Ex Parte 5913433 et al

Board of Patent Appeals and Interferences

Aug 10, 2010

90007729 (B.P.A.I. Aug. 10, 2010)

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.
90/007,729 09/26/2005 5913433 7390.58/P/RX 6843
7590 08/10/2010
Jack A. Kanz
502 So. Cottonwood Drive
Richardson, TX 75080
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/10/2010 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)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DISPLAYS BY MARTIN PAUL CREATIVE CENTER, INC.,
Patent Owner and Appellant1
____________________

Appeal 2008-005608
Reexamination Control 90/007,729
Patent 5,913,4332
Technology Center 3900
____________________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE and ALLEN R. MACDONALD, Vice Chief
Administrative Patent Judges, and SALLY G. LANE, CAROL A.
SPIEGEL, JENNIFER D. BAHR and DANIEL S. SONG, Administrative
Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL3

1 Displays by Martin Paul Creative Center, Inc. is the real party in interest
(App. Br. 1).
2 Issued June 22, 1999 to Belokin et al.
3 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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The present ex parte reexamination of the '433 patent was instituted
based on the request of the Patent Owner (hereinafter "Appellant")
submitted on September 26, 2005. The Appellant appeals from a Final
Rejection of claims 1, 3-7 and 12-16. The patentability of claims 2, 8-11
and 17-28 has been confirmed (Final Office Action 5). We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306. An oral hearing with the Appellant's
representative was held before the Board of Patent Appeals and
Interferences on February 4, 2009. The panel was subsequently expanded in
view of the Appellant's request for review of the Examiner's determination
that a substantial new question of patentability exists.
The '433 patent has been previously involved in three patent
infringement suits in the U.S. District Court for the Eastern District of
Texas, Sherman Division, as follows (App. Br. 2):
1. Civil Action No. 4:05-cv-369 styled Displays by Martin Paul,
Inc. - Creative Center v. Rockstar, Inc. and North Star International
Enterprises, Inc. that resulted in the entry of the STIPULATED
PERMANENT INJUNCTION AND ORDER (Appendix II to the Appeal
Brief).
2. Civil Action No. 4:02-cv-257 styled Displays by Martin Paul
Creative Center, Inc. v. In Zone, Inc., In Zone Brands, Inc., Jim Scott and
Richard Williams that resulted in the entry of the FINAL JUDGMENT
(Appendix III to the Appeal Brief).
3. Civil Action No. 4:04-cv- 138 styled Displays by Martin Paul
Inc. - Creative Center v. Displays Industries, LLC and Coca-Cola
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Enterprises, Inc. that resulted in the entry of the FINAL JUDGMENT
(Appendix IV to the Appeal Brief).
The Appellant relies on the entered judgments of these cases as
secondary evidence supporting a conclusion of unobviousness. We are not
aware of any litigation in which the '433 patent is presently involved.

INVENTION
The Appellant claims a shelf for displaying products adjacent a
transparent panel, such as a glass panel or a glass door. Figure 1 of the '433
patent is reproduced below.

Figure 1 of the '433 patent shows a front perspective view of an embodiment
of the display shelf of the claimed invention.
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Independent claim 1 reads as follows (App. Br. Claims App'x. I;
reference numerals and emphasis added):
1. A shelf for supporting and displaying elongated products
adjacent one face of a substantially transparent panel
comprising:
(a) a support panel [10] having a first face [11] lying
in a substantially vertical plane and defining a lower edge [12],
first and second laterally opposed end edges [14], and an upper
edge [15];
(b) a floor [20] having a top face lying in a
substantially horizontal plane substantially normal to and
intersecting said vertical plane above the lower edge [12] of the
support panel [10] and defining the upper edge [15] of the
support panel [10] for a substantial portion of the lateral
distance between the laterally opposed ends [14] of the support
panel [10]; and
(c) a containment wall [30] extending upwardly from
the top face of said floor [20] with a substantial portion thereof
spaced horizontally from and substantially parallel with the
plane of said first face of said support panel [10] and including
a plurality of sections [32] with each section shaped to define a
containment compartment for an individual product.

Independent claim 12 is directed to a combination of a transparent
wall and the shelf as recited in claim 1, and further including a means for
attaching the support panel of the shelf to the transparent wall.

PRIOR ART and REJECTION
The prior art relied upon by the Examiner in rejecting the claims is:
Belokin, Jr. 4,984,693 Jan. 15, 1991
Robbins Des. 323,766 Feb. 11, 1992
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The Examiner rejected claims 1, 3-7, and 12-16 under 35 U.S.C.
§ 103(a) as unpatentable over Belokin, Jr. (hereinafter "Belokin") and
Robbins.
We AFFIRM.

ISSUES
The following issues have been raised in the present appeal.
1. Did the Examiner err in determining that a substantial new
question of patentability exists based on the previously considered Belokin
reference in combination with the newly cited Robbins reference?
2. Did the Examiner err in concluding that in view of Robbins, it
would have been obvious to one of ordinary skill in the art to provide a
plurality of sections which are shaped to define containment compartments
for individual products in the containment wall of the shelf described in
Belokin?
3. Do the prior civil infringement actions related to the '433 patent
establish secondary considerations supporting non-obviousness of the
rejected claims?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Belokin describes a display shelf 9 for supporting and
displaying elongated products adjacent one face of a substantially
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transparent door 3 (i.e., a transparent panel) (col. 4, 12-18; figs. 1 and 2).
Figures 9 and 10 of Belokin are reproduced below.

Figure 9 of Belokin reproduced above illustrates a perspective view of one
embodiment of a display shelf described in Belokin. Figure 10 of Belokin
reproduced above illustrates a sectional view of the display shelf of Figure 9
as viewed along line 10-10.
2. The display shelf 9 of Belokin includes a back wall means 120
(i.e., a support panel) having a flange 121 (i.e., a first face) lying in a
substantially vertical plane and defining a lower edge, first and second
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laterally opposed end edges, and an inner edge 112 (i.e., an upper edge) (col.
5, ll. 44-53; figs. 9 and 10).
3. The display shelf 9 of Belokin also includes a horizontal shelf
means 110 (i.e., a floor) having a top face lying in a substantially horizontal
plane substantially normal to and intersecting the vertical plane above the
lower edge of the back wall and defining the upper edge of the support panel
for a substantial portion of the lateral distance between the laterally opposed
ends of the support panel (figs. 9 and 10).
4. The display shelf 9 of Belokin further includes a retainer means
140 (i.e., a containment wall) extending upwardly from the top face of the
floor with a substantial portion thereof spaced horizontally from, and
substantially parallel with, the plane of the first face of the back wall means
120 (i.e., support panel) (col. 6, ll. 1-4; figs. 9 and 10).
5. The display shelf 9 of Belokin does not include "a plurality of
sections with each compartment shaped to define a containment
compartment for an individual product" (figs. 9 and 10).
6. The display shelf 9 of Belokin also includes a plurality of
parallel vertical access openings 143 (i.e., vertically aligned slots) positioned
on the retainer means 140 (i.e., a containment wall), the vertical access
openings 143 connecting to the horizontal access openings 146 provided on
the horizontal shelf means 110 (i.e., floor) (col. 6, 4-16; fig. 9).
7. The Appeal Brief states:
Appellant does not dispute the Examiner's allegations
that Fig. 9 of Belokin discloses a shelf with a support
panel essentially as defined in element (a) of Claim 1 and
a floor as defined in element (b) of Claim 1. Appellant
also agrees with the Examiner that Belokin '693 does not
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show or suggest a containment wall as defined by
element (c) of Claim 1.

(App. Br. 11, emphasis in original).
8. Robbins describes a rack for spice jars. Figure 1 of Robbins
with Examiner's annotations is reproduced below (Ans. 13).

Figure 1 reproduced above illustrates a perspective view of the rack
for spice jars described in Robbins. The Examiner's annotations identify the
portions of Robbins' spice rack viewed as corresponding to "arcuate shaped
dividers" and rear wall joining arcuate shaped dividers (Ans. 13).
9. The arcuate shaped dividers of the rack of Robbins protrude
upwardly from the floor of the rack, thereby defining a wall which retains
spice jars (fig. 1).
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10. The arcuate shaped dividers of the rack of Robbins divide the
area of the rack that retains the spice jars, the dividers being spaced by slots
which also extend horizontally on the floor of the rack (fig. 3).
11. U.S. Patent No. 4,508,303 to Beckerer, Jr. describes a holder
for containers which is configured to receive a single container therein, the
holder being configured to accommodate containers of different outer
diameters (Beckerer, col. 3, ll. 53-60; figs. 1-16).

