Ex Parte Wheeler

Patent Trials and Appeals Board

Mar 29, 2019

12401047 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/401,047 03/10/2009
25215 7590 04/02/2019
The Dobrusin Law Firm P.C.
29 W. Lawrence Street, Ste. 210
SUITE 210
PONTIAC, MI 48342
FIRST NAMED INVENTOR
Phillip J. Wheeler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1419-001 5155
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
04/02/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
rmasquelier@patentco.com
serla@patentco.com
dobrusin_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILLIP J. WHEELER
Appeal2017-004121
Application 12/401,047 1
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies Phillip J. Wheeler as the real party in interest.
Appeal Br. 2.
Appeal2017-004121
Application 12/401,047
ILLUSTRATIVE CLAIM
1. A method for providing merchandise information at a
retail establishment comprising the steps of:
a) receiving data from one or more retail establishments
wherein the data includes product details about a plurality of
products sold at the one or more retail establishments and a
location of the plurality of products within the one or more
retail establishments;
b) using the data from the one or more retail
establishments to create one or more electronic files containing
merchandise information to be printed onto a substrate, wherein
each electronic file includes merchandise information relating
to more than one product and each electronic file contains
product location identifiers so that the merchandise information
will be printed in an order that corresponds with the location of
the plurality of products within the one or more retail
establishments;
c) grouping the one or more electronic files into one or
more print groupings so the electronic files in the same print
grouping that correspond to one complete retail establishment
or multiple aisles of a retail establishment will be printed onto
one substrate;
d) providing the substrate including a plurality of
separable rows so that at least one print grouping can be printed
onto the substrate such that a first electronic file within the at
least one print grouping is printed in a first horizontal row and
subsequent electronic files within the at least one print grouping
are printed in adjacent horizontal rows;
e) printing on a printer at least one print grouping onto a
substrate, wherein each of the adjacent horizontal rows is
capable of containing all necessary merchandise information for
an entire retail establishment or for multiple aisles within a
retail establishment, and wherein a sequence of the printed
merchandise information within one horizontal row is
consistent with product location within one corresponding retail
establishment;
2
Appeal2017-004121
Application 12/401,047
f) separating each horizontal row from any adjacent
horizontal rows by a mechanism that automatically separates
the rows,
g) spooling each horizontal row into one or more
merchandise information rolls;
h) providing the one or more merchandise information
rolls with an indicator allowing a user to identify the location
within the retail establishment where the merchandise
information roll should be placed;
i) transporting the one or more merchandise information
rolls to the one or more retail establishments for installation
onto shelving; and
j) attaching the one or more merchandise rolls to shelving
or displays of the retail establishment by an application device
by unspooling the one or more merchandise rolls as the one or
more merchandise rolls are applied without first organizing the
merchandise information according to product location within
the retail establishment, so that the merchandise information
can be immediately attached to shelving or displays upon
receipt, wherein the application device can be connected to a
core of the one or more merchandise rolls or be connected to
self-wound merchandise rolls.
CITED REFERENCES
The Examiner relies upon the following references:
Marsh et al. US 5,423,617
(hereinafter "Marsh")
Petteruti et al. US 5,642,666
(hereinafter "Petteruti")
Connors et al. US 2002/0147597 Al
(hereinafter "Connors")
Farkas et al.
(hereinafter "Farkas")
US 2005/0010499 Al
Bartholet et al. US 7,009,723 Bl
(hereinafter "Bartho let")
3
June 13, 1995
July 1, 1997
Oct. 10, 2002
Jan. 13,2005
March 7, 2006
Appeal2017-004121
Application 12/401,047
Falls et al.
(hereinafter "Falls")
US 7,287,001 Bl Oct. 23, 2007
REJECTIONS 2
I. Claims 1--4, 10, and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Falls, Bartholet, and Petteruti.
II. Claims 5-8 and 19 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Falls, Bartholet, Petteruti, and Official Notice.
III. Claim 9 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Falls, Bartholet, Petteruti, and Connors.
IV. Claims 11 and 15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Falls, Bartholet, Petteruti, and Farkas.
V. Claim 12 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Falls, Bartholet, Petteruti, Farkas, and Official Notice.
VI. Claim 13 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Falls, Bartholet, Petteruti, Farkas, and Connors.
VII. Claim 14 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Falls, Bartholet, Petteruti, Farkas, and Marsh.
VIII. Claims 16, 17, and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Falls and Bartholet.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
2 This order of the rejections, in this listing, differs from that employed in
the Final Office Action.
4
Appeal2017-004121
Application 12/401,047
ANALYSIS
The Appeal Brief articulates various arguments in separately
identified Sections A through V- which are discussed, below, in
correspondingly entitled sections.
The Appellant does not identify any argument as pertaining to
dependent claim 15; therefore, claim 15 stands or falls together with
independent claim 11 (which is addressed in Sections Rand S, below).
For the reasons articulated herein, we sustain the rejections of
claims 1--4, 9--11, and 13-20, and we do not sustain the rejections of
claims 5-8 and 12, under 35 U.S.C. § 103(a).
A. Claims 16, 17, 20
The Appellant argues that the Examiner erred in rejecting independent
claim 16, as well as its dependent claims 17 and 20, because the combination
of Falls and Bartholet lacks the recited "merchandise information roll ...
includ[ing] an indicator allowing a user to identify the location within a
retail establishment where the merchandise information roll should be
placed" ( of claim 16) and because the rejection fails to provide a reason to
combine or modify the references, in the manner set forth in the rejection.
Appeal Br. 19--21.
