David J. Schram et al.

Patent Trials and Appeals Board

Sep 4, 2019

14104896 - (D) (P.T.A.B. Sep. 4, 2019)

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.
14/104,896 12/12/2013 David J. Schram J-6004 5509
28165 7590 09/04/2019
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
F074168@scj.com
mjzolnow@scj.com
selechne@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID J. SCHRAM, COURTNEY F. KOHN,
SHAINA ASHARE, JESSIE MALDONADO,
DAVID W. RIESKE, and LUTANIN RASAVONG
____________________

Appeal 2018-005719
Application 14/104,896
Technology Center 3600
____________________

Before JOSEPH L. DIXON, MARC S. HOFF, and BETH Z. SHAW,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–13 and 21–27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to an accurate product placement, e.g., on
shelves at a point of sale. In particular, this disclosure relates to repeatable,
successful, and accurate product placement using symbols rather than text or
scannable codes. (Spec. ¶¶ 1, 14.) Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method comprising:

providing:

packaging for a product, the packaging
comprising a first placement guidance symbol that is
externally visible on the packaging and that is
associated with the product; or

a container for storing the packaging for the
product, the container comprising a second placement
guidance symbol that is externally visible on the
container and that is associated with the product; or

both the packaging and the container; and

providing a first label adapted for placement at a first
location proximate to a target placement location for the
product, the first label comprising a third placement
guidance symbol associated with the product, and where:

the first placement guidance symbol, when the
packaging with the first placement guidance symbol is
provided, the second placement guidance symbol, when the
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container with the second placement guidance symbol is
provided, and the third placement guidance symbol each
comprise a non-textual icon correlating in common to the
product, independently of any textual elements and
independently of any electronically scanned codes.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal are:
Zimmer et al. US 2009/0008271 A1 Jan. 8, 2009
Nakamura US 2010/0138322 A1 June 3, 2010
Hurme et al. US 2012/0041887 A1 Feb. 16, 2012
Desmarais et al. US 2015/0088701 A1 Mar. 26, 2015

REJECTIONS
The Examiner made the following rejections:
Claims 1–13, 21, and 23–26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Zimmer in view of Desmarais.
Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Zimmer and Desmarais further in view of Nakamura.
Claim 27 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Zimmer and Desmarais further in view of Hurme.

ANALYSIS
With respect to independent claims 1, 8, and 21, Appellants do not set
forth separate arguments for patentability of the independent claims, but for
completeness we address each of the independent claims which have
different scopes. Therefore, we select independent claims 1, 8, and 21 as the
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representative claims for the groups and will address Appellants’ arguments
thereto. (App. Br. 6–7.)

Claim 1
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below. (See Final Act. 2–11; Ans. 3–6.)
Specifically, Appellants argue that the prior art is missing claim
features regarding “a non-textual icon correlating in common to the product,
independently of any textual elements and independently of any
electronically scanned codes” (claim 1) (“first placement guidance symbol
comprising a first non-textual icon specifically correlating, without reliance
on any textual elements and without reliance on any electronically scanned
codes, to a particular product” (claim 8); and “a second placement guidance
symbol comprising a second non-textual icon also configured to specifically
correlating to the particular product, without: reliance on a textual element;
and reliance on a scannable code” (claim 21).)
The Examiner maintains that “Desmarais discloses both a scanned
code as well as a symbol, which can be in addition or alternative to one
another” (“[a]lternatively, or additionally, a barcode or other symbol
associated with the item”). (Ans. 3–4; Desmarais ¶ 100.)
We agree with the Examiner and find the Desmarais reference
discloses that additional or alternative symbols associated with an item may
be provided “[a]lternatively, or additionally, a barcode or other symbol
associated with the item may be provided on the fixture (e.g. on a front face
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of the shelf on which units of the item are (or are intended to be) resting.”
(Desmarais ¶ 100 (emphases added).)
Appellants also contend that there is no rational reason to combine the
references. (App. Br. 7.) Appellants argue that
the combination, relied on by the Office in the rejection of each
of the independent claims, is improper because (i) the Office
failed to put forth reasoning to support an additive combination,
(ii) the combination forces one to proceed contrary to accepted
wisdom, and (iii) the proposed combination (at least with
regard to independent claims 8 and 21) renders the system of
Zimmer unsuitable for its intended purpose.

