Ex parte Kopish

Board of Patent Appeals and Interferences

Apr 11, 2000

08472536 (B.P.A.I. Apr. 11, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ANDREW J. KOPISH
__________
Appeal No. 1998-0236
Application 08/472,536
__________
ON BRIEF
__________
Before MCCANDLISH, Senior Administrative Patent Judge, STAAB
and MCQUADE, Administrative Patent Judges.
MCCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 6, 9, 10, 14 through 26 and 28
through 38. No other claims are pending in the application.
Appellant’s invention relates to a furniture system
(claims 1-6, 14-16 and 30-34), a post construction for a
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furniture system (claims 9 and 10), a bed construction (claims
17-26, 28 and 29) and a method of arranging a furniture system
(claims 35-38). The furniture system is disclosed as having a
bed section (22) and a storage section (39a, 39b) attached to
corner post assemblies. Each post assembly comprises upper
and lower posts (30, 34) interconnected by a connector (38).
A copy of the appealed claims is appended to
appellant’s brief.
The following references are relied upon by the
examiner as evidence of obviousness in support of his
rejections under 35 U.S.C. § 103:
Hannum 2,057,334 Oct. 13, 1936
Vivoli 3,972,638 Aug. 3, 1976
Bridge 4,027,453 Jun. 7, 1977
Tasaka 4,253,204 Mar. 3, 1981
Bianco 4,312,086 Jan. 26, 1982
Kranjec 4,607,576 Aug. 26, 1986
Nelson et al. (Nelson) 4,617,689 Oct. 21, 1986
Pottschmidt 4,745,644 May 24, 1988
Novitski 4,826,115 May 2, 1989
Gieling et al. (Gieling) 5,144,780 Sep. 8, 1992
Perkins 5,233,707 Aug. 10, 1993
Jory (UK) 153,699 Nov. 18, 1920
The appealed claims stand rejected under § 103 as
follows:
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1. Claim 1 as unpatentable over Bianco in view of
Bridge, Vivoli, Perkins, Pottschmidt and Nelson;
2. Claims 2, 3, 5 and 6 as unpatentable over Bianco in
view of Bridge;
3. Claim 4 as unpatentable over Bianco in view of
Bridge and Vivoli;
4. Claim 9 as unpatentable over Vivoli in view of
Bridge;
5. Claim 10 as unpatentable over Vivoli in view of
Gieling;
6. Claims 14-16 as unpatentable over Bianco in view of
Novitski;
7. Claim 17 as unpatentable over Pottschmidt in view of
Hannum;
8. Claim 17 as unpatentable over Pottschmidt in view of
Tasaka;
9. Claims 18-21 as unpatentable over Pottschmidt in
view of Hannum, Bridge and Nelson;
10. Claims 18-21 as unpatentable over Pottschmidt in
view of Tasaka, Bridge and Nelson;
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11. Claims 22 and 23 as unpatentable over Pottschmidt
in view of Hannum and Nelson;
12. Claims 22 and 23 as unpatentable over Pottschmidt
in view of Tasaka and Nelson;
13. Claims 24-26, 28 and 29 as unpatentable over Bianco
in view of Pottschmidt, Nelson and Kranjec;
14. Claims 30-32 and 35-37 as unpatentable over Bianco
in view of Perkins;
15. Claim 33 as unpatentable over Bianco in view of
Bridge and Perkins;
16. Claim 34 as unpatentable over Bianco in view of
Vivoli and Perkins; and
17. Claim 38 as unpatentable over Bianco in view of
Perkins and Jory.
Reference is made to the examiner’s answer for details
of the foregoing rejections.
Considering first the rejections of claims 1, 24
through 26, 28 and 29, independent claim 1 recites, inter
alia, a bed and tabs formed at the end portions of the bed’s
side rails for removably mounting the side rails on the
support posts. Independent claim 24 similarly recites that
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each end of each of the bed’s side rails includes tabs for
removably mounting the side rails on the posts.
