Matthew Rain. Darr et al.

Patent Trials and Appeals Board

Aug 1, 2019

13008988 - (R) (P.T.A.B. Aug. 1, 2019)

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.
13/008,988 01/19/2011 Matthew Rain Darr BUS-027071 CIP6 9895
81735 7590 08/01/2019
Armstrong Teasdale LLP (16463)
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
VORTMAN, ANATOLY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW RAIN DARR
and HUNDI PANDURANGA KAMATH
____________

Appeal 2017-008849
Application 13/008,988
Technology Center 2800
____________

Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON REHEARING
Appellants request rehearing of a Decision on Appeal1 mailed April 2,
2019 affirming the Examiner’s decision rejecting claims 1, 6–10, 16, 17, 20–
22, and 44.2
A Request for Rehearing3 must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised and evidence not previously relied upon in the Briefs
before the Board are not permitted in a Request for Rehearing except as

1 Hereinafter, “Decision”.
2 The Decision also reversed the Examiner’s decision rejecting claims 29–
33, 36, 37, 41, and 43. Appellants do not request rehearing of this aspect of
the Decision.
3 Hereinafter, “Request”.
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permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See 37 C.F.R.
§ 41.52(a)(1) (2018).
We have reconsidered the Decision in light of Appellants’ comments
in the Request and find no error in the disposition of the affirmed rejections.
We remain of the opinion that the subject matter of claims 1, 6–10, 16, 17,
20–22, and 44 is unpatentable under 35 U.S.C. § 102 and 103, as indicated
in the Decision.

I.
The Board’s Decision affirmed the Examiner’s rejections of claim 1
under 35 U.S.C. § 102(b) as anticipated by Bruchmann, and claims 1, 6–10,
17, and 20–22 under 35 U.S.C. § 103(a) as unpatentable over Gryctko and
Bruchmann, and claims 16 and 44 under 35 U.S.C. § 103(a) as unpatentable
over Gryctko and Bruchmann, further in view of Milanczak and Douglass.
In the Request, Appellants request reconsideration of the Decision without
specifically stating for which of the above rejections the affirmance is
believed to be in error. Instead, Appellants discuss various claim
interpretations set forth in the Decision that are believed to be in error as
they pertain to evidence of record. Appellants also assert that the Board
should have designated the Decision as setting forth new grounds of
rejection because it “clearly has restated the rejections and reached
conclusions based on findings and reasoning that are neither reflected in the
Examiner’s Final Rejection nor in the Examiner’s Answer.” Request 1–2.
With regard to Appellants’ argument that the Board’s claim
interpretations represents new grounds of rejection, we note that the
Decision relied on the same statutory grounds of rejection and the same
evidence on which the Examiner relied. Moreover, as discussed below,
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Appellants fail to identify the findings and reasoning upon which the Board
relied that neither share the basic thrust of the Examiner’s rejections and
against which they have not had a fair opportunity to respond. Absent such,
Appellants request that the Decision include a designation that it sets forth
new grounds of rejection lacks persuasive merit. In addition, Appellants’
arguments that the Board erred in its interpretations of the claims is also not
persuasive primarily because these arguments assert limitations that are not
recited in claim 1.

II.
Appellants argue that the Board misapprehends the “switchable
connection” recited in claim 1. Request 2. Appellants contend that the
dispute between Appellants and the Examiner concerned the embodiment
shown and described in relation to Figure 30, not the embodiments of
Figures 3, 21, and 22. Id. According to Appellants, the Board’s reasoning
diverges from the Examiner’s in this regard and thus represents a new
ground of rejection. Id. In addition, Appellants assert that the Specification,
paragraphs 150 and 151, describes the embodiment of Figure 30 in which
the engagement and disengagement of the fuse alone provides the switchable
connection. Id. at 2–3. Appellants contend that the Board’s contrary
interpretation based on Figures 3, 21, and 22 is unreasonably broad because
it is inconsistent with the embodiment of Figure 30 which can make the
switchable connection while the switch contacts are open or closed. Id. at 3.
Appellants argue that the Board overlooked the fact that, unlike Appellants’
invention, Bruchmann’s fuse cannot engage and disengage when the switch
contacts are closed. Id. at 4.
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Appellants’ arguments regarding the “switchable connection” of claim
1 are not persuasive. To the extent that Appellants’ position is that claim 1
covers the embodiment of Figure 30 and does not cover other embodiments,
e.g., of Figures 3, 21, or 22, we disagree. Appellants do not direct our
attention to any specific limitation of claim 1 that excludes embodiments
other than shown in Figure 30 or otherwise requires that engagement and
disengagement of the fuse alone provides the switchable connection
regardless of whether the switch contacts are open or closed. To the extent
that Appellants invite us to limit claim 1 to the embodiment of Figure 30, we
decline this invitation.
[I]t is the language itself of the claims which must particularly
point out and distinctly claim the subject matter which the
applicant regards as his invention, without limitations imported
from the specification. . . . Limitations in the specification not
included in the claims may not be relied upon to impart
patentability to an otherwise unpatentable claim.

