Ex Parte Hengsbach

Board of Patent Appeals and Interferences

Nov 15, 2006

10315422 (B.P.A.I. Nov. 15, 2006)

The opinion in support of the decision being entered today
was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JEFFREY. L. HENGSBACH
_____________

Appeal No. 2006-2560
Application No. 10/315,422
Technology Center 3700
______________

HEARD: October 18, 2006
_______________

Before GROSS, LEVY, and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of claims
1 through 30 and 47 through 50. For the reasons stated infra we will sustain the
examiner’s rejection of claims 1 through 30 and 47 through 50.

Appeal No. 2006-2560
Application No. 10/315,422

THE INVENTION

The invention relates to a book cover. Claim 1 is representative of the invention
and is reproduced below:
1. A book cover comprising:
a substantially transparent sheet, said substantially transparent sheet having
opposite first and second surfaces and edges;
cover indicia applied to said second surface of said substantially transparent
sheet in a wrong-reading orientation;
an adhesive layer applied to said second surface of said substantially
transparent sheet; and
a frontpiece, a backpiece, and a spine piece positioned between said
frontpiece and backpiece, said pieces together defining a profile, each of said
frontpiece, said backpiece, and said spine piece having a first surface and a
second surface;
wherein said first surfaces of said frontpiece, said backpiece, and said spine
piece are adhered to said second surfaces [sic] of said substantially transparent
sheet such that said edges of said substantially transparent sheet project beyond
said profile of said frontpiece, said spine piece, and said backpiece are folded
over onto said second surfaces of said frontpiece, said backpiece, and said spine
piece and adhered thereto.

THE REFERENCES

The references relied upon by the examiner are:

Ranson 5,308,208 May 03, 1994
Learned 3,572,767 Mar. 30, 1971
Bilbie 6,481,127 Nov. 19, 2002 (Nov. 26, 1997)

Deschamps FR/ 2,328,576 May 21, 1977

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Application No. 10/315,422

THE REJECTIONS AT ISSUE
Claims 1, 2, 5 through 13, 16 through 24, 27 through 30 and 47 through 50 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Ranson in view of
Deschamps. Claims 3, 4, 14, 15, 25, and 26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ranson in view of Deschamps and Bilbie. Throughout the
opinion we make reference to the briefs and the answer for the respective details thereof.

OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the examiner
as support for the rejections. We have, likewise, reviewed and taken into consideration,
in reaching our decision, Appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments in rebuttal set forth in the
examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellant and the examiner, for the reasons
stated infra we will sustain the examiner’s rejection of claims 1 through 30 and 47
through 50 under 35 U.S.C. § 103.
Appellant argues, on pages 9 and 10 of the brief, that the rejection is improper as
there is no motivation to combine the Ranson reference with Deschamps. Appellant
argues that the proposed combination changes the principal operation of Ranson. On
page 10 of the brief, appellant asserts that Ranson and Deschamps deal with different
types of books and different unrelated problems and as such there is no reason one skilled
in the art would combine the teachings. On page 11 of the brief, appellant asserts that a
primary purpose of Ranson is “to provide a replacement book cover that does not exceed
the cost of originally purchasing the corresponding hardbound version of the book.”
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Application No. 10/315,422

Further, on page 11 of the brief, appellant states that Ranson teaches a book cover that
makes use of an opaque cover sheet. On pages 3 through 5 of the reply brief appellant
provides further arguments to support the conclusion that Ranson teaches using only an
opaque cover sheet. On page 12 of the brief, appellant summarizes the Deschamps
reference as teaching adding or laminating a transparent material over the exterior of
binder/catalog cover designs. Appellant asserts that Deschamps
“does not teach or suggest replacing, substituting or eliminating any
portion of the prior art constructions. The transparent sheet does not
improve and/or add durability to the physical structure of the existing
covers, but rather is a laminate or coating over the existing structure of the
cover.” (emphasis original)

On page 16 of the brief, appellant states that Ranson teaches that the outer sheet conceals
unbleached cardboard and contains artwork to identify the book, thus the sheet can not be
transparent. Based upon appellant’s conclusion that Ranson’s outer sheet can not be
transparent, appellant further concludes that there is no motivation for printing on the
inside sheet.
On pages 6 and 7 of the answer the examiner states:
[T]he Examiner submits that Appellant is clearly twisting the words of the
Ranson reference. Ranson clearly states (on Col. 4, lines 25-27) that the "cover
sheet can comprise any suitable material such as cloth, buckram or
thermoplastic material including a laminated polyester film material. Nowhere in
the Ranson reference does it disclose that the thermoplastic material utilized is
"opaque". Nowhere in the Ranson reference does it state that the cardboard
supports need to be "concealed", or that the cardboard supports are "unbleached".
Appellant seems to be making numerous erroneous assumptions in his arguments.
In fact Ranson states in Col. 4, lines 43-45, that the cardboard supports are made
from cardboard "although other suitable materials could also be utilized ..." The
Examiner further submits that it is well known to those skilled in the art that
"thermoplastic material" as well as the "polyester film" can be transparent. In
support of Examiner's statements of transparency, the examiner uses the Learned
(3,572,767) reference to disclose a book cover made of transparent
thermoplastic/polyester material laminate (Col. 5, lines 39-55 and Col. 6, line 1).
In response to Appellant's argument that since "the artwork must appear
on the exterior surface of the cover sheet to be useful, the printing must be right-
reading", the examiner submits that the Ranson reference clearly states that the
"outer surface of cover sheet (60) will generally include printing ...." As stated in
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Application No. 10/315,422

Examiner's office action, the disclosure wherein the printing "will generally" be
applied to the outer cover" [sic] does not restrict that indicia is not capable of
being printed or placed on the interior surface of the cover sheet. The
Examiner in turn uses the French Patent to only disclose wherein printing
can be placed on the interior surface of the cover in a wrong-reading
direction.
Therefore, the Examiner[‘s] rejections have been maintained. (emphasis
original)

Initially, we note that appellant’s arguments on pages 9 through 22 of the brief are
directed to the examiner’s findings regarding Ranson and Deschamps. As such we first
address appellant’s arguments directed to the examiner’s findings regarding the teachings
of the prior art and then we will address arguments directed to specific claims.
We concur with the examiner’s finding that Ranson teaches a method of binding
a book which makes use of a cover sheet, which is adhered to two support boards and a
spine board. See column 4, lines 61 through 63. Ranson teaches that the cover sheet may
be made of any suitable material, and lists several materials. We find that one skilled in
the art would recognize that suitable material refers to the materials’ ability to form hinge
regions 69 and provide a durable outer surface. See for example column 1, lines 60
through 62 which discuss durability, and column 4, lines 53 through 54 which discuss
hinge regions formed in a cover sheet. As appellant points out, several of the materials
discussed in Ranson are opaque. However, as the examiner points out, several of the
materials, i.e., thermoplastics and laminated polyester films are known to be available as
transparent materials, and it is known to use the transparent materials in a book cover.
The examiner has presented the Learned reference as evidence to show that one skilled in
the art would know that transparent thermoplastics and laminated polyester are used as
part of a book cover. Thus, while we do not find that Ranson teaches that the cover
material is transparent, we do not find that Ranson teaches that the cover material is
opaque. We find that Ranson teaches a method of making a cover and makes no
statement concerning the transparency of the cover sheet. We are not persuaded by
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appellant’s argument that the outer layer covers unbleached cardboard so therefore it
must be opaque. We note, that Ranson teaches that the support boards may be cardboard
and makes no mention as to the cardboard’s appearance. Further, Ranson by stating
other suitable material leaves open the use of other materials. We are not persuaded by
appellant’s argument that since Ranson teaches that the printing is on the outer layer, the
outer layer must be opaque. Printing on transparent or opaque materials are both known
in the art as evidenced by Deschamps. Deschamps teaches that it is possible to print on
the transparent sheet and the layer below the transparent sheet. See last paragraph of
Deschamps’ disclosure. For the forgoing reasons we disagree with appellant’s
conclusion that Ranson is limited to use of an opaque cover sheet, as we do not find that
the evidence supports such a conclusion.
We turn next to appellant’s arguments directed to modifying Ranson with
Deschamps’ teaching of a transparent sheet with wrong reading printing on the side of
the transparent sheet which will not be on the outside of the book cover. As stated above,
we do not find that Ranson’s teaching is limited to opaque covers, as such we do not find
that one skilled in the art would be discouraged from using the teachings of Deschamps.
Further, contrary to appellant’s arguments, Deschamps states that the cover has
“advantages concerning appearance and durability” and that the “transparent sheet is not
at all expensive and leads to only a small increase in cost price of the cover.” Thus, one
skilled in the art would recognize that the transparent sheet of Deschamps does improve
durability. Further, we do not consider that the skilled artisan would be deterred from
applying Deschamps’ teachings due to cost, as the added cost leads to only a small
increase in price, which one may consider to be justified when considering the protection
given to the printed material by placing it under the transparent sheet. Further, while
Deschamps and Ranson discuss different types of books, we do not find, nor has
appellant provided any convincing evidence to support the position, that one skilled in
the art would not apply the principals of protecting one type of book’s cover to other
types of books.

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Application No. 10/315,422

We find that Deschamps’ discussion of books, back of books, catalogs, brochures,
mechanical binders for loose-leaf paper as having similar construction suggests that one
skilled in the art would apply teachings for covering one type of book, to covers for other
types of books. Thus, we find that Deschamps’ teachings regarding using a transparent
sheet as part of the book cover to be combinable with Ranson’s book cover.
Appellant argues, on page 15 and 16 of the brief, that the examiner’s rejection is
in error as the coversheet in Ranson overlays the support boards and contains art work.
As such, appellant asserts that Ranson’s coversheet is opaque. Further, on pages 16 and
17 of the brief, appellant argues that, Deschamps teaches a transparent sheet added to
prior art construction, not replacing portions of the prior art construction. Appellant
asserts that one skilled in the art would not consider Ranson’s opaque coversheet to be
interchangeable with Deschamps’ transparent coversheet which provides no strength or
durability.
We are not persuaded by appellant’s arguments. Initially we note that appellant’s
arguments are not commensurate in scope with the claims. As discussed infra, we hold
that the scope of the claims is broad enough to include applying a transparent coversheet
over the coversheet of Ranson (i.e., the claims do not preclude a layer between the
coversheet and the frontpiece, backpiece and spine). Nonetheless, we find that one
skilled in the art, viewing both references would use the transparent cover sheet, with
wrong reading indicia, of Deschamps as the coversheet in Ranson’s book cover. As also
discussed supra, we do not find that Ranson’s teaching is limited to opaque coversheets
and leaves open the use of transparent coversheets. As discussed supra, Deschamps
teaches transparent coversheets have advantages in durability. Further Deschamps
teaches that printing information in a wrong reading manner (so that when the coversheet
is applied to a book cover the printing is under the transparent sheet) has the advantage of
protecting the printing. Thus, appellant’s arguments have not persuaded us of error in the
examiner’s rejection.
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Application No. 10/315,422

On pages 19 and 20 of the brief, appellant argues, that there is no motivation to
modify Ranson with Deschamps’ transparent cover sheet. Appellant asserts that “one
skilled in the art can not be assured that the thin transparent laminating sheet of the type
disclosed by the ‘576 [Deschamps] patent could successfully be used in the Ranson cover
without being scorched, distorted or damaged by the heated anvil or forming apparatus.”
On pages 19 and 20 of the brief, appellant asserts that the substitution of the Deschamps
coversheet for Ranson’s coversheet would defeat Ranson’s stated purpose of durability
and low cost. Further, on page 21 of the brief, appellant argues:
Moreover, volume purchasers such as libraries and schools would be discouraged
from laminating the Ranson cover sheet (60) with the '576 transparent sheet
because high volume use of the materials would cause the sheet to peel away
from the cover, crack and/or come loose from the outer surface of the Ranson
cover - lending to costly and time-consuming maintenance of the book collection
and/or requiring frequent replacement of the cover. Further, there is no reasonable
expectation that the Ranson cover sheet laminated with a transparent sheet layer
can be successfully formed into a flat back cover by the Ranson flat-back, casing
apparatus without damaging the transparent sheet or alternatively causing the
transparent sheet to separate, crack or peel away from the cover sheet (60) during
heated formation. Thus, such a modification clearly and unequivocally teaches
away from the present invention, which eliminates the need for lamination or UV
coatings. See Appellant's Specification, page 3, paragraph 9.

Appellant’s arguments on pages 19 through 22 of the brief have not persuaded us
of error in the examiner’s rejection. Initially we note that appellant’s arguments are
premised on Ranson teaching an opaque cover sheet, a conclusion with which we do not
agree or find to be supported by convincing evidence. As discussed supra, Ranson
teaches use of several materials for use as the cover sheet, and the examiner has provided
evidence that some of them are transparent. Ranson teaches that care should be taken in
selecting the temperature of the heating element to prevent scorching. See column 3,
lines 59 through 65. As Ranson’s selection of cover materials includes potentially
transparent materials, and there is no convincing evidence to establish that transparent
materials are any more susceptible to scorching than the similar non transparent
materials,
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Application No. 10/315,422

we do not consider that one skilled in the art would be discouraged from using the
transparent materials. Further, while we do not find that Ranson teaches a preference
between transparent or opaque materials for the coversheet, we do find that Deschamps’
teaching that the use of a transparent sheet with “the mirror image of the desired
presentation printed on its back side” so that the printing is protected and “sheltered from
friction” would motivate the skilled artisan to select the transparent cover material.
Further, regarding appellant’s arguments directed to delaminating and increased cost, we
find that Deschamps provides the motivation to choose one type of coversheet disclosed
by Ranson, with the property of being transparent. Thus, we do not find that the
combined teachings add any problems to the cover that are not already present in
Ranson’s invention. Further, inasmuch as the art also suggests using Deschamps’
transparent coversheet over the coversheet of Ranson, we do not find any evidence to
support a finding that such a book cover would be less durable than without the
transparent cover. Rather, Deschamps’ disclosure that the invention reduces friction on
the printing suggests that such a cover would be more durable. Accordingly, appellant’s
arguments on pages 19 through 22 of the brief have not convinced us of error in the
examiner’s rejection.
On pages 22 through 24 of the brief, appellant argues that the examiner’s
rejection improperly relies upon hindsight reasoning. On pages 6 through 8 of the reply
brief, appellant also argues that the examiner’s rejection is based upon hindsight
reasoning. Appellant states on page 24 of the brief:
As stated previously, the references teach away from substitution of the '576
transparent sheet for the durable cover sheet of Ranson. Accordingly, the
materials of construction taught by Ranson include only durable, opaque
materials in which the outer surface may include printing to identify the book,
see Col. 4, lines 29-31. While the Examiner asserts that this does not restrict that
the indicia is not capable of being printed on the inside surface, every cover
material recited in Ranson is opaque, there is simply no reason one skilled in the
art would bother printing on the second, inner surface thereof because the printing
would be covered up by the opaque material itself.

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Application No. 10/315,422

Further on pages 24 through 25 of the brief, appellant argues that one skilled in
the art would not be motivated to combine the references as the addition of a transparent
sheet would increase the cost of Ranson’s cover, the sheet is not intended to be formed
into a flat back cover and the Ranson cover, laminated with a transparent sheet, would
not be more durable than the cover of Ranson alone.
Appellant’s arguments, on pages 22 through 26 of the brief, do not persuade us of
error in the examiner’s rejection. As stated, supra, we do not find that Ranson is limited
to opaque cover sheets, and we find that Deschamps provides motivation to use a
transparent cover sheet. Further, with regard to cost and durability, we do not find any
evidence to support a finding that the transparency of the material used in Ranson has a
negative impact on price or durability. Further, given Deschamps’ statement regarding
laminating with a transparent sheet adding little cost in the situation where the
transparent sheet is in addition to an existing sheet, we do not find that the cost would
deter one from obtaining the benefit of protecting the printing/artwork on the book cover.
Additionally, as stated supra we find the suggestion in Deschamps that the transparent
sheet could be applied to covers of may types of books.
For the forgoing reasons, appellant’s arguments have not persuaded us of error in
combining Ranson and Deschamps in the rejection based upon 35 U.S.C. § 103.
On page 26 of the brief, appellant argues that “Claim 1 recites a book cover
comprising transparent sheet having indicia applied to the second surface thereof, with an
adhesive layer applied thereof and the frontpiece, spine piece and backpiece adhered to
the second surface of the transparent sheet.” Further, appellant states:
Conversely, in Ranson, the board pieces are adhered to the second surface of a
nonprinted, opaque cover sheet (60). Therefore, if one skilled in the art added a
transparent sheet of the type disclosed by the '576 patent over the exterior surface
of the opaque cover sheet (60), such a combination would not result in a book
cover comprising a transparent sheet having printing on the second surface
thereof and including front cover, spine and rear cover board pieces adhered to
the second surface thereof. Accordingly, Appellant asserts that it is clear that
these elements are not taught or suggested by the references relied upon by the
Examiner in the rejection of Claim 1 under 35 U.S.C. § 103.

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On pages 26 and 27 of the brief, appellant presents a statement of what claim 12
recites, and presents the same argument as applied to claim 1. On pages 27 through 30 of
the brief, appellant makes similar statements identifying the limitations recited in
independent claims 22, 47, 48 49 and 50, and presents the same argument.
We do not consider these statements to constitute arguments as to why the claims
are separately patentable under 37 C.F.R. § 41.67(c)(1)(vii) which states: “A statement
which merely points out what a claim recites will not be a separate argument for separate
patentability of the claim.” Accordingly, we group all of the claims rejected under 35
U.S.C. § 103 as being unpatentable over Ranson in view of Deschamps, claims 1, 2, 5
through 13, 16 through 24, 27 through 30 and 47 through 50 , and we select claim 12 as
the representative claim.
Claim 12 recites a “book cover” and does not limit the claim to any particular
type of book or manner of attaching the cover to the book. Therefore, we consider the
scope of this claim limitation to include any item that covers a book. Claim 12 further
recites a transparent sheet having two surfaces, wherein there is wrong reading indicia
applied to one side of the sheet and adhesive applied to the same side of the sheet as the
indicia. There are three pieces that are adhered to the sheet, by the adhesive, a front
board and back board and spine board between the boards. We find that one skilled in
the art would understand these boards to correspond to the locations in the front, back
and spine of the book. We do not find any limitation in claim 12 directed to these boards
being separate boards to which the sheet is adhered. Rather we hold that the scope of the
claim includes an assembly or a board with three sections that correspond to the locations
on the book (i.e., the board bent around the binding to make a soft cover book or bound
brochure).1

1 Given this broad interpretation, it appears that Deschamps alone anticipates claim12.
As shown in figure 1, transparent sheet 2 is adhered to synthetic material which forms the
outer surface (or board) of a book which has a front, back and binding section. Further,
placing Deschamps’ film over any book would appear to meet this claim as there is no
limitation that addresses the number of layers in the cover.
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Appeal No. 2006-2560
Application No. 10/315,422

The examiner finds, on page 3 of the Final Office action dated August, 25, 2005
(hereinafter Office action), that Ranson teaches a book cover with a film (item 60)
laminated (adhered) to two boards (items 66a and 66b) and a spine (item 68). On page 4
of the Office action the examiner finds that Deschamps teaches a book cover with a
transparent sheet that has mirror image printing on it an adhesive on the side with the
mirror image printing. On page 4 of the Office action, the examiner also finds that one
would be motivated to use the transparent cover as discussed by Deschamps for the
purpose of providing a book cover wherein the indicia on the cover is protected by the
transparent cover. As discussed, supra, we concur with the examiner’s finding that one
would be so motivated to use a transparent material with mirror image printing such as
taught by Deschamps for the film/sheet of Ranson. Further, as discussed, supra, we do
not find that Ranson’s teaching is limited to opaque materials for film item 60. For the
forgoing reasons, appellant has not convinced us of any error in the examiner’s rejection
of claim 12 or the claims grouped with claim12. Accordingly, we sustain the examiner’s
rejection of claims 1, 2, 5 through 13, 16 through 24, 27 through 30 and 47 through 50
under 35 U.S.C. § 103 as being unpatentable over Ranson in view of Deschamps.

Appellant’s brief presents no arguments directed to the rejection of dependent
claims 3, 4, 14, 15, 25, and 26 35 under U.S.C. § 103 as being unpatentable over Ranson
in view of Deschamps and Bilbie. Accordingly we sustain the examiner’s rejection of
claims 3, 4, 14, 14, 25 and 26 pro forma.
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Accordingly, we will sustain the examiner’s rejection, of claims 1 through 30 and
47 through 50 under 35 U.S.C. § 103. 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 CFR ' 1.136(a).

AFFIRMED

ANITA PELLMAN GROSS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh
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