Ex Parte Hester et al

Patent Trial and Appeal Board

Nov 22, 2013

11425139 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/425,139 06/19/2006 Pam Hester 1702.012.01 8759
64935 7590 11/25/2013
TILLMAN WRIGHT, PLLC
P.O. BOX 49309
CHARLOTTE, NC 28277-0076
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
11/25/2013 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 PAM HESTER, DEBORAH H. MANCE,
IAN D. KOVACEVICH, MARY LAVALLEY,
DANIEL LEE BIZZELL, TOM PHILPOTT,
and BARRY HESTER
____________

Appeal 2012-000186
Application 11/425,139
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN
STAICOVICI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pam Hester, Deborah H. Mance, Ian D. Kovacevich, Mary LaValley,
Daniel Lee Bizzell, Tom Philpott, and Barry Hester, (Appellants) seek our
review under 35 U.S.C. § 134(a) of the rejection of claims 1-6 and 16-42.
Claims 7-15 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
REAL PARTY IN INTEREST
Edison Nation, LLC, a limited liability company organized under the
laws of the State of North Carolina, is the real party in interest of the present
application. An assignment of the present application to Edison Nation,
LLC was recorded by the U.S. Patent and Trademark Office on November
12, 2008, at Reel 021824, Frame 0014.

THE INVENTION
Appellants’ invention is directed to a method and apparatus for
securing an arrangement of loose elements of a scrapbooking page in a
particular arrangement on the scrapbooking page. Independent claims 1 and
20, reproduced below, are representative of the claimed subject matter:

1. An apparatus for securely holding and
protecting a layout of elements for a
page of a scrapbook, comprising:

(a) a portfolio having first and second work
surfaces, a width and height of each
work surface exceeding a width and height of a
scrapbooking page;

(b) a first overlay having a width and height each
of which exceeds the width and
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height of a scrapbooking page;

(c) a second overlay having a width and height
each of which exceeds the width and
height of a scrapbooking page;

(d) wherein, said first overlay and said second
overlay are each removably and
interchangeably attachable to each of said first and
second work surfaces such
that

(i) when said first overlay is positioned on
said first work surface in covering relation
to said first work surface, said first overlay
and said first work
surface are releasably cohered together,

(ii) wherein, when said second overlay is
positioned on said second work surface in
covering relation to said second work
surface, said second
overlay and said second work surface are
releasably cohered together,

(iii) when said second overlay is positioned
on said first work surface in covering
relation to said first work surface, said
second overlay and said first work surface
are releasably cohered together, and

(iv) when said first overlay is positioned on
said second work surface in covering
relation to said second work surface, said
first overlay and said
second work surface are releasably cohered
together.

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20. A method of securing an arrangement of loose
elements of a scrapbooking page in a particular
arrangement on the scrapbooking page, comprising
the steps of:

(a) positioning the draft scrapbooking page on top
of a work surface;

(b) positioning the elements of the scrapbooking
page on top of the draft scrapbooking page in a
particular arrangement;

(c) permanently affixing, using an adhesive, one
element of the elements of the scrapbooking page
to the draft scrapbooking page;

(d) positioning an overlay on top of the elements
of the scrapbooking page without altering the
particular arrangement, wherein the overlay
coheres to the work surface and retains the
elements of the scrapbooking page in the particular
arrangement on the scrapbooking page.

THE REJECTION
Appellants appeal from the rejection of claims 1-6 and 16-42 under 35
U.S.C. § 103(a) as being unpatentable over Lee (US 7,234,259, issued June
26, 2007).

