Ex Parte Drew

Patent Trial and Appeal Board

Jan 16, 2013

10963871 (P.T.A.B. Jan. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL L. DREW
____________________

Appeal 2010-011920
Application 10/963,871
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011920
Application 10/963,871

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 10, 11, and 30-39. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1 and 34 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A mounting mechanism adapted to be placed between a
flat panel display and a VESA-compliant mounting plate of a
display stand, the mounting mechanism comprising:
a body having opposed first and second sides, the first
side including a recess that is sized and configured to receive
the VESA-compliant mounting plate of the display stand;
a plurality of VESA-compliant mounting holes formed
within the recess and extending through the body from the first
side to the second side, the mounting holes being sized and
configured to permit passage of fasteners for threading into
associated VESA-compliant mounting holes of the flat panel
display to securely attach the mounting mechanism to the flat
panel display;
a retractable mounting tab that is extendable into the
recess, the retractable mounting tab being sized and configured
to grip a first edge of the mounting plate when the mounting
mechanism is used to secure the flat panel display to the display
stand; and
a second mounting tab positioned opposite to the
retractable mounting tab and adapted to grip a second edge of
the mounting plate;
wherein the mounting mechanism is adapted to grip the
mounting plate between the two mounting tabs.

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REJECTIONS
1. Claims 1, 10, 11, and 30-33 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
2. Claims 1, 10, 11, and 30-33 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mooney (US 3,429,543; iss. Feb. 25,
1969);
3. Claims 34-39 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen (US 5,704,581; iss. Jan. 6, 1998) and Mooney.

OPINION
Indefiniteness – Claims 1, 10, 11, and 30-33
Claims 1, 10, 11, and 30-33 include features recited as being “VESA-
compliant.” The Examiner considers the claims to be indefinite because
“the [VESA] standard could change and therefore leaves the claims
indefinite and unclear.” Ans. 4. Appellant contends that “the VESA
standard and its history are readily available, and would be clearly
understood by the skilled artisan.” App. Br. 8.
Compliance with the provisions of 35 U.S.C. § 112 is determined as
of the filing date of the application. W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983). There does not appear to be any
dispute regarding the clarity of the VESA standard existing at the time of
Appellant’s filing date. Thus, one skilled in the art would be able to
determine the metes and bounds of VESA compliance as recited in the
claims based on the standard in effect at the time of Appellant’s filing date.
Accordingly, we cannot sustain the rejection of claims 1, 10, 11, and 30-33
under 35 U.S.C. § 112, second paragraph, as being indefinite.
Appeal 2010-011920
Application 10/963,871

