Ex Parte Zhou et al

Patent Trial and Appeal Board

Sep 20, 2016

12906256 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/906,256 10/18/2010
101730 7590 09/22/2016
ECKERT SEAMANS CHERIN & MELLOTT, LLC
EATON CORPORATION
600 GRANT STREET
44THFLOOR
PITTSBURGH, PA 15219
XinZHOU
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.
10-mPCS-245(PDA) 9742
EXAMINER
ASTACIO-OQUENDO, GIOVANNI
ART UNIT PAPER NUMBER
2867
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN ZHOU, DALE L. GASS, BIRGER PAHL, and
ROBERT YANNIELLO
Appeal2015-003084
Application 12/906,256
Technology Center 2800
Before: ADRIENE LEPIANE HANLON, JULIA HEANEY, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-17 and 19-24. We have jurisdiction under 35
U.S.C. § 6(b).
1 In our Decision below we refer to the Specification dated October 18, 2010
(Spec.), the Final Office Action appealed from mailed May 9, 2014 (Final
Act.), the Appeal Brief filed October 3, 2014 (Appeal Br.), the Examiner's
Answer mailed November 19, 2014 (Ans.), and the Reply Brief filed
January 19, 2015 (Reply Br.).
2 Appellants identify the real party in interest as Eaton Corporation, the
assignee of the instant application. Appeal Br. 1.
Appeal2015-003084
Application 12/906,256
We AFFIRM.
STATEMENT OF CASE
The claims are directed to acoustic apparatus and acoustic sensor
apparatus, including a clamp, to detect faults and loose electrical
connections. Spec. 1-2. Including the clamp allows "the acoustic apparatus
or acoustic sensor apparatus to be moved around relatively easily ( eg., not
for permanent installation)." Id. at 3. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An acoustic sensor apparatus comprising:
a housing;
a clamp structured to firmly hold together said housing and
an electrical power conductor;
an acoustic sensor structured to detect acoustic noise from
said electrical power conductor and output a signal; and
a circuit structured to detect an electrical conductivity fault
from the signal,
wherein said circuit and said acoustic sensor are housed
within said housing.
Claims Appendix at Appeal Br. 11.
REJECTIONS
The Examiner made the following rejections:
A. Claim 6-8 stands rejected under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description
requirement. Final Act. 3.
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Application 12/906,256
B. Claims 1 and 13-16 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Zhou3 in view of
Bose.4 Id. at 4.
C. Claim 2 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Zhou in view of Bose and further in
view of Milkovic. 5 Id. at 6.
D. Claim 3 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Zhou in view of Bose in view of
Milkovic and further in view of Cook. 6 Id. at 7.
E. Claims 4 and 5 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Zhou in view of Bose and further
in view of Edwards. 7 Id. at 8.
F. Claims 6, 8-10, and 19 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Zhou in view of Bose
and further in view ofNero. 8 Id.
G. Claim 7 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Zhou in view of Bose in view of Nero
and further in view of Leach. 9 Id. at 13.
H. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Zhou in view of Bose and
further in view of Atherton. 10 Id. at 14.
3 Zhou et al., US 7,148,696 B2, issued December 12, 2006 (hereinafter
"Zhou").
4 Bose et al., US 7,746,055 B2, issued June 29, 2010 (hereinafter "Bose").
5 Milkovic et al., US 6,518,772 Bl, issued February 11, 2003.
6 Cook, US 4,870,353, issued September 26, 1989.
7 Edwards et al., US 7,335,033 Bl, issued February 26, 2008.
8 Regis J. Nero, Jr., US 2010/0013457 Al, published January 21, 2010
(hereinafter "Nero").
9 Leach et al., US 5,657,200, issued August 12, 1997.
10 Larry S. Atherton, US 6,657,418 B2, issued December 2, 2003.
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Application 12/906,256
l. Claim 17 stands rejected under 35U.S.C.§103(a) as being
unpatentable over Zhou in view of Bose in view of
Palmisano 11 and further in view of Pogrebinsky. 12 Id. at
15.
J. Claim 20 stands rejected under 35U.S.C.§103(a) as being
unpatentable over Zhou in view of Bose in view of Nero
and further in view of Ishii. 13 Id. at 17.
K. Claim 21 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Zhou in view of Bose in view of Nero
and further in view of Maraio. 14 Id. at 18.
L. Claim 22 stands rejected under 35U.S.C.§103(a) as being
unpatentable over Zhou in view of Bose and further in
view of Bednar. 15 Id.
M. Claim 23 stands rejected under 35U.S.C.§103(a) as being
unpatentable over Zhou in view of Bose and further in
view of Zhou '403. 16 Id. at 20.
N. Claim 24 stands rejected under 35U.S.C.§103(a) as being
unpatentable over Zhou in view of Bose in view of Bednar
and further in view of Zhou '403. Id. at 21.
Appellants seek our review of rejections A-N. Appellants separately
argue Rejection A and prior art Rejections Band L, directed to independent
claims 1 and 22. Appellants present no additional argument, separate from
what is argued for claims 1 and 22, for dependent claims 2-17, 19-21, and
11 Palmisano et al., US 2003/0017753 Al, published January 23, 2003.
12 Pogrebinsky et al., US 5,792,947, issued August 11, 1998
13 Ishii et al., US 5,389,873, issued February 14, 1995.
14 Maraio et al., US 5,426,360, issued June 20, 1995.
15 Fred H. Bednar, US 5,521,840, issued May 28, 1996 (hereinafter
"Bednar").
16 Xin Zhou, US 7,411,403 B2, issued August 12, 2008 (hereinafter "Zhou
'403").
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Application 12/906,256
23-24 (i.e., prior art Rejections C-K and M-N). Appeal Br. 9. Therefore,
to resolve the issues on appeal, we address the prior art rejections relating to
claims 1 and 22 as well as the rejections of claims 6-8 based on lack of
written description.
OPINION
Rejection A- Written Description (claims 6--8)
The Examiner rejects claims 6-8 as failing to comply with the written
description requirement. In particular, the Examiner finds that amended
claims 6-8, adding "said clamp is further structured to firmly hold directly
together said housing and said electrical power conductor," were not
described in the Specification as originally filed. Final Act. 3. The
Examiner finds that the Specification refers only to structures having an
insulator disposed between the housing and the power conductor. Id. at 3-4;
see also Ans. 2-3 ("the present application states that an insulative means
are necessary between the electrical power conductor and the housing for
each embodiment (e.g. insulative cushion, insulative sleeves, or insulative
housing).").
Appellants argue that having an insulative spacer is optional and that
Example 10 teaches an embodiment where the spacer is omitted. Appeal Br.
3--4. Appellants also argue that
"[t]he housing 306 can be, for example and without limitation, a
metallic housing or an insulative housing .... " As will be
appreciated, such an insulative housing can be used with a power
conductor in the form of a rectangular bus bar without an
insulative spacer 312, and that power conductor would not need
to have an insulative sleeve.
Id. at 4.
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Appellants' argument is supported by the record. To comply with the
written description requirement, an applicant's specification must convey
with reasonable clarity to a person of ordinary skill in the art that, as of the
filing date, the applicant was in possession of the claimed invention.
Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122
(Fed. Cir. 2008). Appearance of a claim in the specification in ipsis verbis
does not guarantee that the written description requirement is satisfied, see,
e.g., Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir.
2002), nor does a failure to meet that standard require a finding that a claim
does not comply with the written description requirement, In re Edwards,
568 F.2d 1349, 1351-52 (Fed. Cir. 1978). "[T]he purpose of the written
description requirement is to 'ensure that the scope of the right to exclude, as
set forth in the claims, does not overreach the scope of the inventor's
contribution to the field of art as described in the patent specification."'
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353-54 (Fed. Cir.
2010) (en bane) (quoting Univ. of Rochester v. G.D. Searle & Co., 358 F.3d
916, 920 (Fed. Cir. 2004)).
Here, we find that the limitation identified by the Examiner-i.e.,
"wherein said clamp is further structured to firmly hold directly together said
housing and said electrical power conductor"-possesses adequate support
in the Specification as originally filed. The Specification describes an
embodiment, depicted in Figures 6 and 7, where
no insulative cushion is employed since electrical cables usually
have insulative sleeves thereon. Otherwise, the clamp-on
structure 342, like the clamp-on structure 302, can clamp
together a housing, such as 306, the power conductor 344, and
optionally an insulative spacer, such as 312.
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Spec. 11-12 (emphasis added). Thus, in this embodiment, there is no
intervening element between the housing and the electrical cable. In
addition, the Specification teaches that the housing itself may also be made
of an insulating material. Spec. 10. That the electrical cable may possess an
insulating sleeve or that the housing may be insulating, does not alter the
direct connection between the housing and the electrical power conductor.
We therefore do not sustain the Examiner's rejection of claims 6-8 based on
lack of written description.
Rejection B - Obviousness (claims 1 and 13-16)
The Examiner rejects claims 1 and 13-16 as unpatentable over Zhou
in view of Bose. Final Act. 4. The Examiner finds that Zhou generally
teaches all claim limitations but acknowledges that Zhou fails to disclose a
clamp structured to firmly hold together the housing and the electrical power
conductor. Id. 4-5. Though, Examiner finds "that Zhou suggests the
clamping functionality because the acoustic slug (14) in Fig. 1 of Zhou can
provide mechanical connections between a power conductor and the system
(see Zhou, column 5, lines 36 - 40)." Ans. 6. Bose, according to the
Examiner, supplies the requisite clamp, and the Examiner concludes that
including the clamp in the acoustic sensor of Zhou would have been obvious
to one skilled in the art so that the sensor could be "easily and repeatedly
installed on electrical conductors. (Bose, col. 6, lines 9-11 )." Id.