With regard to the allegedly unmet limitation of claim 16, we agree
with the Examiner's finding that Falls' teaching of labels printed with
product-identifying information "are the indicators of where the roll should
be placed." Answer 4 (citing Falls col. 27, 1. 55 - col. 28, 1. 67). See also
Final Action 3. Indeed, Falls states that, "when attached to the shelf 46, the
labels 220 function as shelf plan-o-grams clearly communicating to store
5
Appeal2017-004121
Application 12/401,047
personnel where that corresponding product is to be located or where to
restock that product." Falls col. 27, 11. 55-58. The Appellant contends that
"winding the labels of Falls as the reel in Bartholet" would obscure "all but
the exterior label" ( and, thus, the location indicia ). Appeal Br. 21. Yet, as
the Examiner explains, the non-obscured labeling would, nevertheless,
satisfy the language of claim 16, which "is broad enough to include any sort
of indication" of where the roll should be placed. Answer 4.
Further, the rejection adequately provides a reason for combining the
teachings of Falls with those of Bartholet (which employs rolls), explaining
that the Bartholet technique facilitates "generating order specific printed
materials in a high volume product environment." Final Action 4 ( citing
Bartholet col. 2, 11. 5-7). See also Answer 2. A reason for combining
references may be drawn from the prior art references themselves. See In re
Jones, 958 F.2d 347,351 (Fed. Cir. 1992).
Therefore, we are not persuaded of error, regarding the rejection of
claims 16, 17, and 20, by the Appellant's arguments in Section A of the
Appeal Brief.
B. Claim 20
The Appellant argues that the Examiner erred in rejecting dependent
claim 20, because Falls does not teach the recited "merchandise roll" that is
"printed onto one horizontal row which is capable of containing all
necessary merchandise information for an entire retail establishment
wherein a sequence of the printed merchandise information within the one
horizontal row is consistent with product location within one corresponding
retail establishment." See Appeal Br. 21-22 ( emphasis added).
6
Appeal2017-004121
Application 12/401,047
To the contrary, as the Examiner finds (see Answer 6), Falls (col. 32,
11. 53-54) teaches that "[p]rint requests from the user can specify one shelf
up to an entire zone or store."
Therefore, we are not persuaded of error, regarding the rejection of
claim 20, by the Appellant's arguments in Section B of the Appeal Brief.
C. Claims 1-4 and 10
The Appellant argues that the Examiner erred in rejecting independent
claim 1, as well as its dependent claims 2--4 and 10, based upon the
arguments of Section A of the Appeal Brief, applied to claim 1 's limitation
"h" for "providing the one or more merchandise information rolls with an
indicator allowing a user to identify the location within the retail
establishment where the merchandise information roll should be placed,"
and also based upon the arguments of Section B of the Appeal Brief, applied
to claim l's limitation "e":
e) printing on a printer at least one print grouping onto a
substrate, wherein each of the adjacent horizontal rows is
capable of containing all necessary merchandise information for
an entire retail establishment or for multiple aisles within a
retail establishment, and wherein a sequence of the printed
merchandise information within one horizontal row is
consistent with product location within one corresponding retail
establishment.
Appeal Br. 22-23.
In view of the stated reliance upon the earlier portions of the Appeal
Brief, the Appellant's arguments (in Section C of the Appeal Brief, as to
claims 1--4 and 10) are not persuasive of error, for the reasons provided,
above, in regard to the corresponding Sections A and B of the Appeal Brief.
7
Appeal2017-004121
Application 12/401,047
D. Claims 1-4 and 10
The Appellant argues that the Examiner erred in rejecting independent
claim 1, as well as its dependent claims 2--4 and 10, because the rejection
does not provide an adequate reason to modify or combine the Falls,
Bartholet, and Petteruti references. Appeal Br. 23-26.
The Appellant contends that there is no "teaching, suggestion, or
motivation to combine Falls with Bartholet and further with Petteruti to
provide for an application device which attaches the one or more rolls to
shelving or displays through unspooling the merchandise roll and without
needing to first organize the merchandise information." Id. at 24. Yet, the
Appellant does not identify any defect in the Examiner's statement of the
reason to combine these references ( on page 10 of the Final Office Action),
to the effect that it would have been obvious for a person of ordinary skill in
the art at the time of the invention to employ Petteruti's device for applying
rolled labels to a surface, in order to efficiently apply rolled labels (per the
combined teachings of Falls and Bartholet). See Answer 8.
The Appellant also argues that the rejection does not explain how an
ordinarily skilled artisan would have maintained Falls' shelving channels
(for retaining labels) and the high-volume automated printing ofBartholet,
in view of the hand-held application device of Petteruti. Appeal Br. 25-26
(citing Falls col. 5, 11. 55-62, col 27, 11. 44--47; Bartholet col 2, 11. 11-14,
col. 4 11. 13-64; Petteruti col. 2, 11. 7-8). Yet, the Appellant offers no
support for the assertion that Falls' shelving channels and Bartholet's high-
volume automated printing would be inconsistent with Petteruti's hand-held
8
Appeal2017-004121
Application 12/401,047
application device. See In re Walters, 168 F.2d 79, 80 (CCPA 1948)
("[S]tatements of counsel in a brief cannot take the place of evidence.")
Moreover, the impairment of unclaimed features or advantages of
individual prior art references, when their respective teachings are
combined, does not necessarily preclude the combination. See Answer 9.
See also In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) ("[O]ne of
ordinary skill would have been motivated to pursue the desirable properties
taught by Wong, even if that meant foregoing the benefit taught by Gross.
And Urbanski' s claims do not require Gross' s benefit that is arguably lost by
combination with Wong."); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) ("[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine."); In re Keller, 642 F.2d 413,425 (CCPA 1981)
("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.")
Therefore, we are not persuaded of error, regarding the rejection of
claims 1--4 and 10, by the Appellant's arguments in Section D of the Appeal
Brief.
E. Claims 1-4 and 10
The Appellant argues that the Examiner erred in rejecting independent
claim 1, as well as its dependent claims 2--4 and 10, because the rejection
did not explain "why or how" an ordinarily skilled artisan would have
modified Bartholet (which teaches printing a plurality of orders that are then
9
Appeal2017-004121
Application 12/401,047
divided into reels) with Petteruti (which teaches printing and applying one
label at a time at an end use location). Appeal Br. 26.
