DISH Technologies L.L.C.

Patent Trials and Appeals Board

Dec 30, 2020

2020003127 (P.T.A.B. Dec. 30, 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.
15/914,666 03/07/2018 Jason Matthew Fruh P2014-07-20.2290110.604D2 6947
70336 7590 12/30/2020
Seed IP Law Group/DISH Technologies (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
KENNY, DANIEL J
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON MATTHEW FRUH
Appeal 2020-003127
Application 15/914,666
Technology Center 3600
Before JENNIFER D. BAHR, NATHAN A. ENGELS, and
LEE L. STEPINA, Administrative Patent Judges.
BAHR, 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. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as DISH Technologies
L.L.C. Appeal Br. 1.
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Application 15/914,666

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “[a] television monitor wall mount
[that] allows a television monitor to be mounted flush against a wall.” Spec.
¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A television monitor wall mount comprising:
a first mounting plate of the television monitor wall
mount configured to be attached behind a wall to a first wall
stud that is located behind the wall, the wall having a first side
on which a television monitor is to be mounted and a second
side opposite the first side, wherein the first mounting plate
configured to be attached behind the wall to the first wall stud
has at least one hole through which a first mounting plate wall
stud television mount fastener is able to be placed to attach the
first mounting plate behind the wall to a first planar surface of
the first wall stud; and
a second mounting plate of the television monitor wall
mount connected to the first mounting plate, the second
mounting plate configured to be attached behind the wall to the
second side of the wall that is opposite the first side, the second
mounting plate having at least one hole through which a second
mounting plate monitor television mount fastener is able to be
placed to mount the television monitor on the first side of the
wall opposite the second side and to extend through the second
mounting plate in such a manner that the television monitor is
able to be fastened to the second mounting plate monitor
television mount fastener on the first side of the wall opposite
the second side; and
a third mounting plate connected to the first mounting
plate, the third mounting plate configured to abut a second
planar surface of the first wall stud and a first planar surface of
a second wall stud located behind the wall.
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REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Medlin US 5,405,111 Apr. 11, 1995

REJECTION
Claims 1–4 stand rejected under 35 U.S.C. § 102(a)(l) as being
anticipated by Medlin.
OPINION
The Examiner finds that Medlin discloses a mount (bracket)
comprising all of the structure recited in claim 1. Final Act. 2–4. In
particular, the Examiner finds that Medlin’s mount comprises a first
mounting plate (leg 42) configured to be attached to a first stud (the stud on
the right in Figure 1) and having at least one hole (mounting holes 48a)
through which a first fastener can be placed to attach the first mounting plate
to a first planar surface of the first stud (i.e., the outward broad face of the
stud on the right for a pair of studs placed closer together than those shown
in Medlin by the width of the two studs); a second mounting plate (shortened
foot 44sh illustrated in Figure 9C) connected to the first mounting plate and
configured to be attached behind the wall to the second side of the wall, the
second mounting plate having at least one hole (mounting holes 48c)
through which a second fastener can be placed to mount a television monitor
on the first side of the wall opposite the second side of the wall and to
extend through the wall; and a third mounting plate (strut 30) configured to
abut a second planar surface of the wall stud (the narrow face at the rear of
the stud on the right in Figure 1). Id. (emphasizing that claim 1 does not
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recite a stud depth or stud spacing and finding that the mounting plates of
Medlin’s mount are configured as called for in claim 1 for a stud depth
shallower than that of Medlin’s studs and a stud spacing closer than that
shown by Medlin by the width of two studs).
The Examiner also finds that Medlin’s mount (bracket) comprises
fourth and fifth mounting plates as recited in claims 2–4. Final Act. 4–5.
Appellant argues that Medlin’s foot 44 is attached to stud 12, not to
the wall. Appeal Br. 5 (citing Medlin, Fig. 1). Appellant also argues that
Medlin’s mounting hole 48c in foot 44 is for a fastener that goes into stud
12, not through the wall so that a television monitor can be fastened to it. Id.
at 6 (citing Medlin, Figs. 1, 9C; 4:53–55). Appellant further submits that
Medlin’s planar strut 30 (i.e., the third mounting plate) “does not touch the
wall stud.” Id. Further, Appellant contends that the Examiner’s findings as
to what Medlin’s leg 44, hole 48c, and planar strut 30 “are ‘capable of’” are
directed to “hypothetical capabilities” that “are not described in Medlin.” Id.
According to Appellant, “since these hypothetical capabilities . . . outside the
disclosure of Medlin are things gleaned by the Examiner from [Appellant’s]
own disclosure, the Examiner is using impermissible hindsight to reject the
claims.” Id. (citing WL. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553 (Fed. Cir. 1983); In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971)).
Appellant makes similar arguments for claims 2 and 3. See Appeal
Br. 7–8 (asserting that the Examiner’s findings regarding Medlin’s leg 42
and foot 44 constitute hypothetical things leg 42 and foot 44 could do if
Medlin disclosed such and that Medlin’s fifth mounting plate (shortened foot
44sh) is attached to the other stud, not to the wall); Reply Br. 8–9.
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Appellant’s allegations of impermissible hindsight are unavailing
because the rejection before us is based on anticipation, not obviousness.
The Examiner’s anticipation rejection does not propose any modification of
Medlin’s mount (bracket) to satisfy the limitations of claim 1, and, thus,
does not involve a reconstruction, much less a reconstruction based on
hindsight reasoning.
The remainder of Appellant’s arguments are all directed to how
Medlin’s mount (bracket) is used, rather than to distinctions between the
claimed structure and the structure of Medlin’s mount. As Appellant
recognizes (see Appeal Br. 7), it is the structure of an article or apparatus
that is relevant; what a device does or how it is used is not relevant to
anticipation. Claim 1 is directed to the mount only, not a combination of the
mount with any studs, wall, or television monitor. See Ans. 3 (correctly
pointing out that “the monitor, wall, fastener, and stud are not positively
recited structural claim elements”). Thus, it is not necessary, for example,
for Medlin’s foot 44 (the second mounting plate) actually to be attached to
the wall, for a fastener to pass through mounting hole 48c (the at least one
hole in the second mounting plate) and into the wall, or for Medlin’s planar
strut 30 (the third mounting plate) in fact to abut a second planar surface of a
first wall stud or a first planar surface of a second wall stud in order to
anticipate the subject matter of claim 1. Rather, claim 1 requires that the
second mounting plate be configured to be attached to the second side of the
wall and have at least one hole through which a fastener “is able to be placed
to mount [a] television monitor on the first side of the wall . . . and to extend
through the second mounting plate in such a manner that the television
monitor is able to be fastened to the . . . fastener,” and that the third
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mounting plate be “configured to abut a second planar surface of the first
wall stud and a first planar surface of a second wall stud.” Appeal Br. 9
(Claims App.) (emphasis added).
In In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), the court looked to
the written description of the application and determined that the phrase
“adapted to” in view of the specification, has a narrower meaning than
“capable of’ or “suited for.” Giannelli, 739 F.3d 1375, 1379 (Fed. Cir.
2014). In this case, we likewise look to Appellant’s Specification to discern
the meaning of “configured to.”
The structure Appellant discloses to configure Appellant’s first
mounting plate 801, second mounting plate 802, third mounting plate 803,
fourth mounting plate 804, and fifth mounting plate 805 in the manner
recited in claims 1–4 is illustrated in Figure 5. The structure includes a
center mounting plate (third mounting plate 803) connected at its ends to
two forwardly-extending mounting plates (first mounting plate 801 and
fourth mounting plate 804) extending perpendicularly from the center
mounting plate, and a mounting plate (second mounting plate 802 and fifth
mounting plate 805) connected to the other end of each of the forwardly-
extending mounting plates and extending perpendicularly therefrom, with
one or more holes in each of the mounting plates. See Fig. 5. Appellant’s
Specification describes this arrangement as follows:
The first mounting plate surface 101 is connected along a
lengthwise edge to the second mounting plate surface 102, the
second mounting plate surface 102 is connected along a
lengthwise edge to the third mounting plate surface 103, the
third mounting plate surface 103 is connected along a
lengthwise edge to the fourth mounting plate surface 104, and
the fourth mounting plate surface 104 is connected along a
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lengthwise edge to the fifth mounting plate surface 105. The
first mounting plate surface 101, third mounting plate surface
103 and fourth mounting plate surface 104 of the television
wall mount 100 are solid planar surfaces and together form a
shape that surrounds exposed surfaces of the wall stud 204 that
is located behind the wall 300.
Spec. ¶ 10; see id. ¶¶ 14–18 (describing the holes). Notably, Appellant’s
Specification does not disclose, and Appellant’s claims do not recite,
dimensions for the mounting plates. Further, Appellant’s Specification does
not disclose, and Appellant’s claims do not recite, dimensions or spacing for
the wall studs.
As seen in Figure 1, Medlin’s mount (bracket) has such an
arrangement of mounting plates and holes. In particular, Medlin’s bracket
includes a first mounting plate (planar strut 30 with holes 36), two
forwardly-extending mounting plates (legs 42 with holes 48a) extending
perpendicularly from each end of planar strut 30, and a mounting plate (feet
44 with holes 48c) connected to the other ends of legs 42 and extending
perpendicularly therefrom. The mounting plates of Medlin’s mount,
arranged in this manner, are configured as recited in claims 1–4, and in the
manner shown and described in Appellant’s application for Appellant’s
mount. The Examiner does not find, nor does the Examiner need to find,
that Medlin discloses actually attaching the mounting plates of the bracket to
wall studs and to a wall and television monitor in the manner alluded to in
claims 1–4. The Examiner, noting that the claims do not recite a stud depth
or stud spacing, finds that the mounting plates of Medlin’s bracket are
configured for interacting as recited in the manner called for in claims 1–4
“for a stud with stud depth slightly shallower than that of the Medlin stud
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and studs spaced slightly closer together by the width of two studs.” Final
Act. 3. Appellant does not persuasively refute this finding.
Citing Giannelli, Appellant argues that Medlin’s second mounting
plate (foot 44) is not configured to be attached to a wall. Reply Br. 5. Aside
from merely pointing out that Medlin’s foot 44 is not in fact attached to the
wall, but, instead, is attached to stud 12, Appellant does not explain why this
is the case. See id. In particular, Appellant does not persuasively explain
why Medlin’s foot 44 is not configured to be attached to a wall when used
with shallower studs spaced closer together by the width of the two studs as
compared to the stud depth and spacing of Medlin’s studs.
Similarly, Appellant asserts the Examiner errs in finding that Medlin’s
third mounting plate (planar strut 30) is configured to abut a second planar
surface of the first wall stud and a first planar surface of a second wall stud.
Reply Br. 5–6. Aside from merely pointing out that Medlin’s planar strut 30
does not in fact touch Medlin’s stud, Appellant does not explain why this is
the case. See id. at 6. In particular, Appellant does not persuasively explain
why Medlin’s planar strut 30 is not configured to abut planar surfaces of
studs that are shallower and more closely spaced than those of Medlin.
Appellant additionally disputes the Examiner’s finding that Medlin’s
foot 44 is configured to be attached to a second side of a wall. Reply Br. 6.
Aside from merely pointing out that “Medlin mentions nothing about
[leg 44] . . . being configured to be attached . . . to the second side of the
wall,” but, instead, shows leg 44 attached to stud 12, not to the wall,
Appellant does not persuasively explain why Medlin’s foot 44 is not
configured to be attached to a second side of a wall attached to studs that are
shallower and more closely spaced than those of Medlin. Anticipation “is
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not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832-33 (Fed. Cir.
1990) (citing Akzo N.V. v. U. S. Int’l Trade Comm’n, 808 F.2d 1471, 1479
n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need not duplicate
word for word what is in the claims.” Standard Havens Prods. v. Gencor
Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1 as
anticipated by Medlin.
Appellant’s arguments in contesting the rejections of claims 2 and 3,
likewise, fail to apprise us of error because they do not persuasively explain
why Medlin’s fourth mounting plate (leg 42) and fifth mounting plate
(shortened foot 44sh) are not configured as called for in claims 2 and 3. See
Appeal Br. 7–8; Reply Br. 8–9. In particular, with respect to claim 2,
Appellant does not persuasively explain why Medlin’s fourth mounting plate
(leg 42) is not configured to abut a second planar surface of a second stud
when Medlin’s bracket is used with shallower studs that are more closely
spaced, as the Examiner posits. Similarly, Appellant does not persuasively
explain why Medlin’s fifth mounting plate (shortened foot 44sh) is not
configured to be attached to the second side of a wall when Medlin’s bracket
is used with shallower studs that are more closely spaced, as the Examiner
posits.
Accordingly, we sustain the rejection of claims 2 and 3 as anticipated
by Medlin. We also sustain the rejection of claim 4, for which Appellant
does not present any separate arguments and which, thus, falls with claim 3,
as anticipated by Medlin.
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CONCLUSION
The Examiner’s rejection of claims 1–4 is AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4 102(a)(1) Medlin 1–4

RESPONSE
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