Thorsten Schrank et al.

Patent Trials and Appeals Board

Oct 18, 2019

15230628 - (D) (P.T.A.B. Oct. 18, 2019)

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.
15/230,628 08/08/2016 THORSTEN SCHRANK FDST-P130590 8686
24131 7590 10/18/2019
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
BOLTON, WILLIAM A
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THORSTEN SCHRANK, MICHAEL KURRAT, and
ERNST-DIETER WILKENING
____________________

Appeal 2018-007877
Application 15/230,628
Technology Center 2800
____________________

Before JOSEPH L. DIXON, KEVIN F. TURNER, and
JOHN A. EVANS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 15/230,628
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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a switching system and circuit breaker
having a quenching chamber with a porous quenching material therein.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A switching system, comprising

a first contact;

a second contact moveable in relation to said first contact
in an opening direction;

a quenching chamber having a quenching element formed
of a porous material; and

a drive element for driving an arc into said quenching
chamber such that the arc expands in said quenching element.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pitha US 3,698,920 Oct. 17, 1972
Yamagata et al. US 4,575,598 Mar. 11, 1986
Lehmann et al. US 5,717,183 Feb. 10, 1998
Herbst US 7,198,209 B2 Apr. 3, 2007
Kralik US 7,417,520 B2 Aug. 26, 2008
Kralik et al. US 2013/0292359 A1 Nov. 7, 2013

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies that Ellenberger & Poensgen GmbH is
the real party in interest. (App. Br. 1).
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REJECTIONS
The Examiner made the following rejections:
Claims 1, 3, 4, 6–9, and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kralik in view of Yamagata.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kralik and Yamagata in view of Herbst.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kralik and Yamagata in view of Lehmann.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kralik and Yamagata in view of Pitha.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kralik and Yamagata in view of Kralik et al.

ANALYSIS
With respect to independent claims 1 and 12, Appellant argues the
claims together. (App. Br. 3). We select independent claim 1 as the
representative claim for the group and will address Appellant’s arguments
thereto. See 37 CFR 41.37 (c)(1)(iv) (2017).
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is
established when the party with the burden of proof points to evidence that is
sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See
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Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In
particular, regarding the Patent Examiner’s burden of production:
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must “notify the applicant,” “stating the reasons for
such rejection,” “together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application.” 35 U.S.C. § 132.

In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
Here, the Examiner set forth a prima facie case of obviousness setting
forth the factual basis and a motivation for the combination based upon the
Kralik and Yamagata references in the rejection of the “switch” of
independent claim 1. (Final Act. 2–3; Ans. 2–6).
Appellant notes how the Examiner applied the prior art in the
rejection and Appellant contends that in the Yamagata reference the arc is
not driven into the porous material. (App. Br. 4–5). Appellant further
contends that the porous material element taught in Yamagata fulfills
another function, and it is not a simple substitution. (App. Br. 6). Appellant
further argues that the Yamagata reference “teaches to avoid injecting the
arc into the porous material but rather to place the porous material at a
position to advantageously absorb irradiated light energy”, and the
Yamagata reference teaches away from driving the current into the
quenching chamber. (App. Br. 6–7, emphasis omitted). Appellant generally
contends that the Examiner’s combination is based upon hindsight
reconstruction because the evidence adduced by the Examiner is insufficient.
(App. Br. 7–9).
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The Examiner specifically responds to each of Appellant’s general
contentions. (Ans. 2–6).
First, the Examiner identifies the rejection is based upon the
combination and has detailed what elements are relied upon by each of the
prior art references and that the porous materials are “well known materials
exhibiting excellent arc and heat resistances, and therefore logically would
be resistant to evaporation or deterioration by the arc.” (Ans. 2–3). We
agree with the Examiner’s line of reasoning and find that Appellant did not
file a Reply Brief to further respond to the Examiner’s clarifications.
Therefore, Appellant’s argument does not show error in the Examiner’s
factual findings or conclusion of obviousness.
Second, the Examiner maintains that the Yamagata reference “teaches
that the arc voltage rises as the distance between the contacts increases [col.
2, lines 12-16] which is an inherent characteristic of arc voltages increasing,
so that arc currents approach the current zero point.” (Ans. 3). The
Examiner concludes that it is reasonable to expect that, contrary to driving
down the arm voltage, the circuit breaker would exhibit the behavior noted
above, prior to being absorbed. (Ans. 3). We agree with the Examiner’s
line of reasoning and find that Appellant did not file a Reply Brief to further
respond to the Examiner’s clarifications. Therefore, Appellant’s argument
does not show error in the Examiner’s factual findings or conclusion of
obviousness.
Third, the Examiner notes that with regards to the “simple
substitution” that Yamagata's porous material is a reasonable teaching to
incorporate the feature in the quenching chamber of Kralik, and that
Appellant provides no technical reasoning to confirm such allegations.
(Ans. 3–4). We agree with the Examiner’s line of reasoning and find that
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Appellant did not file a Reply Brief to further respond to the Examiner’s
clarifications or to supply additional technical reasoning to support their
allegation. Therefore, Appellant’s argument does not show error in the
Examiner’s factual findings or conclusion of obviousness.
Additionally, the Examiner maintains that if the porous material
element is known to absorb the energies of light and heat, then it is only
logical that its presence in an arcing chamber when an arc is generated
between the contacts on separation will produce a certain amount of light,
heat and ionized gas within the arc chamber. (Ans. 4). Furthermore, the
Examiner finds that Yamagata reference clearly discloses such “a porous
material that absorbs the light and heat energy, therefore lowering the
temperature of the gas space and lowering the pressure of the ionized gas,
thus reducing deterioration of the insulation of the circuit breaker [col. 4,
lines 15-25], desired by Kralik.” (Ans. 4–5).
Forth, the Examiner disagrees with Appellant’s “teaches away”
argument because “Yamagata's structure does inherently disclose injecting
(absorbing) an arc (light and heat) into the porous material, and therefore
logically would not damage (or evaporate) the porous material, for the
reasons explained above.” (Ans. 5). Additionally, we note that the Examiner
relied upon the Kralik reference for teaching the quenching chamber having
a quenching element [formed of a porous material;] and a drive element for
driving an arc into said quenching chamber [such that the arc expands in said
quenching element]. (Final Act. 3).
Appellant has not established that the Yamagata reference teaches
away from the claimed invention and have not demonstrated that “a person
of ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
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divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed Cir. 1994). We agree with the Examiner that one of
ordinary skill in the art would have found the disputed limitations obvious in
light of Kralik and Yamagata’s combined teachings. See Medichem, S.A. v.
Rolabo, S.L.¸ 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“Where the prior art
contains ‘apparently conflicting’ teachings … each reference must be
considered ‘for its power to suggest solutions to an artisan of ordinary skill .
. . consider[ing] the degree to which one reference might accurately discredit
another.’”) citing In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
We further agree with the Examiner because nonobviousness cannot
be established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see In re Keller, 642 F.2d
413, 426 (CCPA 1981) ("one cannot show nonobviousness by attacking
references individually where, as here, the rejections are based on
combinations of references" (citations omitted)). Additionally, "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 Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Furthermore, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Moreover, Appellant has not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
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considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Finally, in response to Appellant’s hindsight argument, the Examiner
provides a more detailed response regarding the combination of the
teachings. (Ans. 5–6). We additionally note that independent claim 1
merely recites four elements in the “switching system” which the Examiner
found to be taught by the Kralik reference. (Ans. 5). The proffered
distinction is in the difference in the quenching element, in the quenching
chamber, and how the unclaimed operation and material perform an
operation with an arc; but the claim does not sufficiently detail these
unclaimed features in the claimed “switch.” Consequently, we agree with
the Examiner that it would have been obvious to one of ordinary skill in the
art at the time of the invention to have provided a simple substitution of one
material for the other material in the quenching chamber. Additionally, we
note that all materials may perform differently under different operating
conditions based upon voltage, current, and resistance of the materials which
would have been readily apparent to those skilled in the art. Because none
of the details thereof regarding the quenching element are recited in the
language of independent claim 1, we find Appellant’s argument
unpersuasive.
Additionally, Appellant did not file a Reply Brief to further respond to
the Examiner’s clarifications and further details to the combination, and
Appellant did not file any additional evidence to support the arguments
regarding teaching away and hindsight. As a result, Appellant’s arguments
do not show error in the Examiner’s factual findings or conclusion of
obviousness of representative independent claim 1.
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Because Appellant did not set forth separate arguments for
patentability of independent claim 12 and dependent claims 2–11, we group
these claims as falling with representative independent claim 1. 37 CFR
41.37 (c)(1)(iv).

CONCLUSION
The Examiner did not err in rejecting claims 1–12 based upon
obviousness.

DECISION
For the above reasons, we sustain the Examiner’s obviousness
rejections of claims 1–12).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 4, 6–9,
12
103 Kralik, Yamagata 1, 3, 4, 6–
9, 12

2 103 Kralik,
Yamagata,
Herbst
2
5 103 Kralik,
Yamagata,
Lehmann
5
10 103 Kralik,
Yamagata, Pitha
10
11 103 Kralik,
Yamagata, Kralik
et al.
11
Overall
outcome
1–12

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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).

AFFIRMED