EATON CORPORATION

Patent Trials and Appeals Board

Jun 23, 2020

2019004648 (P.T.A.B. Jun. 23, 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.
14/886,173 10/19/2015 TODD MATTHEW LATHROP 14-MCB-1249 6204
101730 7590 06/23/2020
ECKERT SEAMANS CHERIN & MELLOTT, LLC
EATON CORPORATION
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
CRUM, JACOB R
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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 TODD MATTHEW LATHROP, JEFFREY WAYNE
LOCKHART, ANDREW ROBERT ZAHN, LANSON DWIGHT
RELYEA, and JAY NICHOLSON HAUGEN
____________

Appeal 2019-004648
Application 14/886,173
Technology Center 2800
___________

Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and
JULIA HEANEY, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s final decision rejecting claims 1–9 and 12–15. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Eaton Corporation
(Appeal Br. 1).
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Application 14/886,173

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REJECTION
Claims 1–8 and 12–15 are rejected under 35 U.S.C. § 103 as being
anticipated by Morris ’600 (US 4,686,600; published Aug. 11, 1987),
incorporating Morris ’263 (US 4,667,263; published May 19, 1987), Morris
’216 (US 4,641,216; published Feb. 3, 1987) and Baran (US 2014/0126158
A1; published May 8, 2014).
Claim 9 is rejected under 35 U.S.C. § 103 over Morris ’600, Morris
’263, Morris ’216, and Baran, further in view of Lee (US 2015/0123751 A1;
published May 7, 2015).

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key limitation in dispute):
1. An interruption apparatus structured to be electrically
connected with a line conductor and a load conductor of an
electrical circuit and to switch at least a portion of the circuit
between an ON condition and an OFF condition, the
interruption apparatus comprising:
a first portion comprising:
a first housing,
a first electrical apparatus enclosed within the first
housing and comprising a set of separable electrical
contacts and a first conductor, the first conductor being
electrically connected with the set of separable electrical
contacts and comprising a first connection element that is
structured to be electrically connected with one of the
line conductor and the load conductor, and
a trip unit situated on the first housing, the trip unit
being operatively connected with the set of separable
electrical contacts and structured to switch the set of
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separable electrical contacts between an OPEN state and
a CLOSED state;
a second portion comprising:
a second housing, and
a second electrical apparatus situated on the
second housing and comprising a second conductor
having a second connection element that is structured to
be electrically connected with the other of the line
conductor and the load conductor;
the second portion being selected from a plurality of
second portions which are each alternatively cooperable with
the first portion, one second portion of the plurality of second
portions having a detection system that is structured to detect a
number of types of faults in the electrical circuit and to
responsively generate an output that is communicated to the
first portion, another second portion of the plurality of second
portions having another detection system that is structured to
detect another number of types of faults in the electrical circuit
and to responsively generate another output that is
communicated to the first portion, at least one of the number of
types of faults and the another number of types of faults
including a type of fault that is absent from the other of the
number of types of faults and the another number of types of
faults; and
the first portion and the second portion being movable
from a detached configuration to a connected configuration, the
first and second portions being physically and electrically
disconnected from one another in the detached configuration,
the first and second housings being affixed together and the
first and second electrical apparatuses being electrically
connected together in the connected configuration.

(Claims App. Appeal Br. 9–12).

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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer.
We add the following for emphasis.
First, the Examiner’s determination that Morris ’600 teaches an
interruption apparatus to be electrically connected with a line conductor and
a load conductor of an electrical switch, and has a trip unit with a set of
separable electrical contacts and structured to switch the set of separable
electrical contacts between an open state and a closed state is not in dispute
(generally Appeal Br.; Ans.).
Appellant mainly contends that 1) Baran does not disclose that
modules have separate and distinct fault detection functions, so cannot
render obvious the modification of Morris ’600 to have two second portions,
where “at least one of the number of types of faults and the another number
of types of faults” are different (Appeal Br. 4–5; Reply Br. 1–2), and 2) the
electrical apparatus “enclosed within the first housing” does not encompass
the housing structure of Morris ‘600 (Appeal Br. 5–6; Reply Br. 1–2).

