Ex Parte Boxenbaum et al

Patent Trial and Appeal Board

Sep 25, 2012

11562000 (P.T.A.B. Sep. 25, 2012)

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.
11/562,000 11/21/2006 Charles H. Boxenbaum 26913.000 8476
7590 09/26/2012
Charles Boxenbaum
BUZstudios Design from B to Z
45 Main Street, Suite 522
Brooklyn, NY 11201
EXAMINER
WILKENS, JANET MARIE
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
09/26/2012 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHARLES H. BOXENBAUM and
JULIAN L. BOXENBAUM
__________

Appeal 2010-007737
Application 11/562,000
Technology Center 3600
___________

Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 28-30, 33, 49, and 50. We have jurisdiction under 35 U.S.C.
§ 6(b). The real party in interest is BUZStudios LLC.
We REVERSE.
STATEMENT OF THE CASE

The Applied Prior Art
Konig 3,883,202 May 13, 1975
Riley 2,875,012 Feb.24, 1959

Appeal No. 2010-007737
Application 11/562,000

2

The Rejection on Appeal

Claims 28-30, 33, 49, and 50 were finally rejected under 35 U.S.C.
§ 103(a) as unpatentable over Konig and Riley.
The Invention
The invention is directed to office furniture, specifically a desk.
(Spec. ¶ [0003]). The objectives of the inventors include providing office
furniture that is more space efficient, is more flexible in functionality, or
allows a greater variety of configurations. (Spec. ¶¶ [0005]-[0007]). The
independent claims are 28 and 33. Claim 33 is reproduced below:
33. A desk system, comprising:

a primary work surface;

a plurality of legs supporting the primary work surface;

a storage system including:

an outer cabinet and an inner storage
structure, the inner storage structure having a
storage area adapted to contain items for storage
and an upper surface, the inner storage structure
being vertically moveable between a closed
position within the outer cabinet and an open
position disposed above the outer cabinet;

the inner storage structure, when moved to
its closed position, positioning its upper surface
substantially adjacent to a top surface of the
primary work surface so that a user of the desk
system is provided with a substantially continuous
work surface by the primary work surface together
with the upper surface of the inner storage
structure,

Appeal No. 2010-007737
Application 11/562,000

3

the inner storage structure being
substantially fully contained within the outer
cabinet when in the closed position, the storage
area being inaccessible by a user when in the
closed position;

the storage area being accessible by a user to
access items stored within the storage area when
the inner storage structure is in the open position;

and a frame supporting the primary work surface, the
outer cabinet of the storage system being fixed to the frame.

Claim 28 includes all of the elements of claim 33 as recited above,
except the last element, i.e., the frame, and the requirement that the outer
cabinet is fixed to the frame. Claim 28 also includes additional features.
Both claims 28 and 33 require an outer cabinet and an inner storage
structure in a desk system. Further according to both claims, the inner
storage structure is vertically moveable between an open position and a
closed position. In the open position, the structure is disposed above the
outer cabinet. In the closed position, the upper surface of the inner storage
structure is substantially adjacent a top surface of the “primary work
surface” of the desk system such that substantially continuous work surface
is provided. Also in the closed position, the inner storage structure is
substantially fully contained within the outer cabinet and the storage area is
inaccessible.
Appellants’ Figures 12a and 12b are reproduced below:

App
App

a

open
40 in
The
28-3

each

of un
The
than
eal No. 20
lication 11
Figures 1
storage ar
Figure 1
position a
the close
Obviousne
0, 33, 49,
Claims 2
depend on
The Exa
patentabil
Examiner
the vertica
10-007737
/562,000
2a and 12b
ea movea
2A illustra
nd Figure
d and inac
ss Rejectio
and 50 ove
8 and 33 a
claim 28
miner bear
ity. In re
relied on K
lly movea

illustrate
ble betwee
tes the des
12B illust
cessible po
DIS
n of Claim
r Konig a
re the onl
. Claims 4
s the initia
Oetiker, 9
onig for t
ble storag
4
the desk o
n an open

k with the
rates the d
sition. (S

CUSSION
s
nd Riley
y independ
9 and 50 e
l burden o
77 F.2d 14
hose elem
e structure
f Appellan
and a clos
storage sp
esk with s
pec. ¶ [00

ent claim
ach depen
f presenti
43, 1445 (
ents of cla
within an
ts having
ed positio
ace 40 in
torage spa
115]).
s. Claims
d on claim
ng a prima
Fed. Cir.
ims 28 and
outer cabi

n
the
ce
29 and 30
33.
facie case
1992).
33 other
net.

App
App

Kon
troug
3:20

on th
secti
comp
divid
priva
eal No. 20
lication 11
ig disclose
h which s
-28). Figu
Fi
Figu
Konig’s
ree differe
on having
artments
ed boxes
te articles
10-007737
/562,000
s a desk in
eparates th
res 1 and
gure 1 sho
re 3 show
desk inclu
nt height
an elonga
each with
of the priv
of the use

cluding a
e work se
3 of Konig
ws a persp
s a fragme
des a work
levels. (K
ted box 29
its own lid
ate section
r. (Konig
5
work secti
ction from
are reprod
ective vie
ntary view
section h
onig 2:64-
which is d
30, 31, an
is describ
3:24-26).
on, a priva
the privat
uced belo
w of Koni
along II-
aving surf
68). It als
ivided int
d 32. (Ko
ed as bein
te section
e section.
w:
g’s desk
II of Fig. 1
aces 22, 2
o includes
o three
nig 3:20-2
g used to s
, and a
(Konig

3, and 24
a private
6). The
tore the
App
App

secti
closu

mov

outer
mov
or ex
(Rile

ordin
Kon
surfa
prov
4:13
eal No. 20
lication 11
A trough
on from th
re 14 the
Konig d
eable into
To accou
cabinet, t
eable med
tended to
y 1:15-48
in
The Exa
ary skill,
ig’s desk t
ce would
ide a conc
-16). From
10-007737
/562,000
1 receive
e private s
edges of w
oes not dis
and out of
nt for the
he Examin
icine cabin
outside of
). Figure 3
Figure
its extend
miner reas
in light of
o add a mo
be at the lo
ealable an
that pers

s electrica
ection. (K
hich are fl
close an in
an outside
vertically
er relied o
et which c
the wall s
of Riley
3 shows R
ed positio
oned that
Riley’s co
veable inn
cation of
d accessib
pective, th
6
l supply lin
onig 3:26
anged twi
ternal stor
cabinet.
moveable
n Riley. R
an be retr
tructure to
is reprodu
iley’s med
n out of th

it would h
ncealable
er storage
lid 30 whe
le storage
e inner sto
es and se
-28). Trou
ce at 90º.
age area w
storage str
iley discl
acted to w
provide a
ced below
icine cabi
e wall stru
ave been o
medicine c
structure
n the struc
unit in Ko
rage open
parates the
gh 1 is co
(Konig 2:4
hich is ve
ucture wi
oses a ver
ithin a wal
ccess to its
:
net
cture 11
bvious to
abinet, to
such that i
ture is clo
nig’s desk
s and beco
work
vered by a
5-46).
rtically
thin an
tically
l structure
contents.
one with
modify
ts top
sed, to
. (Answer
mes

Appeal No. 2010-007737
Application 11/562,000

7

accessible when its entire structure is moved up, much like the medicine
cabinet moves up out of the internal space in Riley’s partition wall.
Appellants argue that Riley constitutes non-analogous art and thus is
not applicable in a proper rejection of the claims on appeal. We do not reach
the non-analogous art argument because even assuming that Riley is not
non-analogous art, as is explained below, the rejection of the claims cannot
be sustained.
The Examiner determined that all of areas 22, 23, 24, 31, and 32 in
Konig are primary working surfaces of the desk (Answer 3:9-15).
Appellants assert that reference numerals 31 and 32 identify lids to storage
areas and thus lids 31 and 32 cannot be reasonably regarded as primary
working surfaces on Konig’s desk. We agree with Appellants.
As noted above, Konig specifically divides its desk top into a work
section and a private section. (Konig 2:64-68). Lids 31 and 32 are not
intended as working surfaces. Rather, they provide access to respective
private storage compartments thereunder. (Konig 3:20-26). To the extent
that one may use the closed lids as a flat working surface on the desk, they
cannot reasonably be regarded as a “primary” working surface.
Although the term “primary working surface” is not explicitly defined
in Appellants’ specification, we interpret it in the context of Appellants’
specification as meaning that surface area designed and intended to be used
first and foremost as such. It does not include areas which are not described
as a work surface and which have a specially assigned function, such as
Konig’s lids 31 and 32.
Whether lids 31 and 32 can be regarded as primary working surface is
important because Appellants’ claims require that when the vertically
Appeal No. 2010-007737
Application 11/562,000

