Ex Parte Jones et al

Patent Trial and Appeal Board

Dec 28, 2016

13440636 (P.T.A.B. Dec. 28, 2016)

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.
W035 P02507-US1 9415
EXAMINER
LIU, JONATHAN
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
13/440,636 04/05/2012
3017 7590 12/29/2016
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5THFLOOR
PROVIDENCE, RI02903
Paul R. Jones
12/29/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL R. JONES, ANNA MARTINA MARIETTA,
and JASON CHARLES WOODROW
Appeal 2014-008127
Application 13/440,636
Technology Center 3600
Before JILL D. HILL, THOMAS SMEGAL, and ERIC JESCHKE,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul R. Jones et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject claims 1—7, 12, 13, and 17—23.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 8—11 and 14—16 were canceled. Appeal Br. 22 (Claims App.).
Appeal 2014-008127
Application 13/440,636
CLAIMED SUBJECT MATTER
Independent claims 1 and 5 are pending. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A panel television mounting assembly comprising:
a mounting frame having a back configured and
arranged to be secured to a support structure, and a front
configured and arranged to receive and support a flat panel
television,
said mounting frame having a top and a bottom;
a shelf spine having a first end and a second end;
a shelf having an upper surface,
said shelf being releasably securable to said second end
of said shelf spine,
said shelf spine being capable of assembly with said
mounting frame in a first configuration wherein said second end
of said shelf spine and said shelf are adjacent said top of said
mounting frame with said upper surface of said shelf facing
upwardly for supporting a television accessory above a panel
television received on said mounting frame,
said shelf spine being capable of assembly with said
mounting frame in a second configuration wherein said second
end of said shelf spine and said shelf are adjacent said bottom of
said mounting frame with said upper surface of said shelf facing
upwardly for supporting a television accessory below a panel
television received on said mounting frame.
REJECTIONS
I. Claims 1—4 and 20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by AVF (A VF ESL422B-T Tilt and Turn TV Mount with 2 AV
Shelves, Cable Management System for 25-Inch to 40-Inch TV — Black,
Amazon (Aug. 14, 2009), http://www.amazon.com/AVF-ESL422B-T-
Shelves-Management-25-Inch/dp/B002LIU42S/ref=cm_cr_pr_product_top).
Final Act. 3; see also Notice of References Cited dated January 16, 2013.
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II. Claims 5—7, 12, 13, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over AVF and Bouissiere (US 2008/0068784 Al;
pub. Mar. 20, 2008). Final Act. 5.
III. Claims 17—19 and 23 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over AVF, Bouissiere, and Liu (US D567,546 S; iss. Apr.
28,2008). Final Act. 7.
IV. Claim 21 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over AVF and Liu. Final Act. 8.
ANALYSIS
Rejection I—Anticipation of Claims 1—4 and 20
Regarding claim 1, the Examiner finds that AVF discloses, inter alia,
a shelf spine “(the elongated central support connecting the shelves and the
frame)” capable of assembly with a mounting frame in a first configuration
where the shelf is located above the mounting frame, and a second
configuration where the shelf is located below the mounting frame. Final
Act. 2-A.
Appellants argue claims 1,3, and 20 as a group. We select
independent claim 1 as representative. Claims 3 and 20 stand or fall with
claim 1.
Appellants argue that “claim 1 identifies structures which define both
a ‘support spine’ and a [‘jshelf spine,’” and that AVF does not disclose a
shelf spine. Appeal Br. 10.
Independent claim 1, however, recites a support structure and a shelf
spine, rather than a “support spine.” The Examiner finds the support
structure to be met by the wall to which the AVF device is attached. Final
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Application 13/440,636
Act. 3; Appeal Br. 11. A support spine is recited only in dependent claims
18, 19, 21, and 23.
Appellants also argue that “the relationship of the frame, the spine,
and the support structure were misapplied by the Examiner. A proper
application of the AVF reference would teach a support spine, not a shelf
spine.” Appeal Br. 11. In attempting to explain the misapplied relationship,
however, Appellants argue structural and functional attributes of the
invention that are not recited in the claims. Id.
