EATON CORPORATION

Patent Trials and Appeals Board

May 21, 2021

2020003902 (P.T.A.B. May. 21, 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.
15/714,009 09/25/2017 Frank Joseph Stifter JR. 16-CCB-1446 3117
101730 7590 05/21/2021
ECKERT SEAMANS CHERIN & MELLOTT, LLC
EATON CORPORATION
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
TALPALATSKI, ALEXANDER
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
05/21/2021 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK JOSEPH STIFTER JR.,
SUNNYBHAI PATEL, and JONATHAN M. PEIFER
____________

Appeal 2020-003902
Application 15/714,009
Technology Center 2800
____________

Before JEFFREY T. SMITH, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

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
Corporation. Appeal Br. 1.
Appeal 2020-003902
Application 15/714,009

2
The invention relates generally to circuit interruption equipment to
protect at least a portion of a circuit from various electrical conditions such
as overcurrent or undervoltage conditions. Spec. 1–2. Claim 1 illustrates
the invention and is reproduced below from the Claims Appendix of the
Appeal Brief:
1. A combination comprising:

a support; and

a switch;

the support being structured to mount the switch to a platform;

the switch having a housing and further having a plunger that is
movably situated on the housing to change the switch between a first
state and a second state;

the support comprising:

a base engaged with the housing, the base having an opening
formed therein that receives therethrough at least a portion of at least
one of the housing and the plunger;

a number of walls situated on the base;

a mounting apparatus that is structured to be usable to affix the
number of walls to the platform; and

a receptacle that is situated adjacent the base and the number of
walls and that receives the housing therein.

Appeal Br. 11.

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Application 15/714,009

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Appellant requests review of the following rejections from the
Examiner’s Final Office Action dated July 8, 2019:
I. Claims 1–4, 6, and 7 rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Patel (US 3,760,307, published Sept. 18, 1973).

II. Claim 5 rejected under 35 U.S.C. § 103 as unpatentable over Patel and
Marchand (US 6,362,445 B1, published Mar. 26, 2002).

III. Claim 8 rejected under 35 U.S.C. § 103 as unpatentable over Patel and
Castonguay (US 6,421,217 B1, published Jul. 16, 2002).

OPINION
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we AFFIRM the Examiner’s rejection of claims 1–3 under 35
U.S.C. § 102(a)(1) for reasons the Examiner provides, and REVERSE the
Examiner’s prior art rejections of claims 4–8 under 35 U.S.C. § 102(a)(1)
and § 103 for essentially the same reasons Appellant presents. We add the
following.
Appellant presents specific arguments addressing Rejection I. Appeal
Br. 4–7. Appellant relies on these arguments to address the rejections of the
remaining claims. Id. We select claims 1 and 4 as representative of the
subject matter claimed and decide the appeal as to all grounds of rejections
based on the arguments presented for claims 1 and 4.

Independent claim 1
Claim 1 is directed to a combination comprising a support structured
to mount a switch to a platform, the switch having a housing and a plunger
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Application 15/714,009

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that is movable to change the switch between a first and second state, and
the support comprising a base with an opening, walls, a mounting apparatus,
and a receptacle.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 1. Final Act. 3. Briefly, the Examiner
finds Patel teaches all features of the claim, in particular, a switch with a
plunger, where the movement of the plunger changes the switch between a
first and a second state. Id. at 3.
Appellant argues Patel does not disclose a switch as claimed, but
rather a trip device, specifically a solenoid that is structurally different from
a switch. Appeal Br. 4–5; Reply Br. 2–3. Appellant contends the Examiner
concedes the trip device is not a switch, but, instead, an alternative device
that performs a switching function, and Patel distinguishes the trip device
from switches by calling other elements “switches”. Appeal Br. 4–5; Reply
Br. 2.
Appellant’s arguments do not identify reversible error in the
Examiner’s finding of anticipation. Appellant has not explained why the
switch of the instant claims excludes a trip device, e.g. a solenoid operating
mechanism as disclosed in Patel. The fact that Patel does not name the trip
device a switch does not preclude Patel’s device from nonetheless reading
on a switch. The instant invention, as disclosed in the Specification, pertains
to a circuit interrupter including switches with plungers that engage a
crossbar and a trip bar to move the circuit interrupter between OPEN,
CLOSED, and TRIP positions. Spec. 3–6. Like the claimed invention, Patel
describes a device including an actuating rod which engages a trip shaft and
jack shaft to move between open, closed, and trip positions. Patel col. 8, ll.
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41–col. 9, ll. 7 and Figs. 8–10. That is, Patel’s device performs the disclosed
functions of a switch. Thus, Appellant has not distinguished the structure of
the switch recited in claim 1 from Patel’s device.
Appellant further argues Patel fails to disclose a plunger to change the
switch between the first and second states, but, rather, DC current itself
changes the state causing the actuating rod to move. Appeal Br. 5.
Appellant’s argument is unpersuasive. Patel discloses a DC current to
change the magnetic flux and eventually cause the actuating rod to move,
and thus engage a trip member and pivot the trip shaft to change between the
open, closed, and trip positions shown in Figs. 8–10. Patel col. 8, ll. 24–57.
Thus, while the DC current may initiate the movement, the actuating rod,
corresponding to the claimed plunger, does move between different
positions to change the state of the switch, as claimed.
Accordingly, we affirm the Examiner’s rejection of claims 1–3 under
35 U.S.C. § 102(a)(1) for reasons the Examiner provides.

Independent claim 4
Claim 4 is directed to a trip deck assembly comprising the
combination of claim 1, and having two switches, each comprising a
plunger, where one plunger engages with a crossbar and the another plunger
engages a trip bar.
Appellant argues Patel does not teach the plunger engaging the
crossbar, nor the another plunger engaging the trip bar, as the plunger of the
trip device is not engaged with anything until after the plunger has moved
away from the first position toward the second position. Appeal Br. 6–7;
Reply Br. 3. Appellant further argues an additional identical trip device
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would have the same function as the first trip device, and thus the additional
trip device would not engage a different element, such as the trip bar, while
the other engages the cross bar. Appeal Br. 7.
Appellant’s argument is persuasive of reversible error.
Although the Examiner asserts multiple switches collectively
engaging the crossbar as well as each individually engaging a trip bar is
within the scope of Appellant’s claim 1 (Ans. 6–8), the Examiner has not
pointed to the additional switch identical to that relied upon for claim 1 in
the device of Patel. Claim 4 requires a separate switch from that of claim 1
and the Examiner has not identified where Patel discloses multiple of the
same, identical, switches to support the stated assertion.
Accordingly, we reverse the prior art rejection of claims 4–8 under 35
U.S.C. §102(a)(1) and 35 U.S.C. §103 for the reasons Appellant presents
and those we provide above.

In sum, we affirm the prior art rejection of claims 1–3 under 35
U.S.C. §102(a)(1), for the reasons the Examiner presents, and reverse the
prior art rejection of claims 4–8 under 35 U.S.C. §102(a)(1) and 35 U.S.C.
§103 for the reasons Appellant presents and those we provide above.

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Application 15/714,009

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DECISION SUMMARY

The rejection of claims 1–3 under 35 U.S.C. §102(a)(1) is affirmed.
The rejections of claims 4–8 under 35 U.S.C. §102(a)(1) and 35
U.S.C. §103 ae reversed.
Our decision is an affirmance in part.
In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6, 7 102(a)(1) Patel 1–3 4, 6, 7
5 103 Patel, Marchand 5
8 103 Patel, Castonguay 8
Overall
Outcome
1–3 4–8

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 IN PART