David J. Schram et al.

Patent Trials and Appeals Board

Oct 30, 2019

14104896 - (R) (P.T.A.B. Oct. 30, 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 10/30/2019
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
10/30/2019 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 REQUEST FOR REHEARING

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Appellant1 requests rehearing of the Decision entered September 4,
2019. In the Decision, we affirmed the Examiner’s rejections of claims 1–
13 and 21–27 under 35 U.S.C. § 103.
A request for rehearing “must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board,” and must comply with 37 C.F.R. § 41.52(a)(1). Appellant’s Request
for Rehearing is limited to whether our Decision overlooked or
misapprehended certain points identified by Appellant regarding dependent
claim 22. (Req. Reh’g 1–4).
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).
We set forth the language of independent claim 21 and dependent
claim 22 below to show the scope of claim 22 as it relates to independent
claim 21.
Claims 21 and 22, reproduced below, are illustrative of the claimed
subject matter:
21. Packaging for a particular product, the packaging
comprising:
a product package; and
a first placement guidance symbol disposed on the product
package, the first placement guidance symbol comprising a first
non-textual icon configured to specifically correlate to the
particular product, without:

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as S.C.
Johnson & Son, Inc. (App. Br. 2).

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reliance on a textual element; and
reliance on a scannable code;

the first placement guidance symbol visually adapted to guide
stocking of the particular product to a target placement location,
when:2

the target placement location includes a proximately-
placed label, the proximately placed label including 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.

22. The packaging of claim 21, where the first placement
guidance symbol further includes electronic circuitry configured
to emit a visual signal, an audio signal or both.3

2 “An 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). Although “[s]uch
statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id. See also Decision 11–13 “Additional Insights”
discussion of intended use and scope of claim 21

3 We note that Appellant did not provide any Summary of the Claimed
Subject Matter with respect to dependent claim 22. (See App. Br. 5). We
find support in the Specification in paragraphs 19 and 31 for an “electronic
circuit.” (Spec. ¶ 19 “an electronic chip that guides placement of a product
through electronic recognition or by emitting visual or audio indicators.”)

Additionally, we note that Appellant’s late presentation of
independent claim 21 as a “packaging” claim to replace the method of multi-
way correlation of symbols, which was not elected in response to the
restriction requirement, mailed October 3, 2016, appears to reformulate the
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Zimmer et al. US 2009/0008271 A1 Jan. 8, 2009
Nakamura US 2010/0138322 A1 June 3, 2010
Hurme et al. US 2012/0041887 Al 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 further 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
Appellant contends that we overlooked or misapprehended the
sections of the Appeal Brief and Reply Brief regarding dependent claim 22.
(Req. Reh’g 2–4). At the outset, we note that Appellant contends, in the
Appeal Brief, that “Appellant submits claims 2-7, 9-13, and 22-27, claims
which depend either directly or indirectly from claims 1, 8, and 21, are also

withdrawn/method claim 14. We leave it to the Examiner to further consider
the scope of the claim 21 in any further prosecution.

