Boehringer Ingelheim International GmbH et al.

Patent Trials and Appeals Board

Jun 22, 2020

2019006795 (P.T.A.B. Jun. 22, 2020)

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.
14/178,368 02/12/2014 Michal Rachel BOKOVZA 740126-164 2534
25570 7590 06/22/2020
Roberts Calderon Safran & Cole, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
docketing@rcsc-ip.com
lgallaugher@rcsc-ip.com
secretaries@rcsc-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MICHAL RACHEL BOKOVZA,
ROBERT MAEGERLEIN, and THORSTEN CSELLNER
___________________

Appeal 2019-006795
Application 14/178,368
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9. Final Act. 2–8. Claim 10–16 are
withdrawn from consideration. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37C.F.R. § 1.42. Appellant identifies Boehringer Ingelheim International
GmbH as the real party in interest. Appeal Br. 1. Assignment data on file
with the U.S. Patent and Trademark Office indicates that rights in the
application have been assigned to Boehringer Ingelheim International GmbH
and Eukerdruck GmbH & Co. KG.
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Application 14/178,368

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Claim 1, the sole independent claim on appeal, is reproduced below.
1. A method for producing a bundle of different
information leaflets, comprising the steps of:
producing the bundle from a sheet of a flat material
having at least two different sections which form the different
information leaflets,
folding the sheet in at least two folding processes,
forming at least one protruding fold between sections of
the sheet of flat material produced by said folding processes,
wherein the protruding fold has a folded edge that protrudes
beyond a folded edge of other folds formed with said sections
of the sheet of flat material between which said at least one
protruding fold is formed; and
separating the information leaflets and forming the
bundle of different information leaflets by separating the at
least one protruding fold.

REJECTIONS
I. Claims 1–3 and 5–9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shacklett and Zeisky, and alternatively, further in view of
Ishizuka.2 Final Act. 2–7.
II. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Shacklett, Zeisky, and Honegger, and alternatively futher in view of
Ishizuka.3 Final Act. 4–5, 7–8.

2 Shacklett (US 4,660,856; issued Apr. 28, 1987); Zeisky (US 5,192,093;
issued Mar. 9, 1993); Ishizuka (JPS5663563 U; published May 28, 1981). A
partial, machine English translation of Ishizuka is available in the
application file.
3 Honegger (US 6,029,968; issued Feb. 29, 2000).
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ANALYSIS
Claims 1–3 and 5–9 over Shacklet and Zeiskey, and alternatively
additionally in view of Ishizuka4
The dispositive issue in this case relates to the at least one protruding
fold of independent claim 1.
The Examiner finds that Shacklett and Zeisky each disclose a
protruding fold as claimed. Final Act. 2–3. Taken in context, it appears that
the Examiner intends to rely on Shacklett for a fold and to modify that fold
to be a protruding fold as taught by Zeisky. Final Act. 2–3. For the reaons
that follow, the Examiner has not adequately demonstrated that the claimed
subject matter, including the recited protruding fold, would have been
obvious.
Regarding Shacklett, the Examiner finds that reference numerals 49
and 53 form at least one protruding fold. Final Act. 2 (citing Figures 3 and
5). Neither panel 49 nor terminal portion 53 is a protruding fold; rather,
panel 49 is the terminal portion of leaf 15, and portion 53 is the section of
panel 49 that does not include adhesive 52. Shacklett, 3:44–51, Fig. 4.
Further, there is no fold between panel 49 and terminal portion 53.
Shacklett, Fig. 3. Therefore, the Examiner’s finding that panel 49 and
terminal portion 53 correspond to a protruding fold as claimed is incorrect.
Regarding Zeisky, the Examiner finds that foldable pull strip 225
corresponds to a protruding fold as claimed. Final Act. 2–3. Zeisky
discloses indicia card storage device 10 that includes elongate sheet 16
formed of a plurality of foldable panels 18. Zeisky, 2:4–11; Fig. 1. Foldable

4 Claims 2, 3, and 5–9 depend from independent claim 1.
5 The Examiner refers to element 22 as “protruded portion 22.” Final Act. 3.
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pull strip 22 is not a protruding fold; rather, it is the lower edge of bottom
panel 18 of elongated sheet 16. Zeisky, 2:8–11, Figs. 2, 5, 6. Therefore, the
Examiner’s finding that foldable pull strip 22 corresponds to a protruding
fold as claimed is incorrect.
Given that the Examiner has not demonstrated that either reference
discloses a protruding fold, we agree with Appellant that the Examiner has
not shown that the subject matter of independent claim 1 is obvious over
Shacklett and Zeisky. Appeal Br. 2–4; see also Reply Br. 2–3. We do not
sustain the rejection of claims 1–3 and 5–9 under 35 U.S.C. § 103(a) as
unpatentable over Shacklett and Zeisky.
In the alternative, the Examiner concludes that the subject matter of
claims 1–3 and 5–9 would have been obvious from the combined teachings
of Shacklett, Zeisky, and Ishizuka. Final Act. 5–7. This conclusion is based
in part on the finding that Ishizuka discloses the step of separating the
information leaflets. Final Act. 6 (citing Ishizuka, Figs. 2, 3) (“separating/
perforating lines 4 & 7”); see also Ans. 4–5 (finding that Ishizuka discloses
“cutting off outer protruded portion of folded stacked sheets”). The
Examiner concludes that it would have been obvious to modify Shacklett
and Zeiskey by “having the steps of separating the information leaflets, as
suggested by Ishizuka.” Id.
In light of this, we agree with Appellant that Ishizuka fails to remedy
the deficiencies in the teachings of Shacklett and Zeisky as applied to
independent claim 1. Appeal Br. 4; see also Reply Br. 4.

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Claim 4 over Shacklett, Zeisky, and Honegger, and alternatively additionally
in view os Ishizuka
The Examiner concludes that the subject matter of claim 4 would have
been obvious from the combined teachings of Shacklett, Zeisky, and
Honegger, alone or further in view of Ishizuka. Final Act. 4–5, 7–8. The
Examiner cites Honegger as suggesting that a sheet might be folded in
directions that are transverse to one another. Final Act. 4, 7. This
suggestion fails to remedy the deficiencies in the combined teachings of
Shacklett and Zeisky, alone or in combination with Ishizuka, as applied to
parent claim 1. We do not sustain the rejection of claim 4 under 35 U.S.C.
§ 103(a) as unpatentable over Shacklett, Zeisky, and Honegger, alone or in
combination with Ishizuka.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed
1–3, 5–9 103(a) Shacklett, Zeisky 1–3, 5–9
1–3, 5–9 103(a)
Shacklett,
Zeisky,
Ishizuka
1–3, 5–9
4 103(a)
Shacklett,
Zeisky,
Honegger
4
4 103(a)
Shacklett,
Zeisky,
Ishizuka,
Honegger
4
Overall
Outcome 1–9

Appeal 2019-006795
Application 14/178,368

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REVERSED