Ex Parte Gawel

Board of Patent Appeals and Interferences

May 11, 2006

10166002 (B.P.A.I. May. 11, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE

_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte THEODORE E. GAWEL

______________

Appeal No. 2005-2163
Application 10/166,002
______________

ON BRIEF
_______________

Before OWENS, JEFFREY T. SMITH, and FRANKLIN, Administrative
Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 1-12. Claims 13-23 have been allowed.
Claims 1, 2, 5, 6, and 9 are representative of the subject
matter on appeal and are set forth below:

1. A shelf unit for use with a wire rack, said wire rack
having at least two parallel, spaced-apart support rods and a
plurality of parallel, spaced-apart, support wires fastened at
right angles to said support rods with adjacent, parallel,
spaced-apart support rods and adjacent, transverse, parallel,
spaced-apart wires forming rectangular openings in said wire
rack; said shelf unit comprising:
Appeal No. 2005-2163
Application No. 10/166,002

-2-

a) a substantially flat, elongated member capable of
transversely contacting said support wires of said wire rack;
and

b) a cleat;

1) attached transversely to said substantially flat,
elongated member;

2) sized to fit within one of the said rectangular
openings formed by said adjacent, parallel, spaced-apart
support rods and said adjacent, transverse, parallel spaced-
apart wires of said wire rack when said cleat is placed over
said one of said rectangular openings and moved directly
downward within said one of said rectangular openings; and

3) extendable downward within said one of said
rectangular openings sufficiently to bring said elongated
flat member in a resting position on said support wires.

2. The shelf unit according to claim 1 further comprising a
second cleat, said second cleat;

1) attached transversely to said substantially flat,
elongated member;

2) sized to fit within a second one of said rectangular
openings formed by said adjacent, parallel, spaced-apart support
rods and said adjacent, transverse, parallel spaced-apart wires
of said wire rack when said second cleat is placed over said
second one of said rectangular openings and moved directly
downward within said second one of said rectangular openings; and

3) extendable downward within said second one of said
rectangular openings sufficiently to bring said elongated flat
member in a resting position on said support wires.

5. The shelf unit according to claim 1 wherein said cleat
is capable of frictionally engaging said support wires.

6. The shelf unit according to claim 1 wherein said
essentially flat elongated member is formed from at least two
slats.

Appeal No. 2005-2163
Application No. 10/166,002

-3-

8. The shelf unit according to claim 6, wherein said slats
are in substantial contact with each other.

9. The shelf unit according to claim 1 wherein at least a
portion of one of a) said flat elongated member and b) said cleat
comprise an insect repellant material.

11. The shelf unit according to claim 1 wherein at least a
portion of one of a) said flat elongated member and b) said cleat
comprise cedar wood.

The examiner relies upon by the following references as
evidence of unpatentability:

Biggs et al. (Biggs) 4,567,701 Feb. 4, 1986
Storti 4,768,686 Sep. 6, 1988
Conforti 5,282,595 Feb. 1, 1994

On page 5 of the brief, appellant indicates that the claims
do not stand or fall together. Appellant groups the claims
according to the respective rejection. Our consideration of a
particular claim is made evident in the respective Sections,
infra. See 37 CFR § 41.37(c)(1)(vii)(September 2004); formerly
37 CFR § 1.192(c)(7)(2003). Also see Ex parte Schier, 21 USPQ2d
1016, 1018 (Bd. Pat. App. & Int. 1991).
Claims 1-12 stand rejected under 35 U.S.C. § 112, second
paragraph (indefiniteness).
Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Conforti.
Claims 6, 8, and 11 stand rejected under 35 U.S.C. § 103 as
being obvious over Conforti in view of Biggs.
Claims 9-11 stand rejected under 35 U.S.C. § 103 as being
obvious over Conforti in view of Storti.
We have carefully reviewed appellant’s brief and reply
brief, the examiner’s answer, and the evidence of record. This
Appeal No. 2005-2163
Application No. 10/166,002

-4-

review has led us to the following determinations.

