Ex Parte Underwood et al

Board of Patent Appeals and Interferences

Sep 27, 2010

11533206 (B.P.A.I. Sep. 27, 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.
11/533,206 09/19/2006 Robert A. Underwood KIM0502-06 4073
832 7590 09/28/2010
BAKER & DANIELS LLP
111 E. WAYNE STREET
SUITE 800
FORT WAYNE, IN 46802
EXAMINER
KATCHEVES, BASIL S
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
09/28/2010 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 ROBERT A. UNDERWOOD, KEITH E. METCALF,
RYAN A. HERBIG and DOUGLAS J. MITCHELL
____________

Appeal 2009-006791
Application 11/533,206
Technology Center 3600
____________

Before RICHARD E. SCHAFER, JAMESON LEE and
SALLY C. MEDLEY, Administrative Patent Judges.

MEDLEY, 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 2009-006791
Application 11/533,206

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STATEMENT OF THE CASE
Kimball International, Inc. (“Kimball”), the real party in interest,
seeks review under 35 U.S.C. § 134(a) of a Final Rejection of claims 17-23
and 40-52. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Disclosed Invention
Kimball’s invention is directed to an office space partition system that
includes a framework and at least one service tile. Abs; Spec. ¶¶ 0002,
0098.
Claim 17 is illustrative:
In combination:
a permanent wall including at least one track member
mounted thereon, said track member disposed horizontally and
defining a channel which opens horizontally outwardly of said
permanent wall; and
a partition system framework having at least one track
member mounted thereon, said track member disposed
horizontally and defining a channel which opens horizontally
outwardly of said framework, said framework attached to at
least one track member on said permanent wall, said at least one
track member on said permanent wall and said at least one track
member on said framework horizontally aligned with one
another.
The Examiner relies on the following prior art reference:
Vos et al. (“Vos”) 6,282,854 Sept . 04, 2001
Kimball appeals the rejection of claims 17-23, 40-44 and 46-50 under
35 U.S.C. § 102(b) as anticipated by Vos.
Kimball appeals the rejection of claims 45, 51 and 52 under
35 U.S.C. § 103(a) as unpatentable over Vos.
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ISSUES
Does Vos describe: (1) a permanent wall with a mounted track
member in combination with a partition system having a mounted track
member; (2) the upper and lower edges of a tile retained within vertically
oriented channels that face one another of a pair of vertically spaced
horizontal track members; and (3) a tile including a side panel slidable
between a retracted and extended position with respect to the tile to
selectively decrease and increase the effective width of the tile?
FINDINGS OF FACT
Kimball’s Specification
1. Kimball discloses a partition system free standing upon the floor
surface of an office space and not connected to the permanent walls of
the building in which the office space is disposed. Spec. ¶ 0098.
2. Kimball also discloses that the partition system may optionally be
connected to permanent walls of a building in which the partition
system is disposed. Spec. ¶ 0098.
Vos
3. Vos describes, referring to Vos’ figure 1 reproduced below [numbers
from figure 1 inserted], an office workspace definition system [10]
including a series of interconnected frames [14] which support one or
more tiles [16] to create walls within the workspace. Col. 8, l. 62-col.
9, l. 6.
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Vos’ figure 1 is below:

Figure 1 depicts a workspace definition system.
4. Vos describes, referring to Vos’ figure 9 reproduced below [numbers
from figure 9 inserted], the frames [14] include a top rail [52],
intermediate rail [54] and a foot rail [56] extending horizontally
between a pair of vertical rails [50]. Col. 11, l. 65 - col. 12, l. 21.
Vos’ figure 9 is below:

Figure 9 depicts a frame.
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5. Vos’ figures 42A-H show how two frames [14] of the workspace
definition system can be interconnected in a perpendicular fashion.
Col. 26, ll. 34-36.
6. Vos’ figures 43A-C and 44A-E show the interconnection of a frame
[14] with a prior art workspace definition system. Col. 27, ll. 18-56.
7. Vos describes, referring to Vos’ figure 9A reproduced below
[numbers from figure 9A inserted], that each of the top, intermediate
and foot rails [52], [54], [56] have an elongated wall [94] with a U-
shaped cross section defining an interior chamber [96] that serves as a
raceway for electrical and data conduit [40]. Col. 11, ll. 57-61.
Vos’ figure 9A is below:

Figure 9A depicts a cross-section of the elongate wall.
8. Each of the rails [52], [54], [56] include inwardly-extending hooks
[112] extending into the interior chamber [96], a bottom floor portion
[98] and a pair of spaced upstanding elongated longitudinal ribs [99].
Col. 11, ll. 62-64; col. 12, ll. 12-19.
9. Vos describes, referring to Vos’ figure 33E reproduced below
[numbers from figure 33E inserted], a raceway cover [34] for
mounting within a gap between several tiles [16] that are mounted to
the frames [14] that includes openings [36] that can be aligned with
electrical or data sockets mounted to the frame [14]. Col. 20, ll. 21-
23; col. 20, ll. 23-30.
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Vos’ figure 33E is below:

Figure 33E depicts a raceway cover.
10. The raceway cover [34] is secured to the frame by brackets (not
numbered) which mount the raceway cover [34] for slidable
movement between a closed position and an opened position, in which
electrical and data conduit [40] passing within one of the horizontal
rails [52], [54], [56] can be accessed. Col. 9, ll. 50-58; col. 21, ll. 61-
67.
11. Upper and lower vertical brackets [700], [702] are fastened to one of
the horizontal rails [52], [54], [56] of the frame [14] for receiving
electrical and data socket hardware. Col. 21, ll. 54-57.
12. The raceway cover [34] includes slidable receptacle covers [704]
disposed within longitudinal channels [706] on the raceway cover [34]
that cover the openings [36] for the electrical or data sockets. Col. 21,
ll. 57-61.
13. Vos describes, referring to Vos’ figure 40 reproduced below
[numbers from figure 40 inserted], a filler panel assembly [522]
including a frame [14], tiles [16], a bumper rail [520] and base tile
trim pieces [532] slidably secured to the bumper rail [520]. Col. 25,
ll. 31-65.
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Vos’ figure 40 is below:

Figure 40 depicts a filler panel assembly.
One with ordinary skill in the art
14. One with ordinary skill in the art at the time of the invention would
have understood that a “permanent wall” means a wall that forms and
supports a building structure.
15. One with ordinary skill in the art at the time of the invention would
have understood that a “permanent wall” does not include the walls
that partition the floors of a building into different office spaces or
workspaces since these walls can be erected and removed as needed
over the lifetime of the building.
ANALYSIS
As an initial matter, Kimball appeals the Examiner’s objection to the
drawings under 37 CFR § 1.83(a). App. 5-6. Drawing objections are not
subject to review by the Board upon appeal, but can be reviewed upon
petition to the Director. 35 U.S.C. § 134(a), 37 CFR §§ 1.113, 1.181.
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Claims 17-23
The Examiner and Kimball disagree about the meaning of “permanent
wall” recited in claim 17. Ans. 3, 6; App. Br. 7. The Examiner directs
attention to Vos’ figures depicting the interconnection of a frame [14] with
another frame [14] or with a prior art workspace definition system and finds
that Vos describes a framework partition system which includes a partition
wall that is inherently capable of being permanent and joined to another
partition wall. Ans. 3, 6, citing figs. 1, 2, 42e, 42f, 43a, 43b, 44c. The
Examiner finds that “permanent” is a functional limitation as it indicates the
intent for the wall to remain permanent and finds that Vos’ framework, e.g.,
partition wall, is permanent until it is removed. Ans. 3. Kimball argues that
the meaning given to “permanent wall” is inconsistent with how one with
ordinary skill in the art would understand it. App. Br. 7.
During prosecution, claim terms are given the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997). Claim terms are generally given their ordinary and customary
meaning which is the meaning that the term would have to a person of
ordinary skill in the art. In re Translogic Tech. Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313
(Fed. Cir. 2005) (en banc)). When the ordinary and customary meaning is
not immediately apparent, other sources may be looked at to show how those
with ordinary skill in the art would have understood the disputed claim
language to mean. Phillips, 415 F.3d at 1314. “Those sources include, ‘the
words of the claims themselves, the remainder of the specification, the
prosecution history and extrinsic evidence . . . .’” Id.
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Kimball’s Specification discloses a partition system: (1) that is free
standing upon the floor surface of an office space and not connected to the
permanent walls of the building in which the office space is disposed; and
(2) that may optionally be connected to permanent walls of a building in
which the partition system is disposed. Spec. ¶ 0098. Kimball argues that
one with ordinary skill in the art would understand that a “permanent wall”
is a structural limitation because every building necessarily has permanent
walls; and that permanent walls and partition systems are distinct structures.
App. Br. 7; Response to Final Rejection p. 7. In support of its arguments,
Kimball also directs attention to Vos’ description of a partition system for an
open workspace of an office environment, which is an open space
surrounded by the permanent walls of a building. App. Br. 6-7; Response to
Non-Final Rejection p. 7, citing Vos col. 8, ll. 62-64.
Based on Kimball’s Specification, the prosecution history and the
extrinsic evidence (i.e., Vos’ description), one with ordinary skill in the art
at the time of the invention would have understood that a “permanent wall”
means a wall that forms and supports a building structure and not a partition
wall as described in Vos. One with ordinary skill in the art at the time of the
invention would have understood that a “permanent wall” does not include
the walls that partition the floors of a building into different office spaces or
workspaces since these walls can be erected and removed as needed over the
lifetime of the building. With the aforementioned meaning of “permanent
wall” in mind, the Examiner does not direct us to, and we can not find,
where Vos describes a permanent wall of a building structure that includes a
mounted track disposed horizontally in combination with a partition
framework including a horizontally disposed mounted track member which
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is horizontally aligned with the track member mounted on the permanent
wall.
For all these reasons, we do not sustain the rejection of claims 17-23
as anticipated by Vos.
Claims 40-46
Independent claim 40 is representative and recites (disputed
limitations in italics): “a framework . . . a pair of vertically spaced horizontal
track members attached to said framework, said track members including
vertically-oriented channels facing one another; and at least one service tile
having upper and lower edges retained within said vertically oriented
channels between said track members . . . .”
The Examiner finds that Vos describes pairs of horizontal tracks [52],
[54], [56], [58] (i.e., top, intermediate, bottom and bumper rails) having
vertical channels. Ans. 4, citing Vos’ fig. 4. The Examiner further finds that
Vos’ figure 9A shows “channels where 96 is located, under curve 112, under
curve 112, adjacent to where both left and right 99 point . . . .” and finds that
the horizontal members have several channels pointing downward and
upward. Ans. 4, 6. Referring to Vos’ figure 9A below, reproduced with
added shading, we understand the Examiner to find the shaded portions to
correspond to the vertical channels.
Vos’ figure 9A with added shading is below:

Figure 9A depicts the cross-section of the top, intermediate or foot rail.
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Kimball argues that the channels defined by the ribs [99] and hooks
[112] on the vertical wall [94] of any individual rail [52], [54], [56] face
each other and do not retain the upper and lower edges of a tile
therebetween. Reply Br. 2. Kimball further argues that the channels and
hooks [112] of a respective pair of the rails [52], [54], [56] do not face one
another and cannot retain the upper and lower edges of a tile therebetween.
Reply Br. 2. Kimball argues that instead, Vos describes that the vertically-
open channels of horizontal rails [52], [54], [56] face in an upward direction.
App. Br. 8-9.
The Examiner does not direct us to, and we can not find, where Vos
describes a service tile having upper and lower edges retained within
vertically-oriented channels that face one another of a pair of vertically
spaced horizontal track members. Rather, Vos describes that each of the top,
intermediate and foot rails [52], [54], [56] have an elongated wall [94]
defining an interior chamber [96] with a bottom or floor portion [98] of the
wall [94] having a pair of spaced upstanding elongated longitudinal ribs
[99]. Col. 11, l. 57-col. 12, l. 19. Since each of Vos’ rails [52], [54], [56]
are arranged identically, the corresponding chambers [96] of a pair of Vos’
rails [52], [54], [56] do not face one another. Moreover, the interior
chambers [96] are described as serving as raceways for retaining the
electrical and data conduit [40], and do not retain the upper and lower edges
of a service tile there between. Col. 11, ll. 57-61.
For all these reasons, we do not sustain the rejection of claims 40-44
and 46 as anticipated by Vos. Claim 45 is ultimately dependent on claim 40.
For the same reasons, we do not sustain the rejection of claim 45 as obvious
over Vos.
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Claims 47-52
Independent claim 47 is representative and recites (disputed
limitations in italics): “a framework . . . at least one service tile . . .
including . . . at least one side panel slidable between a retracted position
and an extended position with respect to said service tile to thereby
selectively decrease and increase the effective width of said service tile.”
The Examiner finds that Vos describes service tiles [16] having
electrical and data outlets and a slidable panel [532], [520] for adjusting the
sizing of the tile. Ans. 4-5, citing figs. 12, 33E, 40. Kimball argues that
Vos’ vertical base tile trim pieces [532] are not a service tile attached to a
framework that includes a side panel slidable between a retracted position
and an extended position with respect to the service tile. App. Br. 9-10.
The Examiner does not direct us to, and we can not find, where Vos
describes that the base tile trim pieces [532] are slidable between a retracted
position and an extended position with respect to the filler bumper rail [520].
Nor does the Examiner explain how the base tile trim pieces [532] would
selectively decrease and increase the effective width of the filler bumper rail
[520] or tile [16]. Instead, Vos merely describes that the pairs of base tile
trim pieces [532] are slidably secured to the distal edges of the filler bump
rail [520]. Col. 25, ll. 40-49.
The Examiner alternatively finds that Vos describes “in figure 33 E
slidable mounts, electrical outlets and a panel, which may be construed as a
service tile which is slidable, retractable and extended, to adjust its length
from an open to a closed position.” Ans. 7, citing Vos col. 21, ll. 61-67. We
understand the Examiner to find that Vos’ raceway cover [34] (also referred
to as an access panel) corresponds to the claimed service tile. Kimball
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argues that Vos does not describe the disputed limitations but instead
describes a raceway cover [34] which is slidable between a closed and an
open position in which an electrical and data conduit [40] within the
framework [14] can be accessed. Reply Br. 2, citing Vos col. 21, ll. 57-58,
62-67, figs. 33D-E.
Vos describes, as shown in figure 33E, a raceway cover [34] that
includes openings [36] so that when the raceway cover is mounted to the
frame [14], the openings [36] can be aligned with electrical or data sockets
mounted to the frame [14]. Col. 20, ll. 23-30. Upper and lower vertical
brackets [700], [702] are fastened to one of the horizontal rails [52], [54],
[56] of the frame [14] for receiving electrical and data socket hardware. Col.
21, ll. 54-57; fig. 33E. The raceway cover [34] is secured to the frame [14]
by brackets (not numbered) which mount the raceway cover [34] for slidable
movement between an open and closed position. Col. 61, ll. 61-67. The
raceway cover [34] further includes slidable receptacle covers [704]
disposed within longitudinal channels [706] on the raceway cover [34] that
cover the openings [36] for the electrical or data sockets. Col. 21, ll. 57-61;
fig. 33E.
The Examiner does not direct us to, and we can not find, where Vos
describes that the raceway cover (i.e., service tile) has a side panel slidable
with respect to the raceway cover to selectively decrease and increase the
effective width of the raceway cover (i.e., service tile). Instead, Vos
describes that the raceway cover [34] itself is slidable with respect to the
frame [14] between an open and closed position which allows access to
electrical and data conduit [40] passing within one of the horizontal rails
[52], [54], [56] of the frame [14]. Col. 21, ll. 54-57; fig. 33E.
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To the extent that the Examiner finds that the slidable receptacle cover
[704] corresponds to the slidable side panel, the Examiner does not direct us
to, and we can not find, where Vos describes that the slidable receptacle
cover [704] selectively decreases and increases the effective width of the
raceway cover [34]. Instead, Vos describes that the openings [36] in the
raceway cover [34] for alignment with electrical or data sockets mounted to
the frame [14] are covered by the slidable receptacle covers [704]. Col. 20,
ll. 23-30; col. 21, ll. 57-61; fig. 33E.
For all these reasons, we do not sustain the rejections of claims 47-50
anticipated by Vos. Claims 51 and 52 are ultimately dependent on claim 47.
For the same reasons we do not sustain the rejection of claims 51 and 52 as
obvious over Vos.
ORDER
The rejection of claims 17-23, 40-44 and 46-50 under 35 U.S.C. §
102(b) as anticipated by Vos is reversed.
The rejection of claims 45, 51, and 52 under 35 U.S.C. § 103(a) as
unpatentable over Vos is reversed.
REVERSED

ack

BAKER & DANIELS LLP
111 E. WAYNE STREET
SUITE 800
FORT WAYNE, IN 46802