PRINCIPLES OF LAW
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18 (1966). In KSR, the Supreme Court stated that "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR, 550 U.S. at 416.
The Court also explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
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different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 417 (citation omitted).
The Court noted that "[t]o facilitate review, this analysis should be
made explicit." Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) ("[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness")). However, "the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418.

ANALYSIS
The Examiner rejected claims 1, 3-7 and 12-16 as unpatentable over
the combination of Belokin and Robbins. In the Appeal Brief, the Appellant
sets forth arguments directed to the following claim groups: claims 1 and 7;
claims 5 and 6; and claims 12-16 (App. Br. 7). The Appellant also sets forth
separate arguments with respect to claims 3 and 4 (App. Br. 8). Prior to
addressing the Appellant's arguments against the Examiner's substantive
claim rejection, we first address the Appellant's request for review of
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whether the Examiner erred in determining that a substantial new question of
patentability exists based on the combination of Belokin and Robbins (App.
Br. 31).

Substantial New Question of Patentability
The present ex parte reexamination of the '433 patent was instituted
based on the Request for Ex Parte Reexamination (hereinafter "Request")
filed by the Appellant on September 26, 2005. The Request submitted
various prior art references considered during the prosecution of the '433
patent, including the previously considered Belokin reference, as well as the
newly submitted Robbins reference. (Request 2). In the Request, the
Appellant stated that "[a] question of obviousness is raised if selected
features from the cited references can properly be combined under 35 USC
103." (Request 4). The Request resulted in the Order Granting Request for
Ex Parte Reexamination mailed November 2, 2005 (hereinafter "Order")
which stated "Robbins Patent D 323,766 raises a substantial new question of
patentability …." (Order 3 and 4). The Examiner's subsequent reliance on
Robbins (in combination with Belokin) to reject various claims has led to the
present appeal.
The Appellant contends that while Robbins is applied by the
Examiner for "allegedly showing sections 'shaped to define and [sic: an]
individual compartment,'" U.S. Patent No. 4,508,303 to Beckerer (Appendix
VI), already of record in the original examination, is more pertinent to the
pending claims than Robbins (App. Br. 31 and 32; Reply Br. 11). The
Appellant states that Beckerer describes a "holder for containers having a
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semi-circular containment wall which defines an individual compartment for
products held therein" (App. Br. 32). The Appellant further contends that
"[a]pplication of 'new art' to raise the same obviousness contention as
previously overcome against more pertinent 'old art' cannot be within the
intent of the reexamination statutes …." (App. Br. 32 and 33 (citing In re
Recreative Techs. Corp., 83 F.3d 1394 (Fed. Cir. 1996) and In re Portola
Packaging, Inc., 110 F.3d 786 (Fed. Cir. 1997)). Hence, the Appellant
argues that the Examiner erred in determining that a substantial new
question of patentability exists based on the combination of Belokin and
Robbins (App. Br. 31-33).
In response to the Appellant's argument, the Examiner noted that
Appellant's "time to petition the granting of the reexamination based on the
substantial new question of patentability . . . has expired[.]" (Ans. 23),
thereby informing the Appellant that the procedure for challenging granting
of the reexamination based on the determination that a substantial new
question of patentability exists is by petition.
However, the U.S.P.T.O. has recently clarified the procedure for
seeking review of issues pertaining to substantial new question of
patentability. See Clarification on the Procedure for Seeking Review of a
Finding of a Substantial New Question of Patentability in Ex Parte
Reexamination Proceedings, 75 Fed. Reg. 36357-58 (June 25, 2010)
(hereinafter "Notice") (delegating the authority to review issues related to
the Examiner's determination that a reference raises a substantial new
question of patentability to the Chief Administrative Patent Judge, who may
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further delegate this authority to a panel of Administrative Patent Judges
deciding the appeal in the ex parte reexamination proceeding).
In the present appeal, the reexamination of the '433 patent was ordered
prior to the date of the Notice. See Order Granting Request for
Reexamination, November 2, 2005. Nonetheless, the Notice provides that:

for ex parte reexamination proceedings ordered prior to June
25, 2010, if the patent owner presents the SNQ [substantial new
question of patentability] issue in its appeal brief, the BPAI
panel will review the procedural SNQ issue along with its
review of any rejections in an appeal and will enter a final
agency decision accordingly.

