Ex Parte Lee

Patent Trial and Appeal Board

Jul 19, 2013

12179388 (P.T.A.B. Jul. 19, 2013)

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.
12/179,388 07/24/2008 David W. Lee 42378.2 8048
27683 7590 07/19/2013
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
TRAN, HANH VAN
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
07/19/2013 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 DAVID W. LEE
____________

Appeal 2011-006968
Application 12/179,388
Technology Center 3600
____________

Before JAMES P. CALVE, JEREMY M. PLENZLER, and
BEVERLY M. BUNTING, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-20. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
Claims 1, 14, and 18 are independent. Claim 1 is reproduced below:
1. A modular furniture system comprising:
a plurality of surface members;
a plurality of junctions; and
a plurality of connectors, each connector
having two engagement portions;
wherein, the plurality of surface members
and junctions each include one or more channels
for receiving a connector, and the plurality of
channels are shaped to slidingly attach with an
engagement portion of a connector; and
wherein the channels are positioned so that
the connectors can be used to interconnect a
surface member to a junction, or to another surface
member, to thereby assemble the modular furniture
system.

REJECTIONS
Claim 4 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claims 1-13 and 18-20 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Slocum (US 5,888,114; iss. Mar. 30, 1999).
Claims 14-17 are rejected under 35 U.S.C. § 103 as unpatentable over
Slocum.
ANALYSIS
Claim 4 as indefinite
The Examiner found that the limitation “the longer surface member
includes a channel spaced across its length” is vague and indefinite for
failing to clearly define how it is possible for a single channel to be “spaced”
across its length. Ans. 3. Appellant argues that claim 4 has been amended
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and now recites “wherein the width of the junction is the same as a width of
a surface member, and wherein the longer surface member includes a
channel” and this language is clear and definite. App. Br. 10.
We agree with the Examiner that the version of claim 4 that appears in
the Claims Appendix is incorrect and claim 4 should read:
4. The modular furniture system of claim 3 wherein the width
of the junction is the same as a width of a surface member, and
wherein the longer surface member includes a channel spaced
across its length.

See Ans. 3. Appellant submitted an amendment of claim 4 on January 14,
2010 and that amendment included the limitations set forth by the Examiner
at page 3 of the Answer. See Response to Notice of Non-Compliant
Amendment, dated Jan. 14, 2010. The Examiner finally rejected the claims
submitted in this amendment, including claim 4 as set forth above. Final
Rej., dated Apr. 28, 2010. Appellant has appealed that rejection.
We agree with the Examiner that the limitation “a channel spaced
across its length” is indefinite because it is unclear what the channel is
spaced from along the length of the longer surface member. Appellant’s
disclosure indicates that a channel extends across the length of a surface
member but it is unclear what is meant by a channel spaced across the length
of a surface member. Appellant’s arguments do not address this issue. See
App. Br. 10. Accordingly, we sustain the rejection of claim 4 as indefinite.
Claims 1-13 and 18-20 as anticipated by Slocum
The Examiner found that Slocum discloses a modular furniture system
with all the claimed elements including a plurality of surface members (200,
Fig. 17), each having one or more channels 204, 205, a plurality of junctions
(303, Fig. 18) each having one or more channels 304, 305, a plurality of
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connectors (306, Fig. 19), each connector having two engagement portions
(301-302), wherein the plurality of surface members and junctions include
one or more channels (204, 205, 304, 305) for receiving a connector and the
channels are shaped to slidingly attach with an engagement portion of a
connector, wherein the channels are positions so that the connectors can be
used to interconnect a surface member to a junction. Ans. 4, 7.
Appellant argues that there is no channel in the body of Slocum’s
plate element and the Examiner has not shown any other claim components
such as a junction or a connector in the Figure 17 embodiment of Slocum.
App. Br. 11. These arguments do not persuade us of error in the Examiner’s
findings as set forth in the Answer at pages 4 and 7. Figures 17-20 are part
of the same embodiment in Slocum. Col. 16, ll. 50-63. The Examiner found
that this embodiment discloses all of the claimed features, and Appellant has
not explained why these findings are incorrect. The Examiner’s finding that
Slocum’s plate elements have channels is supported by a preponderance of
evidence and is within the broadest reasonable interpretation of “channel” in
view of Slocum’s disclosure that Figure 17 discloses interlocking elements
that slide together along an axis parallel to the joint instead of being pressed
together in a direction normal to the joints. Slocum, col. 16, ll. 36-41; see
Spec. 4, para. [0025] (connectors are elongated shafts that slide into adjacent
channels on surface members and junctions); figs. 1-3.
Appellant also argues that dependent claim 2 recites “a plurality of
fillers configured to fill channels that are not attached to an adjacent surface
member or junction” and because claim 1 is patentable over Slocum it is not
necessary to further distinguish dependent claim 2. App. Br. 12. Because
we sustain the rejection of claim 1, this argument is not persuasive. Nor
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does this argument persuade us of error in the Examiner’s findings that
Slocum discloses fillers. See Ans. 4. As such, the rejection of claims 1-13
and 18-20 is sustained.
Claims 14-17 as unpatentable over Slocum
The Examiner found that Slocum discloses a modular furniture system
with a plurality of surface members 200, plurality of junctions 303, plurality
of connectors 306 with engagement portions 301, 302, wherein the surface
members and junctions include channels 204, 205, 304, 305 for receiving a
connector and the surface members are of different lengths. Ans. 5-6 (citing
Figs. 17, 23, 58a-b). The Examiner also found that Slocum does not teach
first and second surface members each of a length x and a width z, third and
fourth surface members each of a length 7 and a width z, wherein x = 2*y+z
but determined that it would have been obvious and well within the level of
skill in the art to provide surface members with such dimensions in view of
Slocum’s disclosure of surface members of different lengths as a matter of
design choice. Ans. 6.
Appellant argues that the claimed sizes provide benefits over the prior
art including Slocum’s system. App. Br. 14. Appellant also argues that the
intersection of the three interlocking end clips in Figure 58b of Slocum is
larger than the thickness of the plate element whereas the thickness of the
surface members and junctions of Appellant’s modular furniture are the
same and the Examiner has not shown how this unique feature is taught in
Slocum. App. Br. 14-15. These arguments are not persuasive because they
are not commensurate with the scope of claim 14, which does not recite any
of these benefits or features. We decline to read unclaimed features into
claim 14. Appellant’s attorney argument regarding alleged benefits of the
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claimed sizes is not evidence of criticality or unexpected results compared to
the closest prior art. As Appellant provides no further arguments for claim
14 or claims 16 and 17, we sustain the rejection of those claims.
Appellant also argues that “[c]laim 15 requires ‘wherein the first and
second surface members each include a channel at a midpoint of their
length’” and “[t]he Examiner has not shown how this unique features [sic] is
taught in Slocum.” App. Br. 14-15. The Examiner has not addressed this
argument or identified anything in Slocum pertaining to this limitation. See
Ans. 5-6, 7-8. As such, we do not sustain the rejection of claim 15.

DECISION
We AFFIRM the rejection of claim 4 as indefinite.
We AFFIRM the prior art rejections of claims 1-14 and 16-20 and
REVERSE the prior art rejection of claim 15.

AFFIRMED-IN-PART

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