The Examiner responds that the AVF spine supports shelves, and
therefore can reasonably be considered a shelf spine. Ans. 2. We agree that
the AVF spine supports shelves and can therefore be considered a shelf
spine, and that the wall to which the AVF device is attached can be
considered a support structure. We see no reason why the relationship of the
AVF device components fails to meet the claimed elements and the recited
relationship thereof. We therefore sustain the rejection of claims 1,3, and
20.
Claims 2 and 4
Claim 2 recites the shelf spine being “releasably securable in a
plurality of positions relative to said mounting frame when assembled in”
the first and second configurations. Claim 4 depends from claim 2.
Appellants argue that AVF does not disclose a shelf spine that is
“releasably securable in a plurality of positions relative to the mounting
frame when assembled in the first or second configuration.” Appeal Br. 12.
According to Appellants, “[e]ven if we were to treat the AVF support spine
as a shelf spine, it cannot be repositioned relative to the mounting frame
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Application 13/440,636
when the AVF support spine and mounting frame are assembled in the first
or second configuration.” Id.
The Examiner fails to explain how the AVF device would be
repositionable after assembly, and we therefore agree with Appellants that
the Examiner’s findings do not establish a prima facie case of anticipation.
We therefore do not sustain the rejection of claims 2 and 4.
Claim 21
Appellants argue that dependent claim 21 recites a “support spine” in
addition to a shelf spine, which are not disclosed in the AVF reference.
Appeal Br. 11. Claim 21, however, is not rejected as anticipated by the AVF
reference. We therefore are not persuaded by this argument.
Rejection II —Obviousness of Claims 5—7, 12, 13, and 22
Appellants argue claims 5, 6, 12, 13, and 22 as a group. We select
independent claim 5 as representative. Claims 6, 12, 13, and 22 stand or fall
with claim 5.
The Examiner finds that AVF discloses the limitations of independent
claim 5, except for a guide structure that slidably receives a shelf spine.
Final Act. 5—6. The Examiner finds, however, that Bouissiere discloses a
spine (rod 122) slidably received into a guide structure (160, 162). Id. at 6.
The Examiner reasons that it would have been obvious to modify the AVF
device “with the teaching of Bouissiere so that the spine is slidably received
into a guide structure. The motivation would have been to resist torque
resulting from the weight of the display.” Id. (citing Bouissiere 1 51).
Appellants argue that the Examiner’s reasoning “is an application of
improper hindsight” because “it is unclear why it would be obvious to add
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Application 13/440,636
such a torque-resisting guide structure to the AVF support spine” because
such torque resistance would be redundant to the fasteners used to attach the
AVF device to the wall. Appeal Br. 14.
The Examiner responds by explaining why Bouissiere’s guide would
improve the AVF device by providing greater torque resistance. Ans. 3^4.
Appellants maintain that the Examiner’s motivation “remains unclear”
because the AVF device “does not appear to need additional reinforcement
to resist torque.” Reply Br. 8—9.
We disagree with Appellants that the Examiner’s motivation is
unclear. The Examiner clearly states that the motivation is greater torque
resistance, which torque resistance is explicitly taught by Boussiere. Final
Act. 6; Ans. 3^4. Appellants disagree that greater torque resistance is
needed by AVF, but Appellants’ conclusory statement to that effect is
supported by neither evidence nor a persuasive explanation. We therefore
are not persuaded that the Examiner’s reasoning lacks rational underpinning.
We sustain the rejection of claim 5, 6, 12, 13, and 22.
Claim 7
Claim 7 recites the shelf spine including plural elongated slots, the
“shelf spine being releasably and adjustably secured to said mounting frame
by fasteners extending through said elongated slots and into mating
receptacles in said mounting frame.”
The Examiner concludes that the shape of the slots is an obvious
“matter of choice” and that modifying the combination of AVF and
Bouissiere to include elongated slots “would be a simple substitution of one
known element for another to obtain predictable results. The motivation to
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make this modification would be to allow for eased manufacturing
tolerances.” Final Act. 6.
Appellants argue that adding elongated slots to the AVF shelf spine
would not have been obvious because the claimed slots and the AVF holes
“are configured for different purposes.” Appeal. Br. 15. According to
Appellants, slots would be disadvantageous in the AVF device because the
existing non-elongated hole “provides less clearance around a threaded
fastener, and therefore a more secure mounting on a wall. Also, the user
does not adjust the height of the AVF support spine once the AVF mount is
fully assembled,” because “[t]he positions of the shelves and the mounting
frame are determined before the threaded fasteners are inserted through the
holes of the AVF support spine.” Id.
