Ex Parte Dale et al

Patent Trial and Appeal Board

Apr 11, 2013

10340290 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte E. J. DALE, ALASTAIR J. GREGORY, BERIN C. LORITSCH,
WILLIS S. DUNCAN, and ROBERT DALE
____________________

Appeal 2011-007129
Application 10/340,290
Technology Center 3600
____________________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-42 and 44-51. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to the process of stocking and
re-organizing products that are displayed on pegboards, shelves, and similar
fixtures (Spec. 1, ll. 10-11).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A stocking strip for pegboard stocking comprising a strip for
locating a product on a peg board display, the strip including a
product identifier that identifies a specific product or set of
products, and a peg indicator for locating the peg on the
pegboard display.

THE REJECTIONS
The following rejections are before us for review:
Claims 1-4, 12-14, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Splain (US 6,473,984 B1, iss. Nov. 5, 2002) in view
of Anderson (US 4,378,884, iss. Apr. 5, 1983).

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 27, 2010) and Reply Brief (“Reply Br.,” filed January 3,
2011) and the Examiner’s Answer (“Ans.,” mailed November 3, 2010).
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Claims 5-11, 15-20, 22-24, 49, and 50 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Splain in view of ACNielsen:
Shelf Builder, What is Shelf Builder?
(http://web.archive.org/web/20000815225534/acnielsen.com/products/tools/
shelfbuilder/) (last visited May 11, 2009) (hereinafter “Shelf Builder”) and
further in view of Business Wire: ACNielsen Launches Next Generation of
Space Management Tools; Advance Merchandising Packages Available in
42 Countries, 1-2 (Mar. 31, 1999)
(http://www.thefreelibrary.com/_/print/PrintArticle.aspx ?id=54262974)
(last visited May 10, 2009) (hereinafter “SPACEMAN”) and further in view
of Hayes (US 5,165,316, iss. Nov. 24, 1992).
Claims 25, 26, 27-32, and 51 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Splain in view of Anderson and further in view
of Shelf Builder, SPACEMAN, and Mitchell (US 5,651,852 , iss. Jul. 29,
1997).

ANALYSIS
Independent claim 1 and dependent claims 3-5, 10-15, and 19-24
Appellants argue that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because neither Splain nor Anderson,
alone or in combination, discloses or suggests a strip for locating a product
on a pegboard display including “a product identifier that identifies a
specific product or set of products, and a peg indicator for locating the peg
on the pegboard display,” as recited in claim 1 (App. Br. 12-18 and Reply
Br. 4-6).
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Appellants’ argument is unpersuasive because it is predicated on non-
functional descriptive material, i.e., the product identifier and peg indicator
indicia printed on the strip, which may not be relied on for patentability.
The product identifier and peg indicator indicia do not functionally affect the
stocking strip in any way. Therefore, these features may not be relied on to
distinguish over the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-89
(BPAI 2008) (precedential) (discussing cases pertaining to non-functional
descriptive material).
Appellants cannot reasonably dispute, nor do they, that Splain
discloses a strip that is used, together with a planogram (and in an exemplary
embodiment, also together with a measuring device), to position products on
a pegboard display. To the contrary, Appellants admit that Splain teaches a
horizontal strip that displays periodic coordinates, and that peg and/or
product positions on a pegboard display can be determined using the strip in
conjunction with a plan, i.e., a planogram, which indicates the coordinates at
which individual products should be positioned (App. Br. 15-16).
Appellants assert that “[t]he horizontal member 12 disclosed in
Splain, on its own, does not actually ‘locat[e] a product on a peg board
display’” (App. Br. 16). But that argument fails because it is not
commensurate with the scope of the claim. There is nothing in claim 1,
and do Appellants point to anything, that structurally or functionally in a
mechanical sense requires the strip to locate a product on a pegboard display
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“on its own.” Instead, the claims recite descriptive information that is only
interpretable by the human mind.
Claim 1, as properly construed, is anticipated by Splain, which is the
epitome of obviousness. See In re Fracalossi, 681 F.2d 792, 794
(CCPA 1982) (a disclosure that anticipates under 35 U.S.C. § 102 also
renders the claim unpatentable under 35 U.S.C. § 103).
Therefore, we will sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of
dependent claims 3-5, 10-15, and 19-24, which were not separately argued.
Dependent claim 2
Claim 2 depends from claim 1 and recites that “the stocking strip
further comprises a height indicator that indicates a height of the strip on the
pegboard.” Appellants argue that the Examiner erred in rejecting claim 2
under 35 U.S.C. § 103(a) because neither Splain nor Anderson discloses or
suggests this feature (App. Br. 19-20 and Reply Br. 7).
Appellants’ argument, like their previous argument with respect to
claim 1, is not persuasive because it is predicated on non-functional
descriptive material, i.e., a height indicated printed on the strip, which may
not be relied on for patentability. See In re Ngai, 367 F.3d at 1339 (Fed. Cir.
2004); cf. In re Gulack, 703 F.2d at 1385.
Therefore, we will sustain the Examiner’s rejection of claim 2 for the
same reasons as set forth above with respect to claim 1.
Dependent claims 6-9 and 16-18
Claims 6, 7, 16, and 17 ultimately depend from claim 1 and recite that
the strip further comprises various information, including “a strip
identification number for distinguishing the stocking strip from other
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stocking strips” (claim 6); a strip identification number comprising
“information related to a source planogram” (claim 7); “information
regarding a number of units of the product to be placed on the peg”
(claim 16); and “a row indicator for indicating a row of the pegboard display
on which the stocking strip is to be placed” (claim 17).
Appellants argue that the Examiner erred in rejecting claims 6, 7, 16,
and 17 because the cited references (Splain, Anderson, Spaceman, and
Hayes) fail to disclose or suggest that the stocking strip includes these
additional features (App. Br. 21-23). Yet these arguments, like Appellants’
previous arguments, depend on non-functional descriptive material, which
cannot be relied on to distinguish the claims from prior art that otherwise
renders the claims obvious.
Therefore, we will sustain the Examiner’s rejection of claims 6, 7, 16,
and 17 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 8 and 9 and claim 18, which depend from claims 6 and
17, respectively, and were not separately argued.
Independent claims 25, 30, 32, 33, 34, 36, 41, 42, and 44 and dependent
claims 26, 35, 37-40, 44-47, and 51

Claims 25, 30, 32, 33 include language substantially similar to
claim 1. Appellants argue that the rejections of claims 25, 30, 32, 33, 34, 36,
41, 42, and 44 should be reversed for the same reasons as argued with
respect to claim 1 (App. Br. 23-24 and 28-35). Because we found
Appellants’ arguments unpersuasive with respect to claim 1, we find them
equally unpersuasive with respect to claims 25, 30, 32, 33, 34, 36, 41, 42,
and 44.
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Therefore, we will sustain the Examiner’s rejection of claims 25, 30,
32, 33, 34, 36, 41, 42, and 44 under 35 U.S.C. § 103(a). We also will
sustain the Examiner’s rejections of claims 26, 35, 37-40, 45-47, and 51,
which depend from claims 25, 34, 36, 44, and 32, respectively, and were not
separately argued.
Dependent claims 27 and 28
Claims 27 and 28 depend from claim 25 and recite that “a first strip of
the plurality of strips is to be positioned in a first direction on the pegboard
display and includes indicators to designate the position of other ones of the
plurality of strips” (claim 27) and that
the first strip is a vertical strip configured to be positioned in a
substantially vertical arrangement on the pegboard display, and
has printed thereon a plurality of indicators to indicate the
vertical position of other ones of the plurality of strips which
are configured to be positioned in a substantially horizontal
position on the pegboard display at locations corresponding to
the indicators on the vertical strip
(claim 28).
Appellants argue that the rejections of claims 27 and 28 should be
reversed because the cited references fail to disclose or suggest the recited
indicators (App. Br. 24-27 and Reply Br. 7-8). However, these indictors do
not functionally affect either the organization or operation of the pegboard
organization system. As such, the indicators constitute non-functional
descriptive material that may not be relied on for patentability.
For that reason, we will sustain the Examiner’s rejections of claims 27
and 28 under 35 U.S.C. § 103(a).

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Independent claim 29
Claim 29 recites
[a] stocking strip for pegboard stocking comprising . . . a
third text area for printing thereon height information indicating
a height position for the strip; . . . at least one product identifier
for identifying the product; and at least one peg indicator for
indicating a position of the peg at which the peg is to be
positioned on the pegboard display.
Appellants argue that the rejection of claim 29 should be reversed for
the same reasons as argued with respect to claims 1 and 2 (App. Br. 28).
Because we found Appellants’ arguments unpersuasive with respect to
claims 1 and 2, we find them equally unpersuasive with respect to claim 29.
Therefore, we will sustain the Examiner’s rejection of claim 29 under
35 U.S.C. § 103(a).
Independent claim 31
Claim 31 recites a method for locating product on a pegboard display
comprising
positioning a first vertical stocking strip comprising a
plurality of indicators printed thereon for indicating vertical
locations at which a plurality of horizontal stocking strips are to
be positioned on the pegboard display . . . wherein each
horizontal stocking strip comprises at least one product
identifier and at least one peg indicator . . . .
Appellants argue that the rejection of claim 31 should be reversed for
the same reasons as argued with respect to claims 1 and 27 (App. Br. 29-30).
Because we found Appellants’ arguments unpersuasive with respect to
claims 1 and 27, we find them equally unpersuasive with respect to claim 31.
Therefore, we will sustain the Examiner’s rejection of claim 31 under
35 U.S.C. § 103(a).
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Dependent claim 48
Claim 48 depends from claim 44, and recites a vertical strip having
printed thereon “a) a first row indicator to indicate the first row portion
where the first horizontal strip is to be positioned, and b) a second row
indicator to indicate the second row where the second strip is to be
positioned.”
Appellants argue that the rejection of claim 48 should be reversed for
the same reasons as argued with respect to claim 27 (App. Br. 35-36).
Because we found Appellants’ arguments unpersuasive with respect to
claim 27, we find them equally unpersuasive with respect to claim 48.
Therefore, we will sustain the Examiner’s rejection of claim 48 under
35 U.S.C. § 103(a).2
DECISION
The Examiner’s rejections of claims 1-42 and 44-51 are affirmed.

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).

AFFIRMED

hh

2 In the event of further prosecution, the Examiner may wish to consider
whether the teachings of U.S. Patent No. 5,241,467 to Failing et al., as part
of a combination of references, would render the claimed invention obvious.
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