Ex Parte Singh

Board of Patent Appeals and Interferences

Nov 20, 2007

10161009 (B.P.A.I. Nov. 20, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BALBIR SINGH
____________

Appeal 2007-3254
Application 10/161,009
Technology Center 3700
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Decided: November 20, 2007
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Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 25-29. Claims 1-24 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM1.

1 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
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Application 10/161,009

THE INVENTION
The Appellant’s claimed invention is directed to a method of folding
materials comprising a primary roller for receiving material, and a primary
disk in communication with the roller for folding the material.
(Specification: 5, ll. 9-17). Claim 25, reproduced below is representative of
the subject matter of appeal.

25. A method for folding a material comprising the
steps of:
a) drawing the material between a primary roller and
a primary disk to initiate a fold; and
b) further drawing the material sufficiently around
said primary disk to complete the fold.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
JONES US 3,485,145 Dec. 23, 1969

The following rejections are before us for review:
1. Claims 25, 28, and 29 are rejected under 35 U.S.C. § 102(b) as
anticipated by Jones.
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

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2. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jones.

THE ISSUE
The first issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 25, 28, and 29 under 35 U.S.C. § 102(b) as
anticipated by Jones. This issue turns on whether Jones discloses a roller
which forms a fold.
The second issue is whether the Appellant has shown that the
Examiner erred in rejecting the claims 26-27 under 35 U.S.C. § 103(a) as
unpatentable over Jones. This issue turns on whether it would have been
obvious to use the device of Jones to fold the specific claimed materials.

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence2:
1. Webster’s New World Dictionary, Third College Edition (1988), lists
the primary definition of “roller” as: 1) a person or thing that rolls (in
various senses). The same dictionary lists the primary definition of “roll” as
a) to move by turning on an axis over and over and b) to rotate about its axis
lengthwise, as a spacecraft in flight.
2. Jones shows an internal gusset guide (4) which may be considered a
“roller” since it appears to turn about its axis (the unnumbered mounting
pin) over and over as seen in Figures 1 and 2.

2 See Ethicon, Inc. v. Quigg, F.2d 1422, 1427 (Fed. Cir. 1988) explaining the
general evidentiary standard for proceedings before the Patent Office.
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Application 10/161,009

3. The indexing guides of Jones do not form folds. As seen in Figures 1
and 3 of Jones, the indexing guide (3) serves to roll the material along like a
conveyer and maintain tension. As noted in Jones (col. 2, ll. 38-40), “[t]he
gusset former indexing guides are shown at 3 fitting into the internal folds of
the flattened tubing.” This statement in Jones shows that the guides are
merely “placed” or “fit into” the internal folds on either side of the tubing
instead of forming them.
4. Jones specifically states (col. 2, ll. 43-46) that the rollers (gusset
guides 4) do in fact form folds (“The other two internal gusset guides form
two new corner gusset folds).” A fold initially is formed between the gusset
guides (roller 4 and disk 5) and then appears to extend both above and below
that point in the material stream as seen in Figure 2, resulting in the
appearance that the indexing guide (3) may form the fold when it actually
does not. As such, Jones shows that the gusset guides (roller 4 and disk 5)
initiate two new folds and draw the material sufficiently around the disk to
complete the fold, as claimed.

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“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. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). Analysis of
whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins
with a determination of the scope of the claim. We determine the scope of
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the claims in patent applications not solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). The properly interpreted claim must then be compared with the prior
art.
"[A] prima facie case of anticipation [may be] based on inherency."
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case
of anticipation has been established, the burden shifts to the Appellant to
prove that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977) ("Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."). See also In re Spada, 911 F.2d
705, 708-09 (Fed. Cir. 1990).

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
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prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S.
at 12 (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 1740. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741 (citing In re Kahn, 441 F.3d 977, 988, (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
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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.

ANALYSIS
The Appellant argues (Supp. Br. 4, ll. 23-26) that Jones’ gusset guide
(4) cannot be considered a “roller.” Giving the term “roller” in the claim its
broadest reasonable interpretation in view of the Specification, the gusset
guide (4) may be considered a “roller” since it appears to turn about its axis
(the unnumbered mounting pin) over and over thereby meeting the definition
of a “roller” which “rolls” (see FF 1, 2). There is no requirement in the
claim that the roller be identical to the rollers of Appellant’s preferred
embodiment. The Specification does not provide a definition of a “roller”
that is inconsistent with our definition, and we decline to read a specific
embodiment of a roller from the detailed description into the claim.
The Appellant further argues that Jones’ method does not “initiate a
fold” between the primary roller and primary disk (Supp. Br. 5, ll. 1-2). The
Appellant argues that the fold is formed below the gusset guide or roller (4)
at the indexing head (3) (Supp. Br. 5, ll. 3-6). We disagree. As we found
supra, the indexing guides of Jones do not form folds (FF 3). Rather, the
two internal gusset guides (4) or rollers form two new corner gusset folds
(FF 4).
The Appellant argues (Supp. Br. 5-6) that it would not have been
obvious to employ the materials of claims 26 and 27 in the apparatus of
Jones, which requires “a system in tension to accomplish gusset folds.” In
particular, the Appellant argues that the specific “fragile” materials claimed
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would be damaged in the apparatus of Jones. We disagree. One of ordinary
skill in the art would clearly recognize that the apparatus of Jones could be
used to fold any sheet material as desired. See KSR, 127 S. Ct. at 1741 “[a]
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”. Here, one of ordinary skill in the art
could clearly see that predictable modifications in drive roller speeds and the
materials from which the rollers were made would make the method work
for any desired type of material thickness and rigidity.

CONCLUSIONS OF LAW
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 25, 28, and 29 under 35 U.S.C. § 102(b) as
anticipated by Jones and in rejecting claims 26-27 under 35 U.S.C. § 103(a)
as unpatentable over Jones.

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DECISON
The decision of the Examiner to reject claims 25-29 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

jlb

Philip S. Johnson
Johnson & Johnson
One Johnson & Johnson Plaza
New Brunswick, NJ 08933-7003
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