Ex Parte Hightower

Board of Patent Appeals and Interferences

Feb 28, 2011

11031762 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/031,762 01/07/2005 Robert C. Hightower 9066-17CT 8691
20792 7590 02/28/2011
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
WUJCIAK, ALFRED J
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
02/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT C. HIGHTOWER
____________________

Appeal 2009-008158
Application 11/031,762
Technology Center 3600
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008158
Application 11/031,762

STATEMENT OF THE CASE
Robert C. Hightower (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 88, 90-92, 94-98, and 100-
110. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
THE INVENTION
Appellant’s claimed invention pertains to a mounting system for
adjustable height shelf or tray slides in a frameless cabinet (one where there
is no front frame piece), e.g., for retrofitting a cabinet so as to have relatively
easily adjustable height drawers or trays. See Spec. 1:3-4; 2. 30-31; 3:27-31.
Appellant’s system includes mounting members that are mounted to the
cabinet side walls via fasteners inserted into preformed holes in the side
walls, and includes dowels connected to the slide members and which are
configured to be received in one of the plurality of apertures in a mounting
member. E.g., independent claims 88 and 98. Claim 88, reproduced below,
is representative of the subject matter on appeal.
88. A frameless cabinet adapted to receive a drawer, said
cabinet comprising:
an enclosure comprising an upright rear wall and
opposing upright side walls fixed at rear portions thereof to
opposite ends of the rear wall, the side walls having inner
surfaces that face each other, the enclosure further including at
least one door attached to one of the side walls via a hinge
mounted to the inner surface of the side wall and an inner
surface of the door;
a pair of front elongate mounting members mounted
generally upright at front portions of the side walls spaced apart
from front edges thereof, each of the front mounting members
having a mounting surface with a plurality of non-circular
mounting apertures facing the other of the front mounting
members;
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Appeal 2009-008158
Application 11/031,762

a pair of rear elongate mounting members mounted
upright at rear portions of the side walls, each of the rear
mounting members having a mounting surface with a plurality
of non-circular mounting apertures facing the other of the rear
mounting members;
a pair of slide members, each slide member extending
between a respective rear mounting member and a respective
front mounting member; and
two pairs of mounting dowels, with one mounting dowel
of each pair connecting a rear end portion of a slide member to
a respective rear mounting member, and with the other
mounting dowel of each pair connecting a front end portion of
the slide member to a respective front mounting member, each
of the mounting dowels having a body that is sized and
configured to be received in one of the plurality of apertures in
a respective front or rear mounting member, such that each
slide member is generally horizontally disposed, and such that
each slide member of the pair of slide members is mounted at
approximately the same height as the other slide member of the
pair;
wherein the side wall inner surfaces include a plurality of
preformed holes located to accept a fastener, wherein the front
mounting members include mounting holes, and wherein each
of the front mounting members is mounted to a respective side
wall via a fastener inserted into one of the plurality of
preformed holes.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Levi US 3,119,643 Jan. 28, 1964
Dunning US 4,154,492 May 15, 1979
Hays US 6,010,200 Jan. 4, 2000
Zachrai US 6,070,957 Jun. 6, 2000

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Appeal 2009-008158
Application 11/031,762

The following Examiner’s rejections are before us for review:
1. Claims 88, 90-92, 94-96, 107, and 108 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Zachrai and Dunning;
2. Claim 97 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zachrai, Dunning, and Hays;
3. Claims 98, 100-105, 109, and 1102 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zachrai, Dunning, and Levi; and
4. Claim 106 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zachrai, Dunning, Levi, and Hays.

OPINION
The rejection of claims 88, 90-92, 94-96, 107, and 108 as being
unpatentable over Zachrai and Dunning and the rejection of claim 97 as
being unpatentable over Zachrai, Dunning, and Hays
Of the claims subject to these two rejections, claim 88 is the sole
independent claim and the remaining claims depend therefrom.
The Examiner found that Zachrai teaches a cabinet having much of
the recited structure of Appellant’s claimed invention, including mounting
members mounted at the front portion of side walls, but does not disclose the
cabinet having a door, a rear wall, and side walls with preformed holes.
Ans. 3-4. Zachrai’s device pertains to a switchgear cabinet, and the
elements found to be the elongate mounting members are vertically
extending frame legs 30. Zachrai, col. 2, ll. 59-60; Ans. 3. Appellant’s
assertion (App. Br. 8) that Zachrai’s frame legs serve as structure for the

