Ex Parte Pontecorvo

Board of Patent Appeals and Interferences

Dec 30, 2003

09898334 (B.P.A.I. Dec. 30, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GARY J. PONTECORVO
___________
Appeal No. 2004-0120
Application No. 09/898,334
__________
ON BRIEF
_________
Before WALTZ, WARREN, and KRATZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 20, which are the only claims
pending in this application. We have jurisdiction pursuant to 35
U.S.C. § 134.
According to appellant, the invention is directed to a
binder for holding a plurality of sheets, including a front
member, a back member, and a spine connecting means, where at
least one whiteboard is attached to the outside surface of the
front member, the inside surface of the front member, or the
Appeal No. 2004-0120
Application No. 09/898,334
2
outside surface of the back member and/or spine connecting means
(Brief, page 2).
Appellant states that the claims should be considered in two
groups as grouped in the two rejections under appeal (Brief,
pages 4-5). We construe this statement as meaning that the
claims stand or fall together for each ground of rejection, and
thus we select one claim from each ground of rejection and decide
the rejection on the basis of this claim alone. See 37 CFR
§ 1.192(c)(7)(2000); and In re McDaniel, 293 F.3d 1379, 1383, 63
USPQ2d 1462, 1465 (Fed. Cir. 2002). A copy of illustrative
independent claim 1 is attached as an Appendix to this decision.
The examiner relies upon the following references as
evidence of obviousness:
Lazar 4,589,685 May 20, 1986
Ong 5,876,143 Mar. 2, 1999
Dottel 5,971,650 Oct. 26, 1999
Claims 1-18 and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Dottel in view of Lazar (Answer, page 3,
referring to the rejection set forth in the final Office action
dated Nov. 5, 2002, Paper No. 6). Claim 19 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Dottel in view of Lazar
and Ong (Answer, page 4; see Paper No. 6). We affirm the
examiner’s rejections on appeal essentially for the reasons
Appeal No. 2004-0120
Application No. 09/898,334
1As discussed above, we select claim 1 from the grouping of
rejected claims and decide this ground of rejection on the basis
of this claim alone. See 37 CFR § 1.192(c)(7)(2000).
2According to appellant, “‘[w]hiteboards’ are known and are
meant to devote [sic, denote] flat surface components, which
receive marker and similar writings and are readily erasable.”
Specification, page 6, ll. 10-12.
3
stated in the Answer, the final Office action (Paper No. 6), and
those reasons set forth below.
OPINION
The examiner finds that Dottel discloses a binder comprising
a front member and back member with inside and outside surfaces;
a fastener and spine connecting means for holding the front and
back members together; where the cover is movable by a hinge
arrangement; a binding means for binding sheets and a label
attached to an outside surface of the spine (Paper No. 6, page
3). The examiner recognizes that Dottel fails to disclose a
label being a whiteboard (id.).1 Therefore the examiner applies
Lazar for the disclosure of a whiteboard label2 which can be
attached to an article to provide a readily changeable label
(id.). From these findings, the examiner concludes that it would
have been obvious to one of ordinary skill in the art to modify
the binder of Dottel to include the whiteboard label taught by
Appeal No. 2004-0120
Application No. 09/898,334
3We note that Dottel does not specifically describe or
number what appears to be a label on the spine 2 (see Figure 5).
However, since appellant agrees with the examiner that the
structure on the spine 2 of Dottel is a label (Brief, page 8,
second full paragraph), we accept the examiner’s finding
regarding the label of Dottel.
4
Lazar for the purpose of providing a changeable labeling system
(id.). We agree.
Appellant argues that Lazar does not teach a binder anywhere
in the text or drawings (Brief, page 7). As correctly noted by
the examiner (Answer, page 4), Dottel is relied upon to show the
basic binder with a label3 while Lazar is relied upon for the
teaching of a whiteboard labeling system for articles in general,
specifically video or audio cassettes. A reference is available
for all that it discloses and suggests to one of ordinary skill
in the art, and is not limited to its preferred embodiments. See
In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979);
In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
Therefore appellant’s argument is not persuasive.
Appellant argues that there is no suggestion, teaching or
need, expressed or implied, in either Dottel or Lazar to utilize
the teachings of the other (Brief, page 8). Appellant submits
that one making filing devices as taught by Dottel would not turn
Appeal No. 2004-0120
Application No. 09/898,334
4See U.S. Patent No. 6,109,812, as discussed on pages 4-5 of
the specification. It is axiomatic that admitted prior art in an
applicant’s specification may be used in determining the
patentability of a claimed invention (In re Nomiya, 509 F.2d 566,
570-71, 184 USPQ 607, 611-12 (CCPA 1975)); and that consideration
of the prior art cited by the examiner may include consideration
