Ex Parte Stolle et al

Board of Patent Appeals and Interferences

Mar 26, 2008

11073107 (B.P.A.I. Mar. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JANET STOLLE, BELINDA NEMETH and
DAN KOPSAK
__________

Appeal 2007-2976
Application 11/073,107
Technology Center 3600
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Decided: March 26, 2008
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a gift
wrap display device. The Examiner has rejected the claims as indefinite,
anticipated, and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse the rejection for indefiniteness but affirm the rejections based on the
prior art.
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Application 11/073,107

DISCUSSION
1. CLAIMS
Claims 1-20 and 22-26 are pending and on appeal. The claims have
not been argued separately with respect to the prior art rejections. The
claims rejected under §§ 102(b) and 103(a) therefore stand or fall together.
37 C.F.R. § 41.37(c)(1)(vii). Claims 1 and 5 are representative and read as
follows:
1. A consolidated and coordinated gift wrap display module supporting
different types of gift wrap products, the gift wrap display module
comprising:
a generally vertically disposed panel having a plurality of fixtures for
supporting different types of gift wrap products, the gift wrap products
including
gift wrap sheets, gift bags, bows and ribbons;
each of the different types of gift wrap products arranged in groups
upon the panel, and colors or themes of the gift wrap products being
coordinated.

5. The gift wrap display module of claim 1 wherein the gift bags
comprise gift bags of at least two different sizes.

2. DEFINITENESS
Claims 1-20 and 22-26 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. The Examiner presented separate bases for
rejecting claims 1, 2, 4-7 and 25 (as a group), and 10 (Ans. 4-5).1

