Ex Parte Camello et al

Patent Trial and Appeal Board

Sep 19, 2016

13406949 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/406,949 02/28/2012 Anthony Camella
31554 7590 09/21/2016
CARTER, DELUCA, FARRELL & SCHMIDT, LLP
445 BROAD HOLLOW ROAD
SUITE420
MELVILLE, NY 11747
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1507-109 CIP 8252
EXAMINER
KRYCINSKI, STANTONL
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
docket@cdfslaw.com
tgiordano@cdfslaw.com
PTOL-90A (Rev. 04/07)
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY CAMELLO, ERIC NEUMANN,
BRUCE GOMMERMANN, and DANIEL C. RILEY
Appeal2014-009282
Application 13/406,949
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
AMANDA F. WIEKER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3, 4, 6-12, 14--16, 18, and 19 as unpatentable under
35 U.S.C. § 102(b) as anticipated by Headrick (US 5,706,956, iss. Jan. 13,
1998), and of claims 2 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Headrick and Close (US 2004/0020879 Al, pub. Feb. 5, 2004). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appeal2014-009282
Application 13/406,949
THE INVENTION
Appellants' invention relates generally to displaying products,
particularly bottled liquids, on a shelf. Spec. i-f 6. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A product display unit for displaying a plurality of products
thereon, the product display unit comprising:
a bottom member including a product-supporting surface,
the bottom member being configured to be positioned on a first
product-supporting shelf;
a first rib projecting upwardly from the product-supporting
surface and extending longitudinally along the bottom member;
a second rib projecting upwardly from the product-
supporting surface and extending longitudinally along the
bottom member, such that a distance is defined between the
first rib and the second rib; and
a top member disposed in juxtaposed relation with the
bottom member and being configured for suspension from a
second product-supporting shelf, the top member including a
longitudinally extending channel having a width, the smallest
width of the channel being greater than a width of a top-most
portion of a product configured to be supported by the bottom
member, wherein the top member is fixed from vertical
movement with regard to the second product-supporting shelf;
wherein the distance between the first rib and the second rib
is dimensioned to be less than the widest portion of a product
configured to be supported by the bottom member between the
first rib and the second rib.
OPINION
Anticipation by Headrick
Claims 1 and 8
Claims 1 and 8 are independent claims. Claims App. Each claim
contains limitations directed to a top member that is configured for
suspension from a second product-supporting shelf and where the top
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Application 13/406,949
member is fixed from vertical movement with regard to the second product-
supporting shelf. Id. Under the circumstances presented here, we deem it
expedient to treat the rejection of claims 1 and 8 together.
The Examiner finds that Headrick discloses all of the elements of
claim 1. Final Action 2-3. In particular, the Examiner finds that Headrick' s
top member is capable of being suspended from, and is fixed from vertical
movement with regard to, a second product-supporting shelf. Id. at 3.
Appellants traverse the Examiner's rejection by arguing that
Headrick's top member is not fixed from vertical movement with regard to a
second product-supporting shelf as claimed. Appeal Br. 12-13. Appellants
argue that Headrick' s top member is suspended by suspension cords 64 that
allow for vertical movement. Id. at 13. We agree.
Appellants' Specification discloses:
With particular reference to Figures 14 and 15, system 1000 is
configured for use on a shelving system (e.g., gondola shelves)
in a retail environment. To install the system 1000 on a
shelving system, a user places the bottom member 2000 onto
the top portion of a store shelf "SI." The top member 3 000 is
secured to the bottom of a second shelf "S2," which is above
the bottom member 2000, by using a fastening device, such as
wire ties "T" (see Figure 15). More particularly, each wire tie
"T" is threaded through an opening (e.g., one of openings 3500
in Figure 13), and around a portion of the shelf "S2." (While
only the outside/lateral openings are labeled in Figure 13, for
clarity, all of the openings, including the interior openings are
configured to receive a fastening device engaged therewith.) In
a disclosed embodiment, all of the wire ties "T" that are used to
secure the top member 3000 to the bottom of the shelf "S2" are
cinched tight such that the top member 3000 cannot move
vertically with respect to the shelf "S2" that it is secured to. To
change the height between the bottom member 2000 and the top
member 3000, a user must move one or both of the associated
shelves "S 1 ", "S2."
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Application 13/406,949
Spec. 1144. Thus, Appellants' invention uses wire ties to tightly secure the
top member to an upper or second shelf. Id., see also id. at Figs. 14 and 15.
In contrast, Headrick suspends its corresponding top member to a
vertical support member instead of a horizontal shelf. See Headrick, Fig. 4.
The top member is suspended using suspension cord 64 that attaches to
upstanding vertical support member 12 via manually adjustable cinching
device 76 and hook member 80. Id. A person of ordinary skill in the art
viewing Headrick Figure 4 would recognize that Headrick's top member is
not fixedly attached to an upper shelf and that suspension cords 64 allow for
vertical movement of the top member if acted upon by a lifting force.
To anticipate a claim, a single prior art reference must expressly or
inherently disclose each claim limitation. Celeritas Techs., Ltd. v. Rockwell
Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Furthermore, anticipation
also requires the presence in a single prior art disclosure of all the elements
"arranged as in the claim." Finisar Corp. v. Direct Group, Inc., 523 F.3d
1323, 1334 (Fed. Cir. 2008). In the instant case, Headrick does not
anticipate claims 1 or 8 as its top member is not suspended from, or fixed
from vertical movement with regard to, a second product-supporting shelf as
claimed.
Accordingly, we do not sustain the anticipation rejection of claims 1
and 8, or of claims 3, 4, 6, 7, 9-12, 14, or 15, that depend, respectively,
therefrom.
Claim 16
Claim 16 is an independent claim that differs in scope from claim 1
primarily in that it includes a limitation directed to changing the vertical
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Application 13/406,949
distance between a bottom member and a top member by moving a "second
shelf' from which the top member is suspended. Claims App.
The Examiner finds that Headrick satisfies each limitation of claim 16
including the limitations directed to suspending the first top member from
beneath the second shelf and moving the second shelf to change a vertical
distance. Final Action 4--5. As discussed above in connection with the
rejection of claim 1, Headrick's top member is suspended from upstanding
support member 12 rather than from a shelf. Consequently, moving an
upper shelf of Headrick will not affect the vertical distance between the first
shelf/bottom member and the top member as claimed.
Accordingly, we do not sustain the anticipation rejection of claim 16,
or the rejection of claims 18 and 19 that depend therefrom.
Unpatentability of Claims 2 and 20
over Headrick and Close
Claims 2 and 20 depend from claims 1 and 16 respectively. Claims
App. The Examiner relies on Close as disclosing the dependent limitations
of these claims and concludes that it would have been obvious for a person
of ordinary skill in the art to modify Headrick with the teachings of Close to
achieve the claimed invention. Final Action 5-7.
Appellants argue that Close fails to cure the deficiencies of Headrick
with respect to claims 1 and 16. Appeal Br. 16-17. We agree that Close
fails to cure the deficiencies of Headrick discussed above. Accordingly, we
do not sustain the unpatentability rejections of claims 2 and 20.
New Ground of Rejection - Claim 16
As found by the Examiner, Headrick discloses all of the limitations of
claim 16 substantially as claimed, except for the limitations directed to
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Application 13/406,949
suspending the first top member from beneath a second shelf and moving the
second shelf to change the vertical distance between the first bottom member
and the first top member. See Final Action 4--5.
Headrick differs from the invention of claim 16 in that Headrick's
corresponding top member is suspended from vertical support member 12
instead of from a horizontal shelf. Headrick exhibits both upper and lower
shelves. See Headrick, Fig. 6. Headrick also discloses suspending a top
member from above using hook members, suspension cords, and adjustable
cinching devices. See Headrick, Fig. 4. A person of ordinary skill in the art
would have recognized that either a horizontal shelf or a nearby vertical
support element would have served as appropriate structure from which to
suspend Headrick' s guide channel stabilizer member 16. 1 Therefore, it
would have been obvious at the time of the invention to suspend Headrick's
guide channel stabilizer member from a shelf that is disposed immediately
above the stabilizer member. We conclude that suspending the top member
from a shelf simply arranges old elements with each performing the same
function it had been known to perform and yields no more than one would
expect from such an arrangement. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Moreover, a person of ordinary skill in the art would
have recognized this alternative as a mere predictable variation of
Headrick's system. Id. It is well established that when a work is available
in one field of endeavor, design incentives and other market forces can
prompt variations of it and if a person of ordinary skill can implement a
predictable variation, § 103 may bar its patentability. Id.
1 In a system so modified, moving the second shelf necessarily changes the
vertical distance between the first bottom member and the first top member,
as required by claim 16.
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Appeal2014-009282
Application 13/406,949
In view of the foregoing discussion, we exercise our discretion under
37 C.F.R. § 41.50(b) and hereby enter a new ground of rejection of claim 16
as unpatentable under 35 U.S.C. § 103(a) over Headrick.2
DECISION
The decision of the Examiner to reject claims 1--4, 6-12, 14--16, and
18-20 is REVERSED.
Claim 16 is hereby rejected under 35 U.S.C. § 103(a) as unpatentable
over Headrick as a new ground of rejection under 37 C.F.R. § 41.50(b).
FINALITY OF DECISION
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 that the Appellants, 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:
( 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 proceeding will be remanded to
the examiner. ..
2 The Board enters a new ground of rejection at its discretion, and no
inference should be drawn from a failure to exercise that discretion with
respect to claims 1--4, 6-12, 14, 15, and 18-20. See 37 C.F.R. § 41.50(b);
see also Manual of Patent Examining Procedure (MPEP) § 1213.02 (8th ed.,
rev. 9, August 2012). We leave to the Examiner, upon further prosecution,
to determine whether it is appropriate to reject other claims as unpatentable
over Headrick, either alone or in combination with other references.
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Application 13/406,949
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 41.50(b)
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