Federal Circuit No. 2015-1222

The Federal Circuit affirmed claim rejections involving obviousness to combine references, finding the patent owner’s teaching away argument insufficient.

The claims of Hubbell Incorporated's ("Hubbell") U.S. Patent No. 7,323,639 were subject to an ex parte reexamination and were rejected as being obvious in view of two combinations of references, first, a combination Hayduke et al. (US 6,133,531; "Hayduke") in view of Hartmann (US 1,557,526), and second, a combination of Berlin et al. (US 5,280,135; "Berlin") in view of Hartmann.

In each of the combinations, the rejection acknowledged that neither Hayduke nor Berlin disclosed the following features of representative claim 1, but instead relied on Hartmann for these features: "…a base assembly comprising…at least one keyhole slot extending through the base assembly…wherein the at least one keyhole slot is accessible for selective adjustment of the base assembly after the base assembly is installed on the electrical outlet."  That is, the rejection relied on Hartmann for the claimed keyhole slot extending through a base assembly.

Hubbell argued that it would not have been obvious to modify Hayduke's cover 10 to include Hartmann's keyhole slot because Hayduke describes: "The cover 10 of the present invention further preferably includes a pivotal wall plate insertable within the back body 40 for preventing direct access to the box which contains the outlets" Hayduke col. 9, lines 64-67.  Based on this, Hubbell argued that would teach away from adding holes in the adapter plate that would make the keyhole slot accessible because the holes would not prevent direct access to the outlet box.  Hubbell also argued that it would not have been obvious to use Hartmann's non-standard keyhole slot because Berlin teaches a cover with holes that"are sized and adapted to conform to the standards for electrical outlets and boxes" at Berlin col. 4, lns. 21-23.

In response to Hubbell's arguments, it was noted that neither of Hayduke's nor Berlin's descriptions 'criticize, discredit, or otherwise discourage' investigation (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. 567 F.3d 1314, 1327 (Fed. Cir. 2009)) into the invention as claimed, and therefore, the Federal Circuit affirmed the rejections.   In doing so, the Federal Circuit noted that the statements relied upon by Hubbell merely articulated a preference for an adapter plate that prevents direct access, which was insufficient to teach away. 

Further, Hubbell also submitted evidence that their patent covered products which outsold similar products, but the Federal Circuit noted that the Board's rejections at least because Hubbell's products were "priced significantly lower than," the similar products, and therefore the Federal Circuit affirmed the Board's rejection of the claims.