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Obviousness – Claims 1, 10, 11, and 30-33 – Mooney
The Examiner finds that Mooney discloses each of the features recited
in claim 1 “except for the holes being VESA-compliant holes.” Ans. 5. The
Examiner cites “[t]he applicant’s own specification [as] teach[ing] that the
VESA-compliant mounting holes are admitted prior art” and reasons that “it
would have been obvious . . . to have modified Mooney to have the
mounting holes as VESA-compliant holes . . . since [] Mooney meets all of
the structural limitations of the applicant’s invention and the spacing as
required by the applicant is conventional and well known.” Ans. 5-6.
Appellant contends that Mooney does not teach a flat panel display, a
display stand for the flat panel display, or a mounting mechanism that is
used to secure the flat panel display to the display stand. App. Br. 12-13.
Appellant further contends that “while Mooney discloses mounting holes 34
adapted to receive fasteners, the fasteners secure the mount to a support, not
the instrument to be supported, as claimed.” App. Br. 13. The Examiner
explains that the flat panel display, the display stand, and the VESA-
compliant mounting plate are not positively recited and are only used to
define the function of the mounting mechanism. Ans. 14. The Examiner
further explains that Mooney only needs to be capable of performing the
recited function (i.e., supporting a VESA-compliant mounting plate or a flat
panel display). Id. We agree.
The mounting mechanism in Mooney is capable of being mounted to
a flat panel display (e.g., by replacing the surface (15) with a flat panel
display). Appellant argues that “[c]ontrary to the Examiner’s contention, the
Mooney camera mounting assembly could not function as the recited
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mounting mechanism.” Reply Br. 4. However, Appellant has failed to
persuasively explain why the mounting mechanism of Mooney is not capable
of being mounted to a flat panel display. Therefore, we are not convinced of
Examiner error.
Appellant contends that Mooney also does not disclose VESA
compliance of any components. App. Br. 13. Appellant argues that the
mounting mechanism disclosed in Mooney does not have a body configured
to receive a VESA-compliant mounting plate and that the mounting holes in
Mooney are not VESA-compliant. App. Br. 13-14. However, these
arguments do not apprise us of Examiner error because the Examiner does
not rely on Mooney as disclosing any type of VESA compliance.
Appellant further contends that “[t]he Examiner gave no explanation
as to how the mounting assembly for the Mooney camera 13 could be
modified to be VESA®-compliant” and argues that “the complex mounting
assembly for the camera in Mooney could not feasibly be modified to be
VESA®-compliant.” Reply Br. 3. The VESA compliance required by
Appellant’s claim 1 is simply a recess in the mounting mechanism that is
capable of receiving a “VESA-compliant mounting plate” and “VESA-
compliant mounting holes formed within the recess.”
The Examiner explains that because “the spacing as required by the
applicant is conventional and well known,” Mooney could be modified to
comply with VESA standards. Ans. 5-6. Based on the VESA standards, the
size of the recess and the spacing between the holes in the recess would be
modified in Mooney (i.e., the size of the body (14) and the recess (26) would
be modified to provide spacing between the retractable mounting tab (42)
and the second mounting tab (45) in compliance with VESA standards and
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the spacing between the mounting holes (34a-d) would be modified in
compliance with VESA standards). The Examiner has explained how the
mounting assembly for Mooney could be modified for VESA compliance.
However, Appellant has not explained why Mooney could not feasibly be
modified to be VESA-compliant. For these reasons, we are not apprised of
Examiner error.
Appellant alleges that “there would be no need to provide Mooney’s
mount with a recess sized and configured to receive a VESA-compliant
mounting plate” and, therefore, “[i]mproper hindsight to Appellant’s own
disclosure is the only possible source of such a teaching.” App. Br. 14.
Similarly, Appellant also alleges that “[i]mpermissible hindsight is the only
reason a person having ordinary skill in the art would think of providing
VESA-compliant holes in Mooney’s mount.” App. Br. 16.
The Examiner relies on the VESA standard being conventional and
well known when modifying Mooney. Changing the size of the recess and
the spacing between holes is simply rearranging elements without changing
their function. “[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). This does not amount
to impermissible hindsight.
Appellant contends that Mooney also fails to disclose a retractable
mounting tab that is extendable into the recess of the mounting mechanism
body. App. Br. 14. Appellant argues that in Mooney, “block 42
cannot be extended from outside of the relieved portion 26 in[to] the
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relieved portion 26.” App. Br. 14; Reply Br. 4. However, claim 1 simply
requires that the “retractable tab is extendable into the recess” and does not
require the retractable tab to be extended “from outside” the recess (relieved
area (26)). As noted by Appellant, “block 42 resides in the relieved area 26,
whether in an engaged or disengaged position.” App. Br. 14. Therefore, the
block (42) is “extendable into the recess” (e.g., extendable further into the
recess when in the engaged position relative to the disengaged position).
Appellant further contends that “the surface 45 (or the U-shaped
flange/border 28) cannot be reasonably characterized as a mounting tab.”
Reply Br. 4. Because Appellant has failed to provide any explanation as to
why surface (45) cannot reasonably be characterized as a mounting tab, we
are not apprised of Examiner error.
For the reasons set forth above, we sustain the rejection of claim 1
under 35 U.S.C. § 103(a) as being unpatentable over Mooney. Claims 10,
11, and 31-33 depend from claim 1 and have not been argued separately.
Therefore, claims 10, 11, and 31-33 fall with claim 1 and we sustain the
rejection of these claims under 35 U.S.C. § 103(a) as being unpatentable
over Mooney.
Claim 30 depends from claim 1 and further recites “a lever that is
used to retract the retractable mounting tab from the recess.” In response to
the rejection of claim 30, Appellant again argues that “the Mooney block 42
permanently resides in the relieved portion 26 and is never retracted from
the relieved portion 26.” App. Br. 17. We do not find this argument
persuasive for the reasons set forth above. Accordingly, we sustain the
rejection of claim 30 under 35 U.S.C. § 103(a) as being unpatentable over
Mooney.
Appeal 2010-011920
Application 10/963,871

