10437122 (B.P.A.I. Mar. 26, 2012)

Ex Parte Bradley et al

Board of Patent Appeals and InterferencesMar 26, 2012

10437122 (B.P.A.I. Mar. 26, 2012)

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. 10/437,122 05/13/2003 Frank H. Bradley 16284-53565 3325 44692 7590 03/26/2012 WRIGHT, LINDSEY & JENNINGS LLP 200 WEST CAPITOL AVENUE, SUITE 2300 LITTLE ROCK, AR 72201-3699 EXAMINER HYLTON, ROBIN ANNETTE ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 03/26/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte FRANK BRADLEY and WADE BRADLEY ____________ Appeal 2009-014602 Application 10/437,122 Technology Center 3700 ____________ Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and GAY ANN SPAHN, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frank Bradley and Wade Bradley (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable over Smith (US 5,902,960, issued May 11, 1999), Everett (US 5,741,102, issued Apr. 21, 1998), and Murata (US 5,373,611, issued Dec. 20, 1994). Appellants cancelled claims 2 and 4- 9. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2009-014602 Application 10/437,122 2 THE CLAIMED SUBJECT MATTER The claimed subject matter is directed to a kit including a cover plate for temporarily protecting an electrical outlet box and its contents during construction. Spec. 1. Claim 1 (the sole independent claim), reproduced below, with italics added, is representative of the subject matter on appeal. 1. A kit for use during construction for temporarily protecting an electrical box having a front opening into an interior space and at least two screw sockets for receiving screws, comprising: at least one cover plate, said cover plate being flat without projections and dimensioned to substantially cover the front opening of the interior space of the electrical box and said flat plate having substantially the same dimensions as the opening of the electrical box, said cover plate having at least two screw openings aligned along a center line of a long axis of said plate and capable of alignment with respective screw sockets, and said cover plate having a removal opening; said removal opening positioned such that said removal opening is not aligned with a screw socket when said screw openings are aligned with respective screw sockets, wherein said removal opening is dimensioned to a minimum size sufficient to closely receive a blade end of a screwdriver; and at least one retaining clip having means for snap-wise removable attachment in at least one of said at least two screw openings; said retaining clip having a head, a shank, and means on said shank for removably securing said retaining clip by a friction fit in at least one of the respective screw sockets; wherein said means for removably securing said retaining clip in said at least one of the respective screw sockets comprises a plurality of external flexible ribs on said shank, and said means for snap-wise removable attachment in said at least one of said at least two screw openings comprises at least one wide flexible rib wider than said external flexible ribs and spaced from said head of said clip. App. Br. 21 Appeal 2009-014602 Application 10/437,122 3 OPINION The Examiner finds that Smith discloses a cover plate having “frangible slits 22 for alignment with screw holes of an electrical box”; however, Smith does not disclose “alignable screw holes.” Ans. 3. The Examiner takes Official Notice of the equivalence of frangible slits and preformed openings for their use in the closure art and concludes that it would have been obvious to one of ordinary skill in the art to modify Smith “to form the frangible slits as holes.” Id. The Examiner further explains that “preformed openings would allow for faster use of the temporary cover since the frangible [slits] would not have to be separated by the user and risk potential tearing beyond the reasonable use of the cover.” Ans. 4. Appellants contend that it would not have been obvious to one of ordinary skill in the art to form Smith’s frangible slits 22 as preformed openings because modifying Smith’s frangible slits 22 to be preformed openings would change Smith’s principle of operation and would render Smith inoperable for its intended purpose. App. Br. 16-17. Smith discloses a cover 20 “for shielding the interior of an electrical wire junction box from foreign material during wall construction.” Col. 2, ll. 15-18, 31-32; Abstract. In the Background of the Invention section, Smith discusses a problem with respect to prior art electrical wire junction boxes in that these boxes often have wires sticking out from the interior thereof during construction and thus, the wires may be cut, painted, plastered or otherwise damaged requiring an electrician to spend time repairing or cleaning the wires before proceeding with the next phase of construction thereby unduly increasing costs. Col. 1, ll. 21-27. Smith recognized that one available remedy to this situation would be “screwing on the face plate,” Appeal 2009-014602 Application 10/437,122 4 but that this would “take almost as much time as repairing or cleaning the wires anyway.” Col. 1, ll. 28-31. Thus, Smith’s remedy includes a cover 20 comprised of a planar piece of flexible, inexpensive material, such a cardboard, that can be discarded after use. Col. 2, ll. 32-34. Smith’s rectangular cover 20 has diagonal frangible slits 22 provided at the approximate middle of the short edges thereof “to accommodate internal anchoring guides 18 within the housing 12” of a hollow, rectangular electrical wire junction box. Col. 2, ll. 42-44 and Figs. 2-3. The cover 20 is simply pushed into position within the opening of the housing 12 so that a snug press-fit can be made against the internal wall of the housing 12. Col. 1, ll. 46-48. When necessary, Smith’s slits 22 can be slightly separated to allow the cover 20 to pass around the internal anchoring guides 18 and still maintain the snug press-fit of the cover against the internal walls of the housing 12. Col. 2. l. 66 to col. 3, l. 1. The cover 20, when positioned within the housing 12, is flush with the front edge 30 to prevent paint, plaster or joint compound from entering the box and getting on the wires 15 therein. Col. 3, ll. 1-6. Removal of the cover 20 is quickly and easily performed by pulling the cover 20 out of the junction box and the cover 20 is simply thrown away after use. Col. 3, ll. 6-13. In view of the above discussion of the Smith reference, we agree with Appellants that it would not have been obvious to a person of ordinary skill in the art to modify Smith’s slits 22 to be preformed screw openings as suggested by the Examiner. Since Smith’s objective was “to have a device which could effectively guard the wires in the junction box housing, yet be easy and quick to install and be inexpensive to allow disposal” (Col. 1, ll. 35-38), Smith specifically designed his cover 20 to have frangible slits 22 so Appeal 2009-014602 Application 10/437,122 5 that an electrical wire junction box 10 having internal structure within the housing 12, such as anchoring guides 18 for receiving screws, could be easily and quickly accommodated simply by separating the slits 22 and fitting the thus separated slits around the internal structure. If Smith’s slits 22 were modified to be preformed screw openings as suggested by the Examiner, the cover 20 would necessarily require using fasteners to fix the cover 20 to the electrical wire junction box 10 and then, once construction ceased, the fasteners would have to be unfastened in order to remove the cover 20 from the electrical wire junction box 10. This would be antithetical to Smith’s objective of quickly and easily press-fitting a cover 20 onto an electrical wire junction box without the need for time consuming fasteners. Thus, we are persuaded by Appellants’ arguments that modifying Smith’s slits 22 to be preformed screw openings for receiving a fastener as taught by Everett/Murata would change the principle of operation of Smith and make Smith unsuitable for its intended purpose. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 1, and claims 3, 10, and 11 directly dependent upon claim 1, under 35 U.S.C. § 103(a) as unpatentable over Smith, Everett, and Murata. DECISION We reverse the Examiner’s decision to reject claims 1, 3, 10, and 11. REVERSED Klh