Ex Parte Travez et al - Page 5



                Appeal No. 2006-1325                                                                          
                Application No. 10/163,610                                                                    

           1          A fourth issue is whether Kelley’s wiring “[extends] through said                       
           2    frame” as called for in claim 27 notwithstanding that the wiring must be                      
           3    connected to energy distribution block 100 (Br. 10).                                          
           4          A fifth issue is whether Kelley discloses an insulation panel attached                  
           5    to the frame “substantially opposite said replaceable façade” as called for in                
           6    claim 27 (Br. 10-11).                                                                         
           7          A sixth issue is whether claim 32 is a method claim or an article                       
           8    claim.  Related to that issue is the significance of the preamble language “of                
           9    modifying a hotel room, resort, hospital, apartment building or residential                   
          10    structure” in claim 32.                                                                       
          11          A seventh issue is whether the combined teachings of Kelley and                         
          12    Swensson would have suggested forming the work space management                               
          13    system of Kelley with either “at least one integrally molded frame,” as                       
          14    recited in claims 7, 8, and 35, or “at least one molded unitary structure” as                 
          15    recited in claims 19 and 25 (Br. 19-22).                                                      
          16                                                                                                  
          17                               FINDINGS OF FACT                                                   
          18          Appellants define the term “preinstall” as encompassing “not only the                   
          19    attachment of a separate amenity to the wall 12 but also includes integral                    
          20    fabrication of an amenity directly to the wall 12 itself” (Specification 7).                  
          21          Appellants’ Specification states “the utilities 48 are preinstalled to the              
          22    wall 12 such that they are prewired, preplumbed, etc.” (Specification 10).                    

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