2 The Examiner includes claim 99 in the statement of the rejection (Ans. 7)
but that claim has been canceled. See Amendment filed Jan. 16, 2007; Final
Rej. mailed Aug. 3, 2007, at 1 (not listing claim 99 as pending).
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Appeal 2009-008158
Application 11/031,762

cabinet appears to be correct. See Zachrai, fig. 1; cf. Ans. 10 (Examiner not
disputing this assertion).
The Examiner found that Dunning teaches a cabinet having a door, a
rear wall, and side walls with preformed holes, and concluded that it would
have been obvious to add a door, a rear wall and side walls to Zachrai’s
cabinet “to provide an enclosure space for storage.” Ans. 4. Dunning’s
disclosure is directed to “knock-down” furniture for homes and offices, and
specifically to a knock-down cabinet enclosure. Dunning, col. 1, ll. 7-14;
col. 2, ll. 11-15.
The Examiner further found that Zachrai in view of Dunning still
lacks a teaching of the recited mounting holes in the mounting members and
a teaching that each of the front mounting members is mounted to the
cabinet side walls via a fastener inserted into one of the preformed holes in
the side walls as claimed. Ans. 4. The Examiner concluded that “[i]t would
have been obvious for one of ordinary skill in the art at the time the
invention was made to have added [countersunk3] mounting holes … to the
front mounting member and mounted front mounting member to side wall
via fastener to provide additional security for retaining the front mounting
member on the side wall.” Ans. 4-5. We note that the Examiner’s statement
of what would have been obvious does not address the claim language
requiring the mounting fasteners to be “inserted into one of the plurality of
preformed holes [in the side walls].” See id. at 5; but see id. at 10 (the
Examiner responding to one of Appellant’s arguments by stating that a door
hinge can be mounted on top of a mounting member with longer fasteners

3 Dependent claims 108 and 110 require the holes in the mounting member
to be countersunk.
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Appeal 2009-008158
Application 11/031,762

extending to the aperture in the sidewall, but not adequately explaining why
one of ordinary skill would be led to do so).
Appellant argues that, in order to arrive at the claimed invention from
the combination of the references’ teachings, one would have to conceive of
and make several modifications and would have to “conceive of the concept
of using the pre-drilled holes in the Dunning cabinet to receive the fasteners
inserted through the Zachrai frame leg.” App. Br. 8-10. While we do not
necessarily agree that all of Appellant’s listed modifications are
commensurate with the scope of the claims, we do agree that the Examiner’s
proposed combination – involving the addition of walls of a knock-down
cabinet to a switchgear cabinet – would require modifications that are not
insubstantial. The Examiner has not adequately articulated a reason why
one of ordinary skill in the art would have been led to make these
modifications. As such, we are left with the impression that the rejection is
based on impermissible hindsight. We do not sustain the rejection of claims
88, 90-92, 94-96, 107, and 108 as being unpatentable over Zachrai and
Dunning.
As to the rejection of claim 97, the Examiner relies on Hays for the
teaching of forming mounting members from a polymeric material, but does
not rely on Hays in any manner that cures the deficiency of the underlying
rejection of claim 88 based on Zachrai and Dunning. Ans. 6. As such, we
also cannot sustain the rejection of claim 97 as being unpatentable over
Zachrai, Dunning, and Hays.
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Appeal 2009-008158
Application 11/031,762

The rejection of claims 98, 100-105, 109, and 110 as being unpatentable
over Zachrai, Dunning, and Levi and the rejection of claim 106 as being
unpatentable over Zachrai, Dunning, Levi, and Hays
Of the claims subject to these two rejections, claim 98 is the sole
independent claim and the remaining claims depend therefrom. Independent
claim 98 is similar to independent claim 88, but also requires a slidably
mounted tray. The Examiner relies on Levi for the teaching of a tray. Ans.
8. For these rejections, the Examiner’s articulation regarding the Zachrai
and Dunning references appears to be substantially the same as that for the
rejections discussed above. See Ans. 7-9. For the reasons set forth above,
we cannot sustain the rejection of claims 98-105, 109, and 110 as being
unpatentable over Zachrai, Dunning, and Levi or the rejection of claim 106
as being unpatentable over Zachrai, Dunning, Levi, and Hays.

DECISION
The decision of the Examiner to reject claims 88, 90-92, 94-98, and
100-110 is reversed.

REVERSED

JRG

MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
7