Ex Parte Dauer et al

Patent Trial and Appeal Board

Oct 23, 2018

14360945 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/360,945 05/28/2014
95683 7590 10/25/2018
Ley dig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Klaus Dauer
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.
814546 5462
EXAMINER
HOMZA, LISA NHUNG
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS DAUER and ANKE JUELICH
Appeal2017-000544
Application 14/360,945
Technology Center 2800
Before JEREMY J. CURCURI, KARA L. SZPONDOWSKI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6, 7, and 9. Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b). We heard the appeal on October 17, 2018.
Claim 4 is rejected under 35 U.S.C. § l 12(a) as lacking written
description support. Final Act. 6-7.
Claim 1--4, 6, 7, and 9 are rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over Schmitz (US 2009/0127229 Al; May 21, 2009) and
Yamagata (US 4,451,718; May 29, 1984). Final Act. 7-14.
Appeal2017-000544
Application 14/360,945
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to a "permanent magnet arrangement for
an arc driver arrangement for an electrical switching device with a
permanent magnet and a housing made of electrical insulating material."
Spec. ,r 1. Claim 1 is illustrative and reproduced below:
1. A permanent magnet arrangement configured for
an arc driver arrangement for an electrical switching device, the
permanent magnet arrangement comprising:
a permanent magnet configured to be received by a
receiving chamber of the electrical switching device, wherein a
portion of the permanent magnet protrudes from the receiving
chamber when received therein; and
a housing directly connected to the permanent magnet
and including electrical insulation material, wherein the
housing is configured to enclose and electrically insulate the
portion of the permanent magnet that protrudes from the
receiving chamber.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
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Appeal2017-000544
Application 14/360,945
ANALYSIS
THE WRITTEN DESCRIPTION REJECTION OF CLAIM 4
Contentions
The Examiner finds claim 4 lacks written description support. Final
Act. 6-7. In particular, the Examiner finds "[i]n claim 4, the phrases:
'second receiving chamber', 'second permanent magnetic', 'second
permanent magnetic ... received by the second receiving chamber', 'second
permanent magnet protrudes from the second receiving chamber', lack
written description." Final Act. 7; see also Ans. 2-3.
Appellants present the following principal argument:
By describing a second switching contact arrangement
constructed identically to the first switching contact
arrangement, and by describing a second arc driver arrangement
constructed in the same way as a first arc driver arrangement,
the specification has, for each component of the first switching
contact arrangement and of the first arc driver arrangement,
described a corresponding second component in sufficient
detail that one skilled in the art can reasonably conclude that the
inventor had possession of each such corresponding second
component.
App. Br. 4--5; see also Reply Br. 2.
Our Review
"[T]he test for sufficiency [ of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane).
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Appeal2017-000544
Application 14/360,945
Appellants' arguments suggest that claim 4 is directed to a second arc
driver arrangement. In contrast, we conclude that claim 4 is directed to the
addition of a second permanent magnet arrangement to the arc driver
arrangement recited in claim 3. Nonetheless, we find Appellants' have
adequate written description support.
Figures 1 and 2 depict first switching contact arrangement 13, first arc
driver arrangement 32, and first permanent magnet arrangements 25 (two
magnet arrangements 25 are shown in Figure 2). Figures 1 and 2 also depict
second switching contact arrangement 16, second arc driver arrangement 33,
and second permanent magnet arrangements 26 (two magnet arrangements
26 are shown in Figure 2). Figure 3 depicts a permanent magnet 34 and
housing 35. See also Spec. ,r,r 6-35.
Thus, Appellants provide support for a first arc driver arrangement 32
including a pair of permanent magnets arrangements 25 as recited in claim
4; Appellants also provide support for a second arc driver arrangement 33
including a pair of permanent magnet arrangements 26.
Accordingly, we do not sustain the Examiner's written description
rejection of claim 4.
THE OBVIOUSNESS REJECTION OF CLAIMS 1--4, 6, 7, AND 9 OVER SCHMITZ
ANDY AMAGATA
Contentions
The Examiner finds Schmitz and Yamagata teach all limitations of
claim 1. Final Act. 7-8. In particular, the Examiner finds Schmitz's
permanent magnets 44, 46 (Figures 3 and 7) teach the recited permanent
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Appeal2017-000544
Application 14/360,945
magnet received by a receiving chamber. Final Act. 7-8 ( citing Schmitz
Figures 3 and 7).
Appellants present the following principal arguments:
[T]he permanent magnets 44 and 46 shown in FIG. 3 [ of]
Schmitz are mounted on external sidewalls of a housing but do
not protrude from any receiving chamber, while the permanent
magnets 44 and 46 shown in FIG. 7 of Schmitz are contained
entirely within receiving spaces 56 but do not protrude
therefrom.
App. Br. 5.
In FIG. 3 of Schmitz, first and second permanent magnets 44,
46 are arranged on the outside of the side walls 14. Therefore,
neither magnet 44 nor magnet 46 protrudes from any receiving
chamber of the housing 12. Moreover, Schmitz nowhere
discloses or suggests that any portion of the first and second
permanent magnets 44, 46 is enclosed and electrically insulated
by any housing.
App. Br. 8.
In FIGS. 5 and 6, neither magnet 44 nor magnet 46 protrudes
from any receiving chamber of the housing 12. Moreover,
Schmitz nowhere discloses or suggests that any portion of the
first and second permanent magnets 44, 46 of FIGS. 5 and 6 is
enclosed and electrically insulated by any housing.
App. Br. 10.
Unlike in the embodiments described in FIGS. 1---6 of Schmitz,
the embodiment described in FIG. 7 of Schmitz includes
receiving spaces 56. See Schmitz, paragraph [0044]. However,
Schmitz nowhere discloses or suggests that the magnets 44, 46
protrude from the receiving spaces 56. Therefore, FIG. 7 of
Schmitz and the description thereof at paragraphs [0043]-
[0045] also fail to disclose or suggest a portion of a permanent
magnet that protrudes from a receiving chamber, much less a
housing that encloses and electrically insulates any portion of a
permanent magnet protruding from a receiving chamber.
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Appeal2017-000544
Application 14/360,945
App. Br. 10-11.
In response, the Examiner explains "Figures 3 and 4 of Schmitz
clearly show the permanent magnet ( 44, 46) sticking out and not being flush
with the side walls." Ans. 3.
In the Reply Brief, Appellants argue "Figures 3 and 4 of Schmitz do
not include any receiving chamber and therefore Figures 3 and 4 of Schmitz
do not disclose or suggest permanent magnets protrudingfrom a receiving
chamber." Reply Br. 3. Appellants further argue "permanent magnets 44 and
46 shown in FIG. 7 of Schmitz are contained entirely within receiving
spaces 56 and do not protrude therefrom." Reply Br. 3.
Our Review
We agree with Appellants that the Examiner erred in finding
Schmitz's permanent magnets 44, 46 teach the recited permanent magnet
received by a receiving chamber.
In particular, Figures 3 and 4 of Schmitz depict permanent magnets
44, 46 "arranged on the outside of the side walls 14 and held in place by
disk-shaped holding elements 48, 50." Schmitz ,r 41. As shown in Figure 4
of Schmitz, permanent magnets 44, 46 are not "received by a receiving
chamber," as recited in claim 1 because there is no chamber depicted in
Schmitz. See Schmitz Fig. 4. Further, in Schmitz, there is no "housing []
configured to enclose and electrically insulate the portion of the permanent
magnet that protrudes from the receiving chamber," as recited in claim 1
because sidewalls 14 of Schmitz do not enclose any protruding portions of
magnets 44, 46. See Schmitz Fig. 3.
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Appeal2017-000544
Application 14/360,945
In particular, Figures 5 and 6 of Schmitz depict permanent magnets
44, 46 but permanent magnets 44, 46 are not "received by a receiving
chamber," as recited in claim 1 because there is no chamber depicted in
Schmitz. See Schmitz Fig. 6. Further, in Schmitz, there is no "housing []
configured to enclose and electrically insulate the portion of the permanent
magnet that protrudes from the receiving chamber," as recited in claim 1
because housing 12 of Schmitz does not enclose any protruding portions of
magnets 44, 46. See Schmitz Fig. 5.
In particular, Figure 7 of Schmitz depicts "receiving spaces 56
[receiving] the magnets 44, 46." Schmitz ,r 44. As shown in Figure 7 of
Schmitz, permanent magnets 44, 46 are not "received by a receiving
chamber ... wherein a portion of the permanent magnet protrudes from the
receiving chamber when received therein" as recited in claim 1 because
magnets 44, 46 do not protrude from receiving spaces 56. See Schmitz Fig.
7. Further, in Schmitz, there is no "housing [] configured to enclose and
electrically insulate the portion of the permanent magnet that protrudes from
the receiving chamber," as recited in claim 1 because housing 12 of Schmitz
does not enclose any protruding portions of magnets 44, 46. See Schmitz
Fig. 7.
Finally, Figure 8 of Schmitz depicts "first and second magnets 44, 46
that are arranged in the center receiving area 18 at the height of the air
breaks 42 or 43 of the current paths 22 of the adjacent receiving areas 16 and
20." Schmitz ,r 47. As shown in Figure 8 of Schmitz, permanent magnets 44,
46 are not "received by a receiving chamber ... wherein a portion of the
permanent magnet protrudes from the receiving chamber when received
therein," as recited in claim 1 because magnets 44, 46 do not protrude from
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Appeal2017-000544
Application 14/360,945
receiving area 18. See Schmitz Fig. 8. Further, in Schmitz, there is no
"housing [] configured to enclose and electrically insulate the portion of the
permanent magnet that protrudes from the receiving chamber," as recited in
claim 1 because housing 12 of Schmitz does not enclose any protruding
portions of magnets 44, 46. See Schmitz Fig. 8.
We, therefore, do not sustain the Examiner's rejection of claim 1. We
also do not sustain the Examiner's rejection of claim 2, which depends from
claim 1.
We also do not sustain the Examiner's rejection of claim 3, which
recites
a permanent magnet configured to be received by the
receiving chamber of the casing, wherein a portion of the
permanent magnet protrudes from the receiving chamber when
received therein; and
a housing configured to enclose and electrically insulate
the portion of the permanent magnet that protrudes from the
receiving chamber.
We also do not sustain the Examiner's rejection of claims 4, 6, 7, and
9, which depend from claim 3.
ORDER
The Examiner's decision rejecting claims 1--4, 6, 7, and 9 is reversed.
REVERSED
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