Ex Parte Hengsbach

Board of Patent Appeals and Interferences

Jun 30, 2011

10454333 (B.P.A.I. Jun. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEFFREY L. HENGSBACH
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Appeal 2010-003716
Application 10/454,333
Technology Center 3700
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Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-20, 28, 55, and 59-67, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a removable book jacket. Claim 1 is
illustrative:

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1. A removable book jacket for covering the integral cover of
a bound book, said book jacket comprising:

a substantially transparent sheet, said substantially transparent sheet
having opposite first and second surfaces, and an overall surface area
including a front flap portion, a front cover portion, a spine portion, a back
cover portion, and a back flap portion, said front and back flap portions
configured to removably attach to the integral book cover of the bound
book; and

at least one layer of wrong-reading indicia applied to said second
surface of said substantially transparent sheet within one of the front flap
portion and the back flap portion, said indicia corresponding to information
designated to be visible in right-reading orientation from said first surface of
said substantially transparent sheet; wherein each of said front flap and back
flap portions may be removably secured to the integral book cover when
said book jacket is installed on the book.

The References
Deschamps (as translated) FR 2,328,576 May 21, 1977
Barnette 5,183,295 Feb. 2, 1993
Golson 5,851,031 Dec. 22, 1998
Bilbie 6,481,127 B1 Nov. 19, 2002
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
3, 6-11, 14-20, 28, 29, 55, and 59-66 over Golson in view of Deschamps and
Barnette,1 and claims 4, 5, 12, 13, and 67 over Golson in view of
Deschamps, Barnette, and Bilbie.

1 Claims 60-63 are omitted from the Examiner’s statement of this rejection
(Ans. 3). The Examiner’s discussion of claims 60, 62, and 63 in the
explanation of the rejection (Ans. 5-6) indicates that the omission was
inadvertent. Accordingly, we consider the omitted claims to be rejected.
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OPINION
We affirm the rejections.
The Appellant claims a book jacket comprising a substantially
transparent sheet having wrong-reading indicia on a flap’s underside which
is visible in right-reading orientation from the flap’s outer side.2
Golson discloses that transparent book jackets and book jackets
having printed information on their exterior surfaces were known in the art
(col. 1, ll. 14-19, 28-32).
Deschamps discloses that printing inks applied to book covers are
fragile and become blurred and erased by being rubbed (p. 44). Deschamps
glues onto a book cover’s entire surface a transparent sheet having the
printing ink on its underside in wrong-reading orientation such that it reads
in right-reading orientation when viewed through the transparent sheet,
thereby protecting the printing ink from friction (pp. 44-45). The printing
ink applied to the underside of the transparent sheet appears with greater
clarity than printing ink on a cover over which a transparent sheet has been
applied (p. 44).3

2 The Appellant’s Specification states that “[t]he second surface of the sheet
will become the interior or inner surface of the book jacket which faces the
book cover and is concealed when it is in place on the book” (Spec. 3:13-
16).
3 Barnette, which is relevant to dependent claims 3, 11, and 65 which the
Appellant does not separately argue, discloses a book’s dust cover
comprising a laminate having, as its outer layer, a transparent polyester sheet
or film (col. 1, ll. 6-7; col. 2, ll. 27-28). Bilbie, which is applied to
dependent claims 4, 5, 12, 13, and 67 which the Appellant does not
separately argue, discloses an erasable product such as a rewritable label or a
reusable sign, comprising a tinted upper sheet (col. 1, ll. 40-41; col. 2, ll. 19-
20).
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The Appellant argues, in reliance upon KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007), that there would have been no apparent reason for
one of ordinary skill in the art to combine Golson and Deschamps (Br. 23,
27-28).
The reason which would have been apparent to one of ordinary skill in
the art for applying printing ink to the prior art transparent jacket disclosed
by Golson (col. 1, ll. 14-18, 28-32) on its underside in wrong-reading
orientation would have been to obtain the benefits disclosed by Deschamps
of applying printing ink to the underside of a transparent sheet placed over a
book cover, i.e., to provide the information more clearly than it would
appear if printed onto the book’s underlying cover and to protect the ink
from friction (pp. 44-45). Such a modification would have required no more
than ordinary creativity by one of ordinary skill in the art. See KSR, 550
U.S. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton”).
The Appellant argues that the Examiner misinterpreted Golson which,
the Appellant argues, requires that the book jacket is opaque (Br. 24, 27-28;
Reply Br. 3-4). The Appellant argues that one of ordinary skill in the art
would not have replaced Golson’s book jacket with a transparent sheet
because doing so would completely alter its structural durability, operational
purpose and intended function but, rather, in view of Deschamps perhaps
would have added a transparent cover sheet over Golson’s book jacket
(Br. 26-27).
Golson’s invention is “a book jacket with flaps folding over the front
and rear covers of a book, having informative indicia located on the inner
surface of the flaps such that when the flaps are folded out, the informative
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indicia will be positioned alongside the book and will be concurrently visible
to the user as he views the pages of the book” (col. 2, ll. 29-35). Although
the Examiner referred to a portion of Golson’s description of the invention
(Ans. 4), the rejection is based upon Golson’s disclosed prior art transparent
book jacket (Ans. 3-4, 7-8). The Appellant does not specifically challenge
the Examiner’s argument (Ans. 4) that it would have been obvious to one of
ordinary skill in the art, in view of Deschamps, to apply printing ink in
wrong-reading orientation to the underside of Golson’s disclosed prior art
transparent book jacket. The Appellant merely points out that “[t]he passage
at column 1, lines 14-19 of the Golson reference, relied upon by the
Examiner to show transparency, does not relate to the invention of the
Golson reference to which the Examiner then refers” (Reply Br. 3).
Accordingly, we affirm the rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 3, 6-11, 14-20, 28,
29, 55, and 59-66 over Golson in view of Deschamps and Barnette, and
claims 4, 5, 12, 13, and 67 over Golson in view of Deschamps, Barnette and
Bilbie are affirmed.
It is ordered that the Examiner’s decision 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

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