Ex Parte Marsh et al

Board of Patent Appeals and Interferences

Mar 15, 2010

10820186 (B.P.A.I. Mar. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS R. MARSH and ROBERT C. HIGHTOWER
____________________

Appeal 2009-002009
Application 10/820,186
Technology Center 3600
____________________

Decided: March 15, 2010
____________________

Before: WILLIAM F. PATE III, JOHN C. KERINS, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 4-11, 13 and 14.
These are the only claims remaining in the application. We have jurisdiction
over the appeal under 35 U.S.C. §§ 134 and 6.

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The claimed subject matter is directed to a device for protecting and
cushioning first and second confronting furniture components. The device
has a base member with a cushioning member thereon and a clip connected
to the base member, the clip having first and second members. The claims
are further directed to a combination of the device with an article of
furniture.
Claim 1 and claim 5, reproduced below, are further illustrative of the
claimed subject matter.
1. An article of furniture, comprising:

first and second confronting furniture components,
wherein one of the first and second furniture components
comprises a frame and the other of the first and second furniture
components comprises a movable member connected with the
frame and movable from an open position to a closed position;
and

a device for protecting the first and second confronting
furniture components, the device comprising:

a base member having opposite first and second faces,
the first face adapted to contact the first furniture
component, the base member having a cushioning
projection extending outwardly from the second face of
the base member and covering and defining a void within
the base member, the projection adapted to contact the
second furniture component as it confronts the first
furniture component; and

a clip connected to the base member, the clip having a
first member attached to one end portion of the base
member and a second member attached to the first
member, the base member, first member and second
member defining a cavity within which one of the first or
second furniture components is captured to affix the
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device thereto, wherein the device is formed as a unitary
member and is entirely formed of a polymeric material.

5. A device for protecting first and second confronting
furniture components, the device comprising:

a base member having opposite first and second faces,
the first face adapted to contact the first furniture component,
the base member having a cushioning projection extending
outwardly from the second face of the base member and
covering and defining a void within the base member, the
projection adapted to contact the second furniture component as
it confronts the first furniture component, wherein the
projection has a convex portion extending outwardly from the
second face of the base member and a planar portion opposite
the convex portion, and the planar portion of the projection has
a thickness that is less than the thickness of the base member

REFERENCES
The references of record relied upon by the examiner as evidence of
anticipation and obviousness are:
Schanz
Tinnerman
McEvoy
McAlarney
Wilson
US 1,998,791
US 2,185,161
US 2,858,583
US 3,952,455
US 6,148,584
Apr. 23, 1935
Dec. 26, 1939
Nov. 4, 1958
Apr. 27, 1976
Nov. 21, 2000

REJECTIONS
Claims 1, 4, 6-11, 13 and 14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over McAlarney.
Claims 1, 4 and 6-11 stand rejected under 35 U.S.C. § 103(a) as
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unpatentable over Tinnerman in view of Schanz.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
McAlarney in view of McEvoy.
Claim 5 stands rejected under 35 U.S.C. § 102(b) as anticipated by
McEvoy.
Claims 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tinnerman in view of Schanz and Wilson.

ISSUES
Appellants argue that claims 1, 4, 6-11, 13 and 14 are not
unpatentable over McAlarney, because McAlarney does not disclose
capturing the first or second furniture component in the clip portion of the
protection device. Therefore, the issue for consideration is whether the
Examiner has established that McAlarney discloses a clip which captures a
first or second furniture component.
With respect to claims 1, 4 and 6-11, rejected under § 103(a) as
unpatentable over Tinnerman in view of Schanz, Appellants argue that
neither Tinnerman nor Schanz discloses a clip portion which is attached to
one end of the base. Therefore, the issue for our consideration is whether
Tinnerman or Schanz discloses a clip with a first member connected to one
end of the base member.
With respect to the rejection of claim 5 under § 102 and § 103 over
McEvoy or the combined teachings of McAlarney in view of McEvoy,
Appellants argue that neither reference shows a base member with a
projection that has a convex portion and a planar portion opposite the
convex portion wherein the planar portion has a thickness that is less than
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the thickness of the base member. Therefore, the issue for consideration is
whether McEvoy teaches or the combined teachings of McAlarney and
McEvoy render obvious a base portion with a portion opposite the convex
portion that is both planar and of less thickness than the remaining portion of
the base.
Finally, with respect to claim 13, Appellants again argue that neither
Tinnerman, Schanz, nor Wilson discloses a clip member with a first member
that is attached to one end of the base member. Therefore, with respect to
claim 13, the issue is whether the Examiner has established that Tinnerman,
Schanz, and Wilson render obvious the claim limitation of a base member
with a clip that has a first member attached to the end of the base member.

