Ex Parte Cadieux et al

Board of Patent Appeals and Interferences

Sep 26, 2011

11642150 (B.P.A.I. Sep. 26, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/642,150 12/20/2006 Edmond J. Cadieux JR. 04981-00609-US 1488
7590 09/27/2011
Connolly Bove Lodge & Hutz LLP
1007 North Orange Street
P.O. Box 2207
Wilmington, DE 19899
EXAMINER
MUSSER, BARBARA J
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
09/27/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EDMOND J. CADIEUX JR., STEVE CAMPBELL,
JAMES D. EVANS, STEVEN R. RINEHART, G. ROBERT SCOTT,
BARRY S. SMITH, STEVEN F. SPIERS, LINWOOD H. CARNEAL JR.,
HUBERT COLEMAN GOODMAN JR., and JOSHUA L. ROBY
____________________

Appeal 2011-000158
Application 11/642,150
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 8-10 under 35 U.S.C. § 103(a) as unpatentable over
Vijuk (US 4,812,195; issued Mar. 14, 1989) in view of Bahr (US 4,425,181;
issued Jan. 10, 1984) and Dreher (US 4,351,679; issued Sep. 28, 1982). We
have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2011-000158
Application 11/642,150

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We AFFIRM.
Appellants’ invention relates to a machine for folding and applying
onserts in side-by-side orientation onto consumer goods, such as cigarette
packs, by traveling along dual paths (Spec. ¶ [0002]). Claim 8 is illustrative:
8. A method of folding onserts and applying the
folded onserts onto goods comprising the steps continuously:
feeding onserts from a continuous roll of onserts;
cutting onserts from the continuous roll;
folding the onserts along at least one fold line;
conveying the onserts along dual paths; and
applying the folded onserts to goods traveling along dual
paths.
Appellants present arguments with respect to claims 8-10 as a group
(Br. 4-8), for which we select independent claim 8 as a representative claim.

II. DISPOSITIVE ISSUE
The dispositive issue on appeal arising from the contentions of
Appellants and the Examiner is: does the evidence support the Appellants’
view that the Examiner erred in concluding that combining the process of
folding and cutting onserts taught by Vijuk and the process of applying
onserts to goods taught by Bahr would have been obvious to one of ordinary
skill in the art additionally having the teachings of Dreher? We answer this
question in the negative.
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Application 11/642,150

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III. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
Appellants contend that Dreher fails to provide the missing link
between the teachings of Vijuk and Bahr (Br. 6). Appellants argue that,
even if Dreher provides a suggestion to unify the Vijuk and Bahr teachings,
Dreher does not disclose a method or apparatus by which to do so and thus
would not have enabled one of ordinary skill in the art to make and use the
claimed invention without undue experimentation (Br. 6-8; Reply Br. 3).
The Examiner finds that Dreher teaches that it is preferable “for the
sake of simplicity and efficiency” that a single apparatus include both a
leaflet folder 20 for cutting and folding leaflets from a web stock and
conveying them to a leaflet applicator (Ans. 4; see Dreher, col. 4, ll. 4-10).
Moreover, the Examiner finds that Dreher specifically teaches a method and
mechanism to continuously transfer leaflets (onserts) from a cutting and
folding mechanism 20 to an application station 30 via conveyor belt 34
without any intermediate storage (Ans. 6; see Dreher, col. 3, ll. 66 to col. 4,
ll. 27 and Figures 1 and 3). Thus, the Examiner concludes that the conveyor
belt 56 taught by Vijuk would have been a suitable mechanism and method
to transfer the onserts prepared in Vijuk to the application device of Bahr
(Ans. 6).
We agree with the Examiner that Dreher provides motivation for one
of ordinary skill in the art to combine the cutting and folding steps of Vijuk
and the application steps of Bahr into one continuous process. “[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
Appeal 2011-000158
Application 11/642,150

4
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
We find it of no moment that the prior art does not provide one of
ordinary skill in the art a step-by-step description of how to couple conveyor
56 of Vijuk to the applicator device of Bahr rather than to a storage
magazine (see Br. 8). Appellant’s arguments do not account for the skill of
the ordinary artisan, who would have been capable of making the
modification using ordinary skill and creativity. “A person of ordinary skill
is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
421. After all, in an obviousness assessment, skill is presumed on the part of
the artisan, rather than the lack thereof. In re Sovish, 769 F.2d 738 (Fed. Cir.
1985). Moreover, Dreher teaches a substantially similar conveyor for the
same purpose (Dreher, col. 3, ll. 66 to col. 4, ll. 27 and Figures 1 and 3), and
Bahr teaches a method and apparatus for retrieving the labels and feeding
them to the applicator (Bahr, col. 4, ll. 28-44), which one of ordinary skill
would have recognized as compatible with the conveyor 56 of Vijuk as
much as a storage magazine.
We also find it of no moment that the references do not teach
conveying the labels in a controlled manner (i.e., via a lug belt, pinch belt,
raised projections, or a vacuum belt) as taught by Appellants’ Specification
(see Spec. ¶¶ [0023] and [0024]). Appellants’ claims do not require
conveying or feeding the folded onserts to the applicator in any particular
manner or using any particular type of apparatus. “[L]imitations are not to
be read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993).
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The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
IV. CONCLUSION
On the record before us, we sustain the rejection maintained by the
Examiner.
V. DECISION
We affirm the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE
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
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