Apple Inc.

Patent Trials and Appeals Board

Mar 18, 2021

2020004300 (P.T.A.B. Mar. 18, 2021)

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.
15/907,998 02/28/2018 Vasco AGNOLI 2607.9120003(P27099USC1) 8826
63975 7590 03/18/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HERRING, BRENT W
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
Apple-eOA@sternekessler.com
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VASCO AGNOLI, JAMES ANDRUS, SAM BROWN,
JAMES CASEY FEENEY, CHRISTOPHER M. GREEN,
KULLY KRAIG MANDON, CHRISTOPHER DANIEL PEAK,
JONATHAN P. SIEGEL, STEFAN BEHLING, KEVIN FENTON SMEDS,
ANDREW CHARLES DEFFENBAUGH, GREGORY JAMES RANES,
CHARLES A. SCHWALBACH, SHENG YANG, and
GRAHAM O’BRIEN
____________

Appeal 2020-004300
Application 15/907,998
Technology Center 3600
____________

Before JOHN C. KERINS, JILL D. HILL, and GEORGE R. HOSKINS,
Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–14 and 21–30 in this application.
Claims 15–20 are withdrawn. See Appeal Br. 6, 31–32 (Claims App.).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies Apple Inc. as the real party in
interest. Appeal Br. 4.
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WAIVER OF ORAL HEARING
Appellant initially requested an oral hearing. See Request for Oral
Hearing (filed May 21, 2020). Accordingly, a hearing was scheduled for
December 17, 2020. See Notice of Hearing (entered Nov. 3, 2020).
Appellant then waived the hearing. See Appellant Response to Notice of
Hearing (filed Nov. 24, 2020). We, therefore, proceed to decide this appeal
without an oral hearing.
CLAIMED SUBJECT MATTER
Claims 1 and 11 are the independent claims on appeal. Claim 1
illustratively recites:
1. A retail environment having a side wall extending from a
floor to a ceiling, the retail environment comprising:
a display structure built into and extending along the side
wall, the display structure having a frame and a cavity open to a
front side of the wall, the frame defining the outer periphery of
the cavity, the cavity being recessed within the frame, the cavity
having a total cavity length N, the total cavity length N being
configured in increments of n; and
at least two modular display units disposed within the
cavity, the modular display units having a unit length of n, 2n,
3n, or 4n, the total length of all the modular display units being
equal to the total cavity length N, at least two of the modular
display units having different display characteristics formed at
least in part by products presented for sale in different
configurations,
wherein the modular display units are reconfigurable
within the cavity.
Appeal Br. 29 (Claims App.).
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REJECTIONS ON APPEAL
Claims 1–4, 7–10, 23, 24, 29, and 30 are rejected under 35 U.S.C.
§ 103 as unpatentable over Zeichner (US 4,736,996, issued Apr. 12, 1988)
and Wu (US 5,813,735, issued Sept. 29, 1998).
Claims 5, 11–14, 21, and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Zeichner, Wu, and Sutton (US 2011/0283632 A1,
published Nov. 24, 2011).
Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Zeichner, Wu, Sutton, and Gray (US 5,707,904, issued Jan. 13, 1998).
Claims 25–28 are rejected under 35 U.S.C. § 103 as unpatentable over
Zeichner, Wu, and Reynolds (US 2011/0266337 A1, published Nov. 3,
2011).
OPINION
A. Propriety of Advisory Action
The Final Office Action on appeal was dated May 13, 2019 (“Final
Act.”), and rejected all pending claims as set forth above. Appellant filed an
Amendment and Reply on August 9, 2019, seeking to amend the claims, and
arguing in opposition to the rejections. An Advisory Action dated
August 23, 2019 (“Adv. Act.”) entered the after-final amendments, and
responded to Appellant’s arguments. Appellant’s Notice of Appeal followed
on October 15, 2019.
Appellant contends on appeal that the reasoning provided in the
Advisory Action amounts to new grounds of rejection. See Appeal Br. 8, 15,
18–19, 22–25. Appellant asserts this improperly deprived Appellant of a fair
opportunity to respond to this reasoning before the close of prosecution,
prior to the present appeal. See id. (citing MPEP §§ 706.02(j), 706.07,
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& 1207.03(a)). Appellant does not, however, indicate what relief Appellant
seeks as a result of this perceived procedural injury. See id.
The Examiner answers that the Advisory Action did not make any
new grounds of rejection, and it instead properly “expounded on the
rationale set forth in the rejections” previously articulated in the Final Office
Action. Ans. 7–8.
We are not aware of any prohibition against an Advisory Action
containing a new ground of rejection. We discern no such prohibition in the
MPEP sections cited in the Appeal Brief. For example, MPEP § 1207.03(a)
applies to new grounds of rejection presented in an Answer on appeal, not to
Advisory Actions entered prior to an appeal, and therefore does not support
Appellant’s position here. Indeed, even an Answer on appeal may contain a
new ground of rejection, with the only consequence being that the appellant
is provided some procedural flexibility in responding to the new ground.
See 37 C.F.R. § 41.39(a)(2) & (b); MPEP § 1207.03. Moreover, the
benchmark against which an Answer is measured for new ground(s) is “the
Office action from which the appeal is taken (as modified by any advisory
action[)]” (37 C.F.R. § 41.39(a)(1)–(2)), suggesting it is acceptable for an
Advisory Action to modify a Final Action. Thus, our consideration of the
issues raised on appeal will be based on the entire record, including the
Advisory Action as a supplement to the Final Action entered prior to the
present appeal.
B. Obviousness over Zeichner and Wu
1. Claim 1
In rejecting claim 1, the Examiner finds Zeichner’s Figures 1 and 2
illustrate a retail environment having a side wall (i.e., sidewall 14), and
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comprising a display structure built into the side wall, with a frame defining
a cavity and at least two modular display units disposed within the cavity.
Final Act. 5. The Examiner finds the cavity has a total cavity length N
configured in increments of n, wherein each modular display unit has a unit
length of n, and the total length of all modular display units is equal to the
total cavity length N. Id. The Examiner also finds Zeichner’s modular
display units have different display characteristics formed at least in part by
products presented for sale in different configurations, for example shoes
and dresses. Id. (citing Zeichner, Fig. 2). Appellant does not dispute the
foregoing findings. See, e.g., Appeal Br. 9–13 (arguments concerning the
rejection of claim 1).
Thus, it is undisputed that Zeichner’s retail environment embodies
each and every limitation of claim 1, except Zeichner’s modular display
units are not “reconfigurable within the cavity” as claimed. See Final Act. 5.
The Examiner correspondingly cites Wu’s Figures 1–3 as illustrating a
display structure having a plurality of movable display units (i.e., movable
cabinets 101 – 108) that are reconfigurable within a cavity, by rolling on
tracks provided in a bottom panel defining the cavity. See Final Act. 5–6.
Appellant does not dispute this finding as to Wu’s disclosure. See, e.g.,
Appeal Br. 9–13.
The Examiner determines it would have been obvious “to substitute
the [reconfigurable] system of Wu into the retail display structure of
Zeichner in order to provide a hidden area and reconfigurability /
interchangeability of the display.” Final Act. 6 (citing Wu, 1:6–13). The
Examiner acknowledges Zeichner already provides doors 28 and 30 that can
be closed and locked to protect items in second compartment 22 from being
stolen. See Adv. Act. 2. The Examiner nonetheless concludes “the
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existence of [this] area in Zeichner would not obviate the inclusion of either
1) additional hidden areas nor 2) a means for expanding and increasing the
display storage capacity with a system of trays, tracks and a rolling system”
such as is disclosed by Wu. Id.
Appellant argues a person of ordinary skill in the art “would not have
made the proposed modification because . . . Zeichner already includes a
hidden area.” Appeal Br. 10, 21. In particular, doors 28 and 30 leading to
compartment 22 are normally closed and locked, to prevent access to the
compartment and thereby minimize the risk of theft of items stored therein.
Id. at 11 (citing Zeichner, Figs. 1–2, 1:40–44, 1:65–68, 2:36–46). Appellant
faults the Examiner for not providing any reason why Zeichner’s
compartment 22 might be “insufficient” in this regard, and for not discussing
“how the features of Wu would improve upon” Zeichner’s compartment.
Appeal Br. 11. Appellant asserts “there is no disclosure in all of Zeichner”
that would support such conclusions. Id.
The Examiner answers that Zeichner and Wu both disclose
compartmentalized display structures to prevent theft of items—shoes in
Zeichner, and precious articles in Wu. Ans. 3. Further according to the
Examiner, the “differing arrangements” shown in Zeichner’s Figures 1 and 2
“suggest that reconfigurability would be desirable” within Zeichner’s shoe
display structure, which is confirmed by Wu “to provide for a variety of
options in presenting the display and to conceal valuable items behind the
display.” Id. at 3–4 (citing Wu, 1:30–2:3).
