Ex Parte Hamilton et alDownload PDFPatent Trial and Appeal BoardJun 20, 201612472848 (P.T.A.B. Jun. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/472,848 0512712009 John Hamilton 112530 7590 06/22/2016 Price Heneveld LLP/Steelcase Inc, 695 Kenmoor S.E. PO Box 2567 Grand Rapids, MI 49501 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. STEOOl Pl284 8463 EXAMINER LAUX, JESSICA L ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 06/22/2016 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): ptomail@priceheneveld.com patents@steelcase.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte JOHN HAMILTON, MARVIN C. KNAUF, BRADLEY D. YOUNGS, MARKT. SLAGER, KURT R. HEIDMANN, DANIEL PHILLIPS, HELEN A. BUCKLEY, and RY AN PAULY Appeal2014--004267 Application 12/472,848 Technology Center 3600 Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John Hamilton et al. (Appellants) 1 seek our review under 35 U.S.C. § 134 of the Examiner's Final Rejection under 35 U.S.C. § 102(b) of claims 1-9 and 28-36 as anticipated by Girdwood (US 6,807,776 B2, iss. Oct. 26, 2004). 2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Steelcase Inc. Appeal Br. 5. 2 Claims 10-27 are withdrawn. Final Act. 1. Appeal2014--004267 Application 12/472,848 CLAIMED SUBJECT MATTER Claims 1 and 2 8 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. An office work system, comprising: a first furniture unit having a first laterally-extending, elongated, C-shaped channel; a second furniture unit having a second laterally- extending, elongated, C-shaped channel, the second channel being disposed substantially parallel to and at substantially the same vertical height as the first channel, such that at least a portion of the first and second channels coextend; a work accessory; and a connector assembly to connect the work accessory to the first and second furniture units along the coextending portions of the channels, the assembly including a pair of engagement members adapted to engage the first and second channels. ANALYSIS Anticipation of claims 1-9 and 28-36 by Girdwood \Ve are persuaded by i\.ppellants' arguments that the Examiner failed to establish a prima facie showing of anticipation in rejecting claims 1-9 and 28-36 as anticipated by Girdwood. See Appeal Br. 8-14 and Reply Br. 1-6. Claim 1 The Examiner finds that Girdwood anticipates claim 1 by disclosing an office work system with all the elements recited by independent claim 1, including: a connector assembly (as noted in the disclosure and seen in the figures [of Girdwood]) to connect the work accessory to the first and second furniture units along the coextending portions of the channels, the assembly including a pair of engagement members adapted to engage the first and second channels. Final Act. 4 (citing Girdwood, cols. 8-10). 2 Appeal2014--004267 Application 12/472,848 However, Appellants argue, inter alia, that Girdwood "fails to disclose a connector assembly that includes a pair of engagement members adapted to engage non-aligned 'channels' of adjacent top frame members [of Girdwood]," as recited by claim 1. Appeal Br. 12. The Examiner responds that Appellants' "argument that Gird wood fails to disclose a connector assembly that includes a pair of engagement members adapted to engage non-aligned channels of adjacent top frame member is not persuasive as the claim does not recite 'non-aligned channels."' Ans. 7. Although we agree that claim 1 is not limited to "non-aligned channels," we find that the Examiner misapprehends Appellants' argument as to whether Girdwood does or does not disclose first and second channels as recited by claim 1. See Reply Br. 2-3. In particular, we are persuaded that the Examiner has failed to identify where Girdwood discloses "a connector assembly ... including a pair of engagement members adapted to engage the first and second channels," as recited by claim 1. Thus, we find the determination made by the Examiner to be an arbitrary (and therefore unreasonable) interpretation of the disclosure in Girdwood. [U]nless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). 3 Appeal2014--004267 Application 12/472,848 Claim 28 In finding that Girdwood also anticipates claim 28, the Examiner maps top trim piece 33 to be both the recited working accessory and the recited "connector assembly ... connecting the work accessory to the first and second furniture units along coextending portions of the channels." Final Act. 5 (citing Girdwood, col. 6, 11. 51-56). However, when a claim requires plural distinct structural elements, it is improper to map a single disclosed element to the plural recited elements. See Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring three separate means not anticipated by structure containing only two means using one element twice). For the foregoing reasons, we do not sustain the Examiner's decision rejecting claims 1-9 and 28-36 as anticipated by Girdwood. DECISION The Examiner's prior-art rejection is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation