Ex Parte McCoy et al

Patent Trials and Appeals Board

Mar 28, 2014

11796995 - (D) (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/796,995 04/30/2007 Brian Timothy McCoy 2006P08747US01 4729
28524 7590 03/31/2014
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
TALPALATSKI, ALEXANDER
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
03/31/2014 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 BRIAN TIMOTHY MCCOY and
THOMAS WILLIAM HOLLAND
________________

Appeal 2012-000614
Application 11/796,995
Technology Center 2800
________________

Before TERRY J. OWENS, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000614
Application 11/796,995

2

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5 and 7-15. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claims a system for shunting a circuit breaker.
Claim 1 is illustrative:
1. A system comprising:
a bimetal restraint adapted to restrain a bimetal of a
circuit breaker from deformation beyond a predetermined
threshold during a short circuit event, said bimetal restraint
adapted to act as a shunt during said short circuit event to
transfer electrical energy from an electrical energy source to a
load side lug of said circuit breaker, said bimetal restraint not
attached to a cover of said circuit breaker and said bimetal
restraint releasably seated in a circuit breaker case of said
circuit breaker.

The Reference
Lias US 6,515,569 B2 Feb. 4, 2003
The Rejection
Claims 1-5 and 7-15 stand rejected under 35 U.S.C. § 102(b) over
Lias.
OPINION
We reverse the rejection. We need to address only the sole
independent claim, i.e., claim 1. That claim requires a bimetal restraint
releasably seated in a circuit breaker case.
Appeal 2012-000614
Application 11/796,995

3
“‘[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ Specification
defines “releasably” as “capable of being freed, in a substantially
non-destructive manner, from something that binds, fastens, or holds back”
(Spec. ¶ 108).
Lias discloses a circuit breaker (1) comprising an electrically
insulating housing (3) and, within the housing (3), a metal bypass
conductor (101) (which the Examiner relies upon as corresponding to the
Appellants’ bimetal restraint (Ans. 4)) (col. 3, ll. 47-48; col. 5, ll. 44-45;
Fig. 1).
The Examiner argues that because Lias’ “case (3) made of insulating
material and a bimetal restraint (101) made of conductive metal (see
lines 44-45 of column 5 of the specification) . . . are made of different
materials and are clearly shown in the drawings as two separate structures,
they are inherently capable of being separated and therefore the bimetal
restraint (101) is releasably seated in the circuit breaker case (3)” (Ans. 6-7).
An inherent characteristic must be inevitable, and not merely a
possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA
1981).
The Examiner has not established that Lias’ bypass conductor (101)
inevitably is capable of being freed, in a substantially non-destructive
manner, from within the circuit breaker housing (3). The Examiner’s mere
assertion that Lias’ bypass conductor (101) is “capable of being freed in a
Appeal 2012-000614
Application 11/796,995

4
substantially non-destructive manner from the circuit breaker case due to the
fact that these elements comprise completely distinct physical structures”
(Ans. 7) is not sufficient for establishing that the bypass conductor (101)
inevitably can be unseated from within the circuit breaker housing (3) in that
manner.
Accordingly, we reverse the rejection.
DECISION/ORDER
The rejection of claims 1-5 and 7-15 under 35 U.S.C. § 102(b) over
Lias is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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