Appellant replies that the Examiner errs in finding Zeichner’s
Figures 1 and 2 disclose two different embodiments, because they in fact
show the same display structure, with the locking compartment doors being
open (Figure 1) and closed (Figure 2). See Reply Br. 2 (citing Zeichner,
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2:3–8). This does not, in Appellant’s view, suggest reconfigurability as the
Examiner has found. See id. at 3. Appellant also asserts “Wu’s purpose is
not reconfigurability” but rather “is security” by preventing easy access, so
“Wu does not cure this deficiency” in Zeichner. Id.
Upon review of the foregoing, we agree with the Examiner’s
determination that a person of ordinary skill in the art would have been
motivated to modify Zeichner’s display, in light of Wu, to be reconfigurable
and to provide additional hidden areas.
Zeichner’s Figure 1 is representative of Zeichner’s disclosure, and is
reproduced below:

Figure 1 illustrates a “wall array” for displaying shoes in a shoe store, which
comprises first compartment 16 and second compartment 22. Zeichner,
2:12–30. First compartment 16 has several shelves 18 for displaying
“half-pairs of shoes such as right shoes 20a and 20b,” and is open at the
front so the items stored therein may be freely accessed by customers in the
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store. Id. at 2:16–24, 2:62–65. Second compartment 22 has several
shelves 24 for storing “shoes such as left shoes 26a and 26b,” to complete
shoe pairs with other shoes stored in first compartment 16. Id. at 2:27–36.
Second compartment 22 also includes upper door 28 and lower door 30,
which are normally closed and locked to prevent access to the items stored
therein by customers in the store, thereby minimizing the risk of theft. Id. at
1:41–44, 2:36–55. At the same time, when a customer desires to try on and
potentially purchase a pair of shoes, “the store employee need only open the
adjacent locked cabinet, immediately locate the matching shoe kept in the
same order as the display shoes, and allow the customer to try on the
matching shoe without ever leaving the sales floor.” Id. at 2:65–3:4; see
also id. at 1:8–40 (discussing limitations of prior art methods of selling
shoes). Further, the outwardly facing side of upper door 28 may display an
item of clothing such as a dress. Id. at Fig. 2, 2:49–51.
Wu discloses a “hiding sideboard with moveable cabinets.” Wu,
1:5–7. Figures 1 and 2 of Wu are reproduced below:

These figures show an outer body composed of several panels 50, 53, 51,
and 30, and containing eight movable cabinets 101–108. Wu, 2:21–26,
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2:45–46. Cabinets 102–107 have wheels (not shown) disposed in
grooves 112, so they can be moved left-and-right within an open front
portion of the outer body. Id. at 2:40–41, 2:48–54. Cabinets 101 and 108
have wheels (not shown) disposed in grooves 111 and 114, respectively, so
they may be moved front-and-back within the outer body. Id. at 2:34–40,
2:48–54. In this way, cabinets 101 and 108 may either be hidden in the back
portion of the outer body, or moved up to the front portion of the outer body
with cabinets 102–107, and locked into position with lock 511 to hide and
secure items stored in the back, hidden portion of the outer body. Id.
at 2:34–40, 2:54–59, 3:7–18. Wu’s structure further provides a “hidden
area” shown in Figure 2, between panels 41 and 44, which may store items,
and which is accessible only by unlocking and re-configuring the movable
cabinets. Id. at Figs. 2 & 3, 2:27–40, 3:19–23.
We agree with the Examiner that a person of ordinary skill in the art
would have been motivated to combine the foregoing disclosures, thereby
rendering the invention of claim 1 unpatentably obvious. In particular, a
person of ordinary skill in the art would have appreciated that Zeichner’s
first compartment 16 could be formed as one of Wu’s reconfigurable
cabinets 101–108, and Zeichner’s second compartment 22 could be formed
as an adjacent one of Wu’s reconfigurable cabinets 101–108. See Adv.
Act. 2 (finding Wu’s “compartments include a front (105, 106, and 107) that
can be opened and closed,” which “is analogous to the locking
compartment [22] of Zeichner); Ans. 4; see also Wu, 2:46–47 (“The
movable cabinets 101–108 are composed of a cabinet body. On one side
edge of the opening of the cabinet body is a door which can be opened or
closed by means of a hinge.”).
