Ex Parte Mok

Board of Patent Appeals and Interferences

Apr 2, 2009

10834991 (B.P.A.I. Apr. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALBERT MOK
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Appeal 2008-6348
Application 10/834,991
Technology Center 3700
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Decided: 1April 3, 2009
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Before: LINDA E. HORNER, STEVEN D.A. McCARTHY and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, 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 (2008), 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 the Notification Date (electronic
delivery).

Appeal 2008-6348
Application 10/834,991

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The Appellant’s claims being twice rejected, the Appellant appeals 1
under 35 U.S.C. § 134 (2002) from the rejection of claims 16 and 17 under 2
35 U.S.C. § 102(b) (2002) as being anticipated by Frank (US 4,991,990, 3
issued Feb. 12, 1991); from the rejection of claims 1-4 and 7 under 35 4
U.S.C. § 103(a) as being unpatentable over Frank and Moir (US 5,242,522, 5
issued Sep. 7, 1993); and from the rejection of claims 11-15 under 35 U.S.C. 6
§ 103(a) as being unpatentable over Frank and Manico (US 6,004,061, 7
issued Dec. 21, 1999). We have jurisdiction under 35 U.S.C. § 6(b) (2002). 8
We REVERSE. 9
Independent claims 1, 11 and 16 each recite a combined chopping 10
board, comprising a main chopping board and an additional chopping board. 11
Claims 2-4, 7, 12-15 and 17, the remaining claims on appeal, depend 12
ultimately from one of claims 1, 11 and 16. 13
Frank discloses photograph albums including stacks of pages held 14
together by threaded attachment assemblies. (Frank, col. 2, ll. 44-48 and 15
col. 3, ll. 29-43 and col. 3, ll. 52-60.) Frank’s album pages each have a spine 16
edge and two spaced openings along the spine edge. (Frank, col. 2, ll. 44-17
48.) The pages do not appear to be otherwise described. 18
Moir discloses a photograph album page made from biaxially-19
oriented, transparent polypropylene film panels.2 (Moir, col. 3, ll. 44-47.) 20
The two panels are permanently joined together by parallel equi-spaced lines 21
of hot-melt adhesive to form channels between the two panels. (Moir, col. 3, 22

2 Moir at column 3, lines 44-47, describes the material used to produce
the photograph album page as “polyethylene.” Elsewhere, however, Moir
describes the material as polypropylene. (E.g., col. 3, ll. 5-8 and col. 4, ll. 5-
9.) The description of the material as being polyethylene at col. 3, lines 44-
47 appears to be incorrect.
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Application 10/834,991

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ll. 49-55.) Paper strips are positioned in each of the channels to divide the 1
channels into front and rear compartments. (Moir, col. 3, ll. 59-62.) Loose-2
leaf punch holes may be punched into each channel. (Moir, col. 5, ll. 18-3
26.) 4
Manico discloses a dual-sided album leaf having a plurality of holes 5
in a margin area. (Manico, col. 2, ll. 54-56 and 59-62.) The album leaf 6
includes a sheet containing an adhesive material on both sides positioned in 7
a fold in a sheet of photographic paper or other image-bearing sheet 8
material. (Manico, col. 4, ll. 28-35; see also id., col. 3, ll. 21-24.) The 9
thickness of the sheet of photographic paper is in the range of 0.05 mm to 10
0.5 mm. (Manico, col. 3, ll. 31-32.) 11
“To anticipate a claim, a prior art reference must disclose every 12
limitation of the claimed invention, either explicitly or inherently.” In re 13
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Likewise, “[a]ll words in a 14
claim must be considered in judging the patentability of that claim against 15
the prior art” under § 103(a). In re Wilson, 424 F.2d 1382, 1385 (CCPA 16
1970). The Appellant contends that Frank, Moir and Manico would not 17
have not disclosed or suggested a combined chopping board comprising a 18
main chopping board and an additional chopping board as recited in claims 19
1, 11 and 16. (App. Br. 11, 14, 19.) 20
The Examiner finds that the back cover of Frank’s photograph album 21
constitutes a main chopping board; and that the front cover and album pages 22
constitute additional cutting boards. (Ans. 3.) More specifically, the 23
Examiner takes Official Notice that, in ordinary usage, the terms “chopping 24
board” and “cutting board” are synonymous. (Ans. 6.) The Examiner 25
further finds that the ordinary usage of “cutting board” is sufficiently broad 26
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Application 10/834,991

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to include “a board on which something (as food or cloth) is placed for 1
cutting.” (Id., citing WEBSTER’S NEW COLLEGIATE DICTIONARY (1975).) 2
The Examiner appears to find that Frank’s photograph album covers and 3
pages are “boards” and that placing something on those covers or pages for 4
cutting would constitute no more than a new property or use of the covers 5
and pages. (Ans. 5-6.) The Examiner concludes that a new property or use 6
for a photograph album such as Frank’s would not make the photograph 7
album patentable. 8
Neither Frank, Moir nor Manico expressly discloses chopping boards. 9
The ordinary usage of the word “chopping board” is not so broad as to 10
reasonably include photograph album covers and pages. The Examiner 11
points to no definition in the Appellant’s Specification which would broaden 12
the meaning of the term “chopping board” beyond the ordinary usage of the 13
term. The Examiner points to nothing disclosed in Frank, Moir or Manico 14
other than the covers and pages which might correspond to the “chopping 15
boards” recited in claims 1, 11 and 16. 16
Neither Frank, Moir nor Manico inherently discloses structures that 17
one of ordinary skill in the art would have understood to be capable of use as 18
chopping boards. As the Appellant points out (App. Br. 11), photograph 19
album covers and pages disclosed in Frank, Moir and Manico lack the 20
durability necessary so that things such as food or cloth might be cut on the 21
covers or pages without damaging the covers or pages. Although claim 22
recites a main chopping board or an additional chopping board comprising 23
polypropylene, it is unlikely that the biaxially-oriented, transparent 24
polypropylene film panels from which Moir’s album pages are made have 25
sufficient durability for the pages to act as chopping boards. Likewise, not 26
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every article having a flat surface and a thickness in the range of 0.05 mm to 1
0.5 mm as does Manico’s album page is suited for use in chopping things 2
such as food or cloth. 3
The combined teachings of Frank, Moir and Manico would not have 4
suggested a combined chopping board as recited in claim 1, 11 or 16. At the 5
very least, the Examiner has not articulated reasoning with some rational 6
underpinning to support the conclusion that a combined chopping board 7
comprising a main chopping board and an additional chopping board would 8
have been obvious from the teachings of Frank, Moir and Manico. 9
The Appellant is correct in asserting that Frank, Moir and Manico 10
would not have not disclosed or suggested a combined chopping board 11
comprising a main chopping board and an additional chopping board as 12
recited in claims 1, 11 and 16. Therefore, the Appellant has shown that the 13
Examiner erred in rejecting independent claims 1 and its dependent claims 14
2-4 and 7 under § 103(a) as being unpatentable over Frank and Moir. The 15
Appellant also has shown that the Examiner erred in rejecting independent 16
claims 11 and its dependent claims 12-15 under § 103(a) as being 17
unpatentable over Frank and Manico. The Appellant also has shown that the 18
Examiner erred in rejecting independent claims 16 and its dependent claim 19
17 under § 102(b) as being anticipated by Frank. 20
21
DECISION 22
The Examiner’s rejections of claims 1-4, 7 and 11-17 is REVERSED. 23
24
REVERSED 25
26
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