11275886 (B.P.A.I. Jul. 29, 2010)

Ex Parte Parsons

Board of Patent Appeals and InterferencesJul 29, 2010

11275886 (B.P.A.I. Jul. 29, 2010)

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. 11/275,886 02/01/2006 Shannon G. Parsons 1007.007 2278 36790 7590 07/29/2010 TILLMAN WRIGHT, PLLC PO BOX 49309 CHARLOTTE, NC 28277-0076 EXAMINER KING, ANITA M ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 07/29/2010 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 SHANNON G. PARSONS ____________ Appeal 2009-007732 Application 11/275,886 Technology Center 3600 ____________ Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and MICHAEL W. O'NEILL, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. Â§ 41.52, begins to run from the "MAIL DATE" (paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007732 Application 11/275,886 2 STATEMENT OF THE CASE Shannon G. Parsons (Appellant) appeals under 35 U.S.C. Â§ 134 (2002) from the Examiner's decision rejecting claims 1, 4-7, and 28-36 as unpatentable over Schulman (US 3,950,086, issued Apr. 13, 1976), Kreuzer (US 6,349,436 B1, issued Feb. 26, 2002), and Beger (US 6,639,789 B2, issued to Oct. 28, 2003). Claims 2, 3, 8-27, 37, and 38 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6 (2002). The Invention Claim 1, reproduced in relevant part below, is illustrative of the claimed invention.2 1. An electronic display and lighting arrangement for viewing by, and illumination for, a dental patient received in a resting position in a dental chair, comprising, (a) an electronic display assembly comprising, â€¦ (ii) a first pivot arm coupled to [a] first carriage such that said first pivot arm is variably positionable in different inclinations to a horizontal plane, and â€¦ (iv) wherein [an] electronic display is coupled to said first pivot arm such that said display screen may be disposed in a horizontal orientation, â€¦ (d) wherein, â€¦ (ii) said electronic display is adjustably suspended vertically above [a] headrest of said dental chair, with said display screen 2 Claim 30 differs from claim 1 only in that claim 30 requires the electronic display to be suspended "directly" above the headrest. Appeal 2009-007732 Application 11/275,886 3 disposed in a horizontal orientation, for viewing by the dental patient received in said dental chair â€¦. SUMMARY OF DECISION We REVERSE. ANALYSIS Contentions In rejecting independent claims 1 and 30, the Examiner found, in relevant part, that Schulman describes a display screen "dispose[d] in a horizontal orientation for viewing by the patient" (Ans. 3), that Kreuzer describes a display screen "disposed in a horizontal orientation" (Ans. 4), and that Beger describes a display screen that "may be disposed in a horizontal orientation" (Ans. 5). Appellant argues that none of these references describes a display screen disposed in a horizontal orientation as required by claims 1 and 30. Appeal Br. 13-15. Issue Whether the Examiner correctly found that Schulman, Kreuzer, and/or Beger describe a display screen "disposed in a horizontal orientation." Analysis The Examiner states that Appellant has not "defined the reference point in regards to the term horizontal." Ans. 6. It is evident from the depiction of the display screen in Appellant's figure 8 that "horizontal orientation" is used in claims 1 and 30 in the conventional sense, that is, Appeal 2009-007732 Application 11/275,886 4 parallel to the horizon.3 The Examiner has not made any finding that Schulman, Kreuzer, and/or Beger describe a display screen oriented parallel to the horizon. The Examiner states that Beger "may be disposed in a horizontal orientation" (Ans. 5, emphasis added) but does not explain or provide any factual basis for this conclusion. Further, this statement appears to be based upon the Examiner's mistaken assumption that a "horizontal orientation" as used in claims 1 and 30 encompasses the orientation depicted in Schulman and Kreuzer, which are clearly not horizontal orientations. As such, the Examiner has not met the initial burden of making the factual findings to support a conclusion of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (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). Conclusion We are persuaded that the Examiner erred in finding that Schulman, Kreuzer, and/or Beger describe a display screen "disposed in a horizontal orientation." DECISION We reverse the Examiner's decision as to claims 1, 4-7, and 28-36. REVERSED 3 See, e.g., Webster's New World Dictionary 670 (David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984). Appeal 2009-007732 Application 11/275,886 5 hh TILLMAN WRIGHT, PLLC P.O. BOX 49309 CHARLOTTE, NC 28277-0076