Ex Parte Darr et al

Patent Trial and Appeal Board

Jun 6, 2018

13008940 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/008,940 01119/2011
81735 7590 06/08/2018
Armstrong Teasdale LLP (16463)
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Matthew Rain Darr
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BUS-027071 CIP4 9817
EXAMINER
VORTMAN, ANATOLY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
06/08/2018 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW RAIN DARR and
HUNDI PANDURANGA KAMATH
Appeal2017-000517
Application 13/008,940
Technology Center 2800
Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1, 5-16, 18, 20-23, 27, 29, 30,
1 Our Decision refers to the Specification ("Spec.") filed January 19, 2011,
the Examiner's Final Office Action ("Final Act.") dated October 19, 2015,
Appellants' Appeal Brief ("Appeal Br.") filed March 18, 2016, the
Examiner's Answer ("Ans.") dated September 9, 2016, and Appellants'
Reply Brief ("Reply Br.") filed October 7, 2016.
2 According to Appellants, the real party in interest is Eaton Corporation plc,
which acquired Cooper Industries plc, the parent entity of Cooper
Technologies Company and the assignee of record. Appeal Br. 3.
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Application 13/008,940
32--43, 49, 51-53, 55, 57, and 63. 3 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The invention relates to fused disconnect switches (Spec. i-f 3).
Appellants disclose that fuses are widely used for overcurrent protection of
electrical circuits, wherein when electrical current through the fuse in an
electrical circuit exceeds a predetermined limit, fusible elements within the
fuse melt and open the circuit to prevent electrical component damage
(id. i-f 4). Appellants further disclose that fuses may also be used for
electrical switching, whereby the fuse is inserted and removed to and from
fuse holder terminals (id. i-f 5). However, Appellants teach that attempting to
remove a fuse while it is energized and under load may cause dangerous
arcing (id. i-f 43). Further, Appellants teach that movement of fuses may
result in unintended opening and closing of the circuit (id. i-f 44). According
to Appellants, the fusible switching disconnect device permits convenient
and safe on and off switching without movement of the fuse (id. i-f 46).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief (Appeal Br. 77-78), is illustrative of the subject matter on appeal.
1. A circuit protection device comprising:
a fusible switch disconnect assembly, the fusible switch
disconnect assembly comprising:
a disconnect housing adapted to receive and engage at
least a portion of a removable electrical fuse with plug-in
3 Because the Examiner withdrew the§ 112 rejection of claim 58, which was
the only pending rejection of this claim, claim 58 is no longer subject to
rejection. Thus, claim 58 is not before us on appeal.
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connection, the fuse including first and second terminal
elements and a fusible element electrically connected
therebetween, the fusible element defining a circuit path and
being configured to permanently open the circuit path in
response to a predetermined electrical current condition
experienced in the circuit path;
line side and load side terminals in the disconnect
housing and electrically connecting to the respective first and
second terminal elements of the fuse when the fuse is received
and engaged with the disconnect housing;
a first switch contact in the disconnect housing, the at
least one switchable contact provided between the line side
terminal and the first terminal element of the fuse, the first
switch contact selectively positionable in an open position and a
closed position to respectively connect or disconnect an
electrical connection through the circuit path of the fusible
element when the fuse is received and engaged with the
disconnect housing;
a mechanism operable to cause the at first switch contact
to move to the open position, wherein the mechanism
comprises an electromagnetic coil and a linkage engageable by
the electromagnetic coil when the electromagnetic coil is
energized and causing the first switch contact to move;
a detecting element configured to detect an actual
electrical current condition through the circuit path of the
fusible element; and
a controller responsive to the detecting element and in
communication with the electromagnetic coil, the controller
configured to:
compare an elapsed duration of the actual
electrical current condition with a predetermined time-
current expectation for a permanent opening of the
fusible element, and
if a deviation between the compared elapsed
duration of the actual electrical condition and the
predetermined time-current expectation for permanent
opening of the fusible element exceeds a predetermined
threshold, cause the electromagnetic coil to be energized
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Application 13/008,940
to open the first switch contact and attempt to avoid the
permanent opening of the fuse and prevent a
corresponding need to replace the fuse.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection: 4
1. Claim 63 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement (Final Act. 5);
2. Claims 1, 5-10, 15, 16, 18, 23, 29, 30, 32-36, 39--42, 49, 51-
53, 55, 57, and 63 under 35 U.S.C. § 102(b) as anticipated by
Morrisl, 5 as evidenced by Scott6 (Final Act. 11-19);
3. Claims 22, 27, and 43 under 35 U.S.C. § 103(a) as unpatentable
over Morris I, as evidenced by Scott (Final Act. 19-20);
4. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Morris!, as evidenced by Scott, in view ofBauer7 (Final Act. 20-21);
5. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Morris 1, as evidenced by Scott, in view of Murphy8 (Final Act. 21-
22); and
6. Claims 11-14, 37, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Morris 1, as evidenced by Scott, in view of Morris2 9
and Miller10 (Final Act. 22-23).
4 The Examiner has withdrawn rejections of claims 1, 5, 16, 18, 20-23, 27,
29, 30, 32--43, 49, 51-53, 55, 57, and 58 under 35 U.S.C. § 112, first
paragraph, and of claims 1, 5, and 49 on grounds of nonstatutory double
patenting (Ans. 3).
5 Morris et al., US 5,426,406, issued June 20, 1995 ("Morris I").
6 Scott, US 4,649,455, issued March 10, 1987.
7 Bauer, US 5,473,495, issued December 5, 1995.
8 Murphy, US 4,743,875, issued May 10, 1988.
9 Morris et al., US 5,162,766, issued November 10, 1992 ("Morris2").
10 Miller, US 2005/0103613 Al, published May 19, 2005.
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We note the Examiner did not include Scott in the statements of
rejection, though the Examiner indicates that Scott is incorporated by
reference into the teaching of Morris I (Ans. 11-12). Appellants did not
challenge the Examiner's reliance on Scott in the anticipation rejection
based on Morris 1 in their Appeal Brief. Specifically, Appellants merely
state, "[ n ]otwithstanding procedural questions that the reliance upon a
secondary reference raises" (Appeal Br. 69). Thus, Appellants waived any
argument that Scott was improperly relied on in support of the Examiner's
anticipation rejection based on Morris!. In re Hyatt, 211F.3d1367, 1373
(Fed. Cir. 2000) (noting that an argument not first raised in the brief to the
Board is waived on appeal).