In contrast to the invention defined in appealed claims
1 and 24, the side rails of Bianco’s bed 20 are not provided
with tabs for removably mounting the side rails on the
patentee’s corner support posts 12. Instead, the mounting
tabs are provided on frame members 38 which underlie the bed’s
side rails to support the bed.
The examiner concedes on page 6 of the answer that the
side rails of Bianco’s bed lack tabs for removably mounting
the side rails on the corner support posts. For this feature,
the examiner relies on the Nelson patent. Nelson, however,
lacks a teaching of support posts for mounting the side rails
of the bed. Furthermore, the devices 36U on the side rails of
Nelson’s bed do not mount the side rails on the rail-
supporting structure, namely the headboard and the footboard
in Nelson’s bed. Instead, these devices are in the form of
latches for fastening the stringers 18U to the side rails. We
therefore cannot agree with the examiner that the teachings of
Nelson would have made it obvious to provide the side rails of
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Bianco’s bed with tabs for removably mounting the side rails
on Bianco’s corner support posts.
Furthermore, contrary to the examiner’s findings, the
bed’s adjacent bottom wall panels in Nelson’s Figure 10 do not
define a joint located over one of the stringers 18U as
required in claim 1. Instead, Nelson’s stringers 18U lie
between
the adjacent bottom wall panels so that the panels are spaced
from each other by the stringers and thus do not define joints
in the usual sense.
With further regard to claim 1, we are of the viewpoint
that the only way the Bridge and Vivoli references could be
combined to arrive at the claimed post construction is through
hindsight based on appellant’s disclosure. Hindsight
analysis, however, is clearly improper. In re Deminski, 796
F.2d 436, 443, 230 USPQ 313, 316 (Fed. Cir. 1986).
For the foregoing reasons alone, we cannot sustain the
examiner’s rejections of claims 1 and 24 and of claims 25, 26,
28 and 29 which depend from claim 24.
We also will not sustain the rejections of claims 4 and
9. As stated supra, the only way the Bridge and Vivoli
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references could be combined to arrive at the claimed post
construction is through hindsight based on appellant’s
disclosure.
Turning now to the rejection of claim 2, there is no
dispute that Bianco’s frame member 38 is in the form of a
bracket supporting and thus connected to a side rail of the
bed. There also is no dispute that the Bianco’s member 38 is
formed with tabs which are removably engageable in vertical
spaced slots in each support post. Thus, claim 2 differs from
Bianco only by reciting that the vertically spaced slots are
formed in a wall of a vertical recess in each post. Appellant
has made no argument to the contrary. Instead, the only
argument supporting patentability of claim 2 is that Bridge
does not suggest the examiner’s proposed modification of
Bianco as set forth on pages 8 and 9 of the answer. We
disagree.
In Bridge’s post and bracket arrangement, vertically
spaced slots 19 are formed in the support post 10 to receive
tabs 23a, 23b on a bracket or frame 12 to support a load-
receiving beam or cross piece 11. As described in Bridge’s
specification (see, for example, column 1, lines 20-50, and
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column 3, lines 30-57), the vertically spaced slots are
located in a base wall of a vertical recess 16 in the support
post, and the tabs 23b are wedged against inclined side
surfaces 19a and 19b of the vertical recess. According to
Bridge’s specification (see column 1, lines 44-50 and column
3, lines 53-57), the resulting increase in the contact area
between the tabs and the post has the advantage of reducing
the stress forces (referred to as contact pressure in Bridge’s
specification) tending to cause deformation of the tabs due to
downwardly applied loads. Appellant even concedes on page 26
of the brief that Bridge’s construction reduces the stress
forces on the tabs or tongue elements as they are called in
Bridge’s specification. Such a teaching would have been ample
motivation for one of ordinary skill in the art to modify
Bianco’s posts 12 and frame members 38 in a corresponding
manner to achieve the foregoing advantage.