Yet, the Appellant does not adequately articulate a reason why
Bartholet's disclosure of printing of a plurality of orders (which may be
divided into reels) may not be combined, in the manner of the rejection, with
Petteruti' s teaching of applying labels ( contained on reels) individually, so
as to achieve the claimed subject matter. See In re Walters, 168 F.2d at 80.
Further, the Appellant argues that the Specification describes
advantages of "having the printer separate from the applicator." Appeal
Br. 26 ( citing Spec. ,r 5). Yet, this argument has no bearing on the rejection,
because the Appellant does not explain why the combination of the
references, per the rejection, would not permit such separateness - to the
same extent as needed to satisfy the claims. In addition, the Examiner points
out that, "[ a ]s claimed, the advantage of immediate attachment is merely a
result of the claimed method and does not require a step to be performed."
Answer 10.
Therefore, we are not persuaded of error, regarding the rejection of
claims 1--4 and 10, by the Appellant's arguments in Section E of the Appeal
Brief.
F. Claim 18
With regard to the rejection of claim 18, the Appellant argues: "As
discussed hereinbefore, with respect to claim 1, the Final Office Action
presents insufficient fact-finding, reasoning, or evidence that Falls singularly
or in combination with Bartholet and Petteruti teaches applying merchandise
information with an application device." Appeal Br. 27. The Appellant
10
Appeal2017-004121
Application 12/401,047
does not identify the respective Sections of the Appeal Brief, but appears to
refer to Sections D and E.
In view of the foregoing analyses, addressing the Appellant's
arguments concerning claim 1, we are not persuaded by the Appellant's
arguments in Section F of the Appeal Brief.
G. Claims 5-8 and 19
The Appellant argues that the Examiner erred in rejecting claims 5-8
and 19, because they rely upon improper Official Notice for various prior art
teachings - ruler markings of contact paper ( claim 5); calendars ( claim 6);
posters ( claim 7); a roll of stamps ( claim 8); and a cutting mechanism for a
tape dispenser (claim 19). Appeal Br. 28. The Appellant contends that
"[t]he Final Action has not provided any reasoning where any of the Official
Notices are old and well known expedients in the art of merchandise
information systems and printing methods." Id. Further, the Appellant
alleges that none of the identified subject matter teaches integration into a
merchandise information system and printing method, that Official Notice is
improperly relied upon for five separate claims, and that Official Notice is
improperly relied upon to support a "main feature" of each claim. Id.
The Appellant's arguments do not persuade us of error. We agree
with the Examiner's position that the "[ A Jppellant does not present any
evidence or arguments that the concepts on which the Official Notices are
based, are NOT old and well-known." Answer 12. In addition, the use of
multiple instances of Official Notice does not necessarily constitute an error.
See Appeal Br. 28.
11
Appeal2017-004121
Application 12/401,047
With regard to the relationship between the subject matter of each
instance of Official Notice to the claim language at issue, the Appellant, in
effect, argues that the various subjects of Official Notice do not amount to
analogous art, because they are not "expedients in the art of merchandise
information systems and printing methods." Id. Subject matter is analogous
if it is: (1) from the same field of endeavor as the claimed invention
(regardless of the problem addressed); or (2) reasonably pertinent to the
particular problem with which the inventor is involved ( even if not within
the field of the inventor's endeavor). In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004) (citations omitted). We agree with the Examiner's findings that,
as to the identified claims, "the features contemplated are all related to
printing and the form of the printed material":
For claim 5, for example, there are ruler marking[s] printed
onto a liner. For claim 6, for example, the concern is printing
on both sides of a label. Regarding claim 7 and claim 8, the
concern is the physical manifestation of the printed labels, as
self-wound and how they are separated. Claim 19 is related to
dispensing the printed labels.
Answer 11. Thus, the subject matter of the instances of Official Notice at
least relates to the same field of endeavor as the claimed invention.
Therefore, we are not persuaded of error, regarding the rejection of
claims 5-8 and 19, by the Appellant's arguments in Section G of the Appeal
Brief.
H Claim 5
The Appellant argues that the Examiner erred in rejecting claim 5,
because of improper reliance upon Official Notice. Appeal Br. 29.
Specifically, the Appellant argues:
12
Appeal2017-004121
Application 12/401,047
In the Office Action response filed September 11, 2015,
on p. 17, the Appellant traversed the previous Office Action's
rejection including the Official Notice. Further, on p. 18-19,
the Appellant provided arguments against the Official Notice.
The Final Office Action neither clearly indicates the Official
Notice is admitted prior art or the traversal is inadequate.
Thus, the Examiner has not met his burden of establishing
Official Notice to support the use of Official Notice to cure the
deficiencies of Falls in view of Bartholet and Petteruti with
respect to claim 5.
Appeal Br. 29.
The Appellant's argument is not persuasive of error in the rejection,
because, we agree with the Examiner's position that the identified portion of
the Appellant's Response of September 11, 2015, did not adequately
traverse the Official Notice; instead, it disputed the motivation to combine
the prior art. See Answer 12.
Therefore, we are not persuaded of error, regarding the rejection of
claim 5, by the Appellant's arguments in Section Hof the Appeal Brief.
I. Claim 5
The Appellant argues that the Examiner erred in rejecting claim 5,
because the rejection does not provide a sufficient reason to combine or
modify the prior art - relying, instead, upon impermissible hindsight - in
regard to claim 5 's recitation of "a merchandise information roll is printed
onto an adhesive material and includes a flexible substrate liner, wherein
ruler markings are printed onto the flexible substrate liner to assist an
installer in determining distance between adjacent merchandise
information." Appeal Br. 29-31. The Appellant argues:
13
Appeal2017-004121
Application 12/401,047
The Office Action has provided no reasoning or evidence
why or how a skilled artisan would modify Falls in view of
Bartholet and Petteruti with the Official Notice to provide for
the ruler markings. On p. 33, the Office Action states "the art
would be combined 'because this provides a convenient guide
for the user, making installation of the item quicker and
easier[']". Falls teaches the "products are sequentially arranged
on each four foot shelf are printed on a four foot shelf print
band or strip, thus each four foot shelf section has a
corresponding four foot print strip" (col. 27, lines 59--63). The
Office Action has presented no reasoning or evidence why or
how a skilled artisan would modify the strips of Falls with
markings of the Official Notice as the strips are the lengths of
the shelves, thus there is no need to determine distance between
adjacent merchandise information as the strips of Falls are
already printed to size to fit within their individual shelves and
channels and the shelves are already a predetermined size.
Appeal Br. 30.
"In determining whether there would have been a motivation to
combine prior art references to arrive at the claimed invention, it is
insufficient to simply conclude the combination would have been obvious
without identifying any reason why a person of skill in the art would have
made the combination." Metalcraft of Mayville, Inc. v. The Toro Co.,
848 F.3d 1358, 1366 (Fed. Cir. 2017) (citing In re Van Os, 844 F.3d 1359,
1361 (Fed. Cir. 2017)). "Without any explanation as to how or why the
references would be combined to arrive at the claimed invention, we are left
with only hindsight bias that KSR warns against"; consequently, "while we
understand that '[t]he obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation,'
we also recognize that we cannot allow hindsight bias to be the thread that
stitches together prior art patches into something that is the claimed
14
Appeal2017-004121
Application 12/401,047
invention." Id., 848 F.3d at 1367 (citing KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,419,421 (2007)). "[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." KSR, 550 U.S. at 418 ( quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Furthermore, a determination of
"obviousness concerns whether a skilled artisan not only could have made
but would have been motivated to make the combinations or modifications of
prior art to arrive at the claimed invention." Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015).
The Examiner states that it would have been obvious to add ruler
markings to the combination of Falls, Bartholet, and Petteruti, because doing
so "provides a convenient guide for the user, making installation of the item
quicker and easier." Final Action 14, 33. Yet, this statement is not
supported by any identified teaching. Although the Examiner relies upon
Official Notice, to the effect that ruled markings may appear on contact
paper (id. at 14), there is no explanation provided as to the role of such
markings in the installation of contact paper, let alone how such a technique
might be applied in regard to the "merchandise information roll" having a
"flexible substrate liner" of claim 5. Such an explanation is necessary to
support a sustainable rejection- even if, as stated in the Examiner's
Answer, "neither appellant's specification nor appellant's arguments present
any evidence that modifying Falls with the selected elements of Bartholet,
Petteruti, and Official Notice, was uniquely challenging or difficult for one
of ordinary skill in the art." Answer 13.
15
Appeal2017-004121
Application 12/401,047
Accordingly, in view of the Appellant's argument in Section I of the
Appeal Brief, we do not sustain the rejection of claim 5.
J. Claim 6
Claim 6 recites:
A method according to claim 1, wherein the merchandise
information is printed onto both sides of the adjacent horizontal
rows, wherein the adjacent horizontal rows of the merchandise
information are applied showing a first side along a shelf edge
and then are flipped to show a second side to reflect changes to
merchandise information without the need to install new rows,
and wherein the first side contains product information on one
seasonal product, and the second side contains product
information on a different seasonal product.
The Appellant (Appeal Br. 31-32) argues that the Examiner erred in
rejecting claim 6, because of improper reliance upon Official Notice - to
the effect that "double sided printing onto substrate which may then be
flipped to show different information on a different seasonal product was
well known at the time of invention to persons of ordinary skill in the art,"
because, "[ f]or example, calendars are often printed on both sides so that one
month or year is shown on one side, and then flipped to show a second
month or year on the other side" (Final Action 15).
Specifically, the Appellant argues:
In the Office Action response filed September 11, 2015,
on p. 19, the Appellant traversed the previous Office Action's
rejection including the Official Notice. Further, on p. 19, the
Appellant provided arguments against the Official Notice. The
Final Office Action neither clearly indicates the Official Notice
is admitted prior art or the traversal is inadequate. Thus, the
Examiner has not met his burden of establishing the adequacy
of an Official Notice to support the use of Official Notice to
16
Appeal2017-004121
Application 12/401,047
cure the deficiencies of Falls in view of Bartholet and Petteruti
with respect to claim 6.
Appeal Br. 31-32.
The Examiner refers to the position stated in regard to Section H of
the Appeal Brief. Answer 15. Indeed, as in the instance discussed above
( with respect to Section H of the Appeal Brief), we agree with the
Examiner's position that page 19 of the Appellant's Response of
September 11, 2015, did not adequately traverse the Official Notice; instead,
it disputed the motivation to combine the prior art relied upon in the
rejection of claim 6.
Therefore, we are not persuaded of error, regarding the rejection of
claim 6, by the Appellant's arguments in Section J of the Appeal Brief.
K. Claim 6
The Appellant argues that the Examiner erred in rejecting claim 6,
because the rejection does not provide a sufficient reason to combine or
modify the prior art, as set forth in the rejection of claim 6 - relying,
instead, upon impermissible hindsight. See Appeal Br. 32-35. The
Appellant argues that the rejection was made in error, because:
[T]here is no teaching, suggestion, or motivation to combine
Falls with Bartholet, Petteruti, and further with Official Notice
to provide for printing merchandise information on both sides
of adjacent horizontal rows, showing a first side along a shelf
edge, and then flipping the merchandise information to a
second side to reflect changes and differences in seasonal
products, there is no apparent reason to combine the elements,
and no explicit analysis as to why or how one of ordinary skill
in the art would combine Falls with Bartholet, Petteruti, and
Official Notice.
17
Appeal2017-004121
Application 12/401,047
Appeal Br. 33.
The Examiner states that it would have been obvious to add double-
sided printing (per Official Notice) to the combination of Falls, Bartholet,
and Petteruti, because doing so "provides an efficient method for providing
reversible shelving labels, which may have slightly different information on
the second side, thereby allowing the shelving labels to be re-used and
saving the store money." Final Action 15.
