Ex Parte Dacey

Board of Patent Appeals and Interferences

Nov 30, 2011

10486963 (B.P.A.I. Nov. 30, 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.
10/486,963 08/12/2004 Derek Dacey 24900-35A 2820
22852 7590 11/30/2011
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
FERNSTROM, KURT
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
11/30/2011 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 DEREK DACEY
________________

Appeal 2010-001318
Application 10/486,963
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, WILLIAM V. SAINDON and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 6, 8, 9, 11, 13-18, 20, 21 and 23-31. Claims 2-5, 7, 10,
12, 19 and 22 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter pertains to the folds of a paper sheet that is
folded and unfolded repeatedly. Independent claim 1 is illustrative of the
invention and is reproduced below:

1. A foldable product formed from a sheet of paper having printed
matter thereon, the foldable product comprising:
a sheet of paper adapted to be folded and unfolded repeatedly
during use between a predetermined folded configuration and a
predetermined unfolded configuration in which the sheet lies
substantially flat, the sheet having an information bearing face on the
side of the sheet facing inwardly upon folding of the foldable product
and bearing a predetermined pattern of fold lines defining the lines
along which the product is to be folded;
wherein the sheet comprises two principal portions which are
closed one on to the other by a closing movement about a principal
axis of the sheet in the manner of closing the covers of a book and the
fold lines of the sheet define four principal outward folds meeting at a
generally central point of the sheet and arranged as opposed pairs of
outward folds, and two principal inward folds meeting at the central
point of the sheet and arranged as an opposed pair of inward folds;
each principal outward fold dividing at its distal end into two
edge outward folds which diverge from the direction of the associated
principal outward fold and extend to respective edges of the sheet; and
each said distal end of a principal outward fold having an edge
inward fold extending therefrom along the same direction as the
direction of the associated principal outward fold and extending to an
edge of the sheet,
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characterized in that each fold line which defines a principal
outward fold has a creased portion and a perforated portion, the
creased portion extending from the centre along the fold line and the
perforated portion extending along the fold line from the creased
portion towards the distal end of the principal outward fold,
in that each fold line which defines a principal inward fold has
two creased portions and a perforated portion, the first creased portion
extending from the centre along the fold line, the second creased
portion extending from an edge of the sheet along the fold line, and
the perforated portion extending along a middle portion of the fold
line,
in that each fold line which defines an edge outward fold has a
creased portion and a perforated portion, the creased portion
extending from an edge of the sheet along the fold line and the
perforated portion extending from the creased portion towards the
distal end of the principal outward fold along the fold line and
in that each fold line which defines an edge inward fold has one
creased portion extending from an edge of the sheet along the fold line
and one perforated portion extending from said one creased portion
along the fold line.

References Relied on by the Examiner
Vogtlander US 4,636,192 Jan. 13, 1987
Biermann DE 197 27 844 A 1 Jan. 28, 1999

The Rejection on Appeal
Claims 1, 6, 8, 9, 11, 13-18, 20, 21 and 23-31 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Vogtlander and Biermann (Ans.
3).

ISSUE
Does the combination of Vogtlander and Biermann teach a paper
sheet with both perforated and non-perforated (i.e., creased) folds with the
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creased folds being located in areas of high stress or in areas spaced from
fold intersections?

