Ex Parte Chan

Board of Patent Appeals and Interferences

Jul 6, 2009

11325219 (B.P.A.I. Jul. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHI W. CHAN
____________

Appeal 2009-2853
Application 11/325,219
Technology Center 1700
____________

Decided:1 July 6, 2009
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 5-12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART, and set forth a new ground of rejection.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. BACKGROUND
The invention relates to a bookmark clip. Representative claims 5-7
and 112 read as follows:
5. I claim a line marking bookmark device functions as a paperclip
without damage to paper, formed from a single piece of material.
6. A line marking bookmark device for accurately identifying and
underlining the exact line and page in a book or paper document, with a clip
(24) at one end of a line marking bookmark device, as a means for safely
and securely attach to one or more pages of a book or paper document,
formed from a single piece of material.
7. A line-mark bookmark according to claim 6, a thin flat (18)
elongated rectangular body having two long straight edges (20), means for
accurately identifying and underlining the exact line and page.
11. I claim A line marking bookmark device for accurately identifying
and underlining the exact line and page in a book or paper document,
comprising an easy gliding mechanism to slide the bookmark device into the
page(s) of a book or paper document and making it unnecessary for the use
of a second hand to hold the page(s) when inserting a line mark bookmark
device, the gliding mechanism is formed by using the space (30) between of
the curve (28) at the end of the clip (24) and back of the bookmark (19).

The Examiner has rejected all of the claims on appeal, that is, claims
5-12, under 35 U.S.C. § 102(b) as being anticipated by Senderling (US
756,535, patented April 5, 1904).

2 The Examiner has noted informalities with much of the language used in
the claims, including lack of antecedent basis for the terms “the space, “the
curve’, “the clip” in claim 11 (Final Rejection, p. 2, 3). Other terms, e.g.,
“the end” in claim 11, also lack antecedent basis. There is more than one
end to the clip.
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ISSUE ON APPEAL
The issue is whether the Appellant has shown that the Examiner
reversibly erred in rejecting claims 5-12 as anticipated by Senderling. For
claims 5, 6, and 10-12, this issue largely turns on whether the Examiner has
established a reasonable belief that the bookmark of Senderling is capable of
marking a line on a page without damage to paper. For claims 7-9, the issue
turns on whether Senderling describes a rectangular body with two long
straight edges.
For the reasons which follow, we determine that while the Examiner
has established a reasonable belief that claims 5, 6, and 10-12 are anticipated
by Senderling, the Examiner has not established that claims 7-9 are
anticipated by Senderling.

FINDINGS OF FACT
The following facts are supported by a preponderance of the evidence.
1. Appellant describes as his invention a bookmark with many
functional advantages (e.g., ability to accurately mark the last line read, use
with just one hand, reposition without damage to the paper) (paragraph
bridging pp. 5-6). The bookmark is made of a single piece of material with
the clip formed by folding back a partially cut out portion of material which
forms the clip (Fig. 7).
2. Appellant’s Fig. 6 depicting the final formed bookmark of his
invention including clip 22/24 is reproduced below:
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Fig. 6 shows a hole 12 that Appellant describes as the “handle”, with
an “additional holding area” 14, and a circular disc 16 that Appellant
describes as the “tab” (Spec. 7; Drawing Reference Numerals section). As
can be seen in Fig. 6, the clip 22/24 forms a protrusion at the back of the
bookmark (see also, Figs. 1-5).
3. Senderling describes a clasp (i.e., a clip) formed from a single strip
of metal (p. 1, ll. 8-10). The clasp may have a front extension 4 which may
be used “as a bookmark which cannot be unintentionally displaced from its
position within a book” (p. 1, ll. 13-21).
4. Figs. 1 to 3 of Senderling are reproduced below:

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Fig. 3 of Senderling shows a blank made of a single strip of metal
before the clasp is formed (p. 1, ll. 26-28). Fig. 1 shows the formed
bookmark with spring jaws 1 and 2, the tendency of the curved back 3 (i.e.,
one end of the clasp) being to hold the clasp closed; Fig. 2 is a plan view of
Fig. 1 (p. 1, ll. 24-26). Ears 5 and 6 form rear extensions and accordingly
each forms a circular “tab”; the clasp is opened when the ears are pressed
towards each other (p. 2, ll. 50-57). Holes 7 and 8 are provided in the ears 5
and 6 for attachment to some suitable support (p. 2, ll. 57-59) and
accordingly each hole and the additional surrounding holding area forms a
“handle” which may function as a folder tab.
5. Senderling states the blade “may be of any desired shape and
length” (p. 1, ll. 48-49), however, Senderling does not explicitly describe
that the bookmark is made of a rectangular body having two long straight
edges.
6. Fig. 1 of Swan3 (US 718,291, published Jan. 13, 1904) is
reproduced below:

3 Swan was applied by the Examiner in the Office Action mailed Dec. 19,
2006; however, the Examiner did not rely upon Swan in the rejection on
appeal.
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Swan describes a bookmark clip with a rectangular body having two
long straight edges to “instantly designate the line or paragraph upon the
page, as well as the page itself” (p. 1, ll. 18-22).