75 Fed. Reg. 36357.
Turning now to the Appellant's arguments in view of the above, we
observe that the holder for containers described in Beckerer is merely
designed to hold a single container therein, the holder being configured to
accommodate containers having different outer diameters (FF 11). In
contrast, the rack disclosed in Robbins is elongated and includes structure
(annotated as "arcuate-shaped dividers" by the Examiner) that extends
upwardly from a floor to define containment compartments for a plurality of
individual products (i.e., spice jars) (FF 8-10). The arcuate-shaped dividers
in the rack of Robbins are also spaced apart by slots which also extend
horizontally on the floor of the rack as recited in the various rejected claims
(FF 8 and10).
In other words, Robbins supplies numerous teachings that are absent
in Belokin and/or Beckerer. Hence, we find the Appellant's contention that
Bekerer is more pertinent to the rejected claims than Robbins to be
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unfounded. Because Robbins was not previously considered during the
prosecution of the application that resulted in the '433 patent, and is not
merely cumulative of Bekerer as argued by the Appellant, we discern no
error in the Examiner's determinations that the combination of Bekerer and
Robbins raises new issues pertinent to patentability and that a substantial
new question of patentability exists.

Rejection of Claims 1 and 7
The Examiner states that Belokin describes most of the limitations of
independent claim 1 except for "a plurality of sections with each
compartment shaped to define a containment compartment for an individual
product" (Ans. 5; FF 1-5). To cure this deficiency in Belokin, the Examiner
relies on Robbins, which "shows a shelf with individual semi-circular lips
forming a containment wall with individual compartment sections" that
"provide the advantage of holding components on the shelf and prevent
movement and shaking of the individual components" (Ans. 5). The
Examiner concludes that claim 1 is unpatentable because "[i]t would have
been obvious to one of ordinary skill in the art at the time the invention was
made to modify the invention of Belokin US Patent 4,984,693 to include a
support panel or containment wall with a plurality of sections with each
section shaped to define an individual containment compartment as taught
by Robbins in D 323,766 for the advantage of holding the individual
components and preventing movement and shaking of the individual
components" (Ans. 5).
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The Appellant acknowledges that Belokin describes a display shelf of
claim 1 except for the containment wall as defined by element (c) of claim 1
(App. Br. 11; FF 1-5 and 7), which was conceded by the Examiner (Ans. 5).
However, the Appellant argues that the Examiner erred in combining
Belokin with Robbins for various reasons which we address infra.
The Appellant initially contends that the Examiner has not given
appropriate patentable weight to the preamble of claim 1, which defines a
"shelf 'for supporting and displaying elongated products adjacent one face of
a substantially transparent panel'. . . ." (App. Br. 10; Reply Br. 5-7).
However, whether the preamble is a statement of intended use is not
dispositive because the Examiner also found that giving patentable weight to
the preamble does not overcome the rejection based on the combination of
Belokin and Robbins (Ans. 7 and 8). Indeed, Belokin clearly satisfies the
recitations of the preamble in that it describes a "shelf for supporting and
displaying elongated products adjacent one face of a substantially
transparent panel" (FF 1). Therefore, the Appellant's arguments based on
the preamble are unpersuasive.
The Appellant also contends that the combination of Belokin and
Robbins cannot produce the invention claimed because the lips of Robbins
are designed "to trap the base of spice jars adjacent an opposed integral
wall," and cannot perform the same function as the individual containment
compartments of claim 1 which allow the products to be displayed and
visible through a transparent wall (App. Br. 11, 12, 14).
However, the Appellant is analyzing Robbins separately. As stated by
the Examiner, Belokin "shows a containment wall (140) parallel to and
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spaced from the support panel (120) for holding products on a display" (Ans.
5). The Examiner is relying on the combination of Belokin and Robbins to
articulate reasoning with a rational underpinning to support the conclusion
that it would have been obvious to one of ordinary skill in the art to modify
the containment wall of Belokin so as to provide a plurality of compartment
sections that define containment compartments for products as recited in
claim 1 (Ans. 5). Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover,
to the extent that the Appellant is arguing that the Examiner's combination is
improper based on the assertion that the semi-circular portion described in
Robbins is not a "containment wall," we disagree. As shown in the
annotated Figure 1 of Robbins, the arcuate sections of the rack protrude
upwardly from the floor thereof, thereby defining a wall which retains the
spice jars (FF 8 and 9; Ans. 7).
The Appellant also contends that there is no teaching, suggestion or
motivation found in either Belokin or Robbins to combine them in the
manner suggested by the Examiner (App. Br. 12-14 and 16). However, we
note that an obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418.
The Appellant again contends that the integral lip structure of Robbins
cannot perform the function of a containment wall, and because neither
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reference teaches how the structure of Robbins could be substituted for the
vertical wall of Belokin, the suggested combination is unobvious (App. Br.
14-15). However, the Appellant is again analyzing the references separately
whereas the Examiner is relying on Robbins to show why one skilled in the
art would have had reason to modify the containment wall of Belokin to
provide the recited plurality of sections (Ans. 5). Merck, 800 F.2d at 1097.
As the Supreme Court recently stated, what is required is "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." KSR, 550 U.S. at 418. Furthermore, as noted by the
Examiner (Ans. 8), "[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." Keller, 642 F.2d at 425 (citation omitted).
The Appellant further argues that the Examiner is engaging in
hindsight by combining Belokin and Robbins because there is no explicit
teaching to do so (App. Br. 16-17). The Appellant contends that the
"rejection is based solely on the Examiner's unsupported supposition that the
references may be modified merely for expedience" and that the mere fact
that prior art could be modified and used is insufficient (App. Br. 16-17,
emphasis in original). However, as noted supra, an explicit teaching in the
references is not required to support a conclusion of obviousness. KSR, 550
U.S. at 418. Moreover, in contrast to the Appellant's assertion that the
Examiner makes a bare allegation of obviousness (Reply Br. 8), the
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Examiner has articulated a rational reason as to why one of ordinary skill
would incorporate the feature of Robbins in the shelf of Belokin, namely,
"for the advantage of holding the individual components and preventing
movement and shaking of the individual components" (Ans. 5), which is
sufficient for concluding that the claimed invention would have been
obvious. Id.
In the above regard, the invention of claim 1 is merely a predictable
variation of the shelf of Belokin which is improved by applying the
technique of incorporating a plurality of sections shaped to define
containment compartments known in the art as evidenced by the rack of
Robbins, such variation being within the skill of one of ordinary skill in the
art. Id. at 417.
The Appellant further notes that because Robbins is a design patent,
no problem is identified, and yet, the Examiner "invents a problem (alleging
that Robbins 'individual circular compartments . . . prevents movement and
shaking of those individual components on the shelf')" even though "no such
problem is discussed by either the reference or the patentee" (Reply Br. 10,
emphasis in original). However, the Appellant's argument is not persuasive
because "any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed." Id. at 420. In other words, "[o]ne of
ordinary skill in the art need not see the identical problem addressed in a
prior art reference" in order to apply its teachings. Cross Medical Prods.,
Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir.
2005).
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In view of the above, we find no reversible error in the Examiner's
rejection of independent claim 1 and dependent claim 7 as being
unpatentable over Belokin and Robbins.

Rejection of Claim 3
Dependent claim 3 recites that the containment wall "includes a
plurality of arcuate-shaped dividers." The Appellant argues that contrary to
the Examiner's assertion, Robbins does not describe a shelf having "joined
…sections" because slots are provided on the floor (App. Br. 18). However,
as noted by the Examiner (Ans. 12), the Appellant's argument is immaterial
because claim 3 does not require joined sections. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
The Appellant also asserts that Robbins does not show the recited
"arcuate-shaped dividers" (App. Br. 19). The basis for this contention is not
understood because Robbins clearly shows structures that satisfy the recited
claim language (FF 8-10). The Appellant further relies on arguments made
relative to independent claim 1 (App. Br. 19). However, these arguments
are not persuasive for the reasons already discussed supra. Therefore, we
find no reversible error in the Examiner's rejection of claim 3.

