Ex Parte Nash

Board of Patent Appeals and Interferences

Mar 23, 2010

11052953 (B.P.A.I. Mar. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACKIE NASH
____________

Appeal 2009-008280
Application 11/052,953
Technology Center 3700
____________

Decided: March 24, 2010
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Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jackie Nash (Appellant) appeals under 35 U.S.C. § 134 (2006) from
the Examiner’s decision rejecting claims 20-33 and 35-44. Appellant’s
representative presented oral argument on March 11, 2010. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2006).

THE INVENTION
Appellant’s invention relates to a presentation folder 1 for color
samples having multiple panels 2 whereby each panel including a plurality
of cards 3 holding color samples 7. Spec. 12-13 and fig. 1.
Claim 20 is representative of the claimed invention and reads as
follows:
20. A presentation folder for color samples, comprising:

at least two panels forming at least one panel pair,
wherein the at least two panels are hingedly coupled by a spine
to move from a first closed position to a second opened
position, wherein in the first closed position the at least two
panels are aligned approximately parallel to one another, and
interior surfaces of the at least two panels face towards the
other, and in the second open position, the interior surfaces of
the at least two panels are visible and the at least two panels are
aligned to one another at an angle;

cards composed of color samples are positioned on the
interior surface of the at least two panels, and the cards are
arranged to partially overlap one another;

each card having one end adhered to one of said panels,
whereby each card can be folded open; and

each card pivoting about a hinge axis that is parallel to
the spine.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kern US 1,618,664 Feb. 22, 1927
Barta US 1,704,675 Mar. 5, 1929
Plutsky US Des. 264,602 May 25, 1982
Thompson US 5,316,138 May 31, 1994

The following rejections are before us for review:
A. The Examiner rejected claims 20-23, 25-33, 35, 36, 40, and 42-
44 under 35 U.S.C. § 103(a) as unpatentable over Kern and
Barta.
B. The Examiner rejected claims 24, 37, and 41 under 35 U.S.C.
§ 103(a) as unpatentable over Kern, Barta, and Plutsky.
C. The Examiner rejected claims 38 and 39 under 35 U.S.C.
§ 103(a) as unpatentable over Kern, Barta, Plutsky, and
Thompson.
D. The Examiner rejected claims 20-23, 25-33, 35, 36, 40, and 42-
44 under 35 U.S.C. § 103(a) as unpatentable over Barta and
Kern.
E. The Examiner rejected claims 24, 37, and 41 under 35 U.S.C.
§ 103(a) as unpatentable over Barta, Kern, and Plutsky.
F. The Examiner rejected claims 38 and 39 under 35 U.S.C.
§ 103(a) as unpatentable over Barta, Kern, Plutsky, and
Thompson.

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OPINION
Rejection (A)
Although independent claims 20, 42, and 43 appear to be argued
separately because of separate headings, nonetheless, Appellant presents
essentially identical arguments with respect to the rejection of each of
independent claims 20, 42, and 43 under 35 U.S.C. § 103(a) as unpatentable
over Kern and Barta. See App. Br. 6-15. As such, the following analysis
applies equally to claims 20, 42, and 43 rejected over the combined
teachings of Kern and Barta. Therefore, in accordance with 37 C.F.R.
41.37(c)(1)(vii)(2009), we have selected claim 20 as the representative claim
to decide the appeal, with claims 21-23, 25-32, 35, 36, 42, and 43 standing
or falling with claim 20. In view of Appellant’s arguments, we will address
the rejection of claims 31, 33, 40, and 44 separately.

