Ex Parte Mueller et al

Patent Trial and Appeal Board

Mar 21, 2013

10348306 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/348,306 01/21/2003 INV001Paul A. Mueller FFRZ 2 00208 7809
27885 7590 03/22/2013
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
CHIN SHUE, ALVIN C
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
03/22/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL A. MUELLER and DANIEL J. KUMP

____________________

Appeal 2011-001382
Application 10/348,306
Technology Center 3600
____________________

Before: GAY ANN SPAHN, BARRY L. GROSSMAN and
JILL D. HILL, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/348,306

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STATEMENT OF CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims
1, 3, 4, 7, 8, 32-37, 39-41, 43, 46-48 and 55-59. We have jurisdiction under
35 U.S.C. § 6(b).
Appellants' representative presented oral argument on March 12,
2013.
We REVERSE.
The Claimed Subject Matter
The claimed subject matter relates to an adjustable forward-feeding,
spring-biased, display shelving system for storing and displaying
merchandise of a variety of shapes and sizes and automatically delivering
the merchandise to the front of the shelf. Spec. p. 1, ll. 4-6. Claims 1, 7,
32, 39 and 46 are the independent claims. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A product pusher device comprising:
an elongate track having a front end, a rear end, and a
channel;
a paddle movably connected to said track for movement
along said channel and having a front face for engagement with
a rearmost one of a set of associated products located on said
track;
said paddle comprising a foot which is slidably engaged
in said channel;
a stop located on said foot;
a coiled biasing element for urging said paddle toward
said track front end, said biasing element being supported on
said paddle behind said front face; and,
wherein said paddle includes a one piece pusher wall
which is adapted to cantilever beyond said rear end of said track

1 Appellants identify the real party in interest for this appeal and the present
application as Fasteners for Retail, Inc.
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while said stop limits a rearward movement of said paddle in
said channel so that said paddle remains connected to said
track.
References
The Examiner relied upon the following prior art references:
Salveson US 5,562,217 Oct. 8, 1996
Spamer US 5,634,564 Jun. 3, 1997
Merl US 6,142,317 Nov. 7, 2000
Burke US 6,382,431 B1 May 7, 2002
Rankin US 6,464,089 B1 Oct. 15, 2002
Burke US 6,772,888 B2 Aug. 10, 2004
Cholet EP 0986980 A1 Mar. 22, 2000
Rejections
Appellants seek review of the following rejections:
1. Claims 7, 8, 39 and 55 rejected under 35 U.S.C. § 102(b) over
Merl;
2. Claims 32-36 rejected under 35 U.S.C. § 102(b) over Salveson;
3. Claims 1, 56 and 59 rejected under 35 U.S.C. § 103(a) as
unpatentable over Merl and Rankin;
4. Claims 1, 56 and 59 rejected under 35 U.S.C. § 103(a) as
unpatentable over Rankin and Merl;
5. Claims 3 and 4 rejected under 35 U.S.C. § 103(a) as unpatentable
over Rankin, Merl, and Burke '431;
6. Claims 7, 8, 32, 33, 35-37, 39-41,43,46-48,55,57 and 58 rejected
under 35 U.S.C. § 103(a) as unpatentable over Burke '888 and Spamer; and
7. Claim 34 rejected under 35 U.S.C. § 103(a) as unpatentable over
Burke '888, Spamer, and Cholet.
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ANALYSIS
All the claims include similar limitations which call for biased paddles
movable on a track with the paddles adapted to extend beyond the rear end
of the track. According to the specification, this allows the claimed
invention to be used on shelves of differing depths. Spec. p. 7, ll. 1-2.
Appellants argue that the references taken alone or in combination do not
disclose or suggest the claimed arrangement and, if modified to include this
arrangement, the structure of the modified references would no longer
function for its intended purpose. See, e.g., App. Br. 11-12, 15, 18-19, 22,
26, 27, 292.
One fundamental issue affecting all the claims is the Examiner’s
conclusion that the language in the claims calling for the paddle to be
“adapted to cantilever” (independent claims 1, 7, 39, 46), or “configured to
be retractable” (independent claim 32) is a statement of “intended use” that
“must result in a structural difference between the claimed invention and the
prior art in order to patentably distinguish the claimed invention from the
prior art.” Ans. 6, 7.3 The Examiner found that the devices disclosed in the
applied references were “capable of” being cantilevered or configured as
called for in the claims and thus met the claim limitations and therefore
anticipate and/or render obvious the claimed invention.
The “adapted to” and “configured to” language and limitations at
issue are functional. Functional recitations limit the structure defined by an
apparatus claim. That is, the structure must be capable of performing the

2 Citations to “App. Br. ___” are to the indicated page in the Appeal Brief
filed August 10, 2009.
3 Citations to “Ans. ___” are to the indicated page in the Examiner’s Answer
mailed July 16, 2010.
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recited function in order to satisfy the functional limitation. However, where
there is reason to conclude that the structure of the prior art is inherently
capable of performing the claimed function, the burden shifts to the
applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997).
Against this background, we review the rejections.
Claims 7, 8, 39 and 55 Rejected Under
35 U.S.C. § 102(b) Over Merl
One of the elements recited in independent claim 7 and independent
claim 39 is a “biasing element” for urging the paddle, and hence the
products loaded into the assembly, toward the front end of the track. As
disclosed in the Specification, the preferred form of the claimed “biasing
element” is a spring as shown in the figures at reference numeral 260.
Merl cannot anticipate independent claims 7 and 39 because Merl
does not disclose, either expressly or inherently, a “biasing element” of any
kind. See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987) (“A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.”). The title of the Merl patent is “Gravity Feed
Shelving System . . . .” As disclosed at column 2, lines 2-7, the Merl
apparatus “includes a pusher unit which is located at the back of the column
of product, and which exerts, under the influence of gravity, a forwardly-
directed force against the products, maintaining them towards the forward
edge of the shelf . . . .” (Emphasis added).
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The Examiner has not identified any biasing element in Merl in the
rejection. Lacking a finding that Merl discloses the claimed biasing element,
we cannot sustain the rejection of claims 7, 8, 39 and 55 under § 102.
Claims 32-36 Rejected Under
35 U.S.C. § 102(b) Over Salveson
The Examiner found that Salveson shows a product pusher assembly
having a track 30, a paddle 40 having a pusher wall 42B and a base with
rearward and forward portions at 47. Ans. 4. The Examiner also found that
in Figures 7 and 8, Salveson shows an embodiment of a tray with the track
integrally formed therewith, wherein the tray with the integral track is shown
to have only side walls 123 and 124 and no back wall. Thus, with no back
wall, the Examiner also found that the structure disclosed in Salveson is
capable of being retractable beyond the end of his track. Ans. 7.
Appellants argue that, contrary to the findings of the Examiner,
Salveson has a back wall, and thus is incapable of having the pusher
cantilevered beyond the rear end of the track. App. Br. 15; Reply Br. 34.
We agree with Appellants. Figures 1 through 8 all show various views of
the “present invention.” Salveson, col. 2, l. 50 – col. 3, l. 8. There is no
second or alternate embodiment shown. Thus, the fact that Figures 7 and 8
may not illustrate the back wall 26 shown in Figure 1 does not mean that the
back wall is not present.
Since Salveson does not disclose a structure which is configured to be
retractable beyond a rear end of the track, as called for in claims 32-36, we
cannot sustain the rejection under §102.

4 Citations to “Reply Br. ___” are to the indicated page in the Reply Brief
filed September 13, 2010.
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Claims 1, 56 and 59 Rejected Under 35 U.S.C. § 103(a)
As Unpatentable Over Merl in View of Rankin5
The Examiner found that Merl shows the claimed assembly with the
exception of the track having a structure for engaging a stop. Ans. 4. The
Examiner also found that Rankin shows a track having a rear channel
boundary at 18. Id. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify the track of Merl to comprise a channel rear boundary, as taught
by Rankin, for enclosing a rear portion of his track channel. Id.
Alternatively, the Examiner found that Rankin shows the claimed
assembly with the exception of the foot with a guide, and that Merl shows a
base having a foot portion with a guide 88, 90. Ans. 4. Based on these
findings, the Examiner concluded that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify the
base of Rankin to comprise a foot portion with a guide, as taught by Merl, in
lieu of his guide 24, to enhance stability of his pusher. Id. at 4-5.
Appellants argue that the Merl gravity feed system cannot be
combined with the spring biased system of Rankin; that Merl could not
function if it was retracted beyond the rear end of the track; that the Merl

5 Although the Examiner rejected these claims on Merl in view of Rankin
and also on Rankin in view of Merl, we treat these as one rejection since the
order of listing references is irrelevant to the rejection. See, e.g., In re Bush,
296 F.2d 491, 496 (CCPA 1961) (“[i]n a case of this type where a rejection
is predicated on two references each containing pertinent disclosure which
has been pointed out to the applicant, we deem it to be of no significance,
but merely a matter of exposition, that the rejection is stated to be on A in
view of B instead of B in view of A, or to term one reference primary and
the other secondary.”); see also In re Cook, 372 F.2d 563, 566 n.4 (CCPA
1967).
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foot cannot be adapted to the Rankin structure because it would inhibit the
Rankin spring; and, in general, the combination of Merl and Rankin would
neither function nor meet the limitations of the claims. App. Br. 18; Reply
Br. 3-5.
As Appellants point out, neither Merl nor Rankin discloses a structure
capable of being cantilevered without modifications so substantial as to
destroy the basic functions of the applied references. App. Br. 22-24. We
recognize that the obviousness inquiry does not ask “whether the references
could be physically combined but whether the claimed inventions are
rendered obvious by the teachings of the prior art as a whole.” In re Etter,
756 F.2d 852 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413
(CCPA 1981) (stating “[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”). Rather, in a case such as this, the obviousness inquiry
requires a finding that the proposed combination would have been obvious
to a person with ordinary skill in the art and provide a fact-based reason for
making the combination.
The reasons provided by the Examiner for the proposed combination
are that it would “enhance stability” of the pusher element or would enclose
a rear portion of Merl’s track channel. Ans. 4-5. However, the reasons
stated do not have a rational underpinning with appropriate factual findings
based on the prior art, common sense, market needs or other sources for
making the proposed modifications. See KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (holding that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness.”). There is no finding of any facts that
establish that a person or ordinary skill in the relevant technology would
modify the applied references as proposed for the ultimate purpose stated by
the Examiner. We recognize that the reason or motivation to modify the
references may often suggest what the inventor has done, but for a different
purpose or to solve a different problem. It is not necessary that the prior art
suggest the combination to achieve the same advantage or result discovered
by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006). However, there must be sufficient factual findings to
support the legal conclusion that an invention would have been obvious.
Accordingly, we do not sustain the rejection of claims 1, 56, and 59.
Claims 3 and 4 Rejected Under 35 U.S.C. § 103(a)
As Unpatentable Over Rankin and Merl in Further View of Burke '431
Burke ‘431 does not cure the deficiencies of the proposed
combination of Rankin and Merl discussed above. Accordingly, we do not
sustain the rejection of claims 3 and 4.
Claims 7, 8, 32, 33, 35-37, 39-41, 43, 46-48, 55, 57 and 58 Rejected
Under 35 U.S.C. § 103(a) As Unpatentable
Over Burke '888 in View of Spamer
The Examiner found that Burke '888 discloses the claimed assembly
with the exception of the foot. Ans. 5. The Examiner also found that
Spamer discloses a base having a foot portion. Id. The Examiner concluded
that it would have been obvious to one of ordinary skill in the art at the time
the invention was made to modify the base of Burke to comprise a foot
portion, as taught by Spamer. Id. The reason provided by the Examiner for
the proposed combination was again “to enhance stability” of the pusher. Id.
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The Examiner found that the modified structure is capable of being retracted
beyond the rear end of the track. Ans. 10.
Appellants argue that both Burke ‘888 and Spamer use a rear wall that
would preclude either structure, alone or in combination with the other, from
meeting the claim limitations of being cantilevered beyond the rear end of
the track. App. Br. 27. Appellants also argue that the Burke '888 display
system would have to be broken and rendered unusable in order to meet the
limitations of the claims. App. Br. 26; Reply Br. 6.
As stated above, we recognize that the test for obviousness is not
whether the features of one reference may be bodily incorporated into
another reference. See Keller; see also Etter. However, here we agree with
Appellants that the changes proposed by the Examiner would appear to
make the modified device inoperable. If references taken in combination
would produce a “seemingly inoperative device,” such references teach
away from the combination and thus cannot serve as predicates for a prima
facie case of obviousness. McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1354 (Fed.Cir.2001).
The reason provided for the proposed combination, that it would
“enhance stability” of the pusher element, does not have a rational
underpinning with appropriate factual findings based on the prior art,
common sense, market needs or other sources for making the proposed
modifications. It is merely conclusory. See KSR, 550 U.S. at 418.
Accordingly, we do not sustain the rejection of claims 7, 8, 32, 33, 35-37,
39-41, 43, 46-48, 55, 57 and 58.
Claim 34 Rejected Under 35 U.S.C. § 103(a) As Unpatentable
Over Burke '888 and Spamer in Further View of Cholet
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Cholet does not cure the deficiencies of the proposed combination of
Burke ‘888 and Spamer discussed above. Accordingly, we do not sustain
the rejection of claim 34.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3, 4, 7,
8, 32-37, 39-41, 43, 46-48 and 55-59.

REVERSED

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