Eaton Intelligent Power Limited

Patent Trials and Appeals Board

Mar 19, 2021

2020005652 (P.T.A.B. Mar. 19, 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.
16/170,150 10/25/2018 Xin Zhou 170936.00111 3172
152078 7590 03/19/2021
FOX ROTHSCHILD LLP / EATON
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
LAWRENCEVILLE, NJ 08648
EXAMINER
RUSHING, MARK S
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
03/19/2021 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XIN ZHOU, ZHI GAO,
JAMES L. LAGREE and BRIAN E. CARLSON
___________

Appeal 2020-005652
Application 16//170,150
Technology Center 2600

____________

Before CARL W. WHITEHEAD JR., ERIC B. CHEN and
MICHAEL J. STRAUSS, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1−20 under
35 U.S.C. § 134(a). Appeal Brief 8. Claims 1 and 14 are independent. We

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed April 23, 2020), the
Reply Brief (filed July 29, 2020), the Final Action (mailed November 19,
2019) and the Answer (mailed May 29, 2020), for the respective details.

2 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Eaton Corporation as the real party in
interest. Appeal Brief 3.

Appeal 2020-005652
Application 16/170,150

2

have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
March 4, 2021.
We AFFIRM.
Introduction
According to Appellant, the claimed subject matter “is related to a
method and system for authenticating and detecting the integrity of [a piece
of] electrical equipment, and in particular to whether or not a circuit breaker
has been subject to unauthorized tampering.” See Specification ¶ 2.

Illustrative Claims
1. A circuit breaker apparatus comprising:
a housing;
a circuit disposed in the housing and configured to
connect a power line to a load via one or more conductors and
provide circuit protection for the one or more conductors and
the load;
a display that is operable to change from a first state to a
second state, wherein:
the first state indicates that the apparatus is
authenticated and the second state indicates that the
apparatus has been tampered with, and
power is not required to maintain the first state or
the second state once displayed;
a controller; and
a power control device electrically coupled to the
controller;
wherein:
the display is configured to be in the first state
when the apparatus is authenticated and has not been
tampered with,
Appeal 2020-005652
Application 16/170,150

3

the power control device is configured to provide
power to the controller when the apparatus is tampered
with, and
the controller is configured to, when powered,
send a signal to cause the display to change from the first
state to the second state.
14. A method of indicating integrity of a circuit breaker, the
method comprising:
by a display of the circuit breaker, being in a first state
that indicates the circuit breaker is authenticated and has not
been tampered with and that does not require power to maintain
the first state once displayed;
by a power control device of the circuit breaker,
detecting that the circuit breaker is being tampered with, and in
response to detecting that the circuit breaker is being tampered
with providing power to a controller of the circuit breaker;
by the controller of the circuit breaker, when powered,
sending a signal to cause the display to change from the first
state to a second state, wherein:
the second state indicates that the circuit breaker
has been tampered with, and
power to the display is not required to maintain the
second state once displayed.

References
Name3 Reference Date
Dawson US 5,493,279 February 20, 1996
Shincovich US 2002/0074990 A1 June 20, 2002
Kamp US 2011/0110171 A1 May 12, 2011
Whitaker US 2011/0174599 A1 July 21, 2011
Davis US 2013/0023339 A1 January 24, 2013
Carlino US 2014/0254052 A1 September 11, 2014

3 All reference citations are to the first named inventor only.

Appeal 2020-005652
Application 16/170,150

4

Zhou US 10,141,128 B1 November 27, 2018

Rejections on Appeal4
Claims 1–20 stand rejected on the ground of non-statutory double
patenting as being unpatentable over claims 1–18 of Zhou. Final Action 2,
3.5
Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shincovich, Dawson and Carlino. Final Action 3–5.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shincovich, Dawson, Carlino and Kamp. Final Action 5,
6.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shincovich, Dawson, Carlino and Davis. Final Action 6,
7.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson, Carlino and Whitaker. Final Action 7, 8.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson, Carlino, Whitaker, and Davis. Final Action 8, 9.

ANALYSIS

4 The Examiner finds, “Claims 9–13 and 15–18 are objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims, and if a terminal disclaimer is filed.” Final Action 9.

5 No arguments were proffered by Appellant against the non-statutory
double patenting rejection of claims 1-18, therefore we summarily affirm the
rejection.
Appeal 2020-005652
Application 16/170,150

5

Claims 1–4
Appellant argues that the:
combination of Shincovich, Dawson and Carlino fails to teach
or suggest at least the following [claim 1 limitation]:
• display that is operable to change from a first state to a
second state, wherein the first state indicates that the
apparatus is authenticated and the second state indicates that
the apparatus has been tampered with.
Appeal Brief 9 (emphasis added). The Examiner finds, “Shincovich teaches
providing an indication of tamper events, which requires a state without the
notification and a second state that includes the notification ([0046] detects
tamper events concerning the metering and reports them to a central utility
site)”; however, the Examiner also finds that Shincovich “doesn’t teach a
display changing from one state to another to indicate tampering.” Final
Action 3. The Examiner relies upon Dawson to address Shincovich’s
deficiency where:
Dawson teaches a display (18 of Fig 2) that is operable to
change from a first state to a second state, wherein: the first state
indicates that the apparatus is authenticated (140 of Fig 4B; Col
9 Lines 15-22) and the second state indicates that the apparatus
has been tampered with (118 of Fig 4B or 120 of Fig 4A).
Final Action 4.
Appellant argues:
Dawson teaches a display that, when powered ON, can
provide information such as a covert entry indication, an invalid
entry indication, lock ready to open indication, a counter, etc.
However, the display in Dawson does not “change from a first
state to a second state, wherein the first state indicates that the
apparatus is authenticated and the second state indicates that
the apparatus has been tampered with,” as required by
Appellant’s claim 1. Rather, the first state in Dawson is an OFF
state and the second state is an ON state, neither of which is
Appeal 2020-005652
Application 16/170,150

6

indicative of authentication or tampering associated with the
lock. The state of the display changes from OFF to ON in
Dawson depending on whether or not there is sufficient power to
turn ON the display, where the power for turning ON the display
is generated using a generator connected to the rotation of the
dial used for entering the lock combination.
Appeal Brief 9 (footnote omitted).
Dawson’s claimed subject matter is directed to an electronic
combination lock that incorporates an enhance feature of covert entry
detection/notification and:
Whenever the bolt of an electronic lock provided with this
enhancement is retracted to its withdrawn or unlocked position
and whenever the lock has not received an authorized
combination enabling the movement of the bolt, movement of
the bolt is detected and the electronics of the lock is powered for
a time sufficient to record an indication of the covert entry in its
non-volatile memory.
Dawson, Abstract.
Dawson discloses that, “In the event that the combination entered is
determined to be invalid, then the error signal in the form of a lightning bolt
is displayed at operation 118. The display of the lightning bolt occurs on
display 18 as illustrated in FIGS. 1 and 2.” Dawson, column 7, lines 58–61.
Dawson also discloses:
The Covert Entry indication will be displayed on the LCD 18
each time the lock 10 is dialed for several 360° turns of the dial
14 prior to allowing the combination to be dialed. This will
sufficiently alert the operator to the fact that a covert entry has
occurred and will continue to indicate covert entry at the
beginning of all dialing sequences until a recovery routine is run
that resets the display routine and Covert Entry flag.
Dawson column 8, lines 9–16.
Dawson further discloses:
Should the Valid Entry flag not be set as determined in
Appeal 2020-005652
Application 16/170,150

7

operation 130, then the flow is to operation 136 where the non-
volatile memory 43 is written to indicate that a covert entry has
occurred. Following the writing of the Covert Entry flag into the
non-volatile memory 43 by the microprocessor 44, operation 134
occurs as previously described.