With regard to appellant’s argument in the second full
paragraph on page 26 of the brief, the fact that Bianco’s
frame or bracket members would require modification to achieve
the advantages disclosed in the Bridge patent is of no moment
because claim 2 does not require a bracket construction that
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differs from Bridge’s construction. Furthermore, an end
surface of Bianco’s side rail will be disposed outwardly of
any recess formed in the corner support post for the location
of the side rail taught in the Bianco reference.
In view of the foregoing, we are satisfied that the
combined teachings of the applied references would have
suggested the subject matter of claim 2 to one of ordinary
skill in the art to warrant a conclusion of obviousness under
the test set forth in In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). Accordingly, we will sustain the
rejection of claim 2. We will also sustain the rejection of
dependent claims 3, 5 and 6 because the patentability of these
claims has not been argued separately of claim 2. See In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987) and In re Burckel, 592 F.2d 1175, 1178-79, 201 USPQ 67,
70 (CCPA 1979).
With regard to the rejection of claim 10, which is
directed to the post structure per se, the Vivoli reference
discloses a fence construction having horizontal rails 6
supported on upstanding post assemblies. Each post assembly
comprises separately formed upper and lower tubular post
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members 10 and 10a which are interconnected by a connector 1.
The connector has upper and lower finned mounting portions 2
and a central body 3 intermediate the upper and lower finned
portions 2. The upper and lower finned portions 2
respectively extend into the lower end of the upper post
member 10 and upper end of the lower post member 10a. The
connector’s central body 3 is interposed between the adjacent
ends of the upper and lower post members and has a slot 4 for
receiving a tab at an adjacent end of a respective rail 6 to
support the adjacent end of the rail. Thus, the basic purpose
of Vivoli’s connector construction is to mount the horizontal
side rails of the fence.
The examiner concedes that Vivoli lacks a disclosure of
appellant’s claimed flanges, the interconnecting web and the
mounting bosses extending outwardly from each flange to engage
the internal wall structure of the post sections. He
nevertheless takes the following position:
Gieling et al. teaches the use of posts(1)
joined together by a “connector”(27) having
“first and second mounting portions”(33) each
including a “pair of flanges”(35a, 37a)
interconnected by a “web”(47) and “two or more
mounting bosses”(53) extending outwardly from
each flange, wherein end portions of each flange
and the mounting bosses engage the upper and
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lower post sections in an interference fit (see
Figures 2-5; column 3, lines 66-68 and column 4,
lines 5-50). The skilled artisan would have
found it obvious to provide the connector of
Vivoli with first and second mounting portions
each including a “pair of flanges”
interconnected by a “web” and “two or more
mounting bosses” extending outwardly from each
flange, wherein end portions of each flange and
the mounting bosses engage the internal wall
structure of the upper and lower post sections
in an interference fit in order to “provide
additional support and strength to the joinder
of the connected posts and provide additional
strength to resist shear and torsional loading”
[answer, page 13].
We cannot agree that the subject matter of claim 10
would have been obvious from the combined teachings of Vivoli
and Gieling. In the first place, we cannot agree that Gieling
suggests the modifications proposed by the examiner.
Furthermore, if the references were combined in the manner
proposed by the examiner, we fail to see how Vivoli’s central
body slot 4 can be retained. Without this slot, the intended
purpose of Vivoli’s connector would be destroyed.
Still further, the modifications proposed by the
examiner would not arrive at the invention defined in claim 10
as required in In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). Contrary to the examiner’s position as
quoted supra, Gieling’s tabs 57 (identified as “mounting
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bosses” by the examiner) do not extend outwardly from the
elements 35a and 37a which the examiner regards as “flanges.”
