Ex Parte Sevier et al

Board of Patent Appeals and Interferences

May 31, 2002

09103347 (B.P.A.I. May. 31, 2002)

1In the final rejection, the examiner indicated that dependent claims 22, 23 and 26 contained
allowable subject matter. Subsequently, the appellants amended them to independent form. See Papers
No. 10 and 11.
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for publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD W. SEVIER and DOMINIC J. LOUWAGIE
____________
Appeal No. 2001-0045
Application No. 09/103,347
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-21,
24, 27 and 28. Claim 25 has been canceled and claims 22, 23 and 26 have been
allowed.1
We REVERSE AND ENTER A NEW REJECTION UNDER 37 CFR § 1.196(B).
Appeal No. 2001-0045
Application No. 09/103,347
Page 2
2Our understanding of this document was obtained from a PTO translation, a copy of which is
enclosed.
BACKGROUND
The appellants’ invention relates to equipment mounting racks and cabinets. An
understanding of the invention can be derived from a reading of exemplary claim 1,
which has been reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Anderson et al. (Anderson) 5,639,150 Jun. 17, 1997
Hsueh 5,664,380 Sep. 9, 1997
German Patent (Offenlegungsschrift)2 26 09 100 A1 Sep. 8, 1977
(DT 100)
Claims 1-14, 16-20, 24 and 27 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Anderson.
Claims 10, 11 and 13-17 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Hsueh.
Claims 21 and 28 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by the German reference (DT ‘100).
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the Answer
(Paper No. 17) for the examiner's complete reasoning in support of the rejections, and
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Application No. 09/103,347
Page 3
3Anticipation under 35 U.S.C. § 102 is established only when a single prior art reference
discloses, either expressly or under the principles of inherency, each and every element of the claimed
invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994).
Anticipation by a prior art reference does not require either the inventive concept of the claimed subject
matter or recognition of inherent properties that may be possessed by the reference. See Verdegaal
Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987),
nor does it require that the reference teach what the applicant is claiming, but only that the claim on
appeal "read on" something disclosed in the reference. See Kalman v. Kimberly-Clark Corp, 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
to the Brief (Paper No. 15) and Reply Brief (Paper No. 18) for the appellants’ arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Representative Claim 1
A rack for mounting equipment composed of a seismically sound skeleton
structure having spaced vertical uprights supplemented by distinct spaced
equipment mounting structures attached to said skeleton structure and
extending along said vertical uprights and constituting side wall structures
of a mounting rack interior space in lateral extension of said vertical
uprights and including means for mounting said equipment.
The Examiner’s Rejections
All of the examiner’s rejections are under 35 U.S.C. § 102.3
The Rejection On The Basis Of Anderson
Appeal No. 2001-0045
Application No. 09/103,347
Page 4
Claims 1-14, 16-20, 24 and 27 stand rejected as being anticipated by Anderson.
Claim 1 recites a rack comprising a skeleton structure having spaced vertical
uprights supplemented by distinct spaced equipment mounting structures attached to
the skeleton structure and extending along the vertical uprights and constituting side
wall structures “of a mounting rack interior space in lateral extension of said vertical
uprights” (emphasis added) and including means for mounting the equipment. In
arriving at the conclusion that Anderson anticipates the structure recited in the
appellants’ claim 1, the examiner has found that Anderson’s “mounting channels 20"
correspond to the spaced equipment mounting structures because they extend laterally,
that is, “to the left” of vertical upright 12, as shown in Figure 2 (Answer, page 3). The
appellants argue, however, that Anderson’s channel members 20 are not in lateral
extension to the vertical uprights, “but rather . . . [are] spaced inwardly . . . from both
sides of Anderson’s modular enclosure,” as opposed to the sides 31 (Brief, page 9).
We first point out with regard to this issue that “in lateral extension” is not defined
in the specification and does not appear in the original claims. In the embodiment of
the invention shown in Figure 1, it appears that the outer face of each equipment
support structure is coplanar with the outer face of the partial enclosure surrounding the
vertical upright with which it is associated. However, the appellants have not taken the
position that “in lateral extension” is limited to this relationship. This being the case, we
look to the common applicable definition of “lateral,” which is “coming from the side,”
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Application No. 09/103,347
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4See, for example, Webster’s New Collegiate Dictionary, 1973, pages 650 and 406, respectively.
and of “extension,” which is “a section forming an additional length.”4 Based upon
these definitions, taken in the light of the description of the invention in the appellants’
specification and the arguments in the Brief, we interpret “in lateral extension of said
vertical uprights” to mean that the spaced equipment mounting structures must be
attached to the vertical uprights and must form additional sidewardly oriented sections
of the vertical uprights.
Applying the foregoing to the rejection, we cannot agree with the examiner that
element 20 of Anderson as shown in Figure 2 is “in lateral extension” of vertical upright
12 merely because it is located to the left thereof, as shown. Element 20 can be
considered to be attached to vertical upright 12 through unistrut 18 and vertical strut 19.
However, it appears to be located entirely inwardly of vertical upright 12, and therefore
is not, in our view, “in lateral extension” of the vertical upright. This being the case,
Anderson does not disclose or teach all of the subject matter recited in claim 1, and we
will not sustain the rejection. It follows that we also will not sustain the like rejection of
claims 2-9, which depend therefrom.
The same limitation is present in independent claims 10 and 18, and therefore
we will not sustain the rejection of claims 10 and 18 or of depending claims 11-14, 16,
17, 19 and 20.
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Application No. 09/103,347
Page 6
Independent claim 24 is directed to an equipment rack and requires vertical
uprights, a cross piece structure attached to and extending between vertical uprights
and forming a corner at each of the vertical uprights, and a strut plate extending inside
of the vertical upright and inside the cross piece structure in spaced relationship to the
corner at an angle from a distance from that corner at the vertical upright to a distance
at that corner from the cross piece structure. The examiner is of the view that this finds
correspondence in the frontal vertical portion of member 16 of Anderson’s Figure 4.
We do not agree, for the member pointed out by the examiner extends between a side
member and a cross piece structure and not between a vertical upright and a cross
piece structure, as is required by the claim. The rejection of claim 24 and depending
claim 27 is not sustained.
The Rejection Based Upon Hsueh
This rejection involves claims 10, 11 and 13-17.
Hsueh is directed to a frame structure for use in setting up partition walls. The
structure comprises a plurality of H-shaped partition frames 1 attached together by
horizontally extending upper and lower mounting plates 2 (Figure 2). Each mounting
plate 2 has a vertically oriented flange 21 that is attached to the upper or lower portions
of the partition frames 1.
Claim 10 recites spaced vertical uprights supplemented by distinct spaced
equipment mounting structures having first sections constituting side wall structures “in
Appeal No. 2001-0045
Application No. 09/103,347
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lateral extension of said vertical uprights.” As we understand the examiner’s rejection, it
is based on the findings that the vertically oriented flanges constitute the claimed
“spaced vertical uprights” and the center portions of the H-shaped partition frames the
“lateral extensions” thereof.
We do not agree with the examiner that one of ordinary skill in the art would
consider the Hsueh vertical flanges to be “spaced vertical uprights,” and we note in this
regard the several exhibits offered by the appellants in support of this conclusion. Nor
do we agree that the center portion of the partition frames are “in lateral extension” to
the flanges, if for no other reason than they extend upwardly rather than to the side of
them, and therefore do not meet the definition of “laterally.”
This rejection of independent claim 10 and dependent claims 11 and 13-17 is not
sustained.
The Rejection Based Upon DT ‘100
Independent claims 21 and 28 stand rejected as being anticipated by DT ‘100,
which is directed to an assembly set for forming shelving of variable size. Claim 21 sets
forth a skeleton structure having spaced vertical uprights, each of which has an
elongate upright partial enclosure having a main section extending in parallel to a main
section of the vertical upright, first and second lateral sections extending from the main
section in “spaced relationship” respectively to first and second sides of the vertical
Appeal No. 2001-0045
Application No. 09/103,347
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upright, and first and second extensions extending from the lateral extensions and
“engaging” respectively first and second sides of the vertical uprights.
As we understand this rejection, it is the examiner’s position that this structure
reads on the G-shaped corner posts shown in Figure 3 of DT ‘100. We do not agree.
First of all, the examiner is considering the stumps 6 shown extending from the upper
and lower shelves in Figure 2 to be the vertical extensions recited in the claim, and the
corner posts to be the partial enclosure, which in our view is not a proper reading, as
we stated above with regard to similar circumstances in the rejection based upon
Hsueh. Second, the rejection is defective even if the examiner’s labeling of
components is accepted, for the reference does not establish that the corner posts 4,
