Ex Parte Nevin

Board of Patent Appeals and Interferences

Sep 18, 2002

09348615 (B.P.A.I. Sep. 18, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD NEVIN
____________
Appeal No. 2002-0161
Application No. 09/348,615
____________
ON BRIEF
____________
Before STONER, Chief Administrative Patent Judge, STAAB and BAHR, Administrative
Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 2-6 and
13. Claim 12 stands allowed and claim 7 stands objected to as depending from a
rejected base claim. Claims 8-11, the only other claims pending in this application,
stand withdrawn as being directed to a non-elected species.
We REVERSE.
Appeal No. 2002-0161
Application No. 09/348,615
Page 2
1 An English language translation of this reference, prepared by the Patent and Trademark Office,
is appended hereto.
BACKGROUND
The appellant's invention relates to a computer desk or table having a built-in,
concealable, position adjustable solid state display which, in the storage position, forms
a portion of the work surface of the desk or table (specification, page 1). Claim 13,
which is reproduced in the Opinion section of this decision, is illustrative of the
invention.
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Lechman 5,651,594 Jul. 29, 1997
Yamaguchi (Japanese Kokai) 404063739 Feb. 28, 19921
The following rejections are before us for review.
Claims 2-5 and 13 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Lechman.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Lechman in view of Yamaguchi.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection and answer (Paper Nos. 12 and 15) for the examiner's complete reasoning in
Appeal No. 2002-0161
Application No. 09/348,615
Page 3
2 Anticipation is established only when a single prior art reference discloses, expressly or under
the principles of inherency, each and every element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be
no difference between the claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
(continued...)
support of the rejections and to the brief (Paper No. 14) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Claim 13, the sole independent claim on appeal, reads as follows:
13. An article of furniture comprising a base, a work surface
fixedly mounted to said base, having a recess with given
length and width dimensions, a solid state computer display
with a viewing screen, said display having a front surface
comprising the screen and a substantially planar rear
surface having substantially said given length and width
dimensions and means for mounting said display for
movement relative to said work surface between a storage
position, wherein said display is within said recess and said
rear display surface is substantially co-planar with said
work surface, and a viewing position, wherein said display
is inclined relative to and situated at least partially above
said work surface.
Appellant contends that the means limitation, which we have italicized above for
emphasis, is not met by Lechman and that the subject matter of claim 13 is therefore
not anticipated2 by Lechman. On page 3 of the answer, the examiner, referring to the
Appeal No. 2002-0161
Application No. 09/348,615
Page 4
2 (...continued)
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). It is not necessary that the reference teach what
the subject application teaches, but only that the claim read on something disclosed in the reference, i.e.,
that all of the limitations in the claim be found in or fully met by the reference. Kalman v. Kimberly Clark
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Figure 4 embodiment of Lechman, notes that Lechman discloses a display (monitor 60)
mounted in a recess (bore 52A) flush with a desk top (top surface 14 of work table or
platform 12), with “a ledge 58A extending around the periphery of the bore just beneath
the work table 12 for supporting the monitor” (see column 4, lines 1-5, of Lechman).
According to the examiner (answer, page 3),
[a]nyone using the desk could easily lift the display and slide
it along the supporting peripheral walls and by resting the
display partly in the recess and against the ledge 56A. Thus
providing a inclined viewing position. Therefore the structure
shown in Figure 4 meets the Appellant’s claims. The ability
of a person using the desk to move the display to an inclined
position and an upside down position is inherent to the
structure shown in Figure 4.
We presume that the examiner means that the monitor 60 can be maintained in
an inclined position and situated at least partly above the top surface 14 of the work
table or platform 12 at one end, with top and bottom edges of the opposite end of the
display supported, respectively, by a first of the peripheral walls 56A and a portion of
the ledge 58A and with the rear surface of the monitor 60 supported by the edge at the
intersection of the top surface 14 of the work table or platform 12 and the peripheral
wall 56A opposite the first of the peripheral walls 56A. We interpret the examiner’s
remarks on page 2 of the final rejection as a determination that the monitor 60 is
Appeal No. 2002-0161
Application No. 09/348,615
Page 5
capable of being mounted, in an upside-down orientation, such that the rear display
surface thereof is co-planar with the top surface 14 of the work table or platform 12.
Notwithstanding that Lechman does not teach positioning of the monitor 60
either in the upside-down orientation with its rear surface being co-planar with the top
surface 14 of the work table or platform 12 or in the inclined position at least partially
above the top surface 14 of the work table or platform, it does appear that the structure
pointed out by the examiner is capable of performing the function set forth in the
“means for ...” clause of appellant’s claim 13. This, however, is not the end of the
inquiry, as the “means for ...” clause which we have italicized in the reproduction of
claim 13, supra, is an expression of a means for performing a specified function (i.e.,
“mounting said display for movement relative to said work surface between a storage
position, wherein said display is within said recess and said rear display surface is
substantially co-planar with said work surface, and a viewing position, wherein said
display is inclined relative to and situated at least partially above said work surface”).
The sixth paragraph of 35 U.S.C. § 112 states:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
In order to meet a "means-plus-function" limitation, the prior art must (1) perform the
