David J. Schram et al.Download PDFPatent Trials and Appeals BoardOct 30, 201914104896 - (R) (P.T.A.B. Oct. 30, 2019) Copy Citation 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. 14/104,896 12/12/2013 David J. Schram J-6004 5509 28165 7590 10/30/2019 S.C. JOHNSON & SON, INC. 1525 HOWE STREET RACINE, WI 53403-2236 EXAMINER WHITAKER, ANDREW B ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 10/30/2019 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): F074168@scj.com mjzolnow@scj.com selechne@scj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID J. SCHRAM, COURTNEY F. KOHN, SHAINA ASHARE, JESSIE MALDONADO, DAVID W. RIESKE, and LUTANIN RASAVONG ____________________ Appeal 2018-005719 Application 14/104,896 Technology Center 3600 ____________________ Before JOSEPH L. DIXON, MARC S. HOFF, and BETH Z. SHAW, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2018-005719 Application 14/104,896 2 Appellant1 requests rehearing of the Decision entered September 4, 2019. In the Decision, we affirmed the Examiner’s rejections of claims 1– 13 and 21–27 under 35 U.S.C. § 103. A request for rehearing “must state with particularity the points [of law or fact] believed to have been misapprehended or overlooked by the Board,” and must comply with 37 C.F.R. § 41.52(a)(1). Appellant’s Request for Rehearing is limited to whether our Decision overlooked or misapprehended certain points identified by Appellant regarding dependent claim 22. (Req. Reh’g 1–4). The claims are directed to an accurate product placement, e.g., on shelves at a point of sale. In particular, this disclosure relates to repeatable, successful, and accurate product placement using symbols rather than text or scannable codes. (Spec. ¶¶ 1, 14). We set forth the language of independent claim 21 and dependent claim 22 below to show the scope of claim 22 as it relates to independent claim 21. Claims 21 and 22, reproduced below, are illustrative of the claimed subject matter: 21. Packaging for a particular product, the packaging comprising: a product package; and a first placement guidance symbol disposed on the product package, the first placement guidance symbol comprising a first non-textual icon configured to specifically correlate to the particular product, without: 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as S.C. Johnson & Son, Inc. (App. Br. 2). Appeal 2018-005719 Application 14/104,896 3 reliance on a textual element; and reliance on a scannable code; the first placement guidance symbol visually adapted to guide stocking of the particular product to a target placement location, when:2 the target placement location includes a proximately- placed label, the proximately placed label including a second placement guidance symbol comprising a second non-textual icon also configured to specifically correlating to the particular product, without: reliance on a textual element; and reliance on a scannable code. 22. The packaging of claim 21, where the first placement guidance symbol further includes electronic circuitry configured to emit a visual signal, an audio signal or both.3 2 “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. See also Decision 11–13 “Additional Insights” discussion of intended use and scope of claim 21 3 We note that Appellant did not provide any Summary of the Claimed Subject Matter with respect to dependent claim 22. (See App. Br. 5). We find support in the Specification in paragraphs 19 and 31 for an “electronic circuit.” (Spec. ¶ 19 “an electronic chip that guides placement of a product through electronic recognition or by emitting visual or audio indicators.”) Additionally, we note that Appellant’s late presentation of independent claim 21 as a “packaging” claim to replace the method of multi- way correlation of symbols, which was not elected in response to the restriction requirement, mailed October 3, 2016, appears to reformulate the Appeal 2018-005719 Application 14/104,896 4 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Zimmer et al. US 2009/0008271 A1 Jan. 8, 2009 Nakamura US 2010/0138322 A1 June 3, 2010 Hurme et al. US 2012/0041887 Al Feb. 16, 2012 Desmarais et al. US 2015/0088701 A1 Mar. 26, 2015 REJECTIONS The Examiner made the following rejections: Claims 1–13, 21, and 23–26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Zimmer further in view of Desmarais. Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable over Zimmer and Desmarais further in view of Nakamura. Claim 27 stands rejected under 35 U.S.C. § 103 as being unpatentable over Zimmer and Desmarais further in view of Hurme. ANALYSIS Appellant contends that we overlooked or misapprehended the sections of the Appeal Brief and Reply Brief regarding dependent claim 22. (Req. Reh’g 2–4). At the outset, we note that Appellant contends, in the Appeal Brief, that “Appellant submits claims 2-7, 9-13, and 22-27, claims which depend either directly or indirectly from claims 1, 8, and 21, are also withdrawn/method claim 14. We leave it to the Examiner to further consider the scope of the claim 21 in any further prosecution. Appeal 2018-005719 Application 14/104,896 5 patentable over the cited references for at least the same reasons presented above for claims 1, 8, and 21.” (App. Br. 14) (emphasis added). As a result, we grouped claim 22 as falling with its respective dependent claim 21. (See 37 C.F.R. § 41.37(c)(1)(iv)). Appellant’s Request for Rehearing generally repeats the arguments set forth in the Appeal Brief and Reply Brief. We agree with Appellant that we overlooked Appellant’s separate argument for patentability of dependent claim 22, and we modify our Decision to not group dependent claim 22 with dependent claims 9–13 and 23–27, which fall with their respective independent claims. Therefore, we further address Appellant’s separate arguments presented in the Appeal Brief and Reply Brief regarding dependent claim 22 below. In the rejection of independent claim 21, the Examiner made a persuasive showing of a first and second guidance symbols based upon the combination of Zimmer and Desmarais. For dependent claim 22, the Examiner merely relied upon Nakamura to teach the well-known use of an electronic circuit to generate and emit a visual signal. The Examiner proffers a simple rearrangement of the location of the electronic circuit from the shelf to the product packaging. (Ans. 7). Although the Examiner additionally discusses nonfunctional descriptive material with respect to dependent claim 22, we cannot agree with the Examiner that the electronic circuit would constitute non-functional descriptive material, but we agree with the Examiner that Nakamura teaches the use of an electronic circuit to generate guidance symbols. We further agree with the Examiner that the first and second placement guidance symbols are nonfunctional descriptive material, as we discussed in the Decision. (See Dec. 10 “Additional Appeal 2018-005719 Application 14/104,896 6 Insights”). Therefore, Appellant’s argument is not persuasive of error in the Examiner’s factual findings or conclusion of obviousness of dependent claim 22. We note that independent claim 21 is directed to “packaging” for a particular product and further limits of the “packaging.” We further note that the “first placement guidance symbol” and the “packaging” are the only two limiting elements of the claimed “packaging” and the remainder of the claim after “when” does not further limit the “packaging.” (See also Dec. 11–13 “Additional Insights”). In the Appeal Brief, Appellant contends that Nakamura teaches electronic shelf labels disposed on the shelf and not on the product packaging, and contends that nowhere does Nakamura describe emitting audio or visual signals. (App. Br. 15). In light of Appellant’s arguments in the Appeal Brief, the Examiner modifies the thrust of the rejection of dependent claim 22 in the Examiner’s Answer. (See Final Act. 9–10). The Examiner clarified the basis of the rejection, which essentially modified the thrust of the application of Nakamura to the claimed invention as then appreciated by the Examiner with the late presentation of claims 21–27 (after the Restriction Requirement, Election, and First Office Action). (Ans. 6–7). In the Examiner’s Answer, the Examiner maintains that Nakamura teaches the use of electronic labels and that the disposition or orderly arrangement of the labels is nonfunctional descriptive material. (Ans. 7). Additionally, the Examiner maintains that: it is old and well-known to affix electronic labels or tags to products for security, or coupons or even RFID labels. Thus, if the prior art suggests electronic circuitry on or within label, Appeal 2018-005719 Application 14/104,896 7 merely choosing a location to place the label would be presumed to be well within the level of ordinary skill in the art at the time the invention was effectively filed. The difference between the prior art and the claimed invention is simply a rearrangement of nonfunctional descriptive material. (Ans. 7). In the Reply Brief, Appellant contends that the claimed feature “first placement guidance symbol is disposed on the product package” must be considered when determining nonobviousness in view of prior art. (Reply Br. 8). We agree with Appellant that the location of the first placement guidance symbol disposed on the product package must be considered when determining nonobviousness, and we found that the base combination of Zimmer and Desmarais, with respect to independent claims 1 and 21, taught and fairly suggested the first placement guidance symbol disposed on the product package. (Dec. 3–4 discussing claim 1 with respect to Desmarais ¶ 100). Therefore, Appellant’s argument is not persuasive of error in the Examiner’s factual findings or conclusion of obviousness of dependent claim 22. We further note that independent claim 21 recites a first placement guidance symbol on the package. We note that the Examiner has relied upon the combination of Zimmer and Desmarais to teach and suggest the limitations of independent claim 21, which we affirmed in the Decision. (Dec. 8–9; see also Dec. 4–8 discussing of affirmance of independent claim 1 regarding the first placement guidance symbol on packaging). We note that dependent claim 22 does not specifically require “first placement guidance symbol is disposed on the product package,” and the Appeal 2018-005719 Application 14/104,896 8 Examiner did not rely upon Nakamura to teach or suggest this limitation, as evidenced by the rejection of independent claim 21 not relying upon Nakamura. As discussed above, the Examiner relied upon the combination of Zimmer and Desmarais to teach and suggest the combination of the placement guidance symbols, and the Examiner additionally relied upon Nakamura to teach the use of an electronic circuit to generate the placement guidance symbol. (See Ans. 4 discussing combination of Zimmer and Desmarais; Ans. 6–7 discussing Nakamura and Nakamura in combination with Zimmer and Desmarais.). Therefore, Appellant’s argument is not persuasive of error in the Examiner’s factual findings or conclusion of obviousness of dependent claim 22. The Examiner’s findings are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” because the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. Appellant does not present adequate evidence that the resulting arrangements were “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). Appellant has not demonstrated error in the rejection, but has instead alleged deficiencies in the references, taken one at a time, as if the rejection were for lack of novelty. However, nonobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d Appeal 2018-005719 Application 14/104,896 9 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Appellant also argues that: the Answer asserts that it is old and well-known to affix electronic labels or tags to products for security, or coupons or even RFID labels. Appellant notes that none of the allegedly well-known tags or labels include a “placement guidance symbol” as recited by the claims. Further, the Answer cites no evidence of record to support this contention, nor has the Office offered up new grounds of rejection to properly afford Appellant the chance to respond on the merits. (Reply Br. 8). The Examiner maintains that the orderly arrangement of the placement guidance symbol is the placement of nonfunctional descriptive material which is “simply a rearrangement of nonfunctional descriptive material.” (Ans. 7). We agree with the Examiner that the location or position of the placement guidance symbol does not change the function of the placement guidance symbol or the packaging. (See In re Japikse, 181 F.2d 1019 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice)). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill Appeal 2018-005719 Application 14/104,896 10 and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Although we agree with Appellant that the Examiner has not provided any additional extrinsic evidence regarding the statement that it was “old and well-known to affix electronic labels or tags to products or coupons or even RFID labels,” we agree with the Examiner that Nakamura clearly teaches and discloses a guidance symbol that includes “electronic circuitry configured to emit a visual signal.” (Nakamura ¶¶ 52 “the display 51 is a dot matrix display unit, it can display not only numbers representing the prices of the products 6 but also characters, symbols and figures,” and 53 “electronic shelf label 5 has a compact battery 56 and a control unit 57.”) Therefore, Nakamura teaches electronic circuitry that emits a visual signal, as required by the alternative language of dependent claim 22. Consequently, Appellant’s argument does not show error in the Examiner’s factual findings or conclusion of obviousness of dependent claim 22. CONCLUSION Although we agree with Appellant that we overlooked Appellant’s separate argument for patentability of dependent claim 22, we have considered Appellant’s arguments, but Appellant’s arguments do not show error in the Examiner’s obviousness rejection of dependent claim 22. Therefore, we deny Appellant’s Request for Rehearing to modify the outcome of our decision. Because this decision on the Request for Rehearing is a first decision on the merits of Appellant’s separate arguments for patentability with respect to dependent claim 22, a second request for Appeal 2018-005719 Application 14/104,896 11 rehearing limited to addressing the Board’s conclusions with respect to claim 22 would be permitted. DECISION For the above reasons, we modify our Decision to not group dependent claim 22 with affirmed claims 1–13, 21, and 23–27 as set forth in the Decision, and we additionally sustain the Examiner’s obviousness rejection of dependent claim 22 as set forth above. Outcome of Decision on Rehearing: Claims 35 U.S.C. § References/ Basis Denied Granted 1–13, 21, and 23–26 103 Zimmer and Desmarais 1–13, 21, and 23–26 22 103 Zimmer, Desmarais, and Nakamura 22 27 103 Zimmer, Desmarais, and Hurme 27 Overall outcome 1–13 and 21–27 Appeal 2018-005719 Application 14/104,896 12 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–13, 21, and 23–26 103 Zimmer and Desmarais 1–13, 21, and 23–26 22 103 Zimmer, Desmarais, and Nakamura 22 27 103 Zimmer, Desmarais, and Hurme 27 Overall outcome 1–13 and 21–27 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2017). DENIED Copy with citationCopy as parenthetical citation