Appellants urge that Zhou teaches that "it is essential that the
connection configuration shown in FIG. 1 wherein the circuit breaker 2 is
secured between the terminal end of conductor 8 and the line terminal 13
such that separable contacts 16 electrically connected in series between the
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line terminal 13 and the acoustic lug 14." Appeal Br. 6. According to
Appellants, Bose "describes a current sensor 30 that includes a housing 32
having a clamp 52 rotatably attached thereto such that a conductor 14 is able
to be received in a circular space created between the clamp 52 and the
housing 32." Id. Therefore, the combination of Zhou with Bose would
render Zhou unsatisfactory for its intended purpose because
if modified as suggested by the Examiner, the housing of the
circuit breaker 2 would be coupled to the outside of the conductor
8 as taught by Bose and held in place by the clamp of Bose. In
that configuration, the circuit breaker 2 would no longer be
operative to interrupt the circuit in the event that a fault condition
is detected since that would eliminate the electrical connection
of the separable contacts 16 and the lug 14 to the lug 13.
Id. at 7. Thus, Appellants argue, the "modification would, however, prevent
Zhou from performing its intended function/purpose of, upon detection,
interrupting the circuit by opening the separable contact 16." Reply Br. 3.
Appellants also contend that no reason exists for the person of ordinary skill
to make the proposed modification because of the circuit interruption "one
of ordinary skill in the art would have recognized the importance of the
setup and configuration shown in FIG. 1 for the circuit interruption
functionality of the device of Zhou et al. and would have no reason to
disrupt it." Appeal Br. 8 and Reply Br. 3.
On this record, Appellants arguments are not persuasive of reversible
error. The Examiner finds (Ans. 6), as do we, that Zhou teaches "[t]he
acoustic sensor 4 is suitably coupled to the electrical conductor 8" and
suggests a connection exists at lug 14 that connects the power conductor to
the system housing. Zhou, col. 5, 11. 36--40. In the rejection on appeal, the
Examiner merely replaces that connection with the clamp disclosed in Bose.
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Appellants do not address the Examiner's findings regarding the
replacement of the connection existing at lug 14. In doing so, Appellants
have failed to show that a clamp located at this interface would undermine
the setup configuration as shown in Figure 1 of Zhou or would render Zhou
unsatisfactory for its intended purpose, such that the combination of Zhou
and Bose would not render the instant claims obvious. We therefore sustain
the Examiner's rejection.
Rejection L-Obviousness (claim 22)
The Examiner rejects claim 22 as unpatentable over Zhou in view of
Bose and further in view of Bednar. Final Act. 18. In addition to the
requirements of claim 1, claim 22 additionally includes "(b) an acoustic
transmitter structured to generate acoustic noise to mimic acoustic noise
induced by an electrical conductivity fault." Claims Appendix at Appeal Br.
14. The Examiner acknowledges that neither Zhou nor Bose teach an
acoustic transmitter, but the Examiner finds that "Bednar teaches (b) an
acoustic transmitter (column 4, lines 18 - 19) structured to generate acoustic
noise to mimic acoustic noise (column 4, lines 19 - 20) induced by an
electrical conductivity fault (column 4, lines 15 - 18)." Final Act. 20. The
Examiner concludes it would have been obvious to include the acoustic
transmitter of Bednar in the Zhou/Bose combination
because it is possible to detect loose metallic debris moving
through a conduit of a system by sensing the sound the debris
makes when impacting against the conduit walls (Bednar,
column 1, lines 15 - 18), and a system for detecting loose debris
can be provided by operatively arranging an acoustic sensor with
another elements (Bednar, column 1, lines 32 - 33).
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Id. The Examiner also finds that "it was known in the art that a microphone
is an acoustic-to-electric transducer or sensor that converts sound in air into
an electrical signal .... Therefore, the acoustic pickup in Bednar can be
structured to generate acoustic noise to mimic acoustic noise induced by an
electrical conductivity fault." Ans. 7-8.
Appellants explain that Bednar teaches an "an acoustic pickup 42 is
arranged to sense vibration of a conduit 32 for liquid coolant, producing an
electrical signal in response to vibration of the conduit sidewall 34." Appeal
Br. 9. Appellants urge that the "Examiner's analysis is not correct and that
the cited references do not teach or suggest an acoustic transmitter that
mimics acoustic noise of an electrical conductivity fault within the context
of Claim 22." Id.
Appellant has not directed us to any error in the Examiner's findings
and conclusions. Appellant offers little more than a description of Bednar, a
summary of the claim language and a conclusory statement that the
Examiner is incorrect. See Appeal Br. 9. Moreover, Appellant presents no
distinction between the acoustic transmitter of claim 22 as compared to the
acoustic pickup of Bednar. Accordingly, Appellant's argument is not
persuasive of reversible error by the Examiner and we sustain the rejection
of claim 22, and claims depending therefrom.
CONCLUSION
The Examiner erred in rejecting claims 6-8 under 35 U.S.C. § 112 first
paragraph, as failing to comply with the written description requirement.
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The Examiner did not err in rejecting claim 1, and claims depending
therefrom, under 35 U.S.C. § 103(a), as being unpatentable over Zhou in
view of Bose, among other references.
The Examiner did not err in rejecting claim 22, and claims depending
therefrom, under 35 U.S.C. § 103(a), as being unpatentable over Zhou in
view of Bose and in further view of Bednar, among other references.
DECISION
For the above reasons, the Examiner's decision rejecting claims 1-17
and 19-24 as unpatentable, over the identified prior art, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED
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