Ex Parte Fitzgerald et al

Board of Patent Appeals and Interferences

Jan 30, 2004

09901220 (B.P.A.I. Jan. 30, 2004)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ARTHUR C. FITZGERALD, JOHN F. COUGHLAN
and JACK B. GOLDMAN

Appeal No. 2004-0348
Application No. 09/901,220

ON BRIEF

Before KIMLIN, DELMENDO and PAWLIKOWSKI, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 54-56
and 59-65. Claims 54 and 65 are illustrative:
54. A method of manufacturing document storage containers for
storing documents, comprising the steps:
die cutting a blank document container from document
container stock;
embedding a radio frequency identification tag in the
document container stock; and
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Application No. 09/901,220
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folding and gluing the document container to form a
completed document storage container.
65. A method of manufacturing document storage containers for
storing documents, as recited in claim 54, wherein the step of
embedding includes the steps of:
depositing a radio frequency identification tag on the
document container stock in proximity to a seam;
applying glue to the area of the seam;
folding and gluing the seam to capture the radio frequency
identification tag within the glued portion of the seam.
The examiner relies upon the following references as
evidence of obviousness:
Feiler 5,159,180 Oct. 27, 1992
Gillotte 5,424,858 Jun. 13, 1995
Wiholm 6,186,935 Feb. 13, 2001
Appellants' claimed invention is directed to a method of
making containers for storing documents, such as medical records.
The method entails die cutting material for the container from
document container stock, embedding a radio frequency
identification tag (RFID) in the container stock, and folding and
gluing the container stock to form a completed document storage
container. Claim 65 on appeal further provides for depositing
the RFID in proximity to a seam of the container, applying glue
to the seam, and "folding and gluing the seam to capture the
radio frequency identification tag within the glued portion of
the seam." According to appellants, "[t]he RFID tags which are
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Application No. 09/901,220
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recited in the present claims are of a known structure, which is
described in the present specification as filed . . ." (page 2 of
Brief, last paragraph).
Appealed claims 54 and 59-65 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Wiholm in view of Gillotte.
Claims 55 and 56 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the stated combination of references in further
view of Feiler.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. As a result, with the
exception of appealed claim 65, we find that the examiner has
established a prima facie case of obviousness for the claimed
subject matter which has not been adequately rebutted by
appellants. Accordingly, we will sustain the examiner's
rejection of claims 54-56 and 59-64, but we will not sustain the
examiner's rejection of claim 65.
Appellants do not make the argument that it would have been
nonobvious for one of ordinary skill in the art to modify the
folder of Wiholm by incorporating the electromagnetic receiver 20
of Gillotte. Rather, it is appellants' contention that Wiholm
does not disclose "a document storage container or file folder in
the conventional sense; that is, a container for holding a loose
Appeal No. 2004-0348
Application No. 09/901,220
1 Page 5 of Brief, last paragraph.
2 Page 6 of Brief, third paragraph.
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collection of papers and documents,"1 but, rather, the reference
discloses a book binding method and apparatus. However, we agree
with the examiner that appellants' argument is not commensurate
in scope with the breadth of subject matter encompassed by
claim 54. Claim 54 on appeal does not define a storage container
or file folder which holds a loose collection of papers and
documents, but broadly embraces "document storage containers for
storing documents." Hence, although Wiholm permanently attaches
the individual sheets or documents into the folder with hot-melt
glue at the spine of the folder, appealed claim 54 fails to
recite any limitation which distinguishes over the permanently
attached documents in the folder of Wiholm.
Appellants also maintain that "[t]he Wiholm reference does
not include any folded seams or glued folded seams in which a
radio frequency identification tag may be embedded in the
document container stock as claimed in the present claim 54."2
However, as explained by the examiner, appellants' argument is
not germane to the subject matter defined by claim 54. Claim 54
does not require that the RFID tag be embedded in a folded seam,
but only requires that the RFID tag be embedded somewhere in the
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Application No. 09/901,220
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document container stock. On this point, we agree with the
examiner that Gillotte discloses, or at least suggests, embedding
an RFID tag in some area on the folder. While the identification
receiver 20 of Gillotte may not be identical to the
identification tag used by appellants, we find that it would have
been obvious for one of ordinary skill in the art to employ the
admittedly known RFID tag disclosed by appellants.
As for separately argued claim 62, we agree with the
examiner that Wiholm discloses such a reinforced double-sided
file folder to the extent that the folder, by definition,
includes two sides. As for claim 63, we find that labeling the
container a "file box" fails to distinguish the claimed subject
matter over the file folder of Wiholm. We also concur with the
examiner that it would have been obvious for one of ordinary
skill in the art to modify the folder of Wiholm in order to hold
removable x-ray film. As noted by the examiner, Gillotte
evidences that it was known in the art to use file folders to
store x-ray films and we are persuaded that it would have been
obvious for one of ordinary skill in the art to eliminate the
gluing taught by Wiholm when permanently securing the documents
is not desirable. It is well settled that it is a matter of
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Application No. 09/901,220
3 Page 4 of Answer, last sentence.
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prima facie obviousness for one of ordinary skill in the art to
eliminate a feature of the prior art along with its advantage.
Concerning separately rejected claims 55 and 56 which call
for printing identification information received from a computer
database on the document container stock for storing medical-
related records, we are in complete agreement with the examiner
that such a printing of information on a file folder was
notoriously well-known in the art at the time of filing the
present application and, accordingly, such printing would have
been obvious to one of ordinary skill in the art.
The rejection of claim 65 is another matter. Claim 65
specifically requires "folding and gluing the seam to capture the
radio frequency identification tag within the glued portion of
the seam." While the examiner focuses upon the claimed step of
depositing the tag "in proximity to a seam," and argues that "the
tag could be located next to the seam not exactly on the seam as
been argued,"3 claim 65 nevertheless requires that the folding
and gluing steps result in the tag being captured within the
glued portion of the seam.
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Application No. 09/901,220
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As a final point, we note that appellants base no argument
upon objective evidence of nonobviousness, such as unexpected
results.
In conclusion, based on the foregoing, the examiner's
rejections of claims 54-56 and 59-64 are sustained, whereas the
examiner's rejection of claim 65 is reversed. Accordingly,
the examiner's decision rejecting the appealed claims is
affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
ROMULO H. DELMENDO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
BEVERLY PAWLIKOWSKI )
Administrative Patent Judge )
ECK:clm
Appeal No. 2004-0348
Application No. 09/901,220
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Kenneth L. Milik
Milik & Medeiros, P.A.
Suite 13
574 Boston Road
Billerica, MA 01821