Ex Parte Hoarau

Board of Patent Appeals and Interferences

Mar 24, 2008

10225253 (B.P.A.I. Mar. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC HOARAU
____________

Appeal 2007-4274
Application 10/225,253
Technology Center 3700
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Decided: March 24, 2008
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
BIBHU R. MOHANTY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL 1
STATEMENT OF THE CASE 2
Eric Hoarau (Appellant) appeals under 35 U.S.C. § 134 from the 3
Examiner’s decision rejecting claims 1-21, which are all of the claims in the 4
application. We have jurisdiction over this appeal under 35 U.S.C. § 6 5
(2002). 6
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The Invention 1
Appellant’s claimed invention is directed to a system and method for 2
producing a bound media body (Specification, ¶ 1). The system and method 3
utilizes individually folded sheets of media having cuts on the folded edges, 4
thereby allowing adhesive to penetrate into the folded sheets (Specification, 5
¶ 8). Claim 1, reproduced below, is illustrative of the claimed invention. 6
1. A method for producing a bound media body 7
comprising: 8
providing sheets of media to be processed; 9
making cuts in said sheets of media along a 10
predefined line; 11
individually folding each of said sheets of 12
media along said cuts such that said cuts are on 13
folded edges of said sheets of media to produce 14
single folded sheets of media; and 15
applying an adhesive material onto said 16
folded edges of said single folded sheets of media 17
to bind said single folded sheets of media to form 18
said bound media body. 19
20
The Rejection 21
Claims 1-21 stand rejected under 35 U.S.C. § 102(b) as anticipated by 22
Bellanca (US 5,655,866, issued August 12, 1997).1 23
The Examiner provides reasoning in support of the rejection in the 24
Answer (mailed October 27, 2004). Appellant presents opposing arguments 25

1 We understand the Examiner’s statement that this is the only issue (Answer
2) to mean that the Examiner has withdrawn the alternative rejection of
claims 1-21 under 35 U.S.C. § 103(a) as unpatentable over Bellanca in view
of Holmberg (US 4,975,011) set forth in the Final Rejection (mailed
February 10, 2004).
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in the Appeal Brief (filed July 9, 2004) and Reply Brief (filed December 23, 1
2004). 2
3
THE ISSUE 4
The issue involved in this appeal is whether Bellanca teaches 5
individually folding each of said sheets of media to produce “single folded 6
sheets of media,” as called for in independent claims 1 and 18, and a folding 7
unit configured to individually fold each of said sheets of media to produce 8
“single folded sheets of media,” as called for in independent claim 10. This 9
issue turns on the construction of the claim terminology “single folded 10
sheets.” 11
12
THE FACTS 13
1. Bellanca teaches providing sheets of paper, or signatures-in-the-flat, 14
having pages of viewable and/or readable indicia printed thereon (col. 15
3, ll. 12-15; fig. 4). 16
2. Bellanca teaches making perforations along at least one fold line 44, 17
46, 48 or 48a (the centerline), and 50 (col. 4, ll. 12-23; fig. 4). 18
3. Appellant does not dispute that Bellanca teaches providing sheets of 19
media to be processed, making cuts in said sheets of media along a 20
predefined line, and a cutting unit configured to make cuts in sheets of 21
media along a predefined line, as required in independent claims 1, 22
10, and 18. 23
4. Bellanca teaches folding the sheets of paper within a folding machine 24
10 (fig. 1), initially along fold lines 44 and 46 to form a twice folded 25
signature 40, then about fold line 48 to produce a three-times folded 26
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signature 45. Bellanca also teaches a conventional method of folding 1
in which each signature-in-the-flat 16 is received into a folding 2
machine 10, which folds the signature halfway down its length “a 3
number of times until the correct page size for the book and the 4
correct sequence of page numbering is obtained”2 (col. 1, ll. 24-28; 5
col. 3, ll. 16-19). In the illustrated conventional method (fig. 1), the 6
signature-in-the-flat is folded about center fold line 16a to form a once 7
folded signature 20, then about fold line 20a to become a twice folded 8
signature 22, and finally about fold line 22a to form a completely 9
folded signature 24 (col. 3, ll. 19-25).3 10
5. Bellanca teaches stacking several folded signatures atop one another 11
in a proper sequence to form a book (col. 3, ll. 31-34). Bellanca 12
further teaches applying adhesive either to edges formed by fold lines 13
44, 46 or to the edge formed by fold line 48, whichever is to be the 14
bound edge. The perforations in the fold line(s) for the bound edge(s) 15
allow adhesive penetration (col. 4, ll. 13-23). 16
17
DISCUSSION 18
When construing claim terminology in the United States Patent and 19
Trademark Office, claims are to be given their broadest reasonable 20
interpretation consistent with the specification, reading claim language in 21