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First, Appellant argues that the combination of Morris ’600 and Baran
do not render claim 1 obvious because “nothing in Baran et al., mentions, for
instance, that one module could include . . . motor jam detection and current
imbalance detection whereas an alternative module could include . . . current
imbalance detection and ground fault detection” (Appeal Br. 4). Appellant
disputes the Examiner’s characterization of ¶ 55 of Baran as teaching
different modules possessing at least one of the three types of fault detection
functions enumerated (Reply Br. 2).
We note that “[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
[those] references would have suggested to those of ordinary skill in the
art.”). In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Nievelt,
482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references
does not involve an ability to combine their specific structures.”).
As the Examiner points out, Baran is directed to solving the problem
of overload relays of different functions because there are many different
types of components for these overload relays based on the desired
parameters (Ans. 5–6). Baran states that there are a “large number of catalog
numbers that need to be manufactured and warehoused” for different relays
each with “a small current range, and possibly a fixed set of functional
options” and an attempt to increase the function and range “results in
increased size, cost, and heat generation” (Baran ¶ 6, cited by Examiner in
Final Act. 4). Because Baran’s components are modular, the overload relay
can be tailored with modules that have the needed functions, without
additional functions that would result in the abovementioned “increased size,
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cost, and heat generation.” The Examiner further cites Baran’s “physical
separation of the modules” which can allow “a variety of overload relays of
different functions to be offered in a cost-effective basis” (Final Act. 5,
citing Baran ¶ 54, emphasis added), adding context to the “functions”
referenced in next paragraph that Appellant argues (Appeal Br. 4, citing ¶
55). Further, keeping in mind the overall goal of Baran, the different
functions of ¶ 54 cannot fairly be limited to the optional remote reset or trip
functions mentioned in ¶ 55, as Appellant argues (Appeal Br. 5), because
omitting a mere two functions would not allow the level of tailoring that the
background implies is needed.
Considering Baran’s teachings as a whole, the functions listed in the
first sentence of Baran ¶ 55 are functions that each can be a function of the
overload relay, but there is no disclosure that those functions must be used
together. The Appellant’s interpretation, that all of those listed functions
must be in a single module, would undercut the overall goal of Baran to
allow tailoring of the overload relays to the necessary components for the
application, although reducing the cost or size from adding other functions.
Having multiple functions that are unnecessary in the overload relay could
increase the cost or size or heat generation. Cf. DyStar Textilfarben GmbH
& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367–68, (Fed.
Cir. 2006). (“Indeed, we have repeatedly held that an implicit motivation to
combine exists not only when a suggestion may be gleaned from the prior art
as a whole, but when the ‘improvement’ is technology-independent and the
combination of references results in a product or process that is more
desirable, for example, because it is stronger, cheaper, cleaner, faster,
lighter, smaller, more durable, or more efficient.”).
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Therefore, Appellant has failed to show why the Examiner erred when
finding that Baran’s overall goal, along with the implicit disclosures of
portions cited, suggest a modular setup with a second portion that performs
only the necessary function instead of another function of a different second
portion, in order to reduce cost and size.
Turning to the second point, “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id. See also, Alloc, Inc. v. Int’l
Trade Comm’n, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (A court must not
read particular embodiments and examples appearing in the Specification
into the claims unless the Specification requires it.).
Appellant contends that their amendment to recite the electrical
apparatus was “enclosed within” the first housing was to overcome the prior
art of Morris and that an electrical apparatus not fully enclosed within the
first housing would raise “considerations of safety” and “constitute an
extremely dangerous situation” (Appeal Br. 5–6). However, Appellant has
not directed us to any special definition in the Specification to support their
position that an electrical apparatus “enclosed within” a first housing is
limited to that apparatus being enclosed completely within the housing,
different from the housing of Morris ’600. The Examiner cited the
dictionary definition of “enclose,” which includes “to close in” or “to hold
in” to explain that the housing does not require complete three-dimensional
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coverage (Ans. 6). Further, the Examiner persuasively points out that the
first housing of Morris ’600 is only partially enclosing the electrical
apparatus, yet the end product has a complete enclosure, rendering the safety
concerns moot (Ans. 7). Thus, Appellant has not shown error in the
Examiner’s interpretation of “enclosed within” as encompassing the housing
of Morris ’600.
To the extent Appellant presents any substantive arguments for any of
the remaining dependent claims, no reversible error has been identified (see
also, Ans. generally).
Accordingly, we sustain the § 103 rejections of all of the claims on
appeal.
CONCLUSION
The decision of the Examiner is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 12–
15 103
Morris ’600, Morris
’263, Morris ’216,
Baran
1–8, 12–15

9 103
Morris ’600, Morris
’263, Morris ’216,
Baran, Lee
9

Overall
Outcome
1–9, 12–15

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).
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AFFIRMED