Ex Parte Locke

Board of Patent Appeals and Interferences

Feb 10, 2009

10338357 (B.P.A.I. Feb. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY J. LOCKE
____________

Appeal 2008-5853
Application 10/338,357
Technology Center 2800
____________

Decided:1 February 10, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and THOMAS S.
HAHN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5853
Application 10/338,357

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm and enter a new ground of rejection under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellant invented a modular power distribution system for 120 Volt
AC power. The system includes a power conversion unit, a hub (20)
utilizing the power conversion unit, and a first trunk (30) for transferring
power from the hub to at least one power consuming device (40) via a first
branch (50), pass-thru receptacles (80, 90), and a first sub-branch (100).
This configuration corresponds to the so-called “first condition.”
Additionally, two other branches (60, 70) are connected to the first trunk to
transfer power from that trunk. A system switch (250) converts the system
to a “second condition” that modularly augments the first condition by
adding three additional branches (180, 190, 200).
This functionality is depicted in the schematic diagram shown in
Figure 3 of the present application, reproduced below for clarity:

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Figure 3 of the Present Application Depicting Schematic Diagram of a
Modular Power Distribution System

The system’s modularity and ease of installation satisfies design
modularity and flexibility requirements and can be installed with hand
tools.2 Claim 1 is illustrative with the key disputed limitations emphasized
for clarity:
1. A system for distributing power, said system comprising:

a power conversion unit defining a complete, separately derived
source of power, said power conversion unit including assembly packaging,
transformer primary disconnect, transformer primary protection, transformer
with options that include super neutral, shielding, bonding, grounding
electrode conductor provisions, transformer secondary protection, feeder
circuit protection, and interconnectivity feeder connections;

a hub utilizing said power conversion unit for providing a specific
power criteria;

2 See generally Abstract; Spec. 2:2−4:2, 13:3−13:10; Fig. 3.
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a first trunk for transferring power from said hub to at least one power
consuming device;

a first branch for transferring power from said first trunk;

a second branch for transferring power from said first trunk; and

a third branch for transferring power from said first trunk;

said system having a first condition wherein said first branch transfers
power to a first pass-thru receptacle, a second pass thru receptacle, and a
first sub-branch, said first sub-branch comprising a first twig and a second
twig,

said system further having a second condition for modularly
augmenting said first condition by adding a fourth branch, a fifth branch,
and a sixth branch,

said system being converted from said first condition to said second
condition by a common source of components.

The Examiner relies on the following prior art references to show
unpatentability:
Watson US 3,329,339 July 4, 1967
Hall US 5,063,473 Nov. 5, 1991
Byrne US 6,036,516 Mar. 14, 2000
Ebersole US 2002/0159260 A1 Oct. 31, 2002

1. The Examiner rejected claims 1, 14, and 20 under 35 U.S.C. § 112,
¶ 2 as indefinite (Ans. 3).
2. The Examiner rejected claims 1, 14, and 20 under 35 U.S.C. § 112,
¶ 1 as failing to comply with the enablement requirement (Ans. 3-4).
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3. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Byrne, Watson, and Ebersole (Ans. 4-5).
4. The Examiner rejected claims 2-20 under 35 U.S.C. § 103(a) as
unpatentable over Byrne, Watson, Ebersole, and Hall (Ans. 5).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE INDEFINITENESS REJECTION
Regarding representative independent claim 1,4 the Examiner takes
the position that the recited phrase “with options” renders the claim
indefinite since it is unclear whether the limitation(s) following the phrase
are part of the claimed invention (Ans. 3). The Examiner nonetheless
interprets the phrase to mean “all, some, or none” of the elements following
the phrase (Ans. 5).

