Ex Parte Menard

Board of Patent Appeals and Interferences

Jun 17, 2010

11021470 (B.P.A.I. Jun. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN R. MENARD
____________

Appeal 2009-007418
Application 11/021,470
Technology Center 3600
____________

Decided: June 17, 2010
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007418
Application 11/021,470
2
STATEMENT OF THE CASE
John R. Menard (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-37, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s claimed invention is to a building construction and
methods of storing, displaying, and retailing merchandise within a retail
store. Spec. 1:6-8. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A building construction, comprising:
an exterior structure including at least four exterior walls,
a primary floor and a roof defining a primary storage space
wherein merchandise is stored and displayed;
a secondary floor defining a secondary storage space
within the primary storage space, the secondary floor being
spaced above the primary floor a distance sufficient for the
display of merchandise between the secondary and primary
floors, the secondary floor being exposed within the primary
interior storage space; and
an access structure providing access between the primary
floor and the secondary storage space;
wherein an excess number of merchandise items stored
on the primary floor are stored in the secondary storage space
and accessible via the access structure.
Appellant seeks review of the following rejections by the Examiner:
1. Rejection of claims 1, 2, 4-10, 13-15, 17-19, 28-32, and 37 under
35 U.S.C. § 103(a) as unpatentable over Miller (US 3,992,824), and
Gillespie (US 1,857,189);
2. Rejection of claims 3 and 16 under 35 U.S.C. § 103(a) as unpatentable
over Miller, Gillespie, and Belloche (US 4,618,031);
Appeal 2009-007418
Application 11/021,470
3
3. Rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Miller, Gillespie, and Stewart (US 6,405,496 B1);
4. Rejection of claims 20-22, 24-27, and 33-36 under 35 U.S.C. § 103(a) as
unpatentable over Pipp (US 4,472,912) and Miller; and
5. Rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable over
Pipp, Miller, and Belloche.
Rejections based on the combination of Miller and Gillespie, alone or in
view of Belloche or Stewart
The Examiner found Miller discloses all aspects of the invention of
claims 1, 2, 4-10, 13-15, 17-19, 28-32, and 37 except a secondary storage
space. Ans. 4-5. The Examiner found that Gillespie teaches a building
construction that provides a secondary storage space (units 13) usable for
storing merchandise. Ans. 5. The Examiner concluded that it would have
been obvious to a person of ordinary skill in the art at the time of the
claimed invention to “incorporate the secondary storage space of Gillespie
into the building construction of Miller for the purpose of storing and
accessing articles.” Id. The Examiner adds, in the Response to Argument
portion of the Answer, that both Gillespie and Miller are directed to
personnel-accommodating structures and that one or ordinary skill would
look to both for variations of such structures for maximizing use of space
that accommodates personnel. Ans. 9.
Appellant argues that a person of ordinary skill in the art would not
have been led from the art to combine the dressing and sleeping
compartments of Gillespie with the shopping mall of Miller. Br. 17.
The issue before us is:
Is the proposed combination of Miller and Gillespie based upon a
sufficient reason with a rational underpinning to explain why a person of
Appeal 2009-007418
Application 11/021,470
4
ordinary skill in the art would have modified Miller’s shopping mall to
include Gillespie’s units 13 as secondary storage to reach the subject matter
of claims 1, 2, 4-10, 13-15, 17-19, 28-32, and 37?
Independent claims 1, 13, and 28 each require a secondary storage
space (or secondary floor) that is positioned within a primary storage space
(or primary floor), and used for storage of merchandise.
We disagree with the Examiner’s rationale that a person of ordinary
skill in the art would modify Miller’s shopping mall to include Gillespie’s
units 13 for the purpose of storing and accessing articles. Gillespie discloses
a compartment building, unit 13, comprised of a pair of dressing chambers
58, 60, each having a sleeping chamber 59, 61, for use within a building 10,
such as a storeroom. Gillespie 1, ll. 1-4, 60-61; id. at 2, ll. 62-71; figs. 1, 2.
Gillespie does not mention use of the units 13 for storage. Gillespie, passim.
We also disagree with the Examiner’s rationale that a person of
ordinary skill in the art would modify Miller’s shopping mall to use
Gillespie’s units 13 as secondary storage because a person of ordinary skill
would recognize that Gillespie’s structure maximizes use of space to
accommodate personnel. Gillespie’s units 13 are designed to provide
maximum usable space while occupying a minimum amount of floor space
so that a building, such as a storeroom, maybe be used for private sleeping
quarters for a great number of people. Gillespie 1, ll. 7-25. However, we
fail to see, and the Examiner has failed to explain, how knowing that units
13 are an efficient use of space for sleeping and dressing chambers
(accommodating personnel) would provide a rationale for a person of
ordinary skill in the art to add Gillespie’s units 13 to Miller’s shopping mall
13 to provide a secondary storage space for storing merchandise.
Appeal 2009-007418
Application 11/021,470
5
The proposed combination of Miller and Gillespie is not based upon a
sufficient reason with a rational underpinning to explain why a person of
ordinary skill in the art would have modified Miller’s shopping mall to
include Gillespie’s sleeping and dressing units 13 as secondary storage to
reach the subject matter of independent claims 1, 13, and 28. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (“[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.”) (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)). The rejection of claims 2, 4-10, 14, 15, 17-19, 29-32, and
37 is also in error by virtue of their dependence, directly or indirectly, from
independent claims 1, 13, and 28.
Claims 3 and 16 depend from independent claims 1 and 13,
respectively, and the rejection of claims 3 and 16 is based upon the same
proposed combination of Gillespie and Miller, with a further modification of
a powered lift mechanism as taught by Belloche. Ans. 5-6. The rejection of
claims 3 and 16 is in error for the reasons explained in the analysis of
independent claims 1 and 13, supra.
Claims 11 and 12 depend from independent claim 1, and the rejection
of claims 11 and 12 is based upon the same proposed combination of
Gillespie and Miller, with a further modification of a ramp as taught by
Stewart. Ans. 6. The rejection of claims 11 and 12 is in error for the
reasons explained in the analysis of independent claim 1, supra.
Rejections based on Pipp and Miller, alone or in view of Belloche
The Examiner found that Pipp discloses the invention of claims 20-22,
24-27, and 33-36 except for the secondary floor (walkway 1420) being
positioned vertically above the primary floor level (fitting area 1422) at a
Appeal 2009-007418
Application 11/021,470
6
distance sufficient for the customer to walk between the primary and
secondary floor levels. Ans. 6-7 (parenthetical nomenclature to Pipp). The
Examiner found that Miller discloses a retail store including a secondary
level (platform 30) vertically spaced above the primary floor level (level 20)
a distance sufficient for the customer to walk between the primary and
secondary floor levels. Ans. 7 (parenthetical nomenclature to Miller). The
Examiner concluded that a person of ordinary skill in the art would have
modified Pipp’s secondary floor level (walkway 1420) to be vertically
spaced above the primary floor level (fitting area 1422) at a distance
sufficient for the customer to walk between the secondary primary floor
levels for the purpose of displaying and storing merchandise to be selected
by and sold to customers. Ans. 7.
Appellant argues that a person of ordinary skill in the art would not
have been motivated to modify Pipp as proposed by the Examiner because
doing so would position the employee a significant distance away from the
customer and displayed product and eliminate the advantage of Pipp’s
system. Br. 23-24.
The issue before us is:
Is the proposed combination of Pipp and Miller based upon a
sufficient reason with a rational underpinning to explain why a person of
ordinary skill in the art would have modified Pipp’s primary floor level
(fitting area 1422) to be vertically spaced from the secondary floor (walkway
1420) so that customers could walk between the levels as required by
independent claims 20, 25, and 33?
Independent claims 20, 25, and 33 are method claims that include use
of a secondary floor that is positioned vertically above the primary floor
with sufficient space so that customers can walk in between the floor levels.
Appeal 2009-007418
Application 11/021,470
7
Appellant argues that Pipp’s fitting area 1422 and walkway 1420 are
positioned to permit a single employee in walkway 1420 to service a
plurality of customers in fitting area 1422. Br. 23. We agree. Pipp
discloses a retail assembly 1410 for the retail sale of footwear designed to
permit a single salesperson to service multiple customers at a common
service counter 1418, by retrieving for each customer requested items of
footwear from a storage zone 1412 and handing the footwear over to the
customer to try themselves. Pipp, col. 1, ll. 42-46; col. 6, ll. 7-23; figs. 14,
15. Retail assembly 1410 includes fitting area 1422 and walkway 1420
adjacent opposite sides of customer service counter 1418. Pipp, col. 6, ll. 7,
14-15, 18-19, 21-22; figs. 14, 15. Fitting area 1422 includes a plurality of
customer seats 1468 to enable customers to be seated at counter 1418. Pipp,
col. 6, ll. 18-21; fig. 14. Walkway 1420 is for sales personnel, and includes
a bank 1442 of rolling shelving units 1448 in storage zone 1412. Pipp,
col. 6, ll. 10, 21-25. Given this disclosure, modification of Pipp’s walkway
1420 to be vertically above fitting area 1422, in the manner taught by Miller,
so that a customer can walk between the levels, as required by independent
claims 20, 25, and 33, would destroy an advantage of Pipp’s system, by
eliminating the ability for the salesperson to service multiple customers at
the same time by handing the requested items across the service counter to
the customers.
The Examiner reasons that a person of ordinary skill in the art would
modify Pipp’s walkway 1420 to be vertically spaced above fitting area 1422
as taught by Miller for the purpose of displaying and storing merchandise to
be selected and sold to customers. Ans. 7. We cannot agree. Miller
discloses a shopping mall 10 having a first level 20, a second level 22, and a
platform 30 disposed half-way between levels 20 and 22. Miller, col. 2,
Appeal 2009-007418
Application 11/021,470
8
ll. 19, 22, 32-34; figs. 1, 2A. Preferably, the first and second levels 20, 22
are shopping levels and platform 30 is used solely for access. Miller, col. 2,
l. 61 – col. 3, l. 21; fig. 2B. Given this, contrary to the Examiner’s
conclusion, Miller does not disclose that platform 30 is used for the purpose
of displaying and storing merchandise to be selected and sold to customers;
rather, Miller discloses that platform 30 (the secondary floor level) is used
solely for access and not as a shopping level. This knowledge would not
provide a person of ordinary skill in the art a reason to modify Pipp’s
walkway 1420 to be vertically spaced above fitting area 1422 so that
customers could walk between the levels.
The proposed combination of Pipp and Miller is not based upon a
sufficient reason with a rational underpinning to explain why a person of
ordinary skill in the art would have modified Pipp’s primary floor level
(fitting area 1422) to be vertically spaced from the secondary floor (walkway
1420) so that customers could walk between the levels as required by
independent claims 20, 25, and 33. The rejection of claims 21, 22, 24, 26,
27, and 34-36 is also in error by virtue of their dependence, directly or
indirectly, from claims 20, 25, and 33.
Claim 23 depends from claim 20, and the rejection of claim 23 is
based upon the same proposed combination of Pipp and Miller, with a
further modification of a powered lift mechanism as taught by Belloche.
Ans. 7-8. The rejection of claim 23 is in error for the reasons explained in
the analysis of claim 20, supra.
We REVERSE the Examiner’s decision to reject claims 1-37.

REVERSED

Appeal 2009-007418
Application 11/021,470
9

nhl

MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS MN 55402-0903