Michael Jay. Zbriger et al.

Patent Trials and Appeals Board

Jul 26, 2019

14546626 - (D) (P.T.A.B. Jul. 26, 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.
14/546,626 11/18/2014 Michael Jay ZBRIGER 62077 1386
120225 7590 07/26/2019
Dickinson Wright PLLC - Hubbell
1825 Eye Street, N.W.
Suite 900
Washington, DC 20006
EXAMINER
TSO, STANLEY
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
07/26/2019 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):
DWPatents@dickinsonwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL JAY ZBRIGER, JOSEPH NICHOLAS
CRETELLA, ROY JOSEPH ITZLER, and
JOSEPH ANTHONY DIMARIA
____________________

Appeal 2018-007969
Application 14/546,626
Technology Center 2800
____________________

Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 5–8, 11, 13–15, 17–20, and 22–28. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellant is the Applicant, Hubbell Incorporated, which, according to the
Appeal Brief, is also the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE2
Appellant describes the invention as relating to an adapter for fitting
into the open end of an electrical box or adapter member. Spec. ¶ 1. In
particular, Appellant describes the invention as relating to a weatherproof
cover assembly. Id. ¶ 8. Independent claims 1, 7, and 15 reproduced below
with emphases added to certain key recitations, are illustrative of the
claimed subject matter:
1. An electrical assembly comprising:
a support having a side wall with an open top end
oriented in a first plane, an open bottom end oriented in a
second plane and configured for coupling to an electrical box,
and an internal cavity, a top outer edge surrounding said open
top end, an inwardly extending ledge spaced from said top
outer edge and forming a recess at said open top end of said
support spaced from said top outer edge and spaced from a
bottom edge of said support;
a mounting bracket having a substantially planar
configuration received on said ledge and positioned in said
recess at said open top end of said support and coupled to said
inwardly extending ledge at said open top end of said support,
said mounting bracket having a peripheral frame with an inner
edge forming a central opening, an outer peripheral edge
positioned in said recess, and a ground strap integrally formed
with said inner edge of said peripheral frame and extending out
of the plane of said mounting bracket into said cavity of said
support;
an electrical wiring device received in said central
opening of said mounting bracket and directly coupled to said

2 In this Decision, we refer to the Final Office Action dated October 23,
2017 (“Final Act.”), the Appeal Brief filed April 24, 2018 (“Appeal Br.”),
the Examiner’s Answer dated June 1, 2018 (“Ans.”), and the Reply Brief
filed July 31, 2018 (“Reply Br.”).
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peripheral frame of said mounting bracket at said open top end
of said support; and
a cover having a base with a central opening receiving
said electrical device, a lid hinged to said base to close said
central opening, and said base being coupled to said mounting
bracket and covering said mounting bracket and electrical
wiring device.

7. An electrical assembly comprising:
an electrical box having a bottom end and an open top
end;
an adapter having an internal cavity, a bottom end
coupled to said open top end of said electrical box and an open
top end oriented in a first plane at an incline relative to a second
plane of said bottom end of said adapter, said open top end of
said adapter configured for supporting an electrical wiring
device within said cavity at said top end in said first plane at an
inclined angle with respect to said second plane of said at said
bottom end of said adapter and configured for supporting a base
of a cover at an inclined angle with respect to a plane of said
open top end of said electrical box and at an inclined angle with
respect to said plane of said bottom end of said adapter; and
a mounting bracket having a mounting strap with a
screw hole receiving a screw for coupling to a ground
connection, said mounting bracket having an outer peripheral
edge and a center opening for receiving the electrical wiring
device where the electrical wiring device is directly coupled to
said adapter, and where said mounting bracket includes
screw holes receiving screws coupling said mounting
bracket to said adapter.

15. An electrical box assembly comprising:
an electrical box having a bottom end, an open top end,
and at least one wire inlet;
an adapter coupled to said open top end of said electrical
box, said adapter having an open bottom end and an open top
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end, said open top end oriented in a first plane at an inclined
angle with respect to a second plane of said open bottom end,
and said open bottom end of said adapter coupled to said open
top end of said electrical box;
a mounting bracket recessed with respect to said open
top end of said adapter and coupled to said open top end of
said adapter in said first plane at an inclined angle with
respect to the second plane of said bottom end of said
adapter, said mounting bracket having an outer edge and an
inner edge defining a central opening and a ground strap
integrally formed with said inner edge of said central opening
and extending into said adapter;
an electrical wiring device received in said central
opening and directly coupled to said mounting bracket at said
open top end of said adapter where said electrical wiring device
is oriented in said first plane; and
a cover having a base with an access opening for said
electrical wiring device, said base having a bottom end coupled
to said mounting bracket and oriented in said first plane
enclosing said mounting bracket between said adapter and said
base of said cover.
Appeal Br. 24–27 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Zerwes
Hutter, III (“Hutter”)
US 3,439,108
US 2005/0280032 A1
Apr. 15, 1969
Dec. 22, 2005

REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
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Rejection 1. Claims 1–3, 5, 6, 19, 20, and 22–25 under 35 U.S.C.
§ 112(b) as indefinite. Final Act. 2.
Rejection 2. Claims 1–3, 5–8, 11, 13–15, 17–20, and 22–28 under
35 U.S.C. § 103 as unpatentable over Zerwes in view of Hutter. Id. at 4.
ANALYSIS
Rejection 1. The Examiner rejects claims 1–3, 5, 6, 19, 20, and 22–25
under 35 U.S.C. § 112(b) as indefinite. Final Act. 2. In particular, the
Examiner determines that the mounting bracket “having a substantially
planar configuration” in claim 1 is a relative term which renders claim 1
(and claims depending from claim 1) indefinite. Id.; see also Ans. 3–9. The
Examiner also determines that a recess at the top end of the adapter
“corresponding substantially to a thickness of said mounting bracket” in
claim 19 renders claim 19 (and claims depending from claim 19) indefinite.
Final Act. 3.
During prosecution, “‘[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.’” Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *11 (PTAB Aug. 25, 2017) (quoting In re
Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014)). The use of relative
terminology in patent claim language will not automatically render the claim
indefinite under 35 U.S.C. § 112(b). See Seattle Box Co. v. Industrial
Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984) (holding that trial
court did not err in holding that claim with recitation “substantially equal to”
was definite because the specification indicated limits of the claims). The
acceptability of relative terminology in claim language depends on whether
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one of ordinary skill in the art most closely pertaining to the invention would
understand what is claimed in light of the specification.
Here, as to claim 1, Appellant’s Specification depicts mounting
bracket 14 as being substantially planar or flat. Spec. Fig. 2. The bracket
needs to be planar (or nearly planar) in order to fit in the recess provided by
adapter 20. Spec. Fig. 2, ¶¶ 45, 49. In view of the context provided by the
Specification, we agree with Appellant (Appeal Br. 4–5) that the Examiner
has not adequately established that the bracket “having a substantially planar
configuration” is unclear.
As to claim 19, the Specification indicates that the mounting bracket
19 fits into the top recess of adapter 20. Spec. Fig. 2, ¶¶ 45, 49. A person of
skill in the art would, thus, understand that the recess should be about as
deep as the mounting bracket is thick. We, therefore, agree with Appellant
that the Examiner has not adequately established that a recess at the top end
of the adapter “corresponding substantially to a thickness of said mounting
bracket” is unclear.
For the reasons above, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 112(b).
Rejection 2, claims 1–3, 5, 6, 22, and 23–25. The Examiner rejects
claims 1–3, 5, 6, 22, and 23–25 under 35 U.S.C. § 103 as unpatentable over
Zerwes in view of Hutter. We focus on claim 1 and on the Examiner’s
determinations that relate to error Appellant identifies.
The Examiner finds that Zerwes teaches most of the recitations of
claim 1. Final Act. 4–6. The Examiner determines that Zerwes’s adapter 10
with side wall 20 is a support as recited by claim 1. Id. at 4; see also Ans.
11 (clarifying that the Examiner considers Zerwes’s wall 20 (Fig. 2) and
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wall 124 (Fig. 7) are interchangeable). The Examiner determines that
Zerwes’s mounting tongue 59 is an inwardly extending ledge as recited in
claim 1. Final Act. 5. Appellant argues that the tongue is not a ledge
supporting a mounting bracket as recited by claim 1. Appeal Br. 6–8.
Appellant’s argument is persuasive. Claim 1 requires “an inwardly
extending ledge” that is part of the recited support. Such a ledge is depicted,
for example, in Appellant’s Figure 2 which we reproduce with annotations
below.