(Id. at 8; see also id. at 8–14.) Specifically, Appellants contend that the
system of Desmarais already provides a system for proper labeling and
signage for product shelving. Zimmer is unconcerned with providing proper
labeling or signage for product shelving. (Id. at 9.)
The Examiner maintains that the cited references provide motivation
as well as a need to solve a problem and that one of ordinary skill in the art
would combine the improved planogram generation (Desmarais) and oral
care package and arrangements thereof (Zimmer) which are analogous art as
both are regarding product placement and product labeling for display at a
retail location, whereby the combination would result in an improved
system. (Ans. 4.) The Examiner further maintains that
assisting the consumers in finding products would be improved
with the combined system as the utilization of the symbols in
Zimmer in the [Desmarais] system would allow the retail
employees to stock and arrange products similar and related in
manner together i.e. assisting consumers in finding related
products. The grouping of similar products using labels and
signage is an old and well-known concept in retail, not contrary
to accepted wisdom as Appellants argue, thus the use of labels
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will provide employees with a more fool proof way of stocking
shelves and arranging products.

(Id. (emphasis added).) Additionally, the Examiner maintains that:
In this case, one of ordinary skill in the art would assert that
improved planogram generation (Desmarais) and oral care
package and arrangements thereof (Zimmer) are analogous art
as both are regarding product placement and product labeling
for display at a retail location. Zimmer’s use of “packaging
characteristics to correlate to multiple products rather than
uniquely to a single product” is an incorrect assertion as the
entirety of Zimmer is “concerned with assisting consumers in
finding related products” which is assisting consumers identify
an area of multiple products as well as the individual product
which is related to a different product.

(Ans. 5.) (See also 1965 Dukes® mayonnaise display infra)
The Examiner specifically responds to each of Appellants’ proffered
arguments regarding the combination of prior art teachings in the Zimmer
and Desmarais references. (Id. at 3–7.) We agree with the Examiner’s
findings and adopt them as our own.
Appellants further contend that the Examiner’s reliance upon an
additive combination in the references rather than a mere substitution of
elements requires for the needed legal conclusion the Examiner to support a
finding of obviousness, but the Examiner fails to cite any evidence or
provide any reasoning or analysis that would demonstrate why the
conclusion would be true. (App. Br. 10.)
In the Reply Brief, Appellants contend that the combination requires
one skilled in the art to proceed contrary to accepted wisdom and, therefore,
there is no rational reason to combine the references. (Reply Br. 2.)
Appellants contend that combining the shelf labels of the Desmarais
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reference with the symbols of the Zimmer reference would interfere with the
scanning operation in the Desmarais reference. (Id.) Appellants further
argue that this would lead to well-known disadvantages causing lower
performance or added expense. Here, the known disadvantages in altering a
symbol to include non-scanning related features must be considered when
combining the symbol of Zimmer with the scannable symbols of Desmarais.
(Reply Br. 2.) Appellants further contend that the Desmarais reference
points out that these problems may occur on certain packaging types or
when a scanner symbol is “dirty or scratched” (see, e.g., Desmarais ¶ 102).
(Reply Br. 3.)
Although we agree with Appellants that a dirty or scratched symbol
may degrade or impact scanner operation in actual use, we find the mere
presence of an additional or alternative symbol as suggested by the Zimmer
reference would not degrade the operation (of a “system,” but a “system”
has not been claimed—only a “method,” a “product stock kit,” and
“packaging”). Rather, we find actual use would be dependent on the
specific use/stocking employee and the specific scanner technology
available. Furthermore, we find that neither the user nor the scanner are
recited in the language of representative independent claim 1. Therefore,
Appellants’ argument is not commensurate in scope with the express claim
language. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998) (“[The] proffered facts . . . are not commensurate with the claim
scope and are therefore unpersuasive.”).
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Appellants further contend that the proposed combination by the
Office would require a POSITA to perform unguided experimentation and
proceed contrary to accepted wisdom in an unspecified field even the cited
references identify as difficult. (Reply Br. 3.) We disagree with Appellants.
We find that Appellants have not set forth substantive arguments with
regard to this combination as it relates to the claimed message steps of
“providing”, and Appellants’ arguments are unsupported attorney arguments
given little patentable weight. Attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Therefore, we sustain the Examiner’s obviousness rejection of
representative independent claim 1 and dependent claims 2–7 not separately
argued. (App. Br. 14.)

