Ex Parte Fong et al

Patent Trial and Appeal Board

Oct 27, 2016

13905980 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/905,980 05/30/2013
45740 7590 10/27/2016
HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
FIRST NAMED INVENTOR
Robert Fong
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.
T&B 2376 DIVl 8528
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3631
MAILDATE DELIVERY MODE
10/27/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT FONG and DANIEL GARDNER
Appeal2014-008516
Application 13/905,980
Technology Center 3600
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Fong and Daniel Gardner ("Appellants") 1 appeal under
35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-5 under
35 U.S.C. § 103(a) as unpatentable over Williams (US 1,190,971, iss.
July 11, 1916) and Earle (US 2,263,620, iss. Nov. 25, 1941), presenting two
alternative theories of obviousness. See Final Act. 2-5. The Board has
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Thomas & Betts International, Inc. as the real
party in interest. Br. 3.
Appeal2014-008516
Application 13/905,980
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. A housing for mounting a high voltage electrical device
onto a utility support structure comprising:
a lower housing which is rotatable and which houses a
high voltage electrical device;
a mounting bracket that at least partially surrounds the
lower housing for mounting the lower housing onto the utility
support structure;
a fastener for selectively preventing the lower housing
which houses the high voltage electrical device from rotating
within the mounting bracket when the fastener is tightened or for
allowing the lower housing which houses the high voltage
electrical device to rotate within the mounting bracket when the
fastener is loosened;
wherein the mounting bracket comprises a ring that at least
partially surrounds the lower housing that houses the high
voltage electrical device and at least two parallel side walls
which protrude from the ring of the mounting bracket and a rear
wall which is perpendicular to the side walls and which connects
the side walls and fixedly abuts the utility support structure for
mounting to the utility support structure; and
wherein the mounting bracket and ring comprise a one-
piece component.
Br. 14 (Claims App.).
ANALYSIS
The second of the Examiner's two theories of obviousness starts with
Earle, which the Examiner finds to disclose a high voltage electrical device
(a lightning arrester) including a lower housing (lower section 1 of
housing A) with a lip (the lowest corrugation in housing section 1 ). Final
Act. 4. The Examiner further finds Earle discloses a mounting bracket
(support 2). Id. According to the Examiner, Earle thereby discloses all the
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Application 13/905,980
limitations of claim 1, "except for the mounting bracket including a ring
[and] at least two parallel side walls[, and] being one-piece." Id.
The Examiner cites Williams as disclosing a lower housing (column
or post 2) and a mounting bracket (hanger 1 ). Id. The Examiner finds
Williams's mounting bracket includes a ring (forming the circular opening
within hanger 1 ), at least two parallel side walls, a rear wall, and an aperture
for receiving a fastener (screw 3), and comprises a one-piece component. Id.
at 4--5. The Examiner further finds Williams' s mounting bracket is attached
to a utility support (brace 6). Id. at 4. The Examiner determines it would
have been obvious to modify Earle to have the mounting bracket of
Williams, to "provid[ e] a strong, lightweight, and durable bracket for
supporting a high voltage device which prevents rotation of the lower
housing." Id. at 5.
Appellants argue Williams is non-analogous art to the subject matter
of Appellants' application. Br. 8; Response to Aug. 30, 2013 Office Action
(filed Nov. 11, 2013), at 3. Appellants point out Williams discloses "a
hanger [ 1] for the attachment of the crossbraces [ 6] in the track construction
for dry kilns," and hanger 1 fits over post 2, which is "about two and one-
half inches in diameter." Response (filed Nov. 11, 2013), at 3 (quoting
Williams, col. 1, lines 8-18). Appellants contend their application, by
contrast, concerns a "utility support structure," for supporting a high voltage
electrical device, which Appellants assert would be much larger in
magnitude than 2.5 inches in diameter. Id. Appellants further contend
"housings for high voltage electrical devices are designed and purchased by
highly specialized engineers who work in the high voltage utility industry
and have no specialized knowledge of dry kilns," so "applications and
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Appeal2014-008516
Application 13/905,980
devices in the dry kiln art would not be obvious to highly skilled engineers
in the high voltage utility industry." Pre-Appeal Brief Request for Review
(filed Feb. 26, 2014), at 2.
A prior art reference is analogous to an application ( 1) if it is from the
same field of endeavor as the application, regardless of the problem
addressed, or (2) if the reference is not within the field of the inventor's
endeavor, but it is nonetheless reasonably pertinent to the particular problem
with which the inventor is involved. In re Bigio, 381F.3d1320, 1325 (Fed.
Cir. 2004). We determine Williams is analogous art to Appellants'
application under both conditions. The common field of endeavor is
supporting a structure on a post or a pole. The fact that Williams concerns
supporting dry kilns, whereas Appellants' application concerns supporting
electrical devices, is not in our view a sufficient distinction to establish a
different field of endeavor.
Further, even if there is a different field of endeavor, Williams is
reasonably pertinent to the particular problem with which Appellants are
involved. A reference in a field different from an applicant's endeavor may
be reasonably pertinent if it is one that, because of the matter with which it
deals, would have logically commended itself to an inventor's attention in
considering his or her invention as a whole. In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). The problem faced by
Appellants was using a bracket to mount electrical equipment onto utility
structures, such as transmission or distribution poles. Spec. i-fi-1 2-3.
Williams similarly concerns using a bracket (hanger 1) to mount equipment
on a pole (post 2). It is "not unreasonable in cases such as this, involving
relatively simple everyday-type mechanical concepts, to permit inquiry into
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Appeal2014-008516
Application 13/905,980
other areas where one of even limited technical skill would be aware that
similar problems exist." In re Heldt, 433 F.2d 808, 812(CCPA1970).
Appellants also argue the Examiner errs in finding Earle's lower
section 1 of housing A is a "lower housing which is rotatable and which
houses a high voltage electrical device," as recited in claim 1 (emphases
added). Br. 9-11; see Earle, pg. 1, col. 2, lines 2---6 ("the housing A
comprises a lower cup-like section 1 ... and an upper inverted cup-like
section 3"). Appellants assert lower section 1, instead, "is simply the
exterior shell or 'housing' of the high voltage arrester," "which protects the
internal electrical components of the arrester." Br. 9 (citing Earle, pg. 1,
col. 1, lines 12-18). Appellants contend the claimed lower housing "serves
a completely different purpose" of "mounting a high voltage electrical
device" as set forth in the claim preamble, and "does not comprise any outer
protective shell" of an electrical device. Id. at 9-10. Appellants further
assert claim 1 "do[ es] not describe a high voltage electrical device which is
in direct contact with the one-piece mounting bracket," which differs from
the Examiner's combination that would result in Earle's electrical device
"being received directly by a mounting bracket." Id. at 10. Appellants read
claim 1 as requiring the lower housing to be "receiving a high voltage
electrical device," and Earle's lower housing section 1 does not "house (or
receive) a high voltage electrical device." Id. at 11 (emphases added).
We determine a preponderance of evidence supports the Examiner's
finding that Earle's lower housing section 1 is both "for mounting" and
"houses" a high voltage electrical device, as set forth in claim 1. As to the
mounting function, support 2 surrounds and engages lower housing 1 for
mounting Earle's lightning arrester. Earle, Figs. 1-2, pg. 1, col. 2, lines 3-5.
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Application 13/905,980
As to the housing function, Earle discloses its housing A, comprised of
sections 1 and 3, "will facilitate the manufacture and assembly of the
[lightning] arrester, which will be moisture-proof [and] offer a maximum
flash-over path at the point of juncture" between sections 1 and 3. Earle,
pg. 1, col. 1, lines 1-11, and pg. 2, col. 2, lines 31--46. Thus, lower housing
section 1 serves to protect the various electrical components within
housing A that perform the lightning arrester function of the device, and
therefore "houses" those components, as claimed. Appellants suggest
claim 1 additionally requires the lower housing to "receive" the electrical
device, thereby suggesting the lower housing must be separable from the
electrical device. Br. 11. However, the term "receive" does not appear in
claim 1, and we determine a broadest reasonable construction of the term
"housing" in claim 1 includes a protecting covering that is not separable
from the electrical device during the normal use of the device.
Appellants further argue the Examiner errs in finding Williams' s
column or post 2 is a "lower housing" as recited in claim 1, because post 2 is
"is not any type of housing for any device," and Williams does not disclose
"a housing of any type." Br. 8-9; see Williams, col. 1, lines 30-34.
As discussed above, the Examiner properly found Earle discloses the
claimed lower housing, so the Williams disclosure in this regard is a moot
point, especially in the context of the Examiner's second theory for
obviousness. Given the similar gripping ring structures of Earle's support 2
(which embraces the round lower housing 1) and Williams's hanger 1
(which embraces the round column or post 2), the Examiner's proposed
modification of Earle to replace support 2 with Williams' s hanger 1 is
reasonable, even if post 2 does not house anything. See Ans. 6, 8 ("a
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Appeal2014-008516
Application 13/905,980
mounting bracket ( 1) having a ring shape as that of Williams would be
suitable and capable of holding various/multiple types of cylindrical
members including that of a cylindrically shaped lower housing (1) as taught
by Earle").
Appellants finally contend the Examiner has not provided an adequate
rationale to show that it would have been obvious to modify the high voltage
arrester of Earle to incorporate the hanger used for dry kilns of Williams.
Br. 11-12 (arguing Examiner's first theory of obviousness), 12 (arguing
Examiner's second theory of obviousness). The Examiner's proffered
reason for the combination is that it would "provid[ e] a strong, lightweight,
and durable bracket for supporting a high voltage device which prevents
rotation of the lower housing." Final Act. 5. The conclusory nature of
Appellants' argument in rebuttal does not establish error in the Examiner's
determination, and therefore is not persuasive.
For the foregoing reasons, we sustain the rejection of claim 1 as
unpatentable over Williams and Earle, based on the second of the
Examiner's two theories of obviousness. We therefore need not address the
Examiner's first theory of obviousness. Further, Appellants do not argue for
the patentability of dependent claims 2-5 separately from their common
parent claim 1 (see Br. 8-12), so we likewise sustain the rejection of the
dependent claims.
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Application 13/905,980
DECISION
The Examiner's decision to reject claims 1-5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended, under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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