Ex parte NOSCHESE et al.

Board of Patent Appeals and Interferences

Jun 26, 1998

08095276 (B.P.A.I. Jun. 26, 1998)

Application for patent filed July 21, 1993. According1
to the appellants, this application is a division of
Application 07/924,129, filed August 3, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROCCO J. NOSCHESE and
FREDERICK D. HOOPER

_____________
Appeal No. 95-1405
Application 08/095,2761
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and FLEMING, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
Appeal No. 95-1405
Application 08/095,276
2
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 21 to 28, which constitute all the
claims remaining in the application.
Representative claim 21 is reproduced below:
21. An electrical busing connector comprising:
a housing;
bus bars mounted in the housing having terminals
extending from the housing; and
a plurality of sponge floats located between the housing
and portions of the bus bars, the sponge floats being
resiliently deformable to enable the bus bars to move in the
housing in a limited range of movement such that the bus bars
can be adjusted relative to the housing by deformation of the
sponge floats.
The following references are relied on by the examiner:
Carlson 2,468,614 Apr. 26,
1949
Edmunds 2,766,405 Oct. 9,
1956
Fisher 2,786,152 Mar. 19,
1957
Davis 3,726,988 Apr. 10,
1973
All claims on appeal stand rejected under 35 U.S.C. §
103. As evidence of obviousness, the examiner relies upon
Appeal No. 95-1405
Application 08/095,276
3
Carlson in view of Davis as to claims 21 to 27 and Fisher in
view of Edmunds as to claim 28.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the Brief and the Answer
for the respective details thereof.
Opinion
The rejection of claims 21 through 27 under 35 U.S.C. §
103 in light of the collective teachings of Carlson and Davis
is sustained. As set forth at page 3 of the Final Rejection,
the examiner considers that Carlson discloses all of the
claimed features except for the use of the sponge floats made
of silicon. We agree. In the context of this reasoning of
the examiner, we note that the claimed sponge floats
comprising silicon is only set forth in dependent claim 24 and
not in independent claim 21, for example. Respective Figure 4
of Carlson shows, for example, bus duct 20 and cover 22
comprising the claimed housing. The various bus bars recited
in claim 21 having terminals extending from the housing as
Appeal No. 95-1405
Application 08/095,276
4
recited in this claim are also shown there extending from bus
duct 20.
Figures 7 to 10 of Carlson relate most directly to that
argued feature relating to the sponge floats. The paragraph
bridging columns 2 and 3 of Carlson discusses the insulating
supports or spacers 42, 43 shown in Figures 7 to 10. In
accordance with the examiner’s reasoning as to dependent claim
25, the examiner considers the claimed plurality of plates
individually sandwiching the bus bars therebetween as
comprising these plates. The various ribs 46, 47 and 48 in
Figures 8 to 10 clearly show that there are regions of these
insulating supports or spacers 42, 43 having plural regions
comprising the claimed sponge floats of claim 21, further
having not only the structure but the functions recited
therein. The material comprising these spacers and the ribs
thereon clearly appears to be resiliently deformable in the
manner claimed because it is stated at the bottom of column 2
that the adjustable nuts on the ends of the rods 38, 39 draw
the channel posts together toward each other and compress the
bus bar collars or spacers together.
Appeal No. 95-1405
Application 08/095,276
5
Although the material comprising these insulating spacers
in Carlson is not disclosed in this reference, claim 1 does
not set forth any specific material either. Obviously, within
35 U.S.C. § 103, the rubber-like silicon material forming the
outside of the bus bar stack in representative Figure 4, for
example, of Davis clearly would have been a more specific
representation of the type of material comprising the spacers
in Carlson disclosed there only in a generic sense. Davis
discloses that this material is well known trademarked
SILASTIC material. The file record contains a copy of the
Condensed Chemical Dictionary from its 1971 edition indicating
the properties of this material at the top of 783 thereof.
The examiner’s comments with respect to this material in the
Final Rejection as well as at pages 3 and 4 of the Answer are
well supported by this dictionary.
As to appellants’ arguments with respect to independent
claim 21 at page 4 of the Brief, much of it is misplaced to
the extent it argues the disclosed invention. Contrary to the
assertion made there, the examiner did not assert that Carlson
did not disclose or suggest a plurality of sponge floats, only
that the composition of them was not in Carlson but in Davis’
Appeal No. 95-1405
Application 08/095,276
6
specific use of SILASTIC material. Additionally, the language
"sponge floats" used in claim 21 is not coextensive with the
statement that they have "sponge-like configurations as
argued." In any event, we find that the insulating
supports/spacers/plates in dependent claim 25, in Carlson
clearly appear to us to perform the stated functions of the
sponge floats in independent claim 21 on appeal.
Appellants also disclose no material of their own nor any
known material to comprise the claimed sponge floats. Thus,
such material was either known or would have been obvious to
this artisan. In re Fox, 471 F.2d 1405, 1407, 176 USPQ 340,
341 (CCPA 1973).
We agree with the examiner’s correlation of dependent
claim 26 upon Carlson’s teachings and showings clearly
indicating the subject matter of this claim on appeal. Note
Figures 2 and 4 of Carlson which show the staggered appearance
of joints 30, 31 and 32 of the particular bus bars 14.
Inasmuch as appellants have not argued the particulars of
dependent claims 22 through 24 and 27, the rejection of them
is sustained as well.
Appeal No. 95-1405
Application 08/095,276
7
To the extent appellants argue in their concluding
remarks at page 6 of the Brief that the examiner has not set
forth a prima facie case of obviousness because the examiner’s
position has not embraced the problems the appellants have
solved, this position is misplaced. In an obviousness
determination, the prior art need not suggest solving the same
problem set forth by appellants. In re Dillon, 919 F.2d 688,
692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (in banc)
(overruling in part In re Wright, 848 F.2d 1216, 1220, 6
USPQ2d 1959, 1962 (Fed. Cir. 1988), cert. denied, 500 U.S. 904
(1991).
Turning lastly to the rejection of independent claim 28
under 35 U.S.C. § 103 in light of the collective teachings of
Fisher in view of Edmunds, we reverse this rejection. The
statement of the rejection of this claim is stated at page 3
of the Answer to be found in Paper No. 5, which is the Final
Rejection. At pages 3 and 4 of this rejection, the examiner
asserts that Fisher discloses everything claimed except for
the housing with receiving slots. For all the reasons set
forth by the appellants in the paragraph bridging pages 5 and
6 of the Brief, we will reverse this rejection.
Appeal No. 95-1405
Application 08/095,276
8
When the rejection of claim 28 is considered with Edmunds
being the base reference teaching essentially all of the
subject matter including the various slots to receive the
various bus bars according to the detailed configuration set
forth in claim 28 in light of Fisher’s teachings, we also
reverse this view of the rejection. The single moulded
version of the invention in Edmunds in Figure 1 is shown in
the other figures as comprising a support moulding 10
comprising the claimed base portion as well as the separate
premoulded support 29 or claimed top portion with grooves and
recesses for the bus bars therein in Figure 2. The flatness
of the bus bar sections claimed is certainly apparent in this
figure as well as broadly recited planes of the bus bar
sections being arranged generally perpendicular to the plane
of the base portion 10. The bus bars 22a through 22c are
snugly positioned in the receiving slots of premoulded support
unit 29 in Figure 2 in a general noncrossing relationship
relative to each other in the manner claimed. The ratio of
the height to the width of the bus bars 22 would have been an
Appeal No. 95-1405
Application 08/095,276
9
obvious variation to the artisan within 35 U.S.C. § 103 as
would the placement of the bus bars in slots in the base
portion rather than in the top portion 29 as taught.
Although the removable circuit breakers 25 of Edmunds
comprise the claimed limiters, they are not configured as
three pairs which are "electrically connecting a first set of
the conductors to the two other sets of conductors" as
claimed. Fisher’s teachings are no help in this regard. This
language of claim 28 is consistent with the showing in Figure
8 of appellants’ disclosed invention where incoming three
phase conductors connect with terminals A, B and C to be split
in a Y splitter fashion by interconnecting limiters to branch
A1, B1 and C1 comprising one branch and branch A2, B2 and C2
comprising a second branch. There is no teaching or
suggestion within the collective teachings and suggestions of
Edmunds and Fisher which would have indicated to the artisan
the specific configuration of a first set of conductors being
connected to the other two sets of conductors by means of
Appeal No. 95-1405
Application 08/095,276
10
three pairs of limiters in the manner set forth at the end of
claim 28 on appeal.
In view of the foregoing, we have sustained the rejection
of claims 21 to 27 under 35 U.S.C. § 103 but have reversed the
rejection of claim 28 under 35 U.S.C. § 103. Accordingly, the
decision of the examiner is affirmed-in-part.
AFFIRMED-IN-PART
)
JAMES D. THOMAS )
Administrative Patent Judge )
Appeal No. 95-1405
Application 08/095,276
11
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL L. FLEMING )
Administrative Patent Judge )
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