Ex Parte Mayes

Board of Patent Appeals and Interferences

Jul 21, 2006

09653224 (B.P.A.I. Jul. 21, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT C. MAYES
__________

Appeal No. 2006-1461
Application No. 09/653,224
___________

ON BRIEF
___________

Before OWENS, CRAWFORD and FETTING, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1 and 4-15, which
are all of the pending claims.
Appeal No. 2006-1461
Application No. 09/653,224

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THE INVENTION
The appellant claims a system and method for manufacturing a
set of books such that it fits within a particular book storage
space. Claim 1 is illustrative:
1. A book manufacturing method, comprising:
identifying a set of books;
receiving a dimension of a book storage space;
selecting format criteria and page and cover media according
to the received dimension and the identified set of books, the
format criteria defining at least a font size, the selections
being made so that the set of books, once manufactured, will fit
within the book storage space; and

manufacturing the set of books according to the selected
format criteria and using the selected page and cover media.

THE REFERENCES
Burton et al. (Burton) 4,598,376 Jul. 1, 1986
Celorio Garrido 6,012,890 Jan. 11, 2000
THE REJECTIONS
Claims 1 and 4-15 stand rejected as follows: under
35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the

subject matter which the appellant regards as the invention, and
under 35 U.S.C. § 103 as being obvious over Celorio Garrido in
view of Burton.
OPINION
Appeal No. 2006-1461
Application No. 09/653,224

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We reverse the aforementioned rejections.
Rejection under 35 U.S.C. § 112, second paragraph
The examiner argues: “In claims 1, 7, 12, It’s not clear the
phrase ‘selecting format criteria and page and cover media’ is
with respect to what? Changing the phrase to ‘selecting the book
format criteria and book page and book cover media’ is
recommended to improve clarity” (answer, page 3).1
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of the
appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner has not addressed the disclosure throughout the
appellant’s specification directed toward books and explained
why, in view of that disclosure, one of ordinary skill in the art
would not have reasonably considered the format criteria, page
and cover media in claims 1, 7 and 12 to pertain to books.
Hence, the examiner has not carried the burden of
establishing a prima facie case of indefiniteness of the
appellant’s claims 1, 7 and 12.

1 Claim 7 does not include the phrase “selecting format criteria and page and
cover media”. Thus, we consider the examiner’s rejection of claim 7 to
pertain to the phrase “selecting page and cover media as well as format
criteria”.
Appeal No. 2006-1461
Application No. 09/653,224

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Rejection under 35 U.S.C. § 103
Each of the appellant’s independent claims (1, 7 and 12)
requires that a set of books, once manufactured, will fit within
a book storage space having a received dimension.
Celorio Garrido provides books on demand and teaches that
some information such as “paper size, font size, and type, which
is of great importance for visually challenged people, may be
altered by the customer by issuing instructions through the user
interaction means 6 according to his/her needs and or desires”
(col. 7, lines 9-13), and that “each book may be produced in a
plurality of sizes” (col. 7, line 29).

Burton produces individually tailored suits by cutting
appropriately sized parts from a supply of fabric (col. 1,
lines 9-11). Burton states that “[t]he manufacturing process
need not be limited to a men’s suit although certain ones of the
manufacturing steps have obviously been described in relation to
a man’s suit” (col. 11, lines 12-15).
The examiner argues that one of ordinary skill in the art
would have applied Burton’s made-to-measure technique to Celorio
Garrido’s book on demand system to obtain the benefits of
Burton’s technique, which are providing fit and reducing waste
and inventory (answer, page 5). The examiner argues that “[a]s
for the different [sic] in the type of item, book vs. suit,
Appeal No. 2006-1461
Application No. 09/653,224

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another particular utility, that is not critical and within the
skill of the artisan, manufacturing engineer, as mentioned by
GARRIDO [Burton?] above. In other word, mere applying the same
manufacturing steps to other similar/equivalent items to obtain
similar results would have been obvious to a skilled artisan in
the manufacturing art, absent evidence of unexpected results.”
(Answer, page 6).

The examiner has not provided evidence that one of ordinary
skill in the art would have considered books and suits to be
similar or equivalent, or that fitting a suit to a person
involves the same manufacturing steps as fitting a book to a
shelf. As for Burton’s statement relied upon by the examiner
(answer, page 5) that the manufacturing process need not be
limited to men’s suits (col. 11, lines 12-13), the examiner has
not established that this statement would have fairly suggested,
to one of ordinary skill in the art, applying the process to
books versus merely applying it to another clothing article.
Thus, the record indicates that the examiner used
impermissible hindsight in combining the applied references to
arrive at the appellant’s claimed invention. See W.L. Gore &
Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Appeal No. 2006-1461
Application No. 09/653,224

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DECISION
The rejections of claims 1 and 4-15 under 35 U.S.C. § 112,
second paragraph, and under 35 U.S.C. § 103 over Celorio Garrido
in view of Burton, are reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
MURRIEL E. CRAWFORD ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

Appeal No. 2006-1461
Application No. 09/653,224

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Intellectual Property Administration
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