Ex parte Pearce et al.

Board of Patent Appeals and Interferences

Nov 22, 1999

08571276 (B.P.A.I. Nov. 22, 1999)

Application for patent filed December 12, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JERRY W. PEARCE and J. ROCKLAND PROFFIT
_____________
Appeal No. 98-2034
Application No. 08/571,276 1
______________
ON BRIEF
_______________
Before ABRAMS, STAAB and GONZALES, Administrative Patent
Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 1 through 23, which are all of the claims
in the application.
Appeal No. 98-2034
Application No. 08/571,276
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We REVERSE.
The appellants' invention relates to a casing board for
use as an information and storage device having a substrate
formed from a rigid paper material, an opaque intermediate
covering affixed to the substrate and a transparent outer
layer attached to the substrate with a turned-edge corner. An
understanding of the invention can be derived from a reading
of exemplary claims 1 and 13 which appear in the "Appendix" to
the brief (Paper No. 11).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Boelema 2,318,192 May 04, 1943
Federbush et al. 2,801,115 Jul. 30, 1957
(Federbush)
Bachrach et al. 5,030,027 Jul. 09, 1991
(Bachrach)
Acker 5,069,568 Dec. 03, 1991
The following rejections are before us for review:
Claims 1, 8, 11 through 13, 18, 22 and 23 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Bachrach in view of Federbush;
Claims 2 through 7, 14 through 17, 20 and 21 stand
Appeal No. 98-2034
Application No. 08/571,276
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rejected under 35 U.S.C. § 103 as being unpatentable over
Bachrach in view of Federbush, as applied to claims 1 and 13,
and further in view of Acker; and
Claims 9, 10 and 19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bachrach in view of Federbush and
Acker, as applied to claims 2 and 14, and further in view of
Boelema.
The full text of the examiner's rejections and the
responses to the arguments presented by appellants appear in
the answer (Paper No. 16), while the complete statement of
appellants' arguments can be found in the brief.
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 have made the
determinations which follow.
The rejection of claims 1, 8, 11-13, 18, 22 and 23
under 35 U.S.C. § 103
Appeal No. 98-2034
Application No. 08/571,276
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In rejecting claims under 35 U.S.C. § 103 the examiner
bears the initial burden of presenting a prima facie case of
obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met
does the burden of coming forward with evidence or argument
shift to the applicant. Id. If the examiner fails to
establish a prima facie case, the rejection is improper and
will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). In order to establish the prima facie
obviousness of a claimed invention, all the claim limitations
must be taught or suggested by the prior art. In re Royka,
490 F.2d 981, 985, 180 USPQ 580, 583 (CCPA 1974).
Independent claim 1 is directed to a casing board for use
as an information displaying and storage device comprising a
generally rectangular rigid paper substrate having inner and
outer surfaces, an opaque intermediate covering layer affixed
to said substrate and covering at least the outer surface
thereof, and a transparent outer layer formed with at least
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three transparent flaps formed along at least three edges
thereof and affixed along at least three edges of the board to
at least one of the substrate and opaque layer to define a
pocket intermediate the transparent and opaque layers. The
claim further requires that the transparent flaps be:
folded over onto said opaque covering layer and fixed
thereto with end portions of each said transparent flap
overlying end portions of adjacent, perpendicularly
oriented transparent flaps with a remainder of said
trans-parent flaps being fixed to at least one of said
inner surface of said substrate and said opaque covering
layer.
Claim 13, in addition to requiring a transparent outer
layer formed with at least three transparent flaps secured in
the manner quoted above, requires opaque flaps extending along
each of the four sides of the opaque layer.
Bachrach discloses a cover for a notebook binder
comprising a cardboard substrate [20], an opaque vinyl
covering layer [40] heat sealed on all sides and a clear outer
sheet [44] heat sealed on three sides, but open on the top
edge [46] to form a pocket (col. 2, line 48-65).
Federbush discloses a cover or display panel for a
catalog binder having a frame board [37] and an outer cover
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sheet [19, 23, 39] of leather, cloth, paper, buckram or the
like. The cover sheet includes edge lapping portions [41]
which are adhered to the frame board [37] as shown in Figure
3. See, col. 1, line 71 through col. 2, line 1 and col. 2,
lines 53-60.
The examiner admits that Bachrach does not disclose a
casing board having a transparent outer layer formed with at
least three transparent flaps formed along at least three
edges, but takes the position that
[i]t would have been obvious to one of ordinary skill in
the art to modify the opaque covering layer and the
transparent outer layer to be formed with at least three
flaps formed along at least three edges as taught by
Federbush et al in order to provide an alternative means
to cover the casing board. (Answer, page 3).
Appellants argue (brief, page 6) that Federbush also does
not teach the use of any flaps that are overlapping and
secured in the specific manner quoted above from claim 1.
We agree. While Federbush arguably shows flaps, as
broadly recited in appellants' claims, on an outer cover sheet
[19, 23, 39], Federbush's Figure 3 does not show the flaps as
overlaying end portions of adjacent, perpendicularly oriented
flaps. Rather, Federbush shows the excess material at each
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corner of the frame board bunched and gathered.
Since all the claim limitations would not have been
taught or suggested by the combined disclosures of Bachrach
and Federbush, it follows that the examiner has not
established the prima facie obviousness of the invention set
forth in claims 1 and 13. See In re Royka, supra.
Accordingly, we cannot support the examiner's rejection of
independent claims 1 and 13 under 35 U.S.C. § 103.
Claims 8, 11 and 12, dependent on claim 1, and claims 18,
22 and 23, dependent on claim 13, contain all of the
limitations of their respective independent claim. Therefore,
we will also not sustain the standing 35 U.S.C. § 103
rejection of these claims.
The 35 U.S.C. § 103 rejections of claims
2-7, 9, 10, 14-17 and 19-21
Our review of Acker, which is used in combination with
Bachrach and Federbush to reject claims 2 through 7, 14
through 17, 20 and 21, and Boelema, which is used in
combination with Bachrach, Federbush and Acker to reject
claims 9, 10 and 19, reveals that these references fail to
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supply the deficiencies in
the Bachrach-Federbush combination discussed above. Since
claims 2 through 7, 9, 10, 14 through 17 and 19 through 21 are
dependent on either claim 1 or claim 13 and contain all of the
limitations of the claim from which they depend, we will not
sustain the standing 35 U.S.C. § 103 rejections of these
claims.
In summary, all of the examiner's rejections of claims 1
through 23 are reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 98-2034
Application No. 08/571,276
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vsh
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Francis M. Pinckney
Kennedy, Covington, Lobdell & Hickman
NationsBank Corporate Center
Suite 4200
100 North Tryon Street
Charlotte, NC 28202-4006