Ex Parte DeBoer et al

Patent Trial and Appeal Board

Sep 14, 2017

13969768 (P.T.A.B. Sep. 14, 2017)

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.
13/969,768 08/19/2013 John DeBoer 2013P11172 US 8965
28524 7590 09/18/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
HOFFBERG, ROBERT JOSEPH
Orlando, EL 32817 ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN DeBOER, BRIAN TIMOTHY McCOY,
and GUANG YANG
Appeal 2016-007377
Application 13/969,7681
Technology Center 2800
Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Siemens Industry Inc. as the real party in interest.
Appeal Br. 2.
2 In our Opinion, we refer to the Specification filed August 19, 2013
(“Spec.”); the Final Action mailed October 15, 2015 (“Final Act.”); the
Advisory Action mailed October 30, 2015 (“Advis. Act.”); the Appeal Brief
filed March 1, 2016 (“Appeal Br.”); the Examiner’s Answer mailed June 22,
2016 (“Ans.”); and the Reply Brief filed July 25, 2016 (“Reply Br.”).
Appeal 2016-007377
Application 13/969,768
The claims are directed to an electronic circuit breaker and method of
assembly thereof, and an electrical panel system comprising an electronic
circuit breaker. Appeal Br. 20—22 (Claims App’x). Claims 1, 9, and 15,
reproduced below with the disputed claim language italicized, are illustrative
of the claimed subject matter:
1. An electronic circuit breaker, comprising:
a first branch and a second branch each configured to
conduct a respective current;
a first load terminal electrically coupled to the first branch;
a second load terminal electrically coupled to the second
branch;
an electronic processing circuit electrically coupled to the
first branch and to the second branch and configured to monitor
and respond to an electrical condition sensed in the first branch
or the second branch; and
a housing having a transverse width and containing the
first and second branches, the first and second load terminals,
and the electronic processing circuit; wherein:
the housing is configured to have no load neutral terminal
associated with either of the first and second load terminals', and
the transverse width of the housing is no wider than a
transverse width of a single-pole circuit breaker configured to
protect a single electrical circuit.
9. An electrical panel system, comprising:
a panelboard including a plurality of standard circuit
breaker mounting locations; and
an electronic circuit breaker including a first branch and a
second branch, the electronic circuit breaker having no load
neutral terminal associated with an external load, the electronic
circuit breaker occupying on the panelboard a single mounting
location configured to receive a single-circuit single-phase
circuit breaker.
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Appeal 2016-007377
Application 13/969,768
15. A method of assembling an electronic circuit breaker,
comprising:
providing first and second load terminals each configured
to be electrically coupled to a respective electrical load;
providing a single power terminal configured to receive a
single phase of power;
coupling a first sensor and a first tripping mechanism
between the single power terminal and the first load terminal to
form a first branch, the first sensor configured to sense a first
electrical condition;
coupling a second sensor and a second tripping
mechanism between the single power terminal and the second
load terminal to form a second branch, the second branch parallel
to the first branch and the second sensor configured to sense a
second electrical condition;
coupling an electronic processing circuit to the first branch
and to the second branch, the electronic processing circuit
configured to monitor and respond to the first electrical condition
and to the second electrical condition; and
retaining the first and second load terminals, the single
power terminal, the first and second sensors, the first and second
tripping mechanisms, and the electronic processing circuit in a
housing, wherein the housing retains no load neutral terminal
associated with either of the first and second load terminals.
Appeal Br. 20-22 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Fello et al. (“Fello”) US 5,453,723 Sept. 26, 1995
Mason, Jr. et al. (“Mason”) US 6,538,862 B1 Mar. 25, 2003
DeBoer et al. (“DeBoer”) US 2010/0238611 Al3 Sept. 23, 2010
3 Issued May 4, 2016 as US 9,349,559.
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Appeal 2016-007377
Application 13/969,768
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections under 35 U.S.C § 103(a):
(1) claims 1—8 and 15—20 over DeBoer and Fello; and
(2) claims 9—14 over DeBoer and Mason. Final Act. 5, 9.4 5
OPINION
Rejection of claims 1—8 as obvious over DeBoer and Fello
Appellants argue independent claim 1 and its dependent claims 2—8 as
a group. Appeal Br. 7. We limit our discussion of the rejections of these
claims to claim 1. 37 U.S.C. § 41.37(c)(l)(iv).
The Examiner finds that DeBoer teaches all elements of claim 1 with
the exception that DeBoer fails to disclose a housing configured to have no
load neutral terminal associated with either of the first and second load
terminals, in other words, that DeBoer discloses a housing configured to
have at least one load neutral terminal. Final Act. 5. The Examiner finds
that Fello teaches a housing configured to have no load neutral terminal
associated with either of the first and second load terminals. Id.', see also
Advis. Act. 2. We understand the Examiner’s finding to be that Fello’s
pigtail 17[5] is a load neutral terminal, but Fello’s housing is not configured
4 We note that the Examiner also objects to claim 10 as not further limiting
claim 9, from which it depends. Final Act. 4. We do not review the
substance of the objection. Objections or other requirements imposed by an
Examiner are reviewed by way of a petition to the Director under Rule 181.
37C.F.R. § 1.113(a) (2013).
5 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Appeal 2016-007377
Application 13/969,768
to have or retain a load neutral terminal or terminals associated with either of
the first and second load terminals. See Advis. Act. 2. The Examiner
concludes that it would have been obvious to one of ordinary skill at the
time of the invention to modify the electronic circuit breaker of DeBoer with
the load neutral terminal of Fello in order to have a single neutral connection
in order to reduce assembly time of the load circuits. Id. at 5—6.
Appellants argue, inter alia, that Fello does not teach “a housing
configured to have no load neutral terminal associated with either of the first
and second load terminals,” i.e., Appellants argue that Fello teaches a
housing that is configured to have a load neutral terminal associated with at
least one load terminal. Appeal Br. 8. Appellants contend that Fello
describes the inclusion of a load neutral terminal in the form of a tang 125[6]
connected to a neutral conductor 123. Appeal Br. 8; see also Reply Br. 2.
An annotated portion of Fello’s Figure 10B is reproduced below:
......... —neutraS conductor >
6 As the Examiner notes at page 9 of the Answer, in the Appeal Brief,
Appellants misidentify tang 125 as “tang 25.” See Appeal Br. 8. Appellants
subsequently correct this error. See Reply Br. 2.
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Appeal 2016-007377
Application 13/969,768
Figure 10B is part of an exploded end view of the circuit breaker
disclosed in Fello. Fello col. 3,11. 21—22. “A neutral conductor 123 also
passes through the two toroidal coils 115 and 117 in a manner discussed in
[ ] U.S. Pat. No. 5,260,676. One end of the neutral conductor 123 is
connected to the pigtail 17 and the other end is connected to a tang 125 of a
load end neutral connector 121.” Id. col. 6,11. 22—24. U.S. Patent No.
5,260,676 (the “’676 patent”) discloses that the magnetic fields generated by
conductors LI and L2 and neutral conductor N cancel (’676 patent, col. 7,11.
27—29), and shows that the load conductors and neutral conductor are within
the circuit breaker {id. at Fig. 10). Fello’s tang 125 is within housing 3. See
Fello Fig. 10B.
Based on the foregoing, we find that Fello discloses a load neutral
terminal (tang 125), and that the housing of Fello is configured to have tang
125 associated with at least a load terminal.
The Examiner also finds that the instant application (“’768
application”) discloses a tang within the neutral circuit, citing specifically
tang 902 which is secured to the neutral line pigtail. Ans. 9. The Examiner
reproduces Figure 9B of the ’768 application to illustrate his reasoning.
An annotated version of Figure 9B of the ’768 application is
reproduced below:
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Appeal 2016-007377
Application 13/969,768
Figure 9B is a perspective view of an electrical harness assembly 900
discussed in the ’768 application. Spec. 1 83. The first end 117A of the
neutral line pigtail 117 may be secured to tang 902 of the neutral line pigtail,
and the second end 117B may be adapted to be attached to a panelboard
neutral (not shown). Id.
Figure 9B illustrates an embodiment that is not claimed. Indeed,
Figures 1 through 17 of DeBoer are identical to Figures 1 through 17 of the
’768 application. Compare DeBoer Figs. 1—17 with ’768 application Figs. 1—
17. These figures illustrate embodiments that have load neutral terminals, in
contrast to claim 1.
The Examiner notes that the neutral line pigtail of the embodiment
being claimed (having no load neutral terminal) in the ’768 application is
disclosed as being substantially similar to the embodiment having one or
more load neutral terminals, except for the omission of load neutral
terminals and their associated electrical conduits and wiring. Ans. 10. The
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Appeal 2016-007377
Application 13/969,768
Examiner reasons that, under the broadest reasonable construction of “load
neutral terminal” in light of the specification as it would be interpreted by
one of ordinary skill in the art, if Fello’s tang 125 is a load neutral terminal,
then tang 902 in the ’768 application is also a load neutral terminal. Id.
During prosecution, claims are given their broadest reasonable scope
consistent with the specification. In re Am. Acad. ofSci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read
in light of the specification, as it would have been interpreted by one of
ordinary skill in the art at the time of the invention. Id. “Even under the
broadest reasonable interpretation, the Board’s construction ‘cannot be
divorced from the specification and the record evidence’ and ‘ must be
consistent with the one that those skilled in the art would reach. ’ A
construction that is ‘ unreasonably broad’ . . . will not pass muster.”
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(internal quotation marks and citations omitted).
The Examiner’s construction of “load neutral terminal” as
encompassing tang 902 in the ’768 application is overly broad. Tang 902
connects pigtail 117 to the circuit board; the other end of the pigtail connects
to the neutral panel. See, e.g., ’768 application, Fig. 19B. In contrast, Fello’s
tang 125 is not connected to the pigtail, but rather is on the end of neutral
conductor 123, opposite the connection to the pigtail. See Fello Fig. 10B.
