Ex Parte Crouchley

Patent Trial and Appeal Board

Mar 27, 2013

11117019 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT G. CROUCHLEY
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Appeal 2011-001175
Application 11/117,019
Technology Center 3600
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Before: GAY ANN SPAHN, JOHN W. MORRISON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
11 and 13-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
The claims are directed to a self-service display. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A shoe display for permitting a customer to sample and
purchase shoes, comprising:
a stand having an upper part and a lower part;
a try-on shoe;
a cord having a stand end connected to said lower part
and a shoe end connected to said try-on shoe;
a plurality of bags removably attached to said upper part;
and
each of said plurality of bags having a left shoe and a
right shoe;
wherein the cord extends from said lower part so as to
allow the customer to sample said try-on shoe;
wherein said cord facilitates placement of said try-on
shoe proximate to said lower part after the customer removes
said try-on shoe; and
wherein the customer selects one of said plurality of bags
based on a color and a size of said left and right shoes.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Berk
Hummel
Davet
US 3,229,819
US 5,414,975
US 5,685,436
Jan. 18, 1966
May 16, 1995
Nov. 11, 1997
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Cagner US 6,484,889 B1 Nov. 26, 2002
Lechanoine US 2003/0066766 A1 Apr. 10, 2003

REJECTIONS
Claims 1-3, 10, 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Berk and Davet.
Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Berk, Davet and Cagner.
Claims 7-9 and 15-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Berk, Davet, and Lechanoine.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Berk, Davet, and Hummel.

ANALYSIS
Addressing claim 1, the Examiner finds that Berk discloses
substantially all of the elements of claim 1, “but does not disclose a
retractable cord or a tamper-proof bag.” Ans. 3. The Examiner then
concludes that
[i]t would have been obvious for a person of ordinary skill in
the art at the time of the applicant’s invention to modify Berk
by utilizing a retractable cord, as disclosed by Davet, for the
purpose of allowing merchandise to be removed from a display
for close examination and handling.
Ans. 3-4.
Appellant challenges the combination arguing that “Berk explicitly
teaches away from providing shoes with retractable cords,” and that
“because the automatically retractable cord design of Davet would render
the try-on shoe design taught by Berk unsatisfactory for its intended
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purpose, there is no suggestion or motivation to modify Berk based on
teachings of Davet.” App. Br. 9.
First, we address Appellant’s teaching away argument. A reference
teaches away from the subject matter of a claim only if “a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Prior art does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits or otherwise discourages the solution
claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In this case Appellant argues that Berk “specifically teach[es] that the
try-on shoes are ‘fixed upon the upper surface, as by cementing for example’
of the shoe mounting panel.” App. Br. 8; see also Reply Br. 3. Appellant
concludes that this teaching would “strongly discourage” one of ordinary
skill in the art from modifying Berk to include the retractable cord of Davet.
Id. The Examiner counters that “Berk discloses fixing the try-on shoes to
the lower part and gives an example of how to attach the try-on shoes ‘as by
cement for example’ (column 2 lines 48-49), [but] Berk does not disclose
the try-on shoes must be immovable, permanently fixed, or only cemented to
the lower part.” Ans. 6. Appellant offers no evidence that Berk would
“criticize, discredit or otherwise discourage” the use of a retractable cord of
Davet. The Examiner indicates that “Berk discloses fixing the try-on shoes
to the lower part and Davet discloses a retractable cord that fixes
merchandise to a display (lower part). Id. The Examiner’s proposed
modification is nothing more than the simple substitution of one known
fixing means for another to perform the same function, and we are not
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persuaded by Appellant’s argument. See KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 416-17 (2007). Accordingly, we are not persuaded that Berk
teaches away from the use of the retractable cord of Davet.
Second, we address Appellant’s “renders the device unsuitable for its
intended purpose” argument. Appellant argues that the combination of Berk
and Davet
might create a potential safety hazard because
customers might trip and fall while trying on the
shoes if the cord retracts automatically while a
customer is walking with a try-on shoe on.
Additionally, because the try-on shoes will be
brought to a considerable distance away from the
display while being tried on by a customer, when
such shoe automatically retracts back to the stand,
it is likely to get tangled with other shoes or cords,
or other customers standing near the stand. This is
particularly true of a situation where multiple try-
on shoes are connected by multiple cords to the
same stand, so that the possibility of tangling the
cords would have seemed a virtual certainty to one
of ordinary skill in the art.
App Br. 8-9. While Appellant does identify some potential downsides to the
combination, Appellant does not identify how the combination would
change the basic operation of Berk. The proposed combination would still
function as disclosed in Berk, allowing shoppers to try on shoes without
removing them from the display stand. The addition of the retractable cord
of Davet would allow the enhanced functionality of removing the shoe from
the stand without altering the operation of the stand when the shoes are
positioned on the stand. Therefore, we do not find that the Examiner’s
combination of Berk and Davet renders Berk unsuitable for its intended
purpose.
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Third, Appellant argues the lack of motivation to combine the
references. Appellant’s argument appears to be holding the Examiner to a
teaching, suggestion, or motivation (TSM) standard; such a standard is not
required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (“We
begin by rejecting [TSM]”). The proper inquiry is whether the Examiner has
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to combine
Berk and Davet. Id. at 418 (rejecting the rigid requirement of a teaching,
suggestion or motivation to combine known elements in order to show
obviousness, but nonetheless making clear that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006))).
In this case, the Examiner articulates the reason to combine the
references for the purpose of “allowing merchandise to be removed from a
display for close examination and handling.” Ans. 4. This articulation
provides a rational underpinning for the combination of Berk and Davet, and
is not persuasively challenged by Appellant. For the foregoing reasons, we
find no error in the Examiner’s combination of Berk and Davet.
Next, Appellant argues that “Davet clearly fails to disclose several
important elements of the present invention. Specifically, there is no
teaching or suggestion of a bag containing a left and a right shoe. Further,
Davet does not disclose try-on shoes attached to the display.” App. Br. 7.
However, Appellant ignores the Examiner’s finding that these elements are
taught by Berk, not Davet. See Ans. 3. Appellant’s argument attacks Davet
individually when the rejection as articulated by the Examiner is based on a
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combination of Berk and Davet. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Therefore, we find no deficiency in the
Examiner’s combination of Berk and Davet. Thus, we sustain the rejection
of claim 1, and the rejection of claims 2, 3, 10, 11, 13, and 14 which are not
separately argued.

Obviousness over Berk, Davet, and Cagner; and
Obviousness over Berk, Davet, and Lechanoine
For both of these rejections, Appellant only argues that these claims
are allowable for the same reasons as claim 1 above. App. Br. 11-12.
Finding no deficiency in the rejection of claim 1, we sustain the rejection of
claims 4-6, 7-9, and 15-17.
Obviousness over Berk, Davet and Hummel
Turning to a consideration of claim 18, claim 18 requires that “each of
the plurality of bags is tamper-proof and comprises transparent hard
plastic” (emphasis added). The claim term “hard plastic” is a relative term
and Appellant has not pointed to any disclosure in the Specification
providing any standard for measuring when a plastic is a “hard plastic.” In
fact, the Specification only cursorily mentions that “[i]n some embodiments,
bag 40 is a hard plastic vacuum packed clear plastic containment so
customers may see the condition of the shoes and other articles within bag
40.” Spec. 6, para. [0026]. As the Specification gives no standard for
measuring when a plastic can be considered to be a “hard plastic” as used in
claim 18 so as to permit the metes and bounds of this claim limitation to be
determined, claim 18 is therefore indefinite as being insolubly ambiguous.
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See Exxon Rsrch. & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed.
Cir. 2001) (a claim is indefinite if it is “insolubly ambiguous” and not
“amenable to construction”). Consequently, one of ordinary skill in this art
would not be able to determine the metes and bounds of this subject matter
with adequate precision.
“All words in a claim must be considered in judging the patentability
of a claim against the prior art. If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious - the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970). Our analysis of the claim indicates that considerable
speculation as to the meaning of the claim term “hard plastic” is employed
and assumptions as to the scope of the claimed subject matter need to be
made. A rejection under 35 U.S.C. § 103 should not be based on such
speculation and assumptions. See In re Steele, 305 F.2d 859, 862 (CCPA
1962). Accordingly, we reverse the 35 U.S.C. § 103 rejection of claim 18 as
unpatentable over Berk, Davet, and Hummel, and enter the rejection noted
infra.

NEW GROUND OF REJECTION
Claim 18 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. As noted supra, we are unable to ascertain the metes and bounds
of this claim, and one of ordinary skill would not have been able to do so.
This rejection is made under the provisions of 37 C.F.R. § 41.50(b). It
should be understood, however, that our decision is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.

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DECISION
For the above reasons, the Examiner’s rejection of claims 1-11, and
13-17 is affirmed and the rejection of claim 18 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of claim 18 under 35 U.S.C. § 112, second
paragraph, as indefinite.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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