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Obviousness – Claims 34-39 – Chen/Mooney
The Examiner finds that Chen discloses a flat panel display and a
mounting mechanism and that Mooney discloses a mounting mechanism
having the features discussed above relative to claim 1. Ans. 6-7. The
Examiner reasons that
It would have been obvious to one having ordinary skill in the
art to have modified Chen to have substituted/used the
mounting mechanism and mounting plate as taught by Mooney
instead of the mounting mechanism and mounting plate of Chen
for the purpose of providing a better means of attachment which
is quick and easy to attach and detach the flat panel display to a
support without the possibility of accidental detachment.
Ans. 8. Appellant argues that Chen and Mooney each fail to disclose a
number of the features recited in claim 34 and that the combination of Chen
and Mooney is improper.
With regard to the missing features, Appellant contends that the back
wall (31) of Chen’s instrument panel (30) is part of the instrument panel (30)
and does not have holes requiring fasteners. App. Br. 18-19. Appellant
further contends that the hook (36) in Chen is not a retractable tab. App. Br.
19. Appellant argues that Mooney is inapplicable to the present claims,
noting that “Mooney[] does not even disclose a flat panel display” (App. Br.
18) and that “neither Chen nor Mooney disclose a mounting plate of a
display stand for a flat panel display, or a body to receive such a mounting
plate” (App. Br. 19). These arguments attack the references individually
rather than the combination proposed by the Examiner. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
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Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)).
The Examiner explains that “[t]he modified version [of Chen] results
in the back of the flat panel display . . . of Chen consisting [of] the mounting
means (26, 45, 34a-34d, 46, 12, 48 of Mooney) with the angle adjustment
device (of Chen) on the mounting plate (13 of Mooney).” Ans. 20. The
Examiner does not rely on Chen individually disclosing the elements of the
mounting mechanism. The Examiner reasons that
[B]ecause these two quick release attachment mounting
mechanisms were art-recognized equivalents at the time the
invention was made, one of ordinary skill in the art would have
found it obvious to change the mounting mechanism/plate of
Chen to the mounting mechanism/plate of Mooney without
destroying the invention and for the purpose of providing a
better means of attachment which is quick and easy to
attach and detach the flat panel display to a support
without the possibility of accidental detachment.
Id. Appellant attacks the Examiner’s rationale, arguing that based on the
Examiner’s combination, “there would be no ‘plurality of mounting holes
that align with the mounting holes of the flat panel display’ provided in the
‘body’ (i.e., base 14) of Mooney’s camera mounting assembly.” App. Br. 20.
However, the Examiner’s modification to Chen would include mounting
holes in Chen as part of the mounting mechanism from Mooney being
substituted into Chen.
Appellant argues that “it is not feasible to modify Chen in such a way”
and that “there is no reason or need to modify Chen as such . . . [because]
the Chen instrument panel 30 is already quick and easy to attach and detach
(without any undue possibility of accidental detachment).” Reply Br. 5.
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Appellant argues that the only reason for the Examiner’s proposed
modifications is impermissible hindsight. App. Br. 20.
However, the Examiner’s proposed modifications include a
substitution of one known mounting mechanism for another. “[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” KSR Int’l Co.,
550 U.S. at 416. Chen and Mooney each disclose a mounting mechanism
including a release mechanism providing quick and easy removal of a device
(an instrument panel in Chen and a camera in Mooney). Therefore, the
Examiner has a reasonable basis for finding that the mounting mechanism of
Mooney would have been a suitable substitute for the mounting mechanism
of Chen and has not based the proposed modifications on impermissible
hindsight. Appellant provides no persuasive reason why a person of
ordinary skill in the art could not have implemented such a substitution or
why the results of the substitution would have been unpredictable.
For the reasons set forth above, we sustain the rejection of claim 34
under 35 U.S.C. § 103(a) as being unpatentable over Chen and Mooney.
Claims 35 and 36 depend from claim 34 and have not been argued
separately. Therefore, claims 35 and 36 fall with claim 34 and we sustain
the rejection of these claims under 35 U.S.C. § 103(a) as being unpatentable
over Chen and Mooney.
Claims 37-39 depend from claim 34. Claim 37 recites “a lever that is
used to retract the retractable mounting tab from the recess.” Claim 38
recites that “the mounting holes of the flat panel display and the mounting
mechanism are VESA-compliant” and claim 39 recites that “the recess of the
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mounting mechanism is sized and configured to receive a VESA-compliant
mounting plate.” Appellant’s arguments regarding claim 37 are similar to
those discussed above regarding claim 30. Appellant’s arguments regarding
claims 38 and 39 are similar to those discussed above regarding the VESA-
compliant features of claim 1. We do not find Appellant’s arguments
persuasive for the reasons set forth above regarding claims 1 and 30.
Accordingly, we sustain the rejection of claims 37-39 under 35 U.S.C. §
103(a) as being unpatentable over Chen and Mooney.

DECISION
We REVERSE the Examiner’s decision to reject claims 1, 10, 11, and
30-33 under 35 U.S.C. § 112, second paragraph.
We AFFIRM the Examiner’s decision to reject claims 1, 10, 11, and
30-39 under 35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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