Ex parte Jacobsen

Board of Patent Appeals and Interferences

Jul 13, 1999

08147093 (B.P.A.I. Jul. 13, 1999)

Application for patent filed November 3, 1993. According to1
appellant, this application is a continuation of application serial no.
07/828,518, filed January 31, 1992, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GARY A. JACOBSEN
_____________
Appeal No. 95-2346
Application 08/147,0931
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and GONZALES, Administrative Patent
Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 19, which are all of the claims
Appeal No. 95-2346
Application 08/147,093
2
pending in this application.
We REVERSE.
BACKGROUND
The appellant's invention relates to a method of
manufacturing a changeable image type novelty card using an
in-line offset printing and in-line finishing system
(specification, page 3). An understanding of the invention
can be derived from a reading of exemplary claims 1, 12 and 16
which appear in the appendix to appellant's corrected brief
filed September 15, 1994.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kroner 2,311,946 Feb. 23, 1943
Bellis 2,611,201 Sep. 23, 1952
Smith 2,639,254 May 19, 1953
Cummings 4,514,248 Apr. 30, 1985
Voy et al. (Voy) 4,661,189 Apr. 28, 1987
Dean 4,697,364 Oct. 06,
1987
Cannistra 4,938,830 Jul. 03,
1990
Malachowski et al. 5,118,375 Jun. 02, 1992
(Malachowski) (Filed Aug. 09, 1990)
The following rejections are before us for review:
Appeal No. 95-2346
Application 08/147,093
3
(1) Claims 1 through 5 stand rejected under 35 U.S.C. §
103 as being unpatentable over Dean in view of Bellis in
combination with either Cannistra or Malachowski;
(2) Claims 6 and 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Dean in view of Bellis in
combination with either Cannistra or Malachowski, as applied
in (1) above, and further in view of Kroner;
(3) Claims 8, 9 and 11 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Dean in view of Bellis in
combination with either Cannistra or Malachowski and Kroner as
applied in (2) above, further in view of Cummings;
(4) Claim 10 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Dean in view of Bellis in combination
with either Cannistra or Malachowski and Kroner and Cummings
as applied in (3) above, further in view of Voy.
(5) Claims 12, 15, 16 and 19 stand rejected under 35
U.S.C. § 103 as being unpatentable over Dean in view of Bellis
in combination with either Cannistra or Malachowski, as
Appeal No. 95-2346
Application 08/147,093
We call attention to a problem with the language of claim 12, para.2
(n), "positioning said rear panel onto said second side of said rear panel"
should read --positioning said rear panel onto said second side of said front
panel--. Correction of this error is in order upon return of this application
to the jurisdiction of the examiner.
4
applied in (1) above, and further in view of Smith;2
(6) Claims 13, 14 and 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Dean in view of Bellis in
combination with either Cannistra or Malachowski and Smith as
applied in (5) above, further in view of Cummings;
(7) Claim 17 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Dean in view of Bellis in combination
with
either Cannistra or Malachowski and Smith and Cummings as
applied in (6) above, further in view of Kroner.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 13) and the examiner's answer (Paper No. 16) for the
complete reasoning in support of the rejections, and to the
Appeal No. 95-2346
Application 08/147,093
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corrected brief filed September 15, 1994, for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is
our conclusion that the evidence adduced by the examiner is
insufficient to establish a case of obviousness with respect
to claims 1 through 19. Accordingly, we will not sustain the
examiner's rejections of claims 1 through 19 under 35 U.S.C.
§ 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d
1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
Appeal No. 95-2346
Application 08/147,093
6
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that
individual to combine the relevant teachings of the references
to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections
based on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S.
Appeal No. 95-2346
Application 08/147,093
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1057 (1968). Our reviewing court has repeatedly cautioned
against employing hindsight by using the appellant's
disclosure as a blueprint to reconstruct the claimed invention
from the isolated teachings of the prior art. See, e.g.,
Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this as background, we turn first to the rejections
of claims 1, 12 and 16, the only independent claims in the
application. Appellant argues that
[t]he step of forming a strip of printable material
having at least a front panel, a rear panel and an insert
panel (claim 1, step c; claim 12, step c; claim 16, step
c), within a continuous web of raw material for
sequential processing into a novelty card is not
suggested by the references. Printing on the formed
strip of the web (claim 1, step d; claim 12, step e;
claim 16, step f) is also not suggested by the referenced
art. [corrected brief, page 16]
We agree with appellant. As evidence of obviousness, the
examiner has applied Dean and Bellis in combination with
either Cannistra or Malachowski against claim 1 and Dean,
Bellis and Smith in combination with either Cannistra or
Malachowski against claims 12 and 16.
Dean teaches a novelty card including a one piece die cut
Appeal No. 95-2346
Application 08/147,093
8
envelope (11) (col. 1, lines 40-43) and an insert (12)
comprising a front transparent portion (17), such as an
acetate sheet,
adhered by glue along a top edge to a background portion (18)
cut from thin card stock (col. 2, line 63 to col. 3, line 1).
Bellis teaches a display apparatus comprising an opaque
panel (22) and a flat pocket for receiving panel (22)
including a back panel or sheet (14) and a transparent front
panel or sheet (18) superimposed thereon. The sheets (14) and
(18) are secured along all but one edge with clips or staples.
See, col. 1, line 40 to col. 2, line 3.
Cannistra teaches a method of fabricating a plastic card,
e.g., a credit card, including the steps of providing a sheet
(17) of plastic, printing on the rear of the sheet, preferably
by offset lithography, and cutting the sheet into individual
cards (col. 2, lines 24-28 and col. 4, lines 4-6).
Malachowski teaches a method and apparatus for making and
filling envelopes in which an envelope sheet (2) is folded, an
Appeal No. 95-2346
Application 08/147,093
9
insert material sheet (4) is placed in the envelope sheet and
adhesive tape (12a, 12b) is placed over the ends of the
envelope (col. 4, lines 21-55).
None of the four references discussed above teaches or
suggests a method of forming a novelty card comprising the
steps of forming a strip of printable material having at
least a front
panel, a rear panel and an insert panel within a continuous
web of raw material for sequential processing and printing on
the formed strip of the web. Therefore, even if there were
some motivation in the art for combining the teachings of Dean
and Bellis with the teaching of either Cannistra or
Malachowski, all of the claimed limitations of claim 1 are not
taught or suggested by the applied references.
Smith teaches a method of mounting a slide or
transparency using a mount composed of a pair of flap members
(12, 13) and an insert (20) having opposite sides thereof
coated with adhesive (col. 3, lines 9-62).
The examiner rejects claims 12 and 16 as being
Appeal No. 95-2346
Application 08/147,093
10
unpatentable over Dean in view of Bellis in combination with
either Cannistra or Malachowski, as applied against claim 1,
and further in view of Smith. According to the examiner
[i]t would have been obvious to employ the teaching as
set forth by Smith and adhesively bond the layers of the
articles of the teachings set forth by the references in
(16) above [the rejection of claim 1]. Such a
combination would have been obvious as all cited
references relate to process [sic] for laminating
articles together. [final rejection, page 5]
Smith, like Dean, Bellis, Cannistra and Malachowski,
contains no teaching or suggestion of appellant's claimed
method
including the steps of forming a strip of printable material
having at least a front panel, a rear panel and an insert
panel within a continuous web of raw material for sequential
processing or printing on the formed strip of the web.
Therefore, we cannot sustain the § 103 rejections of
independent claims 1, 12 and 16.
For the same reasons, the rejection of claims 2 through
5, dependent on claim 1 and rejected on the same ground as
claim 1, and the rejection of claims 15 and 19, dependent on
Appeal No. 95-2346
Application 08/147,093
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claims 12 and 16, respectively, and rejected on the same
ground as applied against their respective independent claim,
will not be sustained.
We have also carefully considered the other references,
namely, Kroner, Cummings and Voy, applied by the examiner in
the various rejections of dependent claims 6 through 11, 13,
14, 17 and 18, and have concluded that none of these
additional references, either alone or in combination with the
other applied art, supplies the deficiencies in Dean, Bellis,
Cannistra, Malachowski and Smith, noted above. Accordingly,
the rejections of claims 6 through 11, 13, 14, 17 and 18 will
not be sustained.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 19 under 35 U.S.C. § 103 is reversed.
Appeal No. 95-2346
Application 08/147,093
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REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 95-2346
Application 08/147,093
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