Instead, tabs 57 extend from Gieling’s arms 53, and there is
only one tab extending from each arm. In contrast, claim 10
expressly recites that two or more of the mounting bosses
(which engage the internal wall structure of the post
sections) extend outwardly from each of the connector’s
flanges. Furthermore, Gieling’s disclosure that each of the
tabs 57 fits securely in an aperture 23 (see column 4, lines
46-47) does not necessarily mean that the fit is an
interference fit. In contrast, claim 10 recites that the
mounting bosses engage the internal wall structure of the post
sections with an interference fit.
For the foregoing reasons, we will not sustain the
rejection of claim 10.
Turning now to the rejection of claim 15, the only
argument supporting patentability of this claim over the
examiner’s proposed combination of Bianco and Novitski is that
“Novitski clearly shows the tabs being formed on a base 17
which is in the same plane as the end wall of the cabinet, and
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which does not extend outwardly of the end wall, as claimed”
(brief, page 31). This argument is unpersuasive.
Claim 15 recites that the end portions defining the
slot-engaging tabs “extend outwardly of the end walls” of the
furniture component without limitation as to the direction in
which the end portions extend from the end walls. As such
claim 15 is broad enough to encompass end portions which
extend in any direction from the end walls, including the
direction in which the end portions extend from back edges of
the end walls in a direction parallel to planes containing the
end walls.
In Novitski’s furniture system, the back wall’s base 17
extends outwardly from the back edge of the cabinet’s side
walls or end walls, as appellant describes them. Thus, when
the claim language is given its broadest reasonable
interpretation (See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989)) without reading limitations from
the specification into the claim (See In re Van Geuns, 988
F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) and
Sjolund v. Musland, 847 F.2d 1573, 1581-82, 6 USPQ2d 2020,
2027 (Fed. Cir. 1988)), the recitation that the end portions
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extend outwardly of the end walls does not distinguish from
Novitski.
Furthermore, Novitski discloses all of the other elements
of claim 15 (namely the pair of supports in the form of posts
9 and the furniture component in the form of cabinet 3 having
end walls and a back wall). As such the subject matter does
not distinguish from Novitski. The rejection of this claim
under
§ 103 is nonetheless proper since anticipation is the epitome
of obviousness. See In re May, 574 F.2d 1082, 1089, 197 USPQ
601, 607 (CCPA 1978). Accordingly, we will sustain the
rejection of claim 15. We will also sustain the rejection of
dependent claims 14 and 16 since the patentability of these
claims has not been argued separately of claim 15. See In re
Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528 and In re Burckel,
592 F.2d at 1178-79, 201 USPQ at 70.
With regard to the two rejections of claim 17, neither
Hannum nor Tasaka teaches or suggests appellant’s claimed bed
construction in which a joint between adjacent bottom wall
panels is located over a cross member interconnecting the
bed’s side rails. Hannum even lacks a disclosure of a bed.
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In any case, there is no teaching in this reference that the
joint between the hinged table top panels 39 overlies the
cross piece 28 of the table’s frame. Tasaka, on the other
hand, does disclose a bed construction, but there is no
teaching in this reference of any stringers or cross members
underlying the bottom wall panels 11.
For the foregoing reasons, we cannot sustain the two
rejections of claim 17. For the same reasons we cannot
sustain the rejections of claims 18 through 23 which depend
directly or indirectly from claim 17. As noted supra with
regard to the rejection of claim 1, Nelson does not rectify
the foregoing shortcomings of Hannum and Tasaka.
With regard to claim 30, Bianco discloses an upper bed
section and a lower furniture section having furniture
components such as storage drawers 26 and dresser 28.
However, Bianco concededly lacks a teaching of providing
separable post assemblies for removably mounting the upper bed
section 20 on the lower furniture section.
Perkins, however, teaches a modular furniture system
having upper and lower furniture sections 12 and 14 supported
on corner post assemblies. Each of the post assemblies
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comprises a lower post 14 and an upper post 16 aligned with
the lower post and detachably supported on the lower post by a
connector 34. The upper furniture section 12 is therefore
removably mounted on the lower section 14 to permit the two
furniture sections to be separated as shown in Figure 2 of the
Perkins patent to provide flexibility and convenience to a
user (see column 1, lines 15-18 of the Perkins specification).
Such a teaching would have been ample motivation for one of
ordinary skill in the art to substitute Perkins’ post
assemblies (12, 14, 34) for Bianco’s corner support posts 12
to removable mount the upper bed section on the lower
furniture section. In addition, Perkins suggests the
provision of not one but four side rails 18 for each of the
upper and lower sections for the self-evident purpose of
reinforcing the support frame structure.
With regard to appellant’s arguments on page 37 of the
brief, the fact that both of Perkins’ upper and lower
furniture sections are shown to be bunk beds does not detract
from the obviousness of substituting Perkins’ posts assemblies
for Bianco’s support posts as discussed supra. In the first
place, bunk beds are furniture components. Thus, the
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recitation in claim 30 of “furniture components” is broad
enough to read on the components of Perkins’ lower bunk bed.
In addition, Perkins recognizes in column 1, lines 19-23, that
the modular design of separable furniture sections is
applicable to different types of furniture and that bunk beds
are but one type of such modular furniture systems.
Furthermore, Bianco’s teaches the concept of utilizing
components other than bed in the lower furniture section. In
this regard, Bianco’s teachings cannot be ignored, for the
test for obviousness is not what the references exclusively or
individually teach. Instead, the test is what the references
would have collectively suggested to one of ordinary skill in
the art. See Keller, 642 F.2d at 425, 208 USPQ at 881.
Furthermore, claim 30 is broad enough to read on Perkins
alone because the recitation of the furniture components is
broad enough to read on Perkins’ lower plural component bunk
assembly.
For the foregoing reasons, we will sustain the rejection
of claim 30. We will also sustain the rejection of dependent
claims 31 through 34 since the patentability of these claims
has not been argued separately of claim 30. See In re
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Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528 and In re Burckel,
592 F.2d at 1178-79, 201 USPQ at 70.
With regard to claim 35, Perkins suggests the concept of
providing upper and lower support posts detachably
interconnected by connectors for removably mounting an upper
furniture section on a lower furniture section for the reasons
discussed supra with respect to claim 30. In fact, based on
our analysis of Perkins, this reference teaches all of the
claimed steps in claim 35, namely the step of providing the
bed section (in the form of the upper bunk), the step of
providing the furniture-mounting section (in the form of lower
support posts 14) together with a rail member (in the form of
one of the lower rails 18) and the plurality of furniture
components (in the form of the plural component lower bunk
assembly), the step of selectively assembling the bed section
and the furniture-mounting section together by means of the
connectors 34 as shown in Figure 1 of the Perkins patent, and
the step of moving the bed section apart from the furniture-
mounting section by removing the connectors as shown in Figure
2 of the Perkins patent.
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For the foregoing reasons, we will sustain the rejection
of claim 35. We will also sustain the rejection of dependent
claims 36 through 38 since the patentability of these claims
has not been argued separately of claim 35. See In re
Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528 and In re Burckel,
592 F.2d at 1178-79, 201 USPQ at 70.
In summary, we have (1) affirmed the examiner’s
rejections of claims 2, 3, 5, 6, 14 though 16 and 30 though 38
and (2)
reversed the examiner’s rejections claims 1, 4, 9, 10, 17
through 26, 28 and 29. The examiner’s decision rejecting the
appealed claims is affirmed in part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Harrison E. McCandlish, Senior )
Administrative Patent Judge )
)
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)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John P. McQuade )
Administrative Patent Judge )
tdl
Appeal No. 1998-0236
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ANDRUS, SCEALES, STARKE & SAWALL
Suite 1100
100 East Wisconsin Avenue
Milwaukee, WI 53202