Ex Parte Meinherz

Board of Patent Appeals and Interferences

Aug 31, 2009

10558747 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MANFRED MEINHERZ
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Appeal 2009-003490
Application 10/558,747
Technology Center 2800
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Decided: August 31, 2009
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Before TERRY J. OWENS, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 12-24. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2009-003490
Application 10/558,747

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Appellant’s claimed invention is directed to a switch arrangement
including a tubular encapsulation enclosure comprising a casing and an end
face. The tubular housing includes an interrupter unit disposed therein
wherein the interrupter unit includes a switching gap formed between first
and second ends of a main current path. Three main leads or output lines are
connected to the interrupter unit of the switch assembly.
Claim 12, the only independent claim on appeal, is illustrative of the
issues necessary to resolve this appeal. Claim 12 is reproduced below.
12. A switch arrangement, comprising:
an interrupter unit disposed within a substantially tubular encapsulation
enclosure, said tubular encapsulation enclosure having a casing, an end face
and a tube axis inclined relative to vertical and relative to horizontal when
the switch arrangement is in a ready-to-operate state, said interrupter unit
having a main current path with a first end and a second end and a switching
gap formed between said first end and said second end, said interrupter unit
having a first output line passing out of said end face of said encapsulation
enclosure and a second output line passing out of said casing of said
encapsulation enclosure, said first and second output lines being electrically
conductively connected to said first end of said main current path, said
interrupter unit having a third output line being electrically conductively
connected to said second end of said main current path.
The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Furuta US 2002/0056704 May 16, 2002

Claims 12-24 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Furuta. We reverse the stated rejection for reasons set forth in
the Appeal Brief and as timely presented in the Reply Brief.
Appeal 2009-003490
Application 10/558,747

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ISSUE
Has Appellant shown reversible error in the Examiner’s anticipation
determination by pointing out that that the Examiner’s application of Figure
16 of Furuta to the claimed subject matter fails to show, prima facie, how
Furuta describes two output lines (one passing out of an end face of a tubular
encapsulation enclosure and the other exiting through a casing) electrically
conductively connected to a main line first end on one side of a switching
gap, and another (third) output line (exiting through the casing) electrically
conductively connected to a main current path at a second end located on the
other side of the switching gap, as required by claim 12 and the appealed
claims depending therefrom ?,

PRINCIPLES OF LAW
Under 35 U.S.C. § 102(b), anticipation is established only when a
single prior art reference describes, either expressly or under the principle of
inherency, each and every element of a claimed invention. In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990).

FINDINGS OF FACT

Furuta
Furuta disclose a gas insulation switch apparatus. In one embodiment,
a circuit breaker 20 is located between or at the intersection of electrodes
(conductors) 21 and 22 within an obliquely inclined enclosure 31. First
cylindrical main housing 31B (see Fig. 8) and second cylindrical main
Appeal 2009-003490
Application 10/558,747

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housing 31C are each connected to cylindrical branched portion 31A.
Hollow conductors 32A and 32B are located in housings 31 B and 31C,
respectively. Hollow conductor 32A which extends in housing 31B is
connected to hollow conductor 22A on the side of circuit breaker 20 that
electrode 22 is located on (see Fig. 8), which latter conductor 22A is located
in branched portion 31A. Hollow conductor 32B extends from hollow
conductor 32A within housing 31C.
Figure 16 of Furuta is reproduced below.

Figure 16 schematically shows the construction of a modified hybrid
type gas insulation switch gear apparatus of Furuta in cross-sectional view.

Appeal 2009-003490
Application 10/558,747

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Specification
The subject Specification includes three Figures illustrating the
disclosed and claimed subject matter. Figure 1, shows, for example, an
interrupter 3 located within a tubular encapsulation enclosure comprises a
casing and an end face (see Fig. 1). The enclosure includes a main current
path including a first end 4 and a second end 5 located on opposite sides of a
switching gap 6, which gap is disposed between the first and second ends of
the main circuit path. A first output line 12a passes out of an end face of the
enclosure and a second output line 13a passes out of the casing, wherein
each of the first and second output lines are electrically conductively
connected to a first end of the main current path. A third output line 14a
passes out of the casing on the other (second) side of the gap.
The subject Application Figure 1 is reproduced below.

Appeal 2009-003490
Application 10/558,747

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Figure 1 depicts an embodiment of the disclosed switch arrangement
wherein an interrupter unit is located within a tubular encapsulation
enclosure, a switching gap of the interrupter unit is found between first and
second ends of a main current path, two output lines are conductively
connected to the main line first end, and one output line is connected to a
main line second end.

ANALYSIS
As correctly argued by Appellant, the Examiner’s proffered reading of
the claimed subject matter on the apparatus depicted in Figure 16 of Furuta
falls short of establishing an anticipatory disclosure of the claimed subject
matter (App. Br. 4-7; Reply Br. 1-5). This is because the Examiner errs in
urging that Figure 16 of Furuta describes (depicts) a switch arrangement
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wherein two output lines, one passing out of an end face of a tubular
encapsulation enclosure and the other exiting through a casing, are
electrically conductively connected to a main line first end on one side of a
switching gap, and another (third) output line exiting through the casing is
electrically conductively connected to a main current path at a second end
located on the other side of the switching gap, as required by representative
independent claim 12.
As Appellant observes, the Examiner has not established that Furuta
has a second output line, as claimed, that is electrically conductively
connected to a first end of the main current path together with a first output
line so connected to the first end, the second output line passing through a
casing of the tubular encapsulation enclosure whereas the first output line
passes out of an end face of the encapsulation enclosure (App. Br. 5-6;
Reply Br. 2-5). In this regard and considering element 20 of Figure 16 of
Furuta as the claimed switching gap that defines the first and second ends of
a main current path, as is urged by the Examiner, we agree with Appellant
that the only end of the main current path that has two output lines (11A and
11B, Fig. 16) electrically conductively connected to the main line is the
lower second end, as defined by the Examiner in the marked up drawing
Figure 16 from Furuta (Ans. 4; App. Br. 5 and 6,; Reply Br. 3 and 4).
However, neither of these two output lines that are electrically conductively
connected to the lower “second” end passes outwardly through an end face
of the encapsulation enclosure, as required by claim 12 for one of the two
output lines that are electrically conductively connected on the same end
(side) of the gap.
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Application 10/558,747

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Moreover, we agree with Appellant that the Examiner’s assertions
concerning the electrical conduction arrangement when the Figure 16 switch
of Furuta is closed represents an incorrect analysis of the claimed subject
matter because sole independent claim 12 requires a switching gap to be
present in a main current path and located between first and second ends of
the main current path (Ans. 6-7; App. Br. 6-7; Reply Br. 2-5).
In other words, because the Examiner relies on element 20 as the
switching gap present in Figure 16 of Furuta that corresponds to the claimed
switching gap, the portions of Furuta relied upon by the Examiner for
showing the second end of the main current path is not electrically
conductively connected to the portions of Furuta relied upon for showing the
first end of the main current path (see marked up copy of Fig. 16, Ans. 4).
Therefore, the Examiner has not established that Furuta,as applied by the
Examiner, discloses a second output line electrically conductively connected
to the first end of the main current path, as required by all of the appealed
claims. In this regard, the Examiner’s further application of Furuta to
features set forth in the dependent claims does not cure the aforementioned
deficiencies in the Examiner’s application of Furuta to the limitations
required by independent claim 12 (Ans. 5), which limitations are also
required by the dependent claims by virtue of their dependency on claim 12.
On this record, the Examiner’s efforts fall short of establishing that
Figure 16 of Furuta furnishes a prima facie anticipating disclosure of the
subject matter of claim 12 and the claims that depend therefrom.

Appeal 2009-003490
Application 10/558,747

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CONCLUSION
Appellant has shown reversible error in the Examiner’s anticipation
determination by pointing out that that the Examiner’s application of Figure
16 of Furuta to the claimed subject matter fails to show, prima facie, how
Furuta describes two output lines (one passing out of an end face of a tubular
encapsulation enclosure and the other exiting through a casing) electrically
conductively connected to a main line first end on one side of a switching
gap, and another (third) output line (exiting through the casing) electrically
conductively connected to a main current path at a second end located on the
other side of the switching gap, as required by the appealed claims.

ORDER
The Examiner’s decision to reject claims 12-24 under 35 U.S.C. §
102(b) as being anticipated by Furuta is reversed.

REVERSED

PL Initial:
sld

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