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patentable over the cited references for at least the same reasons presented
above for claims 1, 8, and 21.” (App. Br. 14) (emphasis added). As a result,
we grouped claim 22 as falling with its respective dependent claim 21. (See
37 C.F.R. § 41.37(c)(1)(iv)).
Appellant’s Request for Rehearing generally repeats the arguments set
forth in the Appeal Brief and Reply Brief. We agree with Appellant that we
overlooked Appellant’s separate argument for patentability of dependent
claim 22, and we modify our Decision to not group dependent claim 22 with
dependent claims 9–13 and 23–27, which fall with their respective
independent claims. Therefore, we further address Appellant’s separate
arguments presented in the Appeal Brief and Reply Brief regarding
dependent claim 22 below.
In the rejection of independent claim 21, the Examiner made a
persuasive showing of a first and second guidance symbols based upon the
combination of Zimmer and Desmarais. For dependent claim 22, the
Examiner merely relied upon Nakamura to teach the well-known use of an
electronic circuit to generate and emit a visual signal. The Examiner
proffers a simple rearrangement of the location of the electronic circuit from
the shelf to the product packaging. (Ans. 7). Although the Examiner
additionally discusses nonfunctional descriptive material with respect to
dependent claim 22, we cannot agree with the Examiner that the electronic
circuit would constitute non-functional descriptive material, but we agree
with the Examiner that Nakamura teaches the use of an electronic circuit to
generate guidance symbols. We further agree with the Examiner that the
first and second placement guidance symbols are nonfunctional descriptive
material, as we discussed in the Decision. (See Dec. 10 “Additional
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Insights”). Therefore, Appellant’s argument is not persuasive of error in the
Examiner’s factual findings or conclusion of obviousness of dependent
claim 22.
We note that independent claim 21 is directed to “packaging” for a
particular product and further limits of the “packaging.” We further note
that the “first placement guidance symbol” and the “packaging” are the only
two limiting elements of the claimed “packaging” and the remainder of the
claim after “when” does not further limit the “packaging.” (See also Dec.
11–13 “Additional Insights”).
In the Appeal Brief, Appellant contends that Nakamura teaches
electronic shelf labels disposed on the shelf and not on the product
packaging, and contends that nowhere does Nakamura describe emitting
audio or visual signals. (App. Br. 15).
In light of Appellant’s arguments in the Appeal Brief, the Examiner
modifies the thrust of the rejection of dependent claim 22 in the Examiner’s
Answer. (See Final Act. 9–10). The Examiner clarified the basis of the
rejection, which essentially modified the thrust of the application of
Nakamura to the claimed invention as then appreciated by the Examiner
with the late presentation of claims 21–27 (after the Restriction
Requirement, Election, and First Office Action). (Ans. 6–7).
In the Examiner’s Answer, the Examiner maintains that Nakamura
teaches the use of electronic labels and that the disposition or orderly
arrangement of the labels is nonfunctional descriptive material. (Ans. 7).
Additionally, the Examiner maintains that:
it is old and well-known to affix electronic labels or tags to
products for security, or coupons or even RFID labels. Thus, if
the prior art suggests electronic circuitry on or within label,
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merely choosing a location to place the label would be presumed
to be well within the level of ordinary skill in the art at the time
the invention was effectively filed. The difference between the
prior art and the claimed invention is simply a rearrangement of
nonfunctional descriptive material.

(Ans. 7).
In the Reply Brief, Appellant contends that the claimed feature “first
placement guidance symbol is disposed on the product package” must be
considered when determining nonobviousness in view of prior art. (Reply
Br. 8).
We agree with Appellant that the location of the first placement
guidance symbol disposed on the product package must be considered when
determining nonobviousness, and we found that the base combination of
Zimmer and Desmarais, with respect to independent claims 1 and 21, taught
and fairly suggested the first placement guidance symbol disposed on the
product package. (Dec. 3–4 discussing claim 1 with respect to Desmarais ¶
100). Therefore, Appellant’s argument is not persuasive of error in the
Examiner’s factual findings or conclusion of obviousness of dependent
claim 22.
We further note that independent claim 21 recites a first placement
guidance symbol on the package. We note that the Examiner has relied
upon the combination of Zimmer and Desmarais to teach and suggest the
limitations of independent claim 21, which we affirmed in the Decision.
(Dec. 8–9; see also Dec. 4–8 discussing of affirmance of independent claim
1 regarding the first placement guidance symbol on packaging).
We note that dependent claim 22 does not specifically require “first
placement guidance symbol is disposed on the product package,” and the
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Examiner did not rely upon Nakamura to teach or suggest this limitation, as
evidenced by the rejection of independent claim 21 not relying upon
Nakamura. As discussed above, the Examiner relied upon the combination
of Zimmer and Desmarais to teach and suggest the combination of the
placement guidance symbols, and the Examiner additionally relied upon
Nakamura to teach the use of an electronic circuit to generate the placement
guidance symbol. (See Ans. 4 discussing combination of Zimmer and
Desmarais; Ans. 6–7 discussing Nakamura and Nakamura in combination
with Zimmer and Desmarais.). Therefore, Appellant’s argument is not
persuasive of error in the Examiner’s factual findings or conclusion of
obviousness of dependent claim 22.
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” because the skilled artisan is “a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 420–21. Appellant does not present
adequate evidence that the resulting arrangements were “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418–19).
Appellant has not demonstrated error in the rejection, but has instead
alleged deficiencies in the references, taken one at a time, as if the rejection
were for lack of novelty. However, nonobviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references. In re Merck & Co., 800 F.2d
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1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)).
Appellant also argues that:

