14606643 - (D) (P.T.A.B. Apr. 2, 2020)

Ernest James. Dale et al.

Patent Trials and Appeals BoardApr 2, 2020

14606643 - (D) (P.T.A.B. Apr. 2, 2020)

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. 14/606,643 01/27/2015 Ernest James DALE 106435-5029-US 9799 28977 7590 04/02/2020 MORGAN, LEWIS & BOCKIUS LLP (PH) 1701 MARKET STREET PHILADELPHIA, PA 19103-2921 EXAMINER GRABOWSKI, KYLE ROBERT ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 04/02/2020 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): judith.troilo@morganlewis.com phpatentcorrespondence@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERNEST JAMES DALE and JAMES FERNANDO JIRON ____________ Appeal 2018-002198 Application 14/606,643 Technology Center 3600 ____________ Before DANIEL S. SONG, ANNETTE R. REIMERS, and JILL D. HILL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision (1) to reject claims 1–7, 9, and 13–17 under 35 U.S.C. § 112(b), as indefinite; (2) to reject claims 1–7, 9, and 13–16 under 35 U.S.C. § 102(a)(1) as anticipated by Levin (US 5,948,494, issued Sept. 7,1999); (3) to reject claims 1–7, 9, and 13–16 under 35 U.S.C. § 103 as unpatentable over Dale (US 2004/0135364 A1, published July 15, 2004) and Levin; (4) to 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Information Planning and Management Service, Inc. Appeal Brief (“Appeal Br.”) 2, filed Aug. 30, 2017. Appeal 2018-002198 Application 14/606,643 2 reject claim 17 under 35 U.S.C. § 103 as unpatentable over Levin and Nijboer (US 6,116,650, issued Sept.12, 2000); and (5) to reject claim 17 under 35 U.S.C. § 103 as unpatentable over Dale, Levin, and Nijboer. Claims 8, 10–12, and 18–23 have been canceled.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under 35 U.S.C. § 41.50(b). CLAIMED SUBJECT MATTER The claimed subject matter “relates to an array of printed information sheets to be placed in a business establishment, where the array includes at least two stacks of printed information sheets.” Spec. ¶ 1 (emphasis added), Fig. 1A. Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 1. An array of printed information sheets including information about products displayed in a business establishment according to store planogram information specifying an order of locations of product placement within the business establishment, the array comprising: a stack of multiple product information sheets overlaid on one another; the stack of multiple product information sheets including at least a first multiple product information sheet, a second multiple product information sheet, and a third multiple product information sheet; the first multiple product information sheet including at least a first portion and a second portion connected to each other by a first frangible connection; 2 Claims 10 and 18–23 were canceled in an Amendment under 37 C.F.R. § 41.33(a). See Amendment filed Aug. 2, 2017. The Examiner entered the amendment to the claims in an Advisory Action dated Sept. 1, 2017. Appeal 2018-002198 Application 14/606,643 3 the second multiple product information sheet including at least a first portion and a second portion connected to each other by a second frangible connection; the third multiple product information sheet including at least a first portion and a second portion connected to each other by a third frangible connection; the first portion of the first multiple product information sheet having printed thereon first product information about a first product displayed in the business establishment at a first predetermined location specified by the store planogram information and a first location indicator indicating the first predetermined location in the business establishment for placement of the first portion of the first multiple product information information [sic.] sheet; the first portion of the second multiple product information sheet having printed thereon second product information about a second product displayed in the business establishment at a second predetermined location specified by the store planogram information and a second location indicator indicating the second predetermined location in the business establishment for placement of the first portion of the second multiple product information; the first portion of the third multiple product information sheet having printed thereon third product information about a third product displayed in the business establishment at a third predetermined location specified by the store planogram information and a third location indicator indicating the third predetermined location in the business establishment for placement of the first portion of the third multiple product information; the second portion of the first multiple product information sheet having printed thereon fourth product information about a fourth product displayed in the business establishment at a fourth predetermined location specified by the store planogram information and a fourth location indicator indicating the fourth predetermined location in the business establishment for placement of the second portion of the first multiple product information sheet; Appeal 2018-002198 Application 14/606,643 4 the second portion of the second multiple product information sheet having printed thereon fifth product information about a fifth product displayed at a fifth predetermined location specified by the store