Ex Parte PierretDownload PDFPatent Trial and Appeal BoardJan 10, 201411036494 (P.T.A.B. Jan. 10, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DENNIS M. PIERRET ____________ Appeal 2011-009035 Application 11/036,494 Technology Center 3600 ____________ Before: STEFAN STAICOVICI, WILLIAM A. CAPP and NEIL T. POWELL, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the rejection of claims 1-3, 22, 23, 29-31, 34-37, 39, 40, 46-48 and 51 under 35 U.S.C. § 102(b) as anticipated by Harvey (EP 0 592 248 A1, pub. April 13, 1994) and claims 24-28 and 41-45 as unpatentable under 35 U.S.C. § 103(a) over Harvey. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-009035 Application 11/036,494 - 2 - THE INVENTION Appellant’s invention relates to attachment devices for mounting crown molding. Spec. 1, para. [0001]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A device for attaching crown molding, the device comprising: a wall portion configured to be coupled with a wall, the wall portion comprising a wall-engaging section configured to be coupled with and receive support from the wall, a first coupling section extending in a transverse direction to the wall-engaging section, the first coupling section configured to receive support from the wall through the wall-engaging section, and a first coupling surface on the first coupling section; and a molding portion configured to be coupled with a rear surface of a crown molding, the molding portion comprising a molding-engaging section configured to be coupled with the rear surface of the crown molding, a second coupling section extending in a transverse direction from the molding-engaging section, and a second coupling surface on the second coupling section configured to engage the first coupling surface on the first coupling section; wherein the molding portion is configured to receive support from the wall portion when the first coupling surface is engaged with the second coupling surface, at least a portion of the first coupling surface is positioned entirely below the second coupling surface, and the molding portion is configured to transfer the support from the first coupling section to the crown molding through the second coupling section and the molding-engaging section, wherein the wall portion comprises a top section and a transition section to offset the first coupling section from the top section. Appeal 2011-009035 Application 11/036,494 - 3 - OPINION Claims 1-3 and 22-31 The Examiner finds that Harvey discloses all of the elements of claim 1. Ans. 4-5. In particular, the Examiner finds that Harvey discloses a molding portion that is configured to be coupled with (or alternatively is capable of being coupled with) a rear surface of a crown molding. Ans. 4. The Examiner further finds that the molding portion comprises a molding engaging section (outer surface) that is configured to be coupled with (or alternatively is capable of being coupled with) the rear surface of a crown molding. Id. Appellant traverses the Examiner’s rejection by arguing that Harvey’s front wall 265 is not configured to be coupled with the rear surface of a crown molding. App. Br. 16. Appellant argues that the claimed molding engaging section is positioned in an elevated position near the ceiling. Id. In response, the Examiner concedes that crown moldings are defined by where they are positioned, not by their shape. Ans. 10. The Examiner further concedes that crown moldings are placed at the junction between a wall and a ceiling. Id. We agree with Appellant that Harvey’s front wall 265 is not configured to be coupled with the rear surface of a crown molding. The sidewall embodiment of Harvey is depicted as an electrical power and data cable distribution pathway that is disposed proximate the floor of an office space. Harvey, figs. 1-12 and 16-21. Indeed, the Figure 16 embodiment is characterized by a foot member 250 that extends approximately 10 inches laterally from the frame unit. Harvey, col. 12, ll. 5-10; see also fig. 6. It is clear from the figures and description in the Specification that the foot Appeal 2011-009035 Application 11/036,494 - 4 - member 250 supports the system on a floor, not a ceiling. The sidewall embodiment, furthermore, is depicted with a plurality of electrical power outlets 130. See Harvey, figs. 6, 19. We do not agree that a surface populated with intermittently spaced electrical outlets is configured to be coupled with the rear surface of a crown molding. In addition, Appellant points out that the Examiner’s rejection is based on two different and discrete embodiments. See, e.g., App. Br. 17. In the Grounds of Rejection Section in the Answer, the Examiner relies upon embodiments depicted in Figure 19 and in Figures 26-28. Ans. 4. Figure 19 discloses a sidewall embodiment. Figures 26-28 disclose a free-standing embodiment. See also fig. 3. The sidewall