Ex Parte Burnett et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201612632378 (P.T.A.B. Feb. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/632,378 12/07/2009 Marvin K. Burnett 37190 7590 03/01/2016 VARNUM, RIDDERING, SCHMIDT & HOWLETT LLP 333 BRIDGE STREET, NW P.O. BOX 352 GRAND RAPIDS, MI 49501-0352 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. Sauder P6US3-CON 3691 EXAMINER MACARTHUR, VICTOR L ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 03/01/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patents@varnumlaw.com kanoel@varnumlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARVIN K. BURNETT, TERRY W. ARMEY, JOHN R. AUTRY, NEAL FIFER, RICHARD A. NELSON, DANIEL J. SAUDER, MYRL D. SAUDER, and TROY E. TEDROW Appeal2014-001940 Application 12/632,378 Technology Center 3600 Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Marvin K. Burnett et al. (Appellants1) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1---6 and 8-13. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is Sauder Woodworking Company. Br. 1. Appeal2014-001940 Application 12/632,378 THE CLAIMED SUBJECT MATTER Claims 1 and 13 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A furniture component comprising a plurality of furniture members adapted to be assembled together through coupling assemblies, for interconnecting adjacent ones of said furniture members, at least one of said coupling assemblies comprising: a tongue mounted to a first surface of a first member of said plurality of furniture members, extending along said first surface and terminating a first predetermined distance from a first edge of said first member; a slot formed within a first surface of a second member of said plurality of furniture members, commencing at an initial edge of said first surface of said second furniture member, and terminating a second predetermined distance from a first edge of said second member; when said furniture component is assembled, said tongue is received within said slot so as to interlock together said first fi.1rniture member and said second furniture member; and said first predetermined distance and said second predetermined distance are sufficient so that said coupling assembly is hidden from view from a front of said furniture component. THE REJECTIONS Claim 12 stands rejected under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter Appellants regard as their invention. Claims 1---6, 8-10, 12, and 13 stand rejected under 35 U.S.C. § 102(b) as anticipated by Adam (GB 2041146 A; iss. Sept. 3, 1980). 2 Appeal2014-001940 Application 12/632,378 Claims 1, 4---6, and 10-12 stand rejected under 35 U.S.C. § 102(b) as anticipated by Green (US 5,454, 331; iss. Oct. 3, 1995). OPINION Claim 12 - 35 U.S. C. § 112, second paragraph The Examiner determines that "[i]t is unclear how claim 12 structurally further limits the invention." Final Act. 2. In particular, the Examiner finds that Appellants have failed to demonstrate "how one of ordinary skill in the art could determine what structurally differs from elements that are --determined wholly or not at all by the quantitative relationship." Ans. 8. Appellants describe the meaning of claim 12, in that "[c]laim 12 defines the concept that if the quantitative relationship, or difference, between the first and second predetermined distances would be varied, [then] the relative positioning of the first and second members of the furniture component would also be varied." Br. 5. Appellants conclude that because "claim 12 defines a particular structure where relative positioning of certain subcomponents of that structure is determined by a relationship difference between certain predetermined and predefined distances, ... claim 12 is definite and conforms with all requirements of§ 112." Id. The test for indefiniteness is whether "those skilled in the art would understand what is claimed when the claim is read in light of the [S]pecification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Claim 12 depends from independent claim 1 and recites that "the relative positioning of [the first and second members] ... is determined in part by the quantitative relationship 3 Appeal2014-001940 Application 12/632,378 between [the first and second predetermined distances]." Br. 10 (Claims App.). We determine that one skilled in the art would understand what is claimed in claim 12, when read in light of the Specification. However, we agree with the Examiner that although claim 12 explains how the relative positioning of the first and second members is determined, claim 12 does not recite any structure or function that further limits independent claim 1, as required by the fourth paragraph of 35 U.S.C. § 112. Thus, we do not sustain the Examiner's rejection under 35 U.S.C. § 112, second paragraph, and we enter a NEW GROUND OF REJECTION of claim 12 under 35 U.S.C. § 112, fourth paragraph. Claims 1-6, 8-10, 12, and 13 -Anticipated by Adam The Examiner finds that Adam discloses the furniture component recited in independent claims 1 and 13, including any tongue of 10 received in slot 1 of first member 10, and any slot of 1 receiving a tongue of 10 of second member 1. Final Act. 3. In particular, the Examiner finds that Adam discloses a T -shaped tongue at the end (and mounted to the first surface) of first member 10. See Ans. 9 (citing the Examiner's Annotated Figure 2 of Adam). First, Appellants contend that Adam "does not include any particular element corresponding to a tongue[,] as defined in claim 1." Br. 6. Appellants contend that "[p]hysically, [independent claims 1 and 13 require] the tongue to be mounted to a first surface of a first member, and extending along the first surface." Id. However, the Examiner identifies, with specificity, the T-shaped tongue at the end of Adam's first member 10 as corresponding to the claimed tongue element, wherein grooves 1 7 define the side walls of the T-shaped tongue. See Ans. 9 (referencing the Examiner's 4 Appeal2014-001940 Application 12/632,378 Annotated Figure 2 of Adam); see also Adam, p. 1, 11. 