3 Throughout this opinion, we refer to (1) the Appeal Brief filed June 12,
2007; (2) the Examiner’s Answer mailed July 28, 2006; and (3) the Reply
Brief filed Sept. 18, 2006.
4 Appellant indicates that independent claim 1 and dependent claims 2-14
stand or fall together as does independent claim 14 and dependent claims 15-
19. Appellant further indicates that claim 20 stands or falls alone (App. Br.
6). Notwithstanding this grouping, Appellant does not present any separate
arguments for patentability of claim 20 apart from the same arguments
presented for the other independent claims. Accordingly, we group claim 20
with independent claims 1 and 14 with respect to the rejections under § 112
and select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
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Appellant argues that the scope of the subject matter embraced by this
limitation is clear since, among other things, any reasonable interpretation
implies that the claims include super neutral, shielding, bonding, and
grounding electrode conductor provisions. In any event, Appellant
emphasizes that an attempt was made to remove the phrase “with options”
via an amendment submitted after the Examiner’s final rejection, but that
amendment was not entered (App. Br. 9; Reply Br. 2-3).
The issue before us, then, is as follows:

ISSUE
Has Appellant shown that the Examiner erred in finding the recited
phrase “with options” renders claim 1 indefinite under § 112, ¶ 2?

PRINCIPLES OF LAW
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
The test for definiteness under 35 U.S.C. § 112, second paragraph, 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).
Although “[a] claim term is not indefinite just because it poses a
difficult issue of claim construction[,]” Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (citations and internal
quotations omitted), “if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
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precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, No. 2007-3300, slip op. at 11-12 (BPAI Nov.
19, 2008) (precedential), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf.
Reciting optional limitations does not, without more, render claims
indefinite. See Ex parte Cordova, 10 USPQ2d 1949, 1988 WL 252403
(BPAI 1987), at *1 (“[T]he use of the alternative expression “optionally” in
the rejected claims does not obfuscate the subject matter appellants regard as
their invention.”); Ex parte Wu, 10 USPQ2d 2031, 1989 WL 281900 (BPAI
1988), at *1 (finding no difficulty in determining the scope of a claim
reciting composition consisting of three components and, optionally, a fourth
component); Ex parte Schonauer, No. 2002-1992, 2002 WL 33950061
(BPAI 2002) (non-precedential), at *2 (“The examiner has not explained,
and it is not apparent, why the fact that the claims encompass methods in
which the components following ‘optionally’ can be either present or absent
renders the claims indefinite.”).

ANALYSIS
We will not sustain the Examiner’s indefiniteness rejection of
representative claim 1 which calls for, in pertinent part, a power conversion
unit including a transformer with options5 that include super neutral,

5 Appellant’s argument that the amendment after final rejection deleting this
limitation should have been entered (but was not) (App. Br. 9) pertains to a
petitionable matter under 37 C.F.R. § 1.181—not an appealable matter. See
MPEP § 1002.02(c) (noting that petitions involving Examiners' refusals to
enter amendments are decided by Technology Center Directors). Because
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shielding, bonding, grounding electrode conductor provisions, transformer
secondary protection, feeder circuit protection, and interconnectivity feeder
connections. In reaching this conclusion, we find the term “with options”
simply means that the recited elements following the term (i.e., the elements
noted above) are optional. That is, the limitation merely recites alternatives
which may or may not be present in the claimed invention—alternatives that
ordinarily skilled artisans can readily ascertain. Indeed, we are in accord
with the Examiner in this respect. See Ans. 5 (interpreting “with options” to
mean “all, some, or none” of the elements following the phrase); see also
Ans. 6 (construing the term “with options” as optional).
Appellant’s arguments are unavailing. While Appellant is correct to
the extent that the language of claim 1 includes super neutral, shielding,
bonding, and grounding electrode conductor provisions (Reply Br. 3), these
provisions pertain only to the transformer’s options. As such, they are
merely optional.
But these options by no means render the claim indefinite. As we
noted above, reciting optional limitations does not, without more, render
claims indefinite. See Cordova, 1988 WL 252403 at *1; Wu, 1989 WL
281900 at *1; Schonauer, 2002 WL 33950061 at *2. Nor is this a case
where the scope of the claim is uncertain due to multiple interpretations or
other ambiguities that would render the claim indefinite. See Miyazaki, slip

we do not have jurisdiction over this matter, it is therefore not before us. See
MPEP § 1201 (“The Board will not ordinarily hear a question that should be
decided by the Director on petition….”); see also 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.”).
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op. at 11-12. Rather, this is a case where the scope of the claim is clear and
unambiguous in view of the particular alternatives recited.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s indefiniteness rejection of independent claim 1. Therefore,
we will not sustain the Examiner’s indefiniteness rejection of that claim, and
independent claims 14 and 20 which recite commensurate limitations.

THE ENABLEMENT REJECTION
Regarding representative claim 1, the Examiner contends that the
recited term “super neutral” is unclear and is not adequately described in the
Specification so as to enable ordinarily skilled artisans to make and/or use
the claimed invention (Ans. 3, 4, 6). Appellant argues that the term is well
known in the art and corresponds to “an over-sized neutral cable” as
evidenced by the materials submitted in Appendix B of the Appeal Brief
(App. Br. 2; Reply Br. 7).
The issue before us, then, is as follows:

ISSUE
Has Appellant shown that the Examiner erred in finding the recited
phrase “super neutral” contains non-enabling subject matter under § 112, ¶
1?
The issue turns on whether ordinarily skilled artisans could make
and/or use this feature of the invention without undue experimentation based
on information contained in the present application disclosure coupled with
information known in the art at the time of the invention.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Appendix B of the Appeal Brief includes a document from “AFC
Cable Systems” entitled “Super Neutral Cable® - Type MC Neutral per
Phase or Oversized Neutral Technical Specifications” (App. Br. App’x B, at
16) (“the AFC document”).
2. The AFC document includes a “Specification Description” table
with two columns labelled “Specification” and “Super Neutral Cable,”
respectively. Each row of the table provides information pertaining to the
Super Neutral Cable and its corresponding specifications (e.g., “Armor,”
“Conductors,” “Neutral Conductors,” “Maximum Voltage Rating,” etc.)
(Id.).
3. The AFC document does not contain a date of publication.
4. Appendix B of the Appeal Brief also includes a document from
“Hubbell Incorporated (Delaware)” entitled “20 AMP SUPER NEUTRAL
ISOLATED GROUND POWER LINKOSITYTM SUPPLY CORDS &
TEES” (App. Br. App’x B, at 2) (“the Hubbell document”).
5. In the lower left corner of the Hubbell document, a textual legend
“PD1996” appears below the address and telephone number. Adjacent and
to the right of this legend is another textual legend “10/04” (Id.).
6. According to the Specification, each pre-manufactured power
assembly (PPA) (Spec. 10-11) design includes, among other things, a

6 Although the individual pages of Appendix B are not individually
paginated, we refer to the pages in the order in which they appear in the
record.
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“transformer with options that include super neutral, shielding, bonding,
grounding electrode conductor provisions, transformer secondary protection,
feeder circuit protection, and feeder [module inter-connectivity components]
MIC7 connections” (Spec. 6:14-19; emphasis added).

PRINCIPLES OF LAW
“The test of enablement is whether one reasonably skilled in the art
could make or use the invention from the disclosures in the patent coupled
with information known in the art without undue experimentation.” United
States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988).
“[A] patent disclosure need not enable information within the
knowledge of an ordinarily skilled artisan. Thus, a patentee preferably omits
from the disclosure any routine technology that is well known at the time of
application.” Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1254 (Fed.
Cir. 2004).
A disclosure using terms corresponding to product trade names was
enabling in view of the evidence that the products were on the market and
known generally to ordinarily skilled artisans at the time the application was
filed. See In re Gebauer-Fuelnegg, 121 F.2d 505, 507 (CCPA 1941).

