Michael Paterson et al.

Patent Trials and Appeals Board

Jul 31, 2019

14845235 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/845,235 09/03/2015 Michael Paterson BPMDL0111MP (11343U) 2278
27939 7590 07/31/2019
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
ROS, NICHOLAS A
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
07/31/2019 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 MICHAEL PATERSON, MATT COSTELLO,
KRISTIAN TRENDAFILOV, and LUKE WESTRA1
____________________

Appeal 2019-000647
Application 14/845,235
Technology Center 3700
____________________

Before KEVIN F. TURNER, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
non-final Office Action (“Non-Final Act.”) rejecting claims 1–20 in the
present application. We have jurisdiction under 35 U.S.C. §§ 6(b) and
134(a).
We REVERSE.

1 The Appellant is the Applicant, Medline Industries, Inc., which is identified
as the real party in interest. Appeal Brief (“App. Br.”) 2.
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The claimed invention is directed to a bench. Abstract.
Representative independent claim 1 reads as follows:
1. A bench, comprising:
an upper member comprising:
a substantially planar portion;
a first side end portion; and
a second side end portion;
the substantially planar portion defining a
seat;
the first side end portion extending
substantially orthogonally from the seat along a first
side of the seat; and
the second side end portion extending
substantially orthogonally from the seat along a
second side of the seat;
the second side of the seat located distally
opposite the seat from the first side end portion;
the seat defining a seat width and a seat
length;
the first side end portion and the second side
end portion defining a side end portion length and a
side end portion width; and
the seat length coextensive with the side end
portion length;
a first leg member, selectively attachable with at least a
first boss extending from the first leg member to an end of the
first side end portion, and defining a first leg member length that
is coextensive with the side end portion length; and
a second leg member, selectively attachable with at least a
second boss extending from the second leg member to an end of
the second side end portion, and defining a second leg member
length that is coextensive with the side end portion length;
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one or both of the first leg member or the second leg
member comprising and [sic, an] adjustment mechanism to
selectively alter a height of the one or both of the first leg member
or the second leg member.
App. Br. 29–30, Claims App.

REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103 as
follows:
1. Claims 1, 2, 3, and 7 as obvious over Darst (US 2004/0051365
A1, pub. Mar. 18, 2004) in view of Rossman (US 6,000,750, iss. Dec. 14,
1999). Non-Final Act. 3.
2. Claims 4–6 as obvious over Darst, Rossman, and Hargroder
(US 6,039,403, iss. Mar. 21, 2000). Non-Final Act. 6.
3. Claims 8 and 9 as obvious over Darst, Rossman, and Piretti (US
3,944,281, iss. Mar. 16, 1976). Non-Final Act. 7.
4. Claim 10 as obvious over Darst, Rossman, Piretti, and Mace
(US 4,472,844, iss. Sep. 25, 1984). Non-Final Act. 8.
5. Claims 11 and 12 as obvious over Darst, Rossman, and
Kindrick (US 6,065,251, iss. May 23, 2000). Non-Final Act. 9.
6. Claims 13–17 as obvious over Darst, Rossman, and Oldham
(US 7,020,911 B2, iss. Apr. 4, 2006). Non-Final Act. 9.
7. Claim 18 as obvious over Darst, Rossman, Oldham, and Bly
(US 6,105,183, iss. Aug. 22, 2000). Non-Final Act. 11.
8. Claim 19 as obvious over Darst, Rossman, Piretti, and Mace.
Non-Final Act. 11.
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9. Claim 20 as obvious over Darst, Rossman, Piretti, Mace, and
Oldham. Non-Final Act. 14.
10. Claim 1 as obvious over Darst in view of Callaway (US
6,827,028 B1, iss. Dec. 7, 2004). Non-Final Act. 15.
11. Claims 2, 3 and 7 as obvious over Darst, Callaway, and
Rossman. Non-Final Act. 16.
12. Claims 4–6 as obvious over Darst, Callaway, Rossman, and
Hargroder. Non-Final Act. 18.
13. Claims 8 and 9 as obvious over Darst, Callaway, Rossman, and
Piretti. Non-Final Act. 19.
14. Claim 10 as obvious over Darst, Callaway, Rossman, Piretti,
and Mace. Non-Final Act. 20.
15. Claims 11 and 12 as obvious over Darst, Callaway, and
Kindrick. Non-Final Act. 21.
16. Claims 13–17 as obvious over Darst, Callaway, and Oldham.
Non-Final Act. 21.
17. Claim 18 as obvious over Darst, Callaway, Oldham, and Bly.
Non-Final Act. 23.
18. Claim 19 as obvious over Darst, Callaway, Piretti, and Mace.
Non-Final Act. 23.
19. Claim 20 as obvious over Darst, Callaway, Piretti, Mace, and
Oldham. Non-Final Act. 26.
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ANALYSIS
Rejections 1–7
The Examiner rejects claims 1, 2, 3, and 7 as obvious over Darst in
view of Rossman. Non-Final Act. 3. Regarding independent claim 1, the
Examiner finds that Darst discloses a bench substantially as claimed,
including first and second side end portions 30, and first and second leg
members 41 having a length that is coextensive with the side end portion
length. Non-Final Act. 3, citing Darst, Figs. 1, 2. The Examiner finds that
Darst differs from the claim in that it includes “four side end portions and
legs formed at the edges of the corners of the seat instead of only two
legs/side end portions which are coextensive with the seat portion length.”
Non-Final Act. 4. The Examiner relies on Rossman for disclosing an
apparatus with a planar support surface wherein “[t]he first and second side
portions are formed as single members extending coextensively with the
length of the first and second sides of the support surface. The legs further
include an adjustment mechanism [] (Figure 3).” Non-Final Act. 4. Based
on these findings, the Examiner concludes that it would have been obvious
to one of ordinary skill in the art to have
extend[ed] and join[ed] the first and second, and third and
fourth, side portion and support legs [of Darst] in a coextensive
manner with the first and second side of the seat, as taught by
Rossman, rather than four individual and narrower side portions
and legs so as to provide a wider support base which would
help prevent the seat from tipping over or sliding during use.
Non-Final Act. 4.
The Appellant argues that “Darst fails to teach any side end portions,”
and that “its legs do not attach to any ends of anything resembling a side end
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portion.” App. Br. 16. The Appellant points out that the Darst discloses
inserting the legs 41 into leg attachment fittings 30, which are disclosed as
tubes “molded into each corner of the platform 21.” Id., citing Darst ¶ 23.
According to the Appellant, “[t]his is why, as shown in FIG. 1, there is a
huge gap between the two leg attachment fittings. The gap exists because
there is no side end portion.” App. Br. 16–17.
However, we agree with the Examiner’s finding that the leg
attachment fittings 30 of Darst, “which is a downwardly projecting extension
of the seat body for coupling with the support legs,” satisfies the claim
language requiring side end portions that “extend[] substantially
orthogonally from the seat.” Ans. 26. As shown in Figures 1 and 2, the leg
attachment fittings 30 of Darst extend from the seat in the manner recited by
claim 1. In that regard, as the Examiner points out, the “Applicant’s own
legs ‘attach to an end of’ the side portions through a boss (tube structure
extending from the leg) which inserts into a correspondingly shaped hole in
the bottom of Applicant’s side end portions.” Ans. 26–27.
The Appellant also argues, inter alia, that “Darst fails to teach any
side member — or reasonable facsimile thereof — that is coextensive with a
leg dimension.” App. Br. 16. The Examiner disagrees, explaining that
“Darst does disclose the leg and the side end portion being coextensive/equal
in length at their contact point.” Ans. 27–28. We agree with the Appellant.
In support of the rejection, the Examiner states that “coextensive is
defined as ‘extending over the same area, extent or time’” and because “the
leg attachments/side end portions of Darst extend within the same space as
the seat length they can be interpreted as being coextensive.” Ans. 28
(emphasis added), quoting Oxford Dictionaries. In our view, the Examiner
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applies the dictionary definition too broadly to the claim language. Claim 1
does not merely state that the seat, the end portion, and the leg, are
coextensive with each other such that they extend within the same space.
Rather, the claim recites that the “seat length,” “end portion length,” and
“leg member length” are coextensive with each other. Because the claims
specifically refer to the length of these components, and the “specification
makes it clear that [] coextensive lengths have the same dimension,” we
agree with the Appellant that this requires that these lengths be the same.
Reply Br. 10, citing Spec. ¶¶ 63–64. In that regard, we observe that another
more specific definition of “coextensive” is “having the same spatial or
temporal scope or boundaries.” https://www.merriam-
webster.com/dictionary/coextensive (last visited July 26, 2019). It is clear
from Figure 1 of Darst, that its leg 41 has a slightly smaller diameter than
the diameter of the tubing of the leg attachment fitting 30, and thus, the
Examiner’s finding to the contrary is not supported by Darst.
To any extent that the Examiner’s subsequent explanation in the
Answer referring to the “contact point” is in reference to the proximal end of
the leg that is received within the leg attachment fitting, we disagree that a
person of ordinary skill in the art would have understood the recitations
“seat length,” “end portion length,” and “leg member length” to encompass
internal mating structures in view of the Specification. Spec. ¶¶ 62–64; Fig.
1. Such interpretation would also require inconsistent determination of the
“length” of components in that the external length of the proximal end of the
leg is measured while the internal length of the leg attachment fitting is
measured.
The Examiner also explains that “Rossman teaches the use of a
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singular side end portion at each opposing end of a seat which is coextensive
and equal in length to the seat length.” Ans. 30. However, Rossman still
lacks legs having coextensive length as the seat and the side end portions.
Rossman, Fig. 2. As the Appellant argues, Rossman
teaches a leg member that is narrower than the side portion.
. . . As is clearly shown in FIG. 2 of the reference, element 14 is
narrower than element 26. This has to be true because element
14 inserts into element 26. “Supports 14 extend into raised
support receivers 26 integrally molded with upper base surface
24.” Rossman, col. 2, lines 42-43. See also FIG. 3, where
element 14 inserts into wider element 26.
App. Br. 18.
Thus, we agree with the Appellant that as both Darst and Rossman
disclose leg members that are narrower than the seat and the side end
portions, the rejection is not sustainable. App. Br. 19. Accordingly, we
reverse the rejection of claim 1. The Appellant’s remaining arguments
directed to claim 1 are moot.
As to claims 2–18, the Appellant relies on their ultimate dependency
from independent claim 1 for patentability, arguing that “[t]he addition of
any of Hargroder, Piretti, Mace, Kindrick, Oldham, or Bly, alone or in
combination, to Darst and Rossman fails to correct this deficiency.” App.
Br. 26–27. Indeed, the Examiner’s application of these references does not
address the above noted deficiency in the combination of Darst and
Rossman. Therefore, in view of the above, Rejections 1–7 are reversed.

Rejections 10–17
The Examiner also rejects claim 1 as obvious over Darst in view of
Callaway. Non-Final Act. 15. Regarding independent claim 1, the
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Examiner relies on Darst as set forth in Rejection 1, and relies on Callaway
for disclosing a seat with a seat surface, and
a first 114 (Figure 4) and second 116 (Figure 4) side end
portion being coextensive with a first and second side of the
seat. The seat further comprises a first 104 (Figure 4) and
second 106 (Figure 4) leg member having a leg member length
which is coextensive with the first and second side end portions
(Figure 3).
Non-Final Act. 16.
Based on these findings, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art to have
extend[ed] and join[ed] the first and second, and third and
fourth, side portions and support legs in a coextensive manner
with the first and second side of the seat, as taught by Callaway,
rather than four individual and narrower side portions and legs
so as to provide a wider support base which would help prevent
the seat from tipping over or sliding during use.
Non-Final Act. 16.
The Appellant submits the same arguments as submitted in Rejection
1 as to Darst, and also argues that “[a]s is clearly shown in Calloway at FIG.
5, its legs are attached to the interior surface of the alleged side portions, not
their ends. The end of the alleged side portion and the alleged leg never
touch.” App. Br. 22. The Appellant further argues that “there are not
coextensive lengths of the alleged leg and alleged side member because the
alleged side portion includes a gap (element 302) into which the projecting
tenons [204] situate. This results in the alleged leg being longer than the
alleged side portion.” App. Br. 23. We generally agree with the Appellant.
As to attachment of the legs, the Examiner explains that “[t]he legs of
Callaway engage with [a slot] 302 (Fig. 4) of the side end portions through a
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projection 204 (Fig. 4) extending from the legs,” thereby satisfying the claim
language requiring the leg member to be “attachable with at least a first boss
extending from the first leg member to an end of the first side end portion.”
Ans. 31–32. The Examiner also explains that the “‘gap’ [i.e. slot 302] does
not prevent the side end portions from having a length equal to the leg and
the seat and as seen in Figure 3 of Callaway the seat surface, the side end
portions and the legs are all coextensive/of equal length.” Ans. 32.
However, the slot 302 cannot reasonably be considered to be a part of the
side ends in that it does not “extend[] substantially orthogonally from the
seat” as recited in claim 1. The surface of the slots 302 are flush with the
surface that defines the base 102 such that there is no material that extends
between the first or second side portion 114, 116 along the length of the slots
302 beyond the material of the base 102. Callaway, Figs. 2, 4. Thus, in
essence, Callaway is similar to Darst in that it merely discloses two side
portions 114, 116 at the corners of the base 102. Accordingly, Callaway
does not disclose first and second side end portion lengths that are
coextensive with the seat length or the leg member lengths, or legs that are
attached to the ends of the side end portions as required by the claim.
Therefore, in view of the above considerations, we reverse the
rejection of claim 1 based on these references. The Appellant’s remaining
arguments directed to claim 1 are moot. As to claims 2–18, the Appellant
relies on their ultimate dependency from independent claim 1 for
patentability, arguing that “[t]he addition of any of Hargroder, Piretti, Mace,
Kindrick, Oldham, or Bly, alone or in combination, to Darst and Rossman
fails to correct this deficiency.” App. Br. 26–27. Indeed, the Examiner’s
application of these references does not address the above noted deficiency
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in the combination of Darst and Callaway. Therefore, in view of the above,
Rejections 10–17 are reversed.

Rejections 8 and 9
The Examiner rejects claim 19 as obvious over Darst, Rossman,
Piretti, and Mace. Non-Final Act. 11. These claims similarly require the leg
dimension to be coextensive with the dimension of the end portions, but
further requires a coupler that couples a leg of the bench to a leg of a second
bench. App. Br. 32–33, Claims App. The Examiner relies on the same
findings with respect to Darst and Rossman as applied in Rejection 1, and
relies on Piretti and Mace for teaching connecting mechanisms that
connecting seats together to conclude that claim 19 would have been
obvious. Non-Final Act. 12–13. The Appellant correctly argues that the
Examiner’s application of Piretti and Mace fails to remedy the deficiency of
Darst and Rossman. App. Br. 23. Therefore, we reverse Rejection 8 of
claim 19. We also reverse Rejection 9 of claim 20, which depends from
claim 19, the Examiner’s application of Oldham failing to address the
deficiency of Darst and Rossman.

Rejections 18 and 19
The Examiner rejects claim 19 as obvious over Darst, Callaway,
Piretti, and Mace. Non-Final Act. 23. The Examiner relies on the same
findings with respect to Darst and Callaway as applied in Rejection 10, and
relies on Piretti and Mace for teaching connecting mechanisms that
connecting seats together to conclude that claim 19 would have been
obvious. Non-Final Act. 23–26. The Appellant correctly argues that the
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Examiner’s application of Piretti and Mace fails to remedy the deficiency of
Darst and Callaway. App. Br. 26. Therefore, we reverse Rejection 18 of
claim 19. We also reverse Rejection 19 of claim 20, which depends from
claim 19, the Examiner’s application of Oldham failing to address the
deficiency of Darst and Callaway.

CONCLUSION
The Examiner’s rejections of claims 1–20 is REVERSED.

REVERSED