Ex Parte Caveney et al

Patent Trial and Appeal Board

Mar 24, 2013

12035490 (P.T.A.B. Mar. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JACK E. CAVENEY and JOHN J. BULANDA
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Appeal 2011-006078
Application 12/035,490
Technology Center 3600
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Before GAY ANN SPAHN, BARRY L. GROSSMAN, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jack E. Caveney and John J. Bulanda (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-25.
App. Br. 11. Appellants’ representative presented argument at oral hearing
on March 12, 2013. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE INVENTION
Appellants’ claimed invention relates to “the identification labeling of
communication and network ports and, more particularly, to a versatile
labeling system that accommodates revisions of labeling and can be used to
identify multiple adjacent ports.” Spec. 1, para. [0002]. Claims 1, 9, and 16
are the independent claims on appeal. Claim 1 is illustrative of the appealed
subject matter and is reproduced below with emphasis added.
1. A faceplate comprising:
a front surface; and
a label receiving member, wherein the label receiving
member having a back wall recessed a predetermined depth
relative to the front surface, the back wall being defined by a
first pair of parallel spaced apart edges, a second pair of parallel
spaced apart edges extending between the first pair of parallel
spaced apart edges, and chamfered corners connecting ends of
the first pair of parallel spaced apart edges with ends of the
second pair of parallel spaced apart edges; and side walls
extending between the back wall and the front surface along the
first and second pairs of parallel spaced apart edges.

THE EVIDENCE
The Examiner relies on the following evidence:
Martin US 5,265,363 Nov. 30, 1993

THE REJECTION
Appellants seek review of the following rejection:
Claims 1-25 are rejected under 35 U.S.C. § 102(b) as anticipated by
Martin. Ans. 3.

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ANALYSIS
Independent claim 1 and dependent claims 2-4 and 8
Appellants argue claims 1-4 and 8 as a group, we select independent
claim 1 as the representative claims, and dependent claims 2-4 and 8 stand
or fall with independent claim 1. See App. Br. 12; see also 37 C.F.R. §
41.37(c)(1)(vii) (2011).
The preamble of independent claim 1 recites “[a] faceplate.”
Referring to Figures 13 and 14, the Examiner finds that Martin discloses a
faceplate. Ans. 3.
According to Appellants, the term “faceplate” is recited in each of the
pending claims, is the starting point for defining what the Appellants
intended to encompass by the claims in the present application, and is a
structural limitation that limits the scope of the claimed invention. App. Br.
12-13 and 16. Appellants argue that Martin does not disclose a faceplate,
alleging that “faceplate” should be defined as a protective plate surrounding
an electric outlet, communication port, or light switch. App. Br. 12.
According to the Examiner, Appellants fail to explain the structure
required by the term “faceplate,” and therefore the term “faceplate” in the
preamble appears to be a statement of intended use. Ans. 5.
“Whether to treat a preamble as a limitation is a determination
‘resolved only on review of the entire[ ] ... patent to gain an understanding of
what the inventors actually invented and intended to encompass by the
claim.’” Catalina Mktg. Int’l. v. Coolsavings.com, Inc., 289 F.3d 801, 808
(Fed. Cir. 2002) (quoting Corning Glass Works v. Sumitomo Electric U.S.A.,
Inc., 868 F.2d 1251, 1257 (Fed.Cir.1989)). In general, a preamble limits the
claimed invention “if it recites essential structure or steps, or if it is
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‘necessary to give life, meaning, and vitality’ to the claim.” Id. (quoting
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999)). The preamble limits claim scope when it is essential to understand
limitations or terms in the claim body. Id. Conversely, a preamble is not
limiting where a structurally complete invention is defined in the claim body
and the preamble only states a purpose or intended use for the invention. Id.
Upon review of the entire patent, the preamble is not limiting because
a structurally complete invention is defined in the body of the claim.
However, even if the term “faceplate” is considered to be a structural
limitation, the term would be given its broadest reasonable interpretation
consistent with the specification, and the broadest reasonable interpretation
of the term “faceplate” that is consistent with Appellants’ Specification is
broader than the “protective plate surrounding an electric outlet,
communication port or light switch” definition proffered by Appellants. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). If
such were not the case, Appellants would not have found it necessary to
explain, in paragraph [0004] on page 1 of the Specification, that the prior art
taught a faceplate “of a patch panel or other hardware that provides a port
for interconnection” and “of a panel that includes the port.” While we agree
with Appellants that a faceplate is a protective plate, we do not agree that the
term “faceplate,” as recited in the preamble of each pending claim, is limited
to surrounding an electrical outlet, communication port, or light switch. An
ordinary and customary meaning of “faceplate” is “a protective plate for a
machine or device.” MERRIAM-WEBSTER’S COLLEGIATE® DICTIONARY,
10th Edition, 1997. As Martin discloses a protective plate for a machine or
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device, the device being the mechanical signboard 12 and plurality of bar
members 14, 16, 18, 20, 22, and 24, Martin discloses the claimed faceplate.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2-4 and 8 which stand or fall therewith, under 35 U.S.C.
§ 102(b) as anticipated by Martin.
Independent claim 16 and dependent claim 21
Appellants argue claims 16 and 21 as a group, we select independent
claim 16 as the representative claim, and dependent claim 21 stands or falls
with independent claim 16. App. Br. 15-16.
The Examiner makes the same findings as discussed supra with
respect to independent claim 1 and Appellants present the same arguments
as discussed supra with respect to independent claim 1.
Because Martin discloses a faceplate for the same reasons as
discussed supra, we sustain the Examiner’s rejection of independent claim
16, and claim 21 which stands or falls therewith, under 35 U.S.C. § 102(b)
as anticipated by Martin.
Dependent claims 5 and 6
Appellants argue claims 5 and 6 as a group, we select claim 5 as the
representative claim, and claim 6 stands or falls with claim 5. App. Br. 13.
Claim 5 depends from claim 1 and recites that “the chamfered corners
and the first and second pairs of parallel spaced edges are configured to
accept a first label having a first size, and a second label having a second
size different from the first size.”
Referring to Figures 13 and 14, the Examiner finds that Martin
discloses a faceplate with a label-receiving member having a front surface
122, a back wall 130 recessed a predetermined depth relative to the front
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surface 122, the back wall being defined by a first pair of parallel spaced
apart edges, a second pair of parallel spaced apart edges extending between
the first pair of parallel spaced apart edges, and chamfered corners
connecting ends of the first pair of parallel spaced apart edges with ends of
the second pair of parallel spaced apart edges. Ans. 3-4. The Examiner also
finds that Martin discloses side walls extending between the back wall and
the front surface along the first and second pairs of parallel spaced apart
edges. Ans. 4. The Examiner also finds that Martin discloses a faceplate
that “could hypothetically receive a first label two-thirds the width of the
available space, and a second label one-third the width of the available
space.” Ans. 4.
Appellants argue that Martin does not teach or disclose the signboard
receiving first and second labels having different sizes, and as such, Martin’s
hypothetical teaching does not anticipate the invention set forth in dependent
claim 5. App. Br. 13.
The recitation in claim 5 of “configured to accept a first label having a
first size, and a second label having a second size different than the first
size” is a functional recitation. Functional recitations limit the structure
defined by an apparatus claim. That is, the structure must be capable of
performing the recited function in order to satisfy the functional limitation.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). We understand
the Examiner’s statement that Martin’s device “could hypothetically
receive” the claimed labels as a finding that Martin’s device is capable of
receiving the claimed labels, and we therefore sustain the Examiner’s
rejection of claim 5, and claim 6 which stands or falls therewith, under 35
U.S.C. § 102(b) as anticipated by Martin.
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Dependent claims 17-20 and 22-24
Appellants argue claims 17-20 and 22-24 as a group (App. Br. 16), we
select claim 17 as the representative claim, and claims 18-20 and 22-24
stand or fall with claim 17.
Claim 17 depends from claim 16 and recites that “the recess is
configured to receive a first type of indicia having a first size, and a second
type of indicia having a second size different than the first size.”
The Examiner makes similar findings to those discussed supra with
respect to claim 5 and Appellants present similar arguments as those
discussed supra with respect to claim 5. See Ans. 4; App. Br. 6-7.
Accordingly, for the reasons similar to those discussed above with
respect to claim 5, we also sustain the rejection of claim 17, and claims 18-
20 and 22-24 which stand or fall therewith, under 35 U.S.C. § 102(b) as
anticipated by Martin.
Independent claim 9
Appellants argue claims 9-13 and 15 as a group, we select
independent claim 9 as the representative claim, and claims 10-13 and 15
stand or fall with claim 9. App. Br. 14.
Claim 9 is directed to a faceplate including, inter alia, a back wall
“configured to receive a first label having a first size and a second label
having a second size different than the first size.”
Appellants argue that Martin does not disclose a faceplate and that
Martin does not disclose its signboard receiving labels having different sizes.
App. Br. 14-15.
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For the reasons set forth above with respect to claims 1 and 5,
respectively, we sustain the Examiner’s rejection of independent claim 9,
and claims 10-13 and 15 which stand or fall therewith, under 35 U.S.C.
§ 102(b) as anticipated by Martin.
Dependent claim 7
Claim 7 depends from claim 1 and recites that the faceplate further
includes “retention ledges for holding a label cover between the side walls.”
The Examiner finds that Martin teaches retention ledges at column 5,
line 65, through column 6, line 1, which states: “If desired, similar channels
can be provided along the facing (lower) surface of the upper border 32 and
the facing (upper) surface of the lower border 34 . . . .” Ans. 4.
Appellants argue that Martin does not disclose retention ledges for
holding a label cover between the side walls. App. Br. 13-14. Appellants
acknowledge that Martin discloses a channel 72 running along the side of
the divider bar 14, 16, 18 or 20 to removably receive an end of the insert 58,
but argue that the transverse dimension of Martin’s channel 72 normal to the
planar surface of the display area 40 renders the channel 72 incapable of
retaining a material with a substantial thickness, such as a label and a label
cover. App. Br. 14 (citing Martin, col. 5, ll. 56-59).
We are not persuaded by Appellants’ arguments regarding the width
of Martin’s channel and whether it could retain an arbitrary “substantial
thickness, such as a label and a label cover.” Claim 7 does not recite any
structural limitations related to width, depth or other dimensions of the
channel related to its capacity for retaining a material with a substantial
thickness. Appellants’ arguments regarding the spacing between the
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channels do not persuade us that Martin’s channel does not constitute the
claimed retention ledges.
Accordingly, we sustain the Examiner’s rejection of claim 7 under 35
U.S.C. § 102(b) as anticipated by Martin.
Dependent claim 14
Claim 14 depends from claim 9 and recites that the faceplate further
includes “retention ledges for holding a label cover between the plurality of
interconnected side walls, the label cover having a complementary shape to
the polylinear outline of the back wall.”
Appellants present similar arguments as those discussed supra with
respect to claim 7. App. Br. 15
Accordingly, for reasons similar to those discussed above with respect
to claim 7, we also sustain the rejection of claim 14 under 35 U.S.C.
§ 102(b) as anticipated by Martin.
Dependent claim 25
Claim 25 depends from claim 16 and recites that “the recess further
comprises retention ledges for holding a label cover between the plurality of
interconnected side walls, the label cover having a complementary shape to
the polylinear outline of the back wall.”
Appellants present similar arguments as those discussed supra with
respect to claim 7. App. Br. 17.
Accordingly, for reasons similar to those discussed above with respect
to claim 7, we also sustain the rejection of claim 14 under 35 U.S.C.
§ 102(b) as anticipated by Martin.

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DECISION
We affirm the rejection of claims 1-25 under 35 U.S.C. § 102(b) as
anticipated by Martin.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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