Ex Parte Bowman et al

Patent Trial and Appeal Board

Aug 29, 2016

12552396 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/552,396 0910212009
35301 7590 08/31/2016
MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103
FIRST NAMED INVENTOR
Timothy S. Bowman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3924-0282-1 4536
EXAMINER
CASTILLO, KEVIN CHARLES
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
patentdocket@ip-lawyers .com
PTOL-90A (Rev. 04/07)
TJJ\.HTED STi\TES Pi\TENT i\.ND TR .. A.DElVLA.RK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY S. BOWMAN, MICHAEL GUERRETTE,
NATHAN HOFFMAN, and CRAIG JONES
Appeal2014-007420
Application 12/552,396
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON i\.PPEi\L
STATEMENT OF CASE
Appellants, Timothy S. Bowman et al., 1 appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-17. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appellants identify the real party in interest as The Wiremold
Company. Appeal Br. 2.
Appeal2014-007420
Application 12/552,396
THE CLAIMED SUBJECT MATTER
The claims are directed to "electrical assemblies for through-floor
installation and, more particularly, to floor box assemblies for installation in
concrete floors." Spec. i-f 2. Claims 1, 7, and 14 are independent. Appeal
Br. 24--27, Claims App. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A floor box assembly for installation with a floor deck
having alternating flutes and valleys, the floor box assembly
compnsmg:
a floor box adapted to be placed over the floor deck, the
floor box being disposed on upper surfaces of at least two
adjacent flutes of the floor deck traversing the valley between the
two flutes; and
an insulation kit for providing insulation for the floor box
assembly wherein the insulation kit is disposed below the floor
box on an underside of the floor deck.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Bowman
Herren
us 5,467,565
us 5,913,788
REJECTIONS
The Examiner made the following rejections:
Nov. 21, 1995
June 22, 1999
1. Claims 1-15 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 1--4 and 7-17 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Bowman.
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Application 12/552,396
3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bowman and Herren.
Appellants seek our review of these rejections.
OPINION
The Rejection of Claims 1-15 As Being Indefinite
Independent claims 1 and 14 recite a "floor box being disposed on
upper surfaces of at least two adjacent flutes", and independent claim 7
recites "a floor box disposed on upper surfaces of at least two adjacent
flutes." The Examiner states that these limitations are indefinite because
"Applicant's floorbox [12] is not disposed on an upper surface of the flute.
It is only the mounting plate [ 14] that is disposed on upper surfaces of at
least two adjacent flutes of the floor deck traversing the valley between the
two flutes [as show in Figs 9 and 10 of Applicant's disclosure]." Final Act.
3; see also Id. at 2, Ans. 10-12.
In response, Appellants argue that claims 1, 7, and 14 do not recite
that "the floor box is disposed directly on the upper surfaces of at least two
adjacent flutes, but rather only that the floor box is disposed on upper
surfaces" of at least two adjacent flutes. Appeal Br. 11 (claims 1 and 14) and
12-13 (claim 7).
The Examiner and Appellants present dictionary definitions to support
their positions. The Examiner asserts that "one of ordinary skill in the art
would comprehend 'on', as 'used as a function or word to indicate position
in contact with and supported by the top surface', as defined by the first
definition of the Merriam Webster Dictionary." Final Act. 11. Appellants
assert that "the Merriam Webster Dictionary also provides definitions for the
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Application 12/552,396
term 'on' that include 'to a position that is supported by (something)' and is
'used to indicate the part or object by which someone or something is
supported.' (See 'on.' Merriam-Webster.com. Merriam-Webster, n.d. Web. 7
Jan. 2014. . copy
attached as Exhibit A)." Appeal Br. 11 (claims 1 and 14) and 13 (claim 7).
Although these dictionary definitions are broad enough to support either
position, we find that Appellants have a slightly better argument. Based on
the present record and the Specification, one skilled in the art would
understand that the contested limitations in claims 1, 7, and 14 mean that the
floor box may be disposed directly or indirectly on the upper surfaces of the
flute. Thus, we reverse the Examiner's rejection of claims 1-15 for
indefiniteness.
The Rejections of Claims 1-4 and 7-17 As Anticipated by Bowman
and of Claims 5 and 6 As Unpatentable Over Bowman and Herren
Independent claims 1 and 14 recite a "floor box being disposed on
upper surfaces of at least two adjacent flutes", and independent claim 7
recites "a floor box disposed on upper surfaces of at least two adjacent
flutes."
On page 7 of the Final Action, the Examiner presents a copy of Figure
2 of Bowman, which is annotated to illustrate the Examiner's interpretation
of flutes and valleys. The Examiner identifies three flutes - the left and
right flutes are convex (facing downwardly) and the middle flute is concave
(facing upwardly). The Examiner also identifies three valleys -the left and
right valleys are concave and the middle valley is convex. Using these
definitions of flutes and valleys, the Examiner finds that Bowman's box 12
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Application 12/552,396
is disposed on the upper surface of the middle concave flute. See, e.g., Final
Act. 3--4; Ans. 13.
Appellants disagree with the Examiner's position, arguing that "the
present application defines the flutes and valleys of the floor deck of the
present invention as being convex and concave, respectively." Appeal Br.
15. Contrary to the Examiner's findings, the Specification explicitly states
that "the floor deck 16 has a corrugated cross-section with a plurality of
convex flutes 84 alternating with a plurality of concave valleys 86." Spec. i-f
27 (emphasis added). The Examiner's definitions that both flutes and
valleys may be both convex and concave simultaneously are inconsistent
with the Specification. Under a claim construction consistent with the
Specification, one skilled in the art would understand that, as argued by
Appellants, "Bowman shows a void-forming box 12 that is positioned in a
valley of a corrugated floor deck. (See Bowman, Figures 2-6)." Appeal Br.
15. Box 12 is not disposed on the upper surfaces of a flute, as recited in the
independent claims. Thus, Bowman does not anticipate independent claims
1, 7, and 14.
For the reasons above, we cannot sustain the Examiner's rejections of
independent claims 1, 7, and 14, and claims 2--4, 8-13, and 15-17, which
depend from the independent claims. Because Herren does not remedy the
deficiencies of Bowman, we cannot sustain the Examiner's rejections of
claims 5 and 6, which depend directly or indirectly from claim 1.
DECISION
For the above reasons, the Examiner's rejections of claims 1-17 are
REVERSED.
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Appeal2014-007420
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REVERSED
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