Apple Inc.Download PDFPatent Trials and Appeals BoardMar 18, 20212020004300 (P.T.A.B. Mar. 18, 2021) Copy Citation 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 Claims 15–20 are withdrawn.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. Appeal 2020-004300 Application 15/907,998 2 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.). Appeal 2020-004300 Application 15/907,998 3 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, Appeal 2020-004300 Application 15/907,998 4 & 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 Appeal 2020-004300 Application 15/907,998 5 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 Appeal 2020-004300 Application 15/907,998 6 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, Appeal 2020-004300 Application 15/907,998 7 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 Appeal 2020-004300 Application 15/907,998 8 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, Appeal 2020-004300 Application 15/907,998 9 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.”). Appeal 2020-004300 Application 15/907,998 10 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 Appeal 2020-004300 Application 15/907,998 11 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 Appeal 2020-004300 Application 15/907,998 12 “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 Appeal 2020-004300 Application 15/907,998 13 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. Appeal 2020-004300 Application 15/907,998 14 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 Appeal 2020-004300 Application 15/907,998 15 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 Appeal 2020-004300 Application 15/907,998 16 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 Appeal 2020-004300 Application 15/907,998 17 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 Appeal 2020-004300 Application 15/907,998 18 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. Appeal 2020-004300 Application 15/907,998 19 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. Appeal 2020-004300 Application 15/907,998 20 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 Appeal 2020-004300 Application 15/907,998 21 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. Appeal 2020-004300 Application 15/907,998 22 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). Appeal 2020-004300 Application 15/907,998 23 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. Appeal 2020-004300 Application 15/907,998 24 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 Copy with citationCopy as parenthetical citation