Ex Parte Hobbs

Patent Trial and Appeal Board

Sep 7, 2017

13234093 (P.T.A.B. Sep. 7, 2017)

United States Patent and Trademark Office
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.
PT-ll-91 9599
EXAMINER
VAN BUSKIRK, JAMES M
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
13/234,093 09/15/2011
71949 7590 09/08/2017
CROSE LAW LLC
112 NORTHBROOKE TRACE
WOODSTOCK, GA 30188
Jennifer Hobbs
09/08/2017 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 JENNIFER HOBBS
Appeal 2016-005804
Application 13/234,093
Technology Center 3700
Before ROBERT E. NAPPI, JOSEPH P. LENTIVECH, and
SCOTT B. HOWARD, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Rejection of claims 1 through 9, 11, and 12. Claims 13 through 20 have
been allowed and claim 10 has been identified as containing allowable
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention is directed an expanding folder where the front and
back cover are coupled to one another along an edge. Abstract and Figures 2
and 3 of Appellants’ Specification. Claim 1 is illustrative of the invention
and reproduced below.
An organizer apparatus comprising:
a generally planar, rectangular front cover;
Appeal 2016-005804
Application 13/234,093
a generally planar, rectangular back cover;
a spine whereby the front cover and back cover are
hingedly coupled one to another at an edge of each to
form a folder configured to open, the covers pivoting
outwardly from the spine at each cover edge, and close,
the covers
pivoting inwardly to the spine at each cover edge,
and to securely store and organize a plurality of loose
papers; and at least one expandable file having a plurality
of individual, expandable pockets disposed within the
organizer apparatus on an inside surface of one or more
of the front cover and the back cover, each of the
plurality of expandable pockets coupled on three of four
rectangular edges to the expandable file configured to
permit inserts only from a single open side;
wherein the plurality of expandable pockets is
configured to extend away from the inside surface from
all four of the rectangular edges.
REJECTIONS AT ISSUE1
The Examiner has rejected claims 1, 2, 7 through 9, 11, and 12 under
35 U.S.C. § 103(a) as unpatentable over Giarritta (US 4,004,690; Jan. 25,
1977) and Pelleg (US 6,880,747 Bl; Apr. 19, 2005). Off Act. 3-7, Answer
3.
The Examiner has rejected claims 3 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Giarritta, Pelleg, and Ciarcia (US 4,932,520; Jun. 12,
1990). Off Act. 7—8, Answer 3.
1 Throughout this Decision we refer to the Appeal Brief, dated September 3,
2015 (“App. Br.”), the Examiner’s Answer, mailed February 24, 2016
(“Ans.”), and the Non-Final Office Action, mailed June 3, 2015 (“Off.
Act.”).
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Application 13/234,093
The Examiner has rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Giarritta, Pelleg, and Chisholm (US 5,954,170; Sept. 21,
1999). Off Act. 8, Answer 3.
The Examiner has rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Giarritta, Pelleg, and Shapiro (US 2007/025506 Al; Oct.
11, 2007). Off Act. 8—9, Answer 3.
ISSUES
Appellant argues on pages 8 through 15 of the Brief that the
Examiner’s rejection of representative claim 1 is in error. These arguments
present us with the following issues:
a) Did the Examiner provide a proper rationale for combining the
teachings of Pelleg and Giarrritta?
b) Did the Examiner error in finding Pelleg and Giarritta are
analogous art to Appellants’ invention?
c) Did the Examiner rely upon hindsight in combining the teachings
of Pelleg and Giarrritta?
d) Did the Examiner error in combining the teachings of Pelleg and
Giarrritta as the combination would frustrate the purpose of
Giarrritta?
e) Did the Examiner error in not considering the commercial success
of the claimed product?
ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
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Application 13/234,093
arguments. We concur with the Examiner and are not persuaded by
Appellant’s arguments.
The Examiner provides a detailed response and explanation of the
findings related to the references on pages 3 through 7 of the Answer.
Specifically, the Examiner finds that Pelleg teaches a folder with accordion
(expandable) pockets and Giarritta teaches an organizer with a front and
back cover hingedly coupled to each other. Answer 3-4. Based upon these
teachings the Examiner finds that the claims are obvious. We concur with
the Examiner.
Appellant’s arguments directed to the first issue, assert that the
Examiner’s rationale, that the accordion pockets allow the carrying of
thicker documents is in error. Answer 8. Appellant reasons that Pelleg
teaches that the fixed pocket (item 10, Figure. 1), not the accordion pockets
are for thicker documents, thus the Examiner’s rationale to combine the
references is not supported by Pelleg. Id. We disagree. The Examiner’s
finding is directed to the accordion folders as taught by Pelleg, holding
thicker documents than the non-according folders of Giarritta. Answer 4.
We concur with the Examiner’s reasoning, while Pelleg teaches that there
are pockets which hold thicker documents than the accordion pockets, that
does not negate the Examiner’s finding that the accordion pockets of Pelleg
hold thicker documents than the folders of Giarritta. Thus, Appellant’s
arguments directed to the first issue have not persuaded us of error in the
Examiner’s rejection of claim 1.
Appellant’s arguments directed to the second issue assert that Giarritta
is directed to a coupon holder and Pelleg is directed to a new feature for a
well-known accordion file. App. Br. 10. Appellant asserts that the
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Application 13/234,093
Examiner has not shown that the references are in the field of Appellant’s
endeavor. Id. We are not persuaded of error by this argument. Appellant’s
Specification states “[t]he technology described herein relates generally to
the storage and organization of documents in devices such as folders,
organizers, pocketbooks, cases, and the like for holding a multiplicity of
items in an organized manner.” Spec. para. 1. We consider a coupon holder
of Giarritta to be a device which organizes and holds a multiplicity of items
(coupons). Further, Pelleg teaches a folder which is a device that organizes
and holds a multiplicity of items. Thus, we are not persuaded of error by
Appellant’s arguments directed to the second issue, that Pelleg and Giarritta
are non-analogous art to Appellants’ invention.
Appellant’s arguments directed to the third issue assert that Examiner
relied upon hindsight in combining the teachings of Pelleg and Giarrritta.
App. Br. 11—12. Appellant argues the Examiner’s is relying upon hindsight
as “[njothing within either of Giarritta or Pelleg teaches or suggests any
reason for a combination of an accordion file with a coupon holder.” Id. We
are not persuaded of error by these arguments, as they similarly rely upon an
assertion that a coupon holder and folder are different. As discussed above
with respect to Appellant’s arguments directed to non- analogous art, we see
both as organizers which hold items and see no error in combining the
teachings. Thus, Appellant’s arguments directed to the third issue have not
persuaded us of error.
Appellant’s arguments directed to the fourth issue assert that
combining Pelleg and Giarrritta would render the coupon holder useless as
the pockets would not function. App. Br. 12. We disagree, the function of
both Pelleg’s and Giarritta’s devices are to organize and holds a multiplicity
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Application 13/234,093
of items. We do not consider that using the accordion (expanding folder) in
Giarritta’s device would not prevent the device from organizing or holding
documents. Thus, Appellant’s arguments directed to the fourth issue have
not persuaded of error.
Appellant’s arguments directed to the fifth issue assert that since
Appellant’s expanding folder is sold at plural stores, Appellant’s claimed
features have led directly to commercial success. App. Br. 14. These
arguments are insufficient to establish commercial success as they are
merely attorney argument and do not present sufficient evidence to establish
either commercial success, or that the commercial success is tied to the
claimed features of the device.
For all of the above reasons, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of representative claim 1,
and we sustain the Examiner’s rejection of claims 1, 2, 7 through 9, 11, and
12.
Appellant has not presented separate arguments directed to dependent
claims 3 through 6. Accordingly, we sustain these rejection for the same
reasons as claim 1.
DECISION
We sustain the Examiner’s rejections of claims 1 through 9, 11, and
12 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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