11349685 (B.P.A.I. Aug. 12, 2009)

Ex Parte Harris

Board of Patent Appeals and InterferencesAug 12, 2009

11349685 (B.P.A.I. Aug. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JERRY HARRIS ____________ Appeal 2009-002975 Application 11/349,685 Technology Center 3600 ____________ Decided: August 12, 2009 ____________ Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and KEN B. BARRETT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-002975 Application 11/349,685 2 STATEMENT OF THE CASE Jerry Harris (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision finally rejecting claims 5 and 7. Claims 1-4 and 6 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We REVERSE. The Appellant’s claimed invention is a longitudinally-extendable shelf. Spec. 2:6-7. The Appellant seeks review of the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 5,421,646 to McNamara (issued June 6, 1995) and U.S. Patent No. 4,607,455 to Bluem (issued August 26, 1986).1 The Appellant also seeks review of the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over McNamara, Bluem, and U.S. Patent No. 5,137,160 to Santucci (issued August 11, 1992). The Examiner’s conclusion of obviousness for claims 5 and 7 is based on the underlying finding of fact that McNamara discloses two mutually- parallel, spaced-apart, depressed tracks upon the surface of the first plate, with each track having a slot. Ans. 2, 5. The finding is silent regarding the limitation in claim 7 calling for the slots to be open at the edge of the first plate. Ans. passim. The Appellant contends that the key ways (slots) of McNamara are closed at the edge of the first plate, rather than open as claimed. App. Br. 11. 1 The Examiner also took Official Notice that it was conventionally known to incorporate a gusset between two structural elements to strengthen the interconnection of the elements, and cited to U.S. Patent No. 6,279,756 B1 to Walter, issued August 28, 2001, as an evidentiary reference. Ans. 4-5. Appeal 2009-002975 Application 11/349,685 3 The issue before us is: Has the Appellant shown that the Examiner erred in the decision to reject claims 5 and 7 because McNamara does not disclose two mutually- parallel, spaced-apart, depressed tracks, with each track having a slot, and each slot opening at the edge of the first plate? McNamara discloses a legless locker shelf assembly 22, for use in a locker 10. McNamara, col. 1, l. 5-6; col. 3, ll. 25-26; fig. 1. Locker shelf assembly 22 is comprised of a pair of shelf members 23, 24. McNamara, col. 3, ll. 27-31; fig. 1. McNamara describes that shelf member 23 has a top wall 26 including a pair of longitudinal grooves 32, 36, each having longitudinal slots 33, 37, “extended between opposite ends of wall 26.” McNamara, col. 3, ll. 39-41; fig. 4. Figure 4 of McNamara shows slots 33, 37 terminating prior to the edge of the first plate. McNamara does not describe that shelf members 23, 24 may be slid apart. McNamara, passim. We find that longitudinal slots 33, 37 are not open at the edge of shelf member 23, and therefore do not meet the limitation of claim 7 that the first plate has two mutually-parallel, spaced-apart, depressed tracks, with each track having a slot that is open at the edge of the first plate where the second plate is inserted.2 The Appellants have shown the Examiner erred in concluding the subject matter of claim 7 would have been obvious in view of McNamara and Bluem because the Examiner erred in the underlying factual finding that McNamara discloses two mutually-parallel, spaced-apart, depressed tracks, with each track having a slot that is open at the edge of the first plate where 2 The Examiner does not make any findings that Bluem or Santucci correct this deficiency. Appeal 2009-002975 Application 11/349,685 4 the second plate is inserted. Further, the rejection of claim 5 is also in error by virtue of its dependency from claim 7. We reverse the Examiner's decision to reject claims 5 and 7. REVERSED mls PAUL M. DENK STE. 170 763 S. NEW BALLAS ROAD ST. LOUIS, MO 63141