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In this way, Zeichner’s two compartments 16 and 22 “could remain in
the same manner as taught by Zeichner” (Adv. Act. 2–3), that is, disposed
side-by-side in the store’s retail space, so that the shoes in locked
compartment 22 can be easily accessed by a store employee to complete a
pair of shoes with a matching shoe in open compartment 16, with the
concomitant benefits disclosed by Zeichner. Moreover, this modification
would allow Zeichner’s display to incorporate the additional benefits of
reconfigurability, and of storing more items in a hidden area behind the
reconfigurable cabinets, as is disclosed by Wu. See, e.g., Adv. Act. 3
(stating the “modification of Zeichner in view of Wu would enhance the
teaching of Zeichner by providing both a hidden area for storage as well as
reconfigurability and interchangeability of the display”) (citing Wu, 1:6–13);
Ans. 3–4.
Appellant’s opposition is not persuasive, because it overlooks the
additional functionality that would be provided in Zeichner by the foregoing
modification. Specifically, Zeichner would have additional item storage
capability behind its existing compartments 16 and 22, akin to the hidden
space between panels 41 and 44 in Wu’s outer body. Zeichner also would
have reconfigurable cabinets, akin to cabinets 101–108 in Wu’s outer
enclosure. And, the benefits of disposing Zeichner’s two compartments 16
and 22 side-by-side in the store’s retail space is maintained, as discussed
above.
Appellant also argues a person of ordinary skill in the art “would not
have made the proposed modification because . . . modifying Zeichner as
proposed would render Zeichner inoperable for its intended purpose of
providing convenient, secure access to its hidden area.” Appeal Br. 10. In
particular, Appellant understands the Examiner’s proposal to be replacing
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Zeichner’s second compartment 22 with Wu’s hidden space, behind several
movable cabinets 101–108, which is more difficult to access than Zeichner’s
second compartment 22. Id. at 12–13; Reply Br. 3–4.
This argument is not persuasive, because it misconstrues the
Examiner’s rejection. As discussed above, the Examiner determines a
person of ordinary skill in the art would have maintained the benefits
disclosed by Zeichner, by keeping both of Zeichner’s compartments 16
and 22 when modifying Zeichner to obtain the additional functionality
provided by Wu’s movable cabinets.
For the foregoing reasons, we sustain the rejection of claim 1 as
having been obvious over Zeichner and Wu.
2. Claims 2–4 and 23
Claims 2–4 and 23 respectively recite:
2. The retail environment of claim 1, wherein the at least two
modular display units comprises nine modular display
units.
3. The retail environment of claim 1, wherein n is five feet.
4. The retail environment of claim 1, wherein N is at least
fifty feet.
23. The retail environment of claim 1, wherein a height of the
display structure is between 50% and 75% of a height of
the side wall, and wherein a distance from a bottom of the
side wall and a bottom of the display structure is at least
1 foot.
Appeal Br. 29, 32 (Claims App.).
The Examiner determines Zeichner does not disclose these various
limitations, but “Zeichner suggests customizability.” Final Act. 6 (citing
Zeichner, 3:16–20). The Examiner determines it would have been obvious
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“to contrive any number of desirable ranges for the size and quantity” of
various elements of the combined display structure of Zeichner and Wu,
because “it has been held that where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art,” and “it has been held that discovering
an optimum value of a result effective variable involves only routine skill in
the art.” Id. (citing MPEP § 2144.05). The Examiner adds that Appellant
“has provided no evidence that any of these [claimed] dimensions provide a
criticality that would not be achievable and expected with a reasonable
amount of experimentation.” Adv. Act. 3. The Examiner’s further position
is that the optimized result effective variables are “the space constraints of
the retail space where the modular display units are installed,” such as the
ceiling height and wall length, and “the size of the item being displayed.”
Id.
Appellant argues the Examiner errs in making “no showing that the
specific values of claims 2–4 and 23 are obvious.” Appeal Br. 14–15.
According to Appellant, whether it may or may not have been obvious to
contrive any number of desirable ranges for size and quantity “is not
relevant to whether the specific values claimed are obvious.” Id. at 14.
