Ex Parte Rotundo et al

Board of Patent Appeals and Interferences

Feb 18, 2010

10885366 (B.P.A.I. Feb. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FRANK L. ROTUNDO and ANNE T. RILEY
____________

Appeal 2009-007116
Application 10/885,366
Technology Center 3700
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Decided: 18 February 2010
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Before JAMESON LEE, RICHARD TORCZON and SALLY C. MEDLEY,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
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A. STATEMENT OF THE CASE
Frank L. Rotundo and Anne T. Riley, (“Rotundo”), the real parties in
interest, seek review under 35 U.S.C. § 134(a) of a Final Rejection of claims
1-21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
References Relied on by the Examiner
Sanchez-Levin et al. (“Sanchez-Levin”) 6,206,493 Mar. 27, 2001
Smith 3,526,443 Sep. 01, 1970

Rejections on Appeal
The Examiner rejected claims 1-5, 7, 8, 11, 13 and 16-21 under
35 U.S.C. § 102(b) as anticipated by Sanchez-Levin.
The Examiner rejected claims 6, 9, 14 and 15 as unpatentable under
35 U.S.C. § 103(a) over Sanchez-Levin.
The Examiner rejected claims 10 and 12 as unpatentable under
35 U.S.C. § 103(a) over Sanchez-Levin and Smith.
Rotundo argues separately several groups of the claims, which shall
become apparent in the analysis.
The Invention
Rotundo discloses, referring to Rotundo’s figure 3 reproduced below
[numbers from figure 3 inserted], a display [20] including a base [24] and
plurality of modules [22]. Abs; Spec. pp. 3-4.
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Rotundo’s figure 3 is below:

Figure 3 depicts a display.
Claim 1, reproduced from the Claims Appendix of the Appeal Brief,
reads as follows:
A house toy and display, comprising:
a base, the base having a base fitting; and
a plurality of room modules, each of the plurality of room
modules having a floor and at least one wall, the floor having a room
module fitting complementary in shape to the base fitting to retain the
plurality of room modules on the base, the floor having an outer
perimeter away from the wall, the wall having a height, the plurality
of room modules being independently detachable from the base;
wherein a top plane of each of the plurality of room modules is
open, the top plane being parallel to the floor and being at the height
of the wall above the floor; and an outer surface of each of the
plurality of room modules is open, the outer surface having a radial
cross section like the outer perimeter, being perpendicular to the floor,
and extending from the floor to the top plane.

App. Br. 19, Claims App’x.
B. ISSUES
Has Rotundo shown that the Examiner incorrectly found that
Sanchez-Levin describes: (1) a room module with an open top plane and an
open outer surface; (2) a room module fitting complementary in shape to the
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base fitting; (3) a base having a rim defining a recess; and (4) means for
fitting the plurality of room modules with the supporting means?
C. FINDINGS OF FACT
Rotundo’s Specification
1. Rotundo discloses, referring to Rotundo’s figure 3 reproduced above
[numbers from figure 3 inserted], a base [24] and a room module [22]
including a room module fitting or floor [26]. Spec. p. 3, ll. 7-12.
2. The base [24] includes a rim [30] defining base fitting or recess [32].
Spec. p. 3, ll. 9-10.
3. A cover (not shown) is used to enclose the room modules [22] for
protection from dust or disturbance. Spec. p. 6, ll. 11-24; fig. 6.
4. Rotundo identifies the base [24] as corresponding to the claim 20
means for supporting the plurality of room modules and identifies the
rim [30] and recess [32] as corresponding to the claim 20 means for
fitting the plurality of room modules with the supporting means. App.
Br. 8, citing fig. 3, Spec. p. 3, ll. 7-12, p. 3, l. 2-p. 4, l. 7.
Sanchez-Levin
5. Sanchez-Levin describes, referring to Sanchez-Levin’s figure 2
reproduced below [numbers from figure 2 inserted], a stationary
display structure including holders [24], [26] for a plurality of
modular display structures [18]. Col. 2, ll. 17-27.
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Sanchez-Levin’s figure 2 is below:

