/955,340 Examiner’s annotated Figure 7 (Ans. 12), the Examiner finds that slot 63 comprises a “recessed section” for receiving a first terminal lead insulator extension section, and further identifies a different portion of slot 63 as corresponding to the claimed “open section” for receiving terminal leads. Ikeno, Fig. 7. We find that the Examiner’s factual findings in this regard are supported by a preponderance of the evidence. Ikeno, Figs. 2, 7,139. Accordingly, we affirm the Examiner’s rejection of claims 22 and 24 under 35 U.S.C. § 103(a) as obvious over the combination of Ikeno and Miyazaki. Rejections 7 and 8 Appellants do not present any additional substantive arguments in response to the Examiner’s Rejections 7 and 8, stated above. Rather, Appellants rely on the same arguments presented above in response to the Examiner’s Rejection 6 regarding claim 22 and the combination of Ikeno and Miyazaki. App. Br. 9—10. Accordingly, based on the findings and technical reasoning provided by the Examiner and for the same reasons discussed above for affirming Rejection 6, we affirm the Examiner’s Rejections 7 and 8. Rejection 9 Appellants argue claims 26 and 27 as a group. We select claim 26 as representative and claim 27 stands or falls with claim 26. 37 C.F.R. § 41.37(c)(l)(iv). Claim 26 recites: A method for assembling an arc resistant terminal block comprising the steps of: 12 Appeal 2016-003421 Application 12/955,340 inserting a terminal lead post into an insulator ring; inserting said insulator ring into a generator by at least fitting a first insulator ring extension section of the insulator ring in a terminal block recess such that at least a portion of the first extension section of the insulator ring is exposed to an external environment, thereby increasing arc and creep distances, wherein said ring includes a plurality of protrusions extending radially outward from said ring, said first insulator ring extension section extending axially from said ring beyond said plurality of protrusions in a first direction, and a second extension section extending axially from said ring beyond said plurality of protrusions in a second direction; fitting the terminal block about said terminal lead posts and said insulator ring; and installing a terminal lead strap contacting said terminal lead post. App. Br. 15 (Claims App’x) (key disputed claim language italicized and bolded). The Examiner determines that the combination of Fukushima and Ikeno suggests all of the limitations of claim 26 and thus, would have rendered the claim obvious. Final Act. 20-23 (citing Fukushima 123, Figs. 3, 4; Ikeno 13, 4, 39, Figs. 2, 5). Appellants argue that the Examiner’s rejection should be reversed because “the [EJxaminer’s rationale relies on a factually incorrect assessment of the claim language.” App. Br. 10. In particular, Appellants contend that the Examiner’s finding regarding the terminal lead insulator’s exposure to the external environment is erroneous because it is “unrelated to the arc/creep distance and exposure” and “does not alter the arc/creep distance of the terminal block.” Id.', see also Reply Br. 5—6. 13 Appeal 2016-003421 Application 12/955,340 We do not find Appellants’ arguments persuasive of reversible error in the Examiner’s rejection for the reasons provided by the Examiner at pages 13—14 of the Answer and pages 20—23 of the Final Office Action. In particular, we concur with the Examiner (Ans. 23) that the phrase “thereby increasing arc and creep resistance,” as recited in claim 26, is an intended use or result recitation, and, in this case, does not serve to distinguish Appellants’ claimed method from the prior art. In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974). Moreover, on the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner’s analysis and determination that the combination of Fukushima and Ikeno suggests all of the limitations of claim 26 and conclusion that the combination would have rendered the claim obvious. Fukushima 123, Figs. 3, 4; Ikeno 13,4, 39, Figs. 2, 5. Appellants’ arguments at page 10 of the Appeal Brief and pages 5—6 of the Reply Brief regarding the patentability of claim 26 are conclusory and without more, insufficient to rebut or otherwise establish reversible error in the Examiner analysis and findings in this regard. De Blauwe, 736 F.2d at 705; cf also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement... as to the existence of factual disputes do not amount to a developed argument.”). Accordingly, we affirm the Examiner’s rejection of claims 26 and 27 under 35 U.S.C. § 103(a) as obvious over the combination of Fukushima and Ikeno. 14 Appeal 2016-003421 Application 12/955,340 Rejections 10, 11, 12, and 13 Appellants do not present any new or additional substantive arguments in response to the Examiner’s Rejections 10, 11, 12, and 13, stated above. Rather, Appellants rely on essentially the same arguments presented above in response to the Examiner’s Rejection 9 regarding claim 26. App. Br. 10—11. Accordingly, based on the findings and technical reasoning provided by the Examiner and for essentially the same reasons discussed above for affirming Rejection 9, we affirm the Examiner’s Rejections 10, 11, 12, and 13. DECISION The Examiner’s rejections of claims 1,2, 4—18, 22—27, 29-33, and 35 are affirmed. It is ordered that the Examiner’s decision 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 15 Copy with citationCopy as parenthetical citation