Ex Parte Castillo

Board of Patent Appeals and Interferences

Nov 15, 2010

10453849 (B.P.A.I. Nov. 15, 2010)

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.
10/453,849 06/02/2003 Dennis Del Castillo 50324/DMC/S584 1425
23363 7590 11/15/2010
CHRISTIE, PARKER & HALE, LLP
PO BOX 7068
PASADENA, CA 91109-7068
EXAMINER
TRAN, HANH VAN
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
11/15/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS DEL CASTILLO
____________

Appeal 2009-008296
Application 10/453,849
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008296
Application 10/453,849

STATEMENT OF THE CASE
Dennis Del Castillo (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting under 35 U.S.C. § 102(b) claims 1-3,
5, and 13-16 as anticipated by Rorke (US 5,108,165, issued Apr. 28, 1992)
and under 35 U.S.C. § 103(a) claims 4 and 6-12 as unpatentable over Rorke
and Kim (US 2002/0011766 A1, published Jan. 31, 2002). We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to a pocket door cabinet having a door
hingedly coupled to a slidable structure so that the door is translatable with
the slidable structure. Spec. 2, ll. 17-18, 25-26, and 28-29 and fig. 1.
Claims 1, 13, and 14 are representative of the claimed invention and
read as follows:
1. An enclosure with a pocket door, comprising:
a top wall, a bottom wall, and side walls interconnecting the top
wall and the bottom wall;
a slidable structure directly attached by a bracket to at least one
of the top wall or bottom wall and within the enclosure approximate
one of the side walls, the slidable structure translatable from
approximate a front of the enclosure towards a rear of the enclosure;
and
a door hingedly coupled to the slidable structure, the door being
moveable, with the slidable structure approximate the front of the
enclosure, from a closed position to an open position, the door being
translatable with the slidable structure towards the rear of the
enclosure with the door in the open position, the door being within the
enclosure between the slidable structure and the one of the side walls
when the slidable structure is translated towards the rear of the
enclosure.

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Application 10/453,849

13. A slidable structure for a pocket door cabinet, comprising:
a slide rail;
means for directly attaching a false wall to a bottom wall of a
cabinet enclosure and for coupling the slide rail to the bottom wall of
the cabinet enclosure;
a slidable member translatably coupled to the slide rail; and
means for coupling a door to the slidable member.

14. A slidable structure for a pocket door cabinet, comprising:
an upper slide rail with an upper slidable member translatably
coupled to the upper slide rail;
a lower slide rail with a lower slidable member translatably
coupled to the lower slide rail; and
a connecting member coupling the upper slidable member and
the lower slidable member, the connecting member pivotally
connected to the upper slidable member and pivotally connected to the
lower slidable member.

SUMMARY OF DECISION
We REVERSE.
ANALYSIS
Claims 1-12
Independent claim 1 requires “a slidable structure directly attached
by a bracket to at least one of the top wall or bottom wall.” Br., Claims
Appendix. The Examiner takes the position that, “Rorke et al discloses a
slidable structure directly attached by a bracket 20 to at least one of the top
or bottom wall via a false wall 41.”
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
2007) (denouncing claim constructions which render phrases in claims
superfluous). The Examiner’s interpretation of “a slidable structure directly
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Application 10/453,849

attached by a bracket to at least one of the top wall or bottom wall” as
covering a slidable structure that is attached by a bracket to a bottom wall
via a false wall in effect renders meaningless, or superfluous, the term
“directly.”2 As the Examiner found, and we agree, the slides 28 (slidable
structure) of Rorke are attached to inner wall 41 by frame member 20
(bracket) and the inner wall 41 is attached to at least one of a top wall or a
bottom wall. Ans. 3. See also, Rorke, col. 3, ll. 38-40 and 53-62; and figs. 1
and 5. Hence, the slides 28 (slidable structure) of Rorke are not directly
attached to the bottom wall by the frame member 20 (bracket). As such,
we agree with Appellant that, “Rorke et al. therefore does not disclose ‘a
slidable structure directly attached by a bracket to at least one of the top
wall or bottom wall’, as specified by claim 1.” Br. 4-5. Emphasis added.
Accordingly, the rejection of claim 1, and its dependent claims 2, 3, and 5,
under 35 U.S.C. § 102(b) as anticipated by Rorke, cannot be sustained.
With respect to claims 4 and 6-12, the addition of Kim does not
remedy the deficiencies of Rorke as described above. Therefore, the
rejection of claims 4 and 6-12 under 35 U.S.C. § 103(a) as unpatentable over
Rorke and Kim likewise cannot be sustained.

Claim 13
Claim 13 requires “means for directly attaching a false wall to a
bottom wall of a cabinet enclosure and for coupling the slide rail to the
bottom wall of the cabinet enclosure.” Br., Claims Appendix. The

2 An ordinary and customary meaning of the term “direct” is “b: in
immediate physical contact.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (10th Ed. 1997).

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Application 10/453,849

Examiner takes the position that because the slide rail 28 of Rorke is
attached to the false wall 41 via frame member 20 and the false wall is
inherently attached to one of the walls of the cabinet, then “the means for
directly attaching the false wall 41 to the bottom wall also is for coupling the
slide rail 28 to the bottom wall.” Ans. 7. We disagree with the Examiner’s
position because “means for directly attaching a false wall to a bottom
wall of a cabinet enclosure and for coupling the slide rail to the bottom
wall of the cabinet enclosure” is a means plus function element pursuant to
35 U.S.C. § 112, sixth paragraph.3 Where means-plus-function language is
used to define the characteristics of an apparatus such language must be
interpreted to read on only the structures or materials disclosed in the
specification and “equivalents thereof” that correspond to the recited
function. See In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994). A
“means-plus-function” limitation covers structure which performs a function
identical to that recited in the limitation and which differs insubstantially
from the corresponding structure disclosed in the specification. Caterpillar
Inc. v. Deere & Co., 224 F.2d 1374, 1379 (Fed. Cir. 2000). In the instant
application, the means for directly attaching a false wall to a bottom wall of
a cabinet enclosure and for coupling the slide rail to the bottom wall of the
cabinet enclosure is the U-shaped bracket 99. See Spec. 8, ll. 16-19 and fig.
4. The Examiner has failed to demonstrate that the corresponding structure
for attaching the false wall 41 of Rorke to the bottom wall and for coupling
the slide rail 28 to the bottom wall is a U-shaped bracket or an equivalent
thereof. Moreover, we note that the Examiner specifically states that the

3 Appellant states that “[t]his is a mean[s]-plus-function element
pursuant to 35 U.S.C. § 112(6).” Br. 3.
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means for attaching the false wall 41 of Rorke to the bottom wall and for
coupling the slide rail 28 to the bottom wall is not shown. Ans. 3.
Accordingly, the rejection of claim 13 under 35 U.S.C. § 102(b) as
anticipated by Rorke cannot be sustained.

Claims 14-16
Claim 14 requires a “connecting member pivotally connected to
the upper slidable member and pivotally connected to the lower slidable
member.” Br., Claims Appendix. The Examiner takes the position that due
to manufacturing tolerances the connecting member 68 of Rorke would have
pivotal movement relative to upper and lower slide members 28. Ans. 7.
See also, Rorke, fig. 5.
While we appreciate that connecting member 68 and upper and lower
slides 28 of Rorke may have manufacturing tolerances, this in no way
demonstrates that connecting member 68 and slides 28 are pivotally
connected. In other words, just because connecting member 68 and slide
members 28 of Rorke include manufacturing tolerance it does not
necessarily mean that a pivotal connection exists between connecting
member 68 and slide members 28. The Examiner has not provided
any evidence to show that manufacturing tolerances of connecting member
68 and slides 28 results in a pivotal connection. For example, the
manufacturing tolerances may be such that an interference fit results
between connecting member 68 and slides 28. In such a case, the
connecting member 68 would not pivotally connect to upper and lower
slides 28, as the Examiner contends.
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Application 10/453,849

In conclusion, for the foregoing reasons, the rejection of claim 14, and
its dependent claims 15 and 16, under 35 U.S.C. § 102(b) as anticipated by
Rorke, cannot be sustained.

SUMMARY
The decision of the Examiner to reject claims 1-16 is reversed.

REVERSED

JRG

CHRISTIE, PARKER & HALE, LLP
P.O. BOX 7068
PASADENA, CA 91109-7068
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