Ex Parte Hill

Board of Patent Appeals and Interferences

May 5, 2009

10736820 (B.P.A.I. May. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte JOHN WILLIAM HILL 8
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10
Appeal 2009-1056 11
Application 10/736,820 12
Technology Center 3600 13
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Decided:1 May 5, 2009 16
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR and 21
FRED A. SILVERBERG, Administrative Patent Judges. 22
23
SILVERBERG, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1056
Application 10/736,820

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a rejection of 2
claims 1-3, 6-12 and 15-21, which are all of the pending claims. Claims 4, 3
5, 13 and 14 have been canceled. We have jurisdiction under 35 U.S.C. 4
§ 6(b) (2002). 5
6
SUMMARY OF DECISION 7
We AFFIRM-IN-PART. 8
9
THE INVENTION 10
The Appellant’s claimed invention is directed to a modular underfloor 11
distribution system that may be positioned under a raised floor (Spec.:para. 12
[01]). Claim 1, reproduced below, is representative of the subject matter on 13
appeal. 14
1. An underfloor distribution system adapted to include a 15
plurality of interchangeable modules having interior 16
compartments that receive and retain power and communication 17
wiring, said system comprising: 18
a first module configured to be positioned underneath a 19
floor, said first module comprising a main body securely 20
retaining at least one of a wiring connector, a power receptacle, 21
and a communication interface; an end closure; and a cover, 22
wherein said end closure and said cover are removably secured 23
to said main body defining an interior compartment configured 24
to receive and retain power and communication wiring, and 25
wherein said first module is adapted to be removably mounted 26
to a second module. 27
28
THE REJECTIONS 29
The Examiner relies upon the following as evidence of 30
unpatentability: 31
Appeal 2009-1056
Application 10/736,820

3
Feeney US 5,467,609 Nov. 21, 1995 1
2
The following rejections by the Examiner are before us for review: 3
1. Claims 1, 2, 6-11 and 15-21 are rejected under 35 U.S.C. § 102(b) as 4
being as being anticipated by Feeney. 5
2. Claims 3 and 12 are rejected under 35 U.S.C. § 103(a) as being 6
unpatentable over Feeney. 7
8
ISSUE 9
The issue before us is whether the Appellant has shown that the 10
Examiner erred in rejecting claims 1-3, 6-12 and 15-21 over Feeney. The 11
issue turns on whether: (1) Feeney discloses modules configured to be 12
positioned underneath a floor as called for in claims 1, 9 and 18; and (2) 13
Feeney discloses modules positioned below a raised floor and between at 14
least two rows of pedestals as called for in claims 3 and 12. 15
16
FINDINGS OF FACT 17
We find that the following enumerated findings are supported by at 18
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 19
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 20
proceedings before the Office). 21
1. Feeney discloses a modular floor substructure system 10 22
comprising a plurality of interconnected modules 560, 632, 952 23
(figs. 12 and 19) including a main body (figs. 12 and 19) securely 24
retaining a power receptacle 168, 1192 in the interior of the 25
modules (figs. 3, 21 and 23), a flexible curtain end closure 1070 26
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Application 10/736,820