In the event that the combination entered through dial 14 is a
valid combination, then the flow is directed through the
affirmative path to operation 140 where the display will show the
symbols “OP” to indicate that the lock is ready to open.
Dawson, column 9, lines 9–19; Final Action 4.
We do not find Appellant’s arguments persuasive of Examiner error
because the combined teachings of Shincovich and Dawson discloses a
display capable of displaying two states that change to indicate tampering.
See Shincovich ¶ 46; Dawson, column 8, lines 9-16; column 9, lines 9–19.
Further, we find Appellant’s argument does address the Examiner’s mapping
of Dawson to claim 1 as explained above and therefore does not address the
Examiner’s findings and, as such, is unpersuasive of error.

Appellant also argues that Shincovich, Dawson, and Chen fail to
“teach or suggest” limitations recited in claim 1 such as:
“• the power control device is configured to provide power to the controller
when the apparatus is tampered with, and
• the controller is configured to, when powered, send a signal to cause the
display to change from the first state to the second state.” Appeal Brief 11
(emphasis added).
We do not find Appellant’s arguments persuasive of Examiner error
because as noted above both Shincovich and Dawson disclose manipulating
power when tampering is detected however it is Dawson that provides power
Appeal 2020-005652
Application 16/170,150

8

to a display. See Shincovich ¶46 (“The present invention also enables the
central utility site to immediately take corrective action via a circuit breaker
or switch mounted in the apparatus to disconnect electric power at the
metering site when a tamper event has been detected.”); see also Dawson
column 8, lines 9–16.
Appellant argues the obviousness rejection of claim 1 is improper
because the “the Office approached each element as though it was an
independent problem to be solved, rather than researching the broader
problem recited above.” Appeal Brief 13. We do not find Appellant’s
argument persuasive of error because the motivation that a person of
ordinary skill in the art would have had to combine prior art references need
not be the same motivation that inspired the patent owner. KSR, 550 U.S. at
420 (“[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.”); see also Kahn, 441 F.3d at 989
(“[T]he skilled artisan need not be motivated to combine [a prior art
reference] for the same reason contemplated by the [inventor]”).
Appellant further argues the rejection “impermissibly used hindsight
to pick and choose the low energy display of Carlino for substituting the
display in Dawson, while ignoring all the remainder of the circuit parts and
mechanisms described in Dawson.” Appeal Brief 15. Appellant contends
that “[s]ubstitution of the display in Dawson with that taught in Carlino will
require that the display be turned on upon detection of a covert entry, and
then maintained in the ON state without requiring any energy” and therefore
“the circuit described in Dawson will not function as intended if the display
is turned ON when a covert entry is detected.” Appeal Brief 15. Appellant
Appeal 2020-005652
Application 16/170,150

9

reasons that Dawson will not function “because the alternate power supply
only has enough power to turn on the microprocessor, and not the display.”
Appeal Brief 15 (emphasis omitted) (citing Dawson, column 6, lines 53–60).
We do not find Appellant’s argument persuasive of Examiner error
because we find the Examiner’s combination of references satisfies the test
for obviousness.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant contends, “The combination of Dawson with Shincovich
and Carlino not only suffers from the hindsight infirmity discussed above, it
also is an improper combination of non-analogous references.” Appeal Brief
15. Appellant argues, “Contrary to the Office’s assertion on pages 11–12 of
the Final Action, Dawson is also not reasonably pertinent to the particular
problem with which the invention is involved. Dawson does not disclose a
display having the same purpose as the pending claims.” Appeal Brief 16.
Claim 1 recites, “a display that is operable to change from a first state to a
second state.” The Specification discloses, “The display may be an
electronically-alterable display that does not require power in situations
other than changing its state. Either the first state or the second state may
stay in that state when the display has no power.” Specification ¶ 7.
Dawson discloses, “The preferred display 18 is a Liquid Crystal Display or
LCD device which has the advantage of being a relatively low consumer of
Appeal 2020-005652
Application 16/170,150

10

electrical power.” Dawson, column 6, lines 47–49.
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant’s endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. References are selected as being
reasonably pertinent to the problem based on the judgment of a person
having ordinary skill in the art.” In re Kahn, 441 F.3d 977, 986–87 (Fed.
Cir. 2006).
According, we do not find Appellant’s argument persuasive of
Examiner error because we discern no meaningful difference between the
claimed display and Dawson’s display because both displays provide access
to information for the users to see. We sustain the Examiner’s obviousness
rejection of independent claim 1, as well as, dependent claim 3 not argued
separately. See Appeal Brief 17.

