Ex Parte Reuber et al

Patent Trial and Appeal Board

Apr 29, 2016

13447910 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/447,910
134603
ABB
7590
FILING DATE
04/16/2012
05/03/2016
C/O Buchanan Ingersoll & Rooney PC
1737 King Street, Suite 500
Alexandria, VA 22314
FIRST NAMED INVENTOR
Christian REUBER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0070996-000186 4122
EXAMINER
TALPALATSKI, ALEXANDER
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
ADIPDOC 1@BIPC.com
stacy.shaw@bipc.com
deborah.thodos@bipc.com
PTOL-90A (Rev. 04/07)
L11'-~ITED ST ATES PATENT AND TRADE~'v1ARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN REUBER, DIETMAR GENTSCH, and
PHILIPP MAS MEIER 1
Appeal2014-007458
Application 13/447,910
Technology Center 2800
Before GEORGE C. BEST, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1---6, 8-14, and 16-18 in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is ABB Technology AG.
Appeal Br. 2.
Appeal2014-007458
Application 13/447,910
BACKGROUND
Appellants' invention relates to "a pole part of a circuit-breaker for
switching medium-voltage to high-voltage circuits." Spec. i-f 2. An
embodiment as shown in Appellants' Drawing is reproduced below:
The Drawing shows "a schematic side view of a medium-voltage circuit-
breaker actuated by a bistable electromagnetic actuator for operating a
corresponding pole part." Id. at i-f 16.
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Appeal2014-007458
Application 13/447,910
Sole independent claim 1 is representative:
1. A pole part [ 1] of a circuit-breaker for switching
medium-voltage to high-voltage circuits, the pole part
compnsmg:
a cup-shaped housing [ 4] made of insulating material for
accommodating an interrupter insert [3] operated by a drive rod
[12],
wherein the cup-shaped housing is divided into an upper
housing part [5] in which the interrupter insert [3] is arranged,
and a lower housing part [ 6] for accommodating a magnetic
actuator [2], and
wherein the drive rod [12] of the interrupter insert [3] is
coaxially arranged to an armature [13] of the magnetic actuator
[2], and
wherein the magnetic actuator [2] comprises an outside
screw thread [ 17] which corresponds to an inside screw thread
in an opening area of the cup-shaped housing [4].
Appeal Br. Claims Appendix 1 (emphasis and reference numbers to the
Drawing added); see also Appeal Br. 9-10 (reference list).
The Examiner maintains the following grounds of rejection:
I. Claims 1---6, 8-11, 13-14, and 16-18 under 35 U.S.C. § 103(a)
as unpatentable over U.S. Patent No. 6,794,596 B2 [hereinafter Rhein]
(issued Sept. 21, 2004) in view of U.S. Patent No. 5,050,840 [hereinafter
Kondo] (issued Sept. 24, 1991). Final Action 2--4; see also Answer 2.
II. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Rhein
in view of Kondo, and further in view of U.S. Patent No. 7,425,687 B2
[hereinafter Morita] (issued Sept. 16, 2008). Final Action 4; see also
Answer 2.
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Appeal2014-007458
Application 13/447,910
DISCUSSION
Claims 1, 2, 9-12, and 16--18
The Examiner cites Rein as the primary reference for rejecting claim
1, but finds that Rein does not teach a screw interface. Final Action 2-3.
However, the Examiner finds that Kondo teaches a screw interface between
an actuator and a housing. See id. at 3 (citing Kondo Figs. 1-18); see also
Answer 2 (citing Kondo 4:5-10). Kondo's Figure 1 is reproduced below:
"""'6 • f"f T. !
Figure 1 depicts "a longitudinal section of a solenoid valve." Kondo 2:65.
According to the Examiner, the outside and inside screw threads of claim 1
are items 13 and 13a in Kondo's Figure 1, the electromagnetic actuator is
item A, and the cup-shaped housing is item B. See Answer 2; see also Final
Action 3. The Examiner further finds that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have used a screw type
interface between the housing and the actuator as taught by
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Appeal2014-007458
Application 13/447,910
Kondo in the device of Rhein in order to provide a more precise
and secure positioning for the actuator.
Final Action 3.
Appellants argue that "the present disclosure provides a special
integration of the magnetic actuator into pole part 1." Reply Br. 2.
Appellants argue that the benefits of the design include that "there is no need
for separate housing," and "[ d]ue to the compact design, the number of parts
is strongly reduced and the assembling time is significantly shorter." Reply
Br. 2 (citing Spec. i-f 20). Appellants argue that in Kondo, "in contrast to
claim 1, the stationary core 7 is not screwed into an inside screw thread in an
opening area of the valve body B. On the contrary, the stationary core 7 is
screwed into an external area proximate to the spool returning spring 4."
Appeal Br. 5. Thus, according to Appellants, "Kondo does not cure the
deficiencies of Rhein for failing to disclose or suggest the feature of a
magnetic actuator comprising an outside screw thread which corresponds to
an inside screw thread in an opening area of the cup-shaped housing, as
recited in claim 1." Id.
We are not persuaded that the Examiner reversibly erred in
determining that Kondo describes a part of an actuator 7 that has an outside
screw thread 13 which corresponds to an inside screw thread 13a in an
opening area of a cup shaped housing B. Appellants do not explain why the
presence of spool returning spring 4 negates the Examiner's findings.
Appellants also do not explain on what basis a distinction may be made
between an "external area," as Appellants describe the area encompassed by
threads 13a, and an "opening area" as required by claim 1. In Appellants'
Drawing, the screw threads 17 are similarly situated near an opening to the
exterior to the housing. See Spec. i-f 31 ("The lower plunger 19 is visible
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Appeal2014-007458
Application 13/447,910
