Ex Parte Arakawa

Board of Patent Appeals and Interferences

Apr 13, 2009

11427596 (B.P.A.I. Apr. 13, 2009)

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____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HIDEO ARAKAWA
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Appeal 2009-0047
Application 11/427,596
Technology Center 3600
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Decided:1 April 14, 2009
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0047
Application 11/427,596

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a Final
Rejection of claims 2, 6, 8 and 9. Claims 1, 3-5, and 7 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
The Appellant’s claimed invention is directed to an article hanging
system having a slidable wire holder, a detachable wire holder, a wire hook
and wire gripper for use in a display space (Spec.1:1-16). Claim 2,
reproduced below, is representative of the subject matter on appeal.
2. An article hanging system comprising:
a ceiling rail assembly installed on a ceiling;
a wire holder slidably retained to said ceiling rail
assembly;
a wire hanging down from said wire holder;
a gripper which is fixably attachable at a desired position
along said wire, and which comprises an engagement portion
for engagement with an article;
a floor rail assembly installed on a floor; and
a holder for holding a lower end of said wire, said holder
being slidable along said floor rail assembly;
wherein said ceiling rail assembly comprises:
a plurality of longitudinal rails extending in a
longitudinal direction and arranged on the ceiling; and
a lateral rail which is spanned between and
slidably coupled to the longitudinal rails so as to be slidable
with respect to said longitudinal rails; and
wherein said wire holder is slidable along said
lateral rail.

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Tunney US 2,905,806 Sep. 22, 1959
Joussemet US 3,990,665 Nov. 9, 1976

The following rejection2 by the Examiner is before us for review:
Claims 2, 6, 8 and 9 are rejected under 35 U.S.C. § 103(a) (2004) as
being unpatentable over Tunney in view of Joussemet.

ISSUE
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 2, 6, 8 and 9 over Tunney in view of
Joussemet. The issue turns on whether: (1) the Examiner has failed to
articulate a reason with rational underpinning to combine the teachings of
Tunney in view of Joussemet, and (2) the Examiner has made out a prima
facie case of obviousness regarding claim 6.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d

2 The Grounds of Rejection section of the Examiner’s Answer (Ans. 4)
stated that claims 1-2 and 6-9 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tunney in view of Joussemet. Claims 1 and 7 were
canceled in an Amendment Under 37 CFR 1.116 filed October 17, 2007,
which was noted as being entered in an Advisory Action mailed October 30,
2007. Accordingly, only claims 2, 6, 8 and 9 are involved in this appeal.
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1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Tunney discloses that it is an object of his invention to provide an
overhead studio lighting system for a television studio 10A, a
kitchen 11A, a play setting 12, a newscaster’s desk 13A and a
panel program set 14 (fig. 1); wherein the overhead studio lighting
system has a high degree of flexibility in use (col. 1, ll. 47-51), and
may be quickly and easily moved along any desired path to any
selected position (col. 1, ll. 58-60).
2. Tunney further discloses that an important feature of his invention
is to support the main power cables 57 safely above the working
level, and that if the cables extend into the working level of the
room, or become entangled with each other or with other objects,
there is serious inconvenience and danger (col. 8, ll. 41-56).
3. Tunney still further discloses that to provide the necessary safety
factor and to keep the working area unobstructed, all of the main
wires and cables are kept at a safe level above the floor (col. 10, ll.
10-20).
4. Tunney still further discloses a lighting hanging system (col. 1, ll.
47-51 and fig. 2) comprising a ceiling rail assembly including a
plurality of longitudinal tracks (15A, 16A) and a transversely
disposed track (lateral rail) (25), wherein the transversely disposed
track is slidably coupled to the longitudinal tracks (15A, 16A), a
rod (66) hanging down from and slidable in a trolley which rides
along the track (25); and a spotlight (32) attached to the rod (col. 3,
ll. 65-71).
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5. Tunney still further discloses a lighting device (33) carried by the
lower end of a pantograph (60), wherein the pantograph (60) is
vertically adjustable and is secured to a trolley (61) which rides
along the track (25) (col. 3, ll. 52-62 and fig. 2).
6. Joussemet discloses a removable attachment member (35)
connected to a cable (1) for supporting shelves (col. 3, ll. 15-34),
wherein the cable (1) is connected between a lower anchoring
member fixed to the floor and an upper anchor member (2) fixed to
the ceiling (3) (col. 1, ll. 5-10 and col. 2, ll. 5-15).
7. The ordinary meaning of the word “wire” includes “metal in the
form of a slender rod.” Merriam-Webster’s Collegiate Dictionary
(10th ed. 1996).
8. The ordinary meaning of the word “cable” includes “a wire.”
Merriam-Webster’s Collegiate Dictionary (10th ed. 1996).

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, __,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case,
the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court stated that “when a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result (citing United States v. Adams,
383 U.S. 39 S. Ct. 708 (1966)). Id at 1740.
In KSR, the Supreme Court stated that “[o]ften, it will be necessary for
a court to look to interrelated teachings of multiple patents; the effects of
demands known to the design community or present in the marketplace; and
the background knowledge possessed by a person having ordinary skill in
the art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”
Id at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion
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of obviousness”)). However, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
When construing claim terminology in the United States Patent
and Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).

ANALYSIS
Rejection of claims 2, 8 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Tunney in view of Joussemet.

Appellant contends that if Tunney were modified as suggested by the
Examiner (Ans. 4-5) to include a mirror image of Tunney’s ceiling assembly
on the floor, the floor assembly would prevent the operation of the lighting
system in the manner envisioned by Tunney. Further, Appellants contend
that providing a floor rail assembly in Tunney would prevent the space
below the overhead lighting from being used for its intended purpose (Br.
16). Tunney discloses that it is an object of his invention to provide an
overhead studio lighting system for a television studio 10A, a kitchen 11A, a
play setting 12, a newscaster’s desk 13A and a panel program set 14 (fig. 1);
wherein the overhead studio lighting system has a high degree of flexibility
in use (col. 1, ll. 47-51), and may be quickly and easily moved along any
desired path to any selected position (col. 1, ll. 58-60) (Fact 1). Tunney
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further discloses that an important feature of his invention is to support the
main power cables 57 safely above the working level, and that if the cables
extend into the working level of the room, or become entangled with each
other or with other objects, there is serious inconvenience and danger (col. 8,
ll. 41-56) (Fact 2). Tunney still further discloses that to provide the
necessary safety factor and to keep the working area unobstructed, all of the
main wires and cables are kept at a safe level above the floor (col. 10, ll. 10-
20) (Fact 3). We find that if any of Tunney’s overhead lights were attached
to a cable that was connected between the ceiling and the floor; the overhead
lighting would not be at a safe level above the floor and out of the way of the
furniture in a room, as Tunney has intended. Additionally, we find that if
any of Tunney’s overhead lights were attached to a cable that was connected
between the ceiling and the floor, furniture placement in a room could affect
the location, and the ease and speed of the positioning of the lights.
Therefore, we find that there is no rational reason to provide a floor rail
assembly in Tunney. Further, as Joussemet discloses a removable
attachment member connected to the cable for supporting shelves, wherein
the cable is connected between a lower anchoring member fixed to the floor
and an upper anchor member fixed to the ceiling (Fact 6), Joussemet also
does not provide a rational reason to provide a floor rail assembly in Tunney
without preventing Tunney’s overhead lighting from being a safe level
above the floor and out of the way of the furniture in a room, and from being
quickly and easily moved along any desired path to any selected position.
Therefore, we do not agree with the Examiner’s analysis (Ans. 6-7) and find
that there is no rational reason to combine the teachings of Tunney and
Joussemet. We conclude that the Examiner erred in rejecting claims 2, 8 and
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9 over Tunney in view of Joussemet. We reverse the rejection of claims 2, 8
and 9 under 35 U.S.C. § 103.

Rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Tunney in view of Joussemet.

Appellant contends that the Examiner in rejecting claim 6 over
Tunney in view of Joussemet has not treated the claimed structural
relationship between the sliding portion of the wire holder, and the rail with
groove and horizontal opening as called for in claim 6, lines 19-33 (Br. 23
and 24). We agree with Appellant and find that the Examiner’s analysis
(Ans. 5 and 8) has not treated the claimed structural relationship between the
sliding portion of the wire holder, and the rail with groove and horizontal
opening as called for in claim 6, lines 19-33. The Examiner has not
explained, and it is not apparent to us, how the combined teachings of
Tunney and Joussemet disclose or suggest the features called for in claim 6,
lines 19-33. The Graham factors continue to define the inquiry that controls
an analysis of whether the claimed subject matter is obvious under 35 U.S.C.
§ 103. See KSR at 1734. We conclude that the Examiner has not made out a
prima facie of obviousness regarding claim 6 and, therefore, erred in
rejecting claim 6 over Tunney in view of Joussemet. Accordingly, we
reverse the rejection of claim 6 under 35 U.S.C. § 103.

CONCLUSION OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 2, 6, 8 and 9 under 35 U.S.C. § 103(a) as being unpatentable
over Tunney in view of Joussemet.
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DECISION
The decision of the Examiner to reject claims 2, 6, 8 and 9 over
Tunney in view of Joussemet is reversed.
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REVERSED

JRG

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