planogram information in the business establishment and a fifth location indicator indicating the fifth predetermined location in the business establishment for placement of the second portion of the second multiple product information; the second portion of the third multiple product information sheet having printed thereon sixth product information about a sixth product displayed at a first predetermined location specified by the store planogram information in the business establishment and a sixth location indicator indicating the sixth predetermined location in the business establishment for placement of the second portion of the third multiple product information; wherein the first, second, and third multiple product information sheet overlay one another such that the first portions of the first, second, and third multiple product information sheets are aligned and the second portions of the first, second, and third multiple product information sheets are aligned, wherein the order of the first portions of the first, second, and third multiple product information sheets in the stack, as indicated by the first location indicator, the second location indicator, and the third location indicator corresponds to an ordering of the first location, the second location, and the third location within the store according to the first predetermined location, the second predetermined location, and the third predetermined location specified by the store planogram information, wherein the order of the second portions of the first, second, and third multiple product information sheets in the stack, as indicated by the fourth location indicator, the fiffth [sic.] location indicator, and the sixth location indicator corresponds to an ordering of the fourth location, the fifth location, and the sixth location within the store according to the fourth predetermined location, the fifth predetermined location, and the sixth predetermined location specified by the store planogram information, and Appeal 2018-002198 Application 14/606,643 5 wherein the first portions of the first, second, and third multiple product information sheets are detachable as a stack from the second portions of the first, second, and third multiple product information sheets by breaking the first, second, and third frangible connections; and wherein the first product information, the second product information, the third product information, the fourth product information, the fifth product information, and the sixth product information differ from each other. ANALYSIS Indefiniteness Claim 1–7, 9, and 13–17 The Examiner determines that the limitations directed to “the order of the first portions of the first, second, and third multiple product information sheets in the stack” and “the order of the second portions of the first, second, and third multiple product information sheets in the stack” “are outside of the scope of an array of printed sheets. Thus the ordering of the sheets is not definite, as it depends on a tenuous relationship which is not defined (as may be possible in a system or method claim).” Final Act. 2–3.3 In the Answer, the Examiner states that “[t]he alleged difference between the application and the prior art is that the order of the (numbered) predetermined sheet and the (next numbered) predetermined sheet are based on planogram information of the business establishment” and that “this provides a non- definite structure” as “[t]he order of the structure is based off [the] ‘planogram’ which is outside of the scope of the invention.” Ans. 9.4 3 Final Office Action (“Final Act.”), dated Dec. 15, 2016. 4 Examiner’s Answer (“Ans.”), dated Oct. 24, 2017. Appeal 2018-002198 Application 14/606,643 6 A claim is properly rejected as being indefinite under 35 U.S.C. § 112(b) if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014). Appellant’s Specification describes: Each of the individual printed information sheets 11 may be detached from the associated stack 12, 14, or 16 in the order in which the printed information sheets 11 may be connected to structures in the business establishment based on a planogram for a set of products for display in the business establishment. Spec. ¶ 38 (emphasis added), Fig. 1A. Appellant’s Specification also describes (1) “[i]n some embodiments, the information related to the order of the printed information sheets in a stack may include . . . , planogram information for the product(s) associated with the printed information sheet from a planogram of products available in the business establishment”; (2) “[i]n some embodiments, the stack may be ordered based on the planogram information of the printed information sheets (e.g., based on locations at which the printed information sheets of the stack are to be placed)”; and (3) “[i]n some embodiments, the stack may be ordered based on the planogram information of the printed information sheets (e.g., based on a location at which the printed information sheets of the stack are to be placed).” Spec. ¶¶ 57, 58, 62, respectively (emphasis added). The Specification further describes that “[t]he products may be apportioned among the set of printed information sheets in order of their location in the business establishment, based on the planogram data for the business establishment.” Id. ¶ 89 (emphasis added). Appeal 2018-002198 Application 14/606,643 7 Upon review of Appellant’s Specification, we agree with Appellant that a skilled artisan would understand that the multiple product information sheets of claim 1 are ordered according to an ordering of multiple locations within the business establishment, which are specified by store planogram information. See Reply Br. 4–75; see also Appeal Br. 13–16. As such, we agree with Appellant that the order of the sheets of claim 1 is clearly defined in such a way that would instruct a skilled artisan as to the metes and bounds of claim 1. See Reply Br. 4–7; see also Appeal Br. 13–16. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of claims 1–7, 9, and 13–17 for indefiniteness. Anticipation by Levin Claims 1–7, 9, and 13–16 Claim 1 is directed to an array of printed information sheets including first, second, and third multiple product information sheets each having first and second portions “wherein the first portions of the first, second, and third multiple product information sheets are detachable as a stack from the second portions of the first, second, and third multiple product information sheets.” Appeal Br. 28–30 (Claims App.) (emphasis added). The Examiner finds that “Levin discloses an array comprising: a stack of multiple printed sheets overlaid on one another, including a sheet, a second sheet, and a third sheet. Each of the first, second, and third sheets are divided into a first portion and a second portion, connected via a frangible connection 28” and that “the first portions of the first, second, and third sheets are detachable from the second portions of the first, second, and third sheets, by breaking 5 Reply Brief (“Reply Br.”), filed Dec. 26, 2017. Appeal 2018-002198 Application 14/606,643 8 the first, second, and third frangible connections.” Final Act. 3–4 (citing Fig. 1 of Levin). Appellant contends that “[t]he claim recites a specific structure of an array of stacked information sheets that permits the separate stacks to be detached from one another as full stacks of sheets” and that “in Levin, while each individual sheet may be separated into multiple sheets, there is simply no disclosure that the sheets may be separated as an entire stack, as claimed.” Appeal Br. 20; see also Reply Br. 9–10. Although Figures 1 and 3 of Levin illustrate a pad (stack) of composite sheets, the remaining Figures 2 and 4–10 illustrate alternate embodiments of a single composite sheet with perforations for separating the single composite sheet into more than one sheet. Levin 1:65–2:11, Figs. 1– 10. Levin discloses that “[s]heet 12 includes at least one perforation line 28 extending perpendicular to binding 22 and extending longitudinally on sheet 12 permitting separation of sheet 12 into at least two separate sheets 30 and 32 in this embodiment, each of which is smaller than the sheet 12.” Levin 2:22–26; see also Appeal Br. 20; Reply Br. 10. We discern no discussion in Levin, nor does the Examiner direct us to any discussion in Levin (see Final Act. 3–4), of the plurality of composite sheets 12 being “detachable as a stack” along perforation line 28. Additionally, Figure 1 of Levin does not illustrate the plurality of composite sheets 12 as being “detachable as a stack” along perforation line 28.6 Nor does the Examiner provide sufficient evidence or technical reasoning to establish that the plurality of composite 6 Figure 3 of Levin does not illustrate the plurality of composite sheets 36 being “detachable as a stack” along perforation line 38. Levin, Fig. 3. Appeal 2018-002198 Application 14/606,643 9 sheets 12 of Levin necessarily are “detachable as a stack” along perforation line 28. See Final Act. 3–4. For these reasons, the Examiner fails to establish by a preponderance of the evidence that the sheet stack of Levin anticipates the array of printed information sheets of claim 1. Accordingly, we do not sustain the Examiner’s rejection of claims 1– 7, 9, and 13–16 as anticipated by Levin. Obviousness over Dale and Levin Claims 1–7, 9, and 13–16 The Examiner finds that Dale discloses the array of printed information sheets of claim 1, except, among other things, “at least three overlaid sheets of printed information.” Final Act. 6. Similar to the anticipation rejection above, the Examiner looks to the teachings of Levin for “provid[ing] the plurality of pages of perforated sheets in a bound form [i.e., stacking].” Id. As discussed above in reference to the anticipation rejection, we discern no discussion in Levin, nor does the Examiner direct us to any discussion in Levin (see Final Act. 3–4, 6–7), of the plurality of composite sheets 12 being “detachable as a stack” along perforation line 28. See Appeal Br. 24–25; see also Reply Br. 13–14. Additionally, Figure 1 of Levin does not illustrate the plurality of composite sheets 12 as being “detachable as a stack” along perforation line 28.7 Nor does the Examiner provide sufficient evidence or technical reasoning to establish that the 7 Figure 3 of Levin does not illustrate the plurality of composite sheets 36 being “detachable as a stack” along perforation line 38. Levin, Fig. 3. Appeal 2018-002198 Application 14/606,643 10 plurality of composite sheets 12 of Levin necessarily are “detachable as a stack” along perforation line 28. See Final Act. 3–4, 6–7. For these reasons, the Examiner fails to establish by a preponderance of the evidence that the combined teachings of Dale and Levin