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
However, the law of anticipation does not require that the reference
“teach” what the subject patent teaches. Assuming that a reference is
properly “prior art,” it is only necessary that the claims under attack, as
construed, “read on” something disclosed in the reference, i.e., all limitations
of the claim are found in the reference, or “fully met” by it. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
It is well established that while the features of an apparatus claim
may be recited functionally, the apparatus must be distinguished from the
prior art in terms of structure, rather than function. See In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997).
Claim Interpretation
It is axiomatic that during examination proceedings, claims are given
their broadest reasonable interpretation consistent with the specification. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Furthermore, our reviewing court has “cautioned against reading limitations
into a claim from the preferred embodiment described in the specification,
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even if it is the only embodiment described, absent clear disclaimer in the
specification.” (Id. at 1369; citation omitted))); see also Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)( en banc) (“[W]e have
expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment.” (citation omitted)).
ANALYSIS
The Examiner correctly finds that the entire structure set out in claims
5, 6, and 10-12 is found in Senderling (e.g., Ans. 3-5; FF 3, 4).
Appellant, however, contends that the bookmark of Senderling would
not have been capable of “line marking” (claims 5, 6, 10-12), would not
have been capable of functioning “without damage to paper” (claim 5), or
without “leaving any creases, tears, indentations, or other damages when
used” on “paper” (claim 10), and also would not have been capable of being
used without the “use of a second hand” (claim 11). We disagree.
The Examiner’s position is that the bookmark of Senderling is capable
of being used as claimed (Ans. 5-7). Appellant’s contend that the
Examiner’s “explanations are illogical and unproven” (Br. 10), and point out
that Senderling also teaches his device for “paper cutting”4 (id.). However,
there is no dispute that Senderling also describes his device for use as a
bookmark (Br. 10; Appellant admits Senderling “mentions a bookmark as a
possibility”). We take Appellant’s argument to be that the tapered portion 4
of Senderling’s illustrated device would not allow one to mark a line (id.),

4 Senderling is silent as to the exact nature of his “paper-cutting blade” (p. 1,
l. 18), but as depicted in the figures, the “paper-cutting blade” appears
similar to a letter/envelope opening blade.
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especially “accurately” underlining the exact line (see, claims 6, 11). The
bookmark of Senderling is clearly capable of “line marking” as broadly
recited in claim 5, even with slightly tapered edges. Furthermore, in use, if
one merely slightly shifted the angle the bookmark of Senderling (e.g., as
depicted in Fig. 2, 35) was clipped onto the page, it clearly would have been
capable of accurately underling the exact line as required in claims 6 and 11.
Appellant also contends the “tear drop shaped profile” would “leave
damages to the pages of the book”. (E.g., Br. 12). We disagree.
Senderling’s bookmark also does not appear that it would damage paper
when used as a bookmark. Indeed, damaging the paper would be contrary to
Senderling’s explicit purpose of using the device as a bookmark.
Structurally, Appellant’s clip forms a protrusion on the back side of the
bookmark similar to the protrusion formed by the clasp of Senderling.
With respect to claim 11, “an easy gliding mechanism” is recited,
such that it is “unnecessary” to “use a second hand”, and that “the gliding
mechanism is formed by using the space [(30)] between of the curve [(28)]
at the end of the clip [(24)] and back of the bookmark [(19)]” is recited. As
stated by the Examiner, Senderling does depict a space between a curve at
one end of the clip/clasp (i.e., curve 3) which forms a space with the back of
the bookmark 4 (e.g., Ans. 9). One of ordinary skill in the art would have
appreciated that the paper page(s) of a book glide into the space when the
clasp is open. Appellant’s claim does not in any way specify at which end
of the clip the curve is located.6 The claim is therefore not limited to the

5 Senderling also teaches the “blade [4] may be any desired shape” (FF 5).
6 Note that MPEP 608.01(m), on page 600-85 (8th Ed., Rev. 7, July 2008),
provides that although reference characters corresponding to elements
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location identified by Appellant as corresponding to the curve by the current
claim language, and we decline to read the location of the curve as identified
by Appellant in the Specification into the claim. We also agree with the
Examiner that the bookmark of Senderling appears to have the capability of
being slid (i.e., glided) onto the pages of a book without the use of a second
hand as claimed (see, e.g., Ans. 8, 9).
Given the structural identity and similarity of Senderling’s bookmark
to Appellant’s bookmark as claimed and disclosed respectively (see FF 1-4),
we determine that the Examiner was justified in concluding that bookmark
of Senderling appears reasonably to have the capability of functioning as
claimed. See, e.g., In re Schreiber, 128 F.3d at 1478. Thus, the burden
shifts to Appellant to prove that the claimed apparatus is not the same as the
prior art (e.g., establish with evidence that Senderling’s bookmark will not
inherently function as claimed). See In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (the burden shifts to applicant to prove lack of a (i.e., a different)
recited functional limitation if evidence shows products (including
apparatus) or processes are the same or similar); see also In re Swinehart,
439 F.2d 210, 213 (CCPA 1971), and In re Schreiber, 128 F.3d at 1478.
Appellant has provided no evidence, nor any persuasive line of
technical reasoning explaining why the bookmark of Senderling does not
have these capabilities.
For these reasons, as well as those expressed in the Answer, we
determine that the Examiner has established that the apparatus of the prior

recited in the detailed description and the drawings may be used in the
claims, “[t]he use of reference characters is to be considered as having no
effect on the scope of the claims.”(emphasis added)

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art Senderling reasonably appears to meet the structural requirements of the
claims.
As discussed above, the Appellant has not submitted any evidence to
rebut the Examiner’s position.
Thus, we affirm the rejection of claims 5, 6, and 10-12 as anticipated
by Senderling.
Dependent claims 7-9
Claims 8 and 9 depend from dependent claim 7 which requires a
“rectangular bookmark body with two long straight edges”. We agree with
Appellant that the Examiner has not established that claim 7 is anticipated
by Senderling (Br. 12).
The Examiner recognizes that the device of Senderling is illustrated
with tapered edges, but nonetheless the Examiner’s position is that “[t]he
device of Senderling is rectangular in so far as it contains two long straight
edges” and that “Appellant’s device [is also not] perfectly rectangular” (Ans.
7). However, it is not reasonable to interpret the language a “rectangular
body with two long straight edges” as anything other than a body having two
long straight parallel edges (claim 7). To do otherwise is to render the term
“rectangular body” meaningless. Senderling does not describe a rectangular
body with two long straight edges.
We are constrained by these circumstances to reverse the Examiner’s
§ 102 rejection based on Senderling of claims 7-9.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Principles of Law Regarding Obviousness
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
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KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
Where the rejection is based on a combination of references, the test
for obviousness is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).

New Ground of Rejection
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection:
Claims 5-12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Senderling in view of Swan (US 718,291, published Jan. 13, 1904).
As discussed in our decision above, Senderling describes a bookmark
clip/clasp having all the structural features recited in claims 5, 6, and 10-12.
Senderling also describes the structural features recited in claims 7-9 except
he does not explicitly teach an “elongated rectangular body with two long
straight edges” (that is, an elongated body with two long straight parallel
edges). However, Senderling does state that the blade body may be “any
desired shape” (p. 1, ll. 49; emphasis added).
Swan describes a bookmark clip with a body having two long straight
parallel edges which may be used to “instantly designate the line or
paragraph upon the page, as well as the page itself” (p. 1, ll. 18-22; see also
Fig. 1, reproduced in FF 5 above; compare Swan’s “rectangular” body to the
“rectangular” body of Appellant’s Fig. 6).
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Accordingly, it would have been prima facie obvious to one of
ordinary skill in the art to use a “rectangular body with two long straight
edges” (claim 7) as the desired shape of the bookmark blade in Senderling,
in order to “instantly designate the line or paragraph upon the page, as well
as the page itself” as taught by Swan. This would have been no more than
the use of a known prior art feature (i.e., the body shape of Swan’s
bookmark) for its known function.
We have included claims 5, 6 and 10-12 in this rejection, because
even if Appellant provided evidence that the tapered blade of Senderling’s
bookmark as depicted in the figures was somehow not capable of “line
marking” and/or “accurately identifying and underlining the exact line”
(claims 5, 6, 10-12), once the above obvious modification is made
regarding the shape of the blade of Senderling based on Swan’s teachings,
there is no doubt that it would have possessed these capabilities since they
are explicitly taught by Swan.

CONCLUSION
In summary:
The § 102 rejection based on Senderling of claims 5, 6, 10-12 is
affirmed for the foregoing reasons and the reasons stated in the Answer;
whereas the § 102 rejection based on Senderling of claims 7-9 is reversed.
We set forth a new ground of rejection over claims 5-12 as obvious
over the combined teachings of Senderling and Swan.
Regarding the affirmed rejection(s), 37 C.F.R. 41.52 (a)(1) provides
“[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
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This decision also contains a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). That section provides that, “[A] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.”
Regarding the new ground of rejection, Appellant must, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the
following options with respect to the new ground of rejection, in order to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . ; or

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

In order to preserve Appellant’s right to seek review under 35 U.S.C.
§§ 141 or 145 with respect to the affirmed rejection of claims 5, 6, and 10-
12, we defer the effective date of the affirmance until after a request for
rehearing of the new ground, or, until conclusion of the prosecution for the
new ground before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.

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The decision of the Examiner is affirmed-in-part.
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; § 41.50(b)

PL Initial:
sld

CHI W. CHAN
201 - 02 26 AVE
BAYSIDE, NY 11360