Claims 8 and 21
With respect to independent claims 8 and 21, Appellants contend that
“[r]emoving the scannability of the fixture symbol [of] Desmarais and
replacing it with the repeating symbol of Zimmer would break the critical
position data collection function of the fixture symbol of Desmarais” and
“would render Desmarais unsuitable for its intended purpose.” (App. Br.
14.)
We find that the Examiner has relied on the addition of a symbol as
suggested by the Desmarais reference. Furthermore, the language of claims
8 and 21 does not recite a step of “scanning” the symbol and is not
commensurate in scope with the claim limitations. We disagree with
Appellants and further note that independent claims 8 and 21 are merely
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directed to two labels unattached to any product or shelving (independent
claim 8) and directed to the packaging of a single product (independent
claim 21). Moreover, irrespective of any shelf, we find that the products’
symbols and packaging necessarily always dictate where the product will be
placed by workers in the future placement of the product, but the scope of
independent claims 8 and 21 do not require more than the recited claim
elements. Therefore, Appellants’ arguments do not show error in the
Examiner’s factual findings or conclusion of obviousness of independent
claims 8 and 21, and we sustain the Examiner’s obviousness rejection of
representative independent claims 8 and 21, and dependent claims 9–13 and
22–27 not separately argued. (App. Br. 14.)

Additional insights
The additional discussions below are provided to show the breadth of
the independent claims and are not used in affirming the prior art rejection.
Additionally, under the broadest reasonable interpretation, we note
that Appellants’ independent claim 1 merely claims a generic “method” and
two steps of “providing” where the package has a symbol and a first label is
provided, and to the placement guidance symbol each comprise a non-
textual icon correlating in common to the product, independently of any
textual elements and independently of any electronically scanned codes.
We find Appellants’ arguments unavailing regarding adding a non-
scannable code. (App. Br. 11.) Appellants submit that neither of the above
assertions provide any reasoning as to why a POSITA would proceed
contrary to the accepted wisdom and include non-scanning related features
to a scannable symbol. (Id. at 11–12.) We find Appellants’ argument
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unpersuasive because this rationale merely goes to subsequent use of the
product by a user which is not claimed in the method of independent claim
1. Also, the argument presumes users that have accepted “normal” vision.
Alternatively, if a system were designed for eyesight or vision impaired
users/workers then a system of Braille or raised characters or symbols would
be used for either stocking or for shopping. The specific users or workers of
the store would dictate the product and shelf labeling so as to be most
readily usable symbols for the product and shelf labels. We find the scope
of independent claim 1 merely recites 1) a package with a symbol and 2) a
label with a common symbol intended to be used for a shelf (“a first label
adapted for placement at a first location proximate to a target placement
location for the product”).
As discussed above, the store employee or the user form no part of the
claimed “method” and two steps of “providing.” Although not applied by
the Examiner, we could additionally speculate that the claimed method is as
broad as having a picture on a paper bag of a loaf of bread with the bread
inside the bag and second bread bag with the same picture of a loaf of bread
being placed on a shelf to designate target location.
Moreover, we find that the specific symbol claimed is does not change
the function or operation of the claimed invention. The claimed method is
the same no matter what the symbol is, the packaging is the same and the
labels are the same just the different non-functional descriptive material
thereon.
Additionally, we note that the language of independent claim 1 does
not set forth a method of determining attributes or separate elements of the
claimed system, but only “providing” non-functional descriptive material
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that is not used in any steps recited in the claimed method or functions
performed by a system. Consequently, Appellants’ argument and reliance
upon the unclaimed subject matter from the Specification does not further
clarify or limit the claimed invention.
Regarding apparatus claims (claims 8 and 21) generally, our
reviewing court guides the patentability of an apparatus claim “depends on
the claimed structure, not on the use or purpose of that structure.” Catalina
Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). “It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). As
addressed by the court in Paragon Solutions, LLC v. Timex Corp., 566 F.3d
1075, 1090 (Fed. Cir. 2009):
The problem with construing “displaying real-time data”
as used in the claims of the ’759 patent to preclude
“contextually meaningful delay” is that such a construction
injects a use limitation into a claim written in structural terms.
“[A]pparatus claims cover what a device is, not what a device
does.” Hewlett–Packard Co. v. Bausch & Lomb, Inc., 909 F.2d
1464, 1468 (Fed.Cir.1990).
. . .