Figure 2 depicts the display structure.
6. The holders [24], [26] each have a support plate [29] and partitions
[28] that extend radially from wall segments [30] which together
define an octagon. Col. 2, ll. 26-32, 36-37.
7. The modular display structures [18] include an opaque base [44] and a
transparent cover [42]. Col. 2, ll. 54-63.
8. The base [44] has a top plane in which a portion of the top plane is
open. Fig. 2.
9. Each wall segment [30] has a catch component [50] and the base [44]
has a catch component [52] that may engage each other to allow the
modular display structure [18] to snap into position on the holder [24],
[26]. Col. 2, ll. 64-67.
10. The partition [28] and the catch components [50], [52] retain the base
[44] on the support plate [29]. Fig. 2.
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11. The partitions [28] are a rim, border or edge between adjacent bases
[44] placed on the support plate [29]. Fig. 2.
12. The partitions [28], in conjunction with a wall segment [30], define a
recess for a base [44]. Fig. 2.
D. PRINCIPLES OF LAW
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
However, “limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citation omitted).
To meet a means-plus-function limitation, “a structure must either be
the same as the disclosed structure or be a section 112, paragraph 6
‘equivalent,’. . . .” Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d
1352, 1364 (Fed. Cir. 2000). “[T]wo 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.” Id.
E. ANALYSIS
Claims 1-19
Independent claim 1 is representative and recites (disputed limitations
in italics): “a plurality of room modules . . . wherein a top plane of each of
the plurality of room modules is open . . . and an outer surface of each of the
plurality of room modules is open . . . .” App. Br. 19, Claims App’x.
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Rotundo argues that since the top of Sanchez-Levin’s base [44] (i.e.,
room module) obstructs a portion of the top plane at the back of the base
[44], then the top plane is not open as claimed. App. Br. 13; Reply Br. 5.
The argument is misplaced. Claim 1 does not require that the entire top
plane be open. Rather, claim 1 encompasses structure where a portion of the
top plane of the room module is open. Sanchez-Levin describes the disputed
limitation because the base [44] (i.e., room module) has a top plane and a
portion of that top plane is open. Fig. 2.
Rotundo further argues that the cover [42] attached to the base [44]
obstructs both the top plane and outer surface of the base [44]. App. Br. 13;
Reply Br. 5. Rotundo’s arguments are misplaced because Sanchez-Levin
contemplates a removable cover, such when the cover [42] is removed no
obstruction occurs. That is, at least a portion of the top plane is open as
explained immediately above, along with the entire outer surface.
Claim 1 further recites (disputed limitations in italics): “the base
having a base fitting . . . each of the plurality of room modules having a floor
. . . the floor having a room module fitting complementary in shape to the
base fitting . . . .” App. Br. 19, Claims App’x.
Rotundo argues that Sanchez-Levin’s partition [28] (i.e., base fitting)
is not complementary in shape to the base [44] (i.e., room module) because
it extends around the sidewalls and back of the base [44], but is open in the
front. App. Br. 13-14. Rotundo appears to argue that in order for the base
fitting to be complementary in shape to the room module, the base fitting
must extend around all sides of the room module. Claim 1 does not require
the room module fitting to completely enclose the base fitting. Nor does
Rotundo direct us to evidence to demonstrate that the use of the term
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“complimentary” in claim 1 necessitates such a narrow construction. During
prosecution claim terms are given their broadest reasonable interpretation,
but limitations will not be read into the claims from the specification.
Morris, 127 F.3d at 1054, Van Geuns, 988 F.2d at 1184.
Rotundo further argues that Sanchez-Levin’s partition [28] is not
shaped to retain the base [44] (i.e., room module), but instead the catch
components [50] and [52] are required to retain the base [44] on the support
plate [29]. Rotundo appears to argue that the claims require the room
module fitting alone to retain the plurality of room modules. Claim 1 is not
so limiting. Claim 1 is open-ended due to the use of the transitional phrase
“comprising” and therefore additional structure can be included within the
scope of the claims. The claim language also does not preclude the use of
catch components. Sanchez-Levin describes the claim limitations since the
partitions [28], along with catch components [50], [52], retain the base [44]
on the support plate [29]. Fig. 2. Specifically, the partitions [28] along with
the catch components [50], [52] retain the base [44] on the support plate [29]
by restricting side to side motion of the base [44] across the surface of the
support plate [29].
Rotundo presents additional arguments directed to the limitations of
independent claim 16. Claim 16 recites: “a base . . . having a rim defining a
recess . . . .” App. Br. 21, Claims App’x. Rotundo argues, citing a
