Ex Parte Reynolds

Board of Patent Appeals and Interferences

Apr 19, 2004

09811993 (B.P.A.I. Apr. 19, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RANDY B. REYNOLDS
__________
Appeal No. 2004-0356
Application 09/811,993
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 61 through 67, 69 through 72 and 74. Claims
68 and 73, the only other claims remaining in the application,
stand objected to as being dependent upon a rejected base claim,
but have been indicated by the examiner to be allowable if
rewritten in independent form including all of the limitations of
Appeal No. 2004-0356
Application 09/811,993
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the base claim and any intervening claims. Claims 1 through 60
have been canceled.
As seen in Figures 1 and 11, appellant’s invention generally
relates to a cantilevered, deflectable, merchandising/advertising
display assembly (10) having illumination means (52) provided
thereon. The merchandising display assembly is designed for
placement so as to extend transversely into a shopping aisle from
a merchandise storage site. It is important to appellant that
advertising materials carried by the display assembly be viewable
from both sides of the display as customers are approaching the
display from either end of the shopping aisle, and that the
display allow for temporary deflections should passersby
inadvertently bump the display and thus deflect it from its usual
orthogonal position relative to the shopping aisle
(specification, page 5). As noted on page 16 of the
specification,
what the present invention offers is an at-or-proximate
shelf merchandising display device which is illuminated,
battery powered, and which serves to draw attention to a
variety of store goods.
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The invention also addresses a method of advertising products
(i.e., point-of-purchase advertising) utilizing a deflectable,
lighted merchandising display like that described above.
Independent claims 61 and 74 are representative of the subject
matter on appeal and a copy of those claims may be found in the
Appendix to appellants’ brief (Paper No. 19).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Sernovitz 4,317,303 Mar. 2, 1982
Boggess et al. (Boggess) 4,805,331 Feb. 21, 1989
Claims 61 through 67, 69 through 72 and 74 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Boggess in
view of Sernovitz.
Rather than reiterate the examiner's full statement of the
above-noted obviousness rejection and the conflicting viewpoints
advanced by the examiner and appellant regarding the rejection,
we make reference to the examiner's answer (Paper No. 20, mailed
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Application 09/811,993
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April 16, 2003) for the examiner's reasoning in support of the
rejection, and to appellant’s brief (Paper No. 19, filed January
21, 2003) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination which follows.
In considering the examiner’s rejection of claims 61 through
67, 69 through 72 and 74 under § 103(a), we note that Boggess
discloses a cantilevered, deflectable, point-of-purchase
merchandising display apparatus (10) for placement so as to
extend transversely into a shopping aisle from a merchandise
storage site. Like appellant, it is important to Boggess that
advertising materials carried by the display assembly be in
direct view, from both sides of the display, as customers are
approaching the display from either direction along the store
aisle (col. 3, lines 47-50), and that the display allow for
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temporary deflections should passersby inadvertently strike the
display with a shopping cart and thus deflect it from its usual
orthogonal position relative to the shopping aisle (col. 3, lines
54-66). A principal objective of the display apparatus in
Boggess is to attract a customer’s attention to a featured item
at a location on a shelf as the customer approaches the area of
the shelf where the item can be found and thereby focus attention
on the featured item in an attempt to influence the customer’s
purchase decision at the earliest possible time. Like appellant,
Boggess discusses the fact that advertising signage mounted
across the front of a store shelf (i.e. parallel to the shopping
aisle) is out of direct view of approaching customers and thus is
less effective than an advertising display apparatus like that
described in Boggess extending perpendicular to the shopping
aisle which is visible from the time a customer enters the aisle
(col. 1, lines 33-36).
The advertising display apparatus of Boggess includes a
clamp or mounting clip (82) by which the apparatus is releasibly
attached to a shelf tag molding (12) at a merchandise storage
site along a shopping aisle; an advertising carrier or frame (16)
disposed at a distal portion of the apparatus; advertising
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information (22) disposed in the carrier frame; and a support
bracket (18) interposed between the clamp (82) and the carrier
frame (16), the support bracket removably and deflectably holding
the carrier frame so that the frame normally cantilevers
transversely into the shopping aisle. As recognized by the
examiner, what the advertising display apparatus of Boggess lacks
relative to appellant’s claimed advertising display assembly is
any teaching of or reference to providing a source of
illumination (i.e., lights) on the display apparatus.
