Ex Parte FlynnDownload PDFPatent Trial and Appeal BoardApr 28, 201412709140 (P.T.A.B. Apr. 28, 2014) Copy Citation 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. 12/709,140 02/19/2010 Timothy J. Flynn CD-146-CON 6013 42419 7590 04/29/2014 PAULEY PETERSEN & ERICKSON 2800 WEST HIGGINS ROAD SUITE 365 HOFFMAN ESTATES, IL 60169 EXAMINER ZIMMERMAN, JOSHUA D ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 04/29/2014 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 TIMOTHY J. FLYNN ____________ Appeal 2012-004580 Application 12/709,140 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appeal 2012-004580 Application 12/709,140 2 Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's rejection under 35 U.S.C. § 103(a) of claims 1-14 as unpatentable over the Microsoft Tutorial (“Creating a Brochure, Flyer and Newsletter Using Microsoft Publisher 2003 for Windows 98/Me/2000/XP” (2003)). We have jurisdiction under 35 U.S.C. § 6. Appellant claims a method for advertising information which comprises providing a printable sheet (26) including a main print area (20) and a plurality of removable tabs (22) defined at least in part by a tearable line of separation (30, 32), printing information in the main print area, printing contact information on each of the removable tabs, and hanging the sheet to advertise the printed information (sole independent claim 1, Fig. 1). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A method for advertising information, comprising: providing a printable sheet including a main print area and a column of a plurality of removable tabs disposed along an edge of the main print area, each of the removable tabs defined along the edge of the main print area and on opposing sides at least in part by a tearable line of separation including at least one of perforations or tab connectors; printing information within the main print area; printing contact information for the printed information on each of the removable tabs; and hanging the sheet to advertise the printed information. Appeal 2012-004580 Application 12/709,140 3 We sustain the above rejection based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Final Office Action and the Answer with the following comments added for emphasis. The Examiner finds that the Tutorial discloses a flyer with tear-offs or tabs but does not disclose that the tear-offs or tabs are defined by a tearable line of separation as required by claim 1 (see, e.g., FOA 2-3). The Examiner takes Official Notice that it was known to provide printable sheets including tabs with tearable lines of separation as evidenced by the WO 93/04943 reference of record (id. at 4) and concludes that it would have been obvious to provide the Tutorial flyer with tearable lines of separation for the tear-offs or tabs in order to facilitate separating the tabs from the flyer (id., see also, Ans. 10). Appellant states that "the claimed invention is an improvement on the Tutorial's method of forming a flyer that requires hand cutting of the tear-off portions" (Br. 8) and argues that "[t]here is no reasonable basis . . . to provide and use a dedicated product [i.e., the Tutorial flyer with tear-offs] with tearable lines" (id.). Appellant's argument lacks persuasive merit. We fully agree with the Examiner that one with ordinary skill in this art would have provided the tear-offs of the Tutorial flyer with tearable lines of separation in order to Appeal 2012-004580 Application 12/709,140 4 facilitate separating the tear-offs from the flyer in accordance with the Tutorial teachings via a technique (i.e., lines of separation) which was known in the prior art as evidenced by the Examiner's Official Notice and the WO reference. This proposed combination of prior art elements (i.e., a flyer with tear-offs in combination with lines of separation) would have been prima facie obvious because the combination does no more than yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). The decision of the Examiner 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). AFFIRMED tc Copy with citationCopy as parenthetical citation