ANALYSIS
Appellant’s Specification identifies the patent to Vogtlander as a
known example of a star-folded map sheet and Appellant identifies figures
1-4 of the application as showing “a foldable product of the kind disclosed”
in Vogtlander (Spec. 1:25, 7:5-6). Appellant states that his Figure 5
“corresponds generally to the product shown in Figure 1 of the known
arrangement, except for the formation of the fold lines” and that in addition
to the dotted and dashed perforated fold lines shown in the prior art, the fold
lines of Appellant’s Figure 5 include “solid lines, which indicate non-
perforated creased or scored fold lines” (Spec. 8:20-28) (italics added).
For all the claims on appeal, Appellant contends that the rejection is
“improper because the criteria for establishing a prima facie case of
obviousness has not been met” and that “it is improper to combine
references where the references teach away from their combination” (App.
Br. 13). A more specific basis for these contentions is provided below with
respect to the following claim groupings presented by Appellant.
Claims 1, 6, 8, 9, 11, 13-18, 20 and 21
Appellant argues claims 1, 6, 8, 9, 11, 13-18, 20 and 21 as a group
(App. Br. 13). We select independent claim 1 for review. Claim 1 requires
a foldable “sheet of paper” whose folds comprise both “a creased portion
and a perforated portion.” The Examiner relies on Vogtlander for all the
limitations of claim 1 except that “Vogtlander fails to disclose that creases
are provided in place of perforations in areas of greater stress” for which the
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Examiner states that “Biermann discloses a foldable product where creases,
rather than perforations, are provided in areas of stress” (Ans. 3). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art “to modify the device of Vogtlander by providing crease lines in
areas of greater stress for the purpose of enhancing the durability of the
device” (Ans. 3-4).
Appellant contends that modifying Vogtlander’s map in view of
Biermann’s teachings would render Vogtlander’s map “unsatisfactory for its
intended purpose and changes the principle of operation of Vogtlander”
(App. Br. 13, see also Reply Br. 3-4). This is because Biermann’s teachings
pertain to a plastic, not paper, map and that because “[p]lastic has a different
characteristic than paper,” “plastic is more difficult to crease and fold and
has a ‘memory’” (App. Br. 15-16, see also Reply Br. 3). Appellant’s
contention is not persuasive because Appellant’s argument is not directed to
the rejection of record; the claim requires a paper map, Vogtlander teaches a
map “made of stiff paper” (Abstract), and the Examiner’s rejection includes
that paper map. (Ans. 3, “the proposed modification of the [Vogtlander]
reference does not involve changing the Vogtlander map from paper to
plastic”). Furthermore, and contrary to additional arguments presented by
Appellant, Vogtlander teaches that the disclosed perforated map may be
automatically folded or unfolded in the appropriate directions (Vogtlander
6:21-31).
Appellant further contends that the Examiner is not able to cite to
Biermann “only for its teaching of creases at certain points in the fold lines”
for greater durability because a “reference must be considered in its entirety”
(App. Br. 17 citing both the Examiner and the MPEP). Appellant “disagrees
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with the Examiner's contention that Biermann's teachings of a plastic sheet
are separate from Biermann's teachings of a foldable sheet with both
perforations and creases” because Biermann’s teaching is also directed to
plastic sheets which can be folded “in both directions” (App. Br. 17-18, see
also Reply Br. 3). “Appellant submits that specific use of the perforations
and creases of Biermann cannot be divorced from the use of plastic sheets in
formulating a claim rejection” (App. Br. 18, see also Reply Br. 4). In
contrast, Appellant contends that the claimed sheet is paper and that the
claimed paper folds “are not subject to folding operations in both directions,
as in Biermann” (App. 18).
The Examiner references Biermann for disclosing the use of “creases,
rather than perforations” in areas of stress and that it would have been
obvious to one skilled in the art to modify Vogtlander’s map by providing
“crease lines in areas of greater stress for the purpose of enhancing the
durability of the device” (Ans. 3-4). The Examiner states that the Biermann
“disclosure appears to the examiner to clearly suggest that perforations may
be replaced with non-perforated crease lines in areas of greater stress to
increase the durability of the device” (see Biermann 2:8-19) and that the
substitution of one known element (non-perforated crease) for another
(perforations) to yield a predictable result “does not serve as a proper basis
for patentability” (Ans. 5 citing KSR International Co. v. Teleflex Inc., 82
USPQ2d 1385 (U.S. 2007)).
Given that Biermann uses creases to increase the durability of folds
(Biermann 2:12-15), we understand the “predictable result” the Examiner
speaks of is a predicable increase in durability (Ans. 3-4). We agree that the