To account for this difference, the examiner looks to
Sernovitz, noting that this patent shows an illuminated display
device that includes a plurality of lights (25) thereon
surrounding a display area and a source of power (e.g., battery
26) carried by the display device. Sernovitz indicates (col. 1,
lines 5-8) that the display device therein is for use on “display
racks, shelving or the like for retail merchandise.” While
Sernovitz shows one possible mounting means for the display
apparatus as a pair of tines (55), it is expressly indicated in
column 3, lines 34-36, that alternative supporting means may be
provided, “such as adhesive mounting means . . ., easel means,
hanging means and the like.” Sernovitz notes that the lights
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(25) on the display device may be any suitable light source, but
are preferably low-voltage lamps which produce negligible heat,
and further indicates that the circuit components for the lights
may include timing circuitry for blinking the light elements on
and off (col. 2, lines 39-43).
Based on the collective teachings of Boggess and Sernovitz,
the examiner has concluded that it would have been obvious to one
of ordinary skill in the art at the time of appellant’s invention
to modify the apparatus of Boggess by including lights and a
source of electrical power on the carrier frame (16) of the
display apparatus therein, as generally taught by Sernovitz,
since this would allow the display apparatus of Boggess to emit a
flashing, attention-grabbing visual display and thereby better
attract customer attention to a featured item located along a
store aisle as the customer approaches the area of a shelf on
which the featured item is stored.
We concur in the examiner’s assessment of obviousness of the
claimed subject matter under 35 U.S.C. § 103(a) based on the
combined teachings of Boggess and Sernovitz. Unlike appellant,
we are of the opinion that the examiner has clearly established a
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prima facie case of obviousness and has not engaged in hindsight
reconstruction based on appellant’s disclosure and claims. While
it is true that Boggess alone does not disclose an attention-
attracting, lighted display device for mounting on a supermarket
display shelf so that the display normally cantilevers
transversely into the shopping aisle, we share the examiner’s
view that one of ordinary skill in the art would have derived
ample suggestion and motivation from the collective teachings of
the applied patents, and particularly the illuminated display
apparatus seen in Sernovitz, for enhancing the attention grabbing
ability of the advertising display apparatus of Boggess by
providing the display apparatus of Boggess with lighting mounted
on or in the carrier frame (16) which can be seen by customers
approaching the display apparatus from either direction along the
aisle and thereby focus attention on a featured item at an even
earlier time, e.g., as the customer enters the shopping aisle,
especially when the lighting on the display device is flashing or
blinking on and off as suggested in Sernovitz. We consider that
one of ordinary skill in the art would have immediately
recognized that such a combination of features would more
effectively fulfill the desires in Boggess of a) directing
customer attention to a featured item at a location on a shelf
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where the item can be found (col. 2, lines 9-11) and b) having
the advertising display apparatus and promotional material or
advertisement message carried thereby “dominate at the moment of
the customer’s purchase decision” (col. 3, lines 55-56).
As for appellant’s depictions on pages 14 and 15 of the
brief showing different attempted bodily incorporations of the
display device of Sernovitz wholly into, or attachment onto, the
display apparatus of Boggess, we note that the test for
obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary
reference, nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test
is what the combined teachings of the references would have
suggested to those of ordinary skill in the art at the time of
appellant’s invention. See, In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). In the present case, given the common
goal in both Boggess and Sernovitz of attracting attention of
potential customers to a particular product carried on a store
shelf, and the self-evident advantage of lighting, particularly,
flashing lighting as in Sernovitz, to attract such customer
attention, we concur in the examiner’s position that the combined
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teachings of the applied references would have reasonably
