2020001830 (P.T.A.B. Nov. 19, 2020)

CHEDDIE, Daniel

Patent Trials and Appeals BoardNov 19, 2020

2020001830 (P.T.A.B. Nov. 19, 2020)

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. 14/367,114 06/19/2014 Daniel Cheddie 107301.21500 5545 30734 7590 11/19/2020 BakerHostetler Washington Square, Suite 1100 1050 Connecticut Ave. N.W. Washington, DC 20036-5304 EXAMINER CHIN-SHUE, ALVIN CONSTANTINE ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 11/19/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): edervis@bakerlaw.com eofficemonitor@bakerlaw.com patents@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL CHEDDIE Appeal 2020-001830 Application 14/367,114 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and LEE L. STEPINA, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HOELTER. Opinion Dissenting in Part filed by Administrative Patent Judge FITZPATRICK. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6, 7, 9, 12–17, 21, 22, 24, 26, 29– 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Appellant Daniel Cheddie.” Appeal Br. 1. Appeal 2020-001830 Application 14/367,114 2 37, and 39, which constitute all the claims pending in this application. See Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART the Examiner’s rejections of these claims. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to safety devices and apparatus and to a method of keeping a workman safe.” Spec. 1:4–5. Apparatus claims 1, 16, 31, and 39 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A free-standing, demountable window safety assembly configured to rest, in use, on a floor inside a room containing a window opening in a wall and against the wall containing the window while neither engaging with nor passing through the window opening, said assembly comprising: at least two feet configured to engage with the room floor; at least a first arm and a second arm, an end of each of the first arm and the second arm being configured to engage with the wall adjacent to but spaced away from the window opening; side portions, each being configured for respectively supporting the first arm and the second arm; and at least one linking member configured to link opposing side portions or opposing feet in a substantially rigid fashion. (Appeal Br. 27) (Claims App.). EVIDENCE Name Reference Date Rogalla US 3,058,542 Oct. 16, 1962 Forrest US 4,538,704 Sept. 3, 1985 Grimes et al. (“Grimes”) US 5,954,157 Sept. 21, 1999 McCrystal US 6,073,726 June 13, 2000 Perkins US 6,477,972 B2 Nov. 12, 2002 Appeal 2020-001830 Application 14/367,114 3 Huang US 6,880,675 B2 Apr. 19, 2005 Phillips et al. (“Phillips”) US 2006/0169535 A1 Aug. 3, 2006 Chang US 2006/0272899 A1 Dec. 7, 2006 Julliard US 2010/0012427 A1 Jan. 21, 2010 Parquette US 2012/0211303 A1 Aug. 23, 2012 McInulty GB 2 357 112 A June 13, 2001 Conchello2 WO 02/094700 A1 Nov. 28, 2002 REJECTIONS Claims 1, 2, 4, 6, 7, 35, and 39 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Conchello. Claims 1–3, 6, 7, and 33–35 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by McCrystal. Claims 31 and 32 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Huang. Claims 1–3, 6, 7, 12–17, 21, 22, 24, 29–31, 35, 36, and 39 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Grimes. Claims 1, 2, and 4 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Rogalla. Claims 1–3, 6, 7, and 29 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Phillips. Claim 1 is rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Forrest. Claims 1 and 37 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Chang. 2 We refer to the English language translation by page number only as there are no line or paragraph numberings. Appeal 2020-001830 Application 14/367,114 4 Claim 37 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Forrest and Perkins. Claims 16 and 26 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Forrest and Julliard. Claims 6, 7, and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Forrest and McInulty. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Forrest and Parquette. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Forrest, Julliard, and Parquette. ANALYSIS Appellant contends the Examiner’s findings upon which the above rejections are based, are “Infected with Claim Interpretation Errors.” Appeal Br. 5. The purported errors in question pertain to the terms “free- standing” and “configured to.” Appellant uses claim 1 as an example, but states that such issues also found in “the other independent claims on appeal.” Appeal Br. 5. We address these matters first before proceeding to the Examiner’s art rejections. Free-standing The preamble of each independent claim on appeal specifies that the recited safety assembly is “free-standing.”3 “The determination of whether a 3 Regarding claim 39, Appellant states, “[t]his should state ‘safety assembly’ and will be so amended upon return to ex parte prosecution.” Appeal Br. 27. The Examiner does not issue a rejection of claim 39 based on this error. Thus, we understand Appellant’s statement to be the Examiner’s understanding too. Appeal 2020-001830 Application 14/367,114 5 preamble limits a claim is made on a case-by-case basis [and,] there is no litmus test defining when a preamble limits the scope of a claim.” MPEP § 2111.02. Here, Appellant contends that the preamble is a statement that limits structure because the preamble “is not only quite detailed, it provides antecedent basis for several terms in the body of the claim and gives life and meaning to what would otherwise be an unconnected aggregation of parts.” Appeal Br. 7. The Examiner’s response on this point is of little help because it focuses on the “configured to” language found elsewhere in each preamble, not on whether the aforesaid “free-standing” language limits the claimed structure that follows in the body of the claim. Ans. 6. We also note that our reviewing court indicated that a conclusion that some preamble language is limiting does not imply that other preamble language, or the entire preamble, is limiting. See TomTom, Inc. v. Adolph, 790 F.3d 1315, 1322–23 (Fed. Cir. 2015). In the record before us, Appellant has the better argument because the body of each independent claim recites “at least two feet,”4 and oftentimes, inanimate objects having only two means of support are not stable and thus, cannot also be said to be “free-standing.”5 In fact, Appellant’s Specification, when addressing the embodiment of Figure 4, describes the two feet as “large . . . such that the equivalent of a side portion described above is free standing.” Spec. 9:24–26. As understood, Appellant’s two “large” feet 4 Claim 39 recites “at least two elongate feet.” 5 Appellant’s proffered definition of “free-standing” is consistent with how this term is used in Appellant’s Specification, i.e., “[A]ppellant did not use the term ‘free-standing’ to refer to assemblies that needed support from a side-wall or a ceiling in order to maintain an operative orientation.” Appeal Br. 7. Appeal 2020-001830 Application 14/367,114 6 overcome any inherent toppling moment that may arise when the object is in its “operative orientation.” Spec. 9:24–26; Appeal Br. 7. Hence, we understand that “free-standing,” as recited in the preamble, gives life and meaning to structural limitations found in the body of the claim, and further that these additional meanings would be absent were “free-standing” not recited. We are also provided guidance that “[a]ny terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.” MPEP §2111.02(I). Accordingly, we interpret “free-standing,” as found in the preamble of each independent claim, as a claim limitation.6 Configured to The phrase “configured to” is used multiple times in the body of each independent claim on appeal.7 Appellant references three cases to support the position that the Examiner’s interpretation “fails to give a reasonable construction to the word ‘configured’ in appellant’s claims” which is also in accordance with Appellant’s Specification. Appeal Br. 6 (citing Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012); In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014); and In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016)). 6 On the other hand, we agree with the Examiner that the recited free- standing assembly that is “configured to rest” against a wall refers to an “intended use of the claimed invention.” Advisory Action dated April 12, 2019, pp. 2–5; see also TomTom above. 