Moreover, although Appellants correctly note in their Reply Brief that
Scott is not incorporated by reference into Morris 1 within the meaning of 3 7
C.F.R. § 1.57 (see Reply Br. 26-28, citing MPEP § 2131.01), the use of
Scott as an evidentiary teaching in a§ 102 rejection over Morris I does not
depend on its incorporation by reference by Morris I per se. Rather, the
Examiner's reliance on Scott depends on whether this reference is cited to
prove Morris I contains an enabled disclosure, or to explain the meaning of a
term used in Morris 1, or to show a characteristic not disclosed in Morris 1 is,
nonetheless, inherent. Here, Morris 1 specifically discloses the use of the
electronic trip unit and the actuator unit described within Scott. In order to
enable the electronic trip unit as disclosed and claimed in Morris 1, therefore,
Morris 1 specifically directs one to the Scott teaching. Indeed, in order to
determine what Morris 1 's electronic trip unit is, reference must be made to
the Scott disclosure. Because Morris 1 states that the electronic trip unit is
that of Scott, reference to Scott establishes the structure of that unit that is
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inherently part of Morris 1 's circuit protection device. Accordingly, we are
satisfied that the Scott reference is properly relied on as an evidentiary
teaching of what the Morris 1 reference taught to one of ordinary skill in the
art. We have modified the statements of rejection to reflect the status of
Scott as an evidentiary teaching.
ANALYSIS
Appellants argue extensively and present considerable evidence
regarding the alleged distinction between fusible switch disconnect devices
and fused circuit breaker devices (Appeal Br. 16, 47---62, 75, Apps. A-J).
Appellants contend that the Examiner's rejections suffer from "a serious
claim interpretation error and related interpretation of ... [Morris 1]
describing a circuit breaker device" (id. at 44--45). In particular, Appellants
assert that all the claims are directed to circuit protection devices comprising
fusible switch disconnect assemblies which persons in the art would
recognize as distinct from circuit breaker devices (id. at 45, 47). Appellants
attempt to support this position by reference to the Declaration under
37 C.F.R. § 1.132 of Robert Douglass (App. J) as well as patent and non-
patent literature (App. A-I). In addition, Appellants urge that throughout the
Specification, the circuit protection devices are described as fusible switch
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disconnect devices, and contrast the inventive device from "conventional in-
line fuse and circuit breaker combinations" (Appeal Br. 49, quoting Spec.
i-f 156 (emphasis omitted)). Appellants further urge that Morris I twice
describes the disclosed device as "a combined circuit breaker-fuse
arrangement" (id.).
On the other hand, the Examiner finds that there is nothing in the
Specification or claims that prevents the claims from sweeping within their
scope circuit breaker devices (Ans. 7). The Examiner notes that "circuit
breaker" is defined as "[a] device designed to open and close a circuit by
nonautomatic means, and to open the circuit automatically on a
predetermined overload of current, without injury to itself when properly
applied within its rating" (id. at 5) (emphasis omitted). Therefore, it is the
Examiner's position that any circuit protection device that provides
nonautomatic switching open and closed, as well as automatic opening upon
overcurrent without damage, would reasonably be interpreted to be a circuit
breaker device (id. at 4--5). The Examiner finds that Appellants' disclosed
circuit protection devices covered by the claims, and specifically the device
of Figure 30, include nonautomatic switching to open and close a circuit and
automatic opening on a predetermined overcurrent without damage (id. at
5). 11 Further, the Examiner finds that Specification paragraph 156 merely
compares one of Appellants' disclosed devices with a conventional in-line
11 The Examiner notes that some of Appellants' disclosed devices do not
include any automatic opening without damage functionality and, therefore,
would not be considered to be "circuit breakers" (Ans. 8). However, the
Examiner finds that each of the claims includes structure and functionality
for automatic opening without damage (id.).
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Application 13/008,940
fuse and circuit breaker combination, which the Examiner finds are two
separate electrically interconnected devices (id. at 8). Nonetheless, the
Examiner emphasizes that whether Morris 1 's device is related to, or is, a
circuit breaker or not is not relevant, because the claimed structure reads on
the Morris 1 structure (id. at 9).
In order to properly consider the issues in this case, we begin,
appropriately, with the claim's words. See Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) ("Only
when a claim is properly understood can a determination be made ...
whether the prior art anticipates and/or renders obvious the claimed
invention."); see also Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1567 (Fed. Cir. 1987) ("Analysis begins with a key legal question-what is
the invention claimed?"). During examination, claim terms are given their
broadest reasonable construction consistent with the specification. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Under a broadest reasonable interpretation, words of the claim must
be given their plain meaning, unless such meaning is inconsistent with the
specification. The plain meaning of a term means the ordinary and
customary meaning as would be understood by one of ordinary skill in the
art in question at the time of the invention. Phillips v. A WH Corp., 415 F .3d
1303, 1312-13 (Fed. Cir. 2005) (en bane); Honeywell Int'! Inc. v. Univ.
Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). The ordinary and
customary meaning of a term may be evidenced by a variety of sources,
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including the words of the claims themselves, the specification, drawings,
and prior art.
We determine that the Examiner's interpretation of a fusible switch
disconnect device and a circuit breaker as used in the claims and applied
prior art represents the most appropriate broadest reasonable interpretation.
We credit the Examiner's thorough analysis of Appellants' patent and non-
patent literature evidence, as well as the Douglas Declaration, which we
adopt as our own, without repetition here.
There is no dispute that claim 1 includes a fuse which is a device that,
upon a predetermined overcurrent, automatically permanently opens the
circuit due to damage (melting) to the fuse's fusible element, e.g., "a
disconnect housing adapted to receive and engage at least a portion of a
removable electrical fuse ... including ... a fusible element ... configured
to permanently open the circuit path in response to a predetermined
electrical current condition" (claim 1 ). Moreover, claim 1 (a portion is
reproduced below with the limitations at issue italicized) also includes
structure for automatically opening the circuit on a predetermined
overcurrent without damage:
a mechanism operable to cause the at first switch contact
to move to the open position, wherein the mechanism comprises
an electromagnetic coil and a linkage engageable by the
electromagnetic coil when the electromagnetic coil is energized
and causing the first switch contact to move;
a detecting element configured to detect an actual
electrical current condition through the circuit path of the
fusible element; and
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Application 13/008,940
a controller responsive to the detecting element and in
communication with the electromagnetic coil, the controller
configured to:
compare an elapsed duration of the actual electrical
current condition with a predetermined time-current expectation
for a permanent opening of the fusible element, and
if a deviation between the compared elapsed duration of
the actual electrical condition and the predetermined time-
current expectation for permanent opening of the fusible
element exceeds a predetermined threshold, cause the
electromagnetic coil to be energized to open the first switch
contact and attempt to avoid the permanent opening of the fuse
and prevent a corresponding need to replace the fuse.
Appellants describe the device of claim 1 in the context of Figures 30,
33, 34, and 36 and Specification paragraphs 138-150, 169, 170, 175, 177,
181, 184, 193-195, 199, 200, and 203 (Appeal Br. 4--14). Although
Appellants describe the device depicted and described therein as a fusible
switching disconnect device, Appellants fail to direct our attention to any
structural difference between the device depicted and described in the
drawings and Specification, as well as recited in the claims, and a circuit
breaker as either described by the definitions proffered by the Examiner or
the definitions presented by Declarant Douglass at paragraphs 21 and 31.
Indeed, Declarant presents, at paragraph 3 7, three definitions-switching
device, switch (mechanical), and circuit-breaker-which are not drafted to
be mutually exclusive. In other words, a mechanical switch is a switching
device, and a circuit-breaker is a mechanical switch. Although the definition
of a mechanical switch includes the note, "[a] switch may be capable of
making but not breaking short-circuit currents" (id.) (emphasis omitted), this
note is permissive rather than restrictive. Further, as indicated above, claim
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1 includes structure for automatically opening or breaking the circuit on a
predetermined overcurrent, thereby placing the device of claim 1 more
appropriately in the third definition for "circuit breaker."
We further note that Declarant states, at paragraph 41, that
Appellants' switching device "is comparatively smaller than a conventional
in-line fuse and circuit breaker combination," consistent with Specification
paragraph 156. Such a comparison does not unequivocally distinguish the
device of Appellants' claims from a circuit-breaker as defined by Declarant
and the Examiner, but merely indicates that Appellants' device is smaller
than unidentified "conventional in-line fuse and circuit breaker
combinations." Moreover, we remain cognizant of the adage that "the name
of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998) (quoting Giles Sutherland Rich, Extent of Protection and
Interpretation of Claims-American Perspectives, 21 Int'l Rev. Indus. Prop.
& Copyright L. 497, 499 (1990)). Thus, regardless of the merits of
Appellants' attempt to distinguish the disclosed device from a circuit
breaker, Appellants fail to persuasively demonstrate that the claims exclude
circuit breaker structure.
Accordingly, for the reasons given in the Final Office Action and the
Examiner's Answer, as well as above, we find no special meaning for either
fusible switch disconnect device or circuit breaker. Therefore, we interpret a
fusible switch disconnect device, according to its common meaning, to be a
mechanical switch device for opening and closing a circuit with an in-line
fuse therein for permanent opening of the circuit upon overcurrent in the
circuit, and which may or may not include additional functionality such as
structure for automatically opening the circuit upon a predetermined current
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in the circuit without damage. When this additional structure and function is
present, we interpret such a device to be, according to its common meaning,
a circuit breaker with an in-line fuse. Our review of the rejections
maintained by the Examiner is based on these interpretations.
Rejection 1:
Independent claim 63 is reproduced from the Claims Appendix to the
Appeal Brief. The limitation at issue is italicized.
63. A circuit protection device comprising:
a fusible switch disconnect assembly comprising:
a housing configured to receive at least a portion of a
removable electrical fuse including a fusible element;
a first and second conductive terminal in the housing and
configured to define a first portion of a circuit path in the
housing;
wherein each of the first and second terminal
element includes a switch contact facilitating a
switchable connection and disconnection of the first and
second conductive terminal;
wherein when the removable electrical fuse is
received in the housing, the first portion of the circuit
path is connected to the fusible element;
a third conductive terminal and configured to define a
second portion of a circuit path in the housing, wherein when
the removable electrical fuse is received in the housing, the
second portion of the circuit path is connected to the fusible
element;
a sensor configured to detect an actual electrical current
condition in at least one of the first and second portions of the
circuit path; and
a controller configured to:
compare an actual electrical current detected with
the sensor in at least one of the first and second portions
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of the circuit path to a predetermined electrical current
condition set point; and
switchably disconnect the electrical connection
between the first and second conductive terminal when
the sensed actual electrical current condition corresponds
to the predetermined set point;
wherein neither of the first and second portions of
the circuit path includes a circuit breaker.
The Examiner rejects claim 63 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement (Final Act. 5-7). In
accordance with In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), the
Examiner analyzes a number of factors before concluding that claim 63
lacks enablement in Appellants' disclosure. 12 With regard to the breadth of
the claim at issue, the Examiner determines that the controller functions
recited therein are not enabled on the basis that:
the claims are more specific than the corresponding sections of
the specification, which only in generic terms, describe (e.g.,
par. [00192]-[00197]) the functionality of the processor-based
control circuitry (850) and does not include either the computer
program itself or a reasonably detailed flowchart which
delineates the sequence of operations the program must perform
in order to enable (i.e.[,] to limit) the control circuitry (i.e. the
processor/controller (862)) to perform specific functions as
claimed.
Id. at 5. The Examiner further finds that the level of predictability in the art
is low and that the art is highly technical in nature involving electronics and
12 We note that the Examiner's analysis of the Wands factors appears to be
generically applied to the controller functionality of all the independent
claims, rather than specifically directed to the controller functionality of
claim 63.