In re Lundberg, 244 F.2d 543, 548 (CCPA 1957).
We note that Specification paragraphs 150 and 151 do not require that
the switch contact cannot also open or close the circuit. Nor do Appellants
dispute that the switch contacts may be open when the fuse is inserted, such
that the fuse alone does not make the connection, but the fuse and the switch
contacts together. Moreover, paragraph 151 describes that the current path
may be reset by installing the fuse module “and/or closing the switch
contacts.” This last clause of paragraph 151 further supports that the
“switchable connection” is not necessarily exclusive to the fuse, even for the
embodiment of Figure 30.
With regard to Appellants’ argument that the Board’s claim
interpretation represents a new ground of rejection, we reiterate that the
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Decision relied on the same statutory ground of rejection, 35 U.S.C.
§102(b), and the same evidence, Bruchmann, on which the Examiner relied.
Further, while the Examiner discussed Figure 30 in relation to Appellants’
arguments thereof, the Examiner clearly found that the “switchable
connection” limitation read on the structure of Bruchmann even assuming
that Figure 30 didn’t operate as the Examiner indicated. The Examiner
noted that the “switchable connection” limitation is broad, and went on to
explain how Bruchmann meets the limitation without regard to Appellants’
Figure 30. The Decision merely better explains the Examiner’s position in
this regard. It is thus clear that the Board’s reasoning with regard to the
“switchable connection” does not represent a new ground of rejection
because the Examiner, not the Board, initially described how Bruchmann
met the “switchable connection” under the broadest reasonable interpretation
of this limitation.

III.
Appellants next argue that the Board misapprehends the
responsiveness of the disconnect mechanism of claim 1. Request 4.
Appellants urge that the Decision’s reasoning with regard to this limitation
does not follow or affirm the Examiner’s position that this limitation is
tantamount to a capability of performing the recited function, but is not a
positive limitation entitled to patentable weight. Id. at 4–5. Appellants
assert that the Examiner otherwise insisted that the mechanism described
and claimed is automatic. Id. at 5. As such, Appellants contend that the
Decision raised a new issue that should have been designated as a new
ground of rejection. Id. In addition, Appellants argue that the Specification
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expressly contradicts the Board’s position. Id. Specifically, Appellants
assert that because the embodiment of Figure 30 and Specification
paragraphs 168 and 172 exclude manual operation, the Board adopted an
unreasonable interpretation of the “disconnect mechanism” limitation in
light of the Specification. Id. Further, Appellants urge that the “disconnect
mechanism” limitation “is defined in the specification in a lexicographic
manner that is expressly inconsistent with the Board’s conclusion” that
claim 1 does not require that the disconnect mechanism is responsive to an
electrical condition. Id. at 5–6.
Appellants’ arguments regarding the “disconnect mechanism” of
claim 1 are not persuasive. Initially, we emphasize the determination in the
Decision that claim 1 does not recite that this mechanism is responsive to an
electrical condition. Instead, as we noted (Decision 9), claim 1 recites “the
disconnect mechanism operable to cause the at least one switchable contact
to move along the linear axis from the closed position to the open position
while the fuse is received and engaged and when a predetermined electrical
condition occurs.” Our explanation of the appropriate interpretation of the
“disconnect mechanism” was based on the Examiner’s determination that
the language, “operable to cause,” merely indicates a structural capability or
ability of the disconnect mechanism, and does not exclude manual operation
of the mechanism. Thus, the scope of the disconnect mechanism’s
capability to move the switchable contact from closed to open does not
exclude manual operation of the mechanism when the predetermined
electrical condition occurs, i.e., it does not require automatic operation.
Although Appellants contend that the description of the disconnect
mechanism in the Specification is both lexicographic and definitional, we
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disagree. Applicants may choose to be their own lexicographer if they
define the specific terms used to describe the invention “with reasonable
clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). “To act as [their] own lexicographer, [applicants] must
‘clearly set forth a definition of the disputed claim term’ other than its plain
and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669
F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Here, Appellants direct our
attention again to Figure 30 and its supporting written description in
Specification paragraphs 168 and 172. Request 5. As explained above,
claim 1 is not limited to the Figure 30 embodiment only. Moreover, neither
of paragraphs 168 and 172 uses the terms, “disconnect mechanism,” and
neither paragraph defines these terms nor indicate that these terms should be
interpreted in any manner other than according to the meaning as would be
understood by those skilled in the art. Paragraph 172 sets forth in
permissive language, e.g., “can be operated to cause,” operation of a tripping
mechanism; paragraph 168, though reciting automatic operation, does not
recite that such operation is responsive to a predetermined electrical
condition. More importantly, claim 1 does not recite any structural element
or any functional limitation, as disclosed, that necessarily performs the
opening of the switch contacts in a fully automatic manner. And again, to
the extent that Appellants invite us to limit claim 1 to the embodiment of
Figure 30, we decline this invitation. Lundberg, 244 F.2d at 548.
With regard to Appellants’ argument that the Board’s claim
interpretation represents a new ground of rejection, we again note that the
Decision relied on the same statutory ground of rejection, 35 U.S.C.
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§102(b), and the same evidence, Bruchmann, on which the Examiner relied.
The Examiner noted that the “disconnect mechanism” limitation is broad,
and went on to explain how Bruchmann has this capability. Specifically, the
Examiner found that such capability is “via manual operation” and
recognized that this limitation was broader than Appellants argued (Ans. 5),
contrary to Appellants’ assertion that the Examiner interpreted the
disconnect mechanism as automatic. The Decision merely better explains
the Examiner’s position in this regard. It is thus clear that the Board’s
reasoning with regard to the “disconnect mechanism” does not represent a
new ground of rejection because the Examiner, not the Board, initially
described how Bruchmann met the “disconnect mechanism” under the
broadest reasonable interpretation of this limitation.

IV.
Appellants argue that the Board misapprehends the meaning of
“biased” recited in claim 1. Request 7. Appellants contend that the Board’s
conclusion that Bruchmann’s switchable contacts are biased to the open
position is predicated on a definition that the Examiner did not apply, such
that they could not have reasonably reacted to the thrust of the rejection as
the Board articulated. Id. According to Appellants, the Examiner and
Appellants disagreed regarding the interpretation of the claim language with
respect to the embodiment of Figure 30, while the Board focused on other
embodiments in affirming the rejection. Id. at 7–8.
In addition, Appellants assert that paragraphs cited in the Decision in
support of the Board’s interpretation of “bias” do not accurately reflect the
teachings of the Specification as a whole. Id. at 8. Appellants contend that
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the “bias” recited in claim 1, in the context of the Specification, clearly
relates to a bias in a spring loaded contact assembly in paragraph 55. Id.
Appellants also note that paragraph 62 teaches that bias element 200 may be
a helical spring element loaded in compression or a coil spring loaded in
tension, and paragraph 61 teaches that sliding bar 176 is moved downward
against the bias of bias element 200. Id. at 8–9. Appellants further argue
that the Board misapprehended Appellants’ argument in the Briefs, which
Appellants summarize as arguing that the “bias” is provided solely by spring
elements in each device described in the application. Id. at 13. Appellants
contend that Bruchmann’s switching bolt 125 and actuator links cannot
themselves generate a “bias”. Id. at 11.
With regard to Appellants’ argument that the Board’s claim
interpretation represents a new ground of rejection, we reiterate that the
Decision relied on the same statutory ground of rejection, 35 U.S.C.
§102(b), and the same evidence, Bruchmann, on which the Examiner relied.
We note that although Appellants assert that each reference to “bias” is in
relation to springs, Appellants fail to direct our attention to any description
or definition that limits “bias” to a spring-induced force. Indeed, the
Specification uses permissive language, rather than definitional or limiting
language, when describing that the bias element “may be” a helical spring or
coil element. Appellants attempt to discount the disclosure in paragraph 62
which recognizes that other known bias elements could be provided to
produce opening or closing forces is without merit. Again, we decline
Appellants’ invitation to limit claim 1 by importing limitations found only in
the Specification, especially because claim 1 does not even recite a “bias
element”. Moreover, as Appellants concede, Bruchmann’s switching bolt
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125 transmits a force applied by a user interacting with the device to open
the switch contacts and, therefore consistent with the Board’s interpretation
of “bias,” this switching bolt biases the switchable contact to the open
position. Again, claim 1 does not exclude the situation where the force of
the bias originates in the user. Thus, the Decision did not misapprehend the
meaning of “bias” when interpreting this term in the context of the claim in
light of the Specification, nor have Appellants shown that the Board
misapplied this meaning with reference to Bruchmann.

V.
Appellants argue that the Board misapprehends the Office’s obligation
to make a prima facie case of unpatentability in the obviousness rejections.
Request 16. Appellants contend that the Board invoked and interpreted
definitions in the Douglas Declaration that the Examiner did not rely upon.
Id. According to Appellants, the Board’s conclusions are not grounded in
any evidence that makes the required showing to establish a prima facie case
of obviousness. Id. In this regard, Appellants urge that the Board failed to
consider or rebut the entirety of the evidence presented, including: 1) that
UL 98 for switching devices, such as those described and claimed, expressly
precludes circuit breakers from the standard; 2) that circuit breakers are
separately defined in another standard that is otherwise similar to the NEC
definition; and 3) that paragraph 37 of the Douglas Declaration directly
opposes the Board’s findings regarding definitions in paragraph 36. Id. at
17–18. In addition, Appellants challenge the Board’s interpretations of key
terminology, relying, in part, on statements made in the Douglas
Declaration. Id. at 20–21. Appellants also challenge the Decision on the
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basis that it fails to speak to the level of skill in the art as it pertains to the
technology at issue and to the meaning of key terminology. Id. at 19.
Appellants contend that the Board has cited no counter-evidence to support
the prima facie case. Id. at 18.
Appellants’ arguments regarding the affirmed obviousness rejections
are not persuasive. To begin, neither Appellants’ Specification nor claims
recite devices that are unequivocally limited to the UL 98 standard. Indeed,
while the Declaration states that the UL 98 standard indicates that its
requirements do not cover circuit breakers, this standard does not state that
none of its requirements are shared with circuit breakers. Further, while the
Decision did not specifically address the UL 98 standard, the Decision
makes clear that the dispositive issue isn’t whether the claim or the prior art
is or is not a circuit breaker as Appellants argued, but whether the claimed
structure reads on Gryctko’s structure, as modified by Bruchmann. See
Decision 13. Thus, while the Declaration and Appellants’ argument urges
that the disclosed and claimed devices are or are not devices meeting one
standard or another, such statements and argument lack persuasive merit
given that the description and the claims are not so limited.
As to the lack of any specific finding or discussion in the Decision
regarding the level of ordinary skill in the art, we note that Appellants never
raised the level of ordinary skill in the art as an issue. Moreover, we do not
find this argument persuasive because the prior art applied by the Examiner
provides evidence of the ordinary skill level in the art, and Appellants
provide no reason to think that further evidence is required. In re GPAC
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (the Board did not err in adopting
the approach that the level of skill in the art was best determined by the
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references of record); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) (“[T]he absence of specific findings on the level of skill in the art does
not give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown.’”).

VI.
Appellants next argue that Gryctko does not cure the deficiencies of
Bruchmann. Request 21–22. To the extent that this argument relies on
Appellants’ prior arguments as addressed above, it is not persuasive that the
Board misapprehended or overlooked any point of argument raised in the
Briefs or the evidence upon which those arguments were based. Appellants
do not otherwise identify any additional points of argument or evidence
alleged to have been misapprehended or overlooked.

VII.
Appellants’ final argument is that the Board mischaracterized the
argument raised against claim 44. Request 22–23. Appellants attempt to
rely on arguments raised against claims 1 and 29, yet the Briefs never stated
any such reliance. See Appeal Br. 53, and Reply Br. 24. In addition, though
Appellants assert that they “rightfully pointed out [additional, specific
features that were not recited in claims 1 and 29] without detailed comments
or explanations why the cited art did not describe such features,” Appellants
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fail to address or otherwise distinguish over the Lovin4 holding cited in the
Decision.

VIII.
Appellants’ Request for Rehearing has been granted to the extent that
the Decision has been reconsidered in light of Appellants’ arguments.
However, the Request is otherwise denied, and the Decision is not modified
in any respect.
This Decision on the Request for Rehearing incorporates our
Decision, mailed April 2, 2019, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).

IX.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

4 In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011).