Ex Parte FriedlDownload PDFPatent Trial and Appeal BoardDec 9, 201412247307 (P.T.A.B. Dec. 9, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL FRIEDL ____________________ Appeal 2012-011237 Application 12/247,307 Technology Center 3700 ____________________ Before: LYNNE H. BROWNE, MICHELLE R. OSINSKI, and THOMAS F. SMEGAL, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael Friedl (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 13–19 under 35 U.S.C. § 103(a) as being unpatentable over Teng (US 6,135,504, issued Oct. 24, 2000).1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant has elected not to appeal the rejections of claims 1–12, noting that “only [c]laim[s] 13–19 are on appeal.” Br. 2. We suggest that the Examiner cancel claims 1–12 upon return of jurisdiction of this application to the Examiner. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential). Appeal 2012-011237 Application 12/247,307 2 THE CLAIMED SUBJECT MATTER Claim 13, reproduced below, is illustrative of the claimed subject matter. 13. A system of producing a pocket-sized, disposable photo album, comprising: a sheet of printer paper with at least two perforated parallel lines and at least two scored parallel lines that are substantially perpendicular to the perforated parallel lines, wherein the perforated parallel lines comprise a series of holes in the paper, and the scored parallel lines comprise a scratched surface along the paper; a first set of instructions for printing photographs between the perforated and scored lines on the sheet of printer paper; a second set instructions for separating the perforated paper along the perforated lines to form at least first and second strips of photographs; an adhesive that adheres an end of the first strip with an end of the second strip; and a third set of instructions for coupling the end of the first strip with an end of the second strip and folding the strips accordion-style along the scored lines. OPINION The Examiner finds that Teng teaches a system of producing a pocket- sized disposable photo album comprising a sheet of printer paper with at least two perforated parallel lines and at least two scored parallel lines that are substantially perpendicular to the perforated parallel lines. Ans. 10. In particular, the Examiner identifies (i) Teng’s business form 8 as the claimed sheet of printer paper; (ii) Teng’s severance lines 16 extending horizontally as the claimed perforated parallel lines; and (iii) Teng’s severance lines 16 extending vertically as the claimed scored parallel lines. Id. The Examiner explains “that it is well known within the art to use micro-perforations for Appeal 2012-011237 Application 12/247,307 3 the purpose of enabling the separation of individual cards after printing” and that “given the fibrous nature of paper, it itself is of a ‘scratched’2 design” and “that in the creation of microperforations, the paper will be further scratched by the cutting mechanism employed.” Id. at 10–11 (citing Teng, 1:24–27). The Examiner also identifies Teng’s adhesive backing strips 18 as the claimed adhesive that adheres an end of the first strip with an end of the second strip. Id. at 11. As to the claimed sets of instructions, the Examiner states that Teng teaches instructions for printing photographs between the perforated and scored lines on the sheet of printer paper, as well as instructions facilitating the positioning of indicia upon the panels. Id. (citing Teng, 2:7–11, 5:15– 27). The Examiner acknowledges that although Teng fails to teach instructions specifically (i) for separating the perforated paper along perforated lines to form strips of photographs or (ii) for coupling the ends of the strips and folding the strips accordion-style along the scored lines, the printed matter is not functionally related to the substrate and does not patentably distinguish the claimed invention. Id. (citing In re Gulack, 703 F.2d 1381, 1385–86 (Fed. Cir. 1983)). See also In re Ngai, 367 F.3d 1335, 1339 (Fed. Cir. 2004) (Ngai claimed a kit with reagents for performing a method and instructions on how the method was to be performed. The Federal Circuit held that the kit claim was anticipated by a prior art reference that taught a kit that included instructions and the reagents, even though the content of the instructions differed.). 2 Claim 13 states that “the scored parallel lines comprise a scratched surface along the paper.” Br., Claims App. Appeal 2012-011237 Application 12/247,307 4 Appellant argues that Teng’s teaching of “a sheet of printer paper that has been pre-severed into separate rectangular areas and has been temporarily held together for the purposes of printing” does not render obvious Appellant’s claimed invention. Br. 5. Appellant argues in particular that “Teng cleanly severs these rectangles prior to printing in order to avoid business cards having edges with the jagged look that comes from micro-perforation” and that a person of ordinary skill in the art would have to “go against the teaching of Teng to replace severed lines with the prior art perforated lines.” Id. (citing Teng, 1:24–44) (emphasis omitted). To the extent that the Examiner finds that Teng “discloses a sheet of printer paper (business form 08) with at least two perforated parallel lines (severance lines 16 extending horizontally, as shown in fig. 1 . . . ),” we determine this finding is not supported by the reference. Ans. 13. Rather, we agree with Appellant that Teng relies on precut cards having clean cut edges, rather than on the use of microperforation. Teng, 1:33–36, 58–61. To the extent that the Examiner’s rejection may rely on modification of Teng3 by the application of micro-perforations to Teng’s horizontal severance lines 16, we determine that the Examiner has failed to adequately articulate a rationale based on a rational underpinning as to why one of ordinary skill in the art would have been led to modify Teng to replace Teng’s precut, clean edge cards with those having micro-perforations. The Examiner relies on the purported teaching of Teng “that it is well known within the art to use micro-perforations for the purpose of enabling 3 See Ans. 14 (“Teng’s teaching of micro-perforations, when applied to both horizontal and vertical sets of severance lines 16, indeed teaches the ‘scored’ and ‘perforated’ lines that Applicant calls for in the first limitation of claim 13.”) Appeal 2012-011237 Application 12/247,307 5 the separation of individual cards after printing.” Ans. 13. The problem with relying on the purported well-known use of micro-perforations, as set forth in the Background of Teng, is that it completely overlooks Teng’s criticism and discouragement of the use of micro-perforation as resulting in jagged, unprofessional edges. The Examiner has not sufficiently explained how the teachings of micro-perforation could be applied to Teng’s pre- severed sheet of printer paper in a way that would have maintained Teng’s objective of achieving clean cut edges without the jagged look created by micro-perforations. Teng, 1:33–36. For the foregoing reasons, we do not sustain the Examiner’s rejection of independent claim 13, and claims 14–19 which depend therefrom. DECISION The Examiner’s decision to reject claims 13–19 is reversed. REVERSED Ssc Copy with citationCopy as parenthetical citation