Cooper Technologies Co. v. Thomas & Betts Corp.

• Decision Date: 14 November 2011
• Docket Number: Appeal 2011-008268
• Parties: COOPER TECHNOLOGIES COMPANY Patent Owner, Appellant v. THOMAS & BETTS CORP. Requestor Inter Partes Reexamination Control No. 95/000, 209 United States Patent 6, 984, 791 B1 Technology Center 3900
• Court: Patent Trial and Appeal Board

COOPER TECHNOLOGIES COMPANY Patent Owner, Appellant v. THOMAS & BETTS CORP. Requestor

Inter Partes Reexamination Control No. 95/000, 209 United States Patent 6, 984, 791 B1 Technology Center 3900

Appeal 2011-008268

United States Patent and Trademark Office, Patent Trial and Appeal Board

November 14, 2011

FILING DATE 01/25/2007

Before RICHARD TORCZON, SALLY MEDLEY, and KARL D. EASTHOM Administrative Patent Judges.

DECISION ON APPEAL

EASTHOM, Administrative Patent Judge.

This proceeding arose from a third party request on behalf of Thomas & Betts Corporation (T&B) for an inter partes reexamination of U.S. Patent 6, 984, 791 Bl. Appellant, patent owner Cooper Technologies Company, appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner's Right of Appeal Notice (RAN) rejecting claims 1-30. (App. Br. 1-2.) The Examiner's Answer incorporates by reference the findings from the RAN. Requestor's appeal is hereby dismissed because the Cross Appeal Brief is untimely and has not been entered. (See Decision Granting Petition 11, Nov. 18, 2008.) We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.

We affirm.

STATEMENT OF THE CASE

Introduction

Appellant appeared before the Board on August 3, 2011 at a hearing involving the appeal of this inter partes reexamination and a related ex parte reexamination (Appeal No. 2011-008241, Reexam. Control No. 90/008, 386 U.S. Pat. 6, 504, 103). The two patents at issue in the reexaminations were the subject of prior litigation, Cooper Tech. Co. v. Thomas & Betts Corp., No. 2.06-CV-242 (E.D. Tex. 2009), involving the same parties in which a jury found certain of the claims in both patents invalid based in part on the same prior art as is involved here. After the verdict, the parties settled and the judge dismissed the action without prejudice without entering a final judgment on January 23, 2009. (See Ans. 2; BPAI Tr. 2.)

Requestor has not participated in the reexamination proceeding since the judgment. After the judgment, Appellant raised the issue in the reexaminations of whether prior art documents involved in the litigation and here constitute printed publications. (See BPAI Tr. 7-8.) In particular, Appellant challenges whether the Elastimold Brochure (describing T&B's bushing/terminator connector products), the RTE Manual (describing Cooper's bushing/terminator connector products), and the Stanger paper (describing generic bushing/terminator connector products) were publically disseminated. (Reb. Br. 6-7.) The record reflects that these documents were not challenged on this basis during the litigation. (See, e.g., BPAI Tr. 7 (Appellant stating "[i]t was early 2009 when we started raising the issue" -i.e., after the civil trial settlement).)

Appellant also challenges whether these documents anticipate the claims at issue here, or render the claims obvious (in view of other prior art as mitigated by secondary considerations of nonobvious). The art based issues involve a color band on a bushing connector which serves to indicate that a terminator connector is fully latched with the bushing connector.

The 791 Patent^[1]

P1. The '791 patent describes a bright color band which indicates when two parts of a high voltage electrical connector device have been fully latched together. The dual parts include a female bushing with a bright yellow band near one end and an annular latching groove near the other end. (See infra P4.) When an operator pushes a male elbow terminator into and over the bushing, the bushing color band completely disappears inside an annular cuff on the closest mating end of the terminator. The terminator 10 has a male electrical connector probe 20 surrounded by an insulative socket 14 which surrounds the female bushing 12 upon latching. (See Fig. 1.) Full latching occurs only when an annular latching ring on the terminator snaps into the corresponding annular latching groove on the bushing. (Figs. 5, 6; col. 1, 11.18-54; col. 4, ll. 22-60.)

This complete disappearance of the color band upon latching corresponds to "a visual indication of positive latching, " according to the claims in dispute. (See, e.g., claim 1 and further discussion infra.)

P2. The '791 patent describes the color band (see Fig. 5- P4 infra) as follows:

The color band 114 can be applied in any suitable manner, preferably by applying a colored ink by means of a roller traveling around the outer periphery of the tongue. The band 114 is preferably circumferentially continuous, but it could be interrupted as well, since it is only required that the band be at least partly visible when there is no positive latching and be invisible when there is positive latching.

(Col. 4, ll. 61-67.)

"Preferably, the band color is of a highly visible nature, such as a bright dayglow color like yellow, orange . . . which is readily visible from at least a three to five foot distance." (Col. 4, ll. 36-39.)

P3. "The present invention relates to the interconnection of electrical distribution elements and, in particular, to the interconnection between a loadbreak elbow terminator and a bushing." (Col. 1, ll. 18-21.) Unlatched conditions can be potentially dangerous and difficult to visually detect, since for safety reasons, an operator may be standing remotely from an elbow and terminator. (Col. 1, ll. 42-51.) "It would therefore be desirable to facilitate the ability of the operator to detect an unlatched condition, especially when standing remotely of the terminator and bushing." (Col. 1, 11.52-55.) To facilitate that detection, "when positive latching has occurred, the color band 114 will be completely disposed within the socket portion 115 and no longer visible." (Col. 4, ll. 52-54.)

P4. Figure 5, depicting a bushing from the '791 patent, as modified by the Examiner (Ans. 33), appears next:

(Image Omitted)

Figure 5 supra depicts a second bushing embodiment of the disclosed invention having a color band of limited width W. (Col. 4, ll. 18-51.) The color band "sharply contrasts with that of an adjacent portion 120 of the tongue 118 and also with that of the outer surface of the flange 116" on the terminator. (Col. 4, ll. 33-36.)

Exemplary Claim

Claim 1, on appeal, follows: 1. In combination, an electrical terminator and an electrical bushing component,

the terminator including a socket,

the bushing component including a tongue receivable in the socket to electrically interconnect the terminator and bushing,

the tongue and socket including a latching mechanism that positively latches the bushing component and terminator together when the tongue longitudinally enters the socket to a prescribed depth,

the tongue including a color band on a portion of an outer circumferential surface of the tongue, the color band being arranged to enter the socket and to be radially covered completely by a covering portion of the socket when the tongue enters the socket to the prescribed depth to provide a visual indication of positive latching,

the tongue including a longitudinal center axis and a longitudinal free end which constitutes an initial portion of the tongue to enter the socket,

the color band being spaced longitudinally from the free end and being spaced radially from the longitudinal axis by a first radial distance, and wherein all other portions of the outer circumferential surface disposed 40 [sic] between the color band and the free end are spaced radially from the center axis by a radial spacing no larger than the first radial distance, and

the terminator including a structure configured to allow an operator to attach a stick to the terminator in order to manipulate the terminator relative to the bushing,

wherein the color band is visible to the operator when the tongue has not entered the socket to the prescribed depth.

(App. Br. Claims App'x (emphasis added).)

The References

The Examiner employs the following references:

Yamamori et al, J.P. 63-93081 (June 16, 1988) (reference hereinafter to "Yamamori" is to a corresponding English translation).

Elastimold New Dimension in Loadbreak, Elastimold Division, Amerace Corp., Hackettstown, New Jersey (1974) ("Elastimold Brochure").

RTE Safe Break Terminator, Electrical Application and Operating Instructions, RTE Corporation, Waukesha, WI (Manual 1067) ("RTE Manual").

Stanger, R.J., Qualitative Evaluation of 15-Kv Loadbreak Designs, Elastimold Division, Amerace Corporation, Hackettstown, N.J. (August 16, 1973) ("Stanger Paper").

The Rejections

The Examiner adopted or entered the following rejections:

Claims 1-30 stand rejected under 35 U.S.C. § 102(b) as being anticipated based on either the Elastimold Brochure or the Stanger Paper, or under 35 U.S.C. § 103(a) as being obvious based on either the Elastimold Brochure or the RTE Manual, and Yamamori.

ISSUES

Appellant's arguments and the Examiner's findings raise the following issues:

Assuming arguendo that Appellant timely raises the dissemination issue, did the Examiner meet the prima facie burden of establishing that the Elastimold Brochure and the RTE Manual were publically disseminated?

Did the Examiner err in finding that the Elastimold Brochure has a bushing color band that only completely disappears in the elbow terminator, after, and not before, full latching occurs?

Did the Examiner err in finding that it would have been obvious, in view of Yamamori's color band, to modify the bushings in the RTE Manual or the Elastimold Brochure to include a similar color band?

ADDITIONAL FACTUAL FINDINGS

Elastimold Brochure

E1. Figures 1, 3, and 4 from the Elastimold Brochure at page 4 are depicted next:

(Image Omitted)

Figures 1, 3 and 4 have been slightly modified with lines or arrows and Figure 4 has been enlarged. (See El. Br 4.)^[2]

The figures above show the bushing ...