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computer programming (id.). The Examiner finds that though the claim is
directed to electrical disconnect devices and computing devices and
programming, the person of ordinary skill in the art would possess less than
ordinary skill in the field of computing devices and programming (id. at
5---6). As to the amount of direction provided, the Examiner finds that
paragraphs 189--196 of the Specification "do not provide any considerable
direction and guidance since they only in generic terms describe the
functionality of the processor-based control circuitry" and do not include a
computer program or a reasonably detailed flowchart (id. at 6). The
Examiner further finds that there are no working examples in the record
(id.). The Examiner concludes that, after consideration of all the factors
identified in Wands, one of ordinary skill in the art would not be able to
make and use the invention of claim 63 without undue experimentation (id.).
Appellants argue that the Douglass Declaration demonstrates that
those skilled in the art would have been able to make and use the invention
of claim 63 without undue experimentation (Appeal Br. 22). In particular,
Appellants note that declarant Douglass states that electrical engineering
curricula have for many years included a working knowledge of
programming and corresponding ability to program controllers (id.).
Appellants further argue that the Specification provides a supporting
description of the controller functionality that, in prose, adequately teaches
how to make and use the device of the claims, including claim 63 (id. at 23-
25). Appellants further assert that the prior art of fusible disconnect devices
is longstanding and well-developed (id. at 25), that there is no evidence
supporting that the art "is in any way unpredictable" (id. at 26), that the
Specification provides detailed and extensive guidance on the electronic
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controls of the devices (id.), that there are working examples disclosed in the
Specification (id. at 27), and that the Douglass Declaration demonstrates that
implementation of the control circuitry to perform the functions recited in
the claims could be accomplished with minimal experimentation (id.).
Appellants' arguments and evidence are persuasive of reversible error
with regard to the lack of enablement of claim 63 pertaining to the controller
functionality recited therein. We note that the Examiner does not respond to
Appellants' arguments and evidence with regard to the controller
functionality. Moreover, as Appellants note (Appeal Br. 38, 41--42),
enablement of a computer-implemented invention, including controller
functionality, can be accomplished by expressing the algorithm "in any
understandable terms including as a mathematical formula, in prose, or as a
flow chart, or in any other manner that provides sufficient structure" (id. at
41 (emphasis omitted) quoting Function Media L.L.C. v. Google Inc., 708
F.3d 1310, 1318 (Fed. Cir. 2013)). Here, not only do we agree that there is
no evidence or reason to expect the art to have a low degree of predictability
and that the level of skill in the art is at least a degree in electrical
engineering with a working knowledge of computer programming, we also
agree that the Specification provides a reasonable level of detail and
guidance, which expresses the algorithm for the controller functionality, in
prose, such that it would not require undue experimentation for one of
ordinary skill in this art to make and use the controller of the claims, and in
particular claim 63.
The Examiner raises a second concern regarding the enablement of
claim 63, finding that the device of this claim as described in the
Specification clearly includes an in-line circuit breaker (Final Act. 6-7). As
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a result, the Examiner concludes that claim 63 is not enabled because it
recites, contrary to this description, that neither the first portion nor second
portion of the circuit path includes a circuit breaker (id.).
Appellants argue that "[ c ]laim 63, interpreted in light of the meaning
of the term 'circuit breaker' to those in the art is clear and directly supported
by at least Figures 30 and 36 ... , could be implemented by constructing the
device shown in Figures 30 and 36 and following the examples described in
relation to Figure 35 without undue experimentation" (Appeal Br. 45; see
also Reply Br. 4 ). Appellants contend that the Examiner's reasoning that
claim 63 includes, by its own language, what it says it does not produces "an
absurd result" (Reply Br. 7). Instead, Appellants urge that "the negative
limitation is logically made because the excluded circuit breaker is different
from the claimed embodiment" (id.). Appellants believe, therefore, that the
Examiner ignores the plain literal meaning of this negative limitation (id.;
see also id. at 11 ).
This argument is not persuasive of reversible error in this aspect of the
Examiner's enablement rejection. As indicated above, we are not persuaded
that the term "circuit breaker," as understood by persons skilled in this art,
excludes the structure recited in claim 63 save for the final negative
limitation. Nor are we persuaded that the structure of Figures 30 and 36,
which Appellants indicate claim 63 is drafted to cover, are not circuit
breakers as properly interpreted as set forth above. Indeed, claim 63 recites
a sensor for detecting an actual electrical current in at least one of the first
and second portions of the circuit path and a controller that compares this
detected actual electrical current to a predetermined electrical current
condition set point and switchably disconnects the electrical connection
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between first and second conductive terminals when the actual electrical
current corresponds to the predetermined set point. In other words, the
structure of claim 63 detects the electrical current and the controller
automatically opens the circuit when that current hits a predetermined set
point, e.g., an overcurrent threshold. Appellants do not argue that any other
structural feature of a circuit breaker is missing from claim 63. Moreover, it
is clear that the Examiner is not simply ignoring the negative limitation of
claim 63, as it is this limitation that creates the issue on which the
Examiner's lack of enablement rejection is based.
Because Appellants have not shown reversible error in the Examiner's
finding that the body of claim 63 recites a circuit breaker structure, we,
likewise, hold that Appellants have not demonstrated reversible error in the
Examiner's finding that the final "wherein" clause, which recites that neither
of the first and second portions of the circuit path includes a circuit breaker,
is incongruent with the remainder of the claim and with the devices
disclosed in Figures 30, 33, and 36 and associated Specification text. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[E]ven assuming that the
examiner had failed to make a prima facie case, the Board would not have
erred in framing the issue as one of 'reversible error"').
Accordingly, we affirm the Examiner's § 112, first paragraph,
enablement rejection of claim 63.
Rejection 2:
The Examiner rejects claims 1, 5-10, 15, 16, 18, 23, 29, 30, 32-36,
39--42, 49, 51-53, 55, 57, and 63 under 35 U.S.C. § 102(b) as anticipated by
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Morris!. Appellants argue claims 1, 5, 15, 16, 29, 49, and 63 separately. 13
In accordance with 37 C.F.R. § 41.37(c)(l)(iv) (2015), the remaining claims
stand or fall with their associated independent claim.