Yet, the Examiner's position is not supported by any identified
teaching or articulated reasoning. The legal principles discussed above (with
respect to Section I of the Appeal Brief), concerning the law of obviousness
( citing Metal craft, KSR, and Belden), apply here, as well. Although the
Examiner relies upon Official Notice, to the effect that double-sided printing
may be employed in calendars (id. at 15), the Examiner provides no
explanation of the role of such double-sided printing in the fabrication of
calendars - let alone how the technique, as employed in the creation of
calendars, might be applied in regard to the "adjacent horizontal rows of the
merchandise information" of claim 6.
Accordingly, in view of the Appellant's argument in Section K of the
Appeal Brief, we do not sustain the rejection of claim 6.
L. Claim 7
Claim 7 recites: "A method according to claim 1, wherein the one or
more merchandise information rolls are self-wound."
The Appellant (Appeal Br. 35) argues that the Examiner erred in
rejecting claim 7, because of improper reliance upon Official Notice, to the
effect that: "self-winding rolls was [sic] well known at the time of invention
18
Appeal2017-004121
Application 12/401,047
to persons of ordinary skill in the art. For example, unframed posters
purchased at Wal-Mart, concerts, or other retail establishments, are often
self-wound" (Final Action 16). Specifically, the Appellant argues:
In the Office Action response filed September 11, 2015,
on p. 19, the Appellant traversed the previous Office Action's
rejection including the Official Notice. Further, on p. 20, the
Appellant provided arguments against the Official Notice. The
Final Office Action neither clearly indicates the Official Notice
is admitted prior art or the traversal is inadequate. Thus, the
Examiner has not met his burden of establishing the adequacy
of an Official Notice to support the use of Official Notice to
cure the deficiencies of Falls in view of Bartholet and Petteruti
with respect to claim 7.
Appeal Br. 35.
The Examiner refers to the position stated in regard to Section H of
the Appeal Brief. Answer 18. Indeed, as in the instance discussed above
(with respect to Section Hof the Appeal Brief), we agree with the
Examiner's position that page 19 of the Appellant's Response of
September 11, 2015, did not adequately traverse the Official Notice; instead,
it disputed the motivation to combine the prior art relied upon in the
rejection of claim 7.
Therefore, we are not persuaded of error, regarding the rejection of
claim 7, by the Appellant's argument in Section L of the Appeal Brief.
M Claim 7
The Appellant argues that the Examiner erred in rejecting claim 7,
because the rejection does not provide a sufficient reason to combine or
modify the prior art - relying, instead, upon impermissible hindsight.
Appeal Br. 35-38. The Appellant argues, in part:
19
Appeal2017-004121
Application 12/401,047
As Falls does not teach the merchandise information
provided in a roll and both Bartholet and Petteruti teach the
need for a reel or spool, why would a skilled artisan have any
motivation to refer to a self-wound item, such as a poster, to
provide for a self-wound roll of merchandise information? The
Office Action has provided no roadmap as to why a skilled
artisan would be motivated to provide for a self-wound roll
when the references relied upon by the Examiner require a reel
(Bartholet) or spool (Petteruti) to provide the exact
functionality of a roll and application device which the
Examiner relies on to cure the deficiencies of the primary
reference, Falls.
Appeal Br. 37-38.
With regard to the "self-wound" feature, the "Examiner takes Official
Notice that self-winding rolls was well known at the time of invention to
persons of ordinary skill in the art. For example, unframed posters
purchased at Wal-Mart, concerts, or other retail establishments, are often
self-wound." Final Action 16. Further, the Final Office Action states:
[I]t would have been obvious for a person of ordinary skill in
the art (PHOSITA) at the time of invention to modify the
teachings of Falls, Bartholet, and Petteruti by using self-wound
rolls as taught by Official Notice because this provides an easy
storage method where the rolls will not become tangled or bent.
Id. Yet, the Examiner also questions the scope and meaning of the "self-
wound" limitation at issue in claim 7:
Examiner further notes that the claim is at a high level of
generality. Indeed, what exactly is meant by "self-wound"?
The specification does not make this clear. Toilet paper on a
roll may be considered to be self-wound, since multiple layers
of toilet paper are wound about the roll. Likewise, rolls of tape
may be considered to be self-wound, since the tape sticks to
itself, regardless of whether there is a cardboard roll at the
center of the tape. Another example is an ace bandage, which,
like a poster, is often wound around itself, without a center
20
Appeal2017-004121
Application 12/401,047
tube. Many other items may also be considered to be self-
wound, such as rolled yoga mats or a roll of address labels.
Answer 19.
With regard to the meaning of "self-wound" in claim 7, the
Specification resolves the matter, by drawing a distinction between rolls
with, and without, a core (around which a material is wound). See Spec.
,r 11 ("the one or more merchandise information rolls are spooled around a
core or self-wound"); ,r 26 ("The attached strips 13 or continuous strips 27
are then preferably wound into a roll format 14. The roll format 14 may
surround a core 15 or any type of holder or may be self-wound."); original
claim 7 ("A method according to claim 1, wherein the one or more
merchandise information rolls are spooled around a core or self-wound.")
This distinguishing feature of the claimed "self-wound" roll, however,
is not reflected in the Examiner's stated reason for combining the technique
with the other cited references. That is, the rejection does not adequately
explain why "using self-wound rolls" would "provide[] an easy storage
method where the rolls will not become tangled or bent" (Final Action 16),
in the manner that a roll formed around a core would not. Nor does the
Examiner articulate any reasoning as to how the techniques employed in
rolling posters might be applied to the technology of "merchandise
information rolls" of claim 7. Therefore, the Appellant's argument (see
Appeal Br. 37-38) persuades us of error in the rejection.
Accordingly, in view of the Appellant's argument in Section M of the
Appeal Brief, we do not sustain the rejection of claim 7.
21
Appeal2017-004121
Application 12/401,047
N. Claim 8
Claim 8 recites:
A method according to claim 1, wherein the printed
horizontal rows are wound directly from a printer prior to
separation from adjacent horizontal rows, and wherein the
separation is done by the mechanism that automatically
separates the rows, and wherein the mechanism that
automatically separates the rows is a part of the printer.
