Appeal No. 2005-2174
Application No. 10/060,614
In the main and reply briefs, the appellant contends that the law of issue
preclusion (whether viewed as res judicata, law of the case or collateral estoppel)
mandates a reversal of the rejection on appeal in light of a decision by this Board in an
earlier appeal (Appeal No. 1998-0234) involving Application No. 08/406,752, filed March
6, 1995, now U.S. Patent No. 6,438,882. A review of the decision in the earlier appeal
(copy appended to the main brief) shows that the § 103 rejections at issue involved
claimed subject matter and a prior art combination different from those in the present
appeal. Thus, the appellant’s position that the decision (a reversal) in the earlier appeal
is binding in this case under the doctrine of issue preclusion is without merit.
II. The examiner’s 35 U.S.C. § 103(a) rejection
The ultimate determination as to whether or not an invention is obvious is a legal
conclusion based on underlying factual inquiries including: (1) the scope and content of
the prior art: (2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) objective evidence of non-obviousness.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); In re
Huang, 100 F.3d 135, 138, 40 USPQ2d 1685, 1687-88 (Fed. Cir. 1996). These
fundamental principles form the basis for the following analysis of the appealed
rejection.
Boggess, the examiner’s primary reference, discloses “an apparatus for
displaying and/or dispensing sales materials in a manner which attracts customers’
attention to a featured item in the store as customers approach the area of a shelf on
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