Ex Parte George

Board of Patent Appeals and Interferences

Sep 14, 2009

11768663 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN W. GEORGE
____________

Appeal 2009-011132
Application 11/768,663
Technology Center 3700
____________

Decided: September 14, 2009
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-5, 28, and 29. Claims 6-9 stand allowed. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2009-011132
Application 11/768,663

STATEMENT OF THE CASE
Appellant’s invention is directed to a method of making a fanfolded
web of label products.
Claim 1, the sole independent claim on appeal, reads as follows
(emphasis added):

1. A method of making a fanfolded web label product from
an elongated liner having a plurality of labels removably
attached thereto at spaced locations along the length of the liner
by a pressure-sensitive adhesive, said method comprising the
steps of:

advancing the liner with its attached labels along a path of
travel;

while the liner with its attached labels is advancing along
said path, producing a series of transversely extending,
alternately oppositely indented creases in the liner at
predetermined spaces between the labels,

each of said creases being at least substantially devoid of
perforations; and

folding the liner with labels attached in opposite
directions about said creases to form a fanfolded stack having
alternating, reversely folded plies.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ashby 4,876,131 Oct. 24, 1989
Sager 5,030,192 Jul. 9, 1991
Demmel 6,290,635 B1 Sep. 18, 2001

2
Appeal 2009-011132
Application 11/768,663

The Examiner rejected claims 1, 28 and 29 under 35 U.S.C. § 102(b)
as anticipated by Ashby; claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Ashby and Sager; and claims 3-5 under 35 U.S.C. § 103(a) as
unpatentable over Ashby, Sager, and Demmel.
The 102 Rejection over Ashby
ISSUES
Has Appellant demonstrated error in the Examiner’s determination that
the method of claim 1 is anticipated by Ashby; specifically, does Ashby
describe a process that includes producing a series of transversely extending,
alternately oppositely indented creases in the liner and that each crease is “at
least substantially devoid of perforations”?
Has Appellant demonstrated error in the Examiner’s determination that
the method of claim 28, which requires that “each of said creases having
perforation cuts that collectively comprise no more than about 25% of the
length of the crease”, is anticipated by Ashby?
We answer the first question in the negative, the second in the
affirmative.
PRINCIPLES OF LAW
Anticipation is a question of fact. In re King, 801 F.2d 1324, 1326
(Fed. Cir. 1986). The inquiry as to whether a reference anticipates a claim
must focus on what subject matter is encompassed by the claim and what
subject matter is described by the reference. As set forth by the court in
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed.Cir.1983), it is
only necessary for the claims to “‘read on’ something disclosed in the
reference, i.e., all limitations in the claim are found in the reference, or ‘fully
met’ by it.”
3
Appeal 2009-011132
Application 11/768,663

It is well established that, when the prior art discloses a genus, a
species of that genus may be anticipated when the species is part of a well
delineated or limited class. See, In re Schaumann, 572 F.2d 312, 315 (CCPA
1978). A small genus can be a disclosure of each species within the genus.
In re Petering, 301 F.2d 676, 682 (CCPA 1962); see also Bristol-Myers
Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001)
(“[T]he disclosure of a small genus may anticipate the species of that genus
even if the species are not themselves recited.”).
FINDINGS OF FACT
Findings of fact throughout this opinion are supported by a
preponderance of the evidence.
Appellant’s Invention and Background
Appellant’s Figs. 1 and 2 are reproduced below:

4
Appeal 2009-011132
Application 11/768,663

Appellant’s Fig. 1 depicts the final fanfolded product with the final
fold lines/creases 18, whereas Fig. 2 depicts the intermediate product with
pre-fold creases 18.
Appellant’s Specification describes that

Fig. 3 is a schematic representation of equipment for producing
a fan-folded stack 10 in accordance with the present invention.
The primary pieces of equipment illustrated in Fig. 3 are
a modified high-speed narrow web label press 30 and a
downstream fan-folding machine 32. The press 30 has a special
creasing station 34 in accordance with the present invention but
may otherwise take the form of a conventional narrow web label
press. . . . One suitable fan-folding machine for performing the
function of fan-folding machine 32 is available from B. Bunch
Company, Inc. of Phoenix, Arizona as the Model 317. The
basic principles of such a machine are disclosed in U.S. Patent
4,522,619 which is hereby incorporated by reference into the
present specification.