7 As noted above, this phrase is also used in the preamble of each independent claim. Here, we only address such usage in the body of the claims. Appeal 2020-001830 Application 14/367,114 7 Appellant’s assertions hinge on the Examiner’s finding that “[i]f the prior art structure is capable of performing the claimed function, then it meets the claim.” Advisory Action dated April 12, 2019 (emphasis added); see also Appeal Br. 6. Appellant notes that “[t]he language ‘capable of’ is not in appellant’s claims at all” and that “[b]ased on the claim language and the specification of this application, ‘configured to [or for]’ has a narrower meaning than ‘capable of’ and means that the structural elements recited in [Appellant’s] claims are specially designed to accomplish the specific purpose set forth in the claims.” Appeal Br. 6 (citation omitted). The Examiner, on the other hand contends that “it is unclear what specific configuration of the claimed element [would] prohibit the applied prior art elements from performing the configured to function.” Ans. 6. Consistent with each of the cases referenced above, Appellant’s usage of “configured to” claim language is assigned a narrower meaning than the Examiner’s “capable of” language. For example, in Man Machine Interface, the narrower meaning meant that “the thumb switch is made or designed for activation by a human thumb,” although a finger is also capable of (broader) being used to activate the switch. Man Machine Interface, 822 F.3d at 1286. In Giannelli, the narrower meaning meant that “a pulling force is exerted on the handles,” although a pushing force is also capable of (broader) being applied. In Aspex Eyewear, the narrower meaning meant “that the magnetic members of the auxiliary frame are meant to engage with the magnetic members of the primary frame, not simply that they are capable of doing so.” Aspex Eyewear, 672 F.3d at 1349. In fact, this latter case clearly states that the recited language meant that the identified components “are designed or configured to accomplish the specified objective, not simply that they can Appeal 2020-001830 Application 14/367,114 8 be made to serve that purpose.” Aspex Eyewear, 672 F.3d at 1349. We thus rely on the above to ascertain whether “[t]he Examiner’s claim interpretation is fatally improper” or not with respect to the rejections rendered. Appeal Br. 6. The rejection of claims 1, 2, 4, 6, 7, 35, and 39 as anticipated by Conchello As noted above, both independent claims 1 and 39 recite that the safety assembly be “free-standing.” Appellant contends that Conchello’s structure “is not freestanding,” and especially not when “arranged in the manner claimed.” Appeal Br. 9; see also id. at 10. We agree with Appellant. Conchello’s structure relies on engagement not only with a floor, but also a wall; and it is this reliance on support from a wall that removes Conchello from the realm of being “free-standing.” See Conchello Fig. 1. Conchello’s rigid body may be laid upon the ground, or even upon its side, without requiring further support, but “free-standing” is understood from Appellant’s Specification as describing a condition when the device is in its normal operational position. See Appeal Br. 7 (discussing “operative orientation”); see also Spec. 9:24–26 (employing “large feet” to enable a side portion to be “free standing” so as to be of use). In short, Conchello cannot be said to be “free-standing” when it is oriented for operation, i.e., “in the manner claimed.” See Conchello Fig. 1, p. 4 (“the lower end is arranged on the floor or floor, while the upper end is placed against the wall (7)”). The Examiner, however, contends that “Conchello’s structure is a freestanding structure just as Appellant’s FIG.6 structure.” Ans. 9. But, Appellant’s Figure 6 structure will not “topple” over when only supported Appeal 2020-001830 Application 14/367,114 9 from below, unlike Conchello’s device. In other words, the Examiner does not explain how Conchello’s device can remain upright and operational (as shown in Figure 1 of Conchello) without also necessitating being braced against wall 7. See Appeal Br. 10. There is no indication that Conchello’s device, in its operational position, is supported in a cantilevered fashion from the floor only. Further, regarding the Examiner’s reliance on the embodiment depicted in Appellant’s Figure 6, we note that Appellant and the Examiner use a different frame of reference when describing that embodiment. For example, Appellant depicts and describes members 311, 323, 324, and corner pieces 343 as “designed to rest on a floor surface” and forming a “rigid structure.” See Spec. 11:22–12:15. A skilled person would understand this resting-on-a-floor design as embodying a floor support or, better yet, a base. The Examiner, on the other hand, describes Appellant’s Figure 6 as an “assembly that resides on its side” and that the free-standing specie depicted “is with its side resting on the ground.” Ans. 4, 5. The Examiner’s usage of a different frame of reference (i.e., identifying