Appellant also contends a proper result-effective variable obviousness
analysis requires that “a particular parameter must first be recognized as a
result-effective variable, i.e., a variable which achieves a recognized result,”
which the Examiner has not established here. Id. at 15 (quoting MPEP
§ 2144.05). Appellant asserts “[t]here is no common goal in any of the
applied art and the instant application for which the values of claims 2–4
and 23 are being ‘optimized.’” Id. at 15–16 (citing In re Aller, 220 F.2d 454
(CCPA 1955)). Appellant argues the Examiner’s reliance on space
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constraints and item size as result-effective variables is deficient because it
does not (1) establish “a common goal identified by any of the cited
references” for value optimization, or (2) correspond to “the modularity of
the claimed invention” as described in the Specification. Id. at 15; Reply
Br. 5. Appellant concludes “the Examiner improperly shifts the burden onto
Appellant to provide evidence of non-obviousness.” Reply Br. 5 (citing
MPEP § 2144.05).
We conclude the Examiner has the better position. “[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”
In re Aller, 220 F.2d 454, 456 (CCPA 1955); In re Antonie, 559 F.2d 618,
620 (CCPA 1977) (exception to Aller exists where unexpectedly good
results are achieved). Here, Zeichner and Wu combine to disclose the
general conditions of claims 2–4 and 23, but they do not disclose that there
are nine modular display units (claim 2), or that n is five feet (claim 3), or
that N is at least fifty feet (claim 4), or the height of the display structure
relative to the side wall and the floor (claim 23).
We determine it would have been obvious to form a display structure
as generally disclosed by Zeichner and Wu, and additionally having these
specific quantities and dimensions, as part of discovering the optimum or
workable size of the display structure to suit the space constraints of the
retail space in which the display structure is placed. Appellant has not cited
any evidence that might establish a criticality or an unexpected result arising
from the specific quantities and dimensions recited in claims 2–4 and 23, so
this exception to Aller does not apply here. See, e.g., Appeal Br. 13–16;
Reply Br. 5.
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Appellant correctly points out that “another exception” to the Aller
rule exists where “the parameter optimized was not recognized to be a
result-effective variable.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
However, we disagree with Appellant’s position that this recognition must
be expressly disclosed by the prior art cited by the Examiner. See, e.g.,
Appeal Br. 15 (arguing there is no “common goal identified by any of the
cited references for which the values of claims 2–4 and 23 are alleged to be
optimizing”). This would, in effect, incorporate into the Aller analysis a
requirement that the prior art references cited by the Examiner must teach,
suggest, or motivate the modification being proposed by the Examiner.
Such a requirement for obviousness has been expressly rejected by the
Supreme Court. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407, 415–22
(2007). In the factual context presented here, we agree with the Examiner’s
finding that a person of ordinary skill in the art would have known that the
number of modular units to be provided (claim 2) and the size of the display
(claims 3, 4, and 23) are result-effective regarding the size of the space that
is required to accommodate the display structure. This is sufficient to
support the Examiner’s determination of obviousness, under Aller.
Finally, we are not persuaded by Appellant’s contention that, in order
for obviousness to be found here, there must be a “common goal” between
the cited prior art and Appellant’s Specification, so Zeichner and Wu must
disclose the benefits of modularity as discussed in Appellant’s Specification.
See Appeal Br. 15–16; Reply Br. 5. It is instead well established that
“neither the particular motivation nor the avowed purpose of the patentee
controls.” KSR, 550 U.S. at 419–20; see also Alcon Research, Ltd. v. Apotex
Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (“We have repeatedly held that
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the motivation to modify a prior art reference to arrive at the claimed
invention need not be the same motivation that the patentee had.”).
For the foregoing reasons, we sustain the rejection of claims 2–4
and 23 as having been obvious over Zeichner and Wu.
3. Claims 7–10, 24, 29, and 30
Appellant relies solely on its arguments against the rejection of
claim 1 in opposing the rejection of claims 7–10, 24, 29, and 30, each of
which depends directly or indirectly from claim 1, as having been obvious
over Zeichner and Wu. See, e.g., Appeal Br. 21. For the reasons provided
above in connection with claim 1, we sustain the rejection of these
dependent claims as having been obvious over Zeichner and Wu.
C. Obviousness over Zeichner, Wu, and Sutton
1. Claim 11
Claim 11 recites a retail environment comprising, among other
limitations, a plurality of modular display units disposed within a display
structure defining a recess through a wall, “wherein the modular display
units receive power from electrical infrastructure built into the wall.”
Appeal Br. 30 (Claims App.).
