Ex parte Nijboer et al.

Board of Patent Appeals and Interferences

Aug 14, 2000

08590278 (B.P.A.I. Aug. 14, 2000)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANTON NIJBOER, FOKKE JAGER and HENRY W. DINGLEY
____________
Appeal No. 1999-0387
Application No. 08/590,278
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and JENNIFER D. BAHR, Administrative
Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 20, which are all of the claims
pending in this application.
We AFFIRM-IN-PART.
Appeal No. 1999-0387 Page 2
Application No. 08/590,278
Appeal No. 1999-0387 Page 3
Application No. 08/590,278
BACKGROUND
The appellants' invention relates to a record pad. A
copy of the claims under appeal is set forth in the appendix
to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Johnsen 3,945,870 Mar. 23,
1976
Drake EP 0 325 057 A2 July 26, 1989
Perriman et al. EP 0 486 127 A1 May 20, 1992
(Perriman)
Claims 1-4, 6, 7, 9, 10, 12, 16, 19 and 20 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Drake.
Claims 1-7, 9-12, 16, 19 and 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Drake.
Claims 8, 12-14, 17 and 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Drake in view of Johnsen.
Appeal No. 1999-0387 Page 4
Application No. 08/590,278
Claim 15 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Drake in view of Perriman.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (Paper No. 17,
mailed July 9, 1998) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 15,
filed March 31, 1998) and reply brief (Paper No. 18, filed
September 8, 1998) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 1999-0387 Page 5
Application No. 08/590,278
The anticipation rejection over Drake
We sustain the rejection of claims 1-4, 6, 7, 10, 12, 16
and 20 under 35 U.S.C. § 102(b) as being anticipated by Drake,
but not the rejection of claims 9 and 19.
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
Appeal No. 1999-0387 Page 6
Application No. 08/590,278
Claim 9 depends from claim 8. Since claim 8 was not
rejected as being anticipated by Drake and the limitations of
claim 8 are clearly not met by Drake, all the limitations of
claim 9 are not met by Drake. Similarly, claim 19 depends
from claim 17. Since claim 17 was not rejected as being
anticipated by Drake and the limitations of claim 17 are
clearly not met by Drake, all the limitations of claim 19 are
not met by Drake. Accordingly, the decision of the examiner
to reject claims 9 and 19 under 35 U.S.C. § 102(b) is
reversed.
Drake discloses a record book or pad which is
manufactured with record sheets 2 and removable sheets 1
disposed in pairs. An image transfer element is provided for
transferring manuscript
notes 7, 7a from sheet 1 to sheet 2 in a pair. Each removable
sheet 1 has a line of weakness 5 whereby a portion 1a of that
sheet can be torn from a spine part 3 of the book or pad.
Drake teaches (column 3, lines 26-30) that each removable
sheet may be sub-divided (for example, by cut lines or
perforations) into two or more coplanar sheet portions each
Appeal No. 1999-0387 Page 7
Application No. 08/590,278
having a line of weakness which permits that sheet portion to
be torn from the spine part of the book or pad. Each portion
1a has on its underside surface a region 9 of low tack
adhesive by which that portion can be attached temporarily to
a receptive surface remote from the book. The low tack
adhesive is preferably applied as a strip 8 with a width
sufficient to extend from the spine part of each removable
sheet 1, over the line of weakness 5, to provide the region 9
on the removable portion 1a. The sheets are bound together
along the spine part 3 by a helical wire 4 which extends
parallel to an edge of the stack. Drake provides that Figure
1 is a perspective view of the book showing a removable sheet
portion of a removable sheet having three such portions
positioned to be torn from the book and that Figure 2 shows an
end view of the book and diagrammatically illustrates the
structure of the record and removable sheets with the low tack
adhesive.
The examiner's anticipation rejection is based on his
view that the subject matter of claims 1-4, 6, 7, 10, 12, 16
and 20 is "readable" on Drake. The heart of this rejection is
Appeal No. 1999-0387 Page 8
Application No. 08/590,278
In that regard, the manuscript notes 7, 7a shown in1
Figure 1 are indicia of the message notes to be written on the
record pad.
the examiner's view that the claimed upper margin is
"readable" on the edge portion of Drake's removable sheet 1
adjacent the spine part 3 where the sheets are bound together.
The appellants disagree for the reasons set forth in the brief
(pp. 5-8) and reply brief (pp. 1-2). In the appellants' view,
the edge portion of Drake's removable sheet 1 adjacent the
spine part 3 is not the upper margin of the sheet 1 during
normal use since it is a side margin during normal use.
We agree with the examiner that the claimed upper margin
is "readable" on the edge portion of Drake's removable sheet 1
adjacent the spine part 3 where the sheets are bound together.
It is our view that the record pad of Drake (shown in Figures
1-2) has at least two "normal use" positions since Drake's
record pad does not have any configuration (e.g., preprinted
words on portions 1a of the removable sheets 1) dictating one
"normal use" position. The first "normal use" position of1
Drake's record pad is where the spine part 3 and helical wire
Appeal No. 1999-0387 Page 9
Application No. 08/590,278
We note that it is well known in this art that the2
helical wire that bounds sheets of a book or pad together is
normally positioned along either the top edge or the left
edge.
4 are positioned on the left side. The second "normal use"
position of Drake's record pad is where the spine part 3 and
helical wire 4 are positioned on the top side. 2
When Drake's record pad is in its second "normal use"
position, claim 1 is readable on Drake as follows. A record
pad (see Figures 1 and 2 of Drake) comprising: a plurality of
sheet sets (see column 4, lines 27-30, of Drake), each sheet
set comprising a paper top sheet having a top face and a
bottom face (Drake's removable sheet 1), at least one
underlying record bottom sheet (Drake's record sheet 2), and a
transfer mechanism for transferring indicia imaged on said top
sheet to an underlying said record sheet (see column 4, lines
30-45, of Drake); said top sheet comprising an upper margin, a
lower margin substantially parallel to said upper margin, and
first and second side margins substantially perpendicular to
said upper and lower margins, said upper margin being at the
upper portion of said top sheet during normal use of said top
Appeal No. 1999-0387 Page 10
Application No. 08/590,278
sheet to enter indicia on said top sheet (see Figure 1 of
Drake, the spine part 3 being located at the upper margin of
the sheets 1 & 2); a securing edge margin of each sheet set of
said plurality of sheet sets for connecting said sheet sets in
a record pad (Drake's spine part 3); and a pattern of
repositional adhesive provided on each said top sheet bottom
face adjacent to said upper margin and substantially parallel
to said upper margin (Drake's strip 8 of low tack adhesive).
When Drake's record pad is in its second "normal use"
position, claim 2 is readable on Drake as follows. A record
pad as recited in claim 1 further comprising at least one line
of weakness in each said top sheet extending substantially
parallel to said upper margin dividing said top sheet into at
least a first portion containing said upper margin, and at
least a second portion on the opposite side of said at least
one line of weakness from said upper margin (Drake's
longitudinal line of weakness in the form of perforations 5
that extend parallel to the spine part 3); and wherein said
pattern of repositional adhesive comprises a first pattern
(the portion of Drake's strip 8 of low tack adhesive that
Appeal No. 1999-0387 Page 11
Application No. 08/590,278
remains with the pad when the sheets 1 are removed from the
pad); and further comprising at least a second pattern of
repositional adhesive on said bottom face of top sheet
adjacent a said line of weakness on the opposite side thereof
from said upper margin, said second pattern substantially
parallel to said upper margin (the portion of Drake's strip 8
of low tack adhesive that remains with the sheets 1 when the
sheets 1 are removed from the pad).
In like manner, claim 3 is readable on Drake as follows.
A record pad as recited in claim 2 wherein said patterns of
repositional adhesive are substantially continuous linear
strips of adhesive (both portions of Drake's strip 8 are
substantially continuous linear strips of adhesive).
In similar manner, claim 4 is readable on Drake as
follows. A record pad as recited in claim 3 wherein said top
sheet upper and lower margins are shorter than said top sheet
side margins (the top upper and lower margins of Drake's sheet
portion 1a are shorter than its side margins).
Appeal No. 1999-0387 Page 12
Application No. 08/590,278
In like manner, claim 6 is readable on Drake as follows.
A record pad as recited in claim 4 wherein said securing edge
margin of each sheet set is adjacent said upper margin of each
of said top sheets and said record sheets (the securing edge
margin (Drake's spine part 3) of each of Drake's sheet set is
adjacent the upper margin of each of the removable sheets 1
and the record sheets 2).
