Ex Parte Stoving

Board of Patent Appeals and Interferences

Jul 17, 2012

11881952 (B.P.A.I. Jul. 17, 2012)

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.
11/881,952 07/30/2007 Paul N. Stoving 13682.117082 3839
59081 7590 07/17/2012
KING & SPALDING, LLP
1100 LOUISIANA ST., STE. 4000
ATTN.: IP Docketing
HOUSTON, TX 77002-5213
EXAMINER
FISHMAN, MARINA
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
07/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL N. STOVING
____________

Appeal 2010-004365
Application 11/881,952
Technology Center 2800
____________

Before ST. JOHN COURTENAY III, CARL W. WHITEHEAD JR., and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004365
Application 11/881,952

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-31 (App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
Exemplary independent claim 1 follows:
1. An electrode assembly of a vacuum interrupter,
comprising:

an electrical contact;

a coil conductor; and

a conductive circular member disposed between the
electrical contact and the coil conductor, the conductive circular
member comprising

a first portion defined by a first diameter and a second
diameter, the second diameter being larger than the first
diameter and being substantially equal to an outside diameter of
the coil conductor, the outside diameter of the coil conductor
defining at least a portion of an outer periphery of the electrode
assembly, and

a second portion defined by the second diameter and a
third diameter, the third diameter comprising a largest diameter
of the circular member, the third diameter being larger than the
second diameter and being substantially equal to an outside
diameter of the electrical contact,

wherein a cross-section of the second portion has a
thickness that is greater than a thickness of a cross-section of
the first portion.

Appeal 2010-004365
Application 11/881,952

3
The Examiner rejected claims 1, 3-19, 22-25, and 27-31 under
35 U.S.C. § 102(b) as being anticipated by Watanabe (U.S. 6,376,791) (Ans.
4-7).
ISSUE
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that Watanabe discloses an
electrode assembly comprising a “coil conductor defining at least a portion
of an outer periphery of the electrode assembly,” as recited in independent
claim 1?
2. Did the Examiner err in finding that Watanabe discloses an
electrode assembly comprising a “content backing comprising a portion that
extends in an axial direction outside the diameter of the coil conductor such
that the portion of the contact backing surrounds at least a longitudinal
portion of the coil conductor . . . the portion of the contact backing defining
at least a part of an outer periphery of the electrode assembly,” as recited in
independent claim 8 and as similarly recited in independent claim 14?

ANALYSIS
In finding that Watanabe anticipates claim 1, the Examiner contends
that the coil conductor 7 of Watanabe’s electrode defines “at least a portion
of an outside periphery of the electrode assembly” (Ans. 4). However,
Appellant argues that “the coil 7 is located in an interior region of the
electrode and, thus, does not define at least a portion of an outer periphery of
the electrode” (App. Br. 17 (emphasis omitted)). We find Appellant’s
argument to be persuasive. As shown by Fig. 6 of Watanabe, the coil 7 is
Appeal 2010-004365
Application 11/881,952

4
depicted in the central, interior portion of the electrode and therefore, does
not appear to define a portion of an outer periphery of the electrode as the
Examiner contends. Accordingly, we find that the Examiner erred in
rejecting claim 1 as well as claims 2-7 dependent therefrom as anticipated by
Watanabe.
In finding that Watanabe anticipates independent claims 8 and 14, the
Examiner contends that the cylindrical portion 8 of Watanabe’s electrode
forms a portion of a contact backing that “extends in an axial direction
outside the diameter of the coil [4,7], such that a portion of the backing
surrounds a longitudinal portion of the coil conductor … the portion of the
contact backing defining at least a part of an outer periphery of the electrode
assembly” (Ans. 5). Appellant argues that Watanabe’s “support cylinder 8 is
disposed in an interior region of the electrode and does not define any
portion of an outer periphery of the electrode” (App. Br. 15). We find
Appellant’s argument to be persuasive. As shown by Fig. 6 of Watanabe,
the cylinder 8 is depicted in the central, interior portion of the electrode and
therefore, does not appear to define a portion of an outer periphery of the
electrode as the Examiner contends. Accordingly, we find that the Examiner
erred in rejecting independent claims 8 and 14 as well as claims 9-13 and
15-31 dependent therefrom as anticipated by Watanabe.

DECISION
We reverse the Examiner’s anticipation rejection of claims 1-31.

REVERSED

Vsh