8

moveable storage structure is in the closed position within the external
cabinet its top surface and the primary working surface of the desk together
form a substantially continuous work surface. The Examiner takes the
position that if an inner storage cabinet is added to the storage compartment
under lid 30 and made vertically moveable into and out of that compartment,
as the Examiner believes would have been suggested by Riley, the upper
surface of the inner storage cabinet would form a substantially continuous
work surface with lids 31 and 32 which constitute a primary working surface
of the desk. But because lids 31 and 32 do not constitute a primary working
surface of Konig’s desk, that rationale is not supported by the facts and
therefore does not satisfy the claims.
Alternatively, the Examiner takes the view that the upper surface of
the inner storage structure in the closed position at the location of lid 30
would still form a substantially continuous work surface with primary work
surfaces 22, 23, and 24 despite the presence of intervening trough 1 and
closure structure 14 for the trough. (Answer 3:19 to 4:2). That position is
unreasonable. Trough structure 1 and its closure 14 substantially divide
primary work surfaces 22, 23, and 24 from the area of lid 30 where the top
surface of a vertically moveable inner storage area would be located
pursuant to the Examiner’s combination of the teachings of Konig and Riley.
Konig even describes that the edges of closure 14 “is flanged twice at 90°.”
(Konig 2:45-46). Because of the presence of trough 1 and its closure,
nothing in the front work section of Konig’s desk is substantially continuous
with anything in the rear private storage section of Konig’s desk.
The Examiner points out that the claims use the open-ended term
“comprising” and thus do not preclude the presence of trough 1 and its
Appeal No. 2010-007737
Application 11/562,000

9

closure 14. That position is misplaced because it does not address the
pertinent limitation, i.e., that the upper surface of the inner storage structure
in the close position and the primary work surface of the desk together form
a substantially continuous work surface. That limitation is not met by the
Examiner’s proposed combination of Konig and Riley.
Appellants also argue that the Examiner’s stated reasoning for
combining the teachings of Riley with that of Konig is irrational. We agree.
According to the Examiner, the motivation for combining the teachings in
such a manner so as to suggest adding an internal, vertically moveable,
cabinet to Konig is “to provide a readily accessible and concealable storage
unit in the desk system [of Konig].” (Answer 4:14-16). However, the
storage area under Konig’s lid 30 is already readily accessible insofar as
desk storage is concerned and also concealed without any modification.
With regard to Riley, we note that it does not suggest to one with
ordinary skill in the art making a medicine cabinet any more accessible than
it already is. Rather, Riley suggests that it is desirable to get the medicine
cabinet out of the way and concealed after it is accessed. That suggestion is
of little moment in the context of Konig, where the storage space is already
concealed while providing access.
We also do not think that the higher elevation of a medicine cabinet
relative to a desk storage area would reasonably have motivated one with
ordinary skill in the art to encapsulate the desk storage area beneath Konig’s
lid 30 into the structure of a moveable inner cabinet and to move it to a
higher elevation prior to access. There is a significant difference between a
conventional medicine cabinet and a desk’s inner storage space. The former
is relatively small and expected to be located at a relatively high elevation
Appeal No. 2010-007737
Application 11/562,000

10

when accessed. The latter is relatively large and not expected to be located
at a relatively high elevation. Teachings regarding the two are not readily
interchangeable. In our view, making the inner storage area under lid 30 of
Konig into a vertically moveable inner storage structure contained inside an
external cabinet is based solely on improper hindsight reconstruction in light
of Appellants’ own disclosure.
For all of the foregoing reasons, the obviousness rejection of claims
28-30, 33, 49, and 50 cannot be sustained.
CONCLUSION
The rejection of claims 28-30, 33, 49, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Konig and Riley is reversed.

REVERSED