Rejection of Claim 4
Claim 4, which depends from claim 1, recites that the containment
wall "includes a plurality of substantially parallel vertically aligned slots."
The Appellant relies on the arguments relative to claim 1 (App. Br. 19)
which are unpersuasive as already discussed supra. The Appellant also
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contends that "no such slots are remotely shown or suggested in the lip
structure of Robbins" (App. Br. 20). However, contrary to the Appellant's
assertions, both Belokin and Robbins clearly show slots that satisfy the
recited claim language (FF 6 and 10; Ans. 15). Therefore, we find no
reversible error in the Examiner's rejection of claim 4.

Rejection of Claim 5 and 6
Claims 5 and 6 depend from claim 4 (which depends from claim 1).
The Appellant initially relies on arguments submitted for claims 1 and 4 in
support of patentability of claims 5 and 6 (App. Br. 20 and 21). However,
the Appellant's arguments are unpersuasive for reasons already discussed
supra. The Appellant also admits that Robbins shows slots on the floor, but
asserts that the combination of Belokin and Robbins fails to describe
"defining horizontal extensions of said vertically aligned slots" as recited in
claim 5 (App. Br. 20). However, as the Examiner notes, Robbins clearly
shows the vertical slots joining the admitted slots on the floor of the spice
rack, thereby defining horizontal extensions of the vertical slots as recited in
claim 5 (FF 10; Ans. 16).
Based on the above incorrect assertion that Robbins does not disclose
"vertically aligned slots", the Appellant further asserts that neither Belokin
nor Robbins describes such slots that extend the full vertical height of the
containment wall so as to define "vertically extending fingers" recited in
claim 6 (App. Br. 21). However, as discussed above, Robbins clearly
discloses slots that extend the full vertical height of the containment wall
(FF 10) so that the containment wall includes a plurality of individual
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arcuate dividers that extend vertically upward from the floor and are not
connect with each other at their distal ends. Indeed, the Examiner found that
"the containment wall is divided into a series of 'vertically extending fingers'
each separated by a 'slot'" (Final Office Action 9-10). The Appellant does
not provide any detailed arguments as to why such individual arcuate
dividers that extend vertically upward are not "vertically extending fingers"
as recited in claim 6 (App. Br. 21). Therefore, we are not persuaded that the
Examiner erred in rejecting claims 5 and 6.

Rejection of Claim 12-16
Independent claim 12 is directed to a combination of a transparent
wall and the shelf as recited in claim 1, and further including a means for
attaching the support panel of the shelf to the transparent wall. The
Appellant's arguments that the Examiner erred in rejecting these claims
based on Belokin and Robbins are substantially the same as the arguments
set forth relative to independent claim 1 (App. Br. 21-30). Therefore, we
find no reversible error in the Examiner's rejection of independent claim 12
for the same reasons discussed supra relative to claim 1. Moreover,
dependent claims 13-16 were not argued separately on appeal and thus, fall
with independent claim 12. See 37 C.F.R. § 41.37(c)(1)(vii).

Prior Litigation
The Appellant notes that the '433 patent has been involved in three
separate infringement actions in a U.S. District Court in which obviousness
of the '433 patent was alleged based on Belokin and Robbins as relied upon
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by the Examiner in the present reexamination (App. Br. 30; Reply Br. 11-
12). While conceding that the Board is not bound by the District Court's
final determination, the Appellant contends that because the entered
judgments in these court cases state that the '433 patent is not invalid, and
further enjoins the Defendants, these court cases provide evidence of
"secondary considerations" analogous to licensing which support the
conclusion of non-obviousness (App. Br. 30 and 31; Reply Br. 12).
In a civil action, a challenger attacking the validity of patent claims
must overcome the presumption of validity with clear and convincing
evidence that the patent is invalid. 35 U.S.C. § 282. If this statutory burden
is not met, "[c]ourts do not find patents 'valid', only that the patent
challenger did not carry the 'burden of establishing invalidity in the
particular case before the court'." Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1429 n.3 (Fed. Cir. 1988) (internal citations omitted, original emphasis).
Therefore, "[a] prior holding of validity is not necessarily inconsistent with a
subsequent holding of invalidity," Stevenson v. Sears Roebuck & Co., 713
F.2d 705, 710 (Fed. Cir. 1983)), and is not binding on subsequent
U.S.P.T.O. reexaminations. See Ethicon, 849 F.2d at 1429 and 1429 n.3
(rejecting the U.S.P.T.O.'s argument that it was bound by a court's decision
upholding a patent's validity).
In U.S.P.T.O. examinations and reexaminations, the standard of proof,
i.e., by a preponderance of the evidence, is substantially lower than in a civil
case. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). Furthermore, there
is no presumption of validity. In re Etter, 756 F.2d at 856. Moreover,
claims in reexamination "will be given their broadest reasonable
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interpretation." In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)
(citation omitted). Thus, considering an issue at the district court is not
equivalent to the PTO considering the issue because the court and the PTO
use different standards of proof.
In addition, while settlement of patent litigation may be functionally
identical to a license, and often includes an explicit license, a party may
settle a patent litigation to reduce the costs of the legal process based upon
an estimation of probable outcome and costs if the case proceeds. The
Appellant has not directed us to evidence to show that it was the nature of
the claimed invention and not other, e.g., economic, factors that led to the
conclusion of the District Court litigation. See In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995) ("Licenses taken under the patent in suit may
constitute evidence of nonobviousness; however, only little weight can be
attributed to such evidence if the patentee does not demonstrate 'a nexus
between the merits of the invention and the licenses of record.'") (citation
omitted). We decline to decide this appeal on the basis of a third party's
financial and legal estimations.
Moreover, the Appellant has not submitted evidence showing that
licenses for the claimed invention have been taken out by a substantial
portion of its marketplace competitors or other evidence of secondary
considerations, e.g., commercial success of the claimed invention, sufficient
to establish non-obviousness.
Finally, the court decisions of record are stipulated judgments. The
Appellant has not directed us to evidence sufficient to show that the
substantive issue regarding the validity of the '433 patent (based on the prior
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art references Belokin and Robbins) was litigated on the merits.4 Hence, we
do not accept the Appellant's unsupported statement that "the District Court
has (on three separate occasions) determined that the claims under
reexamination are not obvious in view of the very combination of references
relied on by the Examiner" (Reply Br. 12).
Therefore, for at least these reasons, the Order and two Final
Judgments submitted as secondary evidence of nonobviousness as
Appendices II-IV of the Appellant's main brief are insufficient to establish
nonobviousness.

CONCLUSIONS
1. The Examiner did not err in determining that a substantial new
question of patentability exists based on the combination of Belokin and
Robbins.

4 During the oral hearing before the Board of Patent Appeals and
Interferences on February 4, 2009, the Appellant's representative, Mr. Kanz,
responded to Judge Spiegel's questioning regarding the three prior litigations
as follows:
JUDGE SPIEGEL: And did the Court actually address
invalidity argument on the merits, or was it just as a result of these
stipulated settlement agreements?
MR. KANZ: As - I only represent one of those cases, but I
think that in all three cases that these cases were brought up, there
was briefing, and before argument, the defendant decided to
concede and entered into a settlement agreement. The cases were
never actually tried, nor did the judge make a decision on an
argument. That is what went on in all three cases, as far as I know.

(Transcript of Hearing 4).

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2. The Examiner did not err in concluding that in view of
Robbins, it would have been obvious to one of ordinary skill in the art to
provide a plurality of sections which are shaped to define containment
compartments for individual products in the containment wall of the shelf
described in Belokin.
3. The prior civil infringement actions related to the '433 patent
fail to establish secondary considerations supporting non-obviousness of the
rejected claims.

ORDER
The Examiner's rejection of claims 1, 3-7 and 12-16 is AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

ack
cc:
Jack A. Kanz
502 South Cottonwood Drive
Richardson, TX 75080