Ex Parte Makofsky

Board of Patent Appeals and Interferences

Jul 13, 2011

11395496 (B.P.A.I. Jul. 13, 2011)

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.
11/395,496 03/31/2006 Marvin A. Makofsky 2725
7590 07/13/2011
Francis C. Hand, Esq.
c/o Carella, Byrne, Bain, Gilfillan, Cecchi,
Stewart & Olstein
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
07/13/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARVIN A. MAKOFSKY
____________________

Appeal 2010-002069
Application 11/395,496
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and WILLIAM V.
SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002069
Application 11/395,496
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-8 and 10-221. We have jurisdiction under 35
U.S.C. § 6(b).

The Invention
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A one piece blank for a pocket folder comprising
at least a pair of contiguous rectangular sections;
a first extension contiguous to and extending from a
horizontal bottom edge of one of said sections for folding over
said one section, said extension having a horizontally disposed
score line spaced from said bottom edge of said one section, a
vertically disposed score line spaced from a side edge thereof
and an angularly disposed score line extending from an
intersection of said horizontally disposed score line and said
vertically disposed score line of said extension to a respective
corner of said extension;
a first flap contiguous to and extending from said
extension for folding under said extension with said extension
folded over said one section, said flap having a vertically
disposed score line intermediately thereof to separate said flap
into a first part contiguous to said extension and a second part
for folding flat against said one section; and

1 Appellant states that claims 1-8 and 10-22 are under appeal. Appeal Br. 3.
However, the claim listing in the APPENDIX provided with the Appeal
Brief includes claim 9 (and claims 10 and 11 depending from claim 9).
Appeal Br. 26-27. Appellant submitted an amendment canceling claim 9
and amending claims 10 and 11 to depend from claim 1. See Amendment
with Appeal filed May 18, 2009. The Examiner does not appear to have
formally entered the amendment but agrees that Appellant’s statement of the
claims is correct and appears to modify the rejection as if the proposed
amendment was entered. Ans. 2. Accordingly, we consider the Examiner to
have entered the Amendment with Appeal.
Appeal 2010-002069
Application 11/395,496
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a second flap extending from said one section for folding
under said extension with said extension folded over said one
section, said second flap having a vertically disposed score line
intermediately thereof to separate said second flap into a first
contiguous to said one section and a second part for folding flat
against said extension.

References
The Examiner relies upon the following prior art references:
Ong
Schluger
Moor
US 5,598,969
US 6,193,147
US 6,666,610
Feb. 4, 1997
Feb. 27, 2001
Dec. 23, 2003

Rejections
I. Claims 1-6, 10-15, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schluger, Moor, and Ong.
II. Claims 7, 8, 16, and 17 are rejected under § 103(a) as unpatentable
over Schluger and Ong.
III. Claim 18 is rejected under § 103(a) as unpatentable over Schluger,
Ong, and Moor.
IV. Claims 20-22 are rejected under § 103(a) as unpatentable over
Schluger and Moor.

SUMMARY OF DECISION
We REVERSE.

OPINION
Claim 1 requires a folder having a rectangular (back) section having
on the bottom edge an extension 19 with a first flap 23, and on another edge
a second flap 24. Both flaps have a vertical score line (25, 28). An
embodiment of this claim is depicted in figure 3.
Appeal 2010-002069
Application 11/395,496
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The Examiner found that Schluger depicts a folder having a
rectangular section 18 with an extension 20. Ans. 6. The Examiner found
that Schluger does not describe a first flap extending from the extension with
a vertical score line or a second flap extending from the rectangular section
having a vertical score line. Ans. 6-7. However, the Examiner found that
Moor describes a folder with a flap 34 extending from a back section 12
with a score line 38. Ans. 7. The Examiner concluded that it would have
been obvious to “create the folder of Schluger with a first flap having a score
line of Moor et al. in order to allow expansion of the pocket and thus give
more storage space.” Id. Next, the Examiner found that Ong describes an
extension 194 from a rectangular section 184, the extension having flap 196
with vertical score line 206. Id. The Examiner concluded that it would have
been obvious to “to create the pocket of Schluger with a second flap having
score lines as taught by Ong in order to make a securely fastened pocket
which can expand to hold more items within it.” Id.
Appellant raises the dispositive issue of whether the Examiner’s
proposed combination satisfies the limitation of claim 1 requiring a second
flap extending from the first section for folding over the extension. Appeal
Br. 11.
The Examiner’s proposed modification of Schluger includes having a
first flap (on the extension) having a vertical score line as shown in Moor.
The further modification of Schluger is to create a pocket with a second flap
as taught in Ong. However, the flap in Ong is also on the extension. The
Examiner’s analysis does not explain how or why the flap in Ong is to be
combined with the folder of Schluger to be placed in a different location
than taught in Ong. Even assuming the Examiner inadvertently mixed the
first and second flaps, the flap in Ong has three vertical score lines, making a
Appeal 2010-002069
Application 11/395,496
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“W” shape. Claim 1, in contrast, requires the second flap to have a vertical
score line separating the flap into a first part contiguous to the section
(rectangle) and a second part for folding against the extension. The “W”
shape has two score lines such that three parts are formed and no score line
separates the flap into a section contiguous to the rectangle and a section for
folding against the extension; there is always an intervening part.
Accordingly, the Examiner’s proposed combination does not explain how
the prior art renders obvious the second flap as required by claim 1. As
such, the Examiner’s rejections of claims 1-6, 10-15, and 19 are in error.
Claim 7 likewise requires the flaps to include a vertical score line
separating the flap into two sections, the first contiguous to the extension2
and the second for folding flat against the rectangular section. The
Examiner’s proposed modification to Schluger is to include flaps with score
lines as taught by Ong. Ans. 4. However, as we identified above, the score
lines in Ong form a “W” shape that does not satisfy the vertical score line
limitations of claim 7. Accordingly, we are persuaded that the Examiner
erred in rejecting claim 7. The Examiner’s rejections of claims 8 and 16,
and 17 are likewise in error. The Examiner’s rejection of claim 18 relies on
the “W” shape score lines of Ong and is likewise in error. Ans. 4-5.
Claim 20 similarly requires a flap extending from the back section of
the folder, the flap having a vertical score line separating the flap into two

2 Claim 7 actually requires the second flap to be contiguous to the “one
section” but since the flap extends from the extension, this is impossible.
We interpret the inconsistency to be an inadvertent typographical error, and
that the claim requires the second flap to be contiguous to the extension. In
the event of further prosecution, appropriate corrective action should be
taken.
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Application 11/395,496
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sections, the first contiguous to the back section3 and the second folded flat
against and secured to the panel. An embodiment is depicted in figure 2.
The Examiner found that Schluger describes a folder having a back section
18 but not a flap extending from the back section with a vertical score line.
Ans. 5. The Examiner then found that Moor teaches a flap 34 having a
vertical score line 38. Id. The Examiner concluded that it would have been
obvious to “create the folder of Schluger with the flap having a score line of
Moor et al. in order to allow expansion of the pocket and thus give more
storage space.” Id.
Appellants argue that the “second part” of the flap in Moor is not
folded flat and secured to the panel. Appeal Br. 20. Indeed, looking at
figure 3 of Moor, it is clear that three vertical fold lines divide the flap into
three sections 34, 44, and 46. As in Ong, none of the vertical folds separate
the flap into the two sections as required by claim 20. The Examiner argues
that the strips fold flat. Appeal Br. 12. However, the claim requires the strip
(section) to be folded flat against and secured to the panel. As shown in
figure 3 of Moor, strip 44 is not secured to the panel; strip 34 is secured to
the panel. See col. 2, ll. 40-42. Accordingly, we are persuaded that the
Examiner erred in rejecting claim 20. The Examiner’s rejection of claims 21
and 22 are likewise in error.

3 Claim 20 requires the vertical score line to separate “said second flap” but
only one flap is claimed. We interpret the inconsistency to be an inadvertent
typographical error and that the claim reads “said second flap” is contiguous
to the extension. In the event of further prosecution, appropriate corrective
action should be taken.
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Application 11/395,496
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DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 1-8 and 10-22.

REVERSED

mls