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for a module (fig. 21) having openings therein to pass a plug and 1
cable power input (col. 22, ll. 14-24), wherein the floor includes 2
floor tiles 922-931, 935-937 and a step structure 940 covering the 3
top of the modules (figs. 18 and 21, and col. 24, ll. 9-14), and the 4
modules are positioned underneath the floor tiles (fig. 21). 5
2. Feeney further discloses that the modules are interconnected in a 6
side by side and end to end manner (col. 20, ll. 54-59) (fig. 19), 7
and wherein the modules may be rearranged as needed (col. 11, ll. 8
48-52). 9
3. Feeney still further discloses foot components 588, 589, 590 and 10
600 below the corners of module 560 (fig. 12). 11
4. Feeney still further discloses that the system is easily removed 12
from one facility or building to another and does not constitute a 13
fixture (col. 6, ll. 54-57). 14
5. Feeney still further discloses an advantage of the modular 15
assemblage of components of the system resides in the capability 16
for rearranging floor modules (col. 11, ll. 48-52). 17
6. The ordinary meaning of the word “floor” includes “the surface of 18
a room on which one stands, or a level surface or area used for a 19
specified purpose.” The American Heritage® Dictionary of the 20
English Language (4th ed. 2000). 21
22
PRINCIPLES OF LAW 23
Appellant has the burden on appeal to the Board to demonstrate error 24
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 25
2006) (“On appeal to the Board, an applicant can overcome a rejection 26
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[under § 103] by showing insufficient evidence of prima facie obviousness 1
or by rebutting the prima facie case with evidence of secondary indicia of 2
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 3
1998)). 4
“Anticipation is established only when a single prior art reference 5
discloses, expressly or under the principles of inherency, each and every 6
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys., 7
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, “[t]here must be 8
no difference between the claimed invention and the reference disclosure, as 9
viewed by a person of ordinary skill in the field of the invention.” Scripps 10
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. 11
Cir. 1991). It is not necessary that the reference teach what the subject 12
application teaches, but only that the claim read on something disclosed in 13
the reference, i.e., that all of the limitations in the claim be found in or fully 14
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 15
(Fed. Cir. 1983). 16
“Section 103 forbids issuance of a patent when ‘the differences 17
between the subject matter sought to be patented and the prior art are such 18
that the subject matter as a whole would have been obvious at the time the 19
invention was made to a person having ordinary skill in the art to which said 20
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 21
(2007). The question of obviousness is resolved on the basis of underlying 22
factual determinations including (1) the scope and content of the prior art, 23
(2) any differences between the claimed subject matter and the prior art, (3) 24
the level of skill in the art, and (4) where in evidence, so-called secondary 25
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 26
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also KSR, 550 U.S. at 406-07 (“While the sequence of these questions might 1
be reordered in any particular case, the [Graham] factors continue to define 2
the inquiry that controls.”). 3
In KSR, the Supreme Court stated that 4
[o]ften, it will be necessary for a court to look to 5
interrelated teachings of multiple patents; the 6
effects of demands known to the design 7
community or present in the marketplace; and the 8
background knowledge possessed by a person 9
having ordinary skill in the art, all in order to 10
determine whether there was an apparent reason to 11
combine the known elements in the fashion 12
claimed by the patent at issue. 13
14
Id. at 418. The Court noted that “[t]o facilitate review, this analysis should 15
be made explicit. Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) 16
(“[R]ejections on obviousness grounds cannot be sustained by mere 17
conclusory statements; instead, there must be some articulated reasoning 18
with some rational underpinning to support the legal conclusion of 19
obviousness”)). However, “the analysis need not seek out precise teachings 20
directed to the specific subject matter of the challenged claim, for a court 21
can take account of the inferences and creative steps that a person of 22
ordinary skill in the art would employ.” Id. 23
When construing claim terminology in the United States Patent and 24
Trademark Office, claims are to be given their broadest reasonable 25
interpretation consistent with the specification, reading claim language in 26
light of the specification as it would be interpreted by one of ordinary skill in 27
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 28
2004). 29
Appeal 2009-1056
Application 10/736,820

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ANALYSIS 1
Appellant argues claims 1, 2 and 6-8 as a group. As such, we select 2
claim 1 as representative of the group, and claims 2 and 6-8 will stand or fall 3
with claim 1. Appellant argues claims 9-11 and 15-17 as a group. As such, 4
we select claim 9 as representative of the group, and claims 10, 11 and 15-17 5
will stand or fall with claim 9. Appellant argues claims 18-21 as a group. 6
As such, we select claim 18 as representative of the group, and claims 19-21 7
will stand or fall with claim 18. 37 C.F.R. § 41.37(c)(1)(vii) (2007). 8
Appellant argues claims 3 and 12 separately. 9
10
Rejection of claims 1, 2, 6-11 and 15-21 under 35 U.S.C. § 102(b) as being 11
anticipated by Feeney 12
Appellant contends that Feeney does not disclose an underfloor 13
distribution system or method of constructing ductwork for an underfloor 14
distribution system (Br. 6). Appellant further discloses that since Feeney’s 15
modules themselves provide support for the floor that is supported by a main 16
floor, Feeney’s modules are not configured to be positioned underneath a 17
floor as called for in claims 1, 9 and 18 (Br. 7, 8 and 10). Feeney discloses a 18
modular floor substructure system 10 comprising a plurality of 19
interconnected modules 560, 632, 952 (figs. 12 and 19), wherein the floor 20
includes floor tiles 922-931, 935-937 and a step structure 940 covering the 21
top of the modules (figs. 18 and 21, and col. 24, ll. 9-14), and the modules 22
are positioned underneath the floor tiles (fig. 21) (Fact 1). In claims 1 and 9, 23
the module(s) are called for as being “configured to be positioned 24
underneath a floor.” Therefore, we find that there is no positive recitation of 25
a floor in claims 1 and 9. Claims 1 and 9 simply require that the modules 26
themselves be capable of being positioned underneath a floor. We find that 27
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Feeney’s floor modules are capable of being positioned underneath a floor. 1
Moreover, Feeney’s floor modules 952 are disclosed as being positioned 2
beneath floor tiles 922-931, 935-937 (Fact 1), which meet the definition of a 3
floor, for the reasons discussed in more detail below. We conclude that 4
Feeney discloses the limitations called for in claims 1 and 9, and claims 2, 6-5
8, 10, 11 and 15-17 depending respectively therefrom. 6
Claim 18 is a method claim requiring a step of forming an underfloor 7
distribution system through ganging the basic units together underneath a 8
floor. The ordinary meaning of the word “floor” includes “the surface of a 9
room on which one stands, or a level surface or area used for a specified 10
purpose.” The American Heritage® Dictionary of the English Language 11
(4th ed. 2000) (Fact 6). Therefore, in order for a surface to be a floor, it 12
must be either a surface of a room on which one stands, or a level surface or 13
area used for a specified purpose. We find that Feeney’s floor tiles 922-931, 14
935-937 form a level surface and support Feeney’s component 12. 15
Therefore, we find that the floor tiles themselves are considered to be a 16
floor. We find that since Feeney’s floor modules 952 are below the floor 17
tiles 922-931, 935-937 (Fact 1), Feeney’s floor modules are configured to be 18
positioned, and in fact are positioned, under a floor. Feeney further 19
discloses that the modules are interconnected in a side by side and end to 20
end manner (col. 20, ll. 54-59) (fig. 19) (Fact 2). Therefore, we find that 21
Feeney’s modular floor substructure system 10 is formed through ganging 22
the modules underneath a floor, that is, floor tiles 922-931, 935-937. We 23
conclude that Feeney discloses the limitations called for in claim 18 and 24
claims 19-21 depending therefrom, and claims 1 and 9 and claims 2, 6-8, 10, 25
11 and 15-17 depending respectively therefrom as set forth above. 26
Appeal 2009-1056
Application 10/736,820