(Spec. 5, para. [0025]; emphasis added).
U.S. 4,522,619 (patented June 11, 1985, incorporated by reference into
Appellant’s Specification; hereinafter Bunch,) describes that a general type
of paper folding machine that had previously gained “wide commercial
acceptance” was shown in US 3,086,768 (patented April 23, 1963,
hereinafter Lach) (see Bunch, col. 1, ll. 50-60). The commercial Lach
machine placed horizontal tension on the paper to “form folds” along lines of
perforations or weakening (id.).
Fig. 10 of Lach is reproduced below:
5
Appeal 2009-011132
Application 11/768,663

Fig. 10 of Lach depicts tucks (that is, alternately oppositely indented
pre-fold creases) at lines of weakening 137 prior to fanfolding the continuous
web of stationary in zigzag fashion. Lach disposes a series of transversely
extending, alternately oppositely indented pre-fold creases, or “tucks”, via
“tuckers 13 and 14”, before folding the continuous sheet of material into a
fanfolded stack having alternately, reversely folded plies (Lach, col. 7, l. 74
to col. 8, l. 5; Figs. 1, 10).
Ashby
Ashby describes a method for making a web label fanfolded product
that includes creasing and zigzag folding (that is, fanfolding):
The continuous finished product is then fed through a
creasing and folding station, schematically illustrated at 32,
whereby transverse creases are formed in the laminated stock to
enable the stock to be folded in zigzag fashion for disposition in
a container 34. It will be appreciated that the folding is
correlated to the cutting station 30 such that the crease lines are
formed between the form portions where the latter are separated
one from the other. It will also be appreciated that the carrier
sheet may be scored or perforated at longitudinally spaced
positions therealong to afford discrete paper sheets releasably
secured one to the other. The juncture between adjacent sheets
may preferably lie coincident with the crease lines or the
6
Appeal 2009-011132
Application 11/768,663

discrete sheets may be scored or perforated intermediate the
crease lines as desired.

(Ashby, col. 5, ll. 2-17; emphasis added).
One of ordinary skill in the art would have immediately understood
from the above passage that Ashby describes that the creases may be either
devoid of perforations, or may have perforations. One of ordinary skill in the
art would have also immediately understood that the creases of Ashby are not
per se “perforations” (or a score line), since such scoring or perforating is 1)
optional, and 2) may be “intermediate” the creases.
An artisan would have also appreciated there would have been a very
small genus of possible ways to form creases in a continuous web to enable it
to be folded in a zigzag fashion. One of ordinary skill in the art would have
immediately envisioned that the creases may be placed as “alternately
oppositely indented” pre-fold creases since Ashby describes that the
transverse pre-fold creases “enable the sheet to be folded in zigzag fashion”.
Accordingly, one of ordinary skill would have read the disclosure of Ashby
in context as describing forming alternately oppositely indented pre-fold
creases.
ANALYSIS
Anticipation is a question of fact. The inquiry as to whether a
reference anticipates a claim must focus on what subject matter is
encompassed by the claim and what subject matter is described by the
reference.
There is no dispute that Ashby describes a method that includes
folding the liner with labels attached in opposite directions about said creases
to form a fanfolded stack having alternating, reversely folded plies; rather,
7
Appeal 2009-011132
Application 11/768,663

Appellant argues that the creases are not substantially devoid of perforations
as claimed (App. Br. 11-17; Reply Br. 2-7). Appellant also disputes the
Examiner’s finding that the pre-fold creases are alternately oppositely
indented (id.) Appellant has submitted a declaration filed under 37 C.F.R. §
1.132 by Richard L. Tiller (the Tiller Declaration) in which Mr. Tiller gives
his opinion as to a skilled artisan’s conclusions regarding the teachings of
Ashby and asserts that Ashby does not describe all the claim limitations
(App. Br. 18). Appellant also relies upon two patents to exemplify that one
of ordinary skill in the art may interchangeably use the words “crease” and
“perforation” and “score” (App. Br. 17).
To the extent that Appellant, as well as Mr. Tiller, contends that Ashby
does not describe that the creases of Ashby have no perforations, we disagree
(see FF). Ashby clearly describes at least two alternatives, one wherein the
creases do not include perforations (or alternatively, scoring), and one
wherein the creases do include perforations (or, alternatively, scoring) (id).
Appellant’s remarks that the crease lines of Ashby are likely
perforations because they are described as between the form portions “where
the [latter] are separated from one another” (App. Br. 17) are not well taken,
since Ashby is merely referring to the separation of the forms portion 14 in a
cutting station 30 “into the desired configuration without cutting the paper
carrier sheet 12”, (Ashby, col. 4, l. 66 to col. 5, l. 1). This is a manufacturing
step which occurs prior to any creasing and folding steps, and is even
admitted by Appellant in the Background section of the Specification to be a
step which is “typically” performed (see, Spec. 1 [0003]).
One of ordinary skill would have read the disclosure of Ashby in
context as describing alternately oppositely indented pre-fold creases (see
8
Appeal 2009-011132
Application 11/768,663

