Ex Parte Pierret

Patent Trial and Appeal Board

Jan 10, 2014

11036494 (P.T.A.B. Jan. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DENNIS M. PIERRET
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Appeal 2011-009035
Application 11/036,494
Technology Center 3600
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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
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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.
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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
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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.
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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.
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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
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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

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