The Appellant (Appeal Br. 38) argues that the Examiner erred in
rejecting claim 8, because of improper reliance upon Official Notice, to the
effect that "winding items prior to separation was well known at the time of
invention to persons of ordinary skill in the art," because, "[ f]or example,
perforated stamps may come on a roll where the user would have to separate
the stamps from each other after the stamps were received on the roll" (Final
Action 17). Specifically, the Appellant argues:
In the Office Action response filed September 11, 2015,
on p. 20, the Appellant traversed the previous Office Action's
rejection including the Official Notice. Further, on p. 20-21,
the Appellant provided arguments against the Official Notice.
The Final Office Action neither clearly indicates the Official
Notice is admitted prior art or the traversal is inadequate.
Thus, the Examiner has not met his burden of establishing the
adequacy of an Official Notice to support the use of Official
Notice to cure the deficiencies of Falls in view of Bartholet and
Petteruti with respect to claim 8.
Appeal Br. 38.
The Examiner refers to the position stated in regard to Section H of
the Appeal Brief. Answer 21. Indeed, as in the instance discussed above
(with respect to Section Hof the Appeal Brief), we agree with the
Examiner's position that pages 20-21 of the Appellant's Response of
September 11, 2015, did not adequately traverse the Official Notice; instead,
22
Appeal2017-004121
Application 12/401,047
it disputed the motivation to combine the prior art relied upon in the
rejection of claim 8.
Therefore, we are not persuaded of error, regarding the rejection of
claim 8, by the Appellant's arguments in Section N of the Appeal Brief.
0. Claim 8
The Appellant contends, among various arguments, that claim 8
stands rejected in error, because the rejection provides no evidence or
explanation of how the cited prior art, in view of the Official Notice (i.e.,
that "winding items prior to separation is well known"), teaches or suggests
the claimed feature "wherein the mechanism that automatically separates the
rows is a part of the printer." Appeal Br. 39--40 (quoting Final Action 17).
The Examiner contends that Bartholet (col. 4, 1. 53 -col. 5, 1. 7;
Fig. 3) teaches the identified feature. Final Action 16; Answer 22.
Yet, the identified portion of Bartholet does not disclose attributes of a
"printer," as recited in claim 8; instead, this section of the reference states, in
relevant part:
Referring to FIG. 3, the web 222 is unrolled from the take up
spool 216 and runs through a coating applicator 302 ... , a
coating curing station 304 . .. , a second accumulator 322, a
label die cutter 306, and a slitter 308. The slitter 308 slits the
web 222 into three sub webs 316, 318, and 320, which are taken
up on three reels 310, 312, and 314, respectively.
Bartholet col. 4, 11. 55---63. In the described process, Bartholet employs
"high speed web printer 108" before the web is wound onto "take up
spool 216" and before the referenced portions of the web are separated. Id.
at col. 4, 11. 13---63, Figs. 2, 3. Accordingly, the Examiner's finding that
Bartholet teaches "wherein the mechanism that automatically separates the
23
Appeal2017-004121
Application 12/401,047
rows is a part of the printer," as recited in claim 8, is not adequately
supported.
Accordingly, the Appellant's argument in Section O of the Appeal
Brief persuades us of error in the rejection of claim 8.
P. Claim 19
Claim 19 recites:
A kit according to claim 17, wherein the kit further
includes an application device for attaching merchandise
information to shelves or displays within a retail establishment,
and
wherein the application device comprises a mechanism
for cutting one portion of a merchandise information roll and a
ratchet that controls a rate and an amount of merchandise
information being dispensed.
The Appellant presents two arguments asserting that claim 19 stands
rejected erroneously.
The Appellant's first argument concerns the Examiner's reliance on
"Official Notice that devices which dispense media and which comprise a
mechanism for cutting were well known at the time of invention to persons
of ordinary skill in the art," such as, "[f]or example, common tape dispensers
have a cutting mechanism." Final Action 19. The Appellant contends:
The Office Action presents no reasoning or evidence as
to why or how one of ordinary skill in the art of merchandise
information systems having multiple components and
complexity, including an application mechanism, would refer to
a common tape dispenser. These tape dispensers are
completely manual. How would one of ordinary skill in the art
modify Falls in view of Bartholet and Petteruti with a common
tape dispenser?
24
Appeal2017-004121
Application 12/401,047
Appeal Br. 41.
The Appellant's first argument is not persuasive of error. Insofar as
the Appellant contends that a tape dispenser is not analogous art, the
Appellant does not address the relevant factors of whether a tape dispenser is
from the same field of endeavor as the invention, or whether a tape dispenser
is reasonably pertinent to the particular problem with which the inventor is
involved (even if not within the field of the inventor's endeavor). See In re
Bigio, 381 F.3d at 1325. Furthermore, the focus of the Appellant's argument
is that tape dispensers are somehow at odds with the Falls, Bartholet, and
Petteruti references, because "tape dispensers are completely manual."
Appeal Br. 41. Yet, the Petteruti reference, which relates to a "hand-held
label printer," is also a manual device. Petteruti col. 1, 1. 6. The Appellant
does not explain why the manual aspect of the identified tape dispenser
would impair the rejection.
The Appellant's second argument is also not persuasive of error. The
Appellant argues that Falls' labels are already sized to fit their corresponding
shelf sections, prior to arriving at a retail establishment. Appeal Br. 41
( citing Falls col. 27, 11. 59---61 ). According to the Appellant, "Falls teaches
away from cutting a merchandise information roll, as Falls teaches the labels
arrive already pre-sized/or a shelf section." Id. Yet, "[t]he prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives," if "such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed." In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). "The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
25
Appeal2017-004121
Application 12/401,047
another. Instead, the benefits, both lost and gained, should be weighed
against one another." Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000). See also Medichem, 437 F.3d at 1165. In the
instant case, the Examiner states, and we agree, that Falls does not disparage
the use of a cutting mechanism, but "simply provides pre-cut labels, which is
clearly an alternative to labels which are not pre-cut." Answer 23. Falls has
not been shown to "criticize, discredit, or otherwise discourage" the use of
the claimed cutting mechanism. See In re Fulton, 391 F.3d at 1201.