FF). This finding is bolstered by the fact that the use of a machine to make
such creases (or tucks) to enable a continuous sheet to be folded in zigzag
fashion has “achieved wide commercial acceptance” since introduced in the
1960s, as discussed in the prior art incorporated by reference into Appellant’s
Specification (see FF). Moreover, the open-ended claim language
“comprising . . . a series of alternately oppositely indented pre-fold creases”
is inclusive of the first possible alternative described by Appellant (of
indentations on both sides of the liner in direct opposition to one another; see,
e.g., App. Br. 16; Reply Br. 3). Appellant’s proposed third alternative of the
creases merely being a perforation line is not consistent with the clear
teachings of Ashby. Thus, even assuming Appellant’s second proposed
alternative is feasible, Appellant has merely confirmed that there are a very
limited number of ways to crease a web to enable it to be folded in a zigzag
fashion.
We emphasize that there is no requirement in the law for a single
working example to disclose a claimed method in order to find anticipation.
For example, anticipation has been found in circumstances where the
anticipatory species was not specifically named in the reference, but could be
envisioned within the disclosed genus by the skilled worker upon reading the
reference's description. See e.g., In re Petering, 301 F.2d at 681; Sanofi-
Synthelabo v. Apotex Inc., 470 F.3d 1368, 1377 (Fed. Cir. 2006).
Dependent claim 29 is not separately argued by Appellant (App. Br.
22).
Therefore, Appellant has not shown that the Examiner reversibly erred
in rejecting claims 1, and 29 as anticipated by Ashby.
9
Appeal 2009-011132
Application 11/768,663

With respect to dependent claim 28, Appellant contends that Ashby
does not describe that “each of said creases having perforation cuts that
collectively comprise no more than about 25% of the length of the crease”
(App. Br. 21-22). We agree with Appellant that this claim requires that there
must be some perforation cuts, but the cuts may not exceed 25% of the length
of the crease (id.). While Ashby describes that the creases may either have
perforations or may not have perforations, the Examiner has not explained
how Ashby describes that each crease (that is, of each of the final folds in the
fanfolded product) has perforations that comprise no more than 25% of the
length of the crease (i.e., the final fold).
Accordingly, we are constrained by these circumstance to reverse the
Examiner’s rejection of claim 28 under 35 U.S.C. § 102(b) based on Ashby.

The 103 Rejection of claim 2 based on Ashby and Sager
Dependent claim 2 requires that the creases are “totally devoid of
perforations”, which is an alternative described by Ashby as discussed above.
Appellant contends that Sager does not describe this feature (App. Br. 22).
The Examiner contends fold lines 18 of Sager are creases without
perforations or alternately perforations (Ans. 4, 7). However, Sager is not
necessary to teach this feature, since it is an alternative described in Ashby
(see FF). Since anticipation is the epitome of obviousness, we conclude that
claim 2 would have been obvious over Ashby. In re Fracalossi, 681 F.2d
792, 794 (CCPA 1982).

The 103 Rejection of claims 3-5 based on Ashby, Sager, and Demmel
10
Appeal 2009-011132
Application 11/768,663

It is elementary that to support an obviousness rejection, all of the
claim limitations must be taught or suggested by the prior art applied (see In
re Royka, 490 F.2d 981, 984-85 (CCPA 1974)) and that all words in a claim
must be considered in judging the patentability of that claim against the prior
art ( In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)).
Appellant contends that neither Ashby, Sager, nor Demmel disclose
the “cushions” required by dependent claim 3 (App. Br. 24), nor the features
recited in claims 4 and 5 which each depend from claim 3 (see, e.g., App. Br.
25). We agree that it is not apparent that any of the references describe or
suggest these features. The Examiner did not: a) point to any disclosure in
any of these references as corresponding to the recited “cushions”; b)
articulate any reasons why the claimed “cushions” would have been obvious
to one of ordinary skill in the art, and; c) respond to Appellant’s argument
(see generally Ans.). The Examiner likewise does not point to any disclosure
in any of these references for the “circumferentially spaced voids between
the cushions” recited in dependent claim 5 (id.).
Accordingly, we reverse the Examiner’s rejection of claims 3-5 based
on the combined prior art of Ashby, Sager, and Demmel.
DECISION
The Examiner’s decision to reject claims 1, and 29 under 35 U.S.C. §
102(b) as anticipated by Ashby is affirmed.
The Examiner’s decision to reject claim 28 under 35 U.S.C. § 102(b)
as anticipated by Ashby is reversed.
The Examiner’s decision to reject claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Ashby and Sager is affirmed.
11
Appeal 2009-011132
Application 11/768,663

The Examiner’s decision to reject claims 3-5 under 35 U.S.C. § 103(a)
as unpatentable over Ashby, Sager, and Demmel is reversed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
tc

HOVEY WILLIAMS LLP
10801 MASTIN BLVD., SUITE 1000
OVERLAND PARK, KS 66210

12