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Figure 2 is an exploded perspective view of an embodiment of Appellant’s
electrical assembly. Spec. ¶ 21. The reproduction of Figure 2, above, adds
annotations identifying mounting bracket 14, adapter 20, and two ledges of
adapter 20.
Zerwes is similar to Appellant’s assembly in that it is directed to a
hooded weatherproof adapter and junction box that accommodates an
electrical appliance. Zerwes, Title, 1:10–25. Figures 1 and 2 of Zerwes with
the Examiner’s annotations (Ans. 10) are reproduced below.

Figure 1 is a side elevational view of the Zerwes hooded extension adapter
and Figure 2 is a similar view but with portions broken away to show
interior construction. Zerwes 4:5–10. Figure 2 of Zerwes, as we reproduce
above, includes the Examiner’s annotations.
The Examiner finds that mounting tongue 59 of Zerwes is an inwardly
extending ledge as claim 1 recites. Ans. 10. Zerwes, however, indicates that
the mounting tongue 59 is attached to appliance 58. Zerwes 5:25–28 (“A
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gasket 62 . . . is interposed between the mounting tongue 59 of appliance 58
and the wall 20.”). The mounting tongue 59 is, therefore, not a ledge of
adapter 10 with side wall 20 (which the Examiner maps to claim 1’s
support). The Examiner does not propose a modification of Zerwes that
would transform mounting tongue 59 into a ledge of adapter 10.
Because the Examiner’s has not shown that each and every limitation
of claim 1 is described or suggested by the cited art or would have been
obvious in view of the art, we do not sustain the Examiner’s rejection of
claim 1. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.”); see also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We also do not sustain
the Examiner’s rejection of claims 2, 3, 5, 6, 22, and 23–25 because each of
those claims directly or indirectly depends from claim 1 and the Examiner’s
treatment of those claims does not cure the error we address above.
Rejection 2, claims 7, 8, 11, 13, 14, 26, and 27. The Examiner also
rejects claims 7, 8, 11, 13, 14, 26, and 27 under 35 U.S.C. § 103 as
unpatentable over Zerwes in view of Hutter. Final Act. 4. We focus on
claim 7 and on the Examiner’s determinations that relate to error Appellant
identifies.
The Examiner determines that Zerwes’s front wall 20 or 124 is a
mounting bracket as recited by claim 1. Final Act. 9; see also Ans. 10
(providing annotated Zerwes Figure 2 as reproduced above). The Examiner
addresses claim 7’s recitation “where said mounting bracket includes screw
holes receiving screws coupling said mounting bracket to said adapter” by
determining that “a portion of the front wall 124 [also 20] includes screw
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holes 56 receiving screws for coupling the mounting tongue 59 to adapter
10.” Final Act. 10.3 Appellant argues that the Examiner has not adequately
established that Zerwes teaches a separate mounting bracket or that a
separate mounting bracket would have been obvious in view of the cited art.
Appeal Br. 16–18.
Appellant’s argument is persuasive. Claim 7 requires that the
mounting bracket be separate from the adapter because, if this were not the
case, it would not make sense for the mounting bracket to include the recited
“screw holes . . . coupling said mounting bracket to said adapter.” Zerwes
front wall 20 (or 124) is a wall of adapter 10. Appeal Br. 17; Zerwes, Fig. 2,
4:53–58 (“The hooded extension adapter 10 comprises . . . an inclined or
canted front wall 20. . . . ”). The Examiner lacks any finding that front wall
20 is separate from adapter 10. The Examiner also does not state a rationale
as to why it would have been obvious to modify Zerwes to make front wall
20 a separate mounting bracket. Moreover, the Examiner’s determination
regarding screw holes merely attaches mounting tongue 59 to front wall
20—the determination does not address screws for attaching front wall 20
(which the Examiner maps to the recited mounting bracket) to adapter 10
(which the Examiner maps to the recited adapter).
Because the Examiner has not shown that each and every limitation of
claim 7 is described or suggested by the cited art or would have been
obvious in view of the art, we do not sustain the Examiner’s rejection of
claim 7. We also do not sustain the Examiner’s rejection of claims 8, 11, 13,

3 We note that, other than claim 1, the Examiner does not address
Appellant’s arguments regarding obviousness rejections in the Answer. To
the extent the Examiner’s rationales regarding claim 1 apply to other claims,
however, we consider those rationales here.
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14, 26, and 27 because each of those claims directly or indirectly depends
from claim 7 and the Examiner’s treatment of those claims does not cure the
error we address above.
Rejection 2, claim 15. The Examiner also rejects claim 15 under
35 U.S.C. § 103 as unpatentable over Zerwes in view of Hutter. Final Act. 4.
We review appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). With respect to claim 15 (and
claims 17 and 18 addressed infra), after considering the evidence presented
in this Appeal and each of Appellant’s arguments, we are not persuaded that
Appellant identifies reversible error. We thus affirm the Examiner’s
rejections for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
The Examiner finds that Zerwes teaches most of the electrical box
assembly recitations of claim 15. Final Act. 13–15 (citing Zerwes). The
Examiner finds that Zerwes does not disclose “said mounting bracket having
a ground strap integrally formed with an inner edge of said central opening
and extending into said adapter.” Id. at 15 (emphasis removed). The
Examiner finds, however, that Hutter discloses such a ground strap. Id.
(citing Hutter). The Examiner determines that “[i]t would have been obvious
before the effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains to have
constructed Zerwes . . . electrical junction box adapter with the ground strap
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of Hutter, . . . in order to provide for a secure attachment to ground, as
suggested by Hutter, . . . at [0008], [0031], and [0032].” Id.
Appellant argues that Zerwes does not disclose or suggest a recessed
mounting bracket. Appeal Br. 20. The Examiner maps Zerwes wall 20 to
the recited bracket. Final Act. 14; see also Ans. 11 (finding that Zerwes wall
20 and 124 are interchangeable). Under a broadest reasonable construction
of “mounting bracket recessed with respect to said open top end of said
adapter,” however, Zerwes wall 20 is recessed relative to the open top end of
Zerwes’s adapter 10. Zerwes, Fig. 2; see also MERRIAM-WEBSTER’S
COLLEGIATE DICTIONARY 1038 (11th ed. 2007) (defining recess, in relevant
part, as a verb, as “put into recess” and, as a noun, as an indentation or cleft).
Appellant’s argument, therefore, does not identify error.
Appellant also argues that Zerwes does not teach a mounting bracket
separate from the adapter. Claim 15, however, differs from claim 7 in that it
does not indicate that the recited mounting bracket must be separate from the
recited adapter. While Appellant’s Figure 2, for example, indicates a
separate mounting bracket, we decline to read unrecited aspects of
Appellant’s embodiments into claim 15. See, e.g., Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[W]e have expressly
rejected the contention that if a patent describes only a single embodiment,
the claims of the patent must be construed as being limited to that
embodiment.”).
Appellant also argues that the Examiner does not provide a reasonable
basis to support modifying Zerwes to include a separate mounting bracket.
Appeal Br. 20. This argument is not commensurate with the scope of claim
15 because, as explained above, claim 15 does not require a separate
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mounting bracket. Because Appellant’s arguments do not identify error, we
sustain the Examiner’s rejection of claim 15.
Rejection 2, claim 17. The Examiner also rejects claim 17 under
35 U.S.C. § 103 as unpatentable over Zerwes in view of Hutter. Final Act.
4. Claim 17 recites:
17. The electrical assembly of claim 15, wherein
said adapter has a plurality of screw holes receiving the
coupling screws for coupling said adapter to said electrical box;
and
said open top end of said adapter includes a plurality of
screw holes for receiving coupling screws for coupling said
mounting bracket to said adapter.
Appeal Br. 27 (Claims App.).
Appellant argues that Zerwes does not suggest screw holes for
attaching a separate mounting bracket to the adapter (Appeal Br. 21), and the
Examiner agrees with this factual point (Final Act. 15–16). The Examiner,
however, sets forth a rationale as to why it would have been obvious to
modify a combined Zerwes and Hutter device to reach the recitations of
claim 17. Final Act. 16. Appellant does not dispute the Examiner’s
rationale or explain why it is in error. Appeal Br. 21. We, therefore, sustain
the Examiner’s rejection of claim 17.4

4 While claims 7 and 17 include some similar recitations, we reach different
outcomes as to these claims based upon the rationales provided by the
Examiner for rejecting each of the two claims and based upon Appellant’s
arguments (or lack thereof) regarding those rationales. Our role is to assess
the merits of each side’s position; we do not assess the merits of patent
claims in a vacuum. 35 U.S.C. § 6(b) (Board’s role on appeal is to “review
adverse decisions of examiners upon applications for patents”); Frye, 94
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Rejection 2, claim 18. The Examiner also rejects claim 18 under
35 U.S.C. § 103 as unpatentable over Zerwes in view of Hutter. Final Act.
4. Claim 18 recites:
18. The electrical assembly of claim 17, wherein
said mounting bracket includes a plurality of threaded
holes for receiving screws extending through said base of said
cover and coupling said base of said cover to said mounting
bracket.
Appeal Br. 27 (Claims App.).
The Examiner finds that Zerwes cover plate 132 is secured to the wall
20 or 124 by screws 131. Final Act. 16 (citing, for example, Zerwes, Fig.
14); Ans. 11. Appellant argues that Zerwes attaches its cover to the front
wall rather than a mounting bracket and again argues that Zerwes lacks a
separate mounting bracket. Appeal Br. 22.
Claim 18 depends from claim 17 which depends from claim 15. As
explained above, claim 15 does not require that the mounting bracket be
separate from the adapter, and the recitations of claims 17 and 18 do not
narrow claim 15 in that regard. Beyond the separate mounting bracket issue,
Appellant merely argues that Zerwes lacks the recitations of claim 18
without further explanation. Appellant does not persuasively explain why
the Examiner’s citations to Zerwes do not adequately support the
Examiner’s position. In this circumstance, Appellant’s argument is
insufficient to identify reversible error, and we sustain the rejection of claim
18. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that

USPQ2d at 1075 (holding that applicant must identify error in the
Examiner’s rejections).
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merely asserting that applied prior art does not teach a recited limitation is
not substantive argument for separate patentability).
Rejection 2, claims 19, 20, and 28. The Examiner rejects claims 19,
20, and 28 under 35 U.S.C. § 103 as unpatentable over Zerwes in view of
Hutter. Final Act. 4. Claim 19 recites:
19. The electrical assembly of claim 18, wherein
said open top end of said adapter has a top edge, a first
ledge at a first end of said open top end and a second ledge at a
second end of said open top end, said first ledge and second
ledge being spaced inwardly from said top edge a distance to
define a recess at said open top end of said adapter
corresponding substantially to a thickness of said mounting
bracket, and where said mounting bracket is received in said
recess.
Appeal Br. 27 (Claims App.).
As with claim 1, the Examiner again determines that mounting tongue
59 is the recited ledge. Final Act. 17. Appellant argues that Zerwes lacks
the recited ledge. Appeal Br. 22. Appellant’s argument is persuasive for the
reasons we provide above with regard to claim 1. We, therefore, do not
sustain the rejection of claim 19. Because claims 20 and 28 depend from
claim 19 and the Examiner’s treatment of those claims does not cure this
error, we also do not sustain the rejection of claims 20 and 28.
DECISION
For the above reasons, we affirm the Examiner’s rejection of
claims 15, 17, and 18 under 35 U.S.C. § 103. We reverse the Examiner’s
rejection of claims 1–3, 5, 6, 19, 20, and 22–25 under 35 U.S.C. § 112(b) as
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indefinite. We reverse the Examiner’s rejection of claims 1–3, 5–8, 11, 13,
14, 19, 20, and 22–28 under 35 U.S.C. § 103.

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