Claims 20-23, 25-32, 35, 36, 42, and 43
Appellant argues that, “KERN does not teach or suggest two or more
panels” and that “BARTA clearly fails to disclose, or even suggest, that each
card has one end adhered to one of the panels.” App. Br. 7. Appellant
further argues that the sample cards 9 of Barta do not “pivot about a hinge
axis that is parallel to a spine.” App. Br. 8. Appellant’s argument appears to
attack the teachings of Kern and Barta individually, rather than the
combination of Kern and Barta. See also Reply Br. 2-3. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Appellant notes that the overlapping design of Kern’s chart displays
the entire line of cards to the user at once and protects the cards from light
and dust. App. Br. 8. Appellant further notes that the spine design of Barta
similarly protects the cards from light and dust and as such,
. . . there is no articulated reasoning for modifying
KERN in the manner suggested by the Examiner,
since there is no identifiable reason for doing so in
the applied documents themselves, i.e., the stated
benefit of foldable panels interconnected by a
spine, as described by BARTA, would already be
present in KERN. Thus, it appears the only reason
for combining these documents is impermissible
hindsight.
App. Br. 8-9. Emphasis added. See also Reply Br. 3-4.
As far as we understand, Appellant appears to argue that the rejection
does not have any suggestion or motivation to modify the reference. This
argument is foreclosed by KSR, in which the Court rejected the rigid
requirement of a teaching, suggestion or motivation to combine known
elements in order to show obviousness. KSR Int'l. Co. v. Teleflex lnc., 550
U.S. 398, 418-19 (2007). The Court noted that an obviousness analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
In this case, it is our finding that Kern discloses a panel for holding a
plurality of partially overlapping color sample cards 3 that have a scored
extension 4 glued (adhered) to the panel 1. Kern, p. 1, ll. 53-64 and figs. 1
and 2. Barta discloses a holder 4 having a plurality of hinged sections 5
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including a plurality of pockets 6 wherein each pocket 6 holds a plurality of
cards 9. Barta, p. 1, ll. 36-37, 50-51, and 69-70 and fig. 1. As such,
Appellant’s claimed presentation folder is nothing more than the panel of
Kern having additional panels hingedly connected as taught by Barta. A
person of ordinary skill in the art would have immediately appreciated that
providing additional panels to the panel of Kern would provide the same
benefit, namely, increasing the number of colored samples that can be
displayed. As such, modifying the panel of Kern to include a plurality of
hingedly connected panels as taught by Barta would not have been uniquely
challenging to a person of ordinary skill in the art, because it is no more than
“the mere application of a known technique to a piece of prior art ready for
the improvement.” KSR, 550 U.S. at 417. Therefore, the modification
appears to be the product not of innovation but of ordinary skill and common
sense. In conclusion, we agree with the Examiner that:
Therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention
was made to have modified the device of Kern
with a second panel connected by a spine as taught
by Barta in order to hold a larger number of cards.

Ans. 3-4.
Appellant further argues that if the spine design of Barta is
incorporated into Kern’s chart, “the user would not be able to see ‘the entire
line at once’” as desired by Kern and would “fail to teach or suggest each
card pivoting about a hinge axis that is parallel to the spine.” App. Br. 9.
First, we find that both Kern and Barta disclose the ability to display the
colored cards at once. Specifically, we find that Kern discloses
“display[ing] the entire line at once” (see Kern, p. 1, l. 7) and Barta
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discloses that, “each color in all its shades is presented to view at one time
for inspection and comparison with the others” (see Barta, p. 1, ll. 6-9).
Second, we note that obviousness does not require that all of the features of
the secondary reference be bodily incorporated into the primary reference.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment. Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Like the Examiner, we
find that additional panels are attachable either in a side-by-side arrangement
or to the top and bottom of Kern’s panel. See Ans. 13. Providing the
additional panels to the top and bottom of Kern’s panel would have
permitted a person of ordinary skill in the art to see “the entire line at once,”
as desired by Kern, while allowing the cards to pivot about a hinge axis that
is parallel to the spine. After all, "[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421.
Lastly, Appellant argues that modifying Kern to include a plurality of
panels as taught by Barta would “prevent KERN from functioning as a
sample display which is designed to provide ‘at a glance’ information to a
consumer passing by the suspended display.” Reply Br. 2. Emphasis added.
In other words, Appellant’s argument appears to opine that Barta teaches
away. This argument is not persuasive because in order to “teach away” a
reference must “criticize, discredit, or otherwise discourage the solution
claimed… .” In re Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004). Barta’s
multiple panels do not show that Barta teaches away because “familiar items
may have obvious uses beyond their primary purposes.” In re ICON Health
& Fitness, Inc., 496 F. 3d 1374, 1380 (Fed. Cir. 2007) (citations omitted).
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Furthermore, as found above, Barta discloses the ability to display the
colored cards at once (see Barta, p.1, ll. 7-9). We could not find any portion
in Barta or Kern that would discourage a person of ordinary skill in the art
from adding extra panels as taught by Barta to the color panel of Kern.
Moreover, we disagree with Appellant’s position that Kern’s panel is
designed to be viewed while “passing by.” Reply Br. 2. Although we agree
that the panel of Kern is adapted to be vertically supported this does not
mean that it is specifically designed to be used while a user is passing by the
panel. We could not find any reason, and Appellant has not provided any
reason, why Kern’s panel cannot be used on a horizontal surface. As such,
we find Appellant’s position that Kern’s panel “is designed to provide ‘at a
glance’ information to a consumer passing by the suspended display” (Id.) to
be speculative.
In conclusion, for the foregoing reasons, the rejection of claim 20, and
claims 21-23, 25-32, 35, 36, 42, and 43, standing or falling with claim 20, is
sustained.

Claims 31 and 33
With respect to claims 31 and 33, Appellant argues that the combined
teachings of Kern and Barta do not explicitly disclose that the cards are
“pivotably detachable.” See App. Br. 16-18. In response, the Examiner
takes the position that although Kern does not specifically disclose that the
cards are detachable, “the cards are inherently capable of being pulled from
the display in order to be used separately from the display panels.” Ans. 14.
Appellant counters that because the cards of Kern are permanently attached,
detaching the cards “would appear to destroy the functioning of the device
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because there is no apparent way to reattach the cards once detached.” App.
Br. 16. See also App. Br. 18 and Reply Br. 6-7.
We disagree with Appellant’s position for the following reasons.
First, we find that the color sample cards 3 of Kern are glued to the panel 1.
Kern, p. 1, ll. 60-61 and fig. 2. Hence, we disagree with the Appellant that
the cards 3 cannot be reattached, because they can merely be glued back to
the panel. Secondly, we note that what a reference teaches a person of
ordinary skill is not limited to what a reference specifically “talks about” or
what is specifically “mentioned” or “written” in the reference. Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). In this
case, although Kern does not specifically disclose detaching the color cards
3 from the panel 1, a person of ordinary skill in the art would have
recognized that glued cards can easily be detached. Moreover, the same
person of ordinary skill in the art would have readily appreciated that
because the color cards of Kern are used as paint color samples (see Kern, p.
1, ll. 1-4), it is common for a user to want to take a color sample to match it
against the existing color scheme at home. In conclusion, the rejection of
claims 31 and 33 is likewise sustained.

Claims 40 and 41
Appellant argues that the combined teachings of Kern and Barta do
not disclose a detachable panel pair. App. Br. 18-19. The Examiner takes
the position that “it is old and conventional to make a panel detachable from
the main body.” Ans. 5. The Examiner further states that Barta discloses
three panels that can be attached to each other at vertical strips 8, as shown
in Figure 2, or detached from one another as shown in Figure 1. Ans. 14.
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Appellant’s Specification does not expressly define the term
“detachable” or otherwise indicate that this term is used in a manner other
than its ordinary and customary meaning. Accordingly, we interpret this
term in accordance with its ordinary and customary meaning. We find that
the ordinary and customary meaning of the term “detached” that is most
consistent with the Specification and the understanding of those of ordinary
skill in the art is “standing by itself: SEPARATE: UNCONNECTED.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). In this
case, we find that at most, the three panels of Barta appear folded in Figure 2
and unfolded in Figure 1. We could not find any portion of Barta, and the
Examiner has not pointed to any portion, that discloses that any one of the
three panels can be separated or disconnected from the remaining two
panels. Accordingly, the rejection of claim 40 cannot be sustained.

Claim 44
Appellant argues that the combined teachings of Kern and Barta do
not disclose “columns with rows of color samples.” App. Br. 20.
Specifically, Appellant argues that, “because the cards 6 [of Kern] are
arranged in rows of color samples, there are no columns (as defined in claim
43), much less, columns with rows of color samples.” App. Br. 20.
Similarly, with respect to Barta, Appellant argues that “all of the cards 9 are
removable from pockets 6 and there are no columns (as defined in claim 43)
having rows of color samples.” Id.
Claim 43 requires “columns of color samples arranged to partially
overlap one another.” Claim 44 adds that, “each column comprises rows of
separated color samples.” Like the Examiner, we find that Kern discloses in
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Figure 1 four separated columns of color samples that are partially
overlapping and that each column includes a plurality of rows separated by
blank white spaces. See Ans. 6 and 13. In conclusion, we agree with the
Examiner that Kern specifically discloses the limitation “each column
comprises rows of separated color samples,” as required by claim 44.
Accordingly, the rejection of claim 44 is sustained.

Rejection (B)
Appellant argues that because the closure system of Plutsky is on a
raised molded section of the panel it “would not necessarily work on the
devices of KERN and BARTA.” App. Br. 21. In response, the Examiner
takes the position that the closure system of Plutsky “could easily be placed
on the corners of the panels to hold the panels together” and that “a raised
molded portion is not needed.” Ans. 14.
We agree with the Examiner’s position for the following reasons. At
the outset, like the Examiner, we find that Plutsky discloses a four panel
album having projections and apertures at the corners of the panels for
closing the panels. Plutsky, figs. 3 and 4. See also Ans. 11. Incorporating
the projections and apertures of Plutsky into the panels of Kern and Barta
appears to be nothing more than applying a technique used to improve the
usability of one device to improve a similar device in the same way. This
involves nothing more than ordinary creativity well within the technical
grasp of a person of ordinary skill in the art. See KSR, 550 U.S. at 417.
Lastly, Appellant’s argument that the raised molded portion of Plutsky
would not necessarily work with the panels of Kern and Barta is not
persuasive because obviousness does not require that all of the features of
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the secondary reference be bodily incorporated into the primary reference.
Keller at 425. "A person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR, 550 U.S. at 421. Hence, we agree with
the Examiner that the closure system of Plutsky “could easily be placed on
the corners of the panels to hold the panels together” and that “a raised
molded portion is not needed.” Ans. 14.
In conclusion, the rejection of claim 37 as unpatentable over the
combined teachings of Kern, Barat, and Plutsky is sustained. Since
Appellant does not argue the rejection of claim 24 separate from the
rejection of claim 37, the rejection of claim 24 is likewise sustained.
However, with respect to claim 41, we note that claim 41 depends
from claim 40. The addition of Plutsky does not remedy the deficiencies of
Kern and Barta as described above with respect to claim 40. Accordingly,
by virtue of its dependence from claim 40, the rejection of claim 41 cannot
be sustained.

Rejection (C)
Appellant argues that because the closure system of Thomson is
located on panels that do not have samples, such a closure system would not
necessarily work on the panels of Kern and Barat because it would require
additional panels. App. Br. 24. In response, the Examiner takes the position
that the magnets of Thomson would merely replace the closure system of
Plutsky. Ans. 14.
We agree with the Examiner’s position for the following reasons. It is
our finding that Thompson discloses a display kit using magnets 26, 28 as a
closure mechanism. Thompson, col. 1, ll. 30-35 and fig. 1. As such,
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Appellant’s claimed presentation folder is nothing more than the panels of
Kern, Barat, and Plutsky where the projections and apertures of Plutsky have
been replaced with the magnets of Thompson. Hence, modifying the panels
of Kern, Barat, and Plutsky to include the magnets of Thompson would not
have been uniquely challenging to a person of ordinary skill in the art,
because it is no more than “the simple substitution of one known element for
another.” KSR, U.S. 550 at 417. The modification appears to be the product
not of innovation but of ordinary skill and common sense.
Lastly, Appellant’s argument that additional panels would be required
is not persuasive because obviousness does not require that all of the
features of the secondary reference be bodily incorporated into the primary
reference. Keller, 642 F.2d at 425.
In conclusion, the rejection of claim 38 as unpatentable over the
combined teachings of Kern, Barat, Plutsky, and Thompson is sustained.
Since Appellant does not argue the rejection of claim 39 separate from the
rejection of claim 38, the rejection of claim 39 is likewise sustained.

Rejections (D), (E), and (F)
In rejections (D), (E), and (F), the Examiner has merely switched the
order of the teachings of Kern and Barta so that Barta is now a primary
reference and Kern is a secondary reference. Unlike the Examiner, we do
not consider the order in which prior art is applied in a rejection to be
significant. See, e.g., In re Bush, 296 F.2d 491, 496 (CCPA 1961).
Furthermore, Appellant’s arguments with respect to rejections (D), (E), and
(F), merely incorporate the arguments presented with respect to rejections
(A), (B), and (C), respectively. See App. Br. 25-32.
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In conclusion, for the reasons set forth above, the rejections under 35
U.S.C. § 103(a) of claims 20-23, 25-33, 35, 36, and 42-44 as unpatentable
over Barta and Kern; claims 24 and 37 as unpatentable over Barta, Kern,
and Plutsky; and claims 38 and 39 as unpatentable over Barta, Kern, Plutsky,
and Thompson are sustained. However, for the reasons discussed above, the
rejection under 35 U.S.C. § 103(a) of claim 40 as unpatentable over Barta
and Kern, and of claim 41 as unpatentable over Kern, Barat, and Plutsky
cannot be sustained.

DECISION
The Examiner’s decision is affirmed as to claims 20-33, 35-39, and
42-44 and reversed as to claims 40 and 41.
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-IN-PART

mls

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