which are the elements that have the C or G-shaped cross-section (translation, page 6;
Figures 3 and 4), when installed over the C-shaped stumps extending from the top and
bottom shelves (Figure 2), are spaced along their lateral sides from the sides of the
stumps, as is required by the claim. This being the case, the subject matter recited in
the claim does not read on the reference, and the rejection of claim 21 cannot be
sustained. It follows that the rejection of dependent claim 28 also is not sustainable.
New Rejection By The Board
Pursuant to our authority under 37 CFR § 1.196(b), we enter the following new
rejection:
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Application No. 09/103,347
Page 9
Claims 1, 2, 4, 5, 6, 10, 11, 13 and 18 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Anderson.
Using the language of claim 1 as a guide and with particular reference to Figure
2, Anderson discloses a rack for mounting equipment, composed of a seismically sound
skeleton structure (column 1, lines 44-59; column 2, lines 59-65) having spaced vertical
uprights (12) supplemented by distinct spaced equipment mounting structures
(comprised of vertical unistruts 19, horizontal unistruts 18 and mounting channels 20)
attached to the skeleton structure and extending along the vertical uprights (12) and
constituting side wall structures of a mounting rack interior space in lateral extension of
the vertical uprights (vertical unistruts 19 are attached to and extend laterally from
vertical uprights 12) and including means for mounting the equipment (mounting
channels 20 have holes by which equipment can be attached). Thus, all of the subject
matter recited in claim 1 reads on the Anderson structure, and therefore Anderson is
anticipatory thereof.
Claim 2 adds to claim 1 the requirement that the spaced equipment mounting
structures are attached to the spaced vertical uprights, which is the case in Anderson,
as is evident from Figure 2, where the spaced equipment mounting structures are
attached to vertical uprights 12 through vertical unistrut 19.
Appeal No. 2001-0045
Application No. 09/103,347
Page 10
As also is evident from Anderson’s Figure 2, the spaced equipment mounting
structures (19, 18 and 20) jointly constitute side wall structures of said mounting rack
interior space, as is recited in claim 4.
Claim 5 augments the structure of claim 1 by reciting that the skeleton structure
includes cross piece structures bracing the vertical uprights and the spaced equipment
mounting structure. The cross piece structures find correspondence in cross ties 14
(Figure 3).
As for claim 6, Anderson’s Figure 4 shows a base structure carrying the spaced
vertical uprights and the spaced equipment mounting structures.
Independent claim 10 is directed to a rack for mounting equipment, composed of
a seismically sound skeleton having spaced vertical uprights supplemented by distinct
spaced equipment mounting structures, as were discussed above with regarding the
new rejection of claim 1. Claim 10 further recites means for mounting the equipment
and having first elongate sections (Anderson’s vertical unistruts 19) extending along the
spaced vertical uprights, and elongate second sections (mounting channels 20)
extending along the first sections (the claim does not require that the mounting
channels be directly attached to the first elongate sections) and constituting side wall
structures of a mounting rack interior space in lateral extension of the vertical uprights,
as was explained above with regard to the new rejection of claim 1.
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Application No. 09/103,347
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As for claim 11, the elongate first sections (vertical unistruts 19) are attached to
the vertical uprights (12).
Claim 13 adds to claim 10 the same structure added to claim 1 by claim 4, and
the explanation provided above is applicable here.
The basic structure of independent claim 18 as it is disclosed by Anderson also
was discussed above with regard to claims 1 and 10. Claim 18 recites cabinet walls
attached to the skeleton structure, which are disclosed by Anderson in Figure 1. It also
is clear from Figure 1 that the equipment mounting structures are inside the cabinet
walls.
CONCLUSION
None of the examiner’s rejections are sustained.
Pursuant to 37 CFR § 1.196(b), claims 1, 2, 4, 5, 6, 10, 11, 13 and 18 are newly
rejected under 35 U.S.C. § 102(b) as being anticipated by Anderson.
Appeal No. 2001-0045
Application No. 09/103,347
Page 12
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b).
37 CFR § 1.196(b) provides that "[a] new ground of rejection shall not be considered
final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will
be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REVERSED 37 CFR § 1.196(b)
Appeal No. 2001-0045
Application No. 09/103,347
Page 13

NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA/LBG
Appeal No. 2001-0045
Application No. 09/103,347
Page 14
BENOIT LAW CORPORATION
2551 COLORADO BOULEVARD
LOS ANGELES, CA 90041
RETURN TO LESLEY
APPEAL NO. 2001-0045 - JUDGE ABRAMS
APPLICATION NO. 09/103,347
APJ ABRAMS
APJ FRANKFORT
APJ BAHR
DECISION: REVERSED; 196B
Prepared By: LESLEY BROOKS
DRAFT TYPED: 01 Aug 03
FINAL TYPED: