EATON CORPORATION

Patent Trials and Appeals Board

Oct 29, 2020

2019006922 (P.T.A.B. Oct. 29, 2020)

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.
14/957,836 12/03/2015 ASHWIN MICHAELRAJ 15-CWD-1062 4322
101730 7590 10/29/2020
ECKERT SEAMANS CHERIN & MELLOTT, LLC
EATON CORPORATION
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
HOUSTON, ADAM D
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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 ASHWIN MICHAELRAJ

Appeal 2019-006922
Application 14/957,836
Technology Center 2800
____________

Before MONTÉ T. SQUIRE, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–22. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse and issue a new ground of rejection.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Eaton
Intelligent Power Limited. Appeal Brief dated May 15, 2019 (“Appeal Br.”)
4.
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Application 14/957,836

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CLAIMED SUBJECT MATTER

The present application generally relates to an electrical receptacle
that includes both a wireless power transmitter and a conventional socket
configured to provide wired electrical power. Specification dated Dec. 3,
2015 (“Spec.”) 1:28–30. A receptacle of this type is shown below in Figure
4 of the Drawings.

Figure 4, above, “is an isometric view of a combination receptacle in
accordance with an example embodiment of the disclosed concept.” Id. at
5:16–17. The Specification teaches that “enclosure 50, 51 houses the
wireless power transmitter 12 and the socket 14 so as to create a single
integrated device including both the wireless power transmitter 12 and the
socket 14.” Id. at 5:19–21.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain text bolded for emphasis:

1. A combination receptacle, comprising:
a wireless power transmitter electrically coupled to a power
source, wherein the wireless power transmitter is structured to
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Application 14/957,836

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receive power from the power source and to wirelessly transmit
said power;
a socket electrically coupled to the power source, wherein the
socket is structured to receive power from the power source and
to physically and electrically connect to a power cord to provide
the power to a wired device electrically coupled to the power
cord; and
an enclosure structured to house the wireless power
transmitter and the socket.
Appeal Br. 12 (Claims App.) (emphasis added; reformatted for clarity).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Kesler et al. (“Kesler”) US 8,912,687 B2 Dec. 16, 2014
Wolfe et al. (“Wolfe”) US 2013/0309883 A1 Nov. 21, 2013
Rivera US 2014/0335803 Al Nov. 13, 2014
Cronin US 2016/0057610 Al Feb. 25, 2016

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 4, 5, 7–9, 17, 18, and 20 are rejected under 35
U.S.C. § 102(a)(1) as being anticipated by Kesler. Final
Office Action dated Nov. 23, 2018 (“Final Act.”) 2–4.
2. Claims 2, 3, 6, 10, 11, 15, 16, 19, and 21 are rejected under
35 U.S.C. § 103 as being unpatentable over Kesler in view of
Wolfe. Id. at 5–7.
3. Claim 13 is rejected under 35 U.S.C. § 103 as being
unpatentable over Kesler in view of Wolfe and further in view
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of Rivera. Id. at 7–8.
4. Claims 12 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kesler in view of Wolfe, and further in
view of Cronin. Id. at 8–9.
5. Claim 22 is rejected under 35 U.S.C. § 103 as being
unpatentable over Kesler. Id. at 9.
DISCUSSION
Rejection 1. The Examiner rejects claims 1, 4, 5, 7–9, 17, 18, and 20
as anticipated by Kesler. Id. at 2–4. In support of the rejection, the
Examiner cites to Kesler’s Figure 78, reproduced below.

Figure 78 is described as an exemplary power source for under cabinet
lighting. Kesler 126:45–46. Kesler teaches that “[t]he source resonator
7804 may be integrated into a cover of an electrical outlet 7802 that may
cover and fit around an existing outlet 7806.” Id. at 126:46–48. Kesler
further teaches that “[t]he power and control circuitry 7808 of the source
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may be integrated into the cover.” Id. at 126:48–49. The Examiner finds
that enclosure 7802 satisfies the “enclosure” limitation as it is “structured to
house the wireless power transmitter and the socket.” Final Act. 3.
Appellant argues that the rejection is in error because Kesler fails to
disclose “an enclosure structured to house the wireless power transmitter and
the socket,” as required by claim 1. Appeal Br. 6–10. Appellant argues that
cover 7802 of Kesler is similar to wall plate 56 of Figure 5 of the Drawings.
Id. at 7. Appellant directs us to Figures 4 (reproduced above) and 5 of the
Drawings as support for the argument that enclosure 50, 51 and wall plate 56
are not equivalent elements. Id. In view of such teachings, Appellant
disputes the Examiner’s construction of the term “enclosure” to mean “an
area surrounded by a fence or other structure in order to be kept from
separate areas” and that of “housing” to mean “anything that covers or
protects.” Id.
In the Examiner’s Answer, the Examiner contends as follows:
Examiner’s position is that enclosing a device does not require a
complete encapsulation of that device. To enclose something
there needs to be a complete boundary, but that boundary does
not need to cover all dimensions. For example, a fence must be
continuous to enclose a piece of land, but a roof and/or a floor is
not needed. 7802 forms a complete boundary, enclosing the
power transmitter and the socket.

Examiner’s Answer (“Ans.”) 5.
Thus, construction of the term “enclosure” is relevant to resolution of
the present appeal. The Specification consistently uses the language
“enclosure 50, 51” and further states that “[t]he enclosure 50, 51 includes a
rear enclosure 50 and a front enclosure 51.” Spec. 5:21–22. This is
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consistent with Figure 4, which depicts an enclosure that surrounds the
wireless power transmitter and the socket on multiple sides. In view of the
foregoing, we find that cover 7802 of Kesler does not satisfy the “enclosure
structured to house the wireless power transmitter and the socket” limitation
of claim 1. Accordingly, we reverse the rejection of claim 1. As all other
claims subject to the first rejection also include the same limitation either
directly or by dependency, and the Examiner relies on Kesler as teaching
such limitation, we similarly reverse the rejection of all claims at issue.

Rejections 2–5. The Examiner rejects claims 2, 3, 6, 10–16, 19, 21,
and 22 as obvious over Kesler in view of certain additional references. Final
Act. 5–9. Each of these claims includes the “enclosure” limitation either
directly or by dependency. Appeal Br. 12–15 (Claims App.). The Examiner
relies on the same disclosure and reasoning discussed above as teaching this
limitation. Final Act. 5–9. Accordingly, for the reasons stated above, we
reverse the rejections of these claims.

New Ground of Rejection
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
issue a new ground of rejection as to claim 1 under 35 U.S.C. § 103 in view
of Kesler.
Figure 78 of Kesler depicts cover 7802 and existing outlet 7806 that,
considered collectively, are similar to front enclosure 51 of the Specification
and Drawings. Compare Kesler, Fig. 78 with Application, Figure 4. Kesler
further teaches that “[i]n embodiments the source resonator may be designed
to replace a complete outlet, where the outlet box or outlet junction box may
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be used for the power and control circuitry of the source.” Kesler
126:62–65. Outlet boxes are well known in the art. See, e.g., Wolfe ¶ 62
(referring to a “typical wall outlet electrical box”). The outlet box of Kesler
is similar to rear enclosure 50 of the Specification. Cover 7802 and outlet
7806 of Kesler considered in combination with the outlet box of Kesler form
“an enclosure structured to house the wireless power transmitter and the
socket.”
A person of ordinary skill in the art would have had reason to make
such combination in view of Kesler’s Figures 77 and 78 and its teaching that
“the outlet box or outlet junction box may be used for the power and control
circuitry 65 of the source.” Kesler 126:63–65. Further, “the use of a one
piece construction instead of the structure disclosed in [the prior art] would
be merely a matter of obvious engineering choice.” In re Larson, 340 F.2d
965, 968 (CCPA 1965).
Accordingly, we determine claim 1 to be obvious over Kesler. We
leave it to the Examiner to consider, in the first instance, whether such
reasoning may be applicable to other claims at issue.

CONCLUSION

The Examiner’s rejections are reversed. We additionally issue a new
ground of rejection based on 35 U.S.C. § 103 as to claim 1.

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In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
1, 4, 5,
7–9, 17,
18, 20
102(a)(1) Kesler 1, 4, 5,
7–9, 17,
18, 20

2, 3, 6,
10, 11,
15, 16,
19, 21
103 Kesler, Wolfe 2, 3, 6,
10, 11,
15, 16,
19, 21

13 103 Kesler, Wolfe,
Rivera
13
12, 14 103 Kesler, Wolfe,
Cronin
12, 14
22 103 Kesler 22
1 103 Kesler 1
Overall
Outcome
1–22 1

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

REVERSED; 37 C.F.R. § 41.50