Ex Parte 5789051 et al

Board of Patent Appeals and Interferences

May 24, 2010

90010137 (B.P.A.I. May. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FELLOWES, INC.1
____________

Appeal 2010-001690
Reexamination Control No. 90/010,137
United States Patent 5,789,051
Technology Center 3900
____________

Decided: May 24, 2010
____________

Before WILLIAM F. PATE, III, SCOTT R. BOALICK, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 Fellowes, Inc. is the real party in interest in this appeal.
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Patent Owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-19. (Appeal Brief (filed Mar. 30, 2009)
(“App. Br.”).)2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination (filed Apr. 8, 2008) by Shewchuk IP Services, LLC of United
States Patent 5,789,051, titled “Perforated Stock for Labeling CD-ROM
Jewel Case,” and issued to Peter Tracy on Aug. 4, 1998 [hereinafter ‘051
patent]. Appellant’s Brief indicates that (at the time of filing of the Brief)
there were no related appeals, interferences, or judicial proceedings known
to Appellant. (App. Br. 1.)
However, a litigation search conducted on behalf of the Examiner
indicates that the ‘051 patent was the subject of several infringement actions
(which have been dismissed without prejudice, by stipulation, or otherwise):
Fellowes, Inc. v. Uline, Inc., No. 1:06CV06414 (N.D. Ill. filed Nov. 22,
2006); Fellowes, Inc. v. Continental Datalabel, Inc., No. 1:06CV03049
(N.D. Ill. filed June 2, 2006); Fellowes, Inc. v. NCR Corp., No.
1:05CV02491 (N.D. Ill. filed Apr. 26, 2005); Fellowes, Inc. v. Xerox Corp.,
No. 1:05CV00877 (N.D. Ill. filed Feb. 11, 2005); Neato, LLC v. Memtek
Products, Inc., No. 2:98CV00349 (M.D. Fla. filed Sept. 1, 1998).
Appellant’s Briefs and an affidavit filed by Appellant refer also to ongoing

2 This opinion also employs the following abbreviations: Examiner’s
Answer (“Ans.”), Final Rejection (“Fin. Rej.”), and Appellant’s Reply Brief
(“Reply Br.”).
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enforcement actions related to the ‘051 patent by Fellowes, Inc. (who
purchased Neato, LLC, the previous patent assignee) as discussed more fully
below. An oral hearing involving this appeal was conducted at the USPTO
on April 7, 2010.
One disclosed embodiment in the ‘051 patent includes a CD case
insert for a CD jewel case, the insert having scored folding lines (3, 3’) and a
defined pattern of reduced strength (2, 2’). In another disclosed
embodiment, two such inserts are formed on a single sheet of paper having
perforations forming the defined pattern of reduced strength to allow
separation of the inserts from the paper. Another embodiment includes a CD
booklet insert with perforations on a sheet 10. (‘051 patent Abstract; Figs. 1,
2.)
Claim 1 on appeal reads as follows:
1. A sheet having a defined pattern of reduced strength,
allowing separation along said defined pattern, said pattern
defining an insert for a CD-ROM jewel case,
said pattern being rectangular having dimensions of
about 150 mm by 117.5 mm, and further comprising a pair of
scored folding lines to provide three regions two lateral regions,
each being about 6 mm wide by 117.5 mm long and bounded
interiorly by one of said folding lines and a central region being
about 138 mm by 117.5 mm and being bounded by both of said
folding lines.

The Examiner relied upon the following prior art references:3
Heegaard US 3,950,870 Apr. 20, 1976
Fantone US 5,544,741 Aug. 13, 1996

3 The Examiner relied upon Kraft and Heegaard as evidentiary references.
(Ans. 16.)
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Kraft US 5,580,640 Dec. 3, 1996
Ace Label Systems, Price List Catalogue (Ace Label Systems, Inc. Nov. 1,
1994) [hereinafter Ace].

Claims 1-19 stand rejected under 35 U.S.C. 103(a) as obvious based
on Ace and Fantone.
ISSUES
Appellant asserts that it would not have been obvious to modify Ace’s
sheets carrying separable and foldable cassette inserts by replacing the
cassette inserts with Fantone’s foldable CD inserts. Appellant also argues
that it would not have been obvious to score the fold lines and the lines of
separation on the modified Ace sheets. (App. Br. 4-13.) According to
Appellant and the Examiner, Ace discloses perforated lines of separation
between cassette inserts and perforated fold lines within each foldable
cassette insert, but not scored lines. (App. Br. 11-12; Ans. 3.) Thus, this
appeal involves the following alternative issues:
Has the Examiner erred in finding that it would have been obvious to
substitute, on a perforated Ace sheet, Fantone’s foldable CD inserts for
Ace’s foldable and separable cassette inserts, and also, score, rather than
perforate, the foldable lines on Fantone’s CD inserts?
Has the Examiner erred in finding that it would have been obvious to
substitute, on a perforated Ace sheet, Fantone’s foldable CD inserts for
Ace’s foldable and separable cassette inserts, and also, score, rather than
perforate, both the foldable lines on Fantone’s CD inserts and the lines of
separation on the modified Ace sheets?

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FINDINGS OF FACT
1. Ace discloses a variety of labels and caseliners for audio cassette
cases. One set of caseliners, the 47000 product, includes a single sheet
carrying four individual separable and foldable 4”x 6” sized audio cassette
case liner inserts (J- cards). The sheets run through laser printers. (Ace 1,
7.)
2. This single sheet of four Ace J-card case liner inserts is depicted
below:

The four J-card case liner inserts depicted above (product 47000)
show dotted lines to indicate boundaries between four identical J-cards and
fold lines within each J-card. (Ace 7.)
In other words, the dotted lines designate fold-lines and cut-out lines.
The cut-out lines allow the four J-card inserts to be separated from the paper
sheet and from one another. The fold-lines allow the J-card inserts to be
folded into a J shape to fit into a cassette case. (See Ace 7.)
3. Appellant and the Examiner interpreted the Ace dotted lines as
perforated lines. (Ans. 3; App. Br. 11.)
4. In the Brief, Appellant describes the Ace perforations as either
“microperforations” or a series of “slits” that pierce the entire thickness of
the paper along the line. (App. Br. 10-11.) On the other hand, Appellant
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describes the ‘051 patent scored fold lines as created “either by compressing
the paper fibers or by cutting through less than the entire thickness of the
sheet of paper.” (App. Br. 11.)
5. The ‘051 patent does not define a “scored line” or disclose how it
is made. The ‘051 patent does state that “the folding scores [3, 3’] are
preferably imposed during the same operation as the perforations.” (Col. 2,
ll. 33-34.) The ‘051 patent also states that “[a] preferred sheet has perforated
margins outlining a pair of jewel case face inserts for the front and rear
casing, and which may be printed on both sides.” (Col. 1, ll. 44-45.) The
‘051 patent also describes a folded CD booklet (see Fig. 2) “having a
defined pattern 11 of reduced strength, allowing separation along the defined
pattern 11.” The “defined pattern 11 is preferably a perforation pattern.”
(Col. 2, ll. 58-62.)
6. The Examiner found that “scored fold lines versus perforated fold
lines . . . are both known as suitable means to define a fold line.” (Ans. 5;
accord Ans. 15 (stating that the “Examiner also agrees with Appellant’s
position that score lines are known to defined a ‘fold line’”).)
7. Appellant did not challenge the Examiner’s finding in FF 6.
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8. Fantone’s Figure 3 is depicted below:

Figure 3 shows a CD insert 30 having folded wing portions 82 and 84.
9. Another Ace label product is depicted below:

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The Ace product depicted above shows two 5” x 5” labels arranged on
a single sheet of 8 1/2” x 11” paper. (Ace 6.)
10. The ‘051 patent states, in the “Background of the Invention”
section, that “[t]he proliferation of compact disks (discs), also known as
laser disks, in the form of music as well as CD-ROM products has become
extensive.” (Col. 1, ll. 11-12.) “With this recent use has grown a need to
label these disks and their storage containers once they have been
produced.” (‘051 patent, col. 1, ll. 18-19.) The ‘051 patent also states that
the disks “are being used for archival data storage” (id. at ll. 15-16.) and
indicates there is a need for CD insert labels involving “short runs of disks”
(id. at l. 28).
11. Fantone similarly describes the market surrounding disks: “Their
popularity and success stem from their compactness, convenience,
competitive cost, and high information storing capacity.” (Col. 1, ll. 18-20.)
Fantone describes typical prior art CD cases, or jewel boxes, as including
information in the form of thin sheets or booklets. (Col. 2, ll. 11-19.)
Fantone describes the prior art as not “terribly effective” (col. 2, ll. 19) in
providing information because marketers do not display the boxes’ hinged
edge. Fantone describes a continuing need to provide effective visual access
to information about the contents of a box to induce sales. (Col. 2, ll. 59-
65.) Fantone’s solution to the display problem described supra and another
described problem concerning manufacturing difficulties associated with the
automatic insert of prior art (folded or foldable) inserts is to provide a prism
to view information on a flat unfolded sheet in a CD box (i.e., without the
folds on the sheet). (Col. 10, ll. 15-35; Abstract; Fig. 15.)
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PRINCIPLES OF LAW
Appellant must present arguments on appeal explaining why the
Examiner’s rejection is deficient. Arguments not presented are deemed
waived. See 37 C.F.R. § 41.37(c)(1)(vii); note 5, infra.
“‘[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 Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(citation omitted). Obviousness is determined on the basis of the evidence
as a whole and the relative persuasiveness of the arguments. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
[A]n implicit motivation to combine exists not only when
a suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal - and even
common-sensical - we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In
such situations, the proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable
of combining the prior art references.

Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
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or otherwise found in the specification. In re Icon Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”).
ANALYSIS
Appellant’s arguments focus on claim 1 as representative of claims 1-
6 and 8-18. Accordingly, claim 1 is selected to represent this group. See 37
C.F.R. § 41.37(c)(1)(vii).
Scored Fold Lines – Rationale I
With respect to the first listed issue supra, the Examiner interpreted
claim 1 as reading on a version of Ace’s sheet of paper modified to have, in
substitution of Ace’s J-card inserts, Fantone’s CD insert as further modified
to have scored fold lines anywhere a fold line occurs, such as along
Fantone’s fold lines defining wing portions 82, 84. (See Ans. 4-5; FF 1, 2,
8.) Appellant does not challenge this interpretation of claim 1 as reading on
the Examiner’s proposed modification.
The Examiner and Appellant agree that Ace discloses perforated fold
lines and lines of separation for cassette liners. (Ans. 3; App. Br. 11; FF 1-
4.)4 The Examiner reasoned that because Ace discloses cassette inserts, and
Fantone discloses a similar CD case insert, it would have been obvious to
“adapt the size of the insert from a size set for standard cassettes as disclosed
in 1994 Ace Catalog to a size for CD-ROM Jewel boxes in order to provide

4 Ace does not describe specifically what the dotted lines represent. That is,
Ace does not mention the terms perforation or scoring. (See FF 2-4.)
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blank sheets of inserts for similar recordable media cases.” (Ans. 5.)
Notwithstanding Appellant’s arguments addressed in detail below, the
Examiner’s rationale soundly describes a predictable substitution involving
similar data or music storage container labels.
As to the scored folding lines recited in claim 1, the Examiner
reasoned as follows: “It further would have been obvious to one of ordinary
skill in the art at the time of the invention to have scored fold lines versus
perforated fold lines as they are both known as suitable means to define a
fold line.” (Id. (emphasis added).)
While Appellant describes the Examiner’s “conclusion that using
scored fold lines in place of the perforations of Ace would have been
obvious [a]s incorrect,” (App. Br. 10 (emphasis added)), Appellant does not
dispute the Examiner’s underlying factual finding emphasized supra that
scored (and perforated) lines were known substitutes for defining fold lines.5
(FF 6, 7.) Notwithstanding Appellant’s arguments (addressed more fully
below) against the conclusion of obviousness,6 the unchallenged fact that

5 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010), available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/index.jsp (precedential)
(“If an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”); accord
Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may
treat arguments appellant failed to make for a given ground of rejection as
waived).
6 Appellant also argues that the “record in the ‘741 [sic: ‘743 – referencing
Application No. 08/743,905 (filed Nov. 4, 1996)] patented file notes that the
Examiner indicated that of particular importance to the indication of
allowability were the two fold lines of the CD-ROM jewel case insert. (See
especially page 5 of the remarks of 10 November 1997).” (App. Br. 10.) Of
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perforations and scored lines were known substitutes for forming fold lines
points to the obviousness of this “mere substitution.” “[W]hen . . . the prior
art . . . is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result,”
KSR, 550 U.S. at 416.
Further, no dispute exists over the fact that Fantone discloses a CD
insert with two winged fold lines which define folded wing portions 82 and
84. (FF 8.) Fantone at least suggests scoring the fold lines because the fold

course, Appellant’s assertion directs the Board’s attention to the prior record
in the ‘051 patent (the ‘743 application). The ‘051 patent record reveals that
scored fold lines (and perforations as lines of separation) were known. In
the ‘051 patent file the Examiner rejected, inter alia, original independent
claim 1 and dependent claim 4, with claim 1 requiring a sheet having a
defined pattern of reduced strength for a CD-ROM jewel case and claim 4
requiring “a pair of scored lines.” Claims 1 and 4 were rejected as
anticipated by U.S. Patent No. 5,334,432 to Long (disclosing two scored
fold lines 32, 34 defining three equal sized regions 38, 30, 40 in a letter 38
having perforated lines of separation 12, 16 (Figs. 1, 3a)) and by U.S. Patent
No. 4,084,015 to Patterson (similarly disclosing scored fold lines defining
equal sized panels in a three-dimensional card having perforated lines of
separation). (See ‘743 application Office Action (mailed Aug. 11, 1997);
see also the ‘051 patent (listing Long and Patterson as prior art).)
The Examiner subsequently allowed claims directed to smaller (wing)
regions defined on two sides of a larger middle region by two scored fold
lines between the regions. (See, e.g., claim 13 of the ‘051 patent,
corresponding to original claim 21 in the ‘743 application.) In other words,
the ‘051 patent record indicates that the Examiner allowed the claims
because the prior art depicted equal sized regions (separated by scored fold
lines and having perforations), whereas the claims require unequal sized
regions (separated by scored fold lines). Applicant disagreed “with the
Examiner’s non-limiting reading of the phrase ‘for a CD-ROM jewel case’.”
(See ‘743 application Remarks (Nov. 10, 1997).)
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lines were formed somehow.7 Armed with the prior knowledge of scored
lines as known substitutes for perforated lines for defining fold lines, Ace’s
case liner sheets having perforated fold lines for inserts, and Fantone’s CD
case liner inserts having fold lines, skilled artisans would have understood
that scoring Fantone’s fold lines, rather than perforating them, would have
provided a predictable line for later folding of an insert ready to be separated
from Ace’s modified sheet for insertion into a known CD jewel case similar
to Fantone’s CD jewel case. (FF 1, 2, 8.)
Scored Lines as forming a Pattern of Reduced Strength – Rationale II.
Under an alternative rationale giving rise to the second issue listed
supra, the Examiner interpreted claim 1 as reading on a modified version of
Ace’s sheet of paper having a CD liner in which all the Ace modified
perforated lines have been scored (i.e., the fold lines and the defined pattern
of reduced strength in claim 1). (See Ans. 5, 15-16.) Claim 1 requires “a
pair of scored folding lines,” and “a defined pattern of reduced strength,
allowing separation along said defined pattern.”
Appellant argues that this recited pattern of reduced strength in claim
1 is not met by scored folding lines. (App. Br. 11.) Appellant relies on the
‘051 patent to impart a limited meaning to a pattern of reduced strength
which excludes scored folding lines.
Appellant’s argument is not persuasive. Claim 1 requires “a defined
pattern of reduced strength, allowing separation along said defined pattern
. . . said pattern . . . further comprising a pair of scored folding lines.” Claim

7 Appellant argues that scored fold lines can be created by compression or
cutting (FF 4). Fantone’s depicted fold lines (FF 8) at least suggest some
type of scoring (or perforations) in order to form crisp fold lines.
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1 indicates that the defined pattern of reduced strength includes, rather than
excludes, the scored folded lines. Moreover, claim 3, which Appellant
groups with claim 1, recites “said defined pattern is formed by perforation of
said sheet,” indicating that claim 1 does not require perforations.8
Contrary to Appellant’s arguments, the ‘051 patent disclosure also
does not define patterns of reduced strength as precluding scored fold lines
or as requiring lines of perforations. The ‘051 patent notes that scored lines
and perforated lines are made at the same time. (FF 5.) The ‘051 patent
indicates that the “defined pattern of reduced strength,” at least for the
booklet, “is preferably a perforation pattern.” (FF 5.) The ‘051 patent also
indicates that the insert “preferably has perforated margins.” (FF 5.)
These disclosed preferences for perforations do not limit the recited
term in claim 1: “a defined pattern of reduced strength, allowing separation
along said defined pattern.” A scored line also reduces strength.
Notwithstanding disclosed preferences for perforations, no clear disclaimer
of scored lines as reduced strength lines occurs. In re American Academy of
Science, 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against
reading limitations into a claim from the preferred embodiment described in
the specification, even if it is the only embodiment described, absent clear
disclaimer in the specification.”); accord In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the
PTO should only limit the claim based on the specification or prosecution
history when those sources expressly disclaim the broader definition.”)

8 Under the alternative analysis supra, Rationale I, claim 1 includes
perforations.
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Appellant describes a scored line as follows: “it would not tear
easily.” (Response to Final Office Action at 4 (filed Dec. 31, 2008).)
Appellant also defines a scored fold line as created by “compressing the
paper fibers or by cutting through less than the entire thickness of the sheet
of paper.” (FF 4.) A scored line which tears and is thinner than the
surrounding paper according to Appellant’s argument, necessarily
constitutes “a pattern of reduced strength” under the plain meaning of the
phrase.
Appellant also argues that it would not have been obvious to replace
the dotted lines signifying perforations of the Ace cassette inserts with
scored fold lines because such a modification would have “reduced the
versatility of the product and been a step backwards.” (App. Br. 12.)
According to Appellant, the Ace perforations can either be torn or folded,
while score lines can only be folded, but not easily torn. (App. Br. 11-12.)
(Appellant’s versatility argument supports the obviousness rationale
outlined in the previous section supra of replacing only the fold lines with
scored lines.) With respect to the rationale involved here, assuming for the
sake of argument that Appellant is correct that all the scored lines might not
tear easily, especially the closely spaced lines,9 skilled artisans would have
overcome any such difficulty by separating the weakened (scored) fold lines

9 Appellant refers to the close space on the 6 mm wide lateral wing portions
in claim 1 – impliedly having a line of reduced strength on one side and a
scored folding line on the other. Claim 13 does not recite any dimensions.
Therefore, on one hand, Appellant’s arguments are not commensurate in
scope with claim 13. On the other hand, the arguments relate to the question
of obviousness of substituting Fantone’s CD insert for the Ace cassette
inserts.
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carefully with a ruler or other straight edge.10 School children and others
have been tearing folded lines in such a manner for a long time.
Common sense indicates that skilled hobby, home, or business
artisans, making labels for archival purposes (for music, video, or data, etc.),
would have been aware of this well-known technique and would have been
motivated to use it to avoid tearing the desired folded wing portions
suggested by the combined teachings of Fantone and Ace. Moreover, skilled
manufacturer artisans making Ace-type inserts would have contemplated
deeper score lines along intended lines of separation as compared to
intended fold lines. (See note 10.) The Court noted that the Federal
Circuit’s “‘suggestion test is in actuality quite flexible and not only permits,
but requires, consideration of common knowledge and common sense.’”
KSR 550 U.S. at 421 (citation omitted).
With further respect to Appellant’s argument regarding the lack of
versatility, such scored fold lines would have provided stronger fold lines as