substitution of perforations for creases leads to the predictable result of a
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more durable product for at least the reason that the strength of the material
is greater in regions that do not have perforations (Biermann, 2:12-15). In
addition to the teachings in KSR, we have also been instructed that
“[o]bviousness does not require absolute predictability of success….For
obviousness under § 103, all that is required is a reasonable expectation of
success” (In re O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)).
Consequently, we do not find fault with the Examiner’s rationale that
Vogtlander’s map may be modified by employing Biermann’s creases in
areas of greater stress and we are not persuaded by Appellant’s contentions
to the contrary.
Regarding Biermann’s use of plastic and not paper, and whether such
plastic use can be separated from Biermann’s teachings regarding material
fatigue (Biermann 2:12-19), the Examiner finds that one skilled in the art
“would have understood that non-perforated creased lines would have
greater strength and durability than perforated fold lines in any material”
(Ans. 5) (italics added). The Examiner states that “the proposed
modification of the Vogtlander reference does not involve changing the
Vogtlander map from paper to plastic” (Ans. 6). Instead, the Examiner
relies on the teachings of Biermann for disclosing “that where the fold lines
are not perforated, ‘the strength of the material is greater in these regions’”
(Ans. 6 quoting Biermann 2:14-15). The Examiner concludes that “one of
ordinary skill in the art would have understood that creases at areas of
greatest stress would increase the strength of those areas in both paper and
plastic sheets” (Ans. 6, Vogtlander Abstract) (italics added). We agree with
the Examiner in view of the similarity in the relevant properties of stiff paper
and plastic.
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Accordingly, and based on the record presented, we are not persuaded
by Appellant’s contentions that in applying Biermann’s teaching of creases,
such teachings “cannot be divorced from the use of plastic sheets in
formulating a claim rejection” (App. Br. 18). We sustain the Examiner’s
rejections of claims 1, 6, 8, 9, 11, 13-18, 20 and 21.
Claim 23
Claim 23 depends directly from claim 1 and further requires that "a
second creased portion [of the edge inward fold] extends along a middle
portion of the fold line." The Examiner states that this is “considered to be
[an] obvious variation[] on the teachings of Vogtlander and Biermann” and
more specifically, “one of ordinary skill in the art would have found it
obvious to extrapolate the specific teachings of Biermann into a general
principle that creases can enhance the strength of fold lines anywhere there
are areas of increased stress, such as a middle portion of a fold line, as the
purpose of the creases taught by Biermann is to enhance the durability of the
device” (Ans. 4, 6).
Appellant relies on the arguments previously presented (App. Br. 19).
Appellant further contends that neither Vogtlander nor Biermann disclose or
suggest a second creased portion in a middle portion of a fold line as
claimed and more specifically, “Biermann discloses providing creases at
intersections and margins of the sheet” and “Biermann does not disclose or
suggest providing a creased portion in any middle portion of any fold line”
(App. Br. 19-20). As support for this contention, Appellant states that
“neither Vogtlander nor Biermann disclose or suggest that the middle
portion of the edge inward fold is an area of increased stress” (App. Br. 20).
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Appellant is not asserting that placing a crease in a middle of a fold
line renders a new or unexpected result or that the known elements of
creases, perforations and fold lines now work together in an unexpected
manner. Appellant instead contends that neither reference teaches placing a
crease in the location claimed (“and therefore the cited references do not
disclose or suggest providing a creased portion in that area” (App. Br. 20)).
While Biermann teaches creases at the margins of the map sheet and at fold
intersections, Biermann also teaches that creases can be elsewhere (i.e., “the
perforation terminates [i.e. creases begin]… also at a distance from the
regions of intersection of the fold-lines”) (Biermann 2:1-6). Accordingly, it
would have been obvious to one skilled in the art at the time of the
invention, in view of Biermann, to place a crease some distance from fold
intersection regions. Based on the record presented, we are not persuaded
by Appellant’s contentions and we sustain the Examiner’s rejection of claim
23.
Claims 24, 28 and 29
Appellant argues claims 24, 28 and 29 together (App. Br. 20). We
select dependent claim 24 for review. Claim 24 depends directly from claim
1 and further requires that the creased portions of the principal inward and
outward folds “meet at a central intersection…located at the generally
central point of the sheet.” Appellant relies on the arguments previously
