Ex Parte DaceyDownload PDFBoard of Patent Appeals and InterferencesNov 30, 201110486963 (B.P.A.I. Nov. 30, 2011) Copy Citation 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 Appeal 2010-001318 Application 10/486,963 2 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, Appeal 2010-001318 Application 10/486,963 3 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 Appeal 2010-001318 Application 10/486,963 4 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 Appeal 2010-001318 Application 10/486,963 5 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 Appeal 2010-001318 Application 10/486,963 6 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 Appeal 2010-001318 Application 10/486,963 7 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. Appeal 2010-001318 Application 10/486,963 8 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). Appeal 2010-001318 Application 10/486,963 9 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 Appeal 2010-001318 Application 10/486,963 10 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. Appeal 2010-001318 Application 10/486,963 11 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. Appeal 2010-001318 Application 10/486,963 12 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). Appeal 2010-001318 Application 10/486,963 13 AFFIRMED MP Copy with citationCopy as parenthetical citation