Ex Parte Whalen et al

Patent Trial and Appeal Board

Aug 19, 2016

12417902 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/417,902 0410312009
3017 7590 08/19/2016
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5THFLOOR
PROVIDENCE, RI 02903
FIRST NAMED INVENTOR
Kenneth J. Whalen
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.
W035 P02242-US1 7334
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3631
MAILDATE DELIVERY MODE
08/19/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH J. WHALEN and PAUL R. JONES
Appeal2014-008012
Application 12/417,902
Technology Center 3600
Before: CHARLES N. GREENHUT, LISA M. GUIJT,
and GORDON D. KINDER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-008012
Application 12/417,902
CLAIMED SUBJECT MATTER
The claims are directed to a flat screen television support system.
Claim 11, reproduced below, is illustrative of the claimed subject matter:
11. A flat screen television support system comprising, in
combination: a furniture piece having an upper surface, said
upper surface having a rear edge and a front edge spaced from
the rear edge, said furniture piece further having a back side
arranged in facing relation with a wall surface against which the
furniture piece is situated;
a flat screen television support device for supporting a flat
screen television above said upper surface of said furniture piece
comprising, a pair of panel brackets secured to a back of a flat
screen television, a flat screen television wall mounting plate
having a front side configured and arranged to receive mounting
hooks extending rearwardly from said panel brackets, said flat
screen television wall mounting plate further having a back side,
a vertical column having a lower portion arranged adjacent said
back side of said furniture piece and removably connected to
said back side of said furniture piece at a point above a lower
end thereof so as to prevent lateral, forward and rearward
movement of said vertical column, said vertical column further
having an upper portion extending upwardly above said upper
surface of said furniture piece, a cantilever arm extending from
said upper portion of said vertical column, and a screen
mounting member having one side secured to said cantilever arm
and a second side secured to said back side of said flat screen
television wall mounting plate,
wherein said flat screen television is supported above said
upper surface of said furniture piece at a position between said
rear edge and said front edge of said upper surface of said
furniture piece, said flat screen television facing forwardly and
being visible for viewing by a viewer facing a front side of said
furniture piece.
REJECTIONS
Claims 11-17 are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims of Whalen US
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Application 12/417,902
7,530,538 B2 (May 12, 2009) in view of Dozier US 2003/0201372 Al (Oct.
30, 2003) in further view of Friedemann US 1,915, 727 (June 27, 1933).
Final Act. 3.
Claims 11-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ligertwood US 7 ,261,261 B2 (Aug. 28, 2007) in view of
Friedemann 1,915, 727 in view of Dozier 2003/0201372 Al.
OPINION
Regarding the double-patenting rejection, Appellants state:
the Applicant will enter an appropriate terminal disclaimer upon
an indication of allowable subject matter. Accordingly, the
Applicant requests deferral of this rejection pending the
allowance of at least one claim
Reply Br. 2.
Accordingly, we summarily sustain the double-patenting rejection as
uncontested. 37 C.F.R. § 41.37(c)(iv); Hyatt v. Dudas, 551 F. 3d 1307, 1314
(Fed. Cir. 2008)("[T]he applicant can waive appeal of a ground of
rejection")
Turning to the prior-art rejection, we are mindful that it is not
necessary for the prior art to serve the same purpose as that disclosed in
Appellants' Specification in order to support the conclusion that the claimed
subject matter would have been obvious. See Appeal Br. 14; In re Lintner,
458 F.2d 1013, 1016 (CCPA 1972); see also KSR Int'!. v. Teleflex, 550 U.S.
398, 419 (2007) ("[N]either the particular motivation nor the avowed
purpose of the [Appellants] controls" in an obviousness analysis.).
Nevertheless, the Federal Circuit has stated that "rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
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Application 12/417,902
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int 'l. v. Teleflex, 550 U.S. 398,
418 (2007). Here, the Examiner proposes to incorporate a "wall mounting
plate" as required by each independent claim before us, for the purpose of
"allowing the flat screen to be positioned at a tilted angle for the user."
Final Act. 8. The Examiner does not articulate any reasoning with rational
underpinnings as to why one would choose to incorporate a "wall mounting
plate" into the freestanding device of Ligertwoord for this purpose. The
objective of allowing tilt could be achieved without, and seems unrelated to,
a plate designed for the particular purpose of mounting on a wall. As, in the
record before us, there is no reasoning with some rational underpinning
articulated by the Examiner for employing a "wall mounting plate"
specifically, we must conclude that the Examiner improperly relied on
hindsight to reconstruct the claimed invention. Accordingly, we do not
sustain the Examiner's rejection on the basis set forth by the Examiner.
DECISION
The Examiner's double-patenting rejection is summarily sustained as
uncontested and the Examiner's prior-art rejection is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED 1
1 "The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
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claim, except as to any ground specifically reversed." 37 C.F.R.
§ 41.50(a)(l)
5