dictionary definition, that a rim is defined as a usually curved or circular
border or edge of an object. App. Br. 14; Reply Br. 6. Rotundo argues that
Sanchez-Levin’s partition [28] is open in the front, is not located along the
border or edge of the support plate [29] and is therefore not a rim. App.
Br. 14; Reply Br. 6-7.
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Rotundo does not provide a copy of its dictionary definition for “rim”
in its evidence appendix. App. Br. 23. Argument of counsel cannot take the
place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775,
782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
Rotundo’s argument that claim 16 requires a rim (i.e., a border or
edge) around the periphery of the entire base structure is not persuasive.
The claim is not so limiting. Claim 16 only requires a base having a rim
(i.e., a border or edge) defining a recess. The claim does not recite the
structure of the rim or that the rim extends around the base. Sanchez-
Levin’s partition [28] serves as a rim, border or edge between adjacent bases
[44] placed on the holder [24], [26]. Figs. 2-3. Sanchez-Levin’s partitions
[28], in conjunction with wall segment [30], further define a recess for a
base [44].
For all of these reasons, we sustain the rejection of claims 1-5, 7, 8,
11, 13 and 16-19 as anticipated by Sanchez-Levin.
Rotundo does not argue the specific limitations of dependent claims 6,
9, 10, 12, 14 and 15 separately. App. Br 15-16; Reply Br. 6, 8-9. For the
same reasons as those addressing claims 1-5, 7, 8, 11, 13 and 16-19, we
sustain the rejection of claims 6, 9, 10, 12, 14 and 15 as unpatentable over
the applied prior art.
Claims 20-21
Rotundo presents additional arguments directed to the limitations of
independent claim 20. Claim 20 recites: “means for supporting the plurality
of room modules; and means for fitting the plurality of room modules with
the supporting means . . . .” App. Br. 22, Claims App’x.
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Rotundo argues that the disputed limitations invoke 35 U.S.C. 112, 6th
paragraph and cover the corresponding structure disclosed in its
Specification. App. Br. 14; Reply Br. 7. Rotundo identifies the base [24] as
corresponding to the means for supporting the plurality of room modules and
identifies the rim [30] and recess [32] as corresponding to the means for
fitting the plurality of room modules with the supporting means. App. Br. 8,
citing fig. 3, Spec. p. 3, ll. 7-12, p. 3, l. 2-p. 4, l. 7.
The Examiner does not dispute that the claim limitations invoke
35 U.S.C. 112, 6th paragraph. Ans. 9-10. The Examiner finds that the catch
component [50] on wall segment [30] provides a means for fitting a plurality
of room modules with the support means. Ans. 10.
Rotundo argues that Sanchez-Levin does not describe a structure
corresponding to that disclosed in its Specification or an equivalent thereof.
Rotundo argues that catches [50], [52] are not equivalent structure because
they snap the base [40] to the wall segment [30]. App. Br. 14; Reply Br. 7-
8; citing Sanchez-Levin col. 2, ll. 64-67; fig. 5.
In order to meet a means-plus-function limitation, a structure must
either be the same as the disclosed structure or be equivalent by performing
the identical function, in substantially the same way, with substantially the
same result. Kemco, 208 F.3d at 1364. Sanchez-Levin does not describe the
same structure as that disclosed in Rotundo’s Specification. The Examiner
does not provide any meaningful explanation as to why Sanchez-Levin’s
catch component [50] is an equivalent structure. Moreover, Rotundo points
out that Sanchez-Levin’s catches [50], [52] snap the base [44] to the wall
segment [30]. Sanchez-Levin’s catches [50], [52] that snap the base [44] to
the wall segment [30] do not perform the identical function in substantially
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the same way as Rotundo’s disclosed structure and therefore Sanchez-
Levin’s structure is not equivalent to Rotundo’s disclosed structure.
For all these reasons, we do not sustain the rejection of claims 20-21
as anticipated by Sanchez-Levin.
F. CONCLUSION
Rotundo has not shown that the Examiner incorrectly found that
Sanchez-Levin describes: (1) a room module with an open top plane and an
open outer surface; (2) a room module fitting complementary in shape to the
base fitting; and (3) a base having a rim defining a recess.
The Examiner erred in finding that Sanchez-Levin describes means
for fitting the plurality of room modules with the supporting means.
G. ORDER
The decision of the Examiner rejecting claims 1-5, 7, 8, 11, 13 and
16-19 under 35 U.S.C. § 102(b) as anticipated by Sanchez-Levin is affirmed.
The decision of the Examiner rejecting claims 6, 9, 14 and 15 as
unpatentable under 35 U.S.C. § 103(a) over Sanchez-Levin is affirmed.
The decision of the Examiner rejecting claims 10 and 12 as
unpatentable under 35 U.S.C. § 103(a) over Sanchez-Levin and Smith is
affirmed.
The decision of the Examiner rejecting claims 20-21 under 35 U.S.C.
§ 102(b) as anticipated by Sanchez-Levin is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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