1 The Examiner also stated that claim 3 is indefinite because the limitation
“within the groups” has insufficient antecedent basis (Ans. 5). The version
of claim 3 in the Claims Appendix to the Appeal Brief, which the Examiner
has indicated is correct (Ans. 3), does not contain the phrase “within the
groups.” In any event, claim 1 recites “different types of gift wrap products
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A. Claim 1
The Examiner reasons that claim 1’s “recitation ‘for supporting
different types of gift wrap products’ . . . conflicts with the positive
recitations ‘including gift wrap sheets’” in claim 1 and similar recitations in
dependent claims. (Ans. 4.) The Examiner concludes that the claims are
indefinite because “it is thus unclear whether applicant is intending to
positively claim such articles” (id.).
Appellants argue that they filed an after-final amendment to delete the
word “for” from line 3 of claim 1, but the Examiner refused to enter the
amendment (Reply Br. 2). Appellants assert that the “claims on appeal are
directed to the combination of a gift wrap product display and the gift wrap
products which are on the display” (id. at 1) and request that the claims be
interpreted as such during this appeal (id. at 2).
We do not completely agree with either the Examiner’s rejection or
Appellants’ interpretation of the claim language. Instead, we agree with the
Examiner’s response to Appellants’ argument: As written, the claim
language “places the gift wrap products as being a non-claimed item of the
device, and not a requirement of the claim. As a result the claims are
directed solely to the device, i.e. the vertical panel with the plurality of
fixtures, and not to the combination of the device with gift wrap products on
it” (Ans. 8).
arranged in groups,” so even if the correct version of claim 3 refers to
“different types of gift wrap products within the groups” (as it read earlier in
prosecution), that limitation has adequate antecedent support.
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“The definiteness inquiry focuses on whether those skilled in the art
would understand the scope of the claim when the claim is read in light of
the rest of the specification.” Union Pacific Resources Co. v. Chesapeake
Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001). “During examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000).
Claim 1 states that the claimed gift wrap display module comprises “a
generally vertically disposed panel having a plurality of fixtures for
supporting different types of gift wrap products . . . including gift wrap
sheets, gift bags, bows and ribbons; each of the different types of gift wrap
products arranged in groups upon the panel, and colors or themes of the gift
wrap products being coordinated.” The emphasized limitation states the
purpose or intended use of the fixtures on the vertical panel but it does not
require that the display module actually comprise gift wrap products in order
to come within the scope of the claim. Thus, while the claim requires that
the fixtures be capable of supporting different types of gift wrap products,
arranged in a certain way, it does not require that such products be combined
with the display module in order to anticipate or infringe the claim. See
Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.3d 1339,
1345 (Fed. Cir. 2003) (“An intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.”).
We interpret claim 1 to be directed to a display module comprising a
generally vertically disposed panel and a plurality of fixtures capable of
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supporting gift wrap sheets, gift bags, bows and ribbons, and suitable for
arranging the different types of gift wrap products in groups coordinated by
color or theme. While claim 1 may not say what Appellants think it says,
what it says is definite enough to pass muster under 35 U.S.C. § 112, second
paragraph. The rejection of claim 1 for indefiniteness is reversed.
B. Claim 2
The Examiner rejects claim 2 as indefinite because “it is unclear
whether the ‘additional types of gift wrap’ are parts of the ‘products’ set
forth in . . . claim 1” (Ans. 4).
We do not agree that the limitation added by claim 2 makes it
indefinite. Claim 2 is directed to the display module defined by claim 1,
“further comprising additional types of gift wrap products including gift
cards and novelties which are arranged in groups upon the panel and which
have colors or themes which are coordinated with other gift wrap products
of the gift wrap display.”
We have already concluded that claim 1 is directed to a display
module comprising a generally vertical panel and a plurality of fixtures
capable of displaying various gift wrap products in a certain way. Claim 2
requires that the display module also comprise gift cards and novelties,
arranged on the panel in a specified way. In our view, the scope of claim 2
is reasonably definite. We therefore reverse the rejection of claim 2 under
35 U.S.C. § 112, second paragraph. See All Dental Prodx LLC v. Advantage
Dental Prods., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002) (“The primary
purpose of the definiteness requirement is to ensure that the claims are
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written in such a way that they give notice to the public of the extent of the
legal protection afforded by the patent.”).
C. Claims 4-7 and 25
The Examiner rejected claim 4 as indefinite, on the basis that it is
unclear whether the gift wrap sheets recited in claim 4 are positively
required in the claimed product (Ans. 4). The Examiner rejected claims 5-7
and 25 based on similar reasoning (id.).
We will reverse this rejection. Claim 4 is directed to the display
module of claim 1, wherein the gift wrap sheets are both folded and rolled,
and supported by first and second fixtures, respectively. Thus, claim 4
further limits the display module defined by claim 1 by requiring that the
fixtures of claim 1 include a first fixture capable of displaying folded gift
wrap sheets, and a second fixture capable of displaying rolled gift wrap
sheets. The limitations of claims 5-7 and 25 also add limitations to the
nature of the fixtures required in the claimed display module. Since we
conclude that the scope of claims 4-7 and 25 is reasonably definite, we
reverse the rejection of these claims under 35 U.S.C. § 112, second
paragraph.
D. Claim 10
Claim 10 is directed to the display module of claim 1, with a rack
fixture supporting one type of product and a hook fixture supporting another
type of product. The Examiner rejected claim 10 as indefinite on the basis
that it is unclear how the rack fixture and hook fixtures are attached to the
panel (Ans. 5).
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We will reverse this rejection. The Specification states that the panel
can take any of a variety of forms: “The panel 14 can be any material
suitable for attachment of the various product display fixtures, and can be
specifically configured as a slat wall, metal roll form wall with an array of
parallel channels, a sheet form wall with openings, or an open lattice of
parallel wires or rods” (Spec. 3). Those skilled in the art would appreciate
that the mechanism by which a fixture is attached to the panel will depend
on what form the panel takes, and that any mechanism of attaching a fixture
to the panel will meet the disputed limitation.
In our view, the scope of claim 10 would be reasonably definite to
those skilled in the art. We therefore reverse the § 112, second paragraph,
rejection of claim 10.
3. ANTICIPATION
Claims 1, 8, 10, 12, and 15 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kaplan.2 The Examiner finds that Kaplan discloses a display
module comprising a generally vertically disposed panel having a plurality
of fixtures capable of supporting different types of gift wrap products (Ans.
5).
We agree with the Examiner’s reasoning and conclusion. Kaplan’s
Figure 1, for example, shows a display rack that has a generally vertical
panel (the back) to which are attached hooks and racks that are capable of
supporting gift wrap sheets, gift bags, bows, and ribbons. The fixtures are
suitable for arranging different types of gift wrap products in any desired