In similar manner, claim 7 is readable on Drake as
follows. A record pad as recited in claim 1 further
comprising a mechanical attachment adjacent said securing edge
margin connecting all of said sheet sets together (Drake's
helical wire 4), and a through cut line between said top sheet
and said mechanical attachment (Drake's line of weakness 5 can
be either a cut line or perforations as taught in column 3,
lines 26-30).
In like manner, claim 10 is readable on Drake as follows.
A record pad as recited in claim 1 wherein said securing edge
margin of each sheet set is adjacent said upper margin of each
Appeal No. 1999-0387 Page 13
Application No. 08/590,278
of said top sheets and said record sheets (the securing edge
margin (Drake's spine part 3) of each sheet set is adjacent
the upper margin of each of the removable sheets 1 and the
record sheets 2).
In similar manner, claim 12 is readable on Drake as
follows. A record pad as recited in claim 1 further
comprising securing means for securing said top and record
sheets at said securing edge margin thereof (Drake's helical
wire 4); and wherein said securing edge margin of each sheet
set is adjacent said upper margin of each of said top sheets
and said record sheets (the securing edge margin (Drake's
spine part 3) of each sheet set is adjacent the upper margin
of each of the removable sheets 1 and the record sheets 2);
and further comprising a line of weakness between each of said
top sheets and said securing means (Drake's longitudinal line
of weakness in the form of perforations 5 that extend parallel
to the spine part 3), said pattern of repositional adhesive
adjacent said line of weakness (Drake's strip 8 of adhesive is
adjacent the perforations 5).
Appeal No. 1999-0387 Page 14
Application No. 08/590,278
Claim 16 is readable on Drake in much the same manner as
claim 2 is readable on Drake. Claim 20 is readable on Drake
in much the same manner as claim 12 is readable on Drake.
Thus, the argument presented by the appellant does not
convince us that the subject matter of claims 1-4, 6, 7, 10,
12, 16 and 20 is novel. Accordingly, the decision of the
examiner to reject claims 1-4, 6, 7, 10, 12, 16 and 20 under
35 U.S.C.
§ 102(b) is affirmed.
The obviousness rejection over Drake
We sustain the rejection of claims 1-4, 6, 7, 10, 12, 16
and 20 under 35 U.S.C. § 103 as being unpatentable over Drake,
but not the rejection of claims 5, 9, 11 and 19.
As noted above, Drake does teach all the limitations of
claims 1-4, 6, 7, 10, 12, 16 and 20. A disclosure that
anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the
epitome of obviousness." Jones v. Hardy, 727 F.2d 1524, 1529,
Appeal No. 1999-0387 Page 15
Application No. 08/590,278
In rejecting claims under 35 U.S.C. § 103, the examiner3
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to arrive at the
claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982);
In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974). Thus, we sustain the examiner's rejection of appealed
claims 1-4, 6, 7, 10, 12, 16 and 20 under 35 U.S.C. § 103.
As to claims 9 and 19, the examiner has not established
that the limitations of their respective parent claims (i.e.,
claims 8 and 17) would have been obvious at the time the
invention was made to a person having ordinary skill in the
art. The examiner has not applied any evidence sufficient to
establish a prima facie case of obviousness with respect to3
claims 9 and 19.
Appeal No. 1999-0387 Page 16
Application No. 08/590,278
Evidence of a suggestion, teaching, or motivation to4
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence."
E.g., McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977). See also
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
In this regard, if an artisan wanted the helical wire 45
of Drake to be on the side edge of the pad, the artisan would
have rotated the pad from its second "normal use" position to
its first "normal use" position.
As to claims 5 and 11, the examiner has not cited any
evidence as to why it would have been obvious at the time the4
invention was made to a person having ordinary skill in the
art to have the securing means at the side margin while having
the adhesive adjacent to the upper margin. Absent such5
evidence, we conclude that the only suggestion for modifying
Appeal No. 1999-0387 Page 17
Application No. 08/590,278
Drake in the manner proposed by the examiner to meet the
limitations of claims 5 and 11 stems from hindsight knowledge
derived from the appellants' own disclosure. The use of such
hindsight knowledge to support an obviousness rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the
examiner to reject claims 5, 9, 11 and 19 under 35 U.S.C. §
103 is reversed.
The obviousness rejection over Drake and Johnsen
We sustain the rejection of claims 12-14 and 18 under
35 U.S.C. § 103 as being unpatentable over Drake in view of
Johnsen, but not the rejection of claims 8 and 17.
In this rejection (answer, p. 4), the examiner determined
that it would have been obvious to one of ordinary skill in
the art "to utilize Johnsen's teaching of providing adhesive
spaced from the upper edge in the invention of Drake."
Appeal No. 1999-0387 Page 18
Application No. 08/590,278
Claim 8 reads as follows: A record pad as recited in6
claim 2 wherein two lines of weakness are provided in said top
sheets substantially parallel to said upper margin dividing
said top sheet into three portions.
Claim 17 reads as follows: A record pad as recited in
claim 16 wherein two lines [of weakness] are provided in said
top sheets substantially parallel to said upper margin
dividing said top sheet into three portions.
As to claims 8 and 17, the examiner has not established
that the limitations of these claims would have been obvious6
at the time the invention was made to a person having ordinary
skill in the art. The examiner has not applied any evidence
sufficient to establish a prima facie case of obviousness with
respect to claims 8 and 17.
As to claims 12-14 and 18, we conclude that it would have
been obvious at the time the invention was made to a person
having ordinary skill in the art to apply the teaching of
Johnsen (column 9, lines 2-6) of providing the tear lines
slightly above the respective adhesive band to Drake's pad so
that Drake's adhesive is spaced from the line of weakness to
protect the adhesive as taught by Johnsen. Furthermore, we
agree with the examiner (answer, p. 4) that the claimed
Appeal No. 1999-0387 Page 19
Application No. 08/590,278
distances set forth in claims 13, 14 and 18 "would have been
obvious based on routine experimentation for optimization."
This accords with the general rule that discovery of an
optimum value of a result effective variable (in this case,
the optimum distance) is ordinarily within the skill of the
art. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980) and In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955). As stated in In re Huang, 100 F.3d 135, 139,
40 USPQ2d 1685, 1688 (Fed. Cir. 1996):
This court and its predecessors have long held,
however, that even though applicant's modification
results in great improvement and utility over the
prior art, it may still not be patentable if the
modification was within the capabilities of one
skilled in the art, unless the claimed ranges
"produce a new and unexpected result which is
different in kind and not merely in degree from the
results of the prior art."
Additionally, as stated in In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990):
The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims. . . . These cases have consistently held
that in such a situation, the applicant must show
that the particular range is critical, generally by
Appeal No. 1999-0387 Page 20
Application No. 08/590,278
showing that the claimed range achieves unexpected
results relative to the prior art range [citations
omitted].
In the present case, however, the appellants have not
even alleged, must less established, that the claimed distance
produces unexpected results. Accordingly, the examiner's
rejection of claims 12-14 and 18 under 35 U.S.C. § 103 as
being unpatentable over Drake in view of Johnsen is sustained.
The obviousness rejection over Drake and Perriman
We will not sustain the rejection of claim 15 under
35 U.S.C. § 103 as being unpatentable over Drake in view of
Perriman.
Claim 15 reads as follows: A record pad as recited in
claim 1 further comprising a foldable flap connected along a
said side edge of said sheet sets and foldable about a fold
line parallel to said side edges.
Appeal No. 1999-0387 Page 21
Application No. 08/590,278
Figure 7 of Perriman shows a record pad 1 associated with
a cover 9. However, this cover is foldable along the edge
opposite to the securing means which retains the sheets
together to form the pad. If the teachings of Perriman were
to be combined with Drake it would have the cover fold about
the lower margin of Drake's pad, not the side margin as
recited by claim 15. Thus, the combination of the applied
prior art would not arrive at the claimed invention.
Accordingly, the decision of the examiner to reject claim 15
under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-4, 6, 7, 10, 12, 16 and 20 under 35 U.S.C. § 102(b)
is affirmed; the decision of the examiner to reject claims 9
and 19 under 35 U.S.C. § 102(b) is reversed; the decision of
the examiner to reject claims 1-4, 6, 7, 10, 12-14, 16, 18 and
20 under 35 U.S.C. § 103 is affirmed; and the decision of the
examiner to reject claims 5, 8, 9, 11, 15, 17 and 19 under
35 U.S.C. § 103 is reversed.
Appeal No. 1999-0387 Page 22
Application No. 08/590,278
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0387 Page 23
Application No. 08/590,278
NIXON & VANDERHYE
1100 N. GLEBE ROAD
8TH FLOOR
ARLINGTON, VA 22201-4714
Appeal No. 1999-0387 Page 24
Application No. 08/590,278
JVN/dl