Ex parte BROWN et al.

Board of Patent Appeals and Interferences

Apr 21, 1999

08357325 (B.P.A.I. Apr. 21, 1999)

Application for patent filed December 16, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MORTIMER BROWN and IAN B. KUZNICK
____________
Appeal No. 1998-1965
Application No. 08/357,3251
____________
ON BRIEF
____________
Before CALVERT, NASE, and CRAWFORD, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 7 and 10 to 20. Claims 8 and 9 have
been withdrawn from consideration under 37 CFR § 1.142(b) as
being drawn to a nonelected invention. No claim has been
canceled.
Appeal No. 1998-1965
Application No. 08/357,325
We REVERSE.
Appeal No. 1998-1965 Page 3
Application No. 08/357,325
BACKGROUND
The appellants' invention relates to an office paneling
system with insert module. An understanding of the invention
can be derived from a reading of exemplary claims 1, 11 and 18
(the independent claims on appeal), which are set forth in the
opinion section below.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Miller 4,539,243 Sept. 3,
1985
Kelley et al. 5,038,539 Aug. 13,
1991
(Kelley)
Claims 11 to 15 and 20 stand rejected under 35 U.S.C. §
103 as being unpatentable over Miller.
Claims 1 to 7, 10 and 16 to 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Kelley in view of
Miller.
Appeal No. 1998-1965 Page 4
Application No. 08/357,325
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 10, mailed May 27, 1997) and the examiner's answer (Paper
No. 17, mailed February 18, 1998) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 16, filed December 29, 1997) for the
appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 to 7 and 10
to 20 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
Appeal No. 1998-1965 Page 5
Application No. 08/357,325
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification necessary to arrive at the claimed invention.
See In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562
(CCPA 1972). Furthermore, the conclusion that the claimed
subject matter is prima facie obvious must be supported by
evidence, as shown by some objective teaching in the prior art
or by knowledge generally available to one of ordinary skill
in the art that would have led that individual to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988).
With this as background, we turn to the subject matter of
the independent claims under appeal.
Appeal No. 1998-1965 Page 6
Application No. 08/357,325

