Ernest James. Dale et al.

Patent Trials and Appeals Board

Apr 3, 2020

14160005 - (D) (P.T.A.B. Apr. 3, 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.
14/160,005 01/21/2014 Ernest James DALE 106435-5028-US 1021
28977 7590 04/03/2020
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
04/03/2020 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, JAMES FERNANDO JIRON,
JOHN PATRICK DESMET, and NATHAN ANDREW ROWELL
____________

Appeal 2018-002224
Application 14/160,005
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 claim 1–3, 5–8, 10–13, 15–18, 20–23, 25–27, and 31–
36 under 35 U.S.C. § 112(b), as indefinite; and (2) to reject claims 1–3, 5–8,
10–13, 15–18, 20–23, 25–27, and 31–36 under 35 U.S.C. under 35 U.S.C.
§ 103 as unpatentable over Dale (US 2004/0135364 A1, published July 15,

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 July 31,
2017.
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2004) and Wood (US 2006/0017278 A1, published Jan. 26, 2006). Claims
4, 9, 14, 19, 24, and 28–30 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to an ordered stack of bound
sheets comprising a set of printed product information sheets for a store,
where the printed product information sheets are removably attached to each
other and ordered according to planogram data or ordered data for the store.”
Spec. ¶ 1, Fig. 1A. Claims 1, 11, and 21 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. An ordered stack of bound product information sheets,
wherein sheets within the stack include information about
products to be displayed in a store according to store planogram
information for the store, the store planogram information
specifying, for a set of shelves in the store, an order of locations
of products including for a given product a particular shelf and a
location on the shelf within the store, and wherein the sheets
further include adhesive to enable a product information sheet to
be located on the shelf at the product location on the shelf, the
stack of bound sheets comprising:
a stack of sheets including a first sheet, a second
sheet, and a third sheet, wherein the first sheet, the second
sheet, and the third sheet, overlay one another and are
bound along an edge of the first sheet, the second sheet,
and the third sheet to form the ordered stack of bound
sheets, wherein
the first sheet includes first printed product
information and a first order indicator located thereon, the
first printed product information including information
about a first product to be displayed in the store at a first
location specified by the store planogram information, and
the first order indicator indicating the first location at
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which the first product and first sheet is to be displayed in
the store as specified by the store planogram information,
the first order indicator comprising: textual or graphic
information including an aisle, a shelf, and a position on
the shelf at which the first product is to be placed in the
store;
the second sheet includes second printed product
information and a second order indicator located thereon,
the second printed product information including
information about a second product to be displayed in the
store at a second location specified by the store planogram
information, and the second order indicator indicating the
second location at which the second product and second
sheet is to be displayed in the store as specified by the store
planogram information, and
the third sheet includes third printed product
information and a third order indicator located thereon, the
third printed product information including information
about a third product to be displayed in the store at a third
location specified by the store planogram information, and
the third order indicator indicating the third location at
which the third product and third sheet is to be displayed
in the store as specified by the store planogram
information,
wherein the order of the first sheet, the second sheet,
and the third sheet, in the stack, as indicated by the first
order indicator, the second order indicator, and the third
order indicator, corresponds to an ordering of the first
location, the second location, and the third location within
the store specified by the store planogram information.

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ANALYSIS
Indefiniteness
Claim 1–3, 5–8, 10–13, 15–18, 20–23, 25–27, and 31–36
The Examiner determines that the limitation directed to “the order of
the first sheet, the second sheet, and the third sheet, in the stack” in claim 1,
“the order of the cover sheet, the second bound sheet, and the third bound
sheet in the stack” of claim 11, and “the order of the cover sheet, the second
printed product information sheet, and the third printed product information
sheet in the stack” of claim 21 is indefinite. See Final Act. 2–3.2 In
particular, the Examiner determines that
[t]he ordering of the sheets is ultimately based on “where the first
printed product information sheet is to be placed . . . and a second
location at which the second printed product information is to be
placed according to the planogram [and third]”, which is not
definite since there is no information on how the location
information between the two is used. . . . the claim requires that
the ordering between the sheets is based on each location
indicator, without actually describing how the ordering is based
off of these locations.

Id. In the Answer, the Examiner states that “the indicia on adjacent sheets
(cover sheet, second sheet, and third sheet) is related to store locations outside
of the scope of the claims (an ordered stack),” which renders the claims
indefinite. Ans. 8.3
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

2 Final Office Action (“Final Act.”), dated Dec. 15, 2016.
3 Examiner’s Answer (“Ans.”), dated Oct. 25, 2017.
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claim “contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014).
Appellant’s Specification describes that the subject invention “relates
to an ordered stack of bound sheets comprising a set of printed product
information sheets for a store, where the printed product information sheets
are removably attached to each other and ordered according to planogram
data or ordered data for the store” that “[i]n some embodiments, the ordered
stack of bound sheets may be ordered based on the planogram information
of the printed product information sheets (e.g., based on locations at which
the printed information sheets of the ordered stack are to be placed)” and
that “[t]he order of the printed product information sheets may match an
order in which the person, machine, apparatus, and/or other entity moves
through the store based on the planogram.” See Spec. ¶¶ 1 (emphasis
added), 4, 10; see also id. ¶¶ 39 (“The order of the printed product
information sheets 200 may match an order in which the worker moves
through the store based on the planogram”), 61, Figs. 1A–1E; Appeal Br. 7–
8; Reply Br. 3.
Appellant’s Specification also describes:
In some embodiments, the planogram information 230 may
comprise textual information related to a specific placement of
the printed product information sheet (e.g., with regard to aisle,
shelf, location on shelf, and/or other location of an associated
product), a graphic depiction of a location in the store (e.g.,
absolute location, location relative to a next ordered printed
product information sheet, location on a shelf indicated by
textual information, location relative to the associated
product(s), location relative to an adjacent product, and/or other
location) based on the planogram information for the printed
product information sheet, a combination thereof, and/or other
information related to the location at which the printed product
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information sheet is to be placed in the store. In some
embodiments, the planogram information 230 also may comprise
information related to placement location of an adjacent
previous printed product information sheet and an adjacent next
printed product information sheet in the ordered stack of bound
sheets 10.
Spec. ¶ 62 (emphasis added), Fig. 3A; see also id. ¶ 11; Appeal Br. 7.
Appellant’s Specification further describes that “[t]he bound sheet
order indicator may indicate the starting location and the end location based
on planogram information for the store” and that “[i]n some embodiments,
the order indicator information 220 related to the order of the printed
product information sheet 200 may comprise a number relating to a position
of the printed product information sheet 200,” as well as “planogram
information 230 for the product(s) associated with the printed product
information sheet 200 from a planogram of products available in the store.”
Spec. ¶¶ 59, 60, respectively.
Upon review of Appellant’s Specification, we agree with Appellant
that a skilled artisan would understand that “the order of the sheets
corresponds to an order specified by the store planogram information” and
that the “store planogram information specifies an order of locations of
products within the store, and can include, e.g., products on the same shelf.”
See Appeal Br. 9–10; see also Reply Br. 3–5. As such, we agree with
Appellant that “the order of the sheets is clearly defined by the claims in a
way that would instruct a person of ordinary skill in the art as to their metes
and bounds” of the claims. Reply Br. 5; see also Appeal Br. 11.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claim 1–3, 5–8, 10–13, 15–18, 20–23, 25–27, and
31–36 for indefiniteness.
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Obviousness over Dale and Wood
Claims 1–3, 5–8, 10–13, 15–18, 20–23, 25–27, and 31–36
The Examiner finds that Dale discloses the product information sheets
of claim 1 substantially as claimed, except that Dale “do[es] not disclose that
the printed produced information sheets are stacked (one of the bound sheets
overlays the other).” Final Act. 4–5. The Examiner finds that “Wood
teaches providing similar perforated products in a glue binding 1 (Fig. 3)”
and reasons that it would have been obvious to a skilled artisan “to provide
the printed product information sheets taught by [Dale] in a glue binding in
view of Wood to group several information sheets together.” Id. at 5. The
Examiner further reasons that “[t]he claim would have been obvious because
a particular known technique was recognized as part of the ordinary
capabilities of one skilled in the art, namely, the technique of adhesively
binding several sheets to provide them in a single book.” Id.
Claim 1 is directed to “[a]n ordered stack of bound product
information sheets,” the stack of sheets including first, second, and third
consecutive sheets, wherein the order of the first, second, and third
consecutive sheets corresponds to an ordering of respective first, second,
and third locations within a store as specified by the store’s planogram
information. See Appeal Br. 20–21 (Claims App.) (emphasis added).
Based on the Examiner’s findings and reasoning, we understand the
Examiner to be relying on the teachings of Wood merely for the disclosure
of “group[ing] several information sheets together [i.e., the technique of
adhesively binding several sheets to provide them in a single book].” See
Final Act. 4–5. In this case, the Examiner does not direct us to any
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discussion in Dale of an “ordering” of product information sheets, let alone
that such “ordering” of the product information sheets “corresponds to an
ordering” of respective locations within a store as specified by the store’s
planogram information, as called for in claim 1. See Final Act. 4–5; see also
Ans. 7–9; Appeal Br. 20–21 (Claims App.); Appeal Br. 18; Reply Br. 10–11.
Nor does the Examiner provide sufficient evidence or technical reasoning to
establish that the product information sheets of Dale necessarily are
“ordered,” let alone that such “ordering” of the product information sheets
necessarily “corresponds to an ordering” of respective locations within a
store as specified by the store’s planogram information. See Final Act. 4–5;
see also Ans. 7–9.
For these reasons, the Examiner fails to establish by a preponderance
of the evidence that the combined teachings of Dale and Wood disclose the
ordered stack of bound product information sheets of claim 1.
Similar to claim 1, independent claims 11 and 21 are each directed to
an ordered stack of bound product information sheets and each includes
similar language to the order of the consecutive product information sheets
corresponding to an ordering of respective locations within a store as
specified by the store’s planogram information. See Appeal Br. 23–24, 26–
27 (Claims App.). The Examiner relies on the same unsupported findings in
Dale and Wood for claims 11 and 21 as those discussed above for claim 1.
See Final Act. 4–6. As such, the Examiner’s findings with respect to Dale
and Wood are deficient for claims 11 and 21 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claim 1–3, 5–8, 10–13, 15–18, 20–23, 25–27, and
31–36 as unpatentable over Dale and Wood.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis 
Affirmed Reversed
1–3, 5–8,
10–13, 15–
18, 20–23,
25–27, 31–
36
112(b) Indefiniteness  1–3, 5–8,
10–13, 15–
18, 20–23,
25–27, 31–
36
1–3, 5–8,
10–13, 15–
18, 20–23,
25–27, 31–
36
103 Dale, Wood   1–3, 5–8,
10–13, 15–
18, 20–23,
25–27, 31–
36
Overall
Outcome

1–3, 5–8,
10–13, 15–
18, 20–23,
25–27, 31–
36

REVERSED