FINDINGS OF FACT
McAlarney discloses an article of furniture, a first frame portion 1 and
a second confronting movable portion 2 and a device therebetween for
protecting the first and second confronting furniture components. The
device comprises a base 20 with a clip 21, 23, 25, extending away from one
end portion of the base member. See col. 3, l. 64 – col. 4, l. 16. While
McAlarney does disclose a clip member, this clip member is used to hold the
device to the movable portion of the furniture by a holding strip 16 which
covers and holds the fastening rib 25 which is mounted to the second
member of the clip. Therefore, it is our finding that the clip 21, 23, and 25
does not capture a first or second furniture component. See id. and col. 3, ll.
22-39.
Tinnerman discloses a compressible rubber sealing strip C between
the door and the door frame or casing. See Figs. 1 and 2. From the Figures
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it can be seen that sealing strip C has a circular sealing portion with an
angled L-shaped flange abutting wall member B of the furniture. See
Tinnerman, pg. 1, col. 2, ll. 38-45.
Schanz discloses a sealing strip to seal and cushion between furniture
members 10 and 11. Schanz discloses a base member with a convex sealing
portion 14, a clip member comprising a stem 15 and a pair of rearwardly
extending retaining lips 16, 16′. See Schanz col. 1, ll. 31-43.
The clip 15, 16, 16′ is attached to the center of the base member.
McEvoy discloses a device for protecting first and second confronting
components having a base member 26 with a convex cushioning projection
25. Base member 26 contacts the first component and cushioning projection
25 contacts the second component. As seen in Fig. 2b, base portion 26
opposite the convex cushioning projection 25 has a planar portion
(unnumbered) with a thickness that is less than the thickness of the base
member at either side of the projection. Col. 2, ll. 64-68. In Fig. 2b, the
planar portion appears to be comprised of two planar faces that extend at
slight angles to the horizontal and meet at an apex that further defines this
inner, planar portion.
A dictionary definition of planar is: of, pertaining to, or situated in a
plane. Flat. American Heritage Dictionary of the English Language, New
College Edition, 1976, p. 1002.
Wilson has been cited by the Examiner to show a planar portion
extending away from the cushioning projection.

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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103). Rejections based on 35 U.S.C. § 103 must
rest on a factual basis. In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may not, because of
doubts that the invention is patentable, resort to speculation, unfounded
assumptions, or hindsight reconstruction to supply deficiencies in the factual
basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Rejections on
obviousness grounds must be supported by “some articulated reasoning with
some rational underpinning” to combine the known elements in the manner
required in the claim at issue. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349 (Fed. Cir. 2002). Express anticipation occurs when the
prior art expressly discloses each limitation (i.e., each element) of a claim.
Id. In addition, “[i]t is well settled that a prior art reference may anticipate
when the claim limitations not expressly found in that reference are
nonetheless inherent in it.” Id.

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ANALYSIS
As our Findings make clear, with respect to the McAlarney reference,
we do not find therein any structure defining a cavity within which one of
the first or second furniture components is captured to affix the device
thereto, as required by claim 1 and claim 13. Therefore, the rejection of
claims 1, 4, 6-11, 13 and 14 under § 103 as unpatentable over McAlarney is
reversed.
With respect to Tinnerman and Schanz, Tinnerman does not disclose a
clip member. Schanz discloses a clip member but the clip member is not
attached to one end of the base member. Instead, the clip member of Schanz
is attached to the center of the base member. Therefore, the combined
teachings of Tinnerman and Schanz do not render the subject matter of
claims 1, 4, and 6-11 prima facie obvious. The Wilson reference adds
nothing in regard to this missing feature of the claimed subject matter and
the rejection of claim 13 as unpatentable over Tinnerman in view of Schanz
and Wilson is also reversed.
Turning to the rejection of claim 5 under 35 U.S.C. § 102 as
anticipated by McEvoy, and as unpatentable over McAlarney in view of
McEvoy, we will affirm this rejection. As noted above, the dictionary
definition of “planar” is flat. We regard the two sloping interior surfaces on
the top of the base member opposite the convex portion in McEvoy Figure
2b as flat surfaces albeit not horizontal. Since these surfaces are flat, they
are within the broadest reasonable interpretation of the claim term “planar.”
Therefore, we affirm the rejection of claim 5 as anticipated by McEvoy and
the rejection of claim 5 as unpatentable over McEvoy in view of McAlarney,
anticipation being the epitome of obviousness.
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CONCLUSIONS
The Examiner has failed to establish the obviousness of claims
1, 4, 6-11, 13 and 14 as unpatentable over McAlarney
The Examiner has failed to failed to establish that claims 1, 4, 6 and
11 are unpatentable under § 103 over the combined teachings of Tinnerman
and Schanz.
The Examiner has failed to establish that the subject matter of claim
13 is obvious over the combined teachings of Tinnerman, Schanz and
Wilson.
The Examiner has established that the subject matter of claim 5 is
anticipated by McEvoy, and is unpatentable over McAlarney in view of
McEvoy, anticipation being the epitome of obviousness.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART

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