ANALYSIS
We will sustain the Examiner’s enablement rejection of representative
claim 1 which calls for, in pertinent part, a transformer with options that
include super neutral provisions. We first note that, apart from merely
restating the term in connection with the listed transformer options (FF 6),

7 See Spec. 5:12-13 (defining the acronym “MIC”).
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Appellant’s Specification does not further describe this term with any
particularly, let alone describe the feature such that ordinarily skilled artisans
could make or use it without undue experimentation.
This fact, however, is not dispositive. If ordinarily skilled artisans
could nonetheless make and/or use this disputed feature of the invention
without undue experimentation based on information contained in the
present disclosure along with information known in the art at the time of the
invention, then the disclosure would be enabling. See Telectronics, 857 F.2d
at 785; see also Genentech, 363 F.3d at 1254. Since the present application
provides very little guidance regarding what constitutes “super neutral” as
noted above, determining whether this feature was known in the art at the
time of the invention becomes crucial.
Appellant does provide some evidence tending to show that the term
“super neutral” is known in the art. The AFC document, for example, uses
the term in connection with a cable (FF 1-2). Also, the Hubbell document
uses the term in connection with supply cords and tees (FF 4).
But what remains unclear is when these facts were known. That is,
there is nothing on the record before us proving that this evidence was
known at the time of the invention (January 8, 2003). First, the AFC
document is undated (FF 3). Also, while the Hubbell document contains
legends “PD1996” and “10/04” (FF 5) that may indicate a date of
publication, we simply cannot say that this is the case given the scant
evidence before us. To conclude otherwise would require us to resort to
speculation and, even then, we would still have to speculate regarding which
of these two legends might represent the document’s publication date.
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We do acknowledge, however, that merely because the title of the
AFC document uses the term “super neutral” as part of a trademarked term
“Super Neutral Cable” is itself not dispositive of enablement.8 Rather, the
critical question depends on when this technology was known in the art.
That is, despite the apparent trade name associated with the term “super
neutral,” if the underlying subject matter of this trade name was known at
the time of the invention, it may very well support enablement. See
Gebauer-Fuelnegg, 121 F.2d at 507.
But given the lack of evidence on the record before us in this regard,
we cannot say that the subject matter of either the AFC or the Hubbell
documents was known at the time of the invention. Accordingly, the
probative force of this evidence is greatly diminished and, as a result, does
not persuasively rebut the Examiner’s prima facie case regarding the present
disclosure’s lack of enablement under § 112, ¶ 1.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s enablement rejection of representative claim 1. Therefore,
we will sustain the Examiner’s rejection of that claim, and claims 14 and 20
which fall with claim 1.

THE OBVIOUSNESS REJECTION OVER BYRNE, WATSON, AND EBERSOLE
We now consider the Examiner’s obviousness rejection of claim 1
over Byrne, Watson, and Ebersole. Appellant argues that the prior art does
not disclose a power conversion unit including super neutral, shielding,
bonding, and grounding (App. Br. 10; Reply Br. 3). The Examiner reiterates

8 But it can be dispositive with respect to indefiniteness under § 112, second
paragraph. See pp. 16-17, infra, of this opinion.
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that these features are optional in view of the term “with options” that
precedes these features (Ans. 6).
The issue before us, then, is as follows:

ISSUE
Has Appellant shown that the Examiner erred in finding that the
collective teachings of Byrne, Watson, and Ebersole teach or suggest a
power conversion unit including a transformer with options that include
super neutral, shielding, bonding, and grounding electrode conductor
provisions in rejecting claim 1 under § 103 ?

FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence:
7. The Examiner’s factual findings regarding the specific disclosures
of the Byrne, Watson, Ebersole, and Hall references (Ans. 4-5) are
undisputed. Accordingly, we adopt these factual findings as our own.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 127
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S. Ct. 1727 (2007), explains that if the claimed subject matter cannot be
fairly characterized as involving the simple substitution of one known
element for another or the mere application of a known technique to a piece
of prior art ready for the improvement, a holding of obviousness can be
based on a showing that “there was an apparent reason to combine the
known elements in the fashion claimed.” Id. at 1740-41. Such a showing
requires
‘some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’. . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
“[O]ptional elements do not narrow [a] claim because they can always
be omitted.” In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006).

