Ex Parte KlineDownload PDFBoard of Patent Appeals and InterferencesMar 5, 200910427017 (B.P.A.I. Mar. 5, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RANDI M. KLINE ____________ Appeal 2008-2682 Application 10/427,017 Technology Center 3600 ____________ Decided1: March 6, 2009 ____________ Before WILLIAM F. PATE, III, LINDA E. HORNER, and JOHN C. KERINS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL 1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-2682 Application 10/427,017 2 STATEMENT OF THE CASE Randi M. Kline (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-11, the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant’s claimed invention is to a device for holding an open book, and a method employing that device, having a base surface, a rear surface perpendicular to the base surface, a planar spine support surface, a planar front cover support surface, and a planar back cover support surface. (Appeal Br., Claims Appendix, Claim 1). These surfaces define a soft deformable body and are all soft deformable surfaces that conform to an open book when an open book is placed thereon. (Id.). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A device for holding an open book, comprising: a base surface; a rear surface that meets with said base surface at a perpendicular; a planar spine support surface extending at an inclined angle between said base surface and said rear surface, wherein said spine surface has a first side edge and a second side edge that extend in parallel between said base surface and said rear surface; Appeal 2008-2682 Application 10/427,017 3 a planar front cover support surface extending between said base surface and said rear surface, wherein said front cover support surface intersects said first side edge of said spine support surface at an obtuse angle; a planar back cover support surface extending between said base surface and said rear surface, wherein said back cover support surface intersects said second side edge of said spine support surface at an obtuse angle; wherein said base surface, said rear surface, said spine support surface, said front cover support surface and said back cover support surface are all surfaces that define a soft, deformable body, and wherein said spine support surface, said front cover support surface and said back cover are all soft deformable surfaces that conform to an open book when an open book is placed thereon. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Williams US 4,512,603 Apr. 23, 1985 Friedrich US 6,270,050 B1 Aug. 7, 2001 Halpin US 6,513,779 B2 Feb. 4, 2003 Sweden Patent No. 112213, published March 20, 1945 (hereafter Sweden ‘213). The Examiner has rejected: (i) claims 1, 3, and 6-8 under 35 U.S.C. § 103(a) as being unpatentable over Halpin in view of Williams; Appeal 2008-2682 Application 10/427,017 4 (ii) claims 2, 5, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over Halpin in view of Williams and Sweden ‘213; (iii) claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Halpin in view of Williams and Friedrich; and (iv) claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Halpin in view of Williams, Sweden ‘213, and Friedrich. ISSUES The Examiner concluded that the combined teachings of Halpin and Williams would have rendered obvious a device for holding an open book, and a method employing that device, having the claimed surfaces, wherein the surfaces define a soft deformable body and are all soft deformable surfaces that conform to an open book when an open book is placed thereon. Appellant urges that the combination of the teachings of the Halpin and Williams references is improperly based on hindsight reconstruction, and that the combination fails to establish a prima facie case of obviousness, in that the combined teachings do not disclose or suggest a shaped book cradle configuration where all the surfaces of the book cradle, deform, and conform to the shape of a book placed within the book cradle. The issue joined in this appeal is: has Appellant shown that the Examiner erred combining the Halpin and Williams references, and, if not, has Appellant shown that the Examiner erred in concluding that the combined teachings render obvious a book holding device having soft deformable surfaces that conform to the shape of an open book placed thereon? Appeal 2008-2682 Application 10/427,017 5 FINDINGS OF FACT The following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). FF 1. The Williams patent discloses that, by providing a spine support surface and flanking inclined front and back cover support surfaces, the books will not be stretched to the point where the adhesive elements of the books begin to tear or otherwise be destroyed, thereby maximizing the useful life of books. (Williams, col. 3, ll. 28-44). FF 2. The Halpin patent discloses a book holder that is constructed from a block of semi-rigid material, such as foam. (Halpin, Abstract; col. 1. ll. 7-10; col. 4, ll. 15-18). FF 3. Halpin further discloses that this semi-rigid foam block is a “pliable material” which functions to allow a user to partially depress a book therein for secure placement. (Halpin, col. 4, ll. 1-3; col. 6, ll. 18-20). PRINCIPLES OF LAW “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject Appeal 2008-2682 Application 10/427,017 6 matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at ___, 127 S. Ct. at 1734 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”). ANALYSIS Claims 1, 3, and 6-8 Appellant’s Appeal Brief purports to argue separately the patentablity of independent claims 1 and 7, in that the arguments are set forth in different sections under separate headings in the Brief. (Appeal Br. 5, 7). The section containing the arguments for claim 7, however, contains no arguments that are different from those presented for claim 1. No separate arguments for patentability are presented with respect to claims 3, 6, and 8. Independent claims 1 and 7 will be taken as the representative claims, with claims 3 and 6 standing or falling with claim 1, and claim 8 standing or falling with claim 7. The rejection of claim 1 is based on a combination of the teachings of the Halpin and Williams patents. The Examiner found that the Halpin patent discloses all limitations of the claimed invention, with the exception of a planar spine support. (Answer 4). The Examiner cites to the Williams patent as disclosing a book support having a spine support surface flanked by planar front and back cover support surfaces, and concludes that it would have been obvious to modify the Halpin book holder to include a spine support surface between front and back cover support surfaces. (Id.) In support of this conclusion, the Examiner states that this modification would maximize the useful life of books, in that, by providing the spine support Appeal 2008-2682 Application 10/427,017 7 surface and the flanking inclined front and back cover support surfaces, the books will not be stretched to the point where the adhesive elements of the books begin to tear or otherwise be destroyed. (Answer 4-5, 9). The Examiner notes that this advantage of such a construction is specifically disclosed in the Williams patent. (Answer 9-10)(FF 1). We will first address Appellant’s argument that there is no motivation to combine the references and therefore the rejection is based upon the use of hindsight reconstruction. (Appeal Br. 9). To the extent that Appellant is here contending that the Examiner failed to establish that the prior art contains a teaching/suggestion/motivation for combining the references, the Supreme Court has ruled that a rigid application of a “teaching, suggestion, motivation” test is inconsistent with its precedent in the law relating to obviousness. See KSR Int’l., 550 U.S. at ___, 127 S. Ct. at 1741. Appellant urges that “there must be some reason for the combination other than hindsight gleaned from the invention itself” (Appeal Br. 9), and this comports with the guidance in KSR that a rejection based on obviousness should include explicit analysis that contains articulated reasoning with some rational underpinning in order to be legally sufficient. KSR Int’l., 550 U.S. at ____, 127 S. Ct. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Appellant does not contend that the Examiner’s rejection fails to articulate any reasoning for making the combination. Appellant’s arguments instead constitute citations to several Federal Circuit decisions generally directed to hindsight reconstruction issues, followed by blanket statements that the prior art “simply does not disclose” a book holder having certain features (loosely based on actual claim limitations), and that “nothing in the Appeal 2008-2682 Application 10/427,017 8 cited art suggests what was claimed”. (Appeal Br. 9). Appellant’s argument simply ignores the Examiner’s explicitly stated reasoning, noted previously, that the proposed modification would maximize the useful life of books, in that by providing the spine support surface and the flanking inclined front and back cover support surfaces, the books will not be stretched to the point where the adhesive elements of the books begin to tear or otherwise be destroyed. (Answer 9). Appellant further ignores that the Examiner based this reasoning on the explicit disclosure of this advantage in the Williams patent. The Examiner has articulated her reasoning for combining the references, and has supported it with rational underpinnings extracted from the prior art itself. The combination is therefore proper and not in error. Appellant further contends, again in a blanket statement, that the combined teachings of the Halpin and Williams references “fail to disclose a shaped book cradle configuration, where all the surfaces of that cradle the book [sic.] deform and conform to the shape of a book placed within that space.” (Appeal Br. 6). Halpin discloses a book holder that is constructed from a block of semi-rigid material, such as foam. (FF 2). Further, Halpin discloses that this semi-rigid foam block is a “pliable material” which functions to allow a user to partially depress a book therein for secure placement. (FF 3). The Examiner cites to these disclosures, as well as to dictionary definitions of “pliable”2 and “depress”3, in concluding that the Halpin book 2 pliable: supple enough to bend freely or repeatedly without breaking; yielding readily to others. Merriam Webster’s Collegiate Dictionary Tenth Edition (1994). Appeal 2008-2682 Application 10/427,017 9 holding device does deform and conform to an open book, when an open book is placed thereon. Appellant does not point to any specific error in these findings, nor in the conclusion reached, and we fail to see any such error. The Examiner’s position is consistent with the disclosure of Halpin, as well as with the dictionary definitions of the terms which are used by Halpin, and establishes that Halpin discloses the claim limitation at issue. As noted previously, with respect to claim 7, Appellant advances no arguments that are different from those advanced with respect to claim 1. Claim 7 is directed to a method of retaining a book in a book holder, with the method essentially repeating the apparatus limitations of claim 1. The Examiner asserts that the method of claim 7 would inherently be practiced when employing the book holder of Halpin, as modified by the teachings of Williams. (Answer 5). Appellant does not contest this finding, relying instead solely on the arguments directed to apparatus limitations in the claim. (Appeal Br. 7). We will, accordingly, sustain the rejection of claims 1, 3, and 6-8 under 35 U.S.C. § 103(a) over Halpin in view of Williams. Claims 2, 5, 9 and 10 These claims stand rejected under 35 U.S.C. § 103(a) over Halpin in view of Williams and Sweden ‘213. Appellant argues only that Sweden ‘213 does nothing to address the deficiencies of the Halpin and Williams patents relative to claim 1. (Appeal Br. 7-8). We have already concluded that no error was demonstrated in the rejection of claims 1 and 7 over Halpin 3 depress: to press down; to cause to sink to a lower position. Merriam Webster’s Collegiate Dictionary Tenth Edition (1994). Appeal 2008-2682 Application 10/427,017 10 and Williams, and similarly conclude here that there has been no demonstration of error in the rejection of these claims. Claim 4 Claim 4 stands rejected under 35 U.S.C. § 103(a) over Halpin in view of Williams and Friedrich. Appellant does not present any arguments for the patentability of this claim that are different from, or in addition to, the arguments made with respect to claim 1. Appellant makes no mention of the Friedrich patent whatsoever. As discussed above, we are not persuaded that error was committed in rejecting claim 1 under 35 U.S.C. § 103(a), and we will therefore sustain the rejection of claim 4 as well. Claim 11 Claim 11 stands rejected under 35 U.S.C. § 103(a) over Halpin in view of Williams, Sweden ‘213, and Friedrich. Appellant does not present any arguments for the patentability of this claim that are different from, or in addition to, the arguments made with respect to claims 1 and 10. Appellant makes no mention of the Friedrich patent whatsoever. As discussed above, we are not persuaded that error was committed in rejecting claims 1 and 10 under 35 U.S.C. § 103(a), and we will therefore sustain the rejection of claim 11 as well. CONCLUSION Appellant has not established that reversible error exists in the rejection of claims 1-11 under 35 U.S.C. § 103(a). ORDER The decision of the Examiner to reject claims 1-11 is AFFIRMED. Appeal 2008-2682 Application 10/427,017 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED hh LAMORTE & ASSOCIATES P.C. P.O. 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