In view of the foregoing, we are not persuaded of error in the rejection
of claim 19, based upon the Appellant's arguments in Section P of the
Appeal Brief.
Q. Claim 9
Claim 9 recites: "A method according to claim 1, wherein the product
details received from the retail establishment include bar code information
and RFID information."
The Appellant acknowledges that Falls teaches labels that include the
recited "bar code information." Appeal Br. 42 ("Falls teaches the labels may
include 'a specific appearance, text, lines, rectangles, graphics, and UPC
codes' ( col. 30, lines 21-27).") The Appellant further acknowledges that
Connors teaches labels that include "a unique bar code," a "radio frequency
identification (RFID) tag," or a "magnetic identification tag." Id. ( quoting
Connors ,r 23). The Appellant contends:
[T]here is no teaching, suggestion, or motivation to combine
Falls with Bartholet, Petteruti, and Connors to provide both bar
code information and RFID information to relay product
details; no apparent reason to combine the elements, and no
26
Appeal2017-004121
Application 12/401,047
explicit analysis as to why or how one of ordinary skill in the art
would combine Falls with Bartholet, Petteruti, and Connors.
Id.
To the contrary, Connors, alone, teaches both bar code information
and RFID information. See Connors ,r 23. Moreover, the Examiner
articulates a sufficient reason for combining Falls' teaching of bar code
information with Connors' teaching of RFID information, in order to
"automatically verify[ ] that the shelf label is inserted into the correct shelf
control unit." Final Action 20 (citing Conners ,r 23). A reason for
combining references may be drawn from the prior art references
themselves. See In re Jones, 958 F.2d at 351.
The Appellant argues, further, that "[t]he Office Action has provided
evidence that Connors teaches the RFID tags identify location information
of a shelf label, but not where RFID tags also relay product details in
addition to or separate from product details in a bar code." Appeal Brief 43.
However, Connors' teaching ofRFID tags is not so narrow that it would
preclude applying the technique to the recited "product details," as the
Examiner states in the rejection. See Final Action 19--20, Answer 23-24.
Accordingly, the Appellant's argument in Section Q of the Appeal
Brief does not persuade us of error in the rejection of claim 9.
R. Claim 11
The Appellant contends that independent claim 11 stands rejected
erroneously, because none of the cited Falls, Bartholet, Petteruti, and Farkas
references teaches or suggests claim 11 's feature "b" of "providing location
27
Appeal2017-004121
Application 12/401,047
information to the supplier via the internet identifying the location of the
plurality of products within the retail establishment." See Appeal Br. 43--44.
To the contrary, as the Examiner finds (Final Action 21; Answer 24),
Falls teaches the identified limitation in its disclosure of "product
information system 30" that "can be ... networked to a Wide Area Network
(WAN) 43 such as the Internet," through "connections [that] allow remote
uploading and downloading of system files such as price files and space
planning over the internet from or to any Internet connection device" (Falls
col. 15, 1. 66 - col. 16, 1. 25).
Therefore, we are not persuaded of error in the rejection of claim 11,
on account the Appellant's argument in Section R of the Appeal Brief.
S. Claim 11
In Section S, the Appellant presents four additional arguments for
error in the rejection of independent claim 11. See Appeal Br. 44--48.
First, the Appellant (id. at 44--46) addresses the combination of Falls
and Bartholet to achieve the following limitations concerning the formation
of the claimed "merchandise information rolls":
i. printing via a printer including a mechanism that
automatically separates horizontal rows,
ii. separating each horizontal row from any adjacent
horizontal rows by the mechanism that automatically separates
the horizontal rows, and
iii. spooling each horizontal row into one or more
merchandise information rolls.
According to the Appellant, "[ t ]he Office Action provides no reasoning or
evidence as to why or how a skilled artisan would modify Falls with
Bartholet to provide a method including" these identified features. Id. at 45.
28
Appeal2017-004121
Application 12/401,047
Yet, the Appellant does not address the sufficiency of the Examiner's
specific reliance upon teachings of Bartholet, as a reason for combining the
references:
It would have been obvious for a person of ordinary skill
in the art (PHO SIT A) at the time of invention to modify the
system disclosed in Falls to incorporate separating the rows and
spooling them as taught by Bartholet because this would
provide a manner for generating order specific printed materials
in a high volume product environment (Bartholet col. 2, lines
5-7), thus aiding the client by providing an efficient way to
produce custom labels.
Final Action 24. A reason for combining references may be drawn from the
prior art references themselves. See In re Jones, 958 F.2d at 351. Here, the
rejection refers to Bartholet's disclosure for "generating order specific
printed materials in a high volume production environment" (Bartholet
col. 2, 11. 5-7), as a reason for making the combination. Because the
Appellant does not identify any flaw in the Examiner's position, the
Appellant's first argument of Section S, regarding the rejection of claim 11,
is not persuasive of error.
Second, the Appellant alleges error in the rejection's reliance upon
Petteruti' s teaching of the recited use of "an application device" to attach
merchandise information to shelving. Appeal Br. 45. According to the
Appellant, "[ t ]he Office Action provides no reasoning or evidence as to why
or how a skilled artisan would modify Falls with Bartholet to provide a
method including attaching the merchandise rolls by an application device."
Id. Yet, the Appellant does not address the sufficiency of the Examiner's
specific reliance upon the cited teachings of Petteruti, as a reason for
combining the references:
29
Appeal2017-004121
Application 12/401,047
It would have been obvious for a person of ordinary skill
in the art (PHO SIT A) at the time of invention to modify the
system disclosed in Falls and Bartholet to incorporate attaching
the rolls by an application device as taught by Petteruti because
this would provide a manner for applying a label to a surface
(Petteruti col. 6, line 62 thru [sic] col. 7, line 25), thus aiding
the client by providing an efficient way to apply the labels.
Final Action 24--25. As in the foregoing argument, the Appellant does not
identify any flaw in the Examiner's reliance upon cited prior art teachings,
as a reason for combining the references. Accordingly, the Appellant's
second argument of Section S, regarding the rejection of claim 11, is not
persuasive of error.
Third, the Appellant also "incorporate[ s ]" alleged "deficiencies of
Falls in view of Bartholet and Petteruti," in an earlier portion of the Appeal
Brief, with regard to claim 1. Appeal Br. 46. As discussed hereinabove, the
Appellant's arguments are not persuasive of error in the rejection of claim 1,
such that again relying upon those arguments does not show error in the
rejection of claim 11.
Fourth, the Appellant contends that "there is no apparent reason to
combine the elements, and no explicit analysis as to why or how one of
ordinary skill in the art would combine Falls with Bartholet, Petteruti, and
Farkas," as in the rejection, so as to achieve the following features of
claim 11:
d) identifying a location within the retail establishment
identified on the one or more merchandise information rolls,
wherein the merchandise information can be immediately
attached to shelving or displays of the retail establishment by an
application device without first organizing the merchandise
information according to product location within the retail
establishment.
30
Appeal2017-004121
Application 12/401,047
Appeal Br. 46. The Appellant acknowledges that the rejection relies upon
Farkas' teaching of product labels bearing an indication of the location,
within a retail establishment, where the associated product belongs. See id.
at 47 (citing Farkas ,r,r 52-58, Figs. 2A, 2B). See also Final Action 26;
Answer 25. Nevertheless, the Appellant argues:
The Office Action has provided evidence Farkas teaches an
individual label with location identification information but not
a merchandise information roll. The benefit of having the roll
display the information is that it can be immediately attached to
shelving or displays without first organizing the merchandise
information.
Appeal Br. 47. As the Examiner states in the Answer, the Appellant's
argument amounts to attacking the references individually, whereas the
rejection is based upon the combined teachings of those references. See
Answer 26 (citing In re Keller, 642 F.2d 413 (CCPA 1981), and In re Merck
& Co., 800 F.2d 1091 (Fed. Cir. 1986)). "Bartholet teaches the merchandise
information rolls. Farkas teaches the concept of identifying the location. It
is the combination of all the references which discloses the claimed
features." Id. Accordingly, the Appellant's fourth argument in Section S of
the Appeal Brief is not persuasive of error in the rejection of claim 11.
T. Claim 12
Dependent claim 12 recites: "A method according to claim 11,
wherein the merchandise information rolls are self-wound."
The feature of "self-wound" "merchandise information rolls" is
likewise at issue, in regard to claim 7 ( discussed above, in regard to
Section M of the Appeal Brief).
31
Appeal2017-004121
Application 12/401,047
With respect to claim 12, the Appellant (Appeal Br. 48-51) advances
arguments similar to those provided for claim 7 (in Section M of the Appeal
Brief). Further, the Examiner's Answer, concerning claim 12, relies upon
the position articulated for claim 7, in Section M of the Answer. See
Answer 27.
Accordingly, for the same reasons provided, above (in Section M,
herein), in regard to the "self-wound" limitation of claim 7, we are
persuaded of error in the rejection of claim 12.
U Claim 13
Dependent claim 13 recites: "A method according to claim 11,
wherein the product details include bar code information and RFID
information."
The feature of "product details includ[ing] bar code information and
RFID information" is likewise at issue, in regard to claim 9 ( discussed
above, in regard to Section Q of the Appeal Brief).
With respect to claim 13, the Appellant (Appeal Br. 51-52)
incorporates and relies upon the arguments provided for claim 9 (in
Section Q of the Appeal Brief). Further, the Examiner's Answer,
concerning claim 13, relies upon the position articulated for claim 9, in
Section Q of the Answer. See Answer 27.
Accordingly, for the same reasons provided above (in Section Q,
herein), we are not persuaded of error in the rejection of claim 13.
32
Appeal2017-004121
Application 12/401,047
V. Claim 14
Claim 14 recites, in relevant part, "wherein the product details include
images of retail products to be placed upon corresponding shelves."
In the rejection of claim 14, the rejection relies upon Marsh for
teaching the recited feature of "images of retail products." Final Action 29
(citing Marsh col. 13, 11. 53-62, Fig. 3).
Disputing the rejection of claim 14, the Appellant argues that the
rejection provides "no reasoning or evidence why or how a skilled artisan
would modify Falls in view of Bartholet, Petteruti, and Farkas, when Falls
teaches the need to reduce costs, with the additional cost of the track system
of Marsh." Appeal Br. 53. Further, the Appellant argues that the rejection
provides "no evidence or reasoning why a skilled artisan would refer to
Marsh to modify Bartholet when Marsh teaches the printing cartridge prints
each shelf label and shelf individually along a track and is not suitable for a
plurality of orders or high volume production." Id. at 53-54.
As an initial matter, the Appellant relies upon unsupported assertions
that Marsh's track-based printing system involves "additional cost" and "is
not suitable for a plurality of orders or high volume production." Id. at 53-
54. See In re Walters, 168 F.2d at 80 ("[S]tatements of counsel in a brief
cannot take the place of evidence.")
Furthermore, the potential impairment of the feature of a reference
(such as the asserted cost-reduction of Falls or high-volume production of
Bartholet) does not necessarily preclude combination with another reference
(such as Marsh, here). See Medichem, 437 F.3d at 1165; Winner Int'!
Royalty Corp., 202 F.3d at 1349 n.8.
33
Appeal2017-004121
Application 12/401,047
In view of the foregoing, the Appellant's arguments in Section V of
the Appeal Brief are not persuasive of error in the rejection of claim 14.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1--4, 9--11, and
13-20 under 35 U.S.C. § 103(a).
We REVERSE the Examiner's decision rejecting claims 5-8 and 12
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
34