2 Kaplan, U.S. Patent 5,344,027, issued Sept. 6, 1994.
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configuration, including groups coordinated by color or theme. Thus, we
agree with the Examiner that Kaplan anticipates claim 1.
Appellants argue that the
Kaplan patent does not disclose a display of gift wrap products,
much less a display of coordinated gift wrap products. . . . [I]t
does not disclose color coordination of gift wrap products of the
same or different type, as claimed. The Kaplan patent does not
disclose gift wrap sheets, bows or ribbons as expressly
claimed. . . . The Kaplan patent cannot therefore anticipate the
claims.
(Appeal Br. 5.)
Claim 1, as we interpret it, requires only a panel and fixtures; the
recited gift wrap products modify the characteristics of the required fixtures
but are not themselves part of the display module defined by the claim
language. Therefore, Kaplan anticipates even though it does not disclose all
of the gift wrap products (and configuration thereof) recited in claim 1. The
rejection of claim 1 under 35 U.S.C. § 102(b) is affirmed. Claims 8, 10, 12,
and 15 fall with claim 1.
4. OBVIOUSNESS
Claims 2-7, 9, 11, 13, 14, 16-20, and 22-26 stand rejected under 35
U.S.C. § 103 as obvious in view of Kaplan and Johnson.3 Claim 5 is
representative of the rejected claims, and is directed to the display module of
claim 1, “wherein the gift bags comprise gift bags of at least two different
sizes.”
The Examiner cited Johnson for its disclosure of a gift wrap display
and concluded that, based on the cited references, “it would have been

3 Johnson et al., Des. 265,024, issued June 22, 1982.
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obvious to one of ordinary skill in the art to have the display include[ ]
different types of gift wrapping products, (paper, bags, ribbon, novelties,
etc.), of different sizes and configurations . . . for such basic reasons as
product accommodation, marketability, creating an aesthetically pleasing
display, etc.” (Ans 7-8).
We agree with the Examiner that claim 5 would have been obvious to
those of ordinary skill in the art based on the cited references. Kaplan is
discussed above. Johnson is a design patent that shows a “greeting card and
gift wrap display unit” (Johnson, Description) that includes different-sized
shelves, bins, and rotating stands (Johnson, Figs. 1 and 2). We agree with
the Examiner that it would have been obvious to a person of ordinary skill in
the art to modify Kaplan, based on Johnson, to include fixtures capable of
supporting gift wrap products, including gift bags, of at least two different
sizes.
Appellants argue that “there is no disclosure of the different types of
gift wrap products [in Johnson] . . . , or the claimed arrangement of different
types of gift wrap products in groups, or coordination of the claimed
different types of gift wrap products by color or theme or occasion” (Appeal
Br. 6). For the reasons discussed above, however, we conclude that the
claim language relied on by Appellants does not limit the claimed display
module to one that actually includes the recited products and arrangements;
claim 5 as written merely requires that the display module be capable of
supporting the recited products, arranged in the recited manner. The product
defined by claim 5 would have been obvious based on the cited references.
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Appellants also argue that “[b]ecause the Kaplan patent does not
disclose the different types of gift wrap products which are expressly
claimed, there is no suggestion by the Kaplan patent that it be combined
with any other prior art reference to arrive at the invention as claimed”
(Appeal Br. 6).
This argument is not persuasive. First, we do not agree that the
recited gift wrap products are “expressly claimed,” as discussed above.
Second, we do not agree that those skilled in the art would not have
considered it obvious to combine the cited references. Kaplan expressly
teaches that the disclosed device is used to display gift wrap products. See
Kaplan, col. 2, ll. 45-55 (“Appropriate ‘gift’ packaging for all of the items
displayed on the rack 10 is separately packaged and displayed for sale on the
rack as shown at 36 . . . . As shown . . . the packaging is a decorative bag 37
which is folded flat in the polybag. Tissue wrapping material 44, and, if
desired, a gift tag accompany the packaging.”). Johnson discloses a display
capable of displaying multiple types and sizes of gift wrap products
(Johnson, Figs. 1 and 2).
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 1742. In our view, the teachings of Kaplan and Johnson would have
suggested modifying Kaplan’s display (to the extent modification would be
required) to make it capable of displaying at least two different sizes of gift
bags.
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We affirm the rejection of claim 5 under 35 U.S.C. § 103. Claims
2-4, 6, 7, 9, 11, 13, 14, 16-20, and 22-26 fall with claim 5.
SUMMARY
We reverse the rejection for indefiniteness but affirm the rejections
under 35 U.S.C. §§ 102(b) and 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED

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