presented with respect to claim 1 and further Appellant contends that
Vogtlander and Biermann do not teach this claim limitation because if
Vogtlander’s sheet were made of plastic, it “would be difficult to
automatically fold” the sheet in the desired direction at the center (App. Br.
21). The Examiner states that “Vogtlander discloses a central location
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where fold lines meet” and Biermann teaches providing “creases at fold
intersections” for greater fold strength, and as such, the Examiner states that
the recited feature has already been suggested (Ans. 4). We have previously
addressed Appellant’s contention regarding the difficulty of folding
Vogtlander’s sheet and were not persuaded by it. Appellant’s incorporation
of a central intersection area into this contention is equally not persuasive.
We instead agree with the Examiner’s finding that this limitation has already
been suggested by the combination of Vogtlander and Biermann.
Accordingly, we sustain the Examiner’s rejection of claims 24, 26 and 28.
Claim 25
Claim 25 depends directly from claim 1 and further requires that the
sheet of paper “is adapted to be folded and unfolded” in a particular manner.
Appellant again relies on the arguments previously presented with respect to
claim 1 and further contends that if Vogtlander’s map were made of plastic
and perforated “as taught by Biermann, the inward folds 12 would be able to
move in the outward direction or the inward direction, instead of only in the
inward direction” as claimed and hence “would be rendered unsatisfactory
for its intended purpose” (App. Br. 22-23). However, as we discussed
above, the rejection of record does not include a plastic map. Further, as
Vogtlander already teaches a paper map that is capable of being folded and
unfolded in a specific manner, and as Vogtlander teaches that its map is
suitable for its purpose, we are not persuaded by Appellant’s contention and
consequently, based on the record presented, we sustain the Examiner’s
rejection of claim 25.
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Claims 26 and 30
Appellant argues claims 26 and 30 together (App. Br. 23). We select
dependent claim 26 for review. Claim 26 is dependent on claim 25 and
further requires that “each fold line is folded in a single predetermined
direction.” Appellant again relies on the arguments previously presented
and further contends that, as with claim 25 supra, “the inward folds 12
would be able to move in the outward direction or the inward direction,
instead of only in the inward direction” (App. Br. 23-24). Appellant
emphasizes the “single” predetermined direction recited in claim 26 stating
that Vogtlander’s map, which can fold in both directions, is prevented from
being “folded in a single predetermined direction” (App. Br. 24, see also
Reply Br. 3). The Examiner disagrees stating that “Vogtlander discloses that
each fold line is folded in a single predetermined direction as recited” (Ans.
4). Vogtlander teaches folding its plastic or paper perforated sheet in a
predetermined direction and Vogtlander distinguishes between inward and
outward folds to achieve such folding (Vogtlander 6:21-31). Hence, one
skilled in the art would understand that Vogtlander teaches specific folds for
folding in a specific direction. The Examiner relies on Biermann for
teaching creases in areas subject to greater stress (Ans. 3). Biermann also
discloses that perforated folds may fold in multiple directions as Appellant
contends but Vogtlander already clarifies that its folds are single-direction
folds by distinguishing between inward and outward folds. Accordingly, we
are not persuaded by Appellant’s contention that Vogtlander’s fold lines do
not fold “in a single predetermined direction” as claimed. Based on the
record presented, we sustain the Examiner’s rejection of claims 26 and 30.

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Claims 27 and 31
Appellant argues claims 27 and 31 together (App. Br. 24). We select
dependent claim 27 for review. Claim 27 depends directly from claim 1 and
further requires that “the product consists of only paper.” Appellant relies
on the arguments previously presented with respect to claim 1 and re-
emphasizes that “Biermann’s teachings of a plastic sheet are not separate
from Biermann’s teaching of a foldable sheet with both perforations and
creases” (App. Br. 25). We have previously discussed this contention and
have not found it to be persuasive. No further arguments are presented
disputing Vogtlander’s teaching of a map sheet made of both “stiff paper
and plastic” (Vogtlander Abst.). Accordingly, based on the record
presented, we sustain the Examiner’s rejection of claims 27 and 31.

CONCLUSION
The combination of Vogtlander and Biermann does teach a paper
sheet with both perforated and non-perforated (i.e., creased) folds with the
creased folds being located in areas of high stress or in areas spaced from
fold intersections.

DECISION
The rejection of claims 1, 6, 8, 9, 11, 13-18, 20, 21 and 23-31 under
35 U.S.C. § 103(a) as being unpatentable over Vogtlander and Biermann is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED

MP