128-130; Fig. 1. Appellants' contention does provide persuasive argument or evidence of error in the Examiner's finding. 2 Second, Appellants argue that Adam "utilizes a third piece comprising a channel section," and that "a third piece is not required for components in accordance with [Appellants'] invention." Br. 6. The Examiner responds that independent claims 1 and 13 "do not recite any negative limitation expressly forbidding a third piece having a channel section." Ans. 10. Adam discloses that "supporting panel [ 1] is provided with a dove tail shaped groove 3." Adam, p. 1, 11. 113-116. Adam further discloses that channel section 19 is contoured to conform to the dove tail shape of the groove [3], and that channel section 19 "comprises a pair of sidewall portions 21 each of which is provided with a small inwardly extending ridge 23," wherein "panel [10] is secured in the channel section [19] as a result of the mating fit between ridges 23 and grooves 17." Id. at p. 2, 11. 1-5, 14--17, 21-23. Thus, Adam discloses that supporting panel 1 has a slot formed in its surface comprising, or further defined by, channel section 19. Independent claims 1 and 13 require, in relevant part, "a slot formed within a first surface of a second member ... [wherein the] tongue is received within [the] slot so as to interlock together [the first and second furniture members]." Br. 8, 11 (Claims App.). We agree with the Examiner that independent claims 1 and 13 do not preclude the slot formed within the 2 Appellants use the terms "mounted to" and "formed on" interchangeably. See Br. 11 (Claims App., independent claim 13) ("a tongue mounted to a first surface of [the] first furniture member . . . [the] tongue further comprises a central portion integral with said T-shaped portion, and formed on said first furniture member") (emphasis added). 5 Appeal2014-001940 Application 12/632,378 first surface of the second member from including channel section 19 (or other insert) that defines the side walls of the slot. Accordingly, we sustain the Examiner's rejection of independent claims 1 and 13 as anticipated by Adam. Appellants chose not to present separate arguments for the patentability of dependent claims 2---6, 8-10, and 12. Br. 6. Therefore, we also sustain the Examiner's rejection of claims 2- 6, 8-10, and 12. Claims 1, 4-6, and 10--12-Anticipated by Green The Examiner finds that Green discloses the furniture component recited in independent claim 1, including "any tongues of Green's tongue containing members" and "any slots of Green's slot containing members." Final Act. 3. Appellants argue that Green describes that "at least one of the mortise and tenon connections is a self-locking connection," and that "[t]his type of connection is not required [by Appellants'] invention." Br. 6. Appellants further argue that "Green requires a wedge or similar type of configuration for locking together the various furniture members," and that "[s]uch elements are not required and will not serve any purpose for [Appellants'] invention." Id. at 6-7. The Examiner correctly responds that "Appellants' claims do not recite any negative limitation expressly forbidding a self-locking connection" or "forbidding a wedge." Ans. 10-11. Specifically, Appellants' arguments do not apprise us of any errors in the Examiner's findings that Green discloses the structures, as recited in independent claim 1, regardless of whether Green also discloses structures in addition to the claimed structures. Independent claim 1 ernploys the transitional phrase 6 Appeal2014-001940 Application 12/632,378 "comprising" which means that the claim is not limited to only the specific structure recited in the claim but can include additional structure, such as self-locking features and wedges. '--' <....- Accordingly, we sustain the Examiner's rejection of independent claim 1 as anticipated by Green. Appellants chose not to present separate arguments for the patentability of dependent claims 4--6 and 10-12. Br. 7. Therefore, we also sustain the Examiner's rejection of claims 4--6 and 10- 12. DECISION The Examiner's rejection of claim 12 under 35 U.S.C. § 112, second paragraph, is REVERSED, and we enter a NEW GROUND OF REJECTION under 35 U.S.C. § 112, fourth paragraph. The Examiner's rejection of claims 1--6, 8-10, 12, and 13 under 35 U.S.C. § 102(b) as anticipated by Adam is AFFIRMED. The Examiner's rejection of claims 1, 4--6, and 10-12 under 35 U.S.C. § 102(b) as anticipated by Green is AFFIRMED. Regarding the affirmed rejection(s), 37 CPR§ 41.52(a)(l) provides "Appellant[s] may file a single request for rehearing within two months from the date of the original decision of the Board." In addition to affirming the Examiner's rejection(s) of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of 7 Appeal2014-001940 Application 12/632,378 the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. ... (2) Request rehearing. Request that the proceeding be rehear under § 41.52 by the Board upon the same record .... Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejections, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejections are overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejections, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation