Ex Parte Kline

Board of Patent Appeals and Interferences

Mar 5, 2009

10427017 (B.P.A.I. Mar. 5, 2009)

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. BOX 434
YARDLEY, PENNSYLVANIA 19067