Ex parte Cross

Board of Patent Appeals and Interferences

Feb 28, 2000

08950539 (B.P.A.I. Feb. 28, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GEORGE M. CROSS
_____________
Appeal No. 2000-0116
Application 08/950,539
______________
ON BRIEF
_______________
Before CALVERT, ABRAMS and BAHR, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
8, 11 to 14 and 16 to 20. The examiner has indicated on page
4 of the examiner’s answer that the other claims in the
application, 9, 10 and 15, would be allowable if rewritten in
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Application No. 08/950,539
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independent form.
The appealed claims are drawn to a method of advancing a
confidential sheet within a document security apparatus, and
an apparatus for advancing a confidential sheet. They are
reproduced in the appendix of appellant’s brief.
The references applied in the final rejection are:
Aronsen 5,335,478 Aug. 9,
1994
Kramer 5,341,625 Aug. 30,
1994
Underwood 5,547,181 Aug.
20, 1996
Lee 5,566,528 Oct. 22,
1996
The claims on appeal stand finally rejected under 35
U.S.C. § 103 as unpatentable over the following combinations
of references:
(1) Claims 1 to 6, 11 to 14 and 16 to 19, Lee in view of
Underwood and Aronsen.
(2) Claims 7, 8 and 20, Lee in view of Underwood, Aronsen and
Kramer.
Rejection (1)
In the final rejection (Paper No. 7), the examiner states
the basis of this rejection on page 2 as follows:
Appeal No. 2000-0116
Application No. 08/950,539
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Lee substantially shows the claimed subject matter
as discussed in paragraph 2 of the last office
action. Lee does not show moving the sheets with a
scuffer wheel and Lee does not show advancing the
sheets after creating a pocket as claimed.
Underwood teaches the basic concept of feeding
sheets with a scuffer wheel and Aronsen shows the
concept of creating a pocket and then subsequently
advancing sheets into the pocket. It would have
been obvious to one of ordinary skill in the art at
the time of the invention to provide Lee with
scuffer advancing means and pocket forming means as
taught by Underwood and Aronsen respectively to
provide an efficient and accurate process.
After fully considering the record in light of the
arguments presented in the appellant’s brief and the
examiner’s answer, we conclude that rejection (1) should not
be sustained. While it seems evident that, as a general
proposition and as disclosed by Underwood, it is well known to
use a scuffer to advance media sheets, and would have been
obvious to use a scuffer in the Lee apparatus to advance the
pages from machine 10 and the packaging (enclosure) sheets 36,
we do not consider that it would further have been obvious to
modify the Lee apparatus in view of Aronsen in the manner
proposed by the examiner.
Aronsen discloses an arrangement for packaging a product
such as towelettes in a dispenser pouch. In brief, the pouch
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Application No. 08/950,539
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is formed by folding a first web 10 to form the two outer
walls 38, 40 of the pouch, while inserting a second web 44
therebetween (Fig. 4A). The first and second webs are sealed
together at the edges 54, 56 and at the fold line 58, thereby
producing a pouch having two compartments 62, 64 (Fig. 5A).
Two stacks of towelettes 66, 84 are then sequentially
inserted, one stack into each of the compartments (Fig. 5A,
6A), and the open end of the pouch 92 is sealed (Fig. 7a).
The examiner argues with regard to Aronsen that (answer,
pages 5 and 6):
The combination of Aronsen is deemed within [sic]
one of ordinary skill in the art as it is well known
to either form a pocket and inset the product as
taught by Aronsen or to form the envelope
simultaneously with the product enclosed as primary
reference Lee shows.
Primary reference, Lee teaches the basic concept
of enclosing confidential materials with enclosure
sheets but Lee does not show the claimed
transporting means to transport the confidential
sheets into the enclosure means and does not show
the envelope forming means being created prior to
the insertion means. As stated supra, it is known
to either form an envelope and then fill it or form
the envelope simultaneously with the product.
Secondary reference, Aronsen, teaches the basic
concept of forming envelopes and subsequently
filling the envelopes. Therefore, it would have
been obvious modification to one of ordinary skill
in the art to provide Lee with envelope forming
means prior to filling as taught by Aronsen to
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Application No. 08/950,539
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provide the well known means of filling a pre-formed
envelope.
We do not agree with this argument, but rather agree with
appellant that there is no teaching or suggestion which would
support the combination of Lee and Aronsen. Assuming arguendo
that one of ordinary skill would consider Aronsen to be
pertinent to the problem of enclosing confidential sheets
within an enclosure, we do not consider that one of ordinary
skill would
find any suggestion in Aronsen to modify the Lee apparatus to
form an enclosure (envelope) and then insert the pages from
the facsimile machine 10 thereinto, nor any teaching as to how
such a
modification should be accomplished, the Aronsen apparatus
being fundamentally different from that of Lee in that in
Aronsen, as discussed above, the enclosure is initially formed
by folding a web, whereas in Lee the enclosure is formed from
separate sheets.
It is evident that, at a minimum, modification of the Lee
apparatus to insert the pages into a preformed enclosure
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Application No. 08/950,539
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(envelope) would require changing the apparatus so that (1)
the top and bottom enclosure sheets 48, 56 would be advanced
into position together, (2) the adhesive at the leading edges
of the enclosure sheets would be activated by heating elements
at 110a, (3) a means (such as vacuum 86 of Aronsen) would be
provided to hold sheets 48, 56 apart while the pages were
inserted therebetween, and (4) the other heating elements (at
110 b, c, d) then would be activated to seal the enclosure.
However, while these modifications could be made it is
fundamental that the mere fact that the prior art could be
modified to form the claimed structure or perform the claimed
process would not have made the
modification obvious unless the prior art suggested the
desirability of the modification. In re Laskowski, 871 F.2d
115,
117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989); In re Fritch, 972
F.2d 1260, 1266, 23 USPQ 1780, 1783-84 (Fed. Cir. 1992). In
the present case, we find no teaching or suggestion in the
applied prior art which would have motivated one of ordinary
skill to make such extensive modifications of the Lee
apparatus. The examiner seems to indicate in the final
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Application No. 08/950,539
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rejection, supra, that there would be motivation to modify Lee
in order “to provide an efficient and accurate process,” but
it is not apparent what there is in the prior art that would
suggest to one of ordinary skill that modifying Lee would make
the Lee apparatus any more efficient and accurate than before.
In our view, the examiner’s reason for combining the
references was not based upon a suggestion in the prior art of
the desirability of making the combination, but upon improper
hindsight gleamed from appellant’s own disclosure.
Accordingly, rejection (1) will not be sustained.
Rejection (2)
Rejection (2) will likewise not be sustained, since
Kramer, the additional reference applied, does not overcome
the deficiencies of the combination of references applied in
rejection (1).
Conclusion
The examiner’s decision to reject claims 1 to 8, 11 to 14
and 16 to 20 is reversed.
No time period for taking any subsequent action in
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Application No. 08/950,539
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connection with this appeal may be extended under
37 CFR § 1.136(a).
REVERSED
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
IAC:lmb
Appeal No. 2000-0116
Application No. 08/950,539
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