Ex Parte Nielsen

Board of Patent Appeals and Interferences

Mar 25, 2011

11183208 (B.P.A.I. Mar. 25, 2011)

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.
11/183,208 07/14/2005 Andreas K. Nielsen 65717.00019 7381
7590 03/28/2011
Squire, Sanders & Dempsey L.L.P.
Two Renaissance Squire, suite 2700
40 North Central Avenue
Phoenix, AZ 85004-4498
EXAMINER
HANSEN, JAMES ORVILLE
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
03/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREAS K. NIELSEN
____________________

Appeal 2009-008900
Application 11/183,208
Technology Center 3600
____________________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Andreas K. Nielsen (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 22-24. Claims 1-21 have been
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2009-008900
Application 11/183,208

THE INVENTION
Appellant’s claimed invention pertains to a furniture system, such as
an entertainment center. Spec. 1, para. [0002]. Claim 22, reproduced below,
is representative of the subject matter on appeal.
22. A furniture system comprising:
a first cabinet;
a second cabinet; and
one or more members between the first cabinet and the
second cabinet;
wherein at least one of the first cabinet and the second
cabinet defines a space for which, in a first configuration of the
system, the one or more members reside outside of the space,
and in a second configuration of the system, at least one of the
one or more members resides at least partially within the space,
the space comprising a portion of a columnar space extending
upwardly from a footprint of at least one of the first cabinet and
the second cabinet.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 22-24 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention;
2. Claims 22-24 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Buchanan (US 6,505,898 B1, filed Sep. 8, 2000, issued Jan.
14, 2003); and
3. Claims 22-24 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Camfferman (US D458,048 S, filed Aug. 31, 2000, issued
Jun. 4, 2002).
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Application 11/183,208

OPINION
The rejection of claims 22-24 under § 112, second paragraph
The Examiner’s rejection under the second paragraph of § 112
pertains to the recited “space.” The Examiner appears to have based the
rejection on both requirements of the second paragraph: 1) the requirement
that the claims set forth that which Appellant regards as the invention, and
2) the requirement that the claims particularly point out and distinctly define
the boundaries of the claim scope (i.e., the claim must be definite). See Ans.
3-4, 6. “During the prosecution of a patent application, a claim’s
compliance with both portions of section 112, paragraph 2, may be analyzed
by consideration of evidence beyond the patent specification, including an
inventor’s statements to the Patent and Trademark Office (‘PTO’).”
Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377 (Fed. Cir. 2000). In
this case, Appellant’s arguments in the briefs confirm that the claims as
presently written do not correspond to that which Appellant regards as the
invention and serve to highlight the indefiniteness of the claims’ scope. For
the reasons set forth below, we affirm the Examiner’s rejection of claims
22-24 under the second paragraph of § 112.
Appellant, in the Reply Brief, attempts to clarify the intended meaning
of the claimed “space” with reference to the Specification’s specifically-
depicted embodiment and with two diagrams not found in the Specification.
Reply Br. 4-6. However, the claims are not limited to the disclosed
embodiment, and the metes and bounds of the claimed invention are to be
discernable to the ordinary artisan from a reading of the claims in light of the
Specification, not by resort to the Reply Brief in an appeal. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
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Appeal 2009-008900
Application 11/183,208

Cir. 1986) (The test for definiteness is “whether those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.”)
Appellant’s claim 22 calls for a furniture system where at least one of
the two cabinets defines a “space” outside of which a “member” resides in a
first configuration, and within which a member at least partially resides in a
second configuration. The claim describes “the space” as:
comprising a portion of a columnar space extending upwardly
from a footprint of at least one of the first cabinet and the
second cabinet.
Contrary to Appellant’s suggestion, the claimed space is not
commensurate in scope with the recited columnar space extending upwardly
from a footprint. See Reply Br. 5-6 (asserting that a member that resides
partially above the footprint is partially within the claimed space); see also
id. at 7 (“The claimed ‘space,’ i.e., the columnar space extending upwardly
from the [cabinet] footprint ….”) (alteration in original). Claim 22 requires
that the space only be some unspecified “portion” of the columnar space.
Claim 22, in addition, uses the typically open-ended transition phrase
“comprising” to define “the space” relative to the columnar space – “the
space comprising a portion of a columnar space.” Thus, it seems that “the
space” must include at least a portion of the columnar space above the
footprint, but is not limited to that portion or even to the entirety of the
columnar space. See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language
which means that the named elements are essential, but other elements may
be added and still form a construct within the scope of the claim.”) (citation
omitted). However, there must be some outer boundary of the space because
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Appeal 2009-008900
Application 11/183,208

otherwise there could never be a first configuration where the “one or more
members” reside outside of the space. Neither the claims themselves nor the
Specification provides adequate guidance that would permit one to discern
the boundaries of the claimed space.
In alleging error in the anticipation rejections, Appellant argues that
the Examiner’s construction of “space” is incorrect because the claimed
space cannot be the space between the cabinets. Reply Br. 7-8. The
Examiner’s interpretation of the “space” – as including the area between the
cabinets – is based in part on the language of claim 23. Ans. 3-4, 7. Claim
23 depends from independent claim 22 and recites that “the first cabinet and
the second cabinet each define the space,” and therefore seems to speak of a
single space rather than two separate spaces each defined by a cabinet.
Thus, the Examiner reasonably concludes that both cabinets define “the
space” and that that space “is not unique to a footprint of one cabinet,” and
therefore the area between the cabinets may be included in the claimed
space. Ans. 3-4.
We determine that one wishing to innovate and avoid the scope
of Appellant’s claim 22 as it now stands would be unable to discern the
boundaries of the claimed space so as to determine whether a “member” is
outside of the space for a first configuration and partially within the space
for a second configuration. Dependent claims 23 and 24 do not remedy the
deficiencies. As such, we agree with the Examiner’s conclusion that claims
22-24 are indefinite.
Additionally, because Appellant’s arguments for patentability
evidence the large and substantial gap between that which Appellant
understands to be the scope of the invention and that which appears to be
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Application 11/183,208

covered by the claims, claims 22-24 fail to satisfy the requirement of
particularly pointing out and distinctly claiming the subject matter which
Appellant regards as the invention.

The Anticipation Rejections
Because claims 22-24 are indefinite, the anticipation rejections must
fall pro forma because those rejections necessarily are based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962). It should be understood, however, that our decision
in this regard is based on the indefiniteness of the claimed subject matter and
does not reflect on the adequacy of the prior art evidence applied in support
of the rejections.

CONCLUSIONS
We conclude that the Examiner did not err in rejecting claims 22-24
under 35 U.S.C. § 112, second paragraph. We reverse pro forma the
Examiner’s rejections of claims 22-24 under 35 U.S.C. § 102(e) as
anticipated by Buchanan and as anticipated by Camfferman.

DECISION
The decision of the Examiner to reject claims 22-24 is affirmed.
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).
AFFIRMED
JRG
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