Pass & Seymour, Inc. v. Hubbell, Inc.
| Decision Date | 28 February 2013 |
| Docket Number | APPEAL 2013-001548 |
| Parties | PASS & SEYMOUR, INC., Patent Owner, Appellant, and Cross Respondent v. HUBBELL, INC., Requester, Respondent, and Cross-Appellant Reexamination Control No. 95/000, 200 United States Patent 6, 994, 585 B2 Technology Center 3900 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board |
Before JOHN C. MARTIN, KEVEN F. TURNER, and BRIAN J. McNAMARA Administrative Patent Judges.
JOHN C. MARTIN, Administrative Patent Judge.
Patent Owner Pass & Seymour, Inc. (hereinafter "Patent Owner") appeals under 35 U.S.C. §§ 134(b) and 315(a)(1) from the Examiner's rejection of claims 1-66 of Benoit et al. U.S. Patent 6, 994, 585 (hereinafter "the Benoit patent" or "Benoit").[1] Requester Hubbell, Inc. (hereinafter "Requester") has filed a cross-appeal under 35 U.S.C. §§ 134(c) and 315(b)(1) challenging the Examiner's determination not to enter a proposed rejection of claims 1, 2, 4, 6-14, 18-23 33, 37, 55, 56, and 63-65 under 35 U.S.C. § 102(b) for anticipation by Heimann.[2]
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
We AFFIRM the Examiner's decision that claims 1-66 are unpatentable and AFFIRM the Examiner's decision not to enter Requester's proposed rejection for anticipation by Heimann.
Requester has identified the following inter partes reexamination proceedings as related to this appeal:
Requester has also identified the following litigation as related to this appeal:
This reexamination proceeding was initiated by a "Request for Inter Partes Reexamination Under 37 C.F.R. § 1.913" (hereinafter "Request") filed on November 29, 2006, and seeking reexamination of claims 1-51 (all of the original claims) of the Benoit patent. The Request proposed twenty-nine grounds of rejection under 35 U.S.C. §§ 102 and 103(a) based on the following references: Hermann, Hyde, [6] Blackwood, [7] Kolling, [8] Hardesty, [9]and Richter.[10] Req. 2-5. The proposed rejections under § 102 were based on each of Hermann, Hyde, Blackwood, Hardesty, and Kolling. Id. at 2, paras. 1-5.
Reexamination of claims 1-55 was ordered in a February 22, 2007, "Order Granting/Denying Request for Inter Partes Reexamination''
The Office actions issued during the proceeding and discussed below include: (1) a nonfinal Office Action mailed March 26, 2007 (hereinafter "Nonfinal Action"); (2) a first Action Closing Prosecution, mailed June 7, 2008 ("First ACP"); (3) a second Action Closing Prosecution, mailed March 23, 2010 ("Second ACP"); and a Right of Appeal Notice, mailed December 17, 2010 ("RAN").
In the Nonfinal Action, the Examiner entered numerous rejections under 35 U.S.C. §§ 102 and 103(a). Nonfinal Action 7-46. In response, Patent Owner amended all of the original independent claims (viz., claims 1, 33, 40, and 46) and some dependent claims and added new claims 52-66 (including independent claims 56, 65, and 66). May 25, 2007, "Response to the Decision Granting Inter Partes Reexamination" at 49-63. Requester in June 25, 2007, "Comments by Third Party Requester Under 37 C.F.R. § 1.947" responded by proposing rejections on the following grounds:
Some of these proposed § 103(a) rejections were based in part on a newly cited First Alert reference.[11] See, e.g., id. at 25, 27.
In the First ACP, the Examiner declined (at 16, 39, and 41-43) the request to reject claims under 35 U.S.C. § 102 for anticipation by Heimann or other references. Instead, the Examiner rejected claims 1-66 on each of the following grounds:
(1) Under 35 U.S.C. § 314(a) for improper enlargement of their scope (id. at 5);
(2) Under 35 U.S.C. § 112, first paragraph (written description requirement) (id. at 9);
(3)Under 35 U.S.C. § 112, second paragraph, for indefiniteness (id. at 10); and
(4) Under 35 U.S.C. § 103(a) for obviousness over Hermann in view of First Alert (and further in view of Hyde or Hyde and Blackwood as to some dependent claims). Id. at 16-39.
Patent Owner on July 7, 2008, filed a "Response to the Action Closing Prosecution" (hereinafter "July 2008 Response") including (at 50-59) further amendments of the claims. This response was accompanied by the following evidence of alleged commercial success: (1) An Appendix A consisting of a "Statement of Thomas N. Packard" and three pages each bearing the heading "PlugTail' Update"; and (2) An Appendix B described as consisting of “[s]everal emails from P&S marketing personnel listing the various industry awards along with testimonials from various customers." July 2008 Response at 45. These testimonials consist of three Pass & Seymour "Case History" articles.
In response to a December 31, 2008, "Notice Re Defective Paper in Inter Partes Reexamination" indicating that the format of the amended claims was incorrect, Patent Owner on January 30, 2009, filed a "Supplemental Response to the Action Closing Prosecution" (hereinafter "Supplemental Response") including a corrected copy of the amended claims. These are the claims that appear in the Claims Appendix (hereinafter "Claims App."). App. VIII to P.O. Br.[12] The Supplemental Response argues, inter alia, (at 47) that the July 2004 date of First Alert makes it unavailable as prior art against the Benoit patent claims.
In the Second ACP, the Examiner, "[i]n view of the amendments adding back the previously deleted subject matter, " withdrew the rejection of claims 1-66 under 35 U.S.C. § 314(a). Second ACP 38. The Examiner also effectively withdrew the rejection of claims 1-64 and 66 under 35 U.S.C. § 112, first paragraph, by rejecting only claim 65 on this ground. Id. at 7. However, the rejection of claims 1-66 under 35 U.S.C. § 112, second paragraph, was repeated. Id. at 7. Furthermore, the Examiner modified the rejections of claims 1-66 under 35 U.S.C. § 103(a) by replacing First Alert with BRK.[13] In so doing, the Examiner explained that Id. at 4. Finally, the Examiner (id. at 11) declined Requester's invitation to reject claims 1, 2, 4, 6-14, 18-23, 33, 37, 55, 56 and 63-65 () under 35 U.S.C. § 102 for anticipation by Heimann.
Patent Owner responded on April 23, 2010, with a "Response to the Action Closing Prosecution, " accompanied by a "Statement of Donald S. Bausch" (hereinafter "Bausch Declaration") and a "Statement by Clarke C. Ayer" (hereinafter "Ayer Declaration"), which are offered (at 26-27) to prove commercial success and copying.[14]
In the RAN, mailed December 17, 2010, the Examiner (at 5-53) repeats the positions set forth in the Second ACP and (at 53-57) finds the evidence of alleged commercial success and copying unpersuasive.
Patent Owner and Requester filed notices of appeal and cross-appeal on January 14 and 26, 2011, respectively.
In response to the above-noted Patent Owner's "Brief on Appeal" ("P.O. Br ") and Requester's "Brief of Cross-Appellant Under 37 C.F.R. § 41.67" ( ), the parties filed the following briefs:
The Examiner's Answer, mailed February 28, 2012, incorporates the RAN by reference without providing any additional comments.
A "Rebuttal Brief was filed by Patent Owner on March 28, 2012 ).
The invention described in the Benoit patent is a wiring system comprising a "plug connector device" and a "wiring device." Benoit, Abstract.
The Benoit patent explains in the section labeled that during a rough-in phase, junction boxes and device boxes are installed, and then electrical wires are installed such that their leads extend from the boxes and are visible and accessible for the next phase of the installation process. Id. at 1:14-34. After completion of the rough-in phase, "the electrical wiring devices are terminated, i.e., they are electrically connected to the wire leads." Id. at 1:57-60. In this process, each electrical wire must be stripped and terminated to the device. Id. at 1:63-64. The wiring system described and claimed in the Benoit patent "provides an efficient system and method for terminating electrical devices" and "is cost-effective because it eliminates many of the labor intensive practices that are currently in use." Id. at 2:6-9.
Figure 1A of the Benoit patent is reproduced...
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