of the admitted prior art found in an applicant’s specification
(In re Davis, 305 F.2d 501, 503, 134 USPQ 256, 258 (CCPA 1962);
cf., In re Hedges, 783 F.2d 1038, 1039-40, 228 USPQ 685, 686
(Fed. Cir. 1986)). We also note that Ong, cited by the examiner
against claim 19 on appeal, is directed to binders with removable
inserts to achieve a changeable labeling system (see Fig. 5B).
5
to the art of toys and novelties, as taught by Lazar, for
information on how to make labels (id.).
Appellant’s arguments are not persuasive. Appellant does
not contest that Dottel discloses a binder with a label on its
spine (Brief, page 8, second full paragraph). It was well known
in the binder art that a changeable labeling system was desired.4
Lazar teaches that “[i]n some applications however a changeable
label is desirable, in that the contents of the article or the
status of the article has changed.” Col. 1, ll. 15-18. Thus
Lazar teaches use of a “magic slate” label, i.e., a whiteboard,
to provide a changeable labeling system (col. 2, ll. 15-20). As
taught by Lazar, the changeable labeling system “can be used on a
multitude of articles” and, although exemplified by use on video
cassettes or holders, “this invention is by no means limited in
its application.” Col. 2, ll. 55-59. Accordingly, we determine
Appeal No. 2004-0120
Application No. 09/898,334
6
that the admitted prior art expresses the need for a changeable
labeling system, as taught by Lazar, in the binder of Dottel. We
disagree with appellant’s assessment of Lazar as directed to
“toys and novelties” (Brief, page 8) since it is clear that Lazar
is directed to changeable labeling systems (e.g., see the title
and abstract, as well as the specific uses on video and audio
cassettes and holders).
Appellant argues that, even if the combination of references
is “valid,” the references fail to show front side or back side
labels, much less whiteboard labels with transparent covers on
front or back sides (Brief, page 8). This argument is not well
taken since it is based on features not recited nor required in
the claim under consideration (claim 1 on appeal).
With regard to the rejection of claim 19, appellant
reasserts all of the previous arguments (Brief, page 9).
Accordingly, we adopt our remarks and discussion from above, as
well as the examiner’s findings and conclusions of law from the
final Office action and the Answer. Appellant further argues
that the combination of Lazar and Ong is inappropriate because
they “teach away” from each other, Lazar directed to a labeling
Appeal No. 2004-0120
Application No. 09/898,334
7
system where the label remains attached while Ong teaches that a
label is replaced every time the title is modified (Brief, page
10).
Appellant’s argument is not persuasive. Lazar teaches that
the writing surface of the label may be protected by a
transparent sheet (col. 2, ll. 30-34; Paper No. 6, page 3).
Furthermore, Lazar teaches that the whiteboard label may be
secured to a holder (i.e., a binder) in any desirable manner (see
col. 4, ll. 59-65). Ong has been applied by the examiner to show
a method of attaching a label to a binder by inserting the label
(42) in a pocket (30') located on any member surface (Paper No.
6, page 4; Answer, page 5). Accordingly, we determine that Lazar
and Ong do not teach away from each other but merely teach
different methods of attaching a label to an article.
For the foregoing reasons, as well as those stated in the
Answer and in the final Office action (Paper No. 6), we determine
that the examiner has established a prima facie case of
obviousness in view of the reference evidence. Based on the
totality of the record, including due consideration of
appellant’s arguments, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness within the
meaning of section 103(a). Accordingly, we affirm the rejection
Appeal No. 2004-0120
Application No. 09/898,334
8
of claims 1-18 and 20 under 35 U.S.C. § 103(a) over Dottel in
view of Lazar and the rejection of claim 19 under 35 U.S.C.
§ 103(a) over Dottel in view of Lazar and Ong.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Charles F. Warren )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Thomas A. Waltz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Peter F. Kratz )
Administrative Patent Judge )
TAW/tdl
Appeal No. 2004-0120
Application No. 09/898,334
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Kenneth P. Glynn, Esq.
24 Mine Street
Flemington, NJ 08822-1598
Appeal No. 2004-0120
Application No. 09/898,334
1
APPENDIX
1. A binder for holding a plurality of sheets, which
comprises:
(a.) a front member, having an outside surface and an
inside surface;
(b.) a back member, having an outside surface and an
inside surface;
(c.) connecting means for holding said front member and
said back member together;
(d.) binding means for temporarily binding a plurality
of sheets between said front member and said back
member; and,
(e.) at least one whiteboard attached to at least one
of said outside surface of said front member, said
inside surface of said front member, said outside
surface of said back member and said connecting
means.