ANALYSIS
We find no error in the Examiner’s obviousness rejection of claim 1
which calls for, in pertinent part, a power conversion unit including a
transformer with options that include super neutral, shielding, bonding, and
grounding electrode conductor provisions. We agree with the Examiner
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(Ans. 6) that these disputed limitations are merely optional. Our previous
discussion in that regard applies equally here and we therefore incorporate it
by reference.
As such, these optional elements do not narrow the claim since they
can always be omitted. Johnston, 435 F.3d at 1384. Therefore, even if we
assume, without deciding, that the collective teachings of the cited prior art
do not disclose the disputed optional features, namely the super neutral,
shielding, bonding, and grounding electrode conductor provisions, the
positively-recited limitations of claim 1 would still be taught or suggested
for the reasons indicated in the Answer. As such, Appellants have not
persuasively rebutted the Examiner’s prima facie case of obviousness based
on the collective teachings of the cited references (see FF 7)—a position that
we find reasonable.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of claim 1. Therefore, we will sustain the
Examiner’s rejection of that claim.

THE OBVIOUSNESS REJECTION OVER BYRNE, WATSON, EBERSOLE, AND HALL
Likewise, we will sustain the Examiner's obviousness rejection of
claims 2-20 over Byrne, Watson, Ebersole, and Hall (Ans. 5). We find that
Appellant has not particularly pointed out errors in the Examiner’s reasoning
to persuasively rebut the Examiner's prima facie case of obviousness, but
merely reiterates the same argument for independent claims 14 and 20 that
was asserted with respect to claim 1 (App. Br. 10-11; Reply Br. 3). Thus,
we are not persuaded that the Examiner erred in rejecting these claims for
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the same reasons discussed above with respect to claim 1. The rejection is
therefore sustained.

New Grounds of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter new grounds of rejection under
§ 112, ¶ 2 for claims 1-20.
Claims 1-20 are rejected under 35 U.S.C. 112, ¶ 2, as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which Appellant regards as the invention. As indicated previously, the
recited term “super neutral” is used in connection with a trademarked term,
“Super Neutral Cable®” (FF 1).
Trademarks are used to identify the source of goods, and not the
goods themselves. MPEP § 2173.05(u) (Rev. 6, Sept. 2007). Therefore, if
the trademark is used in a claim to identify or describe a particular material
or product, it does not comply with § 112, ¶ 2. Id. (citing Ex parte Simpson,
218 USPQ 1020 (BPAI 1982)).
Here, although the term “super neutral” recited in the independent
claims does not exactly match the trademark “Super Neutral Cable®” (see FF
1), it substantially matches the trademarked phrase.9 Furthermore,
Appellants indicate that a “super neutral” is an over-sized neutral cable
(Reply Br. 2). Given these facts, ordinarily skilled artisans could reasonably
construe the independent claims as reciting a trademark that identifies a
particular product. For this reason alone, the claims are indefinite.

9 Regarding such matching, federal registration no. 1,782,264, issued July
13, 1993, for this trademark with the disclaimer “no claim is made to the
exclusive right to use “cable” apart from the mark as shown.”
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Furthermore, even if the independent claims could also be construed
as not containing a trademark, this ambiguity arising from two different, yet
plausible, claim constructions still renders the claims indefinite. See
Miyazaki, slip op. at 11-12 (“[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”).

CONCLUSIONS
Appellants have shown that the Examiner erred in rejecting claims 1,
14, and 20 under § 112, ¶ 2, but have not shown that the Examiner erred in
rejecting those claims under § 112, ¶ 1. Appellants have also not shown that
the Examiner erred in rejecting claims 1-20 under § 103. Lastly, we have
entered a new ground of rejection of claims 1-20 under § 112, ¶ 2.

ORDER
The Examiner’s decision rejecting claims 1-20 is affirmed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). That section provides that “[a] new ground of rejection...
shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .

(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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).

AFFIRMED
37 C.F.R. § 41.50(b)

ELD

TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVEVLAND, OH 44114
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