90012087 (P.T.A.B. Sep. 21, 2015)

Ex Parte Shotey et al

Patent Trial and Appeal BoardSep 21, 2015

90012087 (P.T.A.B. Sep. 21, 2015)

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. 90/012,087 02/16/2012 Michael J. Shotey 60816 1077 128168 7590 09/21/2015 Michael Best & Friedrich LLP (Hubbell) 100 East Wisconsin Avenue Suite 3300 Milwaukee, WI 53202 EXAMINER WHITTINGTON, KENNETH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/21/2015 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 HUBBELL INCORPORATED Appellant ____________________ Appeal 2014-005985 Reexamination Control 90/012,087 U.S. Patent 7,119,277 B1 Technology Center 3900 ____________________ Before JEAN R. HOMERE, JASON V. MORGAN, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2014-005985 Reexamination Control 90/012,087 Patent 7,119,277 B1 2 Hubbell Incorporated (Appellant and Patent Owner) has filed a request for reconsideration and rehearing under 37 C.F.R. § 41.52 (hereinafter “Req. Reh’g.”), dated August 8, 2014, of our Decision mailed June 10, 2014 (hereinafter “Decision”). Appellant requests rehearing of our Decision sustaining the rejection of claims 1–20 under 35 U.S.C. § 103(a). We grant the Request in part. THE REQUEST FOR REHEARING A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing. See 37 C.F.R. § 41.52(a)(1). Also, a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. The proper course for an Applicant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. Appellant seeks a rehearing arguing the Board overlooked discouragement for the asserted combinations. Req. Reh’g. 2. ANALYSIS Appellant’s request is improper because, although characterizing the basis as a point overlooked, it is merely an expression of disagreement with our Decision in connection with whether the prior art teaches away from the Appeal 2014-005985 Reexamination Control 90/012,087 Patent 7,119,277 B1 3 applied combination of prior art references. In particular Appellant “submits that the Examiner and Board overlooked the fact that the Hayduke reference when viewed in its entirety expressly teaches away from the proposed combination with Hartmann and the proposed modification.” Req. Reh’g. 2. Appellant takes issue with our prior Decision, contending there is no requirement that Appellant establish that Hayduke cannot have an aperture to demonstrate Hayduke teaches away from the modification in view of the teachings of Hartmann, only that Hayduke discouraged the aperture. Id. In support of a teaching away argument, Appellant contends Figure 9 and Column 9, line 64 to Column 10, line 15 of Hayduke would be understood to require the absence of screw holes in cover plate 90. Req. Reh’g 3–4. According to Appellant, “[t]he proposed combination would provide direct access to the box behind back plate 4. Therefore, the proposed modification would not enable ‘only the outlets with the female receptacles for receiving plugs remain visible.’” Id. at 5. Although we consider Appellant’s Request to amount to no more than an improper expression of dissatisfaction with a Board Decision, rather than an appropriate identification of points believed to have been misapprehended or overlooked, we address the specifics of the alleged errors as follows. In particular, contrary to Appellant’s arguments, this Board did not require a demonstration that a reference could not be modified to constitute a teaching away from making the modification. Instead, our finding that “Appellant has not shown that Hayduke requires the outlet cover cannot have an aperture” was in response to “Appellant’s argument that modifying Hayduke’s wall plate or housing to provide access to the keyhole slots Appeal 2014-005985 Reexamination Control 90/012,087 Patent 7,119,277 B1 4 would ‘result in the wall plate not covering the rear wall of the back body as required by the disclosure of Hayduke’” (Decision 9 (emphasis omitted)), not in connection with Appellant’s contention that Hayduke teaches away from the proposed modification as taught by Hartmann. In connection with Appellant’s renewed contention that Hayduke teaches away from providing holes through which to access the keyhole slots, we disagree for the reasons set forth in our Decision at pages 14–15. In particular, not only has Appellant failed to provide sufficient evidence that Hayduke discourages providing accessibility according to Hartmann, but Appellant has failed to provide sufficient evidence that the proposed modification would permit substantial or, for that matter, any direct access to the underlying electrical box. Id. at 15. To the contrary, as depicted in the Figures 1 and 2 below, in which we have annotated Figures 9 and 13 of Hayduke and modified the figures to include Hartmann’s opening 17b so as to provide access to a mounting screw with wall plate 90 secured within back body 40, it can be seen that the heads of the mounting screws block direct access to the box behind back body 40 so that the only access is through apertures 92 and opening 102 for accessing outlets mounted in the box. Appeal 2014-005985 Reexamination Control 90/012,087 Patent 7,119,277 B1 5 Figure 1: Hayduke’s Weatherproof Outlet Cover as depicted in Figure 13, shown with annotations and modifications to include Harman’s Openings 17b. Appeal 2014-005985 Reexamination Control 90/012,087 Patent 7,119,277 B1 6 Figure 2: Hayduke’s Weatherproof Outlet Cover as depicted in Figure 9, shown with annotations and modifications to include Harman’s Openings 17b. Therefore, not only has Appellant failed to provide sufficient evidence that the modification would provide access to the electrical box as we earlier found (Decision 14–15), but, contrary to Appellant’s argument and as depicted above, the combination of Hayduke and Hartmann would not interefere with the function of wall plate 90 in preventing direct access to the underlying electrical box containing the outlets because the screws would block any access through the openings. In contrast, other than unsupported Appeal 2014-005985 Reexamination Control 90/012,087 Patent 7,119,277 B1 7 supposition, Appellant provides insufficient evidence that Hayduke discourages the addition of apertures—particularly apertures that do not provide access to an underlying electrical box—in an outlet cover. Accordingly, for the reasons set forth in our Decision at pages 14–15, we find Appellant’s contention unpersuasive of error. Appellant further argues the combination of Hayduke and Hartmann does not render the claim obvious because the wall plate of Hayduke is removable so that there is “no need for an additional hole such that the proposed hole according to the teachings of Hartmann is unnecessary and would serve no useful purpose.” Req. Reh’g 6. As this new argument is raised for the first time in the Request for Rehearing and does not fall under any of the categories described in 37 C.F.R. § 41.52 (a)(2)–(4), such argument is waived. We nonetheless also find this new argument unpersuasive because it fails to address the Examiner’s finding that “providing a hole through the adapter plate of Hayduke to provide access to the keyholes in the base plate . . . would . . . allow for tightening and loosening of the mounting screws after the base unit is installed over the electrical socket.” Final Act. 5. That is, even though access to the keyholes could be provided by disassembly and removal of the wall plate, Appellant fails to explain why the Examiner’s reasoning for making the modification so as to provide access without requiring removal of the wall plate is insufficient to justify the legal conclusion of obviousness. Therefore, Appellant’s contention is not persuasive of error. Appeal 2014-005985 Reexamination Control 90/012,087 Patent 7,119,277 B1 8 DECISION Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellant’s Request and modify our prior Decision to further clarify our rationale for affirming the Examiner’s rejections, but is denied with respect to our making any modification to the outcome of the Decision. Requests for extensions of time are governed by 37 C.F.R. § 41.52(b). GRANTED-IN-PART bar Appeal 2014-005985 Reexamination Control 90/012,087 Patent 7,119,277 B1 9 For Appellant/Patent Owner: MICHAEL BEST & FRIEDRICH LLP (HUBBELL) 100 EAST WISCONSIN AVENUE SUITE 3300 MILWAUKEE, WI 53202 For Third Party Requester: O’SHEA GETZ PC 1500 MAIN STREET SUITE 912 SPRINGFIELD, MA 01115