Ex Parte 7,478,732 B2 et al

Patent Trial and Appeal Board

Mar 31, 2015

95001975 (P.T.A.B. Mar. 31, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,975 04/23/2012 7,478,732 B2 029137.0005-US03 8216
26875 7590 03/31/2015
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/31/2015 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
____________________

SHOE SHOW, INC.
Requester
v.
DSW SHOE WAREHOUSE, INC.
Patent Owner, Appellant
____________________
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B21
Technology Center 3900
____________________
Before: JOHN C. KERINS, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Scott E. Brownfield et al. on January 20, 2009 (hereinafter the
'732 patent).
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

2
STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from
the Examiner’s rejection of claims 1-12. Claims 1-4 were original and
claims 5-12 were added during the reexamination prosecution. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 315(a).
We are informed that the present patent is involved in a litigation
styled DSW Inc. and DSW Shoe Warehouse, Inc. v. Shoe Show, Inc., Case
No. 1:11-cv-01797 (N.D. Ohio), which was stayed on July 20, 2012. App.
Br. 6. The '732 patent is a continuation of US Patent No. 6,948,622 B2,
which is involved in related Appeal No. 2014-08662. Oral arguments were
heard in both of these related appeals on February 25, 2015. The transcript
of this oral hearing will be entered into the record in due course.
We AFFIRM-IN-PART.

THE INVENTION
The Patent Owner’s invention is directed to "a modular footwear
display and storage system" and associated methods. Spec., col. 1, ll. 15-16,
Title. Claims 1 and 4, reproduced below, are illustrative of the claimed
subject matter:
1. A method of displaying footwear and dividing
adjacent stacks of footwear boxes in a footwear display and
storage system having at least one horizontally extending
module support member, the method comprising:
providing a plurality of modules having a display
configured to support at least one item of footwear, a divider
extending generally vertically downward from the display, and
at least one module connection element configured to engage
the module support member;
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

3
mounting the modules on the module support member by
engaging the module connection element with the module
support member;
providing a plurality of different footwear styles on the
different displays of the modules;
spacing the modules on the module support member at
different horizontal positions along the module support
member; and
stacking boxes of footwear corresponding to the different
styles of footwear generally beneath the displays supporting
items of footwear of their respectively associated styles, with
the dividers of the respective modules separating adjacent box
stacks of the different footwear styles.

4. A method of displaying and storing footwear,
comprising:
stacking containers of footwear of a first style in a least
one vertical stack, one on top of the other in direct physical
contact;
stacking containers of footwear of a second style in at
least one vertical stack, one on top of the other in direct
physical contact, said stack of containers of footwear of said
second style being located adjacent the stack of containers of
footwear of the first style;
selectively variably positionably supporting a generally
vertically disposed, horizontally movably positionable stack
divider from a horizontally disposed support arranged generally
perpendicular to the divider such that the divider is between (i)
the at least one stack of containers of the first style and (ii) the
at least one stack of containers of the second style of footwear;
variably positionably supporting a first shelf and a
second shelf from a horizontally disposed support arranged
generally perpendicular to the divider, at locations above the at
least one stack of the first footwear style and the at least one
stack of the second footwear style, respectively; and
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

4
placing the samples of the first and second footwear
styles on the first and second shelves, respectively.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Noble
Meyer
Nook
Gould
US 1,821,024
US 3,815,519
US 5,427,255
GB 976,189
Sep. 1, 1931
Jun. 11, 1974
Jun. 27, 1995
Nov. 25, 1964

http://web.archive.org/web/20021123171550/http://conceptbuildersinc.com/
images/Products/bi00072a.jpg (hereinafter referred to as
"ConceptBuilders").

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nook and ConceptBuilders. RAN 3.
2. Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nook and Noble. RAN 13.
3. Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gould and ConceptBuilders. RAN 22.
4. Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gould and Noble. RAN 33.
5. Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Meyer and Noble. RAN 39.

Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

5
ANALYSIS
Only those arguments actually made by the Patent Owner have been
considered. Arguments that the Patent Owner could have made but chose
not to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.67(c)(1)(vii) (2011); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
Obviousness over Nook and Noble
Claims 1, 2, 5, and 6
Claims 1, 2, 5, and 6 are similar to claim 3, etc. discussed infra, but do
not require positioning of dividers between stacks and thus do not require
that the stacks be in place first. Regarding these claims, the Patent Owner's
only argument is that Noble "fails to suggest separation of stacked
containers of footwear based on style." App. Br. 19. The Patent Owner then
goes on to present a situation where "any difference in the number of boxes
between different styles of footwear may cause an overflow of boxes of one
style of shoe across the vertical support 2 resulting in a mixture of boxes of
different styles on the same shelf." App. Br. 19-20 (emphasis added).
While this may be true, we agree with the Requester's argument that
"Noble's express disclosure of 'displaying at the shelf location of a sample
of the shoes contained in the group of boxes of the group' includes the
boxes in the group separated by the vertical divider 2 of Noble." Resp. Br.
7-8 (citing Noble, pg. 1, ll. 20-26). Accordingly, while Noble may allow for
the configuration argued by the Patent Owner, the express disclosure at least
suggests separation of stacks based upon shoe style sufficiently to meet the
claim language. The Patent Owner makes no other arguments regarding
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

6
claims 1, 2, 5, and 6 regarding the combination of Nook and Noble and so
we sustain the rejection of these claims.
Claims 3, 4, and 7-12
Each of claims 3, 4, and 7-12 includes a method step requiring
"selectively positioning a…divider between…" two claimed stacks of
differing footwear styles. In accordance with this step, logically, the stacks
of footwear must be present when the divider is put in place. The Patent
Owner asserts that "[t]he claims also impose a specific order on the
performance of the method steps, that is, 'selectively positioning a…divider
between' stacks and 'selectively variably positionably supporting a divider
between stacks." App. Br. 17. All of the figures in Nook show the assembly
of the shelving taking place with no stock in place. The only time stock is
shown is when the shelves are fully assembled. Fig. 16.
The Examiner appears to concede that this element is missing, by
arguing that the claimed order is not required by the claims. RAN 52. The
Examiner misplaces reliance upon MPEP 2111.01, which merely states that
method claims do not necessarily impose a specific order on the steps. In
this particular instance, the language in each of the claims at issue requires
placing a divider between stacks. A divider cannot be placed between the
stacks if the stacks are not already in place. Accordingly, these claims
implicitly require an order that must be accounted for in relation to the prior
art and we find the Examiner's conclusion to the contrary to be in error.
In looking at Nook, all that is shown in Figure 16 is a fully loaded
shelving system having dividers in place between various types of stock.
Nook, however, is silent as to whether it intends for the shelves to be
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

7
movable/positionable while product is in place and only depicts assembly of
the system without stock in place. See Figs. 1-15. We do not agree with the
Patent Owner that Nook requires unloading and complete disassembly to
rearrange the dividers. As the Examiner points out, "Nook discloses that the
system 'permits quick rearrangement' and shows several different
arrangements of the dividers." RAN 51. That said, while we find that Nook
is capable of rearrangement with stock in place, we do agree that such
positioning is not explicitly contemplated by Nook.
Gould, however, does explicitly teach "frequently retailers and
wholesalers find it necessary to adjust the spacing of vertical side walls or
partitions to mate with the width of a stack of cartons." Gould p. 1, ll. 19-
22. Given this teaching, we find that this would meet the claimed
positioning and repositioning of the dividers with stacks of product already
in place and one of ordinary skill in the art would have found it obvious to
adjust the positioning of the dividers in Nook in a similar manner.
Furthermore, Gould does not teach the dividers being affixed to the display
shelving, which allows for easy repositioning of the dividers. Because this
is not the same rationale as used by the Examiner, we denominate this as a
new ground of rejection.
Regarding the "vertically above" limitation in claims 8 and 11,
contrary to Patent Owner's argument (App. Br. 22), the Examiner's
conclusion is that one of skill in the art would understand from the combined
teaching of Nook and Noble to place a display item on an upper shelf of
Nook, thus placing it in a space vertically above the stack of containers
below. We are not persuaded that the Examiner's conclusion here is
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

8
incorrect, nor that the Examiner has made any mental leap in placing a
display item on the shelving disclosed in Nook.
As to claims 9 and 12, Patent Owner argues that Noble fails to
disclose separating plural stacks of footwear. Noble specifically teaches
vertical divider 2 between plural stacks and we are unpersuaded of error for
the same reasons as discussed above.
Accordingly, we are unpersuaded of error with respect to the
Examiner's rejection of claims 3, 4, and 7-12 as obvious over Nook and
Noble with the addition of Gould as discussed supra and enter a new
grounds of rejection with respect to these claims over the combination of
Nook, Noble, and Gould.
Obviousness over Gould and Noble
The Examiner rejects only claims 1-4 over the combination of Noble
and Gould. With respect to all claims, the Patent Owner first argues that
"[n]othing in Gould discloses that partitions 1 are placed between cartons to
separate styles." App. Br. 26. The Patent Owner, however, concedes that
"partitions 1 allow accommodation based on dimension," but asserts that this
accommodation does not disclose separation based upon style. Id. Given
that Gould teaches accommodation based on dimension, it does not seem
likely that the same style of cigarette would be packaged in two different
dimensions of containers. Accordingly, we understand Gould to be teaching
a separation of style by way of its accommodation of varying widths, which
would suggest a difference in style of cigarette.
The Patent Owner also argues that "any given stack may include a
mixture of brands of the same dimension." Id. While it is true that differing
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

9
brands having the same dimension could be placed in the same stack, doing
so would not seem to be recommended by Gould. As Patent Owner notes
(id.), Gould teaches dispensing a single carton at a time from the bottom of
the stack, so mixing product within a stack would then sometimes require
pulling one or more cartons of a product from the stack to reach (and also
likely replacing the undesired product), which would not be preferable in the
scheme taught by Gould. Regardless, whether Gould could allow for mixed
product is irrelevant because it is clear that the more likely reading of Gould
is that it intends for each product stack to be of a single style of cigarette,
which would thus teach the limitation at issue.
The Patent Owner restates its argument that Noble fails to teach
separation of style because Noble may allow for mixing of boxes of different
styles (App. Br. 26), but for the reasons stated above, we do not find this
argument persuasive. Regardless, as noted above, Gould also teaches this
separation based upon style, so we are not persuaded that this element is
missing from the combination. Accordingly, we sustain the Examiner's
rejection of claims 1-3 over Gould and Noble.
Regarding claim 4, we agree with the Patent Owner that the Examiner
fails to point out where either Noble or Gould discloses a first and a second
shelf for display purposes. App. Br. 26. As stated by the Patent Owner,
"Noble discloses fixed shelving" and "Gould discloses a single, non-
movable shelf 6 above the articles." Id. In support of the rejection, the
Requester points to Figure 1 of Gould, which is a cutaway drawing, and
asserts that Figure 1 "shows an individual shelf 6 associated with a single
divider 1." It is clear from Gould that this drawing is a cutaway of the larger
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

10
apparatus. Nowhere in Gould is there a description of anything other than
the single long shelf 6 that spans multiple dividers. Reference to a cutaway
portion is not a disclosure of separate shelving as asserted by the Requester.
Accordingly, we are persuaded of error in the Examiner's finding that this
combination teaches separate shelves associated with individual dividers as
claimed and thus do not sustain the Examiner's rejection of claim 4.
Obviousness over Meyer and Noble
Because we have already sustained the rejections above with respect
to claims 1-12, we will not further address the cumulative rejection over
Meyer and Noble.
Obviousness over Nook and ConceptBuilders
Because we have already sustained the rejections above with respect
to claims 1-12, we will not further address the cumulative rejection over
Nook and ConceptBuilders.
Obviousness over Gould and ConceptBuilders
Because we have already sustained the rejections above with respect
to claims 1-12, we will not further address the cumulative rejection over
Gould and ConceptBuilders.
Rationales for Combining
The Patent Owner argues that the Examiner's various rationales are
insufficient. See App. Br. 30-32. Specifically with respect to the Examiner's
rationale that the combinations only combine prior art elements to yield
predictable results, the Patent Owner challenges this rationale only insofar as
the rejections contain allegedly missing elements. Because we have found
that all of the elements are in fact taught by the references at issue, this
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

11
argument is deficient as a basis for overturning those combinations. As
such, we find this rationale, which the Examiner uses for all of the
combinations at issue, sufficient to support the Examiner's combinations.

DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject:
claims 1, 2, 5, and 6 over Nook and Noble and claims 1-3 over Gould and
Noble. We REVERSE the Examiner's decision to reject: claims 3, 4, and 7-
12 over Nook and Noble and claim 4 over Gould and Noble. We enter new
grounds of rejection of claims 3, 4, and 7-12 over Nook, Noble, and Gould.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. For further guidance on new grounds of
rejection, see 37 C.F.R. § 41.77(b)–(g). The decision may become final
after it has returned to the Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file
a response requesting reopening of prosecution
before the examiner. Such a response must be
either an amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both.
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

12
(2) Request rehearing. The owner may
request that the proceeding be reheard under
§ 41.79 by the Board upon the same record. . . .
Any request to reopen prosecution before the Examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the Patent Owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
Requester may file comments in reply to a Patent Owner response. 37
C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be
limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the Patent Owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the Patent Owner and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b) for
all Patent Owner responses and Requester comments is required.
The Examiner, after the Board's entry of a Patent Owner response and
Requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

13
proceeding will then be returned to the Board together with any comments
and reply submitted by the Patent Owner and/or Requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
The Requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate. However, the Board may elect to defer issuing any decision on
such request for rehearing until such time that a final decision on appeal has
been issued by the Board.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.
AFFIRMED; 37 C.F.R. § 41.77(b)

Appeal 2014-008661
Reexamination Control 95/001,975
US Patent No. 7,478,732 B2

14
Patent Owner:

WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202

Third Party Requester:

COVINGTON & BURLING, LLP
ATTN: PATENT DOCKETING
1201 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004-2401

cu