from outside in order to indicate the current position of the armature 13
which corresponds with the switching position of the circuit breaker.")
For the above reasons, we determine that the evidence of obviousness
of claim 1, on balance, outweighs the evidence of nonobviousness relied
upon by Appellants, and we affirm the Examiner's decision to reject claim 1.
Because appellants offer no distinct arguments for reversing the Examiner's
decision to reject claims 2, 9-12, and 16-18, which depend directly or
indirectly from claim 1, we affirm the Examiner's decision to reject claims
1, 2, 9-12, and 16-18.
Claims 3-5and13-14
The Examiner determines that claims 3-5 are product-by-process
claims, and that the process limitations (a casting process for claim 3 and a
screwing process for claims 4 and 5) are entitled to no patentable weight.
See Final Action 3; Answer 2.
Claim 3 contains the limitation "wherein the axis rod [ 14] is casted
into a lower end of an insulating material of the drive rod [12]." Appeal Br.
Claims Appendix 1 (emphasis and reference numbers to the Drawing
added). We determine that the term casted into in the context of claim 1 is
properly construed as a structural limitation. See In re Garnero, 412 F.2d
27 6, 279 (CCP A 1979) (holding the term inter bonded by interfusion to limit
structure, and noting that prior cases had construed terms such as welded,
intermixed, ground in place, press fitted, and etched as structural
limitations). Because the Examiner has made no findings sufficient to
establish that claim 3 would have been obvious to one of ordinary skill in the
art, we reverse the Examiner's decision to reject claim 3. Because the
Examiner's additional findings regarding claim 13, which depends from
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Appeal2014-007458
Application 13/447,910
claim 3, do not address the deficiencies addressed above, we likewise
reverse the Examiner's decision to reject claim 13.
Claim 4 contains the limitation "an axis rod configured to be screwed
in the drive rod to attach the armature adjustable relative to the interrupter
insert." Appeal Br. Claims Appendix 2 (emphasis added). We determine
that the phrase "configured to be screwed in" is a limitation on structure, and
entitled to patentable weight. The Examiner states that "a screwing process
is already taught in Rhein." Answer 2 (citing Rhein 7:55---60). However,
Rhein describes an axis rod 60 connected to a drive rod 34 via an
intermediate adapter 96. See Rhein 7:55-60. Rhein, therefore, does not
describe an axis rod "configured to be screwed in the drive rod." Because
the Examiner has not established that claim 4 would have been obvious in
view of the prior art, we reverse the Examiner's decision to reject claim 4.
Because the Examiner's additional findings regarding claims 5 and 14,
which depend directly or indirectly from claim 4, do not address the
deficiencies addressed above, we likewise reverse the Examiner's dec1s10n
to reject claims 5 and 14.
Claim 6
Claim 6 contains the limitation "wherein the magnetic actuator [2] is
placed directly below the interrupter insert [3] in an opening area of the cup-
shaped housing [1]." Appeal Br. Claims Appendix 1 (emphasis and
reference numbers to the Drawing added). The Examiner finds that Rhein
teaches that the actuator 20 is placed directly below the interrupter insert 18.
Answer 3. The Examiner interprets the term below "to be an arbitrary one
since the orientation of the device is based on design choice and/ or can
change if positioned in a moving vehicle for example." Id.
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Application 13/447,910
Appellants argue that "[Rhein ]2 discloses that adapter 96 is positioned
between the first part 60 of the shaft 58 and the movable contact 34," and
therefore the magnetic actuator is not placed "directly" below the interrupter
insert within the opening area of the cup-shaped housing. Appeal Br. 6. The
Examiner does not directly respond to this argument, apparently mistaking
Appellants' argument as being directed to Kondo. See Answer 3.
We give claim terms "their broadest reasonable interpretation
consistent with the specification." In re Translogic Tech. Inc., 504 F.3d
1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211F.3d1367, 1372 (Fed.
Cir. 2000). The Specification states that in one embodiment, "the magnetic
actuator is placed directly below the interrupter insert in the opening area of
the cup shaped housing. Therefore, there is no need for additional
mechanical linkage." Spec. i-f 22 (emphasis added). The word additional
appears to refer to one of the means described in the previous paragraph of
connecting the axis rod of the actuator to the drive rod of the interrupt insert
inside the cup-shaped housing, by casting the two parts together or screwing
them directly together with an optional locking means. Id. at i-f 21. The term
mechanical linkage thus appears to refer broadly to means of joining
together mechanical parts. Therefore, the broadest reasonable interpretation
of the phrase directly below, consistent with the Specification, excludes the
presence of a joining adapter linking the mechanical parts of the actuator to
the mechanical parts of the interrupt insert inside the cup-shaped housing,
such as the adapter 96 described by Rhein. Because the Examiner reversibly
2 Although Appellants cite Kondo, it is clear from the context, citation, and
reference numbers that the argument is directed to an embodiment in Rhein.
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Application 13/447,910
erred in interpreting the phrase directly below in light of the Specification,
we reverse the Examiner's decision to reject claim 6.
DECISION
The Examiner's decision rejecting claims 1, 2, 9-12, and 16-18 is
affirmed.
The Examiner's decision rejecting claims 3---6, 13, and 14 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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