In rejecting claim 11, the Examiner states “Zeichner does not
expressly disclose wherein the sidewall comprises electrical infrastructure
that provides power.” Final Act. 7. The Examiner cites Sutton as disclosing
“a wall-mounted modular display system wherein a side wall comprises
electrical infrastructure that provides . . . power and data to the modular
units.” Id. at 7–8 (citing Sutton ¶¶ 127–129). The Examiner determines it
would have been obvious “to provide electrical infrastructure as suggested
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by Sutton to the retail environment display structure of Zeichner in order to
provide audio-visual elements to the display.” Id. at 8. In particular,
according to the Examiner, a person of ordinary skill in the art would have
known Zeichner’s retail environment would be improved by adding
“audio-visual elements,” such as are disclosed by Sutton, to provide lighting
and advertising to Zeichner’s display, thereby drawing attention to it and
potentially increasing sales. Adv. Act. 4 (citing Sutton ¶ 139).
Appellant argues the Examiner thereby errs. Appeal Br. 19–20,
21–22. This is so, in Appellant’s view, because “Zeichner is directed to a
shoe display structure,” whereas “Sutton is directed to a wall-mounted
modular accessory system used in an office environment” including “video
conferencing systems, video game modules, and audio speakers.” Id.
at 19–21 (citing Zeichner, 1:47–68; Sutton ¶¶ 104, 139–140). More
generally, according to Appellant, the Examiner errs in failing to explain
“why a person of skill in the art would be motivated to add audio-visual
elements to the shoe cabinet of Zeichner,” and “how” this could be done, so
the rejection is based on impermissible hindsight. Id. at 20, 22.
Appellant particularly asserts “the ‘reason why a PHOSITA would
have combined prior art references’ must have ‘a foundation in the prior
art.’” Id. at 20, 21–22 (quoting In re Nuvasive, Inc., 842 F.3d 1376, 1383
(Fed. Cir. 2016)). Appellant’s view is that the rejection here is deficient as
“not based in the prior art,” and instead is “based on speculative
hypotheticals that are not supported by the prior art.” Id. at 25; Reply Br. 6
(“[T]he Examiner still has not cited anything in Zeichner that would indicate
audio-visual components are needed, desirable, or even compatible with the
system of Zeichner” or “anything in Sutton that would indicate Sutton’s
modular office wall system could or should be applied to . . . retail
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environments[.]”). In particular: “Sutton is a system for use in an office
environment” and is not “a retail system” that seeks to increase sales and
visibility. Appeal Br. 26. Appellant concludes “the fact that something
could have been done in a hypothetical created by the Examiner is not
sufficient to show that actually doing so would have been obvious.” Id.
Upon review of the foregoing, we determine the Examiner has
satisfied the burden to provide a rational underpinning sufficient to support
the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Appellant does not dispute the material finding in
support of this determination: that adding an audio-visual element to a retail
display such as Zeichner’s display will beneficially draw attention to the
display and thereby potentially increase sales. We agree with that finding.
Appellant’s principal argument in opposition is that the identified
motivation must be expressly found in Zeichner, Wu, and Sutton. We
disagree, because such a requirement has been expressly rejected by the
Supreme Court. KSR, 550 U.S. at 407, 415–22. Instead: “A person of
ordinary skill is also a person of ordinary creativity, not an automaton,” and
“in many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” Id. at 420, 421. Here, the
Examiner’s determination that adding an audio-visual element to Zeichner’s
retail display will beneficially draw attention to the display and thereby
increase sales is a rational basis for the proposed modification, which does
not rely on hindsight, and which is supported by a preponderance of the
evidence. This distinguishes the present case from the Nuvasive decision
cited by Appellant. See Nuvasive, 842 F.3d at 1383–84 (stating “the PTAB
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failed to explain the reason why a PHOSITA would have been motivated to
modify” the prior art to reach the claimed invention” (emphasis in original)).
For the foregoing reasons, we sustain the rejection of claim 11 as
having been obvious over Zeichner, Wu, and Sutton.
2. Claim 14
Claim 14 recites: “The system of claim 11, wherein each of the
plurality of modular display units further comprises an outer frame disposed
around an outer perimeter of the modular display unit, wherein each outer
frame is open to a front side of its modular display unit.” Appeal Br. 31
(Claims App.).
In rejecting claim 14, the Examiner states “Zeichner does not
expressly disclose outer framing on the outer perimeter of the modular
display unit.” Final Act. 8. The Examiner cites Sutton as disclosing
“a plurality of modular display units that comprise an outer frame (240, refer
to Figs. 11a–11c) disposed around an outer perimeter of the display unit,
wherein each outer frame is open to a front side of its modular display unit.”