Claim 14
Appellants argues, “The cited references [Dawson and Carlino] also
fail to teach or suggest: ‘A method of indicating integrity of a circuit
breaker ... detecting that the circuit breaker is being tampered with ... ,’
as required by Appellant’s claim 14.” Appeal Brief 18. The Examiner
finds, “Dawson doesn’t teach that the apparatus is a circuit breaker, but
rather a safe that includes circuitry and processing devices that are to be
protected and are able to detect tampering.” Final Action 8. The Examiner
finds:
In the same field of endeavor Whitaker teaches a cover
assembly for use with an electrical switching apparatus can be
said to comprise a retention device that is structured to be
Appeal 2020-005652
Application 16/170,150

11

disposed on the electrical switching apparatus and a cover that
comprises an engagement element and that is disposed on the
retention device.
Final Action 8.
The Examiner further finds, “Whitaker discloses a method of detecting the
integrity of a circuit breaker against tampering (Abstract, [0026]).” Final
Action 8.
The Examiner determines:
Therefore, it would have been obvious to a person having
ordinary skill in the art before the effective filing date of the
claimed invention to modify Dawson with Whitaker using a
circuit breaker in order to provide an improved system for
limiting access to the control elements of an electrical switching
apparatus.
Final Action 8 (emphasis added) (citing Whitaker ¶ 7).
Appellant contends:
Whitaker teaches a cover assembly (i.e., a locking device)
for use with an electric switching apparatus that may include a
circuit breaker. The cover assembly is configured to prevent
access to the electric switching apparatus enclosed within the
cover assembly. However, Whitaker simply does not teach or
suggest detection of tampering with the circuit breaker apparatus
enclosed within the cover assembly. Therefore, Whitaker fails
to teach or suggest the above limitations of claim 14.
Appeal Brief 18, 19 (footnotes omitted).
We find Appellant’s argument persuasive of Examiner’s error because
Whitaker discloses:
It can be understood from FIGS. 1 and 2, therefore, that
the translation of the cover 12 along the first axis 86 is
permissible when the locking elements 6 are removed from the
first, second, and third openings 34a-c, 50a-c, and 68a-c, and
when any tamper-evident seal is removed from the first, second,
and third thru-bores 36, 52, and 70.
Appeal 2020-005652
Application 16/170,150

12

Whitaker ¶ 26 (emphasis added).
We find Whitaker encourages removal of the tamper-evident tape in
order for the translation of the cover to occur and therefore the absence of
the tape would not necessarily indicate tampering as recited in claim 14. See
Whitaker ¶ 26. Accordingly, we reverse the Examiner’s obviousness
rejection of claim 14, as well as, claims 19 and 20 dependent upon claim 14.

Claim 2
Appellant contends, “Dependent claim 2 requires ‘wherein the power
control device comprises an energy storage device that becomes sufficiently
charged to power the controller when the apparatus is being tampered
with.’” Appeal Brief 21. The Examiner finds, “Dawson teaches a power
control device with an energy storage device (C200) that becomes
sufficiently charged to power the controller during tampering (Col 8 lines
49-64 detection of the bolt 26 in its open position results in the alternate
power supply voltage Vcap’ being turned on)” and therefore “reads on the
claim language.” Answer 22. Appellant disagrees with the Examiner’s
findings and argues, “The Vcap’ in the cited portions relates to powering of
the microcontroller by the alternate power supply and not charging of the
alternate power supply itself.” Appeal Brief 21.
We do not find Appellant’s arguments persuasive of Examiner error
because Dawson discloses:
The detection of the bolt 26 in its open position results in the
alternate power supply voltage Vcap’ being turned on in
operation 126. The activated alternate power source is the
alternate Super Cap C200 which is maintained in a charged
condition for extended periods of time. Turning on the voltage
Vcap’ from the alternate power source C200 will provide
Appeal 2020-005652
Application 16/170,150

13

electrical energy to the microprocessor 44 as represented by
operation 126.
Dawson, column 8, lines 51–59 (emphasis added).
Accordingly, we agree with the Examiner’s findings because Dawson
discloses charging the alternative power supply. We sustain the Examiner’s
obviousness rejection of claim 2.

Claim 4
Appellant contends:
Dependent claim 4 requires “wherein the switch is
configured to connect the battery to the power control device
when the apparatus is being tampered with.” As discussed
above, the alternate power supply is charged in Dawson when a
lock combination is being dialed and not during covert entry.
Therefore, Dawson cannot teach or suggest these limitations of
claim 4.
Appeal Brief 22.
The Examiner finds:
Dawson teaches a battery may be an alternate power source (Col
3 lines 54-62). And teaches a switch configured to connect the
battery (alternate power source) to the power control device
when the apparatus is being tampered with (124, 126 of Fig 4A;
Col 6 Lines 54-63 alternate power source provides electrical
power to microprocessor when the power supply does not have
sufficient stored electrical energy to operate the microprocessor
and when enabled by the movement of bolt; Col 2 Lines 32-35
covert entry is considered any withdrawal of the bolt from its
extended or locked position without the entry into the lock of an
authorized combination).
Answer 6.
We agree with the Examiner’s findings because Dawson discloses that
a battery could be used in lieu the Super Cap, a low leakage capacitor, to
Appeal 2020-005652
Application 16/170,150

14

“provide the alternate power necessary to cause the lock to respond to a bolt
movement detection.” Dawson, column 3, lines 51–56. Accordingly, we
sustain the Examiner rejection of claim 4.

Claim 5
The Examiner finds, “Kamp discloses a power harvester (16 of Fig 4)
disposed inside the apparatus (Fig 4) and configured to charge the energy
storage device when the apparatus is being tampered with ([0029]).” Final
Action 6. Appellant contends:
While Kamp teaches an energy harvester that forms an electrical
stimulus signal provided to a memory device, the energy
harvester in Kamp is used to transform energy from a tampering
event into electrical energy contained in an electrical stimulus
pulse provided to and electronic unit that is arranged for storing
information relating to the tampering event. The energy harvester
is not configured to charge an energy storage device, as required
by Appellant’s claim 5.
Appeal Brief 5.
We find Appellant’s argument persuasive of Examiner error because
Kemp discloses, “The DC electrical energy of an external event is collected
by the sensor forming an energy harvester 16 and provided to a memory part
of the electronic unit, in the variant of FIG. 2 formed by a Non-Volatile
Memory (NVM) unit 18 comprising at least one NVM cell, through an
electrical stimulus signal line.” Kemp ¶ 30 (emphasis added). Kemp fails to
disclose a power harvester configured to charge an energy storage device as
required by claim 5. Accordingly, we reverse the Examiner’s obviousness
rejection of claim 5, as well as, claim 6 dependent upon claim 5.

Appeal 2020-005652
Application 16/170,150

15

CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 Non-Statutory
Double Patenting
1–20
1–4 103 Shincovich,
Dawson, Carlino
1–4
5, 6 103 Shincovich,
Dawson, Carlino,
Kemp
5, 6
7, 8 103 Shincovich,
Dawson, Carlino,
Davis
7, 8
14 103 Dawson, Carlino,
Whitaker
14
19, 20 103 Dawson, Carlino,
Whitaker, Davis
19, 20
Overall
Outcome
1–20 5, 6, 14,
19, 20

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED