Ex Parte Fruh

Patent Trial and Appeal Board

Oct 23, 2017

14506174 (P.T.A.B. Oct. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/506,174 10/03/2014 Jason Matthew Fruh P2014-07-20 (290110.604) 7677
70336 7590 10/25/2017
Seed IP Law Group LLP/EchoStar (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
KENNY, DANIEL J
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
Patentlnfo @ 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 2017-002172
Application 14/506,174
Technology Center 3600
Before ST. JOHN COURTENAY III, THU A. DANG, and
ERIC S. FRAHM, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—9, and 14—17, which are all the claims pending in this
application. Claims 10-13 and 18—21 are withdrawn. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
Invention
The disclosed and claimed invention on appeal is directed to “a
television monitor wall mount is provided that allows a television monitor to
be mounted flush against a wall, such as directly against the sheetrock,
drywall or other wall surface material. When attached behind a wall to a
wall stud, the television wall mount serves as a bracket to support the weight
Appeal 2017-002172
Application 14/506,174
of the television monitor that is located on the front side of the wall.”
(Abstract).
Illustrative Claim
1. A television monitor wall mount comprising:
a first mounting plate surface of the television monitor wall
mount configured to be attached behind a wall to a 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;
a second mounting plate surface of the television monitor
wall mount connected to the first mounting plate surface, the
second mounting plate surface configured to be attached behind
the wall to the second side of the wall that is opposite the first
side, the second mounting plate surface having at least one hole
through which a 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
the television mount fastener placed in the at least one
hole and extending through the second mounting plate surface in
such a manner that the television monitor is able to be fastened
to the television mount fastener on the first side of the wall
opposite the second side.
(Contested limitations emphasized).
Rejection
Claims 1—9, and 14—17 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Eittreim (4,804,094, issued Feb. 14, 1989). Final Act. 2.
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Application 14/506,174
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Independent Claim 1 under 35 U.S.C. § 102(b)
Issue: Under 35 U.S.C. § 102(b), did the Examiner err by finding
Eittreim expressly or inherently discloses the contested limitations
(emphasized in italics above), within the meaning of sole independent claim
l?1
Regarding the contested limitations of claim 1, Appellant contends,
inter alia: “Eittreim does not teach ‘the television mount fastener placed in
the at least one hole and extending through the second mounting plate
surface in such a manner that the television monitor is able to be fastened to
the television mount fastener on the first side of the wall opposite the second
side’” as recited in claim 1. (App. Br. 13). Appellant urges that “Eittreim is
directed to a wall shelf (see Fig. 1, Title, Abstract and col. 4, lines 15-20 of
Eittreim). Eittreim does not mention any television mount fastener, much
less a ‘television mount fastener placed in the at least one hole and extending
through the second mounting plate surface ...’ as recited in claim 1 as
amended.” {Id.).
1 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 111
F.3d 1048, 1054 (Fed. Cir. 1997).
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Application 14/506,174
In the Final Action (3), the Examiner reads the recited first and second
mounting plate surfaces on the opposite, parallel sides of Eittreim’s El-
shaped receiving member 16 (See element 16, Fig. 7), that attaches to the
interior wall wooden stud with screws. The Examiner relies on hole 27 of
Eittreim as disclosing “the second mounting plate surface having at least one
hole (27) through which a fastener is able to be placed to mount the
television monitor on the first side of the wall opposite the second side,” as
recited in claim 1. (Final Act. 3).
We note hole 27 is depicted in Eittreim’s Figure 9 with a
corresponding self-tapping screw 29. Thus, we find Appellant correctly
understands (App. Br. 13) the Examiner’s mapping of the contested
“television wall mount fastener” in the Final Office Action (3) to be to screw
29, corresponding to hole 27, as expressly depicted in Eittreim’s Figure 9.
After reviewing the evidence cited by the Examiner in the Final
Action (2—3), we agree with the Appellant:
The screw 29 of Eittreim actually goes into the wall stud not the
wall (as shown in Fig. 9 of Eittreim), so it certainly is not
"extending through the second mounting plate surface in such a
manner that the television monitor is able to be fastened to the
television mount fastener on the first side of the wall opposite
the second side" as recited in clam 1 (emphasis added). In fact,
as can be seen in Figure 2 of Eittreim, there is nothing in
Eittreim that goes through the wall 25, much less goes
through the wall 25 in such a manner that the television monitor
is able to be fastened to the opposite side of the wall 25.
However, in the Answer (3—4), the Examiner shifts his findings
regarding screw 29 of Figure 9 of Eittreim, and now clarifies:
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Application 14/506,174
[The] Examiner is referring to the fastener element of Fig. 7
shown through the cut out made in the transverse member 15'
which may or may not be, but presumable is, essentially the
same fastener element as threaded fastener 29 of Fig. 9. This
fastener element is a threaded fastener because Eittreim teaches
(col. 5, line Fig. 7) that threaded fasteners are used to support or
remove transverse members, transverse member 15' of Fig. 7
being a transverse member, threaded fasteners being
installable and removable. In addition, Fig. 3 shows at least a
portion (tfp) of such "threaded fastener" protruding past the
back side of large area panel 11. (emphasis added).
The Examiner annotates Eittreim’s Figure 3 accordingly (Ans. 4), as
reproduced below:
Annotated Fig. 3 (Eittrteim)
The Examiner’s annotated Figure 3 of Eittreim showing at least
a portion (tfp) of a “threaded fastener” protruding past the
backside of large area panel 11, is depicted above, as copied
from the Answer (4).
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Application 14/506,174
The Examiner further explains the basis for the anticipation rejection
of claim 1:
The "threaded fastener" of Eittreim is capable of being used to
mount an appropriately sized monitor (monitor size being
based on the load capacity of the fastener based on its material,
diameter, length, etc.) when the combined total thickness of the
second mounting plate and wall are no greater than the
appropriate thickness recommended for using a length of
threaded fastener such as the "threaded fastener". None of these
factors important in determining whether a particular threaded
fastener is suitable for a given application of the threshed
fastener have been disclosed, and in fact, neither the monitor
nor the wall are positively recited.
(Ans. 4—5) (emphasis added).
Although features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997). Regarding such structures, our reviewing
court further guides:
[Ujnless a reference discloses within the four
comers of the document not only all of the
limitations claimed but also all of the limitations
arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior
invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.
NetMoneyIN, Inc. v. VeriSign, 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added).
Apply this reasoning here, and for essentially the same reasons argued
by Appellant in the Briefs, we find no corresponding anticipating stmcture
in Eittreim that discloses Appellant’s claimed arrangement (claim 1). In
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Application 14/506,174
particular, we find the Examiner has not identified a particular fastener in
either Eittreim’s Figure 7 or 9 (or other figure) that fastens the “television
monitor” to a “television mount fastener on the first side of the wall opposite
the second side,” within the meaning of claim 1, under a broad but
reasonable interpretation. Merely placing a television (TV) monitor on a
wall-mounted shelf 15 (Eittreim, Fig. 1) does not necessarily require using a
fastener, because gravity would hold the TV monitor to Eittreim’s shelf. 2
Moreover, Eittreim is silent regarding any mention of a “television
monitor wall mount,” much less a “television monitor,” as recited in claim 1.
Although the Examiner broadly construes the “television monitor wall
mount” recited in the preamble of claim 1 as a statement of intended use for
a generic wall mount (Ans. 5), Appellant emphasizes that the preamble
structural element “‘television monitor wall mount’ is used many times in
the body of claim 1.” (App. Br. 3) (emphasis added).3
2 “In relying upon the theory of inherency, the Examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990) (emphasis in original). “Inherency ... may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999).
3 “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.” Eaton Corp. v. Rockwell Intern.
Corp., 323 F.3d 1332, 1339 (2003) (citing e.g., Electro Sci. Indus, v.
Dynamic Details, Inc., 307 F.3d 1343, 1348 (Fed. Cir. 2002)).
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See also Reply Brief (3), depicting the pertinent screw fasteners from
Eittreim’s Figures 7 and 9, as reproduced below:
After reviewing the evidence {id.), we find Eittreim’s screw fasteners
(Figs. 7, 9) merely secure “the ends of the transverse members (shelves 15)
not only to the large area panel, but also to the adjacent large area surfaces
of the wall supports in order to insure sufficient rigidity to support the
storage of heavy objects.” (Eittreim, col. 4,11. 57—61).
Although Eittreim’s shelves 15 (Figure 1) appear capable of
supporting the weight of a small TV monitor, on this record, we find a
preponderance of the evidence supports Appellant’s closing contention in
the Reply Brief (3):
it is clear neither of the screws above are "extending through
the second mounting plate surface in such a manner that the
television monitor is able to be fastened to the television mount
fastener on the first side of the wall opposite the second side" as
recited in clam 1 (emphasis added). Eittreim simply does not
disclose this feature and one of ordinary skill in the art could
not reasonably think it does.
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Application 14/506,174
Regarding the Examiner finding that “fastener element of Fig. 7 [as]
shown through the cut out made in the transverse member 15’ which may or
may not be, but presumable is, essentially the same fastener element as
threaded fastener 29 of Fig. 9” (Ans. 3, emphasis added), we note that
“[ijnherency ... may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” Robertson, 169 F.3d at 745.
Further, we find the Examiner’s unequivocal statement that “neither
the monitor nor the wall are positively recited” (in claim 1) misses the mark,
even if these elements (i.e., the “television monitor” and the “first side of the
wall opposite the second side” — claim 1) are not an integral part of the
“television monitor wall mount” apparatus, as recited in claim 1. The
Examiner’s has not shown these positively recited structural elements are
arranged as claimed, in Eittreim. (Ans. 4—5). Simply put, we find Eittreim’s
open wall storage system (with shelves 15, Fig. 1) does not reasonably
disclose a “television monitor wall mount,” as structurally claimed by
Appellant, under the rigorous requirements of anticipation, because we
conclude the Examiner’s overly broad claim construction is unreasonable.
As recently emphasized by our reviewing court:
Even when giving claim terms their broadest reasonable
interpretation, the Board cannot construe the claims “so broadly
that its constructions are unreasonable under general claim
construction principles.” Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015) (emphasis in original).
“[T]he protocol of giving claims their broadest reasonable
interpretation ... does not include giving claims a legally
incorrect interpretation” “divorced from the specification and
the record evidence.” Id. (citations and internal quotation marks
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Application 14/506,174
omitted); see PPC Broadband, Inc. v. Corning Optical
Commc'ns RF, LLC, 815 F.3d 747, 751-53 (Fed. Cir. 2016).
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is
not whether the specification proscribes or precludes some
broad reading of the claim term adopted by the examiner.
And it is not simply an interpretation that is not inconsistent
with the specification. It is an interpretation that
corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that
is “consistent with the specification.” In re Morris, 111
F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal
quotation marks omitted); see also In re Suitco Surface,
603 F.3d 1255, 1259-60 (Fed. Cir. 2010)
In re Smith Int% Inc., No. 2016-2303, 2017 WL 4247407, at *5 (Fed.
Cir. Sept. 26, 2017).
Applying this guidance here, we are constrained on this record to
reverse the Examiner’s anticipation rejection of all claims on appeal.
Accordingly, for essentially the same reasons argued by Appellant (App. Br.
17; Reply Br. 1—3), as discussed above, we reverse the Examiner’s
anticipation rejection of sole independent claim 1 over Eittreim. For the
same reasons, we also reverse the Examiner’s anticipation rejection over
Eittreim of each dependent claim on appeal.
DECISION
We reverse the Examiner’s decision rejecting claims 1—9 and 14—17
under 35 U.S.C. § 102(b).
REVERSED
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