Claim 1 reads as follows:
An office panelling system comprising a series of
mechanically connected office panels defining an office
work space, each of said panels having a support frame
selectively covered by releasable elements applied to
opposite sides of said frame and forming part of an
exterior surface of the respective panel, said panels
also including insert modules defining open or light
transmitting ports through said panels, each insert
module having a dominant rectangular frame component and
a secondary rectangular frame component, said dominant
rectangular frame component being releasably secured to
said frame and providing a finish surface to one side of
said frame, said secondary rectangular frame component
being positioned to the opposite side of the frame and
aligned with said dominant rectangular frame component
and providing a finish surface on said opposite side of
said frame, and wherein said secondary rectangular frame
component is releasably secured to and supported by said
dominant rectangular frame component.
Claim 11 reads as follows:
An insert module for providing a light transmitting
port through an office panel of an office panelling
system, said insert module having a dominant component
and a secondary component, said secondary component
releasably engaging and being supported from said
dominant component in a manner to maintain alignment of
said components, each component having a rectangular
outer frame finish portion for defining the outer
perimeter of said light transmitting port, said dominant
component further including a fastening arrangement for
engaging a frame of an office panel for supporting said
module therefrom.
Appeal No. 1998-1965 Page 7
Application No. 08/357,325
Claim 18 reads as follows:
In combination an insert module and an office panel
of an office panelling system, said insert module
defining a light transmitting port through said office
panel, said insert module having a dominant component and
a secondary component, said secondary component
releasably engaging said dominant component and being
supported from said dominant component in a manner to
maintain alignment of said components, each component
having a rectangular outer frame finish portion for
defining the outer perimeter of said light transmitting
port, said dominant component further including a
fastening arrangement engaging a frame of said office
panel and supporting said module from the frame with said
dominant component on one side of said frame and said
secondary component on the opposite side of said frame.
Next, we analyze the prior art applied by the examiner in
the rejection of the claims on appeal.
Miller's invention relates to a glazing system, and has
particular application to the provision of glazing trim. The
glazing trim comprising two complementary extrusions (e.g.,
base glazing member 10 and locking glazing member 20) having
inter-engaging teeth (e.g., tooth 19 and teeth 23), enables
the extrusions to be connected together at different spacings,
enabling the glazing trim to accommodate sheets of different
thicknesses. The glazing trim can be constructed on site by
Appeal No. 1998-1965 Page 8
Application No. 08/357,325
cutting the extrusions to length, and inter-engaging the
locking teeth of the complementary extrusions by tilting one
of the extrusions about a portion of the other until their
teeth engage. A sheet of material (e.g., a window pane) can
be held in place by resilient gaskets and wedges (e.g.,
backing gasket 31 and glazing wedge 32) interposed between the
sheet and the extrusions. Miller illustrates in Figures 1-11
several shapes of extrusions, together with a variety of
different applications for the glazing trim. Miller teaches
(column 2, lines 36-68) that
[i]n order to assemble the glazing trim, for example in
the formation of a window, the timber or other frame can
be constructed, and the glazing trim cut to size to fit
within the opening defined by the frame. The glazing trim
can conveniently be connected together in butt fashion at
the corners, and thus for example the vertical glazing
members can run the entire height of the window frame,
whilst the horizontal glazing members can run the
distance between the vertical glazing members. . . .
The base sections can then be fitted to the frame by
appropriate fasteners such as nails, screws or the like.
The fasteners conveniently pass through the base of the
base section, through the groove 14
which serves as a locating groove. The resilient backing
gasket 31 can then be fitted to the top flange of each of the
base section members 10. The optional setting block members 34
can then be provided along the bottom base section 10, and as
the setting blocks are conveniently provided in short lengths,
they can be spaced apart from one another at convenient
spacings depending upon the size of sheet 30 to be fixed
between the glazing members. Then the sheet 30 is positioned
Appeal No. 1998-1965 Page 9
Application No. 08/357,325
on the setting blocks, and pressed against the backing
gaskets. The side locking sections, are then inserted, then
the top locking sections. They can be inserted by pivoting
them slightly to ride under the tooth 19 of the base section
members. . . . The glazing wedges 32 can then be inserted in
the sides and top, and finally the bottom locking section
positioned, and its glazing wedge inserted.
Kelley's invention relates to work space management
systems. In one of its aspects, the invention relates to a
work space management system wherein walls are easily
constructed, configured and changed, and wherein modular
functional wall tiles and work tools are easily configured,
changeable and relocatable within the system without
interfering with the underlying rigid frame structure. As
shown in Figures 2, 22-25 and 28, the system includes a window
tile 30d which provides visual and light porosity to the work
space. The window tile 30d can thus function as a window
between work stations on opposite sides of a frame 40. As
shown, window tile 30d has an outer casement 38 which supports
light-transmitting pane 38a of glass or plastic and which
covers the sides of the frame members 42. Alternatively,
Kelley teaches (column 8, lines 12-16) that
Appeal No. 1998-1965 Page 10
Application No. 08/357,325
a trim segment can be attached to an interior steel frame
to enable pass-through access from one side of the pane
to another. If desirable, a clear panel of glass or
plastic can be placed between the trim segments to make a
window.
Referring now to Figures 18 and 19, Kelley discloses a
wall 16 having mounted thereto a pull down shelf tile 238.
This tile comprises a solid rectangular member 240 having a
rectangular recess 242 formed in a front 244 of the tile. A
rectangular shelf 246 having substantially the same dimensions
as the rectangular recess 242 is pivotally mounted within the
recess at a bottom 248 of the solid rectangular member 240.
The shelf tile 238 is mounted to the frame 40 in the same
manner as the display tile 184 (see Figures 12 and 13).
In both rejections before us on appeal, the examiner
relies upon Miller as teaching and/or suggesting (1) the
claimed dominant frame component and secondary frame component
as recited in claim 1, and (2) the claimed dominant component
and secondary component as recited in claims 11 and 18, except
for the claimed rectangular shape.
Appeal No. 1998-1965 Page 11
Application No. 08/357,325
In proceedings before the PTO, claims in an application2
are to be given their broadest reasonable interpretation
consistent with the specification, and that claim language
should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
The appellants argue that since Miller's glazing trim is
cut into pieces which are then separately attached to the
frame in butting relationship, Miller does not teach or
suggest the claimed dominant component and secondary component
as recited in claims 1, 11 and 18. In that regard, the
appellants point out that Miller's glazing trim pieces are not
interconnected to form a frame defining the claimed light
transmitting port. In fact, the appellants point out that
Miller teaches to specifically avoid the fabrication of frames
(see column 1, lines 8-20, and column 4, lines 1-9, of
Miller).
In view of the contrary positions taken by the examiner
and the appellants concerning the teachings of Miller, it is
essential for us to properly determine the scope of claims 1,2
11 and 18.
Appeal No. 1998-1965 Page 12
Application No. 08/357,325
Claims 11 and 18 both recite that the "insert module" has
"a dominant component and a secondary component" and that each
component has "a rectangular outer frame finish portion for
defining the outer perimeter of said light transmitting port."
In our view, these limitations taken together would properly
be interpreted by one of ordinary skill in the art as
requiring
(1) each component to have a unitary/integral finish portion
(e.g., border) defining the outer perimeter of the light
transmitting port, and (2) the shape of the unitary/integral
finish portion (e.g., border) is rectangular.
Claim 1 recites that the "insert module" has "a dominant
rectangular frame component and a secondary rectangular frame
component." In our view, these limitations taken together
would properly be interpreted by one of ordinary skill in the
art as requiring each component to have a unitary/integral
finish portion (e.g., border) in the shape of a rectangle.
It is our determination that the above-noted limitations
of claims 1, 11 and 18, are not taught or suggested by Miller
Appeal No. 1998-1965 Page 13
Application No. 08/357,325
since Miller's glazing trim pieces are not interconnected to
form a unitary/integral finish portion (e.g., border).
Additionally, it is our opinion there is no suggestion in the
combined teachings of Miller and Kelley to arrive at the
claimed invention as set forth by claims 1, 11 and 18.
For the reasons stated above, the decision of the
examiner to reject claims 1 to 7 and 10 to 20 under 35 U.S.C.
§ 103 is reversed.
Lastly we note that the drawing objection set forth by
the examiner on pages 3 and 4 of the answer relates to a
petitionable matter and not to an appealable matter. See
Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201.
Accordingly, we will not review this issue raised by examiner.
Appeal No. 1998-1965 Page 14
Application No. 08/357,325
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 7 and 10 to 20 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 1998-1965 Page 15
Application No. 08/357,325
S. WARREN HALL
133 RICHMOND STREET WEST
TORONTO, ONTARIO M5H 2L7
APPEAL NO. 1998-1965 - JUDGE NASE
APPLICATION NO. 08/357,325
APJ NASE
APJ CALVERT
APJ CRAWFORD
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 13 Apr 99
FINAL TYPED:
AIR MAIL DECISION