NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: HUBBELL INCORPORATED,
Appellant
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2015-1222
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/012,086.
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Decided: April 7, 2016
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WILLIAM EUGENE BRADLEY, Michael Best Friedrich,
Washington, DC, for appellant.
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by MICHAEL
SUMNER FORMAN, JEREMIAH HELM.
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Before DYK, PLAGER, and TARANTO, Circuit Judges.
PER CURIAM.
Hubbell Incorporated owns U.S. Patent No. 7,323,639,
which describes and claims certain adaptable weather-
proof covers for electrical outlets and methods of in-
stalling such covers. In an ex parte reexamination of the
2 IN RE: HUBBELL INCORPORATED
’639 patent, an examiner determined that the products
and methods of claims 1–23 would have been obvious over
various combinations of the prior-art references Hayduke,
Berlin, Hartmann, and Shotey, and the Patent Trial and
Appeal Board affirmed the examiner’s rejections on
appeal and rehearing. Ex parte Hubbell Inc., No. 2014-
3866, 2014 WL 1398353 (PTAB Apr. 9, 2014) (Hubbell);
Ex parte Hubbell Inc., No. 2014-3866, 2014 WL 4640118
(PTAB Sept. 16, 2014) (Rehearing Op.). Hubbell appeals,
arguing that each of Hayduke and Berlin teaches away
from the combinations relied on by the Board, there is
insufficient evidence of motivation to combine Hartmann
and Berlin, and the Board failed to consider evidence of
commercial success. We affirm.
BACKGROUND
The ’639 patent describes a “cover that may inter-
changeably and safely accommodate virtually all common-
ly encountered electrical devices used in conjunction with
electrical device boxes.” ’639 patent, col. 2, lines 1–4. The
“electrical device” is an outlet, light switch, etc., inside a
box of the sort commonly recessed in or mounted on a
wall. Id., col. 1, lines 31–35. Figure 12 is illustrative:
Fig. 12
IN RE: HUBBELL INCORPORATED 3
In Figure 12, the cover 100 includes a base plate 110 and
an adapter plate 150. The base plate may use keyholes
170—which permit adjustments after partial insertion—
for attachment to the electrical device (the latter, not
shown, would be to the right of the cover in Figure 12).
Id., col. 7, lines 24–45. The adapter plate—which may fit
just one device, e.g., a two-plug outlet, or may be adapta-
ble to fit different devices, see id., col. 8, lines 8–63—may
also include keyholes that extend fully through the adapt-
er plate and align with the underlying keyholes in the
base plate. Id., col. 10, lines 37–41. Although not shown
in Figure 12, the base plate may also include at least one
removable hinge and an attached protective cover (which
would go to the left in Figure 12). Id., col. 13, lines 9–14.
Claim 1, which is representative in this appeal, reads:
1. An in-use weather protective electrical outlet
cover for an electrical outlet comprising at least
one socket face and at least one mounting screw
aperture, the electrical outlet cover comprising:
a base assembly comprising an adapter coupled
to a base;
wherein the adapter has at least one opening ex-
tending through the adapter, the at least one
opening comprising a size large enough to re-
ceive the at least one socket face, the at least
one opening configured to surround the at
least one socket face when the base assembly
is installed on the electrical outlet;
wherein the base assembly comprising at least
one base hinge member on a side of the base
assembly and at least one keyhole slot extend-
ing through the base assembly, the keyhole
slot positioned to align with the at least one
mounting screw aperture when the base as-
sembly is installed on the electrical outlet; and
4 IN RE: HUBBELL INCORPORATED
a protective cover comprising at least one cover
hinge member configured for hinged attach-
ment to the at least one base hinge member;
wherein the at least one keyhole slot is accessible
for selective adjustment of the base assembly
after the base assembly is installed on the elec-
trical outlet.
Id., col. 16, lines 30–52 (emphasis added).
Following submission of a request for ex parte reex-
amination of the ’639 patent, an examiner identified
substantial new questions of patentability based on
combinations of various prior-art references. The exam-
iner rejected claims 1–23 for obviousness, primarily based
on the combination of Hayduke and Hartmann and,
separately, Berlin and Hartmann.