the Answer asserts that it is old and well-known to affix
electronic labels or tags to products for security, or coupons or
even RFID labels. Appellant notes that none of the allegedly
well-known tags or labels include a “placement guidance
symbol” as recited by the claims. Further, the Answer cites no
evidence of record to support this contention, nor has the Office
offered up new grounds of rejection to properly afford Appellant
the chance to respond on the merits.

(Reply Br. 8).
The Examiner maintains that the orderly arrangement of the
placement guidance symbol is the placement of nonfunctional descriptive
material which is “simply a rearrangement of nonfunctional descriptive
material.” (Ans. 7). We agree with the Examiner that the location or
position of the placement guidance symbol does not change the function of
the placement guidance symbol or the packaging. (See In re Japikse, 181
F.2d 1019 (CCPA 1950) (Claims to a hydraulic power press which read on
the prior art except with regard to the position of the starting switch were
held unpatentable because shifting the position of the starting switch would
not have modified the operation of the device.); In re Kuhle, 526 F.2d 553
(CCPA 1975) (the particular placement of a contact in a conductivity
measuring device was held to be an obvious matter of design choice)).
When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options
within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill
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and common sense. In that instance the fact that a combination was
obvious to try might show that it was obvious under § 103.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Although we agree with Appellant that the Examiner has not provided
any additional extrinsic evidence regarding the statement that it was “old and
well-known to affix electronic labels or tags to products or coupons or even
RFID labels,” we agree with the Examiner that Nakamura clearly teaches
and discloses a guidance symbol that includes “electronic circuitry
configured to emit a visual signal.” (Nakamura ¶¶ 52 “the display 51 is a
dot matrix display unit, it can display not only numbers representing the
prices of the products 6 but also characters, symbols and figures,” and 53
“electronic shelf label 5 has a compact battery 56 and a control unit 57.”)
Therefore, Nakamura teaches electronic circuitry that emits a visual signal,
as required by the alternative language of dependent claim 22.
Consequently, Appellant’s argument does not show error in the Examiner’s
factual findings or conclusion of obviousness of dependent claim 22.

CONCLUSION
Although we agree with Appellant that we overlooked Appellant’s
separate argument for patentability of dependent claim 22, we have
considered Appellant’s arguments, but Appellant’s arguments do not show
error in the Examiner’s obviousness rejection of dependent claim 22.
Therefore, we deny Appellant’s Request for Rehearing to modify the
outcome of our decision. Because this decision on the Request for
Rehearing is a first decision on the merits of Appellant’s separate arguments
for patentability with respect to dependent claim 22, a second request for
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rehearing limited to addressing the Board’s conclusions with respect to
claim 22 would be permitted.

DECISION
For the above reasons, we modify our Decision to not group
dependent claim 22 with affirmed claims 1–13, 21, and 23–27 as set forth in
the Decision, and we additionally sustain the Examiner’s obviousness
rejection of dependent claim 22 as set forth above.

Outcome of Decision on Rehearing:

Claims 35 U.S.C. § References/
Basis
Denied Granted
1–13, 21,
and 23–26
103 Zimmer and
Desmarais
1–13, 21,
and 23–26

22 103 Zimmer,
Desmarais, and
Nakamura
22
27 103 Zimmer,
Desmarais, and
Hurme
27
Overall
outcome
1–13 and
21–27

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Final Outcome of Appeal after Rehearing:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–13, 21,
and 23–26
103 Zimmer and
Desmarais
1–13, 21,
and 23–26

22 103 Zimmer,
Desmarais, and
Nakamura
22
27 103 Zimmer,
Desmarais, and
Hurme
27
Overall
outcome
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).

DENIED