disclose the array of printed information sheets of claim 1. Accordingly, we do not sustain the Examiner’s rejection of claims 1– 7, 9, and 13–16 as unpatentable over Dale and Levin. Obviousness over Levin and Nijboer or Dale, Levin, and Nijboer Claim 17 The Examiner relies on the same unsupported findings in Levin discussed above for the obviousness rejections of claim 17. See Final Act. 7–8. The Examiner does not rely on the teachings of Nijboer to remedy the deficiencies of Levin. Accordingly, for reasons similar to those discussed above, we do not sustain the Examiner’s obviousness rejections of claim 17. NEW GROUND OF REJECTION8 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 1–7, 9, and 13–17 under 35 U.S.C. § 112(a), first paragraph, for lack of an adequate written description of the claimed invention. 8 Because Appellant’s application was filed after September 16, 2012, the effective date of the amendments to 35 U.S.C. § 112 enacted by the Leahy- Smith America Invents Act (AIA), the post AIA version of the statute applies. See AIA, Pub. L. No. 112–29, § 4(e), 125 Stat. 284, 297 (2011). Appeal 2018-002198 Application 14/606,643 11 35 U.S.C. § 112(a), First Paragraph Claims 1–7, 9, and 13–17 In order to satisfy the written description requirement, “the specification must describe an invention understandable to [a] skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citation omitted). Independent claim 1 calls for “a stack of multiple product information sheets overlaid on one another; the stack of multiple product information sheets including at least a first multiple product information sheet, a second multiple product information sheet, and a third multiple product information sheet.” See Appeal Br. 28 (Claims App.) (emphasis added). Appellant points to paragraphs 1, 4, and 7 of the Specification for written description support. See Appeal Br. 3. Paragraph 1 of the Specification describes that “[t]he disclosure relates to an array of printed information sheets to be placed in a business establishment, where the array includes at least two stacks of printed information sheets.” Spec. ¶ 1 (emphasis added). Paragraph 4 similarly describes that “[t]he array of printed information sheets may include at least two stacks of printed information sheets.” Id. ¶ 4 (emphasis added).9 There is no discussion in Appellant’s Specification of a “single” stack. See Spec., passim. Additionally, Figures 1A through 2E of 9 Paragraph 7 of the Specification describes a method. Spec. ¶ 7. Appeal 2018-002198 Application 14/606,643 12 the subject application illustrate “at least two” stacks. See Spec., Figs. 1A– 2E. We also note that claim 1 recites “the first multiple product information sheet including at least a first portion and a second portion connected to each other by a first frangible connection” and “the second multiple product information sheet including at least a first portion and a second portion connected to each other by a second frangible connection.” Appeal Br. 28 (Claims App.). There is no discussion in the Specification or illustration in the Figures of either first multiple product information sheet 18 or second multiple product information sheet 20 including at least a first portion and a second portion connected to each other by a frangible connection. See Spec., passim, Figs., passim. Rather, the Specification describes that “[e]ach stack 12, 14, 16 of printed information sheets 11 may be detachably connected to an adjacent stack 12, 14, 16, or to the corresponding array 10 as a whole” and “[t]he stacks 12, 14, 16 may be detachably connected to each other by one or more frangible connections 30.” Spec. ¶¶ 28, 29, respectively (emphasis added), Figs. 1A, 1B; see also Appeal Br. 3. For these reasons, Appellant’s originally-filed disclosure does not reasonably convey to those skilled in the art that Appellant had possession of the subject matter now claimed as of the filing date of the application. See Ariad, 598 F.3d at 1351. Accordingly, we find that the present application does not reasonably convey to those skilled in the art that Appellant had possession of the subject matter as now claimed, specifically, including “a stack” and either a first multiple product information sheet or a second multiple product information sheet including at least a first portion and a second portion “connected to Appeal 2018-002198 Application 14/606,643 13 each other by a . . . frangible connection,” as called for in independent claim 1. Claims 2–7, 9, and 13–17 are also rejected based on their dependence from claim 1. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–7, 9, 13– 17 112(b) Indefiniteness 1–7, 9, 13–17 1–7, 9, 13– 16 102(a)(1) Levin 1–7, 9, 13–16 1–7, 9, 13– 16 103 Dale, Levin 1–7, 9, 13–16 17 103 Levin, Nijboer 17 17 103 Dale, Levin, Nijboer 17 1–7, 9, 13– 17 112(a) Written Description 1–7, 9, 13–17 Overall Outcome 1–7, 9, 13–17 1–7, 9, 13–17 FINALITY OF DECISION AND RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2018-002198 Application 14/606,643 14 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the [E]xaminer. The new ground of rejection is binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the [E]xaminer, overcomes the new ground of rejection designated in the decision. Should the [E]xaminer reject the claims, [Appellant] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)