Ex Parte Neubauer et al

Patent Trial and Appeal Board

Feb 11, 2016

11549859 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111549,859 10/16/2006
4743 7590 02/16/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
William C. Neubauer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
28363/36886F 7694
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
02/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM C. NEUBAUER, ROGER MATTILA, and
ILIJA ILIJEVSKI
Appeal2014-001271
Application 11/549,859
Technology Center 3700
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and,
TARA L. HUTCHINGS, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1---6. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 "The real party in interest" is "G&K-VIJUK INTERN. CO RP." (Appeal
Br. 3.)
Appeal2014-001271
Application 11/549,859
STATEMENT OF THE CASE
The Appellants' invention "is directed to a method and machine for
forming informational items such as outserts." (Spec. i-f 2.)
Illustrative Claim2
1. A method of forming outserts having product
information printed thereon, said method comprising:
(a) folding a sheet of paper having product information
printed thereon by making a plurality of folds in said sheet of
paper to form a first folded article, said folds in said sheet of
paper being parallel to each other and parallel to a first
direction, said folds in said sheet of paper being made using a
first folding apparatus having a plurality of folding rollers;
(b) folding said first folded article by making a fold in
said first folded article to form a second folded article, said fold
in said first folded article being parallel to a second direction,
said second direction being perpendicular to said first direction,
said fold in said first folded article being made using a second
folding apparatus having a plurality of folding rollers;
( c) folding said second folded article by making a fold in
said second folded article to form a third folded article, said
fold in said second folded article being parallel to said second
direction;
( d) applying pressure to a folded article formed as a
result of at least paragraphs (a), (b) and ( c ); said pressure being
at least about 30 psi and being no greater than about 500 psi,
said pressure being applied by a pressing unit having a pair of
pressure rollers, a minimum spacing between the pair of
pressure rollers being adjustable by operation of a spacing
adjustment mechanism, wherein the pressure applied to the
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 17-18 of the Appeal Brie£
2
Appeal2014-001271
Application 11/549,859
folded article is adjustable by an adjustable pressure exerting
mechanism coupled to a support of one of the pressure rollers;
( e) depositing an adhesive on a portion of a folded article
formed as a result of at least paragraphs (a), (b) and ( c ); and
(f) after ( e ), making a final fold in a folded article formed
as a result of at least paragraphs (a), (b) and ( c) to form an
outsert, said final fold being parallel to said second direction
and being made so that said adhesive holds said outsert in a
substantially closed position so that said outsert has no exposed
unfolded exterior edges that lie in a direction parallel to said
final fold, said final fold being made using a final folding
apparatus comprising a plurality of folding rollers having a nip
therebetween and a movable blade member that forces a portion
of a folded article formed as a result of at least paragraphs (a),
(b) and ( c) towards said nip between said folding rollers of said
final folding apparatus.
Covey
Hoshi
Vijuk195
Vijuk300
References
us 3,688,624
us 4,427 ,405
us 4;812)95
us 6,068,300
Rejection
Sept. 5, 1972
Jan.24, 1984
Mar.14; 1989
May 30, 2000
The Examiner rejects claims 1---6 under 35 U.S.C. § 103(a) as
unpatentable over Vijuk300, Vijuk195, Covey, and Hoshi. (Final Action 2.)
ANALYSIS
Independent claim 1 is directed to a method of forming outserts
comprising three folding steps (steps a---c ), an adhesive-depositing step
(step e ), and a fourth and final folding step (step f). (Claims App.) The
Examiner finds that the combined teachings of Vijuk300 and Vijuk195
3
Appeal2014-001271
Application 11/549,859
render obvious a method of forming outserts comprising such steps. (See
Final Action 4--5.)
Independent claim 1 also requires a pressure-applying step (step d)
wherein pressure is "applied by a pressing unit having a pair of pressure
rollers" and wherein the pressure is "at least about 30 psi and being no
greater than about 500 psi." (Claims App.) The Examiner finds that Covey
teaches the concept of applying pressure to a folded article in this manner.
(Final Action 6.)
The Appellants argue that Covey does not constitute analogous art.
(See Appeal Br. 11-12.) The Appellants assert that the problem they faced
"was how to fold a large piece of paper into a small, compact form suitable
for pharmaceutical outsert applications." (Id. at 12.) According to the