OPINION
I. The 35 U.S.C. § 112, second paragraph (indefiniteness)
rejection

On page 3 of the answer, the examiner refers to the Office
action of March 7, 2003 regarding her position for this
rejection. The examiner states that claim 1 is indefinite
because it is unclear if appellant is attempting to claim the
subcombination of a “shelf unit with use of a wire rack”, recited
in the preamble, or the combination of a shelf unit and a wire
rack. The examiner also asserts that each claim “attempts to
define a claimed structure, the cleat or cleat section, by an
unclaimed structure, the elements and spacing of wire rack, which
is improper”. Office Action of March 7, 2003, page 2.
Appellant responds to this rejection on pages 6-12 of the
brief, and also in the reply brief. In the reply brief,
appellant indicates that he has filed an amendment in which all
positive recitations have been changed to functional recitations.
The examiner entered this amendment. See the Advisory Action
mailed January 3, 2005.
Upon our review of claim 1, we agree with appellant’s
statement made on page 7 of the brief that he is claiming a shelf
unit for use with a wire rack. The functional relationships are
self-evident (and therefore are not indefinite), as discussed
below.
Claim 1 recites that the shelf unit is for use with a wire
rack. The shelf unit comprises two components. Component a) is
an elongated member capable of transversely contacting the
support wires of a wire rack. Component b) is a cleat and the
cleat is sized to fit within one of the rectangular openings of a
wire rack when the cleat is placed over the rectangular opening.
Appeal No. 2005-2163
Application No. 10/166,002

-5-

The cleat is also extendable downward within the rectangular
opening sufficiently to bring the elongated member in a resting
position on the support wires.
In view of the above, we therefore reverse the 35 U.S.C.
§ 112, second paragraph (indefiniteness) rejection.

II. The 35 U.S.C. § 102(b) rejection of claims 1, 2, and 5-7 as
being anticipated by Conforti

We consider claims 1, 2 and 5 in this rejection, according
to appellant’s aforementioned grouping.
We are in full agreement with the examiner’s position
regarding this rejection, as set forth on page 3 of the Office
Action mailed March 7, 2003. We add the following for emphasis
only.
As an initial matter, as determined above, claim 1 is
definite regarding the functional relationships recited. That
is, the claimed shelf unit for use with a wire rack comprises
components a) and b) that have a functional relationship with a
wire rack. This does not mean that a wire rack is a component of
the claim.1 In this light, we provide the following discussion.
As correctly stated by the examiner on page 4 of the Answer,
the courts have established that a prior art structure that is
capable of performing the intended use recited in the claim,
meets the claim. That is, a recitation with respect to the
manner in which a claimed apparatus is intended to be employed
does not differentiate the claimed apparatus from a prior art
apparatus satisfying the structural limitations of that claimed.
See Ex parte Masham, 2 USPQ 1647, 1648 (Bd. Pat. App. & Int.

1 We have fully reviewed appellant’s comments made on pages 8-12 of the
brief. Appellant argues that the wire rack is a required element of
the claims, but we are not so persuaded. As discussed, supra, the
recitations regarding the wire rack give functional meaning to the
claims.
Appeal No. 2005-2163
Application No. 10/166,002

-6-

1987). Also see In re Yanush, 477 F.2d 958, 959, 177 USPQ 705,
706 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 1032, 168
USPQ 530, 534 (CCPA 1971); In re Casey, 370 F.2d 576, 580, 152
USPQ 235, 238 (CCPA 1967); and In re Otto, 312 F.2d 937, 939, 136
USPQ 458, 459 (CCPA 1963).
Hence, the issue before us is whether the structure of
Conforti is capable of performing the function as recited in
appellant’s claims 1, 2, and 5.
With regard to claims 1 and 2, Figure 2A of Conforti shows
member 1 (which the examiners equates with appellant’s elongated
member of component a) of claim 1) having multiple cleats 2. The
issue is whether this configuration is capable of transversely
contacting support wires of a wire rack, and whether the cleats
can fit into rectangular openings of a wire rack and are
extendable downward within the rectangular opening. We agree
with the examiner that it is capable of such function. Appellant
has not provided arguments convincing us otherwise.
We regard to claim 5, claim 5 recites that the cleat must
be capable of frictionally engaging the support wires. We also
agree with the examiner that the configuration set forth in
Conforti is capable of such a function. Appellant has not
provided arguments convincing us otherwise.
In view of the above, we therefore affirm the 35 U.S.C.
§ 102(b) rejection of claims 1, 2, and 5-7 as being anticipated
by Conforti.