U.S. Patent No. 6,133,531 to Hayduke et al. discloses
a weatherproof outlet cover assembly for protecting an
outdoor electrical outlet. Hayduke teaches a base plate
that includes a keyhole slot, a protective cover attached
by a hinge, and an adapter plate. Hayduke does not
disclose holes in the adapter plate to make the underlying
base-plate keyhole slots accessible after the adapter plate
is installed. U.S. Patent No. 5,280,135 to Berlin et al.
discloses a weatherproof protective outlet cover that
includes a base plate and a protective housing attached
via a hinge. Berlin does not teach a keyhole slot in the
base plate but instead uses standardized screw holes to
attach the base plate to the electrical device. U.S. Patent
No. 1,557,526 to Hartmann describes a plate that attach-
es to an electrical outlet that includes a hook for support-
ing an electrical fixture. The plate includes a keyhole
slot, and the hook, positioned in front of the keyhole slot,
includes a hole to make the keyhole slot accessible
Hubbell appealed the rejection of claims 1–23 to the
Board. With respect to the combination of Hayduke and
IN RE: HUBBELL INCORPORATED 5
Hartmann, Hubbell argued that because neither reference
discloses a keyhole slot that is accessible after installa-
tion, Hartmann does not provide motivation to modify
Hayduke. Hubbell also asserted that Hayduke teaches
away from including holes in the adapter plate, other
than those exposing the outlet itself. For the combination
of Berlin and Hartmann, Hubbell argued that because
Hartmann does not disclose an accessible-after-
installation keyhole, one of skill in the art would not have
been motivated to substitute Berlin’s round screw hole
with a keyhole slot. Hubbell also presented evidence that
products embodying the ’639 patent have been commer-
cially successful.
The Board affirmed the examiner’s rejection of claims
1–23. Regarding the Hayduke and Hartmann combina-
tion, the Board first found that Hartmann discloses a
keyhole slot accessible after installation. Hubbell, 2014
WL 1398353, at *5. The Board then adopted, id., the
examiner’s rationale that one of skill in the art would
have been motivated to combine Hayduke and Hartmann
“to allow for aligning, tightening and loosening of the
mounting screws after the base assembly is installed on
the electrical socket,” J.A. 471–72. The Board also deter-
mined that Hubbell did “not provide[ ] explicit evidence
from Hayduke specifically discouraging or discrediting
providing [ ] accessibility” to the keyhole slot. Hubbell,
2014 WL 1398353, at *6.
With respect to the Berlin and Hartmann combina-
tion, the Board agreed with the examiner that one of
ordinary skill in the art would have been motivated to
modify the screw hole in Berlin to use a keyhole slot of the
sort taught by Hartmann. Id. at *9–10. The Board
identified several reasons for such use of a keyhole slot in
place of a screw hole: “to allow removal of the outlet cover
without completely removing the mounting screws, align-
ing the socket faces of the outlet cover after installation,
and allowing tightening of the outlet cover after installa-
6 IN RE: HUBBELL INCORPORATED
tion.” Id. at *9. “[G]iven the ease of installation and
alignment provided by Hartmann’s keyhole slots for
outlet covers,” the Board determined, one skilled in the
art would have been motivated to make this modification
to Berlin. Id.
The Board addressed Hubbell’s evidence of commer-
cial success and found it insufficiently tied to the asserted
invention. Id. at *6–7. In particular, the Board noted
that the products embodying the invention sold for an
average price of less than half of the average price of the
comparator product. Id. at *7. Because the commercial
success “may have been reasonably attributable in part or
in whole to its significantly lower price rather than to the
unique characteristics of the claimed invention,” the
Board said that it was “unpersuaded that the sales fig-
ures for [allegedly patent-covered products] are due to the
claimed invention rather than price or a myriad of other
factors.” Id.
Hubbell requested rehearing, arguing that the Board
did not fully consider its teaching-away arguments. The
Board granted the request in part, but it did not change
the result. The Board explained further why it found that
neither Hayduke nor Berlin teaches away from the pro-
posed combinations with Hartmann. Rehearing Op., 2014
WL 4640118, at *1–3.
Hubbell appeals under 35 U.S.C. § 141(b), challenging
the Board’s rejection of claims 1–23 for obviousness. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Whether a claimed invention would have been obvious
is a question of law, based on factual determinations
regarding the scope and content of the prior art, differ-
ences between the prior art and the claims at issue, the
level of ordinary skill in the pertinent art, and any objec-
tive indicia of non-obviousness. Randall Mfg. v. Rea, 733
IN RE: HUBBELL INCORPORATED 7
F.3d 1355, 1362 (Fed. Cir. 2013). We review the Board’s
compliance with the governing legal standards de novo
and its underlying factual determinations for substantial
evidence. Id.
