Ex Parte Duquette

Patent Trial and Appeal Board

Feb 20, 2013

10683013 (P.T.A.B. Feb. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/683,013 10/10/2003 John Brian Duquette 6001.1257 1138
23280 7590 02/21/2013
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
02/21/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN BRIAN DUQUETTE
____________

Appeal 2010-006557
Application 10/683,013
Technology Center 3700
____________

Before LINDA E. HORNER, LYNNE H. BROWNE, and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John Brian Duquette (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-7 and 10-18, which are
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-006557
Application 10/683,013

2
THE INVENTION
Appellant’s claimed invention relates to “trimming units for trimming
edges of a book.” Spec., para. [0002]. Claims 1 and 10, reproduced below,
are the independent claims and are illustrative of the subject matter on
appeal.
1. A trimmer for trimming a book comprising:
a support for supporting a book;
at least one laser for scoring an edge of the book so as to
produce a score; and
a trimming station for trimming the book at the score.

10. A method for trimming a book comprising the steps of:
scoring an edge of the book using a laser so as to create a
score, and
trimming the book at the score.
THE EVIDENCE
The Examiner relies upon the following evidence:
Bryson US 3,733,947 May 22, 1973
Snellman US 5,364,215 Nov. 15, 1994
Perrington US 5,557,311 Sep. 17, 1996
Baggot US 6,945,922 B2 Sep. 20, 2005
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1, 3, 4, 6, 10, 12-14, and 16 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bryson and Perrington.
Appeal 2010-006557
Application 10/683,013

3
2. Claims 2, 11, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bryson, Perrington, and Snellman.
3. Claims 5, 7, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bryson, Perrington, and Baggot.
ISSUES
The Examiner found that Bryson “discloses a machine which trims
(using knives) the front and side edges of a book as it advances through a
conveyor,” but Bryson “does not teach scoring of the book.” Ans. 3. The
Examiner found that Perrington discloses laser perforating paper products
such as brochures, pamphlets and books to allow the paper to be folded. Id.
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art “to use a laser score as taught by Perrington et al. in the
Bryson et al. system because it results in higher accuracy of the cut edge.”
Id.
Appellant argues that the Examiner fails to provide sufficient rationale
to support the conclusion that the trimmer of claim 1 or the method of claim
10 would have been obvious to one of ordinary skill in the art in view of
Bryson and Perrington. App. Br. 5, 7-8 (“[s]imply because laser perforating
an interior of a sheet of paper allows the sheet to be folded more flatly when
combined with other sheets of paper, in no way indicates that it would be
obvious to score edges of a book before the book is trimmed to produce
more accurate trimmed edges.”).
The issue presented by this appeal is whether the Examiner articulated
adequate reasoning based on rational underpinnings to explain why one of
Appeal 2010-006557
Application 10/683,013

4
ordinary skill in the art would have been led to modify the trimming
machine and method of Bryson to score the edge of the book using a laser so
as to produce a score.
PRINCIPLES OF LAW
“A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art.” In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). Further, “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). “A
factfinder should be aware . . . of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.” Id. at 421.
ANALYSIS
The Examiner’s articulated reason for modifying the trimming
machine and method of Bryson to score the edge of the book using a laser,
based on the teachings of Perrington, “because it results in higher accuracy
of the cut edge” is without adequate support in the record. App. Br. 5.
Neither Bryson nor Perrington recognizes that scoring an edge of the book
prior to trimming results in a higher accuracy of the cut edge, and the
Examiner has pointed to no other evidentiary basis in the record to support
the Examiner’s determination that one of ordinary skill in the art at the time
of Appellant’s invention would have appreciated that a higher accuracy of
Appeal 2010-006557
Application 10/683,013

5
the cut edge would result from the proposed modification of Bryson. As
such, we have an insufficient basis on which to find that the Examiner’s
articulated reasoning is based on rational underpinnings. The second and
third grounds of rejection rely upon this same proposed combination of
Bryson and Perrington and the same articulated reasoning (Ans. 4-5), and
thus fail for the same reason.
CONCLUSION
The Examiner failed to articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to modify the trimming machine and method of Bryson to score the
edge of the book using a laser so as to produce a score.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-7 and
10-18.

REVERSED

hh