10 The Examiner cited Kraft and Heegaard (supra note 3) to support the
finding that the “prior art is replete with examples of using either scoring or
perforating to define a tear/separation line.” (Ans. 16.) Appellant did not
specifically rebut this finding with evidence or argument. Rather, as
indicated supra, Appellant generally argues that scored lines do not tear as
easily as perforated lines. As also indicated supra, Appellant also argues
that folded lines are created by either compressing a paper or cutting through
a portion of the paper. Appellant also argues that the strength of a
perforation is determined by the amount of paper between the perforations.
(App. Br. 11.) These observations do not appear in the ‘051 patent.
Appellant does not argue that inventor Tracy discovered these properties. In
any event, as matter of common sense, skilled artisans would have
recognized that less paper redounds to a weaker line; i.e., as perforations
increase and fold line cuts become deeper, a perforated or scored line
becomes weaker.
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compared to perforated lines (according to Appellant’s characterization of
the relative strength between the two types of weakened lines). The ‘051
patent also indicates a known market-based motivation for providing labels
to disk storage containers. (See FF 10.) Fantone similarly describes the
widespread use of CDs, CD storage containers, and the use of labels
therefore. (FF 11.) Therefore, under the rationale of Dystar, 464 F.3d at
1368, skilled artisans implicitly would have been motivated with a
“universal” or “common-sensical” profit motive to produce a finished
product with stronger fold lines. See also KSR, 550 U.S. at 421 (market
pressures may render it obvious to try a finite number of solutions).
Providing a scored Fantone CD insert on a scored Ace sheet would
have involved “the mere substitution of one element for another known in
the field,” id. at 416 (citation omitted), coupled with the “mere application of
a known technique to a piece of prior art ready for the improvement,” id. at
417.
Appellant’s Additional Arguments (Applicable to Rationales I and II)
Appellant asserts that Fantone teaches away from a folded CD insert.
Appellant’s arguments relate to Fantone’s teachings directed to mass
production of CD inserts, the display in stores of CD jewel boxes, and an
improvement over the prior art embodiment in Fantone (Figure 3) relied
upon by the Examiner. The improvement involves the use of a prism in lieu
of the folded wings on the prior art CD insert. Appellant’s teaching away
arguments, related to the difficulty of inserting mass produced folded inserts
and correcting that problem and store display problems with a viewing
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prism, are only viable in the context of mass production and marketing
displays. (See App. Br. 7-9; FF 11.)
Home consumers, or hobby artisans, seeking to archive existing or
new copies of CDs, would not have been led away from using wings on a
piece of paper and toward replacing them with Fantone’s more costly
prisms, even if the prisms do provide easy viewing depending upon how the
boxes are displayed. Home consumers need not display CDs for selling so
that storing jewel boxes with the cheaper winged insert informational
portions viewable would have been advantageous.
Appellant argues that Ace is directed to “individual users, or small
runs of tapes by businesses” (App. Br. 6), while Fantone’s “disclosure is not
directed to the home user” (App. Br. 8). However, Appellant’s latter
argument improperly narrows the scope of the prior art embodiment taught
in Fantone. Skilled artisans would have recognized that archival type CD
jewel boxes and winged inserts for storing home recordings would have
been included in the generic representation of CDs in Fantone’s Figure 3.
Toward this end, the Examiner proposed employing a standard-sized prior
art CD insert on an Ace sheet as a home consumer (hobby-type) insert for
CD cases:
While admittedly, these CD storage boxes could be used
manufactured [sic] in a production run of pre-produced and
packaged compact discs, they equally could be sold to the home
or office consumer for use in storing homemade compact disc
media. There is nothing in the Fantone reference that limits the
use of the disclosed prior art CD Rom jewel boxes for a
commercial production of pre-packaged CDs. Additionally, the
current patent claims are not limited to any commercial use or
production of the claimed product.
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(Ans. 13.)
Appellant does not address the Examiner’s home or office consumer
rationale, but rather, as indicated supra, focuses on assertions related to
commercial mass-production. In support of the Examiner’s rationale,
Appellant’s ‘051 patent states, in the “Background of the Invention” section,
that “a need [has grown] to label these disks and their storage containers
once they have been produced,” that the disks “are being used for archival
data storage,” and there is a need for labels involving “short runs of disks.”
(FF 10.)
Appellant’s related argument that no suggestion exits to disassemble
Fantone’s CD jewel box also lacks merit. (App. Br. 7-8). Appellant reasons
that Fantone does not describe any disassembly and “[t]he [sic] is simply no
reason supplied in Fantone of trying to put a CD insert into the back of the
case once the product of Fantone is supplied to the user.” (App. Br. 7.)
Again, this argument is directed to mass-produced CD cases and not to a
home user creating, labeling, and storing archival or other data/music copies
as Ace suggests. Further, Appellant acknowledges that Fantone’s insert is
held in place behind a snap-fitted CD holder 24. (App. Br. 7; see FF 8.)
Home consumers would have been motivated to un-snap such a holder to
provide new (or to replace old) labels for consumer recording media
containers as Ace suggests.
Claims 7 and 19
Claim 7, selected as representative of the two claims here, see 37
C.F.R. § 41.37(c)(1)(vii), is reproduced below, along with claim 6, from
which it depends:
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6. The sheet according to claim 1, comprising a pair of defined
patterns.
7. The sheet according to claim 6, wherein said pair of defined
patterns are identical and arranged symmetrically.
Appellant argues as follows: “The Examiner states that the 1994 Ace
Catalogue discloses that the inserts are identical and arranged symmetrically
in the product 4700[sic 47000] Figure. The patent holder points out that the
inserts of the reference are not arranged symmetrically about the horizontal
axis, but only about the vertical axis.” (App. Br. 13.)
As the Examiner reasoned, claim 9 does not require symmetry about
any particular axis, let alone the horizontal axis. (Ans. 18.) Appellant
argues that the specification provides the meaning of the term
“symmetrically.” (App. Br. 13.) The specification recites the following: “as
shown in Fig. 1, both the front and rear inserts 4, 5 may be provided on a
single sheet 1, laid out as identical defined regions [3, 3’] symmetrical about
both the horizontal and vertical axis.” (“051 patent, col. 2, ll. 41-42.)
Contrary to Appellant’s argument, claim limitations are not imported
from Appellant’s preferred or sole embodiment. The absence of a reference
to horizontal and vertical symmetry in claim 7 shows that the claim is
broader than the preferred embodiment. See SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment”).
Assuming for the sake of argument that claim 7 requires the pattern,
including the fold lines, to be symmetrical about a horizontal and vertical
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axis in the center of a sheet of paper, Fantone’s CD inserts 30 (FF 8) meet
the limitation if placed as suggested in the manner of the Ace cassette
inserts; i.e., spaced evenly above and below the middle of the sheet of paper
(see FF 2). While it appears that there would be no room for side-to-side
placed CD inserts on the Ace sheet depicted with side-to-side J-cards (FF 2),
Appellant’s argument that Ace suggests vertical symmetry apparently
implies that skilled artisans would have modified the Ace paper size to carry
four CD inserts. For example, the Ace 5x5 labels exhibit such symmetry
about the horizontal and vertical axis of the paper (FF 9) – suggesting
similar symmetry for the similarly sized Fantone CD inserts. Unlike the
cassette inserts, the inherent internal horizontal and vertical symmetry of
each individual Fantone CD insert (FF 8) virtually dictates both vertical and
horizontal symmetry if the CD insert is arranged as suggested by either the
47000 labels (FF 2) or the Ace 5”x 5” labels (FF 9).

Secondary Considerations
Appellant provided an affidavit by Steven L. Carson, Vice President,
General Counsel, and Secretary of Fellowes, Inc. (Affidavit of Steven L.
Carson (Oct. 1, 2008) (“Aff.”).) Mr. Carson avers that “a number of
competitors have produced products that are a copy of products described in
the claims of U.S. Patent 5,789,051.” (Aff. ¶ 7.) Appellant states that
“[a]fter introduction of the product, multiple copycat products arrived from a
number of competitors.” (App. Br. 10.) Mr. Carson also avers “royalties” as
a result of “Fellowes enforcement campaign.” (Aff. ¶ 12.)11

11 The affidavit omits a paragraph numbered as 11.
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While Appellant alleges a copy of products, it is not clear that actual
copying occurred or is even alleged. Appellant does not accuse the
competitors “of ‘slavishly copying’ the[ ] patented device” after they “had []
attempted for a substantial length of time to design a similar device, and had
failed.” Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir.
1984). Moreover, the affiant does not allege that a competitor actually
copied Appellant’s claimed product after gathering knowledge thereof from
the ‘051 patent (or some other source) and/or after a competitor tried for
years to design a similar CD insert. Nor does sufficient evidence show that
any copied product was the same as or substantially similar to what was
claimed so as to infer copying – assuming arguendo our reviewing courts
would find such evidence to constitute evidence of copying. As such, the
affidavit plausibly describes competitors who independently produced “a
copy” (of something) from knowledge of what was in the public domain.12
The affiant, Mr. Carson, also avers the following:
9. Fellowes has enforced U.S. Patent 5,789,051
against the competitors listed herein.
10. In civil suits, to enforce its patent rights under U.S.
Patent No. 5,789,051, Avery, Dennison, Memorex, Xerox,
NCR, and Continental Data Label, did not assert that their

12 See Specialty Composites v. Cabot Corp. 845 F.2d 981, 991 (Fed. Cir.
1988) (the infringer “closely copied the invention in the … patent.
‘[C]opying the claimed invention, rather than one in the public domain, is
indicative of unobviousness.’”); accord Iron Grip Barbell Co., Inc. v. USA
Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (discussing copying
requirements, finding that similar products produced by competitor after
patent issuance and infringement discussions was insufficient evidence of
copying).
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products were on the market prior to the introduction of the CD
Insert products by Neato.
12[sic: 11]. As a result of Fellowes enforcement
campaign, Fellowes has obtained over 1.1 million dollars in
royalties from its competitors named herein.
13[sic: 12]. Chief among the competitors, Avery
Denison, a world leader in the label and printable stock
industry, has paid $971,411 in royalties to Fellowes as part of
an ongoing license to produce products covered by U.S. Patent
5,789,051.
(Aff. 2, 3.)