Appellants, Covey "is directed to creating small compact forms by cutting
larger objects into small objects" and "[ c Jutting pharmaceutical outserts into
smaller sizes would lack all common sense" as they "could no longer be
reassembled into their original form to safely and effectively convey the
written dosage and other information provided thereon." (Id.) In view of
this distinction, the Appellants contend "Covey would not have reasonably
commended itself to the attention of the inventors when considering the
problem they faced." (Id.)
We are not persuaded by this argument because Covey is reasonably
pertinent to the particular problem with which the inventors were involved
and thus can be considered analogous art. 3 When we look to the Appellants'
3 "Two separate tests define the scope of analogous prior art: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed
and, (2) if the reference is not within the field of the inventor's endeavor,
4
Appeal2014-001271
Application 11/549,859
Specification, it reflects that the Appellants' invention "is directed to a
method and machine for forming informational items such as outserts."
(Spec. i-f 2.) This reflects that teachings regarding methods and machines for
forming items other than folded pharmaceutical outserts are not necessarily
outside the realm of the inventors' consideration. Covey deals with an
apparatus for "the handling of paper material and effecting physical changes
thereto." (Answer 10; see also Covey, col. 1, 11. 2-3, col. 6, 11. 11-12, col. 9,
11. 2-5.) As such, Covey logically would have commended itself to the
inventors' attention when considering problems related to a method and
machine for forming informational, and particularly paper, items.4
Consequently, Covey constitutes analogous art and qualifies as prior art for
this obviousness rejection.5
Independent claim 1 also requires "a minimum spacing between the
pair of pressure rollers" that is "adjustable by operation of a spacing
adjustment mechanism," and requires that "the pressure applied to the folded
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved." In re Bigio, 381F.3d1320, 1325
(Fed. Cir. 2004).
4 "A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor's endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor's attention in considering his problem." In re Klein, 647 F.3d 1343,
1348 -1349 (Fed. Cir. 2011).
5 Moreover, the Examiner finds that Hoshi teaches a folding apparatus that
applies pressure to a folded article (Final Action 5), and that "even in the
absence of the Covey reference, the limitation calling for the pressure to be
with the broad range of 30psi-500psi yields that such a designation would
have been an obvious matter of design choice and/or optimization of ranges"
(Answer 10).
5
Appeal2014-001271
Application 11/549,859
article" be "adjustable by an adjustable pressure exerting mechanism."
(Claims App.) The Examiner finds that Hoshi teaches the concept of a
folding apparatus with such spacing and pressure adjustment mechanisms.
(See Final Action 5.)
The Appellants argue that Hoshi does not disclose rollers having both
adjustable spacing and adjustable pressure. (See Appeal Br. 14.) Instead,
according to the Appellants, Hoshi discloses one set of rollers with adjustable
spacing and a separate set of rollers with adjustable pressure. (Id.)
We are not persuaded by this argument because the Appellants only
address why Hoshi does not precisely disclose a pair of paper-handling
rollers provided with both adjustable spacing and adjustable pressure
features. However, as alluded to by the Appellants, Hoshi' s adjustable
roller teachings include a teaching that a folding apparatus can comprise a
spacing adjustment mechanism for paper-handling rollers; and a teaching
that a folding apparatus can comprise an adjustable pressure exerting
mechanism for paper-handling rollers. (See Hoshi col. 5, 11. 31---68; col. 6,
11. 1-36.) The Appellants' arguments do not address why one of ordinary
skill, when employing inferences and creative steps corresponding to this
skill, would not "incorporate the Hoshi adjustable roller teachings" (Final
Action 6) into a folding apparatus so as to provide a pair of its paper-
handling rollers with both a spacing adjustment mechanism and an
adjustable pressure exerting mechanism. 6
6 An obviousness analysis "need not seek out precise teachings directed to
the specific subject matter of the challenged claim" as it can "take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
6
Appeal2014-001271
Application 11/549,859
In view of the foregoing, we are not persuaded by the Appellants'
arguments that the Examiner's rejection of independent claim 1 is improper;
and dependent claims 2---6 are not argued separately. Thus, we sustain the
Examiner's rejection of claims 1-6 under 35 U.S.C. § 103(a) as unpatentable
over Vijuk300, Vijuk195, Covey, and Hoshi.
DECISION
We AFFIRM the rejection of claims 1---6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
7