identical function recited in the means limitation and (2) perform that function using the
structure disclosed in the specification or an equivalent structure. Cf. Carroll Touch Inc.
Appeal No. 2002-0161
Application No. 09/348,615
Page 6
v. Electro Mechanical Sys. Inc., 15 F.3d 1573, 1578, 27 USPQ2d 1836, 1840 (Fed. Cir.
1994); Valmont Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d 1451,
1454 (Fed. Cir. 1993); Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12 USPQ2d
1382, 1386 (Fed. Cir. 1989). The examiner has addressed the first requirement but has
not addressed the second requirement, namely, whether Lechman performs the recited
function using the structure disclosed in appellant’s specification or an equivalent
thereof. For the reasons which follow, it is our opinion that Lechman does not meet this
second requirement.
The structure disclosed in appellant’s specification for performing the function
recited in claim 13 includes the brackets 30, 32, slots 34, pins 36 and 40 and the floor
or bottom surface 46 of the recess 22, with its spaced grooves 48 for receiving the
lower rear corner 50 of the display B. As illustrated in Figures 3 and 4 of appellant’s
application, the display B and brackets 30, 32 can be rotated or pivoted such that the
display B is moved between a stored position (Figure 3) with the rear surface thereof
co-planar with the top surface (veneer layer 24) of the work surface 10 and a viewing
position (Figure 4) with the display inclined and at least partially above the work surface
10. The Figure 4 embodiment of Lechman relied upon by the examiner does not
contain brackets with pins and slots or a recess floor having spaced grooves for
Appeal No. 2002-0161
Application No. 09/348,615
Page 7
3 We have not overlooked other Lechman embodiments (e.g., Figures 7-10), not relied upon by
the examiner, which comprise arms or levers and brackets for supporting a pivotable and movable
monitor support member. None of these arrangements are designed to permit movement of the monitor
to either the inverted storage position or a viewing position wherein the display is inclined and situated at
least partially above the work surface, as called for in claim 13. In each of Lechman’s disclosed
embodiments, the monitor 60 is designed to remain beneath the top surface of the work table or platform.
4 See, e.g., Kemco Sales Inc. v. Control Papers Co., 208 F.3d 1352, 1364, 54 USPQ2d 1308,
1315-16 (Fed. Cir. 2000) (In order for an accused structure to be a section 112, paragraph 6 "equivalent,"
it must (1) perform the identical function and (2) be otherwise insubstantially different with respect to
structure. Two structures may be "equivalent" for purposes of section 112, paragraph 6 if they perform
the identical function, in substantially the same way, with substantially the same result.)
receiving the lower rear corner of the monitor3. Accordingly, Lechman does not perform
the recited function using the structure disclosed in appellant’s specification.
The structure of the Figure 4 embodiment of Lechman alluded to by the
examiner (i.e., the ledge 58A and peripheral walls 56A), which at best merely serves as
a static support for the monitor, achieves the recited function in a much different
manner than the corresponding structure in appellant’s specification (i.e., the brackets,
slots, pins and floor structure), which provides a pivotable, movable support for the
display that supports the display throughout its movement between the stored and
viewing positions. Thus, we find no indication that the Lechman structure for
performing the recited function is an equivalent of the structure disclosed in appellant’s
specification4 and the examiner has offered no rationale as to why the Lechman
structure is an equivalent within the meaning of 35 U.S.C. § 112, sixth paragraph.
For the foregoing reasons, we agree with appellant that Lechman does not meet
the means limitation of claim 13 and thus cannot anticipate claim 13 or claims 2-5 which
depend from claim 13.
Appeal No. 2002-0161
Application No. 09/348,615
Page 8
We turn now to the examiner’s rejection of claim 6, which depends from claim 13
and further recites that the mounting means comprises a bracket having a means for
pivotally connecting the bracket to the article of furniture and means for pivotally
connecting the bracket to the display, as being unpatentable over Lechman in view of
Yamaguchi. The examiner cites Yamaguchi for its teaching of the use of pivotal
brackets for providing multiple positions for a monitor (television receiver 9), including a
“normal” position (Figure 3) in which the display surface of the television receiver faces
downward and a position (Figure 1) in which the display surface of the television
receiver is upright or inclined and visible either from the front or rear seats, as desired.
According to the examiner (final rejection, page 4), it would have been obvious to one
having ordinary skill in the art “to have modified Lechman with pivotal brackets in a
furniture recess for the purpose of providing multiple positions of the monitor in view of
Yamaguchi.” We do not agree.
As mentioned above, Lechman provides no teaching or suggestion to position
the monitor 60 in either a stored position with the display surface facing downward and
the rear surface co-planar with the work surface or a viewing position wherein the
monitor is at least partially above the work surface. Rather, Lechman’s work station is
designed to have the monitor positioned either below or flush with the top surface of the
work station (column 2, lines 23-25). Thus, we find no suggestion in the applied
references to provide a pivotal bracket support structure of the type disclosed by
Appeal No. 2002-0161
Application No. 09/348,615
Page 9
5 The mere fact that the prior art could be so modified would not have made the modification
obvious unless the prior art suggested the desirability of the modification. See In re Mills, 916 F.2d 680,
682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
Yamaguchi for movably mounting Lechman’s monitor for movement between such
positions5. Accordingly, we shall not sustain the examiner’s rejection of claim 6.
Appeal No. 2002-0161
Application No. 09/348,615
Page 10
CONCLUSION
To summarize, the decision of the examiner to reject claims 2-5 and 13 under 35
U.S.C. § 102 and claim 6 under 35 U.S.C. § 103 is reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2002-0161
Application No. 09/348,615
Page 11
James and Franklin
Suite 1217
60 East 42nd Street
New York, NY 10165