David J. Schram et al.Download PDFPatent Trials and Appeals BoardSep 4, 201914104896 - (D) (P.T.A.B. Sep. 4, 2019) 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. 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 Appeal 2018-005719 Application 14/104,896 2 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 Appeal 2018-005719 Application 14/104,896 3 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 Appeal 2018-005719 Application 14/104,896 4 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 Appeal 2018-005719 Application 14/104,896 5 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 Appeal 2018-005719 Application 14/104,896 6 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 Appeal 2018-005719 Application 14/104,896 7 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.”). Appeal 2018-005719 Application 14/104,896 8 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 Appeal 2018-005719 Application 14/104,896 9 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 Appeal 2018-005719 Application 14/104,896 10 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 Appeal 2018-005719 Application 14/104,896 11 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 Appeal 2018-005719 Application 14/104,896 12 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 Appeal 2018-005719 Application 14/104,896 13 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. Appeal 2018-005719 Application 14/104,896 14 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.) Appeal 2018-005719 Application 14/104,896 15 Multiple images/labels of oranges as the symbols at different locations in the display on the shelf for Sunkist oranges. (Id.) Appeal 2018-005719 Application 14/104,896 16 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. Appeal 2018-005719 Application 14/104,896 17 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 Copy with citationCopy as parenthetical citation