2 The “number of times” would be one where the correct page size for the
book is half that of the signature-in-the-flat.
3 The fold lines in Bellanca’s Figure 2 appear to be labeled in a manner
inconsistent with the written disclosure. The fold lines in Bellanca’s Figure
1 are consistent with Bellanca’s written disclosure of the conventional
folding method.
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light of the specification as it would be interpreted by one of ordinary skill in 1
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2
2004). In doing so, we must be careful not to read a particular embodiment 3
appearing in the written description into the claim if the claim language is 4
broader than the embodiment. See Superguide Corp. v. DirecTV 5
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though 6
understanding the claim language may be aided by the explanations 7
contained in the written description, it is important not to import into a claim 8
limitations that are not a part of the claim. For example, a particular 9
embodiment appearing in the written description may not be read into a 10
claim when the claim language is broader than the embodiment.”) 11
We begin our analysis by construing the claim language at issue in 12
this appeal, namely, the phrase “single folded sheets.” Appellant’s position 13
appears to be that this phrase requires sheets that have been folded once and 14
only once (Appeal Br. 4-5; Reply Br. 2). The Examiner, on the other hand, 15
interprets this phrase as encompassing singular sheets folded multiple times 16
(Answer 4). For the reasons that follow, we agree with the Examiner. 17
The term “single” is an adjective generally understood to mean “a) 18
one only; one and no more; individual” or “b) separate and distinct from 19
others of the same kind.” Webster's New World Dictionary 1329 (David B. 20
Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984). The term 21
“folded” is a past participle used as an adjective. Lynn Whitman Troyka & 22
Douglas Hesse, Quick Access Reference for Writers 336 (5th ed., Pearson 23
Education, Inc. 2007). Adjectives modify nouns and pronouns; adverbs, on 24
the other hand, modify adjectives, as well as verbs, adjectives, and 25
independent clauses. Id. at 377. We thus conclude that the adjective 26
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“single” must modify the term “sheets” in the phrase “single folded sheets”4 1
recited in independent claims 1, 10, and 18. We further conclude that the 2
term “single” in claims 1, 10, and 18 defines the folded sheets as being 3
individual, or separate and distinct from other folded sheets. This is 4
consistent with the preceding language “individually folding” in claims 1 5
and 18 and “individually fold” in claim 10. This is also consistent with 6
Appellant’s description of “individually folded sheets” (Specification, ¶ 8). 7
Therefore, we do not agree with Appellant that an interpretation of “single” 8
as modifying “sheets,” a plural noun, is unreasonable (Reply Br. 2). 9
In light of the above, we construe the phrase “single folded sheets” in 10
claims 1, 10, and 18 to mean individual folded sheets. We find no limitation 11
in claims 1, 10, and 18 that these sheets are folded once and only once. 12
Accordingly, the Examiner correctly construes the phrase “single folded 13
sheets” as encompassing sheets that have been folded multiple times. 14
Although Appellant’s Specification discloses a single folded sheet of media 15
402 that has been folded only once (fig. 4; Specification, ¶¶ 23-25), 16
Appellant’s claims are broader than that embodiment. It is well established 17
that limitations not appearing in the claims cannot be relied upon for 18
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). 19
Bellanca teaches providing sheets of media to be processed, making 20
cuts in said sheets of media along a predefined line, and a cutting unit 21
configured to make cuts in sheets of media along a predefined line, as 22
required in independent claims 1, 10, and 18 (Facts 1 and 2). Appellant does 23

4 This is in contrast to the phrase “once folded signature” used by Bellanca
(col. 3, l. 21), wherein the term “once” is an adverb modifying the adjective
“folded.”
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not dispute that Bellanca teaches these elements of claims 1, 10, and 18 1
(Fact 3). Bellanca also teaches individually folding each of the sheets, or 2
signatures-in-the-flat, along fold lines, at least one of the fold lines being 3
along the predefined, perforated (cut) line (Fact 4), to form individual 4
(single) folded sheets. Bellanca further discloses stacking several folded 5
signatures atop one another in a proper sequence to form a book and 6
applying adhesive material onto the folded edges of said individual (single) 7
folded sheets (Fact 5), a fact not disputed by Appellant. 8
For the reasons discussed above, Appellant fails to demonstrate the 9
Examiner erred in rejecting independent claims 1, 10, and 18 as anticipated 10
by Bellanca. We thus sustain the rejection of claims 1, 10, and 18, as well as 11
dependent claims 2-9, 11-17, and 19-21, which Appellant does not argue 12
separately from independent claims 1, 10, and 18. See 37 C.F.R. 13
§ 41.37(c)(1)(vii) (2007). 14
CONCLUSION 15
The decision of the Examiner to reject claims 1-21 under 35 U.S.C. 16
§ 102(b) is affirmed. 17
No time period for taking any subsequent action in connection with 18
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 19
§ 1.136(a)(1)(iv) (2007). 20
AFFIRMED 21
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vsh 27
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