Ex Parte Miller

Board of Patent Appeals and Interferences

Mar 29, 2007

10459679 (B.P.A.I. Mar. 29, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte GROVER L. MILLER
___________

Appeal No. 2006-1996
Application No. 10/459,679
Technology Center 3600
___________

Decided: March 29, 2007
___________

Before WILLIAM F. PATE, TERRY J. OWENS and, ANTON W. FETTING
Administrative Patent Judges.
WILLIAM F. PATE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from the final rejection of claims 1-9 and 16. Claims 10-
15 stand withdrawn from consideration as directed to a non-elected invention.
Claim 17 has been cancelled.
Appeal Number: 2006-1996
Application Number: 10/459,679
2
The claimed subject matter is directed to a drawer for a desk. The drawer is
sized so that a laptop computer and an auxiliary keyboard can be placed therein. In
the rear of the drawer are electrical and data connections for the laptop computer.
Claim 1, reproduced below, is further illustrative of the claimed subject
matter.
1. An article of furniture, comprising:
a furniture housing; and
a drawer slidably mounted within said furniture housing, said drawer having
a front portion and a rear portion and defining a storage area dimensioned to
support at least a laptop computer and an auxiliary computer keyboard; and
said drawer rear portion including a power and data module, said power and
data module having an AC power outlet and at least one of a phone and a data
outlet.

The references of record relied upon by the examiner as evidence of
anticipation and obviousness are:
Randolph 5,437,235 Aug. 1, 1995
Lin 5,704,698 Jan. 6, 1998
D’Souza 6,626,686 Sep. 30, 2003

Claims 1, 7 and 8 stand rejected under 35 U.S.C. § 102 as anticipated by
Randolph.
Claims 1-3 and 6-8 stand rejected under 35 U.S.C. § 102 as anticipated by
D’Souza.
Claims 9 and 16 stand rejected under 35 U.S.C. § 103 as obvious over
Randolph.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as unpatentable over
D’Souza over Lin.

Appeal Number: 2006-1996
Application Number: 10/459,679
3
ISSUES
The following issues are before us: whether claims 1, 7 and 8 lack novelty
over Randolph; whether claims 1-3 and 6-8 lack novelty over D’Souza; whether
claims 9 and 16 are unpatentable over Randolph; and whether claims 4 and 5 are
unpatentable over D’Souza in view of Lin.
FINDINGS OF FACT
Randolph is directed to an article of furniture called a computer workstation.
The examiner directs our attention to docking station 200. As shown in Figure 22,
the docking station pivots about pivot 202 so that a laptop computer 208 may be
inserted therein. Afterwards, the docking station is pivoted to a vertical position
wherein the laptop computer can be locked by lock 210 into a secured position.
D’Souza discloses a drawer 102 in which a laptop computer 106 may be
placed. At the rear of the drawer are one or more connectors 136 which provide
AC power, network connectivity, and connections to external peripheral devices
such as a keyboard, an external drive, or a printer. D’Souza mentions (col. 3, ll.
45-53) that the drawer 102 is much like a pencil drawer found in conventional
desks and may be provided as an integral part of the desk customized for users of
portable computers.
Lin also discloses a drawer or tray which is secured to a computer desk in a
retractable manner. The tray of Lin has a large upper surface which can support a
large multimedia keyboard. Additionally, a lateral mouse pad is further provided.
Both D’Souza and Lin teach a wrist pad for typing comfort.

PRINCIPLES OF LAW
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
Appeal Number: 2006-1996
Application Number: 10/459,679
4
1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907
(2003). 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 at Id. Inherency looks to whether a
matter is necessarily present in the prior art; it may not be established by
probabilities or possibilities. Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378,
1384 (Fed. Cir. 1999). A claimed invention may be inherently anticipated by a
prior art disclosure if the claimed invention necessarily or inevitably flows from
the prior art. See, e.g., Cruciferous Sprout, 301 F.3d at 1349; 64 USPQ2d at 1206;
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
In assessing whether subject matter would have been non-obvious under
§ 103, the Board follows the guidance of the Supreme Court in Graham v. John
Deere Co. Kahn at 985, 78 USPQ2d at 1335. The Board determines “‘the scope
and content of the prior art,’” ascertains “‘the differences between the prior art and
the claims at issue,’” and resolves “‘the level of ordinary skill in the pertinent art.’”
Id. (citing Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257, 261 (1976))
(quoting Graham, 383 U.S. at 17, 148 USPQ at 467). Against this background, the
Board determines whether the subject matter would have been obvious to a person
of ordinary skill in the art at the time of the asserted invention. Id. (citing Graham,
383 U.S. at 17, 148 USPQ 467).

ANALYLSIS
With respect to the rejections based on Randolph under either § 102 or §
103, we will not sustain these rejections. In our view it is unreasonable to regard
Appeal Number: 2006-1996
Application Number: 10/459,679
5
the docking station 200 of Randolph as a drawer. We note that the examiner has
relied upon the dictionary definition of a “drawer”, but in our view the reasonable
and customary meaning of the term “drawer” does not include the pivoting and
locking structure shown by Randolph. In other words, a drawer translates
substantially horizontally, while the docking station of Randolph merely pivots
around pivot 202.
We will, however, sustain the rejections under § 102 and § 103 based on the
evidence of D’Souza and D’Souza in view of Lin. We agree with the examiner
that the claimed subject matter is extremely broad and all that is required is a
drawer that is large enough to support a laptop computer and auxiliary computer
keyboard. The claims say nothing about the arrangement or configuration of these
items in the drawer, and we agree with the examiner that they could be stacked, for
that matter. The claims do not specify that these supported articles be in any kind
of use position.
Furthermore, with respect to the obviousness rejections, we agree with
examiner that it would have been obvious to one of ordinary skill in the computer
furniture art to modify the keyboard slide drawer of Lin or the drawer of D’Souza
to support both the laptop computer and the auxiliary computer keyboard if such
was desired. We note the teaching that typing on a laptop keyboard is sometimes
uncomfortable and an auxiliary keyboard is often desired (D’Souza, col. 1, ll. 20-
61). Pull out drawers are old and well known, and the idea that one might make a
drawer larger to contain more articles is well known in the furniture arts. For this
reason the rejection of claims 1-3 and 6-8 as anticipated by D’Souza and the
rejection of claims 4 and 5 as unpatentable over D’Souza in view of Lin are
affirmed.
Appeal Number: 2006-1996
Application Number: 10/459,679
6

CONCLUSIONS
The rejections of claims 1, 7 and 8 under § 102 and claims 9 and 16 under §
103 as anticipated or rendered obvious by Randolph are reversed. The rejection of
claims 1-3 and 6-8 as anticipated by D’Souza is affirmed. The rejection of claims 4
and 5 as unpatentable over D’Souza in view of Lin is affirmed.
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

JRG
Appeal Number: 2006-1996
Application Number: 10/459,679
7
BAKER & DANIELS LLP
111 E. WAYNE STREET
SUITE 800
FORT WAYNE, IN 46802

Deleted: JRG