Fello’s tang 125 is a load neutral terminal; the ’768 application’s tang 902 is
not.
Fello thus discloses a housing configured to have a load neutral
terminal (tang 125) associated with at least a load terminal. Consequently,
Fello does not meet the limitation of a “housing [ ] configured to have no
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Application 13/969,768
load neutral terminal associated with either of the first and second load
terminals,” as required by claim 1.
On this record, we are persuaded by Appellants’ arguments that the
Examiner failed to make a prima facie case of obviousness in rejecting claim
1 over DeBoer and Fello. We, therefore, do not sustain the rejection of
independent claim 1. Appeal Br. 7—15. We also do not sustain the rejection
of dependent claims 2—8.
Rejection of claims 15—20 as obvious over DeBoer and Fello
Independent claim 15 is drawn to a method of assembling an
electronic circuit breaker. Appeal Br. 22 (Claims App’x). Appellants argue
claims 15—20 as a group. Id. at 15. We limit our discussion to claim 15.
The Examiner finds that DeBoer teaches all elements of claim 15 save
for “the housing retaining] no load neutral terminal associated with either of
the first and second load terminals,” which the Examiner finds is taught by
Fello. Final Act. 6. More specifically, the Examiner finds that Fello
discloses or suggests the limitation “because the end of the pigtail 17
connectable to the neutral bar of the load center is not part of the housing;
and therefore, cannot be retained by the housing.” Advis. Act. 2. The
Examiner also finds that “Fello fails to teach, disclose or suggest a load
neutral terminal” for the same reasons as provided for claim 1. Ans. 15—16.
Appellants contend that Fello discloses tang 125 to be a load neutral
terminal for the same reasons as in claim 1, that tang 125 is located in the
housing, and therefore the housing retains a load neutral terminal associated
with either of the first and second load terminal. Appeal Br. 15—16.
For the reasons discussed supra, Fello’s tang 125 is a load neutral
terminal. Tang 125 is retained in housing 3. Fello Fig. 1 OB. Consequently,
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Appeal 2016-007377
Application 13/969,768
we disagree with the Examiner and find that Fello’s housing retains a load
neutral terminal associated with a load terminal and does not meet the
limitation of claim 15.
The Examiner has not shown a prima facie case of obviousness of
claim 15 over DeBoer and Fello and, as a consequence, we do not sustain
the rejection of claim 15. For the same reasons, we do not sustain the
rejection of claims 16—20.
Rejection of claims 9—14 as obvious over DeBoer and Mason
Appellants argue claims 9-14 as a group. Appeal Br. 16.
The Examiner finds that DeBoer teaches all limitations of claim 9
except the limitation: “the electronic circuit breaker having no load neutral
terminal associated with an external load.” Final Act. 9. The Examiner
finds that Mason teaches this limitation. Id. at 9—10. Elaborating, the
Examiner finds that Mason discloses a load terminal associated with two
externals loads (load neutral terminal 122 associated with two load terminals
120s), thus does not disclose a load neutral terminal associated with an (i.e.,
a single) external load. Advis. Act. 2. The Examiner bases this construction
of the limitation on a comparison of claim 9 and claim 10. The Examiner
finds that this construction is required in order for dependent claim 10 to
further its parent claim 9.7 Id. at 9—10.
Claim 9 requires “the electronic circuit breaker having no load neutral
terminal associated with an external load,” and claim 10 requires “no load
7 If the Examiner believes that claim 10 does not further limit claim 9, then
claim 10 should have been rejected under 35 U.S.C. § 112, 4th paragraph, but
was not.
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Appeal 2016-007377
Application 13/969,768
neutral terminals associated with the two load terminals.” Appeal Br. 21
(Claims App’x).
We disagree with the Examiner’s construction of claim 9 as
permitting one load neutral terminal associated with two load terminals. See
Advis. Act. 2. The broadest reasonable interpretation of claim 9 is that no
load terminal may be associated with any external load. See In re Am. Acad.
ofSci. Tech. Ctr., 367 F.3d at 1364. Dependent claim 10 further limits claim
9 by specifying that the electronic circuit breaker comprises two load
terminals and no load neutral terminals associated with the two load
terminals, i.e., no load terminal associated with either of the two load
terminals. See Appeal Br. 21 (Claims App’x).
Under the proper construction, Mason does not teach the limitation of
claim 9 that the Examiner acknowledges is missing from DeBoer. See Final
Act. 9-10. A prima facie case of obviousness cannot be constructed of the
combination of DeBoer and Mason. We do not sustain the Examiner’s
rejection of claim 9 or its dependent claims 10—14.
CONCLUSIONS OF LAW
The Examiner reversibly erred in rejecting claims 1—8 and 15—20 as
obvious over DeBoer and Fello. The Examiner also reversibly erred in
rejecting claims 9-14 as obvious over DeBoer and Mason.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—20 is
reversed.
REVERSED
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