Ex Parte Munoz et al

Patent Trial and Appeal Board

Oct 8, 2014

11504978 (P.T.A.B. Oct. 8, 2014)

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.
11/504,978 08/16/2006 Myrna Munoz 1421-111 RCE 4586
23869 7590 10/08/2014
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
10/08/2014 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 MYRNA MUNOZ, ENRIQUE VENTRUA MORENO
and LUIS SATURNO
____________
Appeal 2012-008291
Application 11/504,978
Technology Center 3600
____________

Before JENNIFER D. BAHR, JILL D. HILL and THOMAS F. SMEGAL,
Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Myrna Munoz et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 5−9, and 12−251, the
only claims on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The real party in interest is Kraft Foods Global Brands LLC. Appeal Br. 2.
Appeal 2012-008291
Application 11/504,978

2
CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below.
1. A device for displaying and dispensing retail articles
comprising:
a housing including an elongate central wall having a front
surface and an opposing back surface;
a plurality of elongate vertically oriented guide rails
including a pair of rear guide rails attached to and extending
longitudinally along either side of said elongate central wall,
said pair of rear guide rails attached to and extending
longitudinally along said front surface and said opposing back
surface of said elongate central wall, and a pair of front guide
rails aligned with and spaced apart from said pair of rear guide
rails;
each of said pair of rear guide rails and each of said pair of
front guide rails supporting a plurality of articles in a vertically
stacked array, said housing further having a dispensing opening
at the lower end thereof, each guide rail of said plurality of
guide rails having a hook-shaped catch for removably
supporting a lowermost article of said vertically stacked array at
said dispensing opening, said hook-shaped catch surrounding a
lower-most end of said lowermost article in a vertical
configuration of said vertically stacked array, wherein said
hook-shaped catch of said pair of front guide rails is in front of
said hook-shaped catch of said pair of rear guide rail to provide
said vertically stacked array in a front-to-back relationship for
display and dispensing.

Clms. App, Appeal Br. 21.

Appeal 2012-008291
Application 11/504,978

3
REJECTIONS ON APPEAL

The following Examiner’s rejections are before us for review.

1. Claims 1, 5, 6, 18, 19, and 21−23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Domenico (US 3,184,104, iss. May 18, 1965),
Immordino (US 3,993,196, iss. Nov. 23, 1976), and Schock (US
5,172,815, iss. Dec. 22, 1992).
2. Claims 7−9, 12, 16, 17, 20, 24, and 25 are rejected under 35 U.S.C.
§103(a) as unpatentable over Domenico, Immordino, Schock, and
Palamara (US 3,957,174, iss. May 18, 1976).
3. Claims 13–15 are rejected under 35 U.S.C. §103(a) over Domenico,
Immordino, Schock, Palamara, and Jandron (US 1,289,792, iss. Dec. 3,
1918).

ANALYSIS
Obviousness of claims 1, 5, 6, 18, 19, and 21−23 over Domenico,
Immordino, and Schock.
Appellants argue claims 1, 5, 6, 18, 19, and 21−23 as a group (Br.
8−15). We select claim 1 as the representative claim for this group such that
the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
While acknowledging that Domenico’s rear rails (68)(66) attach to its
back wall (24), Appellants argue that “Domenico does not teach that the rear
guide rail (68)(66) extends longitudinally along the back wall, or along the
surface of the back wall.” Br. 8.
Appeal 2012-008291
Application 11/504,978

4
The Examiner finds that Domenico teaches “a rear guide rail which is
attached to a length of a back wall (see Fig. 4) [and therefore] extends
longitudinally,” and that Immordino teaches “a rear guide rail (at 16)
attached to and extending longitudinally along a rear wall (19 or 20).” Ans.
6–7. The Examiner further finds that “Immordino’s back wall members (19
or 20) extending perpendicular to the rails . . . is a clear indication of a rail
member extending longitudinally along a wall,” and that “a single wall
member supporting rails on either side is . . . taught by Domenico.” Id. at 7.
According to the Examiner, Immordino’s rail arrangement, “when combined
with Domenico’s central wall, “is capable of providing the claimed specifics
of rails on either sides of a central wall.” Id. at 7–8.
The Examiner provides an annotated version of Domenico’s Figure 4
(left) next to an annotated version of Immordino’s Figure 4 (right) as shown
below.

We agree with the Examiner that Immordino’s rearmost and
lowermost ledge and foot (labeled rear guide rail above), if provided on
Domenico’s dispenser to replace support member 66, would attach to and
Appeal 2012-008291
Application 11/504,978

5
extend longitudinally along either side of (above, to the left side of and to
the right side of) Domenico’s elongate central wall 24.
Appellants argue that Immordino’s ledges extend from its side walls,
rather than from a central wall as claimed or from its cross slats 19, 20 as
proposed by the Examiner. Br. 10. However, the Examiner does not rely on
Immordino for a teaching of a central wall, but rather relies on Domenico for
the central wall. As stated above, the Examiner proposes to replace
Domenico’s support member 66 with Immordino’s rearmost and lowermost
ledge and foot (labeled rear guide rail above), such that Immordino’s ledge
attaches to and extends longitudinally along either side of (above, to the left
side of and to the right side of) Domenico’s elongate central wall 24.
Appellants fail to persuade us that these findings are erroneous, and we are
not persuaded by Appellants’ attempt to argue the references separately.
Appellants also contend that “[f]igure 4 [of Domenico] only shows a
plurality of candy bars (54) loaded in the dispenser, not a vertically stacked
array” and that
Domenico specifically teaches that the guide rails (68)(66) are
designed to deflect the articles progressively outwardly away
from the back wall to minimize pressure effect exerted on the
lowermost and outermost bar (col.3, ll. 50-56). This is contrary
to the effect of a vertically stacked array in which maximum
pressure is exerted on the lowermost article because the entire
vertically stacked array is completely supported by that article.
Br. 9.
However, Appellants haven’t pointed to any lexicographic definition
of the term “vertically stacked array” that limits the term to an array that
provides a downward pressure without an outward deflection, and we
therefore are not persuaded that the Examiner erred in finding that both
Appeal 2012-008291
Application 11/504,978

6
“Domenico and Immordino teach articles supported in a vertical stacked
array…more specifically, Immordino teaches articles completely supported
in a vertical stacked array.” Ans. 8.
While acknowledging that the Examiner cites Immordino “as
allegedly overcoming the deficiencies of Domenico,” Appellants argue that
“[t]here is no support for the Examiner's allegations that the ledges [of
Immordino] are attached to and extend along the surface of the central wall
(19, 20),” pointing out that
Immordino teaches box dispensing units having four separate
and independent units connected by a base… A series of ledges
are attached to the sidewalls (10, 11). Each ledge includes a
foot (16) which extends perpendicularly forward from the ledge
and acts as a stop (col. 2, ll. 55-col. 3, ll.11).

Br. 9-10.

Appellants’ argument is not commensurate with the scope of claim 1,
which does not require the front guide rails to be attached to the central wall,
but merely recites that the front guide rails are “aligned with and spaced
apart from…rear guide rails.” Furthermore, the Examiner responds that
a single wall member supporting rails on either side is a feature
which has been taught by Domenico as seen above. Immordino
is not used to teach such a feature. Immordino is being used to
teach an alternative rail arrangement, one, of which when
combined with Domenico’s central wall is capable of providing
the claimed specifics of rails on either sides of a central wall.

Ans. 7-8.
Thus, Appellants are simply attacking Immordino in isolation, rather
than as combined with Domenico. However, nonobviousness cannot be
Appeal 2012-008291
Application 11/504,978

7
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir.1986).
Regarding claim 1’s recitation “that the guide rails have a hook-
shaped catch,” Appellants contend that the term “hook-shaped catch” as
“defined in the specification is J-shaped element (63) (par. [0026]),” and
argue that “Immordino clearly does not teach or suggest a hook-shaped catch
as given the broadest reasonable interpretation consistent with the
specification.” Br. 11. However the Examiner notes that “nowhere in the
specification is it stated that a hook-shaped catch must be a J-shaped element
and nothing else.” Ans. 9. We agree with the Examiner that the claim
recites “hook-shaped” and not “J-shaped,” and that the limitation of a J-
shaped element should not be read into the claims.
Appellants also argue that “one of ordinary skill in the art would not
be motivated to add Immordino’s or Schock’s L-shaped foot to Domenico’s
rail based upon the disclosures of Domenico, Immordino or Schock,”
because “Domenico teaches away from the L-shaped foot which would
prevent deflection of articles progressively outwardly away from the back
wall, and, in fact, maximize the pressure exerted on the lowermost bar.” Br.
14. Appellants’ argument, however, amounts to only an assertion that the
references have differences and, to show a teaching away, it is not enough
for Appellant to merely argue that there are differences between two
references. See In re Beattie, 974 F. 2d 1309, 1312-13 (Fed. Cir. 1992).
Appellants also contend that “the front rail (60) of Domenico does not
support product but instead serves as an outlet mouth for the dispenser to
Appeal 2012-008291
Application 11/504,978

8
limit the removal of product to one bar at a time (col.3, ll. 66-70),” and that
Domenico teaches away from replacing Domenico’s front rail with
Immordino’s guide rail, because such a replacement would render Domenico
unsuitable for its intended purpose of providing minimum force on the
product by a specifically-designed rear rail. Br. 13. Appellants provide no
support for their proffered intended purpose from the teachings of
Domenico. To the contrary, a stated purpose of Domenico is to “provide a
dispenser of the type described with output end means adapted to prevent the
removal from the dispenser at a given time of more than one unit contained
in the dispenser.” Domenico, col. 1, ll. 18–21. Given this intended purpose,
it seems unlikely that replacing Domenico’s front rail with Immordino’s
guide rail would render Domenico unsuitable for its intended purpose.
Appellants also assert that “it appears that it is only through hindsight
reconstruction using Applicants’ disclosure as a blueprint that the Examiner
attempts to reach the present invention based on the disclosures of
Domenico and Immordino.” Br. 13.
The Examiner responds that it would have been obvious to one of
ordinary skill in the art to have combined the teachings of gravity fed
dispensers of Domenico, Immordino and Schock to provide “a more
efficient dispenser with increased capacity.” Ans. 17; see e.g., Immordino,
col. 2, ll.15−19. Appellants do not contend that the Examiner’s reasoning
lacks a rational underpinning. We therefore are not persuaded by
Appellants’ argument that the Examiner’s proposed combination of
references employed impermissible hindsight.
Appeal 2012-008291
Application 11/504,978

9
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. §103 of claims 1, 5, 6, 18, 19, and 21−23 over Domenico,
Immordino and Schock.
Obviousness of claims 7−9, 12, 16, 17, 20, 24, and 25 over Domenico,
Immordino, Schock, and Palamara.
Appellants argue claims 7−9, 12, 16, 17, 20, 24, and 25 as a group
(Br. 15). We select claim 7 as the representative claim for this group such
that the remaining claims stand or fall with claim 7. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
While reincorporating the prior arguments for patentability of claim 1
in asserting the patentability of claim 7 at pages 15−19 of the Brief,
Appellants also argue that “[m]odifying Domenico's rails as taught by
Palamara would destroy the operation of Domenico.” Br. 17. Thus,
Appellants assert a similar argument regarding Palamara that we have
previously found unpersuasive when asserted against Immordino. See
Fulton, 391 F.3d at 1201. We again find such an argument unpersuasive for
the same reasons.
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. §103 of claims 7−9, 12, 16, 17, 20, 24, and 25 over Domenico,
Immordino, Schock, and Palamara.
Obviousness of claims 13−15 over Domenico, Immordino, Schock,
Palamara, and Jardron.
Appellants made no specific argument in response to this rejection in
the Appeal Brief, other than acknowledging that the Examiner has cited
Appeal 2012-008291
Application 11/504,978

10
Jardron “for showing a window” and that “Jardron fails to overcome the
deficiencies” of Domenico, Immordino, Schock, Palamara. Br. 20.
For the foregoing reasons, we sustain the Examiner’s rejection of
dependent claims 13−15 as being unpatentable over the combined teachings
of Domenico, Immordino, Schock, Palamara, and Jardron, for the same
reasons stated above with respect to independent claim 7.
DECISION
We AFFIRM the Examiner’s rejections.
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)(1)(iv).
AFFIRMED

pgc