Ex Parte Smith

Patent Trial and Appeal Board

Mar 14, 2017

12924773 (P.T.A.B. Mar. 14, 2017)

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.
12/924,773 10/04/2010 Lawrence Smith 302-211.145 4656
4955 7590 03/16/2017
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET
MONROE, CT 06468
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
mail @ warefressola. com
uspatents @ warefressola. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE SMITH
Appeal 2014-006361
Application 12/924,7731
Technology Center 3600
Before MICHAEL W. KIM, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—17. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 The Appellant identifies Bridgeport Fittings, Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2014-006361
Application 12/924,773
ILLUSTRATIVE CLAIM
1. A sealing reducing washer comprising:
- a metallic reducing washer having a front surface, a rear
surface, an outer periphery, and an inner periphery having a
diameter, wherein the metallic reducing washer is substantially
planar and wherein the rear surface is displaced downwardly in
a region adjacent the inner periphery;
- a pliable rim secured over the outer periphery of the
metallic reducing washer, a portion of the rim circumferentially
depending below the rear surface of the metallic reducing washer
adjacent the outer periphery of the metallic reducing washer so
as to form a weathertight seal against a surface of an electrical
enclosure when the sealing reducing washer is secured to the
enclosure, wherein the pliable rim is configured to deform
radially outwardly when the sealing reducing washer is secured
to the enclosure, thereby allowing the rear surface of the metallic
reducing washer to come into contact with the surface of the
electrical enclosure; and
- a pliable toroid having a central opening, the pliable
toroid circumferentially secured adjacent the inner periphery of
the metallic reducing washer and extending circumferentially
above the front surface of the metallic reducing washer in the
region adjacent the inner periphery of the metallic reducing
washer, the toroid having a periphery that extends radially
inward relative to the inner periphery of the metallic reducing
washer so as to have a minimum inside diameter less than the
diameter of the inner periphery of the metallic reducing washer,
the toroid dimensioned to form a weathertight seal with threads
of an electrical conduit or an outer surface of an electrical
raceway when the electrical conduit/electrical raceway is
positioned through the central opening of the pliable toroid and
the sealing reducing washer is secured to the electrical enclosure.
2
Appeal 2014-006361
Application 12/924,773
REJECTION
Claims 1—17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wilder (US 2,834,998, iss. May 20, 1958) and Smith (US 5,020,951,
iss. June 4, 1991).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Independent claim 1 recites, among other features, a “pliable rim” that
is “secured over the outer periphery of the metallic reducing washer” and
includes (emphasis added):
a portion of the rim circumferentially depending below the rear
surface of the metallic reducing washer adjacent the outer
periphery of the metallic reducing washer so as to form a
weathertight seal against a surface of an electrical enclosure
when the sealing reducing washer is secured to the enclosure,
wherein the pliable rim is configured to deform radially
outwardly when the sealing reducing washer is secured to the
enclosure, thereby allowing the rear surface of the metallic
reducing washer to come into contact with the surface of the
electrical enclosure.
The Final Office Action (pages 2—3) states that Wilder’s annular lip
23 (see Wilder, Fig. 4) satisfies the requirements of the claimed “pliable
rim.” Specifically, Wilder’s annular lip 23 is characterized as “depending
below the rear surface” of element 18 (described in Wilder, col. 4,1. 46 as a
“dished or concave, hard, rigid metallic lamina”), “form[ing] a . . . seal
against” bolt 26, and “allowing the rear surface of’ element 18 “to come into
contact with the surface of’ the mounting and attachment unit 15. Final
Action 2—3 (citing Wilder, Fig. 4, col. 5,11. 4—9, 10—14, col. 6,11. 54—65).
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Appeal 2014-006361
Application 12/924,773
Contending that the rejection of claim 1 is erroneous, the Appellant
argues that the Examiner’s mapping of claimed features to Wilder fails to
show any “portion” of Wilder’s annular lip 23 that both “depend[s] below
the rear surface” of element 18 and “form[s] a . . . seal against” bolt 26,
because no portion of Wilder’s annular lip 23 comes in contact with bolt 26.
Appeal Br. 10.
In response, the Answer states that Wilder’s attachment unit 15
includes bolt 26 and panel 12, the latter of which is in contact with (and,
thus, can “form a . . . seal against,” per claim 1) a portion of annular lip 23.
Answer 4. Further, the Answer states that this portion of annular lip 23
“depend[s] below the rear surface of the metallic reducing washer,” as in
claim 1, because the downward-facing side of Wilder’s flange 21 of element
18 (labeled 22a, in the Answer’s annotated version of Wilder’s Figure 4)
may be regarded as the claimed “rear surface of the metallic reducing
washer.” Id.
Yet, as the Appellant point out (see Appeal Br. 10 n.2), a mapping
such as the Answer provides does not meet claim 1 ’s requirement of
“allowing the rear surface of the metallic reducing washer to come into
contact with the surface of the electrical enclosure.” Indeed, under the
approach articulated in the Answer, the underside of Wilder’s flange 21 —
which is said to correspond to the claimed “rear surface of the metallic
reducing washer” (see Answer 4) — cannot “come into contact with” any
surface that might be said to correspond to the claimed “surface of the
electrical enclosure.” Rather, the underside of Wilder’s flange 21 contacts
only the elastomeric structure that forms annular lip 23. See Wilder, Figs.
3^4.
4
Appeal 2014-006361
Application 12/924,773
With regard to the dependent claims, there is also no explanation
provided of how the insufficiency of Wilder might be overcome.
Accordingly, the rejection of claims 1—17 under 35 U.S.C. § 103(a) is
not sustained.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—17 under
35 U.S.C. § 103(a).
REVERSED
5