Ex Parte EnfieldDownload PDFPatent Trials and Appeals BoardMar 25, 201309902923 - (D) (P.T.A.B. Mar. 25, 2013) Copy Citation 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. 09/902,923 07/10/2001 Paul S. Enfield P113836 9260 22931 7590 03/25/2013 HUGHES LAW FIRM, PLLC 2801 Meridian Street, Suite 202 Bellingham, WA 98225-2400 EXAMINER GORT, ELAINE L ART UNIT PAPER NUMBER 3687 MAIL DATE DELIVERY MODE 03/25/2013 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 ____________ Ex parte PAUL S. ENFIELD ____________ Appeal 2010-007904 Application 09/902,923 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007904 Application 09/902,923 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 17-27 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We AFFIRM. THE INVENTION The Appellant’s claimed invention is directed to facilitating customer shopping in a store facility such as a supermarket (Spec. 12:1-3). Claim 17, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 17. A combination of a plurality of display signs and a store facility, with the combination being particularly adapted to assist customers to locate products in the store facility and to obtain greater familiarity of an overall pattern of product location in the store facility, said combination comprising: a) a store facility having a shopping area in which store products are made available to customers in the shopping area, said shopping area being arranged in a plurality of elongate aisles having first and second aisle end portions; b) a substantial portion of the store products located in the aisles being brand name products which comprise one or more of frozen food products, refrigerated food products, food products which are canned, bottled or packaged food products and drug store products and where said store products are categorized as: Appeal 2010-007904 Application 09/902,923 3 i) products in a plurality of primary location related product categories with the products in each primary location related product category being in a related primary location area of the shopping area; ii) products in each primary location related product category which are in turn classified in a plurality of secondary location related product categories, with the products in each secondary location related product category being in a related secondary location area; iii) products in at least some of said secondary location related product categories being in subcategories of a related one of the secondary location related product categories; iv) a substantial portion of the products in at least some of the primary location related product categories being brand name products with an overall brand name product appearance including the brand name and any packaging and/or graphic representations; c) a substantial portion of products located in each of the aisles being location related to other products in that aisle as location related products in a manner that one location related product at a particular location in an aisle would indicate a probability of other products that are location related to said one location related product would be in that aisle and as a possibility in closer proximity to said one location related product; d) a plurality of display signs, each of which is located in, or proximate to, a related aisle, or positioned so as to be associated with said related aisle in a manner that each display sign is visible so that a shopper observing the sign is able to associate the sign with its related aisle and the products within that aisle; e) each of said display signs having [1] a plurality of different brand name product representations of products which are representative of other location related products in its Appeal 2010-007904 Application 09/902,923 4 related secondary location related product category or categories or subcategory or subcategories in its related aisle, with the brand name product representations that are on the display sign being representative of a greater number of other products which are in the aisle associated with that display sign so as to be present along a substantial length of the aisle, and which are not on the display sign and are generally associated by location with the brand name product representations that are on the display sign, said brand name product representations on that display sign having an overall brand name product appearance including the brand name and any packaging and/or graphic representations and provided in at least one group in proximity or overlapping relationship to one another, [2] and, with a substantial portion of the brand name product representations on said display sign comprising trademarks which are registered in the U.S. Patent and Trademark Office; f) the number of brand name product representations in the display signs being at most a relatively small fraction of the number of location related products in the aisle that is associated with that display sign, with a substantial portion of the brand name product representations on the display sign having a direct relationship to the brand name product which it shows and an indirect relationship as being location related to other products in that aisle; and g) the display signs being positioned at a substantial number of said aisles so that a customer in the shopping area would be able to observe the display signs and associate with each display sign and its related aisle the more numerous various location related products; whereby a customer is able to observe individual display signs and by observing a much smaller number of brand name product representations on each display sign to be able to obtain location information of not only the products which are the same as the brand name product representations on the display sign, but also of a substantially greater number of related products which are in that aisle and of which the displayed Appeal 2010-007904 Application 09/902,923 5 brand name product representations are representative, and also the customer is able to become more familiar with product locations in the aisles by means of the customer associating the display signs as a memory aid of aisle locations. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Ramey US 5,297,685 Mar. 29, 1994 Begum US 6,012,244 Jan. 11, 2000 Porter, Stephen S., The Influence of Brand Recognition on Retail Store Image, The Journal of Product and Brand Management, Vol. 6, Iss. 6 (1997); pg. 373. The following rejections are before us for review: 1. Claims 17-27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ramey, Begum, Porter, and Official Notice. FINDINGS OF FACT We find that the findings of fact used in the Analysis section below are supported at least by a preponderance of the evidence.1 ANALYSIS The Appellant argues that the rejection of claim 17 is improper because the prior art cited in the rejection does not render the claim obvious (Br. 6-7, Reply Br. 1-5). Specifically, the Appellant argues that the cited 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2010-007904 Application 09/902,923 6 prior art fails to suggest claim limitation [1] cited above in paragraph “e†of the claim above. (Br. 7). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 3-10, 13-20). We agree with the Examiner. The Appellant’s arguments begin by describing and arguing against the references individually (Br. 7-11) but here the cited rejection of record is based on a combination of all the references. We are not persuaded by the Appellant’s arguments that attack the references separately, because the Examiner's obviousness rejection is based upon the combination of the references. We note that each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.) Here, Ramey has shown in Figures 1-5 a directory of products (item C which lists mouldings) which is located in an aisle of subproducts (window & door, corner & ceiling mouldings, etc.). Ramey does not show the use of individual brand name representation of the products but this has been cited in the Begum reference which shows the brand name of an orange juice product (ACME) placed on the sign. Porter has further been cited and shows that brand characteristics affect store image (Abstract) and stored memories about brand use (page 2). The rejection cited has also taken Official Notice that grocery retail stores include brand name products for food products that are registered trademarks. Here, the modification of the Ramey system to have the product directory list individual brand names as taught by Begum and suggested by Appeal 2010-007904 Application 09/902,923 7 Porter and to be used in a grocery store aisle as known in the art would have been an obvious, predictable combination of familiar elements for the benefit of having the aisle directory include branding for the advantage of providing product identification by brand and increasing store image in a conventional grocery store. While the Appellant argues that the cited rejection fails to account for the limitations of section “f†which requires that the number of brand names on the display sign is at most a relatively small fraction of the number of related products this would have been an obvious modification readily inferred by one of ordinary skill in the art based on the size of the sign and what could fit and if only some brands wished to pay for such advertising. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court stated that when considering obviousness that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.†KSR at 418. For these reasons, we consider the Examiner to have established a prima facie case of obviousness. We recognize that evidence of secondary considerations, such as that presented by the Appellant must be considered in route to a determination of obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we consider anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied upon by the Examiner and the objective evidence of nonobviousness provided by the Appellant. “An applicant may rebut a prima facie case of obviousness by providing a ‘showing of facts supporting the opposite conclusion.’ Such a showing dissipates the prima facie holding and requires the examiner to ‘consider all Appeal 2010-007904 Application 09/902,923 8 of the evidence anew,’†In re Kumar 418 F.3d 1361, 1368 (Fed. Cir. 2005) (quoting Piasecki 745 F.2d 1468 (Fed. Cir. 1984); In re Rinehart, 531 F2d 1048 (CCPA 1976)). The Second and Third Declarations filed under 35 U.SC. § 132 by Paul Enfield have been fully considered, but are not deemed persuasive to show that the rejection of record is improper after evaluating and weighing all the evidence relied upon by the Examiner and provided by the Appellants. The Second Declaration of Paul Enfield at paragraph 7 discusses the commercial success for products displayed but fails to show a nexus between the increased sales and the claimed invention. It is unclear that gross sales increased for all products from this Declaration or that the products did not have other advertising in the stores or advertising by other methods outside the stores. Other portions of the Second Declaration also include opinion and not factual evidence as to whether the references can be combined. The Third Declaration of Paul Enfield at paragraphs 7-18 discusses the commercial success for products displayed but also fails to show a nexus between the increased sales and the claimed invention. While more data is provided in the Third Declaration it remains unclear that gross sales increased for all products from this Declaration or that the products did not have other advertising methods external to the store. Further with regard to both the Second and Third Declarations some increase in sales would naturally be expected from displaying the brand names in the aisles. In this case, the Second and Third Declarations of Paul Enfield when viewed anew with all the evidence in the record does not provide sufficient evidence to reach a conclusion of nonobviousness. We find that the cited Appeal 2010-007904 Application 09/902,923 9 combination of Ramey, Begum, Porter, and Official Notice is a predictable result of combining known elements for their established functions. For the above reasons, we sustain the rejection of claim 17 under Ramey, Begum, Porter, and Official Notice made under 35 U.S.C. § 103(a). As the Appellant has not presented separate arguments for the patentability of claims 18-27, we sustain the rejection of these claims as well. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 17-27 under 35 U.S.C. § 103(a) as unpatentable over Ramey, Begum, Porter, and Official Notice. DECISION The Examiner’s rejection of claims 17-27 is sustained. 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 tj Copy with citationCopy as parenthetical citation