Ex parte Herst et al.

Board of Patent Appeals and Interferences

Sep 16, 1998

08177399 (B.P.A.I. Sep. 16, 1998)

Application for patent filed January 4, 1994. According to1
appellants, this application is a continuation of Application 07/714,145,
filed June 11, 1991, now Patent No. 5,276,597 issued January 4, 1994.
1
Paper No. 17
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DOUGLAS J. HERST
and UTKAN SALMAN
______________
Appeal No. 96-3201
Application 08/177,3991
_______________
ON BRIEF
_______________
Before URYNOWICZ, PATE and MARTIN, Administrative Patent
Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
13, 18, 20 and 22-26. Claims 14-17, 19 and 21 have been
indicated as containing allowable subject matter and stand
Appeal No. 96-3201
Application 08/177,399
2
objected to. These are the only claims remaining in the
application.
The claimed invention is directed to a lighting system
for use with a modular furniture system. Modular furniture
systems often are built around various components such as
desktop surfaces, floor surfaces, partition walls, shelves and
binder bins. The purpose of the invention is to provide
changeable fixture heads that can be mounted on a plurality of
different height mounting structures. These mounting
structures are then attached to the various surfaces of the
modular furniture. When the correct mounting structures are
used, all the mountable fixtures heads will lie in the same
ambient lighting mounting plane.
Reference is made to claim 1, reproduced below, which is
further illustrative of appellants’ claimed subject matter.
1. A configurable furniture integrated ambient lighting
system for a furniture system having different height support
surfaces associated therewith, said lighting system comprising
a plurality of mountable fixture heads for indirect
lighting, and
a plurality of different positionable mounting structures
for mounting said plurality of fixture heads from the
different support surfaces associated with said furniture
Appeal No. 96-3201
Application 08/177,399
With respect to line 8 of claim 1, we note that this line requires the2
fixture heads to be detachably mountable and interchangeable with said
mounting structures. In fact, the fixture heads are not interchangeable with
the mounting structures, but are interchangeable on said mounting structures.
This claim language should be corrected in any further prosecution before the
examiner.
Our understanding of the Sill Catalog reference is by way of an3
English language translation, a copy of which is attached to our decision.
3
system so that said fixture heads are mounted at substantially
the same predetermined mounting height, said predetermined
mounting height defining an ambient lighting mounting plane,
said fixture heads being detachably mountable to and
interchangeable with said mounting structures such that said
fixture heads can interchangeably be positioned and
repositioned within said ambient lighting mount plane. 2
The references of record relied upon as evidence of
obviousness are:
Crider 2,732,487 Jan. 24,
1956
Martin 4,228,489 Oct. 14,
1980
Kao et al. (Kao) 5,091,834 Feb. 25,
1992
Sill Catalog, “Indirektstrahler”, April/May 1990 (Translation
attached for pages 12-14).3
For purposes of this appeal, appellants have divided the
claims into three groups; claims 1-13 will stand or fall with
representative claim 1; claims 18, 20 and 22 will stand or
Appeal No. 96-3201
Application 08/177,399
4
fall with representative claim 22; and claims 23-26 will stand
or fall with representative claim 23.
REJECTIONS
The examiner has rejected claims 1-7, 23 and 24 under
35 U.S.C. § 103 as unpatentable over the lighting fixture
system disclosed in the Sill catalog.
The examiner has rejected claims 1-10, 12, 13, 23 and 24
under 35 U.S.C. § 103 as unpatentable over Martin.
The examiner has rejected claims 1-13, 23 and 24 under
35 U.S.C. § 103 as unpatentable over Kao.
The examiner has rejected claims 1-13, 18, 20 and 23-26
under 35 U.S.C. § 103 as unpatentable over Crider.
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellants and the examiner. As
a result of this review, we have determined that the applied
prior art of references of Sill, Martin and Crider do not
establish prima facie cases of obviousness with respect to the
respective claims rejected thereunder. Therefore, these
rejections will be reversed. However, the prior art patent to
Kao does establish a prima facie case of obviousness with
Appeal No. 96-3201
Application 08/177,399
5
respect to claims 1-13, 23 and 24, which prima facie case has
not been rebutted by additional evidence from the appellants.
Therefore the rejection of claims 1-13, 23 and 24 under 35
U.S.C. § 103 will be affirmed.
With respect to the Sill reference, we are in agreement
with the appellants that the lighting fixture components of
Sill are not disclosed as being interchangeable with the Sill
mounting structures. We note that the fixture shown on pages
14 and 15 show different mountable fixture heads on supports
of varying lengths that can be used on a table or a floor.
However, these fixture heads are not disclosed as
interchangeable on the mounts. For this reason, the Sill
catalog does not establish a prima facie case of obviousness
with respect to the claims rejected thereunder.
With respect to the disclosures of Crider and Martin, we
agree with the examiner and appellants that one or more lamps
can be attached to the structure of Martin at different
heights. However, we agree with the appellants that Martin
does not dis-close interchangeable but different supporting
structures that are interchangeably related to a plurality of
fixture heads. Accordingly, Martin does not disclose evidence
Appeal No. 96-3201
Application 08/177,399
6
that would establish a prima facie case of obviousness with
respect to the claims rejected thereunder. With respect to
Crider, which discloses a task light, there is no disclosure
of providing a plurality of fixture heads and a plurality of
positionable mounting structures which are fully
interchangeable with each other. Crider suffers from the
same shortcomings as Martin,
and for this reason does not establish a prima facie case of
obviousness with respect to the claims rejected thereunder.
Turning to the Kao disclosure, we note that Kao discloses
a first embodiment in Figure 1 which shows a floor lamp base
which can receive fixture mountable head 5 or 5'. Figure 5 of
Kao discloses a table lamp base which can receive the very
same alternative mounting heads 5 or 5'. Therefore, Kao
clearly
discloses a plurality of mountable fixture heads with fixture
head 5 shown in both Figure 1 and Figure 5 pointed upwardly
for indirect lighting. Kao further discloses a plurality of
different positionable mounting structures, one for the floor
and one for a table in Figures 1 and 5 respectively. Finally,
these fixture heads can be detachably mounted and are
Appeal No. 96-3201
Application 08/177,399
We note that appellants have included the floor as a different height4
support surface in a furniture system, although technically, the floor is the
structural element that the furniture system sits upon.
7
interchangeable with respect to the various mounting
structures. We further note that the language in the claims
directed to a furniture system are fully satisfied by Kao, and
the language with respect to “can be interchangeably
positioned,” as in the penultimate line of claim 1 is a mere
use limitation and is not accorded patentable weight.
Appellants argue that Kao requires a separate coupling
element not required by the present invention. However, the
presence of this coupling element is not precluded by the
claims on appeal. Finally, we disagree with appellants’
contention that Kao “does not teach to employ a plurality of
different fully inter-changeable mounting structures adapted
to different mounting environments of a furniture system.” In
fact, this is
what Kao expressly discloses with his table lamp 5 and his
floor lamp 1.4
While we note that the appellants and examiner have
Appeal No. 96-3201
Application 08/177,399
8
agreed that claims 25 and 26 stand or fall with claim 23, we
note that claims 25 and 26 have not been rejected under § 103
utilizing the Kao reference as evidence of obviousness.
Consequently, we will separate this grouping of claims and
hold that claims 25 and 26 will not fall with claim 23.
For the reasons given above, the rejection of claims 1-
13, 23 and 24 under 35 U.S.C. § 103 as unpatentable over Kao
is affirmed.
SUMMARY
The rejection of claims 1-13 and 23 and 24 as
unpatentable over Kao is sustained.
The rejection of claims 18, 20, 22, 25 and 26 is not
sustained.
Appeal No. 96-3201
Application 08/177,399
9
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
WILLIAM F. PATE, III ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN C. MARTIN )
Administrative Patent Judge )

Appeal No. 96-3201
Application 08/177,399
10
Donald L. Beeson
One Kaiser Plaza, Suite 2360
Oakland, CA 94612
WFP/cam