Ex Parte Moffatt

Patent Trial and Appeal Board

Mar 11, 2013

11326887 (P.T.A.B. Mar. 11, 2013)

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.
11/326,887 01/06/2006 Ronald Moffatt 0190186 9836
7590 03/11/2013
Bryan Cave LLP
Suite 2200
One Renaissance Square
Two North Central Avenue
Phoenix, AZ 85004-4406
EXAMINER
THOMAS, LUCY M
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
03/11/2013 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 RONALD MOFFATT
____________________

Appeal 2010-0105491
Application 11/326,887
Technology Center 2800
____________________

Before JEAN R. HOMERE, TREVOR M. JEFFERSON, and
LARRY J. HUME, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Belkin International, Inc. (App. Br. 4.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-20. (App. Br. 6.) We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and system for improving a surge
suppressor (60) containing a plurality of metal oxide varistors (MOV, 63a-d)
and thermal cutoffs (TC, 62a-c). In particular, each MOV (current diverter)
is repositioned to be adjacent to a TC so that the MOV side closest to the TC
is at substantially the same electrical potential as the TC thereby permitting
quick and effective transfer of heat from the MOV to the TC. (Spec. Fig. 6,
¶¶ [0063], [0064].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of improving a surge suppressor configured to
pass an electrical current to at least one electronic device and to
absorb voltage spikes in the electrical current thereby protecting
the at least one electronic device from the voltage spikes, the
surge suppressor comprising a plurality of electrical
components, the improvement comprising at least the step of
revising a layout of the electrical components so that a plurality
of MOVs are at a closer electrical potential to adjacent
electrical components.

Prior Art Relied Upon
Brady US 5,010,438 Apr. 23, 1991
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Murphy US 5,923,517 Jul. 13, 1999
Goldstein US 6,118,639 Sep. 12, 2000
Chaudhry US 6,252,754 B1 Jun. 26, 2001
Wu US 2003/0043519 A1 Mar. 6, 2003

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 2, 6, and 8 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
2. Claims 1, 6, and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Murphy.
3. Claims 1, 3, 4, 11-14, and 16-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wu.
4. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murphy in view of Brady.
5. Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murphy in view of Chaudhry.
6. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murphy in view of Goldstein.
7. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wu in view of Goldstein.

ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Appeal Brief, pages 12-113, and the Reply Brief, pages 5-9.
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Indefiniteness Rejection
Dispositive Issue 1: Under 35 U.S.C. § 112, second paragraph, did the
Examiner err in concluding that the recitation of “revising a layout of
electrical components so that MOVs are at a closer electrical potential to
adjacent electrical components” as recited in claim 1 renders the claim
indefinite?

Appellant argues that because MOVs are electrical components that
can be moved or rearranged to be adjacent to other electrical components
that have similar electrical potentials, the disputed limitation does not render
the claim indefinite. (App. Br. 14-15.) Further, Appellant argues that the
Examiner’s interpretation of the disputed limitation as any arrangement of
the MOVs that would protect an electrical component is incorrect because it
not consistent with the discussion provided in Appellant’s Specification. (Id.
at 16-17.)
In response, the Examiner finds that because the claim does not recite
any connection between the MOVs and other electrical components, it is
unclear as to how “placement of parts in the layout design can affect the
electrical potential of MOV with some other parts.” Therefore, the
Examiner submits that the disputed limitation renders the claim indefinite.
(Ans. 14-15.)
On the record before us, we find error in the Examiner’s
indefiniteness rejection because one of ordinary skill in the art having read
Appellant’s Specification would have been apprised of the scope of the
claimed subject matter. In particular, we find that the ordinarily skilled
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artisan would have been readily apprised that because the MOVs and the
other electrical components are parts of the surge protector circuit, the
MOVs are connected to the other electrical components. Further, because
the MOVs are movable components (Spec. ¶ [0064]), only routine skills
would be required to place the MOVs near the other components in such a
way for the MOVs to have substantially the same electrical potentials as
those of the adjacent electrical components. We thus agree with Appellant
that the Examiner erred in rejecting claim 1 as being indefinite.
Regarding claim 2, the Examiner concludes that because MOVs are
resistor elements that do not have polarity, the recitation of orienting the
MOVs in alternating polarity renders the claim indefinite. (Ans. 4.) We find
error in this rejection as well. We agree with Appellant that the ordinary
skilled artisan would have readily appreciated that, despite the MOVs being
resistor elements, they each have an electrical potential along with a polarity
during operation of the surge protector. (App. Br. 19-21.) Therefore, the
recitation of alternating the polarities of the MOVs would not render the
claim indefinite.
Regarding claims 6 and 8, the Examiner concludes that because safety
cannot be measured or objectively estimated, the recitation of advertising
that the surge protector is safer renders the claim indefinite. (Ans. 4-5.) We
find merit in that rejection. We find that the recited limitation is not
functionally tied to the invention to thereby to achieve the task of improving
a surge suppressor as set forth in preamble of claims 6 and 8. We find the
disputed limitation to be speculative at best, and does not further define or
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clarify how the surge protector is improved. Consequently, we will sustain
this rejection.
Obviousness Rejection
Dispositive Issue 2: Under 35 U.S.C. § 103, did the Examiner err in
finding that Wu or Murphy, taken alone, teaches or suggests revising a
layout of electrical components so that MOVs are at a closer electrical
potential to adjacent electrical components, as recited in claim 1?

The Examiner finds that Murphy’s disclosure of a surge protector
having placed therein a plurality of MOVs adjacent to a plurality of
electrical components (e.g. line-ground, line-neutral, and neutral ground
components respectively) to thereby cause the MOVs to have substantially
the same electrical potential as the electrical components teaches or suggests
the disputed limitations. (Ans. 5.) Similarly, the Examiner finds that Wu’s
disclosure of a surge protector including a plurality of MOVs placed
adjacent to electrical components (line to neutral, line to ground, and neutral
to ground respectively) substantially teaches the disputed limitations. (Id. at
6.)
Further, the Examiner finds that although neither Murphy nor Wu
discloses revising the layout of the surge protector, it would have been
obvious to do so through trial and error until the optimal design is achieved.
(Id. at 16-17, 20.)
Appellant argues that neither Murphy nor Wu teaches or suggests the
disputed limitations emphasized above. (App. Br. 29-37.) In particular,
Appellant argues that while both Murphy and Wu disclose placing the
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MOVs adjacent to electrical components within a surge protector, neither
reference teaches or suggests revising the layout of the surge protector to
thereby allow the MOVs to have substantially the same electrical potential
as the adjacent electrical components. (Id. at 32, 38-46.)
Based upon our review of the record before us, we agree with the
Examiner’s underlying factual findings and ultimate conclusion of
obviousness regarding claim 1. We note at the outset that Appellant does
not dispute the Examiner’s finding that both Murphy and Wu disclose a
surge protector having a layout wherein MOVs are placed adjacent to
electrical components. However, Appellant disputes the Examiner’s
conclusion that it would have been obvious to revise the layout of electrical
components within the surge protectors to find an optimum design therefor.
As discussed above, we find the ordinarily skilled artisan would have
readily appreciated that in a surge protector circuit where the MOVs are
connected to other electrical elements, only routine skills would be required
to arrange the MOVs to have substantially the same electrical potential as
adjacent components connected thereto. Further, because it is undisputed
that both Wu and Murphy disclose three MOVs that are adjacently placed to
a line to ground, line to neutral, and a neutral to ground components,
respectively, the ordinarily skilled artisan would have readily discerned
therefrom that the MOVs are capable of having substantially the same
electrical potential as those electrical components, and that only routine skill
would be required for such modification or revision.
Next, regarding the lack of logical reason to modify argument, we
note that U.S. Supreme Court has held that “[t]he combination of familiar
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elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combining the known elements in a the fashion
claimed by the patent at issue.

Id. at 418.
Additionally, the Court instructs that:
rejections on obviousness grounds cannot be sustained by mere
conclusory statements. Instead, there must be 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. (citation omitted).
First, we find that the ordinarily skilled artisan, being a creative
individual would have been able to fit the teachings of the cited references
(including established knowledge in the art) together like pieces of a puzzle
to predictably result in the disputed limitations. That is, the proffered
modification of the cited references would predictably result in a surge
protector having a plurality of MOVs adjacently connected to thermal fuses
to thereby allow the MOVs to have substantially the same voltages as the
thermal fuses connected thereto. While it may be necessary for an Examiner
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to identify a reason for combining the familiar elements obtained from the
prior art in establishing a prima facie case of obviousness, the identification
of such a reason is not a sine qua non requirement. So long as the Examiner
provides an articulated reasoning with some rational underpinning to
substantiate the obviousness rejection, such a conclusion is proper. In this
case, the Examiner provides more than just a mere conclusory statement.
The Examiner notes that at the time of the claimed invention, an
ordinarily skilled artisan would have been motivated to revise the layout of
Murphy’s and Wu’s system to reposition components thereof as such
revision is a part of a normal design procedure to obtain an optimal design.
(Ans. 5.) In our view, such a statement suffices as an articulated reason with
a rational underpinning to support the cited modification. As noted above,
the case law allows the Examiner to look to the state of the prior art,
including the knowledge of the ordinarily skilled artisan to arrive at such a
reason for combining or modifying the known elements of the prior art.
Consequently, the Examiner’s reliance upon the cited references in order to
arrive at an articulated reason with a rational underpinning to support the
proffered modification is proper. For these same reasons, Appellant’s
argument that Murphy or Wu teaches away from the invention is not
persuasive.
Regarding claims 2-20, Appellant reiterates substantially the same
arguments submitted for patentability of claim 1 above. (App. Br. 47-113.)
As discussed above, these arguments are not persuasive. See 37 C.F.R.
§ 1.37(c)(1)(vii). Further, while Appellant raised additional arguments for
patentability of the cited claims, we find that the Examiner has rebutted in
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the Answer each and every one of those arguments by a preponderance of
the evidence. (Ans. 16-29.) Therefore, we adopt the Examiner’s findings
and underlying reasoning, which are incorporated herein by reference.
Consequently, we have found no error in the Examiner’s rejections of claims
2-20.
DECISION
We affirm the Examiner’s obviousness rejections of claims 1-20 as set
forth above. We further affirm the Examiner’s indefiniteness rejection of
claims 6 and 8. However, we reverse the indefiniteness Examiner’s
rejection of claims 1 and 2.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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

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