While the affiant avers that six of the competitors “did not assert that
their products were on the market prior to the introduction of CD Insert
products by Neato” (id. at ¶10 (emphasis added)), this assertion does not
mean that those six competitors admitted copying or even failed to assert
that their products (or disclosures) were not prior art, or obvious variants, in
relation to the ‘051 patent claims. The affidavit also leaves open what the
other (named and unnamed) competitors asserted. As such, Appellant’s
reliance (Reply Br. 2) on Panduit Corp. v. Dennison Mfg. Co. 774 F.2d
1082, 1099 (Fed. Cir. 1985), remanded 475 U.S. 809 (1986), on remand 810
F.2d 1561 (Fed. Circ. 1987), cert. denied 481 U.S. 1052 (1987) is of no
avail. In Panduit Corp., the defendant Dennison admitted it copied the
invention at issue, “saying what it copied . . . had been obvious . . . all
along.” Panduit Corp., 810 F.2d at 1571, 1572 (“Caveney’s particular
claimed cable ties constitute important contributions achieved not easily but
only after years of effort and investment of a million research dollars,-and
never achieved in years of research by Dennison, whose tie designs did not
remotely resemble the claimed ties until it copied them.”).
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The affidavit neither describes the products that “are a copy” of the
claims, nor specifies any particular claim as tied to a product. Insufficient
factual supporting evidence exists as to the specifics of any products
produced by the competitors. As such, there is insufficient showing that any
alleged copying pertains to products which are commensurate in scope with
any particular claim argued. See In re Tiffin, 448 F.2d 791, 792 (CCPA
1971) (“[O]bjective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support.”).
Recognizing a required nexus between “the success of the product and
the patented invention,” Appellant (for the first time in the Reply Brief)
states that “the patented product can be described in very broad terms is a
piece of paper with a pattern of weakness and some folding lines.” (Reply
Br. 3.) However, this description of the claimed products also reads on the
Ace products (i.e., no scored lines recited in Appellant’s description),
Long’s products, and Patterson’s products (see supra note 6). It also
describes any number of booklets and/or CD inserts which may happen to be
on a single sheet or reel of paper with a certain paper stock weight, and
perhaps, were pre-printed or marketed in a certain fashion. It follows that
this broad description is not commensurate in scope with claims 1, 7, and 19
which were specifically argued by Appellant on appeal.
The ‘051 patent claims reasonably cover a single reel having
numerous CD inserts on a heavy stock of glossy (e.g. 80-100 pound – ‘051
patent, col. 1, ll. 63-66) paper, and further, including with such CD inserts,
another sheet or reel having a CD booklet with a lighter paper stock (see id.
Fig. 2; claim 13). Without specifying the copied product, Appellant’s
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received royalties may be tied to a high number of CD inserts on a single
sheet of paper, the type of paper employed, and/or the booklet or other
marketing logo on the paper. Such a product is not commensurate in scope
with representative claims 1 and 7 which respectively require a sheet of
unspecified stock having a single and double CD insert. It is also plausible
that the royalties arose from products having vertically symmetrical inserts –
products upon which claims 7 and 19 read but which are not commensurate
in scope with claims 7 and 19 according to the discussion supra.
The affiant also avers the following: “Since introduction of the
products meeting the claims of U.S. Patent No. 5,789,051, Fellowes and
Neato have sold over 100 million units.” (Aff. ¶ 5.) Similar to the finding
discussed supra, this allegation does not describe the products meeting the
claims or describe the units sold. The allegation also does not state
unequivocally that the units sold and the products meeting the claims of the
‘051 patent are the same. Even if the units and products (whatever the
products are) are similar, the proffered evidence is not persuasive because
the evidence does not describe the Neato market share before introduction of
the ‘051 patented products in relation to the portion of the market share after
that introduction. Evidence of record suggests a substantial pre-existing
market for CD products. (See FF 10, 11.)
In other words, the affidavit falls short of the required commercial
success evidence and any nexus of that success to the claimed product
necessary to show unobviousness. “[S]uccess is relevant in the obviousness
context only if there is proof that the sales were a direct result of the unique
characteristics of the claimed invention – as opposed to other economic and
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commercial factors unrelated to the quality of the patented subject matter.”
In re Huang 100 F.3d 135, 140 (Fed. Cir. 1996) (“Although Huang’s
affidavit certainly indicates that many units have been sold, it provides no
indication of whether this represents a substantial quantity in this market.
This court has noted in the past that evidence related solely to the number of
units sold provides a very weak showing of commercial success, if any.”)
Appellant also argues that according to the affiant, Mr. Carson, “at
least eight (8) companies entered into licensing arrangements with Fellowes,
and the revenues from such licenses are substantial.” (App. Br. 10.) In the
Reply Brief, Appellant argues that “[t]he Patent owner has presented
evidence of copying by at least eight entities.” (Reply Br. 2.)
According to Appellant’s statements and the affidavit, eight
companies copied the product, were sued, and also entered into licenses.
However, the affidavit only mentions one license agreement (with Avery
Denison). (Aff. ¶ 13.) Assuming for the sake of argument that the royalties
referenced above in the affidavit arose from licenses, Appellant states that
“[o]ne of the competitors has an almost million dollar incentive” to defend
itself (App. Br. 10), apparently in reference to Avery Denison (see Aff. ¶
13.) Based on the affidavit, this implies that one or more of the other seven
competitors split around 100,000 dollars as “royalty” payments to Fellowes.
In response to the affidavit, the Examiner stated, inter alia, that
“Appellant has not shown that the success of their licensing program may
have succeeded for reasons related to the nonobviousness of the claimed
jewel boxes [sic: inserts].” (Ans. 14 (citing EWP Corp. v. Reliance Univ.,
Inc., 755 F.2d 898 (Fed. Cir. 1985)).) EWP Corp., 755 F.2d at 907-08
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cautions against using licensing programs as “infallible guides to
patentability” because “astute business men” can “capitalize on” a claimed
invention by “erecting a temporarily successful licensing program thereon.”
“They sometimes succeed because they are mutually beneficial to the
licensed group or because of business judgments that it is cheaper to take
licenses than to defend infringement suits, or for other reasons unrelated to
the unobviousness of the licensed subject matter.” Id. at 908.
Following the logic of EWP Corp., Appellant’s listed competitors also
may have paid royalties in order to avoid the cost of litigation. According to
Appellant and the affidavit, Avery Dennison paid around 88% of the
“royalties.” Appellant does not describe any other particulars related to any
of the royalties or licenses. Hence, even if Avery Dennison produced
products reasonably commensurate in scope with (some of) the claims, aside
from avoiding litigation costs, it is also plausible that Avery Dennison, at the
time of the license, expected to gain a “mutually beneficial,” id., competitive
advantage over the other competitors based on continued enforcement of the
‘051 patent against the others (under, for example, uniquely favorable
license terms, an exclusive license, etc.). Other licensing benefits may have
redounded to Avery Dennison such as access to paper suppliers, customer
lists, market territory, or any number of business factors unrelated to
unobviousness.
In any event, Appellant provides no specific evidence or explanation
about how any licenses or payments relate to any specific claimed product in
order to show that the products are commensurate in scope with the specific
claims argued here. Appellant must affirmatively show “a nexus between
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the merits of the invention and the licenses of record.” In re GPAC Inc., 57
F.3d 1573, 1581, (Fed. Cir. 1995) (citation omitted) (“[I]n affidavit’s
reciting the licensing history of the ‘111 patent, GPAC did not establish
which claims of the patent the licensing program incorporates.” (Emphasis
added)).
The licensing assertions here track similar circumstances in Iron Grip
Barbell Co., Inc., 392 F.3d at 1324, in which the court held claims obvious
notwithstanding license evidence. Id. (citing, inter alia, EWP Corp. and
GPAC, Inc., and reasoning that absent a sufficient explanation of the terms
and circumstances involved in licenses, evidence that six retail competitors
offered the claimed three-grip plate products, and that three of those
competitors entered into license agreements with two such agreements
conceded to have been entered into pursuant to settlement of litigation, was
of little significance).13 “Whatever little significance the licenses may have
is clearly outweighed by the strong evidence of obviousness found in the
prior art.” Id. at n.4.

13 In Iron Grip, in addition to the similar lack of evidentiary specifics
regarding licenses, only claim 1 was argued on appeal (to have been
improperly held to be obvious). Apparently, in Iron Grip, as here, the
licensing evidence was offered as evidence of unobviousness of claim 1
(reciting three-grip plates). (Dependent claims 2, 3, and 6-8 were not argued
separately from claim 1). See id. at n.5. Iron Grip, citing GPAC, as
explained supra, indicates that a specific claim argued on appeal as
unobvious must be tied to specific license terms in order for the Board to
attribute significant weight to such evidence as evidence of unobviousness
as to that claim. Of course, well-known precedent (e.g., Tiffin supra)
generally requires a similar nexus between specific claims and evidence of
commercial success.
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In sum, Appellant neither provides a sufficient nexus between a
licensing agreement or other commercial factors and the products sold, nor
shows that the products sold are commensurate in scope with any particular
argued claim. On balance, Appellant’s arguments and evidence do not
outweigh the Examiner’s demonstration of obviousness based on a mere
substitution of one standard type of audio and/or digital media case label
insert for another similar standard type and one known type of fold line or
line of weakness for another, all well-known in the industry, as described
supra.
The Examiner did not err in concluding that claims 1, 7, and 19,
would have been obvious. Claims 2-6 and 8-18 fall with claim 1 as not
having been separately argued.
CONCLUSION
Based on the record, the Examiner did not err in concluding the
following:
It would have been obvious to substitute, on an Ace sheet, Fantone’s
foldable CD inserts for Ace’s foldable and separable cassette inserts, and
also, score, instead of perforate, the foldable lines on Fantone’s CD inserts.
It have been obvious to substitute, on an Ace sheet, Fantone’s foldable
CD inserts for Ace’s foldable and separable cassette inserts, and also, score,
instead of perforate, both the foldable lines on Fantone’s CD inserts and the
lines of separation on the modified Ace sheets.
DECISION
The Examiner’s decision to reject appealed claims 1-19 is affirmed.
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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

KMF

WOOD, PHILLIPS, KATZ, CLARK, & MORTIMER
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Chicago, IL 60661

Third Party Requester:
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