Ex Parte Urmson

Patent Trial and Appeal Board

Sep 25, 2012

12270190 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL G. URMSON
____________________

Appeal 2011-006786
Application 12/270,190
Technology Center 2800
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and
THOMAS S. HAHN, Administrative Patent Judges

HOFF, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-006786
Application 12/270,190

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellant’s invention is a switchgear panel and method of
manufacturing. A base plate has a main opening and a plurality of auxiliary
openings. A main cover plate and selected auxiliary cover plates are
mounted to the base plate so as to be disposed over the main opening and
plurality of auxiliary openings respectively (Spec. 2).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method of making a panel for a switchgear cabinet, the
method comprising:

providing a base plate with opposing first and second
ends and comprising a planar metal body, the body having a
main opening and a plurality of auxiliary openings;

providing a plurality of main cover plates, at least one of
the main cover plates being of a first main cover type and at
least another one of the main cover plates being of a different
second main cover type;

providing a plurality of auxiliary cover plates, at least
one of the auxiliary cover plates being of a first auxiliary cover
type and at least another one of the auxiliary cover plates being
of a different second auxiliary cover type;

providing a hinge;

providing a plurality of electrical devices;

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Application 12/270,190

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mounting the hinge to the base plate at the first end;

selecting one of the main cover plates;

selecting one of the auxiliary cover plates for each of the
auxiliary openings;

mounting the selected main cover plate to the base plate
so as to be disposed over the main opening;

mounting the selected auxiliary cover plates to the base
plate so as to be disposed over the auxiliary openings,
respectively; and

mounting one or more of the electrical devices to at least
one of the selected main cover plate and the selected auxiliary
cover plates.

REFERENCES and REJECTIONS
The Examiner rejected claims 1-9 and 12-17 under 35 U.S.C. § 103(a)
based upon the teachings of Deschamps (US 5,822,180, Oct. 13, 1998).
The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a)
based upon the teachings of Deschamps and Paape (US 3,495,135, Feb. 10,
1970).
The Examiner rejected claims 18 and 19 under 35 U.S.C. § 103(a)
based upon the teachings of Bryon (US 7,140,702 B2, Nov. 28, 2006) and
Deschamps.
The Examiner rejected claim 20 under 35 U.S.C. § 103(a) based upon
the teachings of Bryon, Deschamps, and Yee (US Patent App. Pub. No.:
2003/0019984 A1, Jan. 30, 2003).

Appeal 2011-006786
Application 12/270,190

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ISSUES
Appellant argues, inter alia, that the Examiner erred in rejecting
claims 1-9 and 12-17 as being unpatentable over Deschamps, and claims 10-
11 as being unpatentable over Deschamps in view of Paape. Appellant
asserts that Deschamps teaches a panel for a switchgear cabinet in which the
main and auxiliary openings are not present in the base plate when the main
and auxiliary cover plates are mounted to the base plate (App. Br. 5-6).
With respect to claims 18 and 19, Appellant argues that Byron fails to
teach an electrical device mounted to a door, and that Deschamps fails to
teach a base plate comprising a planar metal body (App. Br. 10).
With respect to claim 20, Appellant argues that Yee does not teach a
main cover plate having a height less than the height of the main opening,
and that Yee does not teach an electrical device mounted to the base plate
(App. Br. 11-12).
Appellant’s arguments present us with the following issues:
1. Does Appellant’s Claim 1 logically or grammatically require that
the main opening and the auxiliary openings be present when the selected
main cover plate and the selected auxiliary cover plates are mounted to the
base plate?
2. Does Byron teach an electrical device mounted to door 308?
3. Does the combination of Byron and Deschamps teach or fairly
suggest a base plate comprising a planar metal body?
4. Does the combination of Byron, Deschamps, and Yee teach or
fairly suggest a main cover plate having a height less than the height of the
main opening?
5. Does Yee teach an electrical device mounted to the base plate?
Appeal 2011-006786
Application 12/270,190

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PRINCIPLES OF LAW
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results. KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)).
ANALYSIS
CLAIMS 1-17
We agree with Appellant that claim 1 logically and grammatically
requires that the main opening and auxiliary openings are present when the
selected main cover plate and the selected auxiliary cover plates are mounted
to the base plate (App. Br. 6). Claim 1 recites, as the first written clause,
“providing a base plate with opposing first and second ends and comprising
a planar metal body, the body having a main opening and a plurality of
auxiliary openings” (emphasis added). From its very introduction in the
claim then, Appellant’s base plate includes main and auxiliary openings. The
Examiner erred in finding that the claim language “so as to be disposed over
the main [auxiliary] opening” means that the main and auxiliary openings
need not be present before the main and auxiliary cover plates are mounted.
We therefore find that the Examiner erred in concluding that claims
1-17 are unpatentable over Deschamps. We will not sustain the § 103
rejection of claims 1-17.
CLAIM 18
Appellant argues that the Examiner erred in rejecting claims 18 and
19 because (a) Byron does not teach electrical devices mounted to door 308,
and that (b) neither Byron nor Deschamps teach a base plate comprising a
planar metal body (App. Br. 10).
Appeal 2011-006786
Application 12/270,190

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We are not persuaded by Appellant’s arguments. We agree with the
Examiner’s finding that Byron teaches instrument mounting panel 1302 that
forms part of Byron’s door 308 (Ans. 26; Byron col. 8, l. 65 – col. 9, l.5).
“Panel 1302 is a modular removable panel on which the instruments are
wired and mounted” (id.). We further agree with the Examiner’s finding that
Deschamps teaches an embodiment in which an opaque sheet “which is
solidly attached to the entire inner face of the panel 30 so as to make the
plate of the panel opaque” (col. 4, ll. 38-42). We agree with the Examiner’s
finding that such an opaque plate may be considered to meet the claimed
“planar metal body” (Ans. 20).
We conclude that the Examiner did not err in rejecting claims 18 and
19 as unpatentable over Byron in view of Deschamps. We will sustain the
§ 103 rejection of claims 18 and 19.
CLAIM 20
Appellant argues that Byron does not teach an electrical device
mounted to the base plate, and that it would not have been obvious to
provide a main cover plate having a height less than the height of the main
opening (Ans. 11-12). We do not find Appellant’s arguments to be
persuasive of Examiner error.
We agree with the Examiner that omission of one of the plates 70 of
Deschamps would create the predictable result that the main cover plate does
not extend over an uncovered portion of the main opening, which would
provide room to mount an electrical device to the base plate that would at
least partially extend through the uncovered portion of the main opening (see
Ans. 22-23). See KSR, 550 U.S. at 416. We agree with the Examiner that
such an omission would allow the skilled artisan to mount a device such as
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Appeal 2011-006786
Application 12/270,190

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3. The combination of Byron and Deschamps teaches a base plate
comprising a planar metal body.
4. The combination of Byron, Deschamps, and Yee suggests a main
cover plate having a height less than the height of the main opening.
5. Yee teaches an electrical device mounted to the base plate.

DECISION
The Examiner’s decision rejecting claims 1-17 is reversed. The
Examiner’s decision rejecting claims 18-20 is affirmed.
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)(2010).

AFFIRMED-IN-PART

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