a floor support/base as a “side”) indicates a different orientation of the structure than normal, and such an orientation permeates the Examiner’s findings when addressing Appellant’s Figure 6. See, e.g., Ans. 9. Appellant replies, addressing Figure 6, stating “that the rejection of a claim should be based on the prior art and not a particular subjective and inaccurate interpretation of one Figure of Applicant’s disclosure.” Reply Br. 4. We agree with Appellant on that point. Appeal 2020-001830 Application 14/367,114 10 Accordingly, and based on the record presented, we reverse the Examiner’s rejection of independent claims 1 and 39, and dependent claims 2, 4, 6, 7, and 35, as being anticipated by Conchello. The rejection of claims 1–3, 6, 7, and 33–35 as anticipated by McCrystal McCrystal is entitled “Adjustable Step Ladder,” and Figure 1 depicts a free-standing, “A” frame ladder in its open and upright position, whose legs can telescope. Appellant contends that the Examiner’s reliance on McCrystal to reject independent claim 1 “is permissible only if one placed McCrystal’s ladder on its side” and that “[p]lacing the ladder on its side defeats [McCrystal’s] objective” of gaining “height by climbing it.” Appeal Br. 11; see also id. at 12, Reply Br. 5. The Examiner does not dispute this arrangement of placing McCrystal’s ladder on its side to anticipate these claims, and even seems to confirm such on-its-side orientation. See Ans. 11, 12 (correlating McCrystal’s ladder to Appellant’s Figure 6 discussed above). Again, Appellant contends the Examiner’s correlation of McCrystal’s ladder to Appellant’s Figure 6 is based upon a “subjective and inaccurate interpretation” of this figure. Reply Br. 5. Additionally, and in view of the three cases discussed above, we understand that although a structure may be “capable of” being arranged as claimed, that does not mean that the prior art structure is thus also “configured to” perform as recited. As discussed above, the Examiner changes the orientation of the legs of McCrystal’s ladder from their normal orientation in order to achieve the limitation of first and second arms “being configured to engage with the wall.” Final Act. 6. However, the four legs of Appeal 2020-001830 Application 14/367,114 11 McCrystal are, instead, specifically designed to engage a floor, not a wall, when in normal operation. As a result, the Examiner has not explained how the identified components of McCrystal’s ladder “are designed or configured to accomplish the specified objective, not simply that they can be made to serve that purpose.” Aspex Eyewear, 672 F.3d at 1349. Accordingly, and based on the record presented, we do not sustain the Examiner’s rejection of claims 1–3, 6, 7, and 33–35 as anticipated by McCrystal. The rejections of: (a) claims 31 and 32 as anticipated by Huang; (b) claims 1–3, 6, 7, 12–17, 21, 22, 24, 29–31, 35, 36, and 39 as anticipated by Grimes; (c) claims 1–3, 6, 7, and 29 as anticipated by Phillips; and (d) claims 1 and 37 as anticipated by Chang Huang, Grimes, Phillips, and Chang each disclose further variations of an “A” frame step-ladder, similar to that depicted in McCrystal. Further, rejected independent claims 1, 31, and 39 each recite limitations similar to those discussed above regarding arms “configured to engage with the room wall.” Independent claim 16 differs slightly reciting two wall engaging members having wall pads which are “configured so as to contact the wall.” In each instance, however, Appellant contends that the Examiner has arranged these prior art ladders on their sides, just as the Examiner oriented McCrystal’s ladder above.8 See Appeal Br. 13, 15, 18, 20. The Examiner does not cure the defect previously addressed regarding the distinction 8 This understanding by Appellant is further supported by the Examiner’s correlation of these various ladders to Appellant’s Figure 6. See Ans. 14–16, 20, 25, 29. Appellant contests such correlation as above. See Reply Br. 6–8, 11. Appeal 2020-001830 Application 14/367,114 12 between “capable of” and “configured to” as outlined by our reviewing court. Instead, the Examiner perpetuates this faulty claim construction. Accordingly, we do not sustain the Examiner’s rejections of claims 1– 3, 6, 7, 12–17, 21, 22, 24, 29–32, 35, 36, and 39 as anticipated by Huang, Grimes, Phillips or Chang. The rejection of claims 1, 2, and 4 as anticipated by Rogalla Rogalla is directed to a roof platform permitting users to store equipment on a tabletop which straddles the peak of the roof. See Rogalla Fig. 2; see also Rogalla 1:8–20. Similar to the above arguments, “[A]ppellant thinks that the Examiner must be arguing that this device is used on its side.” Appeal Br. 16; see also id. at 17. Appellant’s understanding does not have the same level of support in this matter as can be found for similar understandings in the matters discussed above. This is because the Examiner only states that arms 56 are “configured to engage a wall” while legs 42 “would engage the floor.” Ans. 23. However, as Rogalla discloses a table for use on a sloping roof, the opposite legs 42, 56 are designed to engage this sloping surface on either side of its peak, not a floor and a wall. See Rogalla Fig. 2. As with McCrystal above, the Examiner does not explain how any of Rogalla’s legs 42, 56 “are designed or configured to accomplish the specified objective, not simply that they can be made to serve that purpose.” Aspex Eyewear, 672 F.3d at 1349. Accordingly, we reverse the Examiner’s rejection of claims 1, 2, and 4 as anticipated by Rogalla. Appeal 2020-001830 Application 14/367,114 13 The rejection of claim 1 as anticipated by Forrest Appellant acknowledges that Forrest’s jacks “are connected to a base plate 20, but given the height and mass of the apparatus, this [base plate 20] will not prevent toppling of the apparatus.” Appeal Br. 19; Reply Br. 10. Consequently, as per Appellant, “Forrest’s device cannot therefore be considered to be free-standing within the meaning of appellant's claims.” Appeal Br. 19; Reply Br. 10. Furthermore, because of Forrest’s ability to topple, Appellant contends that “[t]his is why the telescoping extensions 18 are provided to brace against the ceiling, thereby making the device a kind of prop.” Appeal Br. 19; Reply Br. 10. Appellant’s presumption that Forrest’s device is likely to topple, and thus the need for ceiling extensions 18, runs counter to the express teachings of Forrest. Forrest teaches both a baseplate 20 and horizontally disposed braces 24 such that the braces “cooperate with the baseplate to maintain [Forrest’s device] vertical and the proper distance from the window.” Forrest 3:38–44, see also Fig. 1. However, prior to being operated upon, it is not clear that any forces are transmitted through the horizontal braces due to the illustrated extent of baseplate 20 (reminiscent of Spec. 9:24–26). This understanding is further supported by Forrest stating that, regarding the braces, their primary function is “that of bracing the exit fixture against the significant loads that will eventually be applied thereto in a direction to tilt same outwardly.” Forrest 3:44–47 (emphasis added). Thus, in the absence of any “significant loads” that may be applied that would tilt the device outwardly, the normal loading of Forrest’s device appears to be borne solely by baseplate 20. Appeal 2020-001830 Application 14/367,114 14 Appellant’s contention that Forrest’s ceiling extensions 18 play a role in maintaining such verticality is not supported by any express teachings of Forrest, which only references the braces and the baseplate (and not the extensions 18) as maintaining verticality and the proper distance from the window.9 See above. As noted above, this understanding of the operation of Forrest’s baseplate 20 is similar to that of Appellant’s usage of “large feet . . . such that the equivalent of a side portion described above is free standing.” Spec. 9:24–26. Thus, by Appellant contending that Forrest’s baseplate is too small to serve its intended purpose (i.e., maintain verticality), it appears that Appellant is scaling Forrest’s drawings and thereby speculating based on the scaled size of Forrest’s baseplate. Indeed, as noted above, Appellant presumes that “given the height and mass of the apparatus . . . it can fall backwards” and that the base plate “will not prevent toppling of the apparatus.” Appeal Br. 19. Yet, no height and mass of the device is provided by Forrest that might support such a presumption, and we decline to speculate on the toppling of Forrest’s device when we are instructed otherwise that the baseplate aids in maintaining the device upright (similar to how Appellant’s “large feet” maintains the free-standing status of Appellant’s side portion). Appellant also contends that the Examiner erred when construing “the small plates at the end of the jacks 16 as being the claimed feet.” Appeal Br. 19; see also Final Act. 15. Appellant contends that this is because such “‘feet’ are not configured to engage the floor of the room as required by the 9 The Examiner appears to underscore this point stating “Forrest’s device is free standing, as it is freestanding before member (18) is extended to engage a roof.” Ans. 27. Appeal 2020-001830 Application 14/367,114 15 claims; instead they engage the base pla[t]e 20, which in turn engages the floor.” Appeal Br. 19. This contention is not persuasive because claim 1 does not preclude indirect engagement between the feet and the floor. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claim 1 as being anticipated by Forrest. The rejections of: (a) claim 37 as unpatentable over Forrest and Perkins; (b) claims 16 and 26 as unpatentable over Forrest and Julliard; (c) claims 6, 7, and 9 as unpatentable over Forrest and McInulty; (d) claim 29 as unpatentable over Forrest and Parquette; and, (e) claim 30 as unpatentable over Forrest, Julliard, and Parquette Appellant only addresses the rejection of claims 16 and 26 (i.e., the combination of Forrest and Julliard), and does not present any arguments regarding the other rejections based on different combinations of references (all of which rely primarily on Forrest). Accordingly, we sustain these other non-argued rejections, and address only claims 16 and 26. Regarding independent claim 16, Appellant contends that “since Forrest does not disclose the features for which the Examiner cites it against claim 1 as set forth above,” the rejection of claim 16 “should be reversed.” Appeal Br. 21. We disagree with Appellant’s assessment and are not appraised of any defect in the Examiner’s reliance on Forrest in rejecting claim 1. See above. Accordingly, we sustain the Examiner’s rejection of claim 16 as being obvious in view of Forrest and Julliard. Claim 26 recites the “window safety assembly according to Claim 1” and further recites several method steps. As per Appellant, “the Examiner recognizes that Forrest's apparatus cannot be used to carry out the method of claim 26 as claimed as he relies on Julliard for that.” Appeal Br. 21. However, as per Appellant “Julliard falls short of the teachings for which the Appeal 2020-001830 Application 14/367,114 16 Examiner cites it.” Appeal Br. 21. For example, Appellant contends that Julliard fails to teach the limitation directed to being “free-standing.” See Appeal Br. 21, 22. However, the Examiner did not rely on Julliard for this “free-standing” limitation. See Final Act. 18 (“Forrest teaches providing the claimed free-standing demountable window safety assembly according to claim[] 1”); Ans. 31 (“Julliard was not use[d] to teach the claimed freestanding structure as argued by Appellant.”). Thus, Appellant is not arguing the rejection, nor is Appellant addressing Julliard for the reasons it was cited (“to provide the steps of installation and safety harnessing”). Final Act. 18. Accordingly, we sustain the Examiner’s rejection of claim 26 as being obvious in view of Forrest and Julliard. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6, 7, 35, 39 102(b) Conchello 1, 2, 4, 6, 7, 35, 39 1–3, 6, 7, 33–35 102(b) McCrystal 1–3, 6, 7, 33–35 31, 32 102(b) Huang 31, 32 1–3, 6, 7, 12–17, 21, 22, 24, 29– 31, 35, 36, 39 102(b) Grimes 1–3, 6, 7, 12–17, 21, 22, 24, 29– 31, 35, 36, 39 1, 2, 4 102(b) Rogalla 1, 2, 4 1–3, 6, 7, 29 102(b) Phillips 1–3, 6, 7, 29 1 102(b) Forrest 1 1, 37 102(b) Chang 1, 37 37 103(a) Forrest, Perkins 37 Appeal 2020-001830 Application 14/367,114 17 16, 26 103(a) Forrest, Julliard 16, 26 6, 7, 9 103(a) Forrest, McInulty 6, 7, 9 29 103(a) Forrest, Parquette 29 30 103(a) Forrest, Julliard, Parquette 30 Overall Outcome10 1, 6, 7, 9, 16, 26, 29, 30, 37 2–4, 12–15, 17, 21, 22, 24, 31–36, 39 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART 10 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.” UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL CHEDDIE Appeal 2020-001830 Application 14/367,114 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and LEE L. STEPINA, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge, dissenting in part. I would not construe “free-standing” as the majority does. The term “free-standing” does not appear in the body of claim 1. Appeal Br. 23 (claim 1). Appellant argues: However, the preamble of claim 1, for example, which reads “A free-standing, demountable window safety assembly configured to rest, in use, on a floor inside a room containing a window opening in a wall and against the wall containing the window while neither engaging with nor passing through the window opening,” is not only quite detailed, it provides antecedent basis for several terms in the body of the claim and gives life and meaning to what would otherwise be an unconnected aggregation of parts. Thus, the broadest reasonable interpretation of claim 1 (and appellant’s remaining claims) requires that the preamble be given limiting weight. Appeal Br. 7. Although Appellant does not cite a case to support this argument, Appellant’s argument presumably relies on legal authority such as Appeal 2020-001830 Application 14/367,114 2 Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332 (Fed. Cir. 2003), which holds: “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Id. at 1339. Appellant does not identify the “several terms” for which the preamble allegedly provides antecedent basis. The nouns recited in the preamble are: “free-standing, demountable window safety assembly,” “floor,” “room,” “window opening,” “wall,” and “window.” Appeal Br. 23 (claim 1). Other than the “free-standing, demountable window safety assembly,” which itself is the claimed invention, none of these other nouns is part of the claimed invention. Id. Rather, they are used merely as a frame of reference. For example, “floor” is recited in the body of the claim, not as part of the claimed invention, but as a frame of reference for the “at least two feet configured to engage with the room floor.” Id. Likewise, the “wall” is recited in the body of the claim, not as part of the claimed invention, but as a frame of reference for “an end of each of the first arm and the second arm being configured to engage with the wall.” Id. Accordingly, I do not find persuasive Appellant’s argument for why the preamble should be limiting. On the contrary, I would construe the preamble as non-limiting, as it merely states the purpose and intended use of the invention. See In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) (“The preamble of a claim does not limit the scope of the claim when it merely states a purpose or intended use of the invention. However, terms appearing in a preamble may be deemed limitations of a claim when they give meaning to the claim and properly define the invention.” (quotation marks and citations omitted)). Appeal 2020-001830 Application 14/367,114 3 Even assuming the preamble is limiting as Appellant argues, and the majority agree, I would not interpret “free-standing” as they do. Appellant acknowledges that “[t]he broadest reasonable interpretation of ‘free- standing’ as used in the claims of this application is bounded by what this application discloses.” Appeal Br. 6–7 (emphasis added). According to Appellant: The specification of this application makes many references, and the figures show, the assembly disposed in front of a window, capable of resting, in a state ready for use, on the floor of a room. The specification does not support an interpretation under which the assembly is freestanding by virtue of its state of rest being dependent upon another external surface or entity, for example a ceiling, side walls and/or windows. It is instead clear from the specification of this application that appellant did not use the term ‘free-standing’ to refer to assemblies that needed support from a side-wall or a ceiling in order to maintain an operative orientation, nor an assembly that resides, for example, on its side in a condition that was not intended or suitable for use. Id. at 7. Appellant’s characterization of its disclosure is devoid of citations to the Specification. And contrary to that characterization, the Specification explicitly and repeatedly uses the term “free-standing” to refer to an assembly “adapted to rest . . . against a wall.” Spec. 2:22–24, 4:21–23. Indeed, claim 1 recites that the “free-standing” assembly comprises “at least a first arm and a second arm, an end of each of the first arm and the second arm being configured to engage with the wall.” Appeal Br. 23 (claim 1 (emphasis added)). And, per Appellant’s and the majority’s construction of “configured to,” the ends of the arms are not merely capable of engaging the wall, but rather are designed to engage the walls. Appeal 2020-001830 Application 14/367,114 4 In a vacuum, I might construe “free-standing” as Appellant urges, and with which the majority agrees. However, given the Specification and surrounding claim language just detailed, I would not. Accordingly, I would not reverse the rejection of claims 1, 2, 4, 6, 7, 35 and 39 as anticipated by Conchello.