III. The 35 U.S.C. § 103 of claims 6, 8, and 11 as being obvious
over Conforti in view of Biggs

We consider claims 6, 8, and 11 in this rejection. Claim 6
recites that the elongated member is formed of at least two
slats. Claim 8 recites that the slats are in substantial contact
with each other. Claim 11 recites that the cleat is made of
Appeal No. 2005-2163
Application No. 10/166,002

-7-

cedar wood.
The examiner’s position for this rejection is set forth on
pages 3-4 of the Office action mailed March 7, 2003, which we
incorporate as our own.
Appellant’s position for this rejection is set forth on
pages 22-28 of the brief. Appellant again argues that his
shelving unit is for use with a wire rack. It is true that the
claimed shelf unit is for use with a wire rack, but the issue is
whether the structure of Conforti is capable of performing the
recited function. As discussed above, the structure of Conforti
is so capable.
The examiner relies upon Biggs for teaching use of a
plurality of cedar wood slats, in contact with each other. March
7, 2003 Office Action, pages 3-4.
On page 23 of the brief, appellant argues that Biggs
provides no teaching of the use of contacting members as a shelf
unit. We are unpersuaded by this argument because Biggs teaches
the making of a prefabricated panel and Conforti teaches the
specific use of a similar panel for a shelving system.
Appellant also argues that Biggs does not use vertical wall
panels as a horizontal shelf unit that is capable of intermeshing
with a wire rack. We are not convinced by this line of argument
and refer to our discussion regarding Conforti in this regard,
supra.
In view of the above, we therefore affirm the 35 U.S.C.
§ 103 rejection of claims 6, 8, and 11 as being obvious over
Conforti in view of Biggs.

Appeal No. 2005-2163
Application No. 10/166,002

-8-

IV. The 35 U.S.C. § 103 rejection of claims 9-11 as being
obvious over Conforti in view of Storti

We consider claim 9 in this rejection.
The examiner’s position for this rejection is set forth on
page 4 of the Office action of March 7, 2003. The examiner
relies upon Conforti for disclosing all the elements of the
claims except with regard to the components being comprised of
either an insect repellant material, an air freshening material,
or cedar wood. The examiner relies upon Storti for teaching
cedar wood is aromatic and is also known to repel moths and
silver fish. The examiner concludes therefore it would have been
obvious to have made the flat elongated member of Conforti of
cedar wood.
On page 30 of the brief, appellant simply repeats similar
arguments that neither Storti or Biggs or Conforti alone or in
combination, mention wire racks or the use of an elongated member
combined with a cleat, in a fashion as to form a shelf unit. For
the reasons discussed supra, we are not convinced by this line of
argument.
In view of the above, we therefore affirm the 35 U.S.C.
§ 103 rejection of claims 9-11 as being obvious over Conforti in
view of Storti.

V. Conclusion
The 35 U.S.C. § 112, second paragraph (indefiniteness)
rejection of claims 1-12 is reversed.
Each of the prior art rejections is affirmed.

Appeal No. 2005-2163
Application No. 10/166,002

-9-

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a)(iv) (effective e Sept. 13, 2004); 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sept. 7, 2004)).

AFFIRMED-IN-PART

Terry J. Owens )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jeffrey T. Smith ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Beverly A. Franklin )
Administrative Patent Judge )

BAF/cam

Appeal No. 2005-2163
Application No. 10/166,002

-10-

Philip J. Pollick
P. O. Box 141363
Columbus, OH 43214-6363