Id. The Examiner determines it would have been obvious “to provide an
outer frame as suggested by Sutton to the modular display units of Zeichner
in order to provide a fastening lip for attachment and support on the
underlying support structure.” Id.
Appellant argues the Examiner errs in failing to explain: (1) “why the
attachment and/or support system of Zeichner is insufficient and should be
modified;” (2) “why a person of skill in the art would apply a fastening
system for a wall-mounted office organization system to a built-in shoe
display and storage system”; and (3) “how Zeichner could be modified to
include the fastening lip.” Appeal Br. 20–21.
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The Examiner answers: “The how and why for adding outer framing
to Zeichner as suggested by Sutton is for the provision of a fastening lip for
attachment and support upon the underlying support structure.” Adv. Act. 4;
Ans. 6.
Upon review of the foregoing, we determine the Examiner has
satisfied the burden to provide a rational underpinning sufficient to support
the legal conclusion of obviousness. See Kahn, 441 F.3d at 988. A
preponderance of the evidence supports the Examiner’s determination that
adding an outer frame to the modular display units of Zeichner and Wu
would provide a fastening lip for attachment to and support on an underlying
support structure. See Sutton, Figs. 11a–11c, ¶ 123. Appellant’s conclusory
statements in opposition do not cite any evidence, or provide any argument,
that cause us to doubt that determination.
For the foregoing reasons, we sustain the rejection of claim 14 as
having been obvious over Zeichner, Wu, and Sutton.
3. Claims 5, 12, 13, 21, and 22
Appellant relies solely on its arguments against the rejections of
claims 1 and 11 in opposing the rejection of claims 5, 12, 13, 21, and 22,
each of which depends directly or indirectly from claim 1 or claim 11, as
having been obvious over Zeichner, Wu, and Sutton. See, e.g., Appeal
Br. 21. For the reasons provided above in connection with claims 1 and 11,
we sustain the rejection of these dependent claims as having been obvious
over Zeichner, Wu, and Sutton.
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D. Obviousness over Zeichner, Wu, Sutton, and Gray
Appellant relies solely on its arguments against the rejection of
claim 1 in opposing the rejection of claim 6, which depends indirectly from
claim 1, as having been obvious over Zeichner, Wu, Sutton, and Gray. See,
e.g., Appeal Br. 21. For the reasons provided above in connection with
claim 1, we sustain the rejection of claim 6 as having been obvious over
Zeichner, Wu, Sutton, and Gray.
E. Obviousness over Zeichner, Wu, and Reynolds
1. Claims 26 and 27
Claims 26 and 27 both depend from claim 1, and recite “at least a first
one of the modular display units has a length of n,” and “at least a second
one of the modular display units has a length of 2n.” Appeal Br. 32 (Claims
App.).
In rejecting these claims, the Examiner states “Zeichner discloses
modular display units but does not expressly disclose the length n
relationship specified.” Final Act. 9. The Examiner cites Reynolds’s
Figure 3 as disclosing “a modular display unit . . . wherein at least a first one
of the modular display units has a length of n, and wherein at least a second
one of the modular display units has a length of 2n.” Id. at 9–10. The
Examiner determines “it would have been obvious to substitute the modular
display unit setup of Reynolds for that of Zeichner in order to sell paint
instead of clothing within the recessed space of the retail environment.” Id.
at 10; Adv. Act. 3–4.
Appellant contends the Examiner errs in finding Reynolds discloses
the limitation of claims 26 and 27. See Appeal Br. 16–18. Appellant asserts
Reynolds’s written description “is silent as to lengths of its” modular display
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units, leaving Reynolds’s Figure 3 as the only potential support for the
Examiner’s findings in this regard. Id. at 16. According to Appellant,
Figure 3 “does not show a first modular display unit having a length of n and
a second modular display unit having a length of 2n,” because Reynolds
does not describe Figure 3 as being drawn to scale, so Figure 3 is “of little
value” in establishing the proportions of features illustrated therein. Id.
at 16–17 (quoting MPEP § 2125).
Appellant further contends, even assuming Figure 3 is drawn to scale,
that it does not disclose the relative lengths required by claims 26 and 27.
Id. at 17. Appellant offers the following annotations to Figure 3 in support:

Here, Appellant has annotated Figure 3, which is a top view of a display, to
identify its “smallest unit as ‘n’”2, and has applied this length scale to the
other three units of the illustrated display, which therefore have lengths of
3n, 2.33n, and 4.67n, for a total length of 11n. Appeal Br. 17; see Reynolds
¶¶ 6–8, Figs. 1–3. Appellant points out that 2.33n is not 2n, as claims 26
and 27 require. Appeal Br. 17.
The Examiner answers that “2.33 rounded to the nearest whole
number is 2,” so “Reynolds discloses a display unit having the length ‘2n.’”
Adv. Act. 3; Ans. 5. The Examiner adds, for the first time in the Answer,
that the Examiner’s analysis concerning the obviousness of “relative size” in

2 Presumably, Appellant views Figure 3 as illustrating four “units,” defined
by the five wide walls extending all the way from the top to the bottom of
Figure 3.
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relation to claims 2, 3, 4, and 23 (see supra Section B.2) applies here to
claims 26 and 27. Ans. 5. The Examiner concludes the result-effective
variable is “the space constraints of the retail space where the modular
display units are installed,” and Appellant has not provided any evidence of
unexpected results. Id. at 5–6.
Appellant replies: “The Examiner is not empowered to perform
mathematical operations on the values disclosed in the prior art to change
them to match values recited in the claims.” Appeal Br. 17–18. Appellant
emphasizes that “[a] unit length of 2n helps support the modularity of the
display units,” whereas “2.33n is not a modular value.” Reply Br. 5–6.
Concerning the Answer’s reliance on the obviousness of optimizing relative
sizes, Appellant asserts “the Examiner cannot now introduce it in the
Examiner’s Answer against claim 26” because it is a new ground of
rejection. Id. at 7.
Upon review of the foregoing, we are persuaded of Examiner error.
First, the Examiner errs in finding Reynolds discloses the limitation recited
in claims 26 and 27. The claims require a second modular unit having a
length of “2n,” not “2.33n,” where n is the length of a first modular display
unit. The Examiner’s reasoning that 2.33 rounded to the nearest whole
number is 2 ignores the express claim language reciting “2,” which does not
permit the rounding applied by the Examiner. Indeed, the material
difference between 2 and 2.33 in this regard is demonstrated by the
“modularity” reconfiguration benefits that are provided by the former but
not the latter, and described in Appellant’s Specification. See, e.g., Appeal
Br. 16; Spec. ¶¶ 101–102 (describing Figs. 10–13); id. ¶¶ 142–143
(describing Figs. 54–56).
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Second, the Examiner errs in determining that the “2n” limitation in
claims 26 and 27 would have been an obvious optimization of a
result-effective variable.3 We are unable to discern, and the Examiner does
not identify, a rational relationship between the relative lengths of two
modular display units, and the space constraints of the retail space where
the overall display structure is installed. For example, the total length N of a
display structure and the smallest individual unit lengths n may both need to
be reduced to fit into a smaller retail space, or both be enlarged to provide an
appropriate scale for a larger retail space. However, neither of those
optimizations affects the relative proportion of each modular display unit
within the overall display structure.
For the foregoing reasons, we do not sustain the rejection of claims 26
and 27 as having been obvious over Zeichner, Wu, and Reynolds.
2. Claims 25 and 28
Appellant relies solely on its arguments against the rejection of
claim 1 in opposing the rejection of claims 25 and 28, which depend directly
from claim 1, as having been obvious over Zeichner, Wu, and Reynolds.
See, e.g., Appeal Br. 21. For the reasons provided above in connection with
claim 1, we sustain the rejection of these dependent claims as having been
obvious over Zeichner, Wu, and Reynolds.

3 We agree with Appellant’s characterization of this obviousness rationale
as an undesignated new ground presented in the Answer. See Reply Br. 7.
However, Appellant did not petition for relief in this regard, thereby waiving
any such relief. See 37 C.F.R. § 41.40.
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SUMMARY OF DECISION
In summary, we affirm the Examiner’s rejections as to claims 1–14,
21–25, and 28–30, and we reverse the Examiner’s rejections as to claims 26
and 27, as summarized in this table:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 7–10,
23, 24, 29,
30
103 Zeichner, Wu 1–4, 7–10,
23, 24, 29,
30

5, 11–14, 21,
22
103 Zeichner, Wu,
Sutton
5, 11–14, 21,
22

6 103 Zeichner, Wu,
Sutton, Gray
6
25–28 103 Zeichner, Wu,
Reynolds
25, 28 26, 27
Overall
Outcome
1–14, 21–25,
28–30
26, 27
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART