Ex parte Lorber

Board of Patent Appeals and Interferences

May 27, 1999

08054223 (B.P.A.I. May. 27, 1999)

Application for patent filed April 29, 1993. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALAN LORBER
____________
Appeal No. 1998-3295
Application No. 08/054,2231
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claim 2, as amended subsequent to the final rejection.
Claim 2 constitutes the only claim pending in this
application.
We REVERSE.
Appeal No. 1998-3295 Page 2
Application No. 08/054,223
In determining the teachings of Rappaport, we will rely2
on the translation provided by the PTO. A copy of the
translation is attached for the appellant's convenience.
BACKGROUND
The appellant's invention relates to a combined greeting
card and record sleeve. An understanding of the invention can
be derived from a reading of claim 2, which appears in the
appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Shore 3,426,960 Feb. 11,
1969
Rappaport 783,277 July 10,2
1935
(French)
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Shore in view of Rappaport.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
Appeal No. 1998-3295 Page 3
Application No. 08/054,223
Since the other grounds of rejection set forth in the3
final rejection (paper No. 13, mailed December 30, 1994) were
not set forth in the examiner's answer we assume that these
other grounds of rejection have been withdrawn by the
examiner. See Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957).
rejection, we make reference to the examiner's answer (Paper
No. 27, mailed June 9, 1998) for the examiner's complete
reasoning in support of the rejection, and to the appellant's
brief (Paper No. 26, filed March 10, 1998) for the appellant's
arguments thereagainst.3
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 prima facie case of obviousness
with respect to claim 2. Accordingly, we will not sustain the
examiner's rejection of claim 2 under 35 U.S.C. § 103. Our
reasoning for this determination follows.
Appeal No. 1998-3295 Page 4
Application No. 08/054,223
The rejection of claim 2 is set forth on pages 3-4 of4
the answer.
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 would
have led one of ordinary skill in the art 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) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellant argues (brief, p. 14) that the rejection of4
claim 2 is improper since the references (i.e., Shore and
Rappaport) fail to suggest a modification of the prior art
that "would produce the claimed invention." We agree for the
following reasons.
Claim 2 recites in part a side-fold greeting card design
consisting of a front-sheet and a back-sheet. Claim 2 further
Appeal No. 1998-3295 Page 5
Application No. 08/054,223
recites that a phonographic record-sleeve is incorporated in
the front-sheet as a pocket having a top opening of sufficient
length to receive an audio disc.
The above-noted limitations of claim 2 are not suggested
by the combined teachings of the applied prior art.
Specifically, both Shore and Rappaport teach the use of a
side-fold jacket or pouch including a phonographic record-
sleeve incorporated therein having a side opening of
sufficient length to receive an audio disc. Thus, the
teachings of Shore and Rappaport, even if combined as proposed
by the examiner, would not have resulted in the claimed
invention (i.e., a side-fold greeting card including a
phonographic record-sleeve incorporated therein having a top
opening of sufficient length to receive an audio disc).
For the reasons stated above, the decision of the
examiner to reject claim 2 under 35 U.S.C. § 103 is reversed.
Appeal No. 1998-3295 Page 6
Application No. 08/054,223
CONCLUSION
To summarize, the decision of the examiner to reject
claim 2 under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-3295 Page 7
Application No. 08/054,223
ALAN LORBER
414 EAST 52 ST.
NEW YORK, NY 10022
APPEAL NO. 1998-3295 - JUDGE NASE
APPLICATION NO. 08/054,223
APJ NASE
APJ STAAB
APJ ABRAMS
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 26 May 99
FINAL TYPED: