11257447 (B.P.A.I. Jun. 5, 2012)

Ex Parte Kiehnau et al

Board of Patent Appeals and InterferencesJun 5, 2012

11257447 (B.P.A.I. Jun. 5, 2012)

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. 11/257,447 10/24/2005 Brenda Kiehnau PRT 0007 PA/40978.11 9573 7590 06/06/2012 DINSMORE & SHOHL LLP One Dayton Centre Suite 1300 One South Main Street Dayton, OH 45402-2023 EXAMINER NOVOSAD, JENNIFER ELEANORE ART UNIT PAPER NUMBER 3637 MAIL DATE DELIVERY MODE 06/06/2012 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) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte Innomark Communications __________ Appeal 2010-007194 Application 11/257,447 Technology Center 3600 ___________ Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C. MEDLEY, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-18. The real party in interest is Innomark Communications. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. STATEMENT OF THE CASE The Applied Prior Art Whiteside U.S. Pub. 2005/0139560 A1 Jun. 30, 2005 Lehmann U.S. 5,090,577 Feb. 25, 1992 Sgabellone U.S. 5,370,064 Dec. 6, 1994 Appeal No. 2010-007194 Application 11/257,447 2 The Rejections on Appeal 1. Claims 1-5, 7, 10, 11, 13, and 15-18 were finally rejected under 35 U.S.C. § 102 as anticipated by Whiteside. 2. Claims 6 and 8 were finally rejected under 35 U.S.C. § 103 as obvious over Whiteside, but the rejection of claim 8 was withdrawn in the Examiner’s Answer. (Ans. 10:19-21). 3. Claims 1-10, 12-14, and 15-18 were finally rejected under 35 U.S.C. § 103 as obvious over Lehmann and Sgabellone. The Invention The invention is directed to a beverage track for a product display case (independent claim 1) and a shelf for a display case, which shelf includes a beverage track (independent claim 15). Claims 1 and 15 are the only independent claims. The specification explains that display cases are commonly used in retail settings to provide for convenient dispensing of food, beverage, and related products. (Spec. [0003]). The display cases are typically equipped with glass door and optional lighting to make it easier to visually identify a familiar or desired product. (Spec. [0003]). The specification further explains that in the extremely competitive beverage industry, there have been recent attempts to exploit more efficient use of “real estate” in a beverage display case, involving the use of tray-like tracks that mount directly onto the door such that they occupy the void between the plane defined by the front edge of the rows of shelving and a plane defined by the rearward-facing part of the door. (Spec. [0004]). The specification continues to explain that such prior attempts have been less than completely successful because the use of prior art beverage tracks at Appeal No. 2010-007194 Application 11/257,447 3 such a forward position tends to obscure products that are placed on the shelves behind the beverage track, especially when beverage containers placed within the tracks are oriented in their normal (vertical) position. (Spec. [0004]). The prior art tracks suffered other problems, including separation from their mount on the glass door and that the track cannot be adjusted to accommodate display cases of different width. (Spec. [0004]. Claims 1 and 15 are reproduced below: 1. A beverage track for a product display case, said beverage track attachable to a shelf in said display case and comprising: a shelf-engaging portion defining a substantially rigid structure; and a product cradle portion rigidly coupled to said shelf- engaging portion, said product cradle portion defining a beverage container trough such that at least one beverage container placed therein is displayed in a substantially horizontal orientation within said container trough in order that such at least one beverage container does not substantially obscure a product placed on said shelf, said cradle portion comprising at least one line of weakness therein to define a corresponding frangible portion of said container trough thereby. (Emphasis added.) 15. A shelf for display case, said shelf comprising: a substantially tray-like structure configured to hold a plurality of product containers in a substantially upright orientation; and a beverage track configured to hold a plurality of beverage containers forward of said substantially tray-like structure such that a beverage container placed in said beverage track is displayed in a substantially horizontal orientation in App App defin frang the b the w with asso num (Spe persp claim eal No. 20 lication 11 order tha containe beverag therein enable s elongate Accordin es a bever ible portio everage tr idth of th cases of v ciated with erous track c. [0004]) Appellan ective vie ed invent 10-007194 /257,447 t it does n rs placed o e track co to define a elective sh direction g to claim age contai n of the b ack has a l e track. In arying wid prior art b s of varyi . t’s Figure w of a dis ion: ot substan n said sub mprising correspo ortening . (Empha 1, the pro ner trough everage co ine of wea that mann th. The fr everage t ng widths 2A is rep play track 4 tially obsc stantially at least on nding fra of said be sis added.) duct cradl and has a ntainer tro kness to e er, the tra angible fe racks, i.e., on hand to roduced be according ure the pro tray-like s e line of w ngible po verage tr e portion line of we ugh. Acc nable sele ck can be ature solv that a reta suit diffe low and i to an emb duct tructure, s eakness rtion to ack along of the beve akness to ording to ctive short used in co es a proble iler has to rent displa llustrates a odiment o aid its rage track define a claim 15, ening of nnection m keep y cases. f the App App track crad A. discl every (Fed Exam In re 447, crad beve porti deter eal No. 20 lication 11 Appellan 30 is fran le portion The Ant 7, 10, 11 Anticipa oses, eithe element . Cir. 1999 iner bear King, 801 450 (CCP The Exa le portion rage conta on of the c mined tha 10-007194 /257,447 t’s Figure gible at a of the track icipation R , 13, and 1 tion is esta r expressl of the claim ); In re Sp s the burde F.2d 132 A 1970). miner dete in a bevera iner troug ontainer t t the requi 6A is rep line of wea : DIS ejection o 5-18 over blished on y or under ed inven ada, 911 F n of prese 4, 1327 (F The burde rmined th ge track, w h and has a rough, is m rement in 5 roduced be kness form CUSSION f Claims 1 Whiteside ly when a the princip tion. In re .2d 705, 7 nting a pri ed. Cir. 19 n has not b at the requ hich prod line of w et by Wh claim 15 o low and i ed in the -5, single pri les of inh Robertso 08 (Fed. C ma facie c 86); In re een met b irement in uct cradle eakness de iteside. Th f beverage llustrates h beverage or art refe erency, ea n, 169 F.3 ir. 1990). ase of ant Wilder, 42 y the Exam claim 1 o portion d fining a fr e Examin track com ow the trough of rence ch and d 743, 745 The icipation. 9 F.2d iner. f a produc efines a angible er prising at a t App App least porti elon by th front chan (Wh rail, The porti Abst an ex eal No. 20 lication 11 one line o on to enab gate direct e record. Whitesid edge. (W nel arrang iteside Ab and a pock display sy on of the s ract:5-8). emplary e 10-007194 /257,447 f weaknes le selectiv ion is met e disclose hiteside A ed to be se stract:2-3) et defined stem furth econd rail Figure 1 o mbodimen s therein t e shortenin by Whites s a display bstract:1) cured to th . The U-c between t er includes , which de f Whitesid t of Whit 6 o define a g of said ide. Neith system fo . The disp e shelf ad hannel inc he two rai a divider fines a par e is repro eside’s dis correspon beverage t er determ r use with lay system jacent the ludes a fir ls. (White attachable t of a stor duced belo play syste ding frang rack along ination is s a shelf ha includes front edge st rail and side Abstr to a rearw age bin. (W w, which m: ible its upported ving a a U-shape . a second act:3-5). ard hiteside illustrates d Appeal No. 2010-007194 Application 11/257,447 7 As is shown in Whiteside’s Figure 1, the U-shaped channel is designated by reference numeral 24 and a plurality of dividers 22 are secured to the back of the second rail 30 of U-shaped channel 24. (Whiteside [0016]). The dividers 22, together with shelf 12 and the back of the second rail 30, form a number of product storage bins separate from U- shaped channel 24 defining a product retaining trough. (Whiteside [0017]). Whiteside discloses that each divider 22 includes a plurality of removable spacers which can be cut, torn away, or otherwise separated along a plurality of seams 68 or along a suitable frangible connection to modify the length of the divider 22. (Whiteside [0026]). The Examiner regards seam 68 as satisfying the line of weakness required by claims 1 and 15. (Ans. 4:1). We disagree. In claim 1, the line of weakness has to be comprised by the product cradle portion of the beverage track attachable to the shelf and the line of weakness has to define a frangible portion of the container trough which is in turn defined by the product cradle portion. Not just any line of weakness in a product display system satisfies the claim. The Examiner has regarded divider 22 as a part of a container trough in a product cradle portion of a beverage track that is attachable to the shelf. That is not a reasonable reading of Whiteside’s disclosure. The U-shaped channel 24 is the product cradle portion of the track and defines a pocket 25, between rails 28 and 30, which is the container trough. Dividers 22 are merely attached to the backside of rail 30 to form the sides of storage bins on that backside of rail 30 and do not affect the shape or function of pocket 25 as a container trough. Seam 68 on a divider 66, which defines a frangible portion of the divider to change the length of the divider, Appeal No. 2010-007194 Application 11/257,447 8 cannot be reasonably regarded as a line of weakness on the product cradle portion to define a frangible portion of the container trough defined by the product cradle portion. The dividers 22 have their own purpose and function not sufficiently related to that of the U-shaped channel 24 for the dividers to be regarded as a part of container trough 25 in U-shaped channel 24. In claim 15, the line of weakness has to be on a track holding containers forward of a substantially tray-like structure, to define a frangible portion to enable selective shortening of the track in its elongate direction. In Whiteside, the substantially tray-like structure is the shelf 12, and the track is U-shaped channel 24. The elongate direction of the track is parallel to the two rails 28 and 30 and is transverse or perpendicular to the direction of each divider 22. Even assuming that dividers 22 are a part of the U- shaped channel 24 forming the track, seams 68 are not operative to define any frangible portion enabling selective shortening of the track along its elongate direction. For the foregoing reasons, the rejection of claims 1-5, 7, 10, 11, 13, and 15-18 as anticipated by Whiteside cannot be sustained. B. The Obviousness Rejection of Claims 6 over Whiteside Claim 6 indirectly depends on claim 1 and further recites that the frangible portion formed by said at least one line of weakness is approximately six inches in length. The Examiner determined that the specific length of a line of weakness could have determined within the level of ordinary skill in the art. However, as is discussed in connection with claim 1 above, the seams 68 on dividers 66 in Whiteside do not satisfy the App App place line C. of sh mad botto of Le Lehm troug to ad how eal No. 20 lication 11 ment or fu of weakne The Obv 12-14, a Lehman elves. (Le e of an ext m portion hmann is ann’s pro The chan h but doe just the le ever, that i 10-007194 /257,447 nction req ss. Accord iousness R nd 15-18 o n discloses hmann 2: ruded plas for holdin reproduce duct displ nel 10 of s not inclu ngth of the n light of uirements ingly, the ejection o ver Lehm a mercha 6-10). The tic pipe wh g product d below an ay system Lehmann’ de any line trough or Sgabellone 9 of indepe rejection f Claims ann and Sg ndise disp display u ich has an s. (Lehma d illustrat : s product of weakn channel. it would ndent clai of claim 6 1-10, abellone lay unit att nit has an open top nn 2:14-1 es a prefer display un ess definin The Exam have been m 1 for the cannot be achable to elongate c and an arc 5; 2:24-28 red embod it defines g a frangi iner determ obvious to claimed sustained the edges hannel 10 uate ). Figure iment of a container ble portio ined, one with . 1 n Appeal No. 2010-007194 Application 11/257,447 10 ordinary skill in the art to include a line of weakness in Lehmann’s channel 10 to define a frangible portion so that its length can be selectably adjusted. Prior to discussing Sgabellone, we focus on Appellant’s argument on disputed differences between Appellant’s claimed invention and the display unit disclosed in Lehmann. According to Appellant and with respect to independent claim 1, the channel 10 in Lehmann is not a beverage container trough of the product cradle portion of a beverage track. According to Appellant and with respect to independent claim 15, the channel 10 in Lehmann is not a beverage track. The basis of the argument is simply that Lehmann does not describe its display unit as holding beverage products or containers. For reasons discussed below, the argument is misplaced. The Examiner correctly determined that a beverage container is not a part of Appellant’s claimed invention. The import of that determination is that the prior art need not account for beverage products actually placed in Lehmann’s channel member 10. During examination, claim terms are given their broadest reasonable interpretation consistent with the specification. In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). Appellant’s specification does not specially define a beverage track or beverage trough as requiring a particular physical dimension or configuration. Thus, if Lehmann’s channel member 10 is capable of holding a beverage container, it is reasonably deemed a beverage track defining a beverage container trough. That an inventor is free to be his or her own lexicographer is of no significance here, where the specification contains no Appeal No. 2010-007194 Application 11/257,447 11 specially defined meaning for a beverage track or beverage container trough beyond a track or trough capable of holding a beverage container. The Examiner reasonably determined that channel member 10 in Lehmann’s display unit constitutes a beverage track defining a beverage container trough. Appellant’s specification does not limit the size or shape of beverage containers. Neither do the claims. Appellant has set forth no reason why channel member 10 is incapable of holding a beverage container. Sgabellone discloses a foldable travel table that can be assembled from three cardboard modules one of which is the table top. (Sgabellone Abstract). Sgabellone states (Abstract:7-10): A plurality of tear lines (34, 33, 32) is provided in the top module for selective adjustment of the width of the table by tearing off the outer part of the panel. Figure 1 of Sgabellone is reproduced below, which illustrates a perspective view of an assembled table: App App set fo 441 Lehm mad custo 2:14 that bein porti assem eal No. 20 lication 11 To supp rth an art F.3d 977, The refe ann alrea e from a le m installe -21). From the plastic g installed Sgabello on can be bled form 10-007194 /257,447 ort a motiv iculated re 988 (Fed. rences the dy describ ngth of ex d at the po that disc pipe can b to fit the w ne disclos shortened . (Abstra ation for c asoning w Cir. 2006) mselves re es that its truded pla int of prod losure, one e cut to an idth dime es that wh to achieve ct:7-10). 12 ombining ith rationa . We conc flect the le display un stic pipe a uct displa with ordi y desired nsion of a en assemb the desire Sgabellone teachings l underpin lude that t vel of ord it with cha nd can be y by a sto nary skill length wh shelf to w ling a trav d width of discloses , the Exam nings. In hat is the c inary skill nnel mem cut, built, re clerk. ( would hav en the disp hich it is a el table th the table use of a p iner has to re Kahn, ase here. in the art. ber 10 is and Lehmann e known lay unit is ttached. e table top in the fina lurality of l Appeal No. 2010-007194 Application 11/257,447 13 pre-formed transverse tear lines 32, 33, and 34, on the top panel section 14 to facilitate tearing off or removal of strip segments to selectively adjust the width of the table during assembly. One with ordinary skill in the art possesses ordinary creativity and is not an automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In light of Sgabellone’s disclosure of using lines of weakness to define frangible portions of a support surface to achievement custom width during assembly, one with ordinary skill in the art would have known to do the same with Lehmann’s channel member 10 which has to be custom cut and built at the point of assembly and attachment to a merchandise display shelf. Appellant has not identified any reason why one with ordinary skill would have regarded the line of weakness defining a frangible portion as usable only in connection with a cardboard module but not a plastic module, and we recognize none. Appellant argues that Sgabellone suggests nothing about a frangible portion on a beverage container trough or a beverage track. But one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981). In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986). A motivation to combine teachings need not be expressly stated in any prior art reference. In re Kahn, 441 F.3d at 989. As we discussed above, the reasoning is based on the combined teachings of Lehmann and Sgabellone and it has adequate rational underpinnings. We reject Appellant’s assertion that the rejection is inappropriately based on hindsight in light of Appellant’s own disclosed invention. Appeal No. 2010-007194 Application 11/257,447 14 For the foregoing reasons, we are not persuaded of error in the obviousness rejection of claims 1-10, 12-14, and 15-18 over Lehmann and Sgabellone. CONCLUSION The rejection of claims 1-5, 7, 10, 11, 13, and 15-18 under 35 U.S.C. § 102 as anticipated by Whiteside is reversed. The rejection of claim 6 under 35 U.S.C. § 103 as obvious over Whiteside is reversed. The rejection of claims 1-10, 12-14, and 15-18 under 35 U.S.C. § 103 as obvious over Lehmann and Sgabellone 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). AFFIRMED-IN-PART