Hubbell first challenges the Board’s rejection of a
number of claims for obviousness over Hayduke and
Hartmann, treating claim 1 as representative. The only
element of claim 1 that Hubbell argues is missing from
Hayduke is a keyhole slot that is accessible after installa-
tion. And Hubbell does not dispute in this court that
Hartmann discloses a base plate with a keyhole slot
accessible after installation. Hubbell’s argument is that
one of ordinary skill in the art would not have modified
Hayduke by adopting this feature of Hartmann to include
the claim-required keyholes because Hayduke teaches
away from keyhole slots that are not covered after instal-
lation. In particular, Hubbell points to a passage in
Hayduke that reads: “The cover 10 of the present inven-
tion further preferably includes a pivotal wall plate
insertable within the back body 40 for preventing direct
access to the box which contains the outlets.” ’531 patent,
col. 9, lines 64–67 (emphasis added). Hubbell suggests
that this passage teaches away from adding holes in the
adapter plate that would make the keyhole slot accessible
after installation because such holes would not prevent
direct access to the outlet box.
The Board did not err in determining that this state-
ment in Hayduke does not teach away from making the
keyhole slots of Hayduke accessible. The passage, which
discusses a preferred embodiment, “does not teach away
. . . [as] it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Hubbell does
not identify any passage in Hayduke that explicitly dis-
credits or discourages direct access to the outlet box, and
8 IN RE: HUBBELL INCORPORATED
the cited statement does no more than articulate a prefer-
ence for an adapter plate that prevents direct access.
That stated preference is insufficient to teach away from
the claimed invention. See id.; In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
Moreover, to the extent that Hayduke aims to prevent
any “substantial direct access” to the electrical box, sub-
stantial evidence supports the Board’s finding that the
combination of Hayduke and Hartmann would not be
inconsistent with that goal. Rehearing Op., 2014 WL
4640118, at *1. The Board found that “the heads of the
mounting screws block direct access to the box.” Id.
(emphasis in original). “[T]he combination of Hayduke
and Hartman[n] would not interfere with the function of
[the adapter plate] in preventing direct access to the
underlying electrical box containing the outlets because
the screws would block any access through the openings”
in the adapter plate. Id. at *2. The Board’s interpreta-
tion of Hayduke and blocking access is reasonable, further
supporting its rejection of Hubbell’s teaching-away con-
tention.
Hubbell also challenges the Board’s rejection of nu-
merous claims for obviousness over Berlin and Hartmann.
Hubbell treats claim 1 as representative and asserts that
Berlin teaches away from using keyhole slots. Berlin’s
weatherproof cover is fastened to an outlet box using
threaded screws that pass through threaded screw holes
in the base plate, and those “holes are sized and adapted
to conform to the standards for electrical outlets and
boxes.” ’135 patent, col. 4, lines 21–23. Hubbell suggests
that this statement would have discouraged one from
replacing screw holes with keyhole slots, which do not
conform to size and location standards.
The Board properly found no teaching away and, more
affirmatively, a motivation to adopt keyholes. Berlin’s
stated preference for standardized screw holes does not
IN RE: HUBBELL INCORPORATED 9
disparage or discredit alternatives such that it teaches
away from the claimed invention. DePuy Spine, 567 F.3d
at 1327. And the Board properly determined that one of
ordinary skill in the art would have been motivated to
replace the screw holes with keyhole slots: “Hartmann’s
teaching of using keyhole slots to permit mounting the
assembly of Berlin without the need to completely remove
the requisite mounting screws is persuasive of a useful
purpose for the modification.” Hubbell, 2014 WL
1398353, at *10. Motivation may be found, in other
words, in the Hartmann keyholes’ enabling the Berlin
cover to be installed, adjusted, and removed without
complete withdrawal of the mounting screw.
Hubbell further contends that the Board erred in its
consideration of the evidence of commercial success. We
see no error. Hubbell submitted a declaration and sales
figures from 2006–2012 that show that three allegedly
patent-covered products outsold a product that does not
embody the claimed invention. J.A. 618–25. But the
Board found that the allegedly patent-covered products
were in fact “priced significantly lower than” the product
not covered by the patent. Hubbell, 2014 WL 1398353, at
*7. In light of that evidence-supported finding, the Board
determined that it could not find that the success of the
allegedly patent-covered products was attributable to the
claimed invention. The Board did not err in that deter-
mination or, therefore, in not finding a commercial-
success basis for coming to a different conclusion about
obviousness than the rest of the analysis warranted.
CONCLUSION
For the foregoing reasons, we affirm the Board’s rejec-
tion of claims 1–23.
AFFIRMED