and free-standing embodiments differ, among other things, in that the free-standing embodiment is designed to accommodate a privacy screen 40 that extends vertically above the cable housing unit 34. Harvey, col. 7, ll. 23-35. The privacy screen is provided “[b]ecause the horizontal cable housing units 34 are low in height.” Harvey, col. 7, ll. 23-24. In reading the Examiner’s rejection, it is unclear whether the Examiner intends to reject claim 1 as anticipated by both the sidewall mounted embodiment and the free-standing embodiment or by a combination of elements selected from the two embodiments.1 If the latter is intended, such constitutes reversible error, because, in an anticipation rejection, “it is not enough that the prior art reference … includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 1 For example, the Examiner cites to both the Figure 19 embodiment and the Figure 26-28 embodiment for less than all of the elements of claim 1. In particular, there is no explicit recitation to the Figure 19 embodiment for the limitation in claim 1 directed to a transition section to offset the first coupling section from the top section. See Ans. 4-5. Appeal 2011-009035 Application 11/036,494 - 5 - F.3d 1359, 1371 (Fed. Cir. 2008). Instead, the reference must “clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection … it has no place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587-88. To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation. Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed.Cir. 1998). Furthermore, disclosure of each element is not quite enough as anticipation also requires the presence in a single prior art disclosure of all the elements “arranged as in the claim.” Finisar Corp. v. Direct Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). In the instant case, the fact that the free-standing embodiment incorporates a vertically extending privacy screen effectively negates consideration of such embodiment as a mount for crown molding near a ceiling or, in other words, the elements of Harvey are not arranged as in the claim. Moreover, because the rejection is not clear whether the Examiner intends to reject claim 1 as anticipated by both the sidewall embodiment and, separately and independently, also by the free-standing embodiment, we think the rejection fails to satisfy the Appellant’s due process rights to receive a clearly articulated, informative rejection. See 35 U.S.C. § 132. We do not think that the Appellant had proper notice regarding whether to respond to separate and distinct anticipation rejections over both the sidewall embodiment and the free-standing embodiment, respectively. Appeal 2011-009035 Application 11/036,494 - 6 - Thus, we do not sustain the Examiner’s anticipation rejection of claim 1; neither do we sustain the anticipation rejection of claims 2, 3, 22, 23, and 29-31 that depend therefrom. Moreover, because the Examiner’s proposed modification of Harvey does not remedy the deficiencies described supra, we likewise do not sustain the rejection of claims 24-28 as unpatentable overt Harvey. Claims 34-37 and 39-48 Claim 34, as with claim 1, contains limitations directed to a molding portion configured to be coupled with a rear surface of a crown molding. Clms. App’x. Similarly, the Examiner’s rejection cites to both the sidewall embodiment and the free-standing embodiment of Harvey. Ans. 5-6. Also, as with claim 1, the Examiner cites only to the free-standing embodiment figures as satisfying the limitations directed to a transition section offsetting the first coupling section from the top section. Ans. 6. Thus, the rejection of claim 34 suffers from the same infirmities that we have identified above with respect to claim 1. For the same reasons discussed above with respect to claim 1, we do not sustain the anticipation rejection of claim 34 as well as claims 35-37, 39, 40, and 46-48 that depend therefrom. Moreover, because the Examiner’s proposed modification of Harvey does not remedy the deficiencies described supra, we likewise do not sustain the rejection of claims 41-45 as unpatentable overt Harvey. Claim 51 Claim 51, as with claims 1 and 34, contains limitations directed to a molding portion configured to be coupled with a rear surface of a crown molding. Clms. App’x. Similarly, the Examiner’s rejection cites to both the Appeal 2011-009035 Application 11/036,494 - 7 - sidewall embodiment and the free-standing embodiment of Harvey. Ans. 6-7. Thus, the rejection of claim 51 suffers from at least some of the same infirmities that we have identified above with respect to claims 1 and 34. For the same reasons discussed above with respect to claims 1 and 34, we do not sustain the rejection of claim 51. DECISION The decision of the Examiner to reject claims 1-3, 22-31, 34-37, 39-48 and 51 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation