Ex Parte Spink

Patent Trial and Appeal Board

May 13, 2013

12408283 (P.T.A.B. May. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY DAVID JONATHAN SPINK
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Appeal 2011-002912
Application 12/408,283
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002912
Application 12/408,283

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STATEMENT OF CASE
Timothy David Jonathan Spink (Appellant) appeals under 35 U.S.C.
§ 134 from the Examiner’s rejection of claims 1-5, 7, and 11. Claim 8 is
withdrawn and claims 6, 9, and 10 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s invention is directed generally to “single or multifunction
printers and copiers” for creating “punched out tabs.” See Spec. 1, para.
[0002]; Title. Claim 1, the only independent claim, reproduced below with
emphasis added, is illustrative of the claimed subject matter:
1. A finisher in a machine for creating tabs on
a sheet of media, comprising:
a backing plate;
a three-sided head that partially punches out
at least one section of the sheet against the
backing plate without tearing the sheet, the sheet
having a front side and a reverse side;
a folder bar that smoothes and bends the
punched-out section so that the punched-out
section extends beyond an edge of the sheet, the
folded, punched-out section having a front side and
a reverse side corresponding, respectively, to the
reverse and front side of the sheet; and
an output tray that receives the sheet.

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Application 12/408,283

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schwarz
Bauman
US 6,383,125 B1
US 6,409,409 B2
May 7, 2002
Jun. 25, 2002

THE REJECTION ON APPEAL
The Examiner made the following rejection:
Claims 1-5, 7, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schwarz and Bauman. Ans. 3.

ANALYSIS
The Examiner finds that Schwarz teaches every element of claim 1,
but “does not disclose a three sided head that partially punches out [a]
section of the sheet.” Ans. 3. The Examiner then finds that “Bauman
discloses a similar machine with the use of a punched head.” Id. (citing
Bauman Fig. 6 and element 148). The Examiner concludes that it would
have been obvious “to have substituted Schwarz