suggested to one of ordinary skill in the art at the time of
appellant’s invention adding light sources and a battery power
source to the frame of the advertising display apparatus of
Boggess so as to achieve the advantage of improving the ability
of that advertising display to attract customer attention to a
particular product on a store shelf. In reaching this
conclusion, we have presumed skill on the part of the artisan,
rather than the converse. See In re Sovish, 769 F.2d 738, 742,
226 USPQ 771, 774 (Fed. Cir 1985).
In further response to appellant’s arguments in the brief
concerning combinability of the applied references, we also
observe that where the issue is one of obviousness under
35 U.S.C. § 103, the proper inquiry should not be limited to the
specific structure shown by a reference, but should be into the
concepts fairly contained therein, with the overriding question
to be determined being whether those concepts would have
suggested to one skilled in the art the modification called for
by the claims. See In re Bascom, 230 F.2d 612, 614, 109 USPQ 98,
100 (CCPA 1956). Furthermore, under 35 U.S.C. § 103, a reference
must be considered not only for what it expressly teaches, but
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also for what it fairly suggests (In re Burckel, 592 F.2d 1175,
179, 201 USPQ 67, 70 (CCPA 1979); In re Lamberti, 545 F.2d 747,
750, 192 USPQ 278, 280 (CCPA 1976)), as well as the reasonable
inferences which the artisan would logically draw from the
reference. See In re Shepard, 219 F.2d 194, 197, 138 USPQ 148,
150 (CCPA 1963).
Contrary to appellant’s assertion in the brief (page 9), we
do not see that Boggess in any way “admits to being incompatible
with the Sernovitz-type of point-of-purchase signs.” Moreover,
although the illuminated display device of Sernovitz may not be
mounted so as to protrude into a store aisle like the display
apparatus of Boggess, we find nothing in Sernovitz which in any
way limits placement of the display device therein to an
orientation parallel to a store aisle and across the front of a
shelf, as appellant seems to imply in the argument spanning pages
9-10 of the brief. Nor do we perceive that Boggess and Sernovitz
in any way “teach away” from the present invention.
As for appellant’s contention that “the law of issue
preclusion mandates reversal here based upon the results in the
parent appeal as to claims very similar in limitations to the
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present claims” (brief, page 51), we do not share appellant’s
view that the claims now before us on appeal are in any way “very
similar in limitations” to the claims addressed in prior Appeal
No. 1998-0234 in parent Application No. 08/406,752 (now U.S.
Patent No. 6,438,882). The claims before us in the present
appeal are clearly much broader in scope than the claims of the
parent application. In addition, we note that the examiner’s
current rejection under 35 U.S.C. § 103 relying on the collective
teachings of Boggess and Sernovitz was not an issue in the
earlier appeal. Thus, the doctrine of Issue Preclusion (whether
viewed as res judicata, law of the case, or collateral estoppel)
has no bearing on the present appeal.
With respect to the arguments presented on pages 27-50 of
the brief addressing appellant’s rebuttal evidence in the form of
several declarations pertaining to secondary considerations filed
on December 26, 2002 and January 13, 2003, we note that the
examiner has refused entry of such evidence as being untimely
filed (Paper No. 16, mailed January 29, 2003), and further
observe that the decision of the examiner refusing entry and
consideration of such evidence was upheld on petition (see
Decision on Petition, Paper No. 22, mailed June 2, 2003).
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Accordingly, we have not considered any argument pertaining to
such non-entered evidence in reaching our decision in the present
appeal.
In light of the foregoing, the examiner’s rejection of
claims 61 through 67, 69 through 72 and 74 under 35 U.S.C.
§ 103(a) will be sustained.
Notwithstanding appellant’s request on page 5 of the brief
that the Board rule separately on the patentability of each
appealed claim, we note that appellant has not presented
arguments directed to any specific claim on appeal and failed to
separately argue the patentability of each of the claims on
appeal. Thus, we have concluded that claims 62 through 67, 69
through 72 and 74 will fall with representative independent claim
61. See, In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA
1978).
The decision of the examiner rejecting claims 61 through 67,
69 through 72 and 74 under 35 U.S.C. § 103(a) is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2004-0356
Application 09/811,993
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Mr. Lynn G. Foster
Foster & Foster LLC
602 East 300 South
Salt Lake City, UT 84102