Claim 1
We sustain the rejection of claim 1 based on the findings of fact,
conclusions of law, and rebuttals to arguments well expressed by the
Examiner in the Final Office Action and the Answer, which we adopt as our
own. The following comments are added for emphasis.
Claim 1 recites a circuit protection comprising a fusible switch
disconnect device including a mechanism operable to cause a first switch
contact to move to the open position, a detecting element for detecting an
actual electrical current condition through a circuit path of a fusible element,
and a controller comparing an elapsed duration of the actual electrical
current condition with a predetermined time-current expectation for a
permanent opening of the fusible element and activating the mechanism if
13 Although Appellants mention claims 5-9, 51-53, 55, and 57 (Appeal Br.
70, 72), Appellants do not argue these claims as a group with any
particularity, instead merely stating that they see no reason to conclude that
Morris' device would inherently include the features of these claims.
However, this "separate" argument amounts to no more than a recitation of
the additional limitations of the dependent claim and a generic denial that
the applied references teach or suggest the additional limitations. We and
our reviewing court have long held that such "argument" does not merit
separate consideration. See, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art").
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the deviation between the elapsed duration and the predetermined time-
current expectation exceeds a predetermined threshold. The Examiner finds
that the mechanism, detecting element, and controller, as recited in claim 1,
provides an automatic opening functionality where the predetermined
threshold represents a predetermined overcurrent (Final Act. 26). As such,
the Examiner interprets claim 1 to be a circuit breaker device (id.).
The Examiner finds Morris 1 discloses a fusible switch disconnect
device comprising the structure of claim 1 (Final Act. 11-14). In particular,
the Examiner finds Morris I's device includes in-line fuse 22 that is plugged
into fuse clips 38, 39, a mechanism operable to cause a first switch contact
to open comprising electromagnetic coil 18 and linkage 19 engageable
therewith when the electromagnetic coil is energized to cause the switch
contact to open, and controller 7 monitoring current flow through the circuit
path, comparing the current flow to a predetermined time-current
expectation 30 for permanent opening of the fuse and causing the automatic
opening of the switch contact via energization of electromagnetic coil 18
when a deviation between the detected current and the predetermined time-
current expectation 30 for permanent opening of the fuse exceeds a
predetermined threshold 31 (id. at 12-13).
As indicated above, Appellants attempt to distinguish the claimed
invention from Morris 1 on the basis that the claims recite fusible switch
disconnect devices, whereas Morris 1 describes a circuit breaker device (see
Appeal Br. 4 7). However, for the reasons given by the Examiner and above,
this argument is not persuasive of reversible error. Claim 1 clearly recites a
fusible switch disconnect device including structure for automatically
opening the circuit upon a predetermined current in the circuit without
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damage. Therefore, applying our interpretation of a fusible switch
disconnect device and a circuit breaker set forth earlier, we construe claim 1
as reciting a circuit breaker having an in-line fuse. As such, we are not
persuaded that claim 1 is patentably distinct from an in-line fuse and circuit
breaker combination such as taught in Morris I. Hiniker, 150 F.3d at 1369.
Appellants next argue that, in Morris 1, "neither the long time and
short time intervals [shown in Figure 3] and the associated thermal
protection relay and circuit breaker elements depend on the comparison
recited [in Appellants' claim 1] that, in tum, relates to prevention of the
permanent opening of the fuse" (Appeal Br. 64). Appellants contend that
because the long time and short time intervals in Morris 1 correspond to
conditions that could not cause the fuse to open, there would be no reason to
make such a comparison (id.). Appellants assert that replacement of the fuse
is not an issue during the long and short time intervals that the circuit
breaker and overload relay provide overcurrent protection (id.). Appellants
also assert that Morris 1 's fuse only opens in response to short circuit
conditions with no comparison made corresponding to that recited in claim 1
(id.). According to Appellants, Morris 1 is not operable to avoid permanent
opening of the fuse or preventing its replacement (id.).
Appellants' arguments regarding the operation of the controller to
compare the actual current to the predetermined time-current expectation for
permanent opening of the fuse such that the permanent opening of the fuse is
avoided by opening the circuit are not persuasive of reversible error. As the
Examiner finds, Figure 3 of Morris 1 provides time-current profiles 32, 31,
30, respectively, for a thermal overload relay, the circuit breaker, and the
fuse (Ans. 11 ). The Examiner also finds that because circuit breaker profile
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31 runs substantially parallel and to the left of fuse profile 30, these profiles
are coordinated such that the circuit breaker will open before the fuse,
thereby avoiding permanent opening of the fuse (id.). Further, the Examiner
finds that Morris 1 's controller must necessarily compare an elapsed duration
of the actual electrical current condition with fuse profile 30, because
Morris! monitors current flow in the circuit path of the fuse (id.).
Morris 1 teaches that current is monitored over time, and that short
time overcurrent protection is provided by the circuit breaker (Morris 1 3: 8-
23). Morris I's circuit breaker includes controller (electronic trip unit) 7
described in Scott (id. at 2:23-25 and 35--41). Scott teaches electronic trip
circuit 10 including current sensors 11-13, trip unit signal processor 50, and
resonator 68 providing a clocking reference for signal processor 50, such
that current is monitored over time and compared to the fuse rating or
predetermined time-current expectation for permanent opening of the fuse,
and trips or opens the circuit breaker when the deviation of the monitored
time-current to the fuse rating exceeds the circuit breaker rating (the
predetermined threshold) (Scott, Figs. 1 and 3; 2:28-3:55). Indeed, Scott
clearly teaches that the controller compares actual current conditions to
predetermined overcurrent values to determine whether to provide a signal
to open the circuit breaker (Scott, claim 1). Therefore, the Examiner's
findings regarding Morris 1 's controller functionality is supported by
Morris 1, as evidenced by Scott.
In this regard, Appellants argue that "Morris describes a ... type of
coordination that distinguishes the claimed invention, such that the
functionality of the Morris device and the invention described and claimed
are not the same" (Reply Br. 19). Appellants contend that the present
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invention is not capable of providing the type of coordination shown in
Morris 1 's Figure 3 because it does not include the multiple overcurrent
protection elements that are necessary to achieve such coordination (id. at
20). Further, Appellants assert that electronic trip unit protection profile 31
cannot be said to prevent the fuse from opening, but rather to prevent the
thermal damage profile 32 from being exceeded (id. at 21 ). Appellants urge
that, at many time-current values shown in Morris' Figure 3, the circuit
breaker will respond to all types of over-currents because of the presence of
thermal relay protection profile 29 (id.). In other words, according to
Appellants, Morris 1 's circuit breaker does not open before the opening of
the fuse (id. at 21-22).
These arguments misconstrue both claim 1 and Morris. Claim 1
recites that the controller operates the mechanism (circuit breaker) to open
the first switch contact when the deviation between the actual time-current
and predetermined time-current expectation for a permanent opening of the
fusible element exceeds a predetermined threshold. This claim does not
exclude a thermal relay protection nor does this claim limit the
predetermined threshold. As the Examiner finds, the mechanism and
controller together operate as a circuit breaker protection, which is in
addition to the fuse protection. Where the predetermined threshold is set to
be the same as the circuit breaker protection profile, the circuit breaker will
open in most instances before the fuse, thereby avoiding permanent opening
of the fuse and concomitant need to replace the fuse. This is precisely what
is occurring in Morris 1, where the electronic trip unit opens the circuit upon
the detected time-current condition crossing protection profile 31.
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Appellants further argue that Morris 1 's fuse is a cartridge fuse and is
not fairly characterized as "pluggable" (Appeal Br. 65). Appellants urge that
their Specification distinguishes cartridge fuses from plug-in fuses (id.). As
such, Appellants contend that Morris 1 fails to disclose a removable electrical
fuse with a plug-in connection as recited in claim 1 (id.).
This argument is also not persuasive of reversible error. The
Examiner provides, without dispute, a definition for "plug" as meaning "any
of various devices resembling or functioning like a plug: such as a: a male
fitting for making an electrical connection to a live circuit by insertion in a
receptacle (such as an outlet)" (Ans. 15, citing Merriam-Webster.com,
https://www.merriam-webster.com/ dictionary/plug) (emphasis omitted)).
The Examiner further finds that Morris 1 's fuse is plugged into fuse clips 3 8,
39 via fuse terminals 50, 51 (id.). These structures are clearly depicted in
Morris!, Figure 5, and the "plug-in connection" is represented by each fuse
terminal inserted into a respective fuse clip and making an electrical
connection to a live circuit in accordance with the uncontested definition
proffered by the Examiner.
Appellants also argue that Morris 1 fails to teach a mechanism
including an electromagnetic coil engaging a linkage for causing a switch
contact to move (Appeal Br. 66). Appellants assert that Morris I teaches
electromagnet 18, which controls latch 19 as described in Scott, but that
Scott nowhere describes this structure (id.). As such, Appellants contend
that Morris 1 is silent as to whether or not electromagnet 18 interacts with
any structure operable to automatically case the switch contact to move to an
open position (id.).
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This argument is also not persuasive of reversible error. The
Examiner finds that Morris 1 teaches an electromagnet, which inherently has
an electric coil (Ans. 16). In addition, the Examiner finds Scott teaches a
trip relay coil Ri4 (id.). Appellants do not dispute or otherwise address these
findings. Further, Scott teaches that trip relay coil R14 and diode D4 respond
to interrupt the circuit breaker contacts (Scott 3:20-22). Similarly, Morris!
teaches an actuator unit or mechanism including electromagnet 18 which
controls latch (linkage) 19 and responds to instructions from the circuit
breaker trip unit to articulate the associated circuit breaker operating
mechanism to open the circuit (Morris I 2:35--41).
Finally, Appellants argue that Morris 1 fails to teach, "a detecting
element configured to detect an actual electrical current condition through
the circuit path of the fusible element" (Appeal Br. 66) (emphasis omitted).
Appellants contend that there is no need or desire for Morris 1 to detect an
actual electrical current condition through the circuit path of the fusible
element because Morris 1 's fuses are connected on the load side of the
breaker element and the current passes through two other overcurrent
elements before reaching the fuse (id.).
However, the Examiner finds the current flowing through Morris 1 's
fuse is the same current flowing through the other overcurrent elements, the
thermal overload relay and the electronic trip unit (Ans. 14). As such, the
Examiner finds Morris 1 's detecting elements detect the actual electrical
current condition through the circuit path of the overcurrent elements,
including the fusible element of the fuse (id.). Appellants do not dispute or
otherwise address these findings. We further note that Scott supports the
Examiner's findings, in particular Figure 1, which includes detecting
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elements 14--16 for detecting actual electrical current conditions through the
circuit path of the device. Therefore, Appellants' argument that Morris 1
fails to teach a detecting element for detecting current through the circuit
path of the fuse is not persuasive of reversible error.
Accordingly, Appellants have not persuaded us that the Examiner
erred in maintaining the rejection of claim 1 as anticipated by Morris I as
evidenced by Scott. We, therefore, affirm this rejection as to claim 1.
Claim 5
Claim 5 depends from claim 1 and further recites that the
predetermined threshold deviation is selected to emulate the overcurrent
protection of a properly rated fuse. Appellants argue that because Morris 1 's
electronic trip unit operates on an independent protection profile from the
fuse and Morris 1 selectively coordinates the protection profiles of the trip
unit and the fuse, Morris I does not meet the limitation of claim 5 (Appeal
Br. 69). Appellants contend that there is no threshold deviation in Morris 1
(id.). Further, Appellants assert that, in order to emulate the performance of
the properly rated fuse in Morris, trip unit protection profile 31 would need
to correspond to fuse protection profile 30, which it does not (Reply Br.
22-23).
In response, the Examiner finds that Morris 1 's trip unit protection
profile 31 runs substantially parallel to protection profile 30 of the fuse (Ans.
17). As such, the Examiner finds Morris 1 's trip unit protection profile 31
emulates fuse protection profile 30 (id.). Further, the Examiner finds
Morris 1 's trip unit 7 is configured to undertake a time-based and magnitude-
based comparison of the sensed electrical current in the circuit path and a
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predetermined time-based and magnitude-based electrical current baseline or
threshold (id.). While neither Appellants nor the Examiner proffer a
definition for "emulate," we construe this term, according to its broadest
reasonable definition: to strive to equal or excel, or to imitate. 14 We note
that Appellants use the term, "emulate," only once in the Specification, at
paragraph 194. Here, Appellants disclose an embodiment where the
detected time-current condition exceeds what the fuse would have been
expected to open. In such a circumstance, the circuit is tripped or opened,
not by the fuse, but by the tripping mechanism. Appellants suggest that this
scenario could occur due to an improper or defective fuse being installed.
Appellants then disclose that, in any event, the control circuitry for tripping
the circuit "could emulate the performance of ... [a] properly rated fuse"
(Spec. if 194).
We note that claim 1 recites that the predetermined threshold
deviation emulates a properly rated fuse, but does not require that such a
properly rated fuse is the fuse in the fusible switch disconnect device. Thus,
Morris 1 's tripping unit protection profile merely needs to emulate any
properly rated fuse, not necessarily the fuse corresponding to the fuse
protection profile depicted in Figure 3. As the Examiner finds, Morris 1 's
tripping unit protection profile is substantially parallel to fuse protection
profile 30 and, therefore, emulates the overcurrent protection performance of
a properly rated fuse.
14 The term "emulate" is defined as, "to strive to equal or excel" or
"IMITATE; especially: to imitate by means of an emulator." See Merriam-
Webster.com, https://www.merriam-webster.com/ dictionary/ emulate (last
visited May 28, 2018).
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Accordingly, we are not persuaded of reversible error in the
Examiner's anticipation rejection of claim 5.
Claim 15
This claim depends from claim 1 and further recites that the controller
is electrically connected to a neutral terminal. The Examiner finds Morris 1
teaches the electronic trip unit of Scott, which depicts in Figure 1 thereof
that controller 50 is electrically connected to a neutral terminal via
conductors 72, 73 (Final Act. 16). In addition, the Examiner finds Morris 1
necessarily has a neutral terminal because Morris 1 's circuit breaker may be
tripped from a remote location (id.).
Appellants argue that since Scott's Figure 1 represents a circuit
breaker schematic rather than a fusible switch disconnect device, claim 15 is
not anticipated (Appeal Br. 70). This argument is not persuasive of
reversible error as it is based on an incorrect interpretation of a circuit
breaker and a fusible switch disconnect device as used in the claims and the
applied prior art.
Claim 16
This claim depends from claim 15 and further recites an overvoltage
detecting element connected between one of the line and load side terminals
and the neutral terminal. Appellants argue that the Examiner misinterprets
elements 26-28 in Scott's Figure 1 as varistors (Appeal Br. 70). Appellants
also contend that because Scott does not describe elements 26-28 and
varistors are known to be shown with symbols other than those
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corresponding to elements 26-28, there is some ambiguity as to what those
elements are (Appeal Br. 70; Reply Br. 28).
Appellants' argument is not persuasive of reversible error. Although
Appellants argue that other symbols have been used to depict varistors in
circuit schematics, Appellants neither dispute that the symbol Scott uses in
Figure 1 for elements 26-28 was known to depict a varistor nor assert that
this symbol is used to depict electrical elements other than a varistor.
Therefore, Appellants fail to show any ambiguity in the meaning of varistors
26-28 in Figure 1 of Scott.
Appellants further argue that "it is not evident how the elements 26,
27 and 28 could be fairly characterized as connected between one of the line
and load side terminals and the neutral terminal as claim 16 recites" (Appeal
Br. 70). However, the Examiner finds that the varistors 26-28 in Scott's
Figure 1 are overvoltage detecting elements that are connected between one
of the line and load side terminals and the neutral terminal (Ans. 18).
Appellants do not respond to this latter finding. Therefore, Appellants fail to
persuade us of reversible error in the Examiner's anticipation rejection of
claim 16.
Claim 29
Independent claim 29 is reproduced below from the Claims Appendix
to the Appeal Brief. The limitations at issue are italicized.
29. A circuit protection device comprising:
a fusible switch disconnect assembly comprising:
a disconnect housing adapted to receive and
engage at least a portion of a removable overcurrent
protection fuse, the overcurrent protection fuse including
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first and second terminal elements and a fusible element
electrically connected therebetween, the fusible element
defining a circuit path and being configured to
permanently open the circuit path in response to a
predetermined overcurrent condition experienced in the
circuit path;
at least a first fuse terminal in the disconnect
housing and configured to establish a connection with the
circuit path when the first fuse terminal is received and
engaged therewith;
a line side terminal in the disconnect housing and
providing an electrical connection to a line side electrical
circuit;
at least a first switch contact in the disconnect
housing and provided on the first fuse terminal;
at least a second switch contact in the disconnect
housing and provided on the line side terminal;
a pair of switchable contacts selectively
positionable relative to the first and second switch
contacts in an open position and a closed position to
respectively connect or disconnect an electrical
connection between the first and second switch contacts;
and
electronic circuitry configured to:
monitor an elapsed current flow through the
line side terminal; and
compare the monitored elapsed current flow
through the line side terminal to a baseline set of
time-current data expectation for permanent
opening of the fusible element.
A claim is anticipated only where "each and every limitation is found
either expressly or inherently in a single prior art reference." Celeritas
Techs., Ltd. v. Rockwell Int'!. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).
"[A] prior art reference without express reference to a claim limitation may
nonetheless anticipate by inherency." In re Omeprazole Patent Litig., 483
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F.3d 1364, 1373 (Fed. Cir. 2007). However, "[i]nherency ... may not be
established by probabilities or possibilities." In re Montgomery, 677 F.3d
1375, 1380 (Fed. Cir. 2012).
The Examiner finds Morris 1 teaches a circuit protection device
comprising, inter alia, fuse 22 including first and second terminal elements
50, 51, at least first terminal 9, and at least one switchable contact that is
inherently present and selectively positionable between open and closed
positions (Final Act. 14). Appellants argue that the fuses in Morris I's
device "are provided in relation to the load side terminals" and the fuse
terminals are not described as having a switch contact (Appeal Br. 70). In
addition, Appellants assert that because Morris 1 does not describe any line
side terminals, there is no reason to believe that any line side terminal
includes a switch contact (id.). Appellants contend that because Morris 1
includes a breaker element and a thermal overload relay, there is no need or
desirability to include a pair of switchable contacts selectively positionable
to open and close (id. at 70-71).
The Examiner fails to respond to Appellants' arguments. In addition,
we note that Appellants describe the first and second switch contacts 7 66,
784 and pair of switchable contacts 778, 780 as depicted in Figure 30
(Appeal Br. 7-8). At best, the Examiner's inherency finding suggests a
single pair of switch or switchable contacts, rather than four such contacts as
recited in claim 29. The Examiner fails to direct our attention to any
evidentiary teaching or otherwise provide a reasoned basis for finding that a
four contact arrangement as recited in claim 29 and depicted in Figure 30
would have been inherent to the Morris! device. Accordingly, we reverse
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the Examiner's anticipation rejection of claim 29, as well as that of
dependent claims 30, 32-36, and 39--42.
Claim 49
Independent claim 49 is reproduced below from the Claims Appendix
to the Appeal Brief. The limitation at issue is italicized.
49. A circuit protection device comprising:
a fusible switch disconnect assembly comprising:
a housing configured to removably receive an
overcurrent protection fuse;
a switch in the housing;
terminals establishing a circuit path through the housing
that is completed by the switch and the overcurrent protection
fuse when the overcurrent protection fuse is received in the
housing and when the switch is closed;
a detecting element configured to sense an actual elapsed
electrical condition in the circuit path that is completed by the
overcurrent protection fuse; and
a processor-based control element configured to operate
the switch to open the current path in view of a predetermined
time-based and magnitude-based electrical condition
expectation that corresponds to a permanent opening of a
properly rated overcurrent protection fuse.
Appellants argue that Morris 1 would not open the current path in view
of a predetermined time-based and magnitude-based electrical condition
expectation that corresponds to a permanent opening of a properly rated
overcurrent protection fuse because Morris 1 's fuse provides an overcurrent
profile that is outside the electronic trip unit protection profile (Appeal Br.
72). Appellants assert that neither Morris I's circuit breaker nor thermal
relay would operate to open the current path "in reference to a permanent
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opening of a properly rated overcurrent protection fuse" (id.). According to
Appellants, if either did open, there would be no purpose for the fuse (id.).
Appellants' argument is not persuasive of reversible error in the
Examiner's anticipation rejection of claim 49. As explained above, the
Examiner finds that Morris 1 's trip unit protection profile 31 emulates the
protection profile of a properly rated overcurrent protection fuse. This
finding is supported in Morris, Figure 3, on the basis that profile 31 is
substantially parallel to fuse protection profile 30. In addition, claim 49
does not require that the properly rated overcurrent protection fuse of the
controller recitation be the same as the overcurrent protection fuse that is be
received in the housing. Moreover, we note that claim 49 recites that the
switch is opened in view of a predetermined time-based and magnitude-
based electrical condition expectation that corresponds to a permanent
opening of a properly rated overcurrent protection fuse. Nowhere in
Appellants' Specification do we find any description of the action of the
switch in view of an expectation. Instead, Appellants disclose that the
operation of the switch occurs upon, in response to, or based on an actual
time-current detection in comparison to a predetermined time-current value.
Because claim 49 only requires that the switch opening occur in view of the
predetermined time-current protection profile of a properly rated fuse,
Morris I's electronic trip unit, which opens in view a/the fuse protection
profile 30 and any properly rated fuse whose protection profile substantially
corresponds to protection profile 31, meets the limitation at issue.
Accordingly, we affirm the Examiner's anticipation rejection of claim
49.
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Claim 63
Independent claim 63 has been reproduced above. Importantly, as we
determined in the § 112, first paragraph, enablement rejection of claim 63,
this claim includes a negative limitation that is incongruent with the
remainder of the claim. Nonetheless, as Appellants note (Appeal Br. 10-11,
citing MPEP § 2143.03), negative limitations cannot be disregarded when
evaluating the patentability of the claimed invention over the prior art.
There is no dispute that Morris 1 includes a circuit breaker structure within
the circuit path (compare Appeal Br. 47, 63-68, 70, 72, 74 with Final Act.
12, 13, 15, 16 and Ans. 14). The Examiner fails to address how Morris I not
only teaches that the circuit path includes a circuit breaker, but also teaches
that it does not. Accordingly, we reverse the Examiner's anticipation
rejection of claim 63.
Rejections 3-6:
The Examiner rejects claims 11-14, 20, 21, 22, 27, 37, 38 and 43 over
Morris I alone, or Morris! in view of Bauer, Murphy, or Morris2 and Miller.
Appellants merely argue that none of these references relates to a fusible
switch disconnect device, but instead relate to circuit breaker devices
(Appeal Br. 74). However, for the reasons discussed above, we are not
persuaded that the mere recitation of a fusible switch disconnect device in
the claims is sufficient to overcome a rejection based on circuit breaker prior
art, especially where, as here, the claims also recite structure for
automatically opening the switch upon detection of an overcurrent situation.
Accordingly, we affirm each of these rejections for the reasons given in the
Final Office Action and the Examiner's Answer, as well as above.
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DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner's Answer, the decision of the
Examiner rejecting claim 63 under 35 U.S.C. § 112, first paragraph, and
claims 1, 5-16, 18, 20-23, 27, 49, 51-53, 55, and 57 under 35 U.S.C.
§ 102(b) and/or§ 103(a) is affirmed.
However, for the reasons given above and in the Appeal and Reply
Briefs, the decision of the Examiner rejecting claims 29, 30, 32--43, and 63
under 35 U.S.C. § 102(b) or§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED-IN-PART
34