ANALYSIS
(i) Claims 1-6, 16-19, 37and 39-42--Obviousness--Lee
Appellants present claims 1-6, 16-19, 37 and 39-42 under a first
heading in the Appeal Brief. App. Br. 9.
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Independent claim 1 recites a portfolio having first and second work
surfaces and first and second overlays, and further recites that the first and
second overlays are each removably and interchangeably attachable to each
of the first and second work surfaces.
Lee teaches a first planar sheet 110 and a second planar sheet 120 that
are connected by three side walls, 130, 140 and 160. Lee, col. 3, l, 48-col. 4
l. 4; figs. 1, 2. The walls may be integrally formed with either the first or
second planar sheets; and these integrally formed pieces are then affixed to
the remaining first or second planar sheet using conventional attachment
methods, including heat sealing, sonic welding, plastic welding, use of one
or more adhesives, and the like. Id. Alternatively, the walls may be
separately formed and subsequently attached to one another and to the first
planar sheet and second planar sheet using the foregoing conventional
methods. Id.
The Examiner asserts that first and second planar sheets 110 and 120
of Lee can be characterized as the first overlay and the first work surface set
forth in claim 1. Ans. 5. And to the extent that Lee provides that one or
more instances of its album page protector device can be disposed into an
album, Appellants’ first and second work surfaces and first and second
overlays are satisfied by the instance where there is more than one album
page protector device disclosed in Lee. Id.
The Examiner further maintains that the first and second planar sheets
110, 120 disclosed in Lee are “releasably cohered together,” citing to Lee at
col. 3, ll. 66-col. 4, l. 4. Ans. 5-6.
While the Examiner admits that Lee fails to explicitly disclose first
and second overlays and work surfaces that are “removably and
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interchangeably attachable to one another,” he maintains that given the
construction of Lee, it would have been obvious to a person of ordinary skill
in the art at the time of the invention to interchange the first planar sheets
with second planar sheets as doing so would not structurally alter the
invention or the operation thereof. Ans. 6. According to the Examiner,
given that each of the album page protectors disclosed in Lee is identical, the
first planar sheet 110 and the second planar sheet 120 of a first album
protector will match the first planar sheet 110 and second planar sheet 120 of
a second album page protector thus rendering the first and second planar
sheets of the respective album page protectors “interchangeably attachable.”
Id.
Appellants contend Lee fails to disclose or suggest first and second
overlays, much less such first and second overlays that are removably and
interchangeably attachable to first and second work surfaces. App. Br. 9.
Appellants first argue that Lee fails to disclose or suggest that the planar
sheets 110, 120 are releasably or removably secured to one another.
According to Appellants, Lee only discloses embodiments in which planar
sheets 110,120 are permanently attached to one another and the portion of
Lee at column 3, line 66 to column 4, line 4 cited by the Examiner merely
discloses use of conventional attachment methods to attach planar sheets
110, 120 to the walls, and thus to each other. App. Br. 10.
With respect to interchangeability, Appellants argue that because Lee
does not disclose the planar sheets being removably attached, the fact that
the planar sheets 110 disclosed in Lee could be switched during construction
of the Lee protectors, does not have any bearing as to whether Lee discloses
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first and second overlays that are “removably and interchangeably”
attachable to the first and second work surfaces. App. Br. 11.
In response, the Examiner maintains that the language in claim 1
reciting that the overlays and work surfaces be “removably and
interchangeably attachable” requires only that these elements be merely
“capable” of being removed from one another and “capable” of being
interchanged with each other. Ans. 15. In identifying this alleged
capability, the Examiner urges that when adhesive is used to attach planar
sheet 110 to second planar sheet 120, the adhesive may be dissolved if
desired in order to separate the sheets, thus rendering sheets that are
“removably attached.” Ans. 16.
Interpreting the claim term “removably” to mean merely being
capable of being removed so as to encompass dissolution of the adhesive or
disruption of other conventional and generally permanent attachment
methods identified in Lee does not give appropriate weight to the meaning
of that term and is not consistent with the nature of the attachment method
disclosed by Appellants. See Bicon, Inc. v. Straumann Co., 441 F.3d 945,
950 (Fed. Cir. 2006) and In re Danly, 263 F.2d 844, 847 (CCPA 1959)
(appellant has used such phrases as “for holding” and “for insulating”
throughout the appealed claims with the obvious intention of limiting them
to actual performance of the stated functions, as distinguished from mere
possibility of such performance). The Examiner’s interpretation essentially
renders the terms in the claims superfluous as most attachment methods are
capable of being removed if exposed to some outside destructive force.
Thus, the Examiner’s interpretation is unreasonably broad as it effectively
would expunge the term “removably” from the claim language. See Stumbo
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v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
(denouncing claim constructions that render phrases in claims superfluous).
Additionally, the Examiner’s interpretation is inconsistent with
respect to how persons of ordinary skill in the art would understand the term
“releasably” in light of the Specification, which discloses that the overlay
and the work surface or cover are releasably cohered together by magnetic
forces. Specification p. 5. ll. 8-9. In view of the repeatable, non-destructive,
releasable nature of magnetic forces, the Examiner’s overbroad
interpretation of the term which results in the destruction of the attachment
method is not reasonable. Claim 1 should be construed as being limited to
an apparatus in which the sheets and work surfaces are “removably”
attached, i.e., in a manner that does not require dissolution or destruction of
the conventional attachments taught in Lee.
In view of the foregoing, the rejection of claim 1, and of claims 2-6,
16-19, 37, and 39-42 which depend directly or indirectly from claim 1, as
being unpatentable over Lee, is not sustained.
(ii) Claims 20-29--Obviousness--Lee
Appellants next argue claims 20-29 as a group, with claim 20 being
representative of this grouping. App. Br. 11. We accept claim 20 as
representative, and therefore, claims 21-29 will stand or fall with claim 20.
Independent claim 20 addresses a method for securing an arrangement
of loose elements onto scrapbooking pages including the steps of positioning
a draft scrapbooking page on top of a work surface, positioning elements on
the scrapbooking page, permanently affixing one element to the draft
scrapbooking page using an adhesive, positioning an overlay on top of the
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elements placed on the scrapbooking page without altering the arrangement
and wherein the overlay coheres to the work surface.
Lee teaches a three-dimensional album page protector having a door
assembly that can be releasably secured in a closed position. A planar sheet
420 may be inserted into the page protector via the door assembly. See Lee,
Figs. 3 and 4.
According to the Examiner, when sheet or scrapbooking page 420 is
inserted into the album page protector disclosed in Lee, planar sheet 110
constitutes an overlay that is positioned on top of objects or elements
mounted on sheet 420, and the planar sheet 110 coheres to the second planar
sheet or work surface 120. Ans. 8.
Appellants contend that even assuming sheet 420 is considered to be a
scrapbooking page having elements thereon, and planar sheet 110 could be
characterized as an overlay, Lee fails to disclose or suggest the step of
positioning first planar sheet 110 on top of sheet 420 because planar sheet
110 is already attached to the rest of the album page protector in Lee.
Appellants’ argument essentially relies on the sequential performance of the
steps identified as (a)-(d) set forth in its claim.
The Examiner’s response to Appellants’ argument is that when the
sheet 420 is inserted into the album page protector in Lee, the first planar
sheet 110 is positioned on top of sheet 420. Ans. 17. That is, the
positioning of the first planar sheet 110 on top of sheet 420 described in step
(a) is performed simultaneously with the positioning of the sheet 420 on top
of second planar sheet or work surface 120 set forth in step (d).
Inasmuch as claim 20 does not recite that the steps of the methods set
forth therein are to be performed in any particular sequence, Appellants’
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argument does not persuade us of error in the Examiner’s position that Lee
discloses or suggests, the method recited in claim 20.
In view of the foregoing, the rejection of claim 20 as being
unpatentable over Lee is sustained. Claims 21-29 fall with claim 20.
(iii) Claims 30-33--Obviousness--Lee
Appellants and the Examiner rely on the same interpretations of the
cited Lee reference as made above in connection with claim 1. We note that
claim 1 calls for first and second overlays that are each “removably . . .
attachable” to the first and second work surfaces as previously discussed,
while claim 30 calls for the overlay to be “releasably cohered” to the work
surface. In the context of the Appellants’ Specification and claims, we view
the meaning of these different terms contained in claims 1 and 30 to be
essentially synonymous for purposes of determining whether the cited prior
art reaches Appellants’ claimed device.
Therefore, for the same reasons the rejection of claim 1 was not
sustained above, the rejection of claims 30-33 as being unpatentable over
Lee is not sustained.
(iv) Claims 34, 35 and 38--Obviousness--Lee
Inasmuch as claim 34 depends from claim 1, and claims 35 and 38
depend from claim 34, for the same reasons the rejection of claim 1 over Lee
was not sustained in section (i) above, the rejection of claims 34, 35 and 38
is also not sustained.
(v) Claim 36--Obviousness--Lee
Dependent claim 36 depends from claim 34. Inasmuch as claim 34
depends from claim 1, for the same reasons the rejection of claim 1 over Lee
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was not sustained in section (i) above, the rejection of claim 36 is also not
sustained.
DECISION
The decision of the Examiner to reject claims 1-6, 16-19, and 30-42
under 35 U.S.C. § 103(a) as being unpatentable over Lee is reversed.
The decision of the Examiner to reject claims 20-29 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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