Ex Parte Finn et alDownload PDFPatent Trial and Appeal BoardMar 10, 201411375508 (P.T.A.B. Mar. 10, 2014) 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. 11/375,508 03/14/2006 Gavin Alexander Finn 42001/100 3310 11951 7590 03/11/2014 LeClairRyan 70 Linden Oaks Suite 210 Rochester, NY 14625 EXAMINER MEROUAN, ABDERRAHIM ART UNIT PAPER NUMBER 2616 MAIL DATE DELIVERY MODE 03/11/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte GAVIN ALEXANDER FINN and JOSHUA EDWARD SMITH _____________ Appeal 2011-012112 Application 11/375,508 Technology Center 2600 ______________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012112 Application 11/375,508 2 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1-46. We reverse. Claims 1, 12, and 23 are reproduced below with disputed limitations emphasized: 1. A method for displaying one or more products, the method comprising: providing a kiosk on a floor of a retail store; displaying a substantially life size, virtual, three- dimensional view of at least one product and textual content associated with the at least one product on a display system in the kiosk, the display system extending from the floor of the retail store to a height suitable for accommodating the substantially life size, virtual, three-dimensional view of the at least one product; selecting in the retail store at least one action with the virtual, three-dimensional view of the product on the display system in the kiosk; and displaying in the retail store a visual, three-dimensional animation of the selected action with the product on the display system in the kiosk. 12. A system for displaying one or more products, the system comprising: an in-store kiosk for a use on a floor of a retail store; a display system in the in-store kiosk that displays a substantially life size, virtual, three-dimensional view of a product and textual content associated with the product, the display system extending from the floor of the retail store to a Appeal 2011-012112 Application 11/375,508 3 height suitable for accommodating the substantially life size, virtual, three-dimensional view of the at least one product; a selection system at the in-store kiosk that selects in response to operator input at least one of one or more actions taken with the interactive view of the product on the display system in the in-store kiosk; and an interactive display processing system that stores and provides the virtual, three-dimensional view of the product to the display system in the in-store kiosk and stores and provides a three-dimensional animation of the one or more of the actions to the display system in the in-store kiosk based on the selections from the selection system. 23. A method for making a system for displaying one or more products, the method comprising: providing a display system in an in-store kiosk for a use on a floor of a retail store that displays a substantially lithe size, virtual, three-dimensional view of a product and textual content associated with the product, the display system extending from the floor of the retail store to a height suitable for accommodating the substantially life size, virtual, three- dimensional view of the at least one product: providing a selection system at the in-store kiosk that selects in response to operator input at least one of one or more actions taken with the interactive view of the product; and providing an interactive display processing system that stores and provides the virtual, three-dimensional view of the product to the display system at the in-store kiosk and stores and provides a three-dimensional animation of the one or more of the actions to the display system at the in-store kiosk based on the selections from the selection system. Appeal 2011-012112 Application 11/375,508 4 Examiner’s Rejection The Examiner has rejected claims 1-46 under 35 U.S.C. § 103(a) as being unpatentable over Kwon (US 2005/0253840 A1, Nov. 17, 2005) and Gettman (US 2005/0086612 A1, Apr. 21, 2005). Ans. 4-15. Examiner’s Findings and Conclusions The Examiner determines that Kwon fails to meet the limitations of claims 1, 12, and 23 of a kiosk on the floor of a retail store along with a substantially life size, virtual, three-dimensional display extending from the floor to a suitable height for displaying a product (Ans. 4-5, 8, and 11). The Examiner determines that Gettman’s disclosures found at paragraphs [0046], [0072], [0077], [0102], [0103], and [0207] meet the requirement of claims 1, 12, and 23 of a substantially life size, virtual, three-dimensional display extending from the floor to a suitable height for displaying a product (Ans. 5-6, 8, 11, and 15-16; Fig. 2). On this basis, the Examiner concludes that the combination of Kwon and Gettman teaches or suggests the subject matter of claims 1, 12, and 23, including a kiosk on the floor of a retail store along with a substantially life size, virtual, three-dimensional display extending from the floor to a suitable height for displaying a product. Id. ISSUES Based on Appellants’ arguments found at pages 4-12 of the Appeal Brief, the principal issues presented on appeal are: (1) Did the Examiner err in rejecting claims 1-46 under 35 U.S.C. § 103(a) as unpatentable over the combination of Kwon and Gettman because Kwon and/or Gettman, taken alone or in combination, fail to teach Appeal 2011-012112 Application 11/375,508 5 or suggest a kiosk on the floor of a retail store along with a substantially life size, virtual, three-dimensional display extending from the floor to a suitable height for displaying a product, as recited in independent claims 1, 12, and 23? (2) Did the Examiner err in failing to consider, evaluate, and respond to Appellants’ arguments of non-obviousness demonstrated by the Declaration of one of the Inventors (Gavin A. Finn, Ph.D.) of the instant application on appeal submitted under 37 C.F.R. § 1.132, alleging substantial commercial success of the substantially life size, three- dimensional product display and interactive selection system and method recited in claims 1-46 (Br. 12)? ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We concur with Appellants’ conclusion that the Examiner erred in finding the combination of Kwon and Gettman teaches the kiosk and display limitations as recited in independent claims 1, 12, and 23. We disagree with the Examiner’s findings that the combination of Kwon and Gettman teaches or suggests the claimed subject matter. Specifically, the Examiner has not shown that Gettman teaches or suggests a kiosk on the floor of a retail store along with a substantially life size, virtual, three- dimensional display extending from the floor to a suitable height for displaying a product. Gettman’s disclosures in paragraphs [0046], [0072], [0077], [0102], [0103], and [0207] and Figures 1, 2, 5A, and 5B merely show and describe Appeal 2011-012112 Application 11/375,508 6 computers 512A-N with browsers 504 for displaying a virtual three- dimensional view on buildings/walls 3 of storefronts on a display 1, which is described as being smaller than life-sized (Gettman ¶ [0]), where the size and number of the display windows and/or walls are adjustable by a user. Gettman only discloses displaying a simulated three-dimensional environment depicting display windows 4 having adjustable heights and widths (¶ [0111] and Fig. 1); in other words, a virtual wall made by displaying a normal web browser window on a wall as shown in Figure 1 (see Fig. 2 flow diagram showing block labeled “Display normal web browser window on wallâ€). The Examiner’s determination that Gettman’s Figure 2 and paragraph [0207] disclose a substantially life size, virtual, three-dimensional display extending from the floor to a suitable height for displaying a product (Ans. 16-17) is in error. Accordingly, for at least this reason, will not sustain the Examiner’s rejection of independent claims 1, 12, and 23 and the rejection of dependent claims 2-11, 13-22, and 24-46 depending respectively therefrom. Declaration The Examiner has a duty to duly consider Appellants’ Declaration in assessing the obviousness of Appellants’ claimed invention. See Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000) (evidence of secondary considerations must be considered in determining obviousness if present); accord Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). The declarant’s statements and contentions of non-obviousness made in the Declaration of Gavin A. Finn, Ph.D. alleging commercial success were not considered appropriately by the Examiner (see generally Final Rej. 2-16; Ans. 4-17). Furthermore, the Examiner’s assertion that Gettman Appeal 2011-012112 Application 11/375,508 7 represents a big success in the market (Final Rej. 16) is not pertinent to the issue of whether or not Appellants’ Declaration is persuasive of commercial success and/or non-obviousness. The ultimate determination of whether an invention is obvious is a legal question based on the totality of the evidence. Richardson-Vicks, Inc. v. The Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). In view of the foregoing, we conclude that the Examiner failed to (i) properly consider, evaluate, and respond to Appellants’ arguments of non-obviousness demonstrated by the Declaration of one of the Inventors (Gavin A. Finn, Ph.D.) alleging substantial commercial success of the substantially life size, three-dimensional product display and interactive selection system and method recited in claims 1-46, and thus (ii) properly assess the obviousness of Appellants’ claimed invention. CONCLUSIONS The Examiner erred in rejecting claims 1-46 over the combination of Kwon and Gettman because: (1) Kwon and/or Gettman, taken alone or in combination, fail to teach or suggest a kiosk on the floor of a retail store along with a substantially life size, virtual, three-dimensional display extending from the floor to a suitable height for displaying a product, as recited in independent claims 1, 12, and 23; and (2) the Examiner erred in failing to consider, evaluate, and respond to Appellants’ arguments of non-obviousness demonstrated by the Declaration of one of the Inventors (Gavin A. Finn, Ph.D.) of the instant application on appeal submitted under 37 C.F.R. § 1.132, alleging substantial commercial Appeal 2011-012112 Application 11/375,508 8 success of the substantially life size, three-dimensional product display and interactive selection system and method recited in claims 1-46. DECISION The decision of the Examiner to reject claims 1-46 is reversed.1 REVERSED msc 1 The Patent Trial and Appeal Board is a review body, rather than a place of initial examination. We leave to the Examiner to consider the appropriateness of further rejections under 35 U.S.C. § 103(a) over the cited references applied in combination with additional reference(s), for example one disclosing a projection screen or display having a size close to 6 feet by 8 feet (see e.g., claim 43), or other size appropriate for accommodating a life size, three-dimensional view of a product/object. Copy with citationCopy as parenthetical citation