Appellants’ argument, however, fails to address the Examiner’s
proffered reasoning of allowing for eased manufacturing tolerances.
Lacking an explanation for why “eased manufacturing tolerances” is not
based on rational underpinning, we are not persuaded that the Examiner’s
conclusion is erroneous. We therefore sustain the rejection of claim 7.
Rejection III— Obviousness of Claims 17—19 and 23
Claim 17 depends from claim 5 and recites the support structure
comprising a pivot bracket. The Examiner finds that the combination of
AVF and Boussiere discloses a pivot bracket, but that the AVF “product
picture does not show where the pivot (around a vertical axis) bracket is,” so
that AVF and Bouissiere do not “explicitly teach a pivot bracket secured to
both a support spine and the mounting frame.” Final Act. 7. The Examiner
finds, however, that Liu discloses a display stand with a mounting frame
“secured to a support spine via a pivot bracket (seen better in figure 6: Liu).”
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Final Act. 7. The Examiner concludes that it would have been obvious to
secure the AVF pivot bracket to both the support spine and the mounting
frame as disclosed in Liu.
Appellants argue claims 17—19 as a group. We select claim 17 as
representative. Claims 18 and 19 stand or fall with claim 17.
Appellants argue that the combination of AVF, Boussiere, and Liu
does not teach or suggest “pivoting of the shelves.” Appeal Br. 16. Shelf
pivoting, however, is not recited in the claims. According to Appellants,
however, the claimed “shelf spine” is “capable of assembly with” the
mounting frame, which means that “the shelf spine has at least a portion that
is movable with the mounting frame.” Id. (citing Spec. | 52 (securing the
shelf to the mounting frame “allows the shelf 20 to automatically pivot along
with the television 12 and keeps the accessory 14 properly oriented with
respect to the television at all times.”)).
We decline to read the specifics of an embodiment of Appellants’
Specification into claim 17, which does not explicitly recite shelf pivoting,
or shelf spine attachment that facilitates shelf pivoting. We therefore sustain
the rejection of claims 17—19.
Claim 23
Regarding claim 23, Appellants present no argument that claim 23
would be patentable over AVF, Bouissiere, and Liu, if claim 5 is not
patentable over AVF and Boussiere. Appeal Br. 17. We therefore sustain
the rejection of claim 23 for the reason set forth above regarding claim 5.
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Rejection IV— Obviousness of Claim 21
Claim 21 depends from claim 1 and recites the support structure
comprising a support spine of a television console. The Examiner finds this
disclosure in Liu, concluding that it would have been obvious to connect the
AVF mounting frame to a console via a support spine and pivot bracket,
rather than connecting the AVF mounting frame to a wall, to “allow the
mounting bracket to be pivoted farther, letting the user reduce glare.” Final
Act. 8.
Appellants argue that “[i]t is unclear why two support spines would be
necessary” in such a combination, and that combining AVF and Liu would
result in “a single extended support spine.” Appeal Br. 17.
Appellants’ argument does not address the combination proposed by
the Examiner, and thus does not explain why one skilled in the art would not
assemble the combined AVF and Liu device such that it results in a separate
support spine to which a shelf spine is pivotably attached, as claimed. We
therefore are not persuaded by this argument, and we sustain the rejection of
claim 21.
DECISION
We AFFIRM the rejection of claims 1, 3, and 20 under 35 U.S.C.
§ 102(b) as anticipated by AVF.
We REVERSE the rejection of claims 2 and 4 under 35 U.S.C.
§ 102(b) as anticipated by AVF.
We AFFIRM the rejection of claims 5—7, 12, 13, and 22 under
35 U.S.C. § 103(a) as unpatentable over AVF and Bouissiere.
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Application 13/440,636
We AFFIRM the rejection of claims 17—19 and 23 under 35 U.S.C.
§ 103(a) as unpatentable over AVF, Boussiere, and Liu.
We AFFIRM the rejection of claim 21 under 35 U.S.C. § 103(a) as
unpatentable over AVF and Liu.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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