Ex Parte D et al

Patent Trial and Appeal Board

Feb 21, 2017

12974178 (P.T.A.B. Feb. 21, 2017)

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.
12/974,178 12/21/2010 Brandon M. D'Emidio 0265P0001US2 3226
35060 7590 02/23/2017
THE LAW OFFICE OF IDO TUCHMAN
PO Box 765
Cardiff, CA 92007
EXAMINER
SILBERMANN, JOANNE
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
pair@tuchmanlaw.com
idotuchman @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANDON M. D’EMIDIO and
JOHN THOMAS STORTEBOOM
Appeal 2015-003110
Application 12/974,178
Technology Center 3600
Before: LINDA E. HORNER, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 3—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-003110
Application 12/974,178
CLAIMED SUBJECT MATTER
The claims are directed to a shipping platform display system and
method. Claims 1, 9, and 15 are independent. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A shipping platform display system comprising:
a shipping pallet;
a storage rack in which the shipping pallet is positioned;
and
a covering carried by the storage rack and adjacent the
shipping pallet, the covering positionable to:
(a) a first position where the covering obstructs a side of
the shipping pallet to improve the shipping pallet’s appearance
for a consumer, the covering being non-destructively deployed
in the first position; and
(b) a second position where the covering does not obstruct
the side of the shipping pallet to permit the shipping platform to
be moved by a shipping pallet mover, the covering being non-
destructively stored in the second position in a smaller area than
in the first position.
The prior art relied upon by the Examiner in rejecting the claims on
REJECTIONS
Claims 1, 3—7, 9, and 11—20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schell and Anderson.
Claims 8 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schell, Anderson, and Johnson.
REFERENCES
appeal is:
Johnson
Anderson
Schell
US 6,135,423 Oct. 24, 2000
US 2004/0155003 A1 Aug. 12, 2004
US 2005/0098770 A1 May 12, 2005
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Application 12/974,178
OPINION
Claim 1
The Examiner finds that Schell teaches the claimed storage rack and
covering, but “does not specifically teach the storage rack as having pallets
thereon.” Final Act. 2. The Examiner finds that “this is well known in the
art as shown by Anderson.” Id.
First, Appellants argue that Schell is not analogous to the claimed
invention. Appeal Br. 5. The Federal Circuit has laid out two separate tests
to determine whether a reference is analogous art to the claimed invention,
i.e., whether “[o]ne of ordinary skill in the art. . . would . . . even look to the
teachings of [Schell].” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
They are: “(1) whether the art is from the same field of [the inventor’s]
endeavor” and “(2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” Id.', see also In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011).
The Federal Circuit further instructs that a determination of the field
of the endeavor should consider “explanations of the invention’s subject
matter in the patent application, including the embodiments, function, and
structure of the claimed invention.” See Bigio, 381 F.3d at 1325.
Appellants define the field of endeavor of the invention as “display
systems for shipping platforms.” Appeal Br. 7. Appellants argue that the
Specification teaches that “the system 10 provides information 20 to an
observer, e.g. customer.” Id. (citing Specification 130); see also, Reply Br.
3 and Declaration Pursuant to 37 C.F.R. § 1.132 of John Thomas
Storteboom 2, dated February 19, 2014. Appellants further state that
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Application 12/974,178
Schell’s field of endeavor is “a ‘retractable safety barricade employed to
block off an aisle or entryway. Id. (citing Schell Abstract, 14).
As noted by the Examiner, Appellants’ definitions focus on the
“intended use,” with little reference to the structure of the invention or how
the product functions. Final Act. 4; see also, Ans. 2. The Examiner
highlights the structural similarity between Appellants’ invention and Schell:
“Schell teaches a retractable member contained in a housing and supported
on a rack support. This is what is shown in Applicant’s Figures.” Final Act.
4.
The Examiner found that Schell’s “barricade net 5” connected to the
“rack support 22” was the same as the claimed “covering is carried by the
storage rack.” Final Act. 2. Reviewing the teachings of the present
invention and Schell, we agree with the Examiner’s findings and further note
that the background sections of both Appellant’s Specification and that of
Schell highlight that the respective devices are for use in “warehouse-type
retailers” or “warehouse retail environments.” Compare Specification 13
and Schell Tflf 4—5. From this disclosure it would appear that Appellants
intended that the claimed “shipping platform,” “shipping pallet,” and
“storage rack” would include the types found in “warehouse-type retailers.”
Thus, the claimed “covering carried by the storage rack” and the “barricade
net 5” connected to the “rack support 22” of Schell have the same structure
and were intended to be in the same “warehouse-type retailer[]”
environment.
The Examiner also found that Schell’s “retractable banner . . .
provide[s] information to an observer (information such as, an aisle is
closed)” and so the banner serves the “display” function highlighted by
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Application 12/974,178
Appellants. Ans. 2. Appellants respond that “[ujnder the Office’s logic”
“every object provides some type information to an observer” and even “a
traffic light would be analogous art.” Reply Br. 3.
Appellants’ Specification states that “[t]he covering may comprise
information carried by the covering that is directed to the consumer,” and
that the covering is used to “relay information to a consumer,” and further
that “using system 10 enables a retailer to provide information 20 in an
otherwise unused area of their store.” Specification || 7, 8, and 30. Neither
the Specification nor the claims clarify what this information is or what is
displayed on the covering. As such, it not necessary for us to determine
whether a traffic light would be included in this type of displayed
information, as the Examiner’s reliance on Schell is based on the fact that
both devices have essentially the same structure and function in the same
way, as well as “relay[ing] information to a consumer.”
The Examiner determined that Schell is in the same field as the
claimed invention and appears to define the field as “a retractable banner
which is attached to a storage rack and which is positionable in two positions
(retracted and expanded).” Ans. 2. Based on the similarities between Schell
and the claimed invention discussed above and in the Examiner’s findings,
we are not informed of error in the Examiner’s determination of the field or
that the invention and Schell are in the same field and are therefore
analogous art.
Appellants also argue that the modifying Schell so that it “does not
block off aisles and entry points” renders it unsatisfactory for its intended
purpose and that there is no reason to make such a modification. Appeal Br.
9-10. These arguments appear to misunderstand the rejection. The
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Application 12/974,178
Examiner explains that the combination retains “the safety feature of
Schell,” but places it “on the rack of Anderson.” Ans. 3. The Examiner
further explains that “[t]he placement of the banner of Schell in the first
position on the rack of Anderson will obstruct the pallet in some way, for
example, for someone standing to the side of the rack” which is all that the
claim requires. Ans. 3. Thus, we are not informed of error in the rejection
of claim 1, as the modification Appellants are arguing against is not the
same as the rejection made by the Examiner.
Claim 9
Independent claim 9 is rejected over the same basis as claim 1
discussed above. Final Act. 2. The Examiner also finds that:
Regarding the method steps, the covering of Schell as combined
with Anderson is sized to substantially visually obstruct a side of
a shipping pallet and the covering is moved from the first
position to the second position by hand and connected to the rack
with the connectors as described above.
Id. at 3.
Appellants argue that claim 9 is allowable for the same reasons as
claim 1. Appeal Br. 11—12. Additionally, Appellants argue that no factual
evidence is provided to support the rejection of claim 9. Id. at 12—13. This
is because the above statement amounts to “a conclusory statement without
factual support” because “no citation or other fact finding is presented in
support of the Office’s position.” Id. at 13.
Though the Examiner does not use the words “I find the following,”
the Examiner’s above paragraph expressly states his findings. Further,
Appellants’ argument attempts to take the Examiner’s above paragraph out
of context. In the previous paragraphs of the Final Office Action the
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Application 12/974,178
Examiner explained how the combination of Schell and Anderson renders
the claims obvious, including citations to the references and additional
findings of fact. Final Act. 2—3. These paragraphs include findings such as
“Schell teaches covering 5 positionable to a first position (extended across a
storage rack, 22, see Figure 1) and a second position (not obstructing a side
of the rack) that is in an area smaller than the covering occupies in the first
position;” and “The covering is retractable into housing 6 (Schell, Figure 1,
paragraph [0067]) which biases the covering in the first position and returns
the covering into the housing in the second position.” Id. Thus, it is unclear
how this can be considered “conclusory” with “no citation or other fact
finding.” Appeal Br. 13.
For these reasons, we are not informed of error in the Examiner’s
rejection of claim 9.
Claims 3—8 and 10—20
Appellants argue that claims 3—8 and 10—20 are allowable for the
same reasons as claim 1 and/or 9. Appeal Br. 14. Thus, these claims fall
with claims 1 and 9 for the same reasons discussed above.
DECISION
The Examiner’s rejection of claims 1 and 3—20 is affirmed.
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)(l)(iv).
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Application 12/974,178
AFFIRMED
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