Absent an express limitation to the contrary, any use of a device
that meets all of the limitations of an apparatus claim written in
structural terms infringes that apparatus claim. . . . [S]ee also
Roberts v. Ryer, 91 U.S. 150, 157 . . . (1875) (“The inventor of
a machine is entitled to the benefit of all the uses to which it
can be put, no matter whether he had conceived the idea of the
use or not.”). Construing a non-functional term in an apparatus
claim in a way that makes direct infringement turn on the use to
which an accused apparatus is later put confuses rather than
clarifies, frustrates the ability of both the patentee and potential
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infringers to ascertain the propriety of particular activities, and
is inconsistent with the notice function central to the patent
system.

Id. at 1091.

The steps utilized to produce the data (i.e., how the data is produced)
or the origin of the data (i.e., where (what application) the data comes from)
do not further limit the claimed invention either functionally or
structurally. The data received constitutes non-functional descriptive
material, which “does not lend patentability to an otherwise unpatentable
computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential); see Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003),
aff’d, (Rule 36) (June 12, 2006) (“[W]ellness-related” data in databases and
communicated on distributed network did not functionally change either the
data storage system or the communication system used in the claimed
method); see also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls,
88 USPQ2d at 1887–90 (discussing non-functional descriptive
material). Similarly, “[a]n[ ]intended use or purpose usually will not limit
the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003). Accordingly, we need not attribute any distinguishing character to
the asserted claim features.
Additionally, we note with respect to independent claim 21 that the
claim merely recites “[p]ackaging for a particular product” and further limits
the claimed packaging to a single symbol which may be used for visually
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guiding stocking of the product to a target placement location. But, the
claimed invention merely recites a package with a symbol. We find this to
be clearly taught and suggested by the Desmarais reference in paragraph
100. Moreover, all of the prior art symbols and codes on products provide
additional guides for the later stocking of the product, and the specific
content of the symbol, product name, or code are merely non-functional
descriptive material which is used to provide an association between a
product and a shelf. Moreover, the complexity of the labels and the number
of products on the shelves would have impacted the subsequent correlating
process along with the skill level of the worker providing the labor for the
association. For example, if there is only one single detergent sold and one
single location for detergent, then it is fairly easy and not a difficult task for
a worker to put the product in the correct location. Here, claim 21 merely
recites the single product packaging.
With respect to independent claim 8, we can envision many prior art
grocery stores where the labels and signage were provided by suppliers or
manufacturers for a product to form the store display.
Furthermore, any organized display of boxes of a specific product
with products bearing a trade dress for the product on the display would
meet the language of independent claim 8 because the box and the package
would each bear the same trade dress (see Dukes mayonnaise display infra.).
For example, see below images of three prior art store displays
containing products with corresponding labels containing non-textual icons
correlating the product at two different locations for the two symbols at two
separate locations.
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Multiple images with symbols of the trade dress of the Duke’s
mayonnaise container provided at different locations on the shelves in the
large display. (Sarune Bar, 61 Rare Vintage Photos Of Grocery Stores That
May Surprise You, BOREDPANDA (2018),
https://www.boredpanda.com/vintage-grocery-stores-usa-old-
pictures/?utm_source=google&utm_medium=organic&utm
_campaign=organic.)
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Multiple images/labels of oranges as the symbols at different locations
in the display on the shelf for Sunkist oranges. (Id.)
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Multiple images of elephants used in a Weston’s cookie display on the shelf.
(Id.)
We note that the language of independent claim 8 is broad enough to
read on a cookie display from the 1950s where multiple labels with
elephants are present and associated with a shelf of display of the product.
Clearly, the idea of using symbols for product placement has been used in
retail shopping for decades and the product dress and the packaging dress
with symbols rather than text or code was well known in the art at the time
of the invention. Specifically, even before there were scannable codes, the
trade dress on products and associated packaging were the only means of
associating products to shelf placement and forming retail displays.
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Additionally, the Zimmer reference teaches co-locating related products
groups using symbols. (See Zimmer, Figs. 2, 8.)

CONCLUSION
The Examiner did not err in rejecting claims 1–13 and 21–27 based
upon obviousness under 35 U.S.C. § 103(a).

DECISION
For the above reasons, we sustain the Examiner’s obviousness
rejection of claims 1–13 and 21–27.

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) (2017).

AFFIRMED