Yaskawa America, Inc.

Patent Trials and Appeals Board

Oct 28, 2021

2021000807 (P.T.A.B. Oct. 28, 2021)

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.
16/035,088 07/13/2018 Jeff MIDDAY YAS00598P00231US 5577
32116 7590 10/28/2021
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
EXAMINER
WILSON, ADRIAN S
ART UNIT PAPER NUMBER
2841
NOTIFICATION DATE DELIVERY MODE
10/28/2021 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF MIDDAY and CHRISTIAN M. JOHNSON
Appeal 2021-000807
Application 16/035,088
Technology Center 2800
Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction.
35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Yaskawa America, Inc. Appeal Br. 1.
Appeal 2021-000807
Application 16/035,088
2
CLAIMED SUBJECT MATTER
The claims are directed to an electrical enclosure sealed against
environmental contaminants such as dust and liquids. See Appeal Br. 13,
Claim 1.
The enclosure has “a thick-film elastomeric coating on an outer
surface of the cabinet . . . to provide a monolithic bridging layer over holes,
joints, gaps, seams and/or fasteners to prevent environmental contamination
from penetrating the cabinet.” Appeal Br. 13, Claim 1.
Sole independent claim 1 is illustrative of the claimed subject matter,
and is reproduced below:
1. An electrical enclosure used in industrial applications and
sealed against environmental contamination comprising:
an enclosure cabinet having an interior space, the interior
space being accessible through an opening, and a door or cover
selectively closing the opening, the cabinet being manufactured
of numerous parts and having holes, joints, gaps, seams and/or
fasteners; and
electrical control devices mounted in the cabinet and
accessible through the opening incident to the door or cover
being in an open position; and
a thick-film elastomeric coating on an outer surface of the
cabinet, the coating having a thickness of at least 0.6mm, to
provide a monolithic bridging layer over holes, joints, gaps,
seams and/or fasteners to prevent environmental contamination
from penetrating the cabinet.

Appeal Br. 13 (Claims Appendix).

Appeal 2021-000807
Application 16/035,088
3
REJECTIONS
I. Claims 9–11 are rejected under 35 U.S.C. § 112(b) as
indefinite;
II. Claims 1, 2, and 6–12 are rejected under 35 U.S.C. § 103 as
unpatentable over Saito2;
III. Claims 3 and 5 are rejected under 35 U.S.C. § 103 as
unpatentable over Saito and Bartol3;
IV. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
Saito and Komatsu4;
V. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable
over Saito and McIntosh.5
OPINION
Rejection I
Claims 9–11 depend from claim 1 and require that “the electrical
enclosure conforms with the Underwriters Laboratory rating of Type” 3, 6,
and 13, respectively.
The Examiner rejects claims 9–11 as indefinite because the claims
“will possibly have varying scope as time passes [as] these various standards
are changed and/or amended.” Final Act. 2. The Examiner also finds that
“looking upon these standards it is very difficult to ascertain the scope of the
claim.” Id.

2 US 5,994,643, issued November 30, 1999.
3 US 2010/0061088 A1, published March 11, 2010.
4 US 6,822,161 B2, published November 23, 2004.
5 US 4,771,908, issued September 20, 1988.
Appeal 2021-000807
Application 16/035,088
4
Appellant argues that the claimed UL standards “were specific as of
the filing date.” Appeal Br. 2. According to Appellant, “the meaning of any
word can change over time” but “that fact does not render claims indefinite”
because “[o]ne skilled in the art will recognize the meaning of the limitation
at the time of filing the application as being definite.” Id.
The Examiner responds that the UL standards are voluminous and
there are “various alternatives that the standard imposes to meet its criteria,”
which makes it “difficult to the general public” to ascertain the claims’
scope. Ans. 4. The Examiner explains that although the UL standards are
currently available free of charge, this may not “always be the case” and that
“someone should not have to pay money to determine appellants’ claim[]
scope.” Id. The Examiner provides details of the various claimed UL
standards, noting that they are subsets of the UL50 standard, “which is 64
pages long.” Id. According to the Examiner, “[i]t would be impossible for a
person having ordinary skill in the art of electrical enclosures to ascertain a
definite scope of these claims” which would “degrade the quality of any
patent that should issue as well as create confusion in the marketplace.” Id.
at 5.
Appellant responds that “[t]he volume of the particular standard, and
the ease of access to the standards, are irrelevant.” Reply Br. 1.
We agree with Appellant and reverse the rejection of claims 9–11.
The definiteness requirement under 35 U.S.C. § 112(b) “is not a
demand for unreasonable precision.” In re Packard, 751 F.3d 1307, 1313
(Fed. Cir. 2014). “Rather, how much clarity is required necessarily invokes
some standard of reasonable precision in the use of language in the context
of the circumstances.” Id.
Appeal 2021-000807
Application 16/035,088
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With this principle in mind, we first note that the Examiner has not
established that the claimed standards have ever changed, or would even
likely change over time. Rather, the Examiner speculates that such a change
in the future is possible. Final Act. 2. Even if the UL standards do undergo
a future revision, the Examiner has not adequately addressed Appellant’s
argument that “[t]he standards were specific as of the filing date.” Appeal
Br. 2.
We additionally observe that some of the Examiner’s statements
imply that an incorrect standard was used in reaching the indefiniteness
conclusion. For example, the Examiner refers to difficulties that the
“general public” would have in accessing the claimed UL standards, rather
than considering events from the perspective of a person of ordinary skill in
the art. Ans. 4. While we appreciate that “[i]t is the claims that notify the
public of what is within the protections of the patent” (Packard, 751 F.3d at
1313), definiteness is determined from the skilled artisan’s point of view.
Id. at 1312; see also Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F.2d
124, 136 (2d Cir. 1958) (“If the claims, read in light of the specifications,
reasonably apprise those skilled in the art both of the utilization and scope of
the invention, and if the language is as precise as the subject matter permits,
the courts can demand no more.” (emphasis added)). The Examiner also
suggests that ascertaining a claim’s scope should not incur monetary
expense, but fails to cite any authority supporting that position.6 Ans. 4.
Finally, we note that claims 7 and 8 also depend from claim 1 and––
instead of reciting “Underwriters Laboratory rating[s]”––recite
“International Protection rating[s].” Appeal Br. 14. Claims 7 and 8,

6 We are not aware of any such authority.
Appeal 2021-000807
Application 16/035,088
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however, are not rejected under § 112(b). The Examiner has not explained
how the “International Protection rating” recited in these claims would be
insulated from possibly having “varying scope as time passes” as found with
respect to claims 9–11. Final Act. 2. Thus, it is unclear how claims 9–11
run afoul of § 112(b) while claims 7 and 8 do not.
In sum, because the Examiner has not established that claims 9–11 are
indefinite under 35 U.S.C. § 112(b), the rejection is not sustained.
Rejections II–V
We limit our discussion to sole independent claim 1, as it is
dispositive of all claims subject to these rejections.
The Examiner finds that Saito discloses all elements recited in claim 1
except for the requirement that the coating has a thickness of at least 0.6mm.
Final Act. 3–4. To address this difference, the Examiner finds that the
coating thickness is a result-effective variable that would have been obvious
for the skilled artisan to have optimized. Id. at 4.
The Examiner finds, inter alia, that Saito discloses the claimed “thick-
film elastomeric coating on an outer surface of the cabinet,” mapping the
“cabinet” to Saito’s element 1 and the “coating” to element 22, which are
depicted in Saito’s Figure 7 below. Final Act. 3.
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Application 16/035,088
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Saito’s Figure 7 illustrates cabinet 1 having a vertical plane 9 of
sidewall 8 with cover 7 engaged thereto via engaging pawls 18 and 19, with
sealing agent 22 in (unannotated) groove 14. Saito, 3:38–4:67.

Appellant argues, inter alia, that Saito does not disclose the claimed
“thick-film elastomeric coating on an outer surface of a cabinet . . . to
provide a monolithic bridging layer.” Appeal Br. 5–7. We agree with
Appellant and reverse these rejections.
First, we note that Saito expressly identifies vertical surface 9 as “an
inner surface” of the frame’s side wall 8. Saito 2:30–32, 3:39–40. Thus,
sealant 22 is not on “an outer surface” of Saito’s frame 1. Here, we note that
the Specification distinguishes between a cabinet’s “interior space” and its
“outer surface.” Spec. ¶¶ 9, 16. On this record, the Examiner has not
explained how the broadest reasonable interpretation of “outer surface of a
cabinet” would include Saito’s inner surface 9. This alone is sufficient to
reverse the obviousness rejections.
We are additionally persuaded, however, by Appellant’s arguments
that the Examiner has applied an unreasonably broad interpretation of the
Appeal 2021-000807
Application 16/035,088
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claim term “thick-film elastomeric coating . . . to provide a . . . layer” by
equating Saito’s sealant 22 to such a “coating.” Appeal Br. 5–7; Reply Br.
2–5. Figure 4 of the Drawings is illustrative of the claimed coating layer:

Figure 4 depicts “elastomeric coating 66 which provides a monolithic
bridging layer over the fastener 64 and a joint 68 between the panels 60 and
62.” Spec. ¶ 34.

The Specification explains that “[t]he thick-film forms a monolithic
layer similar to that of a polymer sheet.” Spec. ¶ 41 (emphasis added). On
this record, the Examiner has not explained adequately how the broadest
reasonable interpretation of a “thick-film elastomeric coating . . . to provide
a . . . layer” would include Saito’s sealing agent 22, e.g., silicone grease,
which is filled into a groove. Saito 4:58–63.
For each of these reasons, we do not sustain the obviousness
rejections.
CONCLUSION
The Examiner’s rejections are reversed.
Appeal 2021-000807
Application 16/035,088
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s) Basis Affirmed Reversed
9–11 112(b) Indefiniteness 9–11
1, 2, 6–12 103 Saito 1, 2, 6–12
3, 5 103 Saito, Bartol 3, 5
4 103 Saito, Komatsu 4
13 103 Saito, McIntosh 13
Overall
Outcome
1–13

REVERSED