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Therefore, we agree with the Examiner’s analysis (Ans. 5) and conclude that 1
the Examiner did not err in rejecting claims 1, 2, 6-11 and 15-21 over 2
Feeney. We affirm the rejection of claims 1, 2, 6-11 and 15-21 under 35 3
U.S.C. § 102 thereof. 4
5
Rejection of claims 3 and 12 under 35 U.S.C. § 103(a) as being 6
unpatentable over Feeney. 7
The Examiner contends that in Feeney, pedestals 588, 589, 590 and 8
600 are located at all corners of each unit (modules) (Ans. 6). Claims 3 and 9
12 call for rows of pedestals that support a raised floor, wherein the 10
underfloor system is (modules are) positioned below the raised floor 11
between at least two rows of the pedestals. Feeney discloses foot 12
components 588, 589, 590 and 600 below the corners of module 560 (fig. 13
12) (Fact 3). Therefore, the module 560 is positioned above the foot 14
components. Therefore, we find that even if we consider the foot 15
components to be pedestals that support a raised floor as the Examiner 16
contends (Ans. 6), Feeney does not disclose an underfloor system (modules) 17
positioned below the raised floor between at least two rows of the pedestals. 18
The Examiner further contends that since pedestals are used to support the 19
system, it would have been an obvious design choice to add additional 20
pedestals and place the modules between the pedestals as called for in claims 21
3 and 12 (Ans. 5-6). We find that Feeney does not provide support for any 22
additional pedestals outside of foot components below the corners of the 23
modules, such that the modules would be positioned therebetween as the 24
Examiner contends. Further, it is not apparent why there would be a reason 25
to provide additional pedestals in Feeney. Therefore, we do not agree with 26
the Examiner’s analysis (Ans. 5) that since pedestals are used to support the 27
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system, it would have been an obvious design choice to add additional 1
pedestals and place the modules between the pedestals. Therefore, we 2
conclude the Examiner erred in rejecting claims 3 and 12 as being 3
unpatentable over Feeney. We reverse the rejection of claims 3 and 12 4
under 35 U.S.C. § 103(a) thereof. 5
6
CONCLUSIONS OF LAW 7
We conclude that the Appellant has not shown that the Examiner 8
erred in rejecting claims 1, 2, 6-11 and 15-21 under 35 U.S.C. § 102(b) as 9
being anticipated by Feeney. We conclude that the Appellant has shown that 10
the Examiner erred in rejecting claims 3 and 12 under 35 U.S.C. § 103(a) as 11
being unpatentable over Feeney. 12
13
DECISION 14
The decision of the Examiner to reject claims 1, 2, 6-11 and 15-21 15
over Feeney is affirmed. The decision of the Examiner to reject claims 3 16
and 12 over Feeney is reversed. 17
No time period for taking any subsequent action in connection with 18
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED-IN-PART 21
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Appeal 2009-1056
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