Ex Parte Finn et al

Patent Trial and Appeal Board

Mar 10, 2014

11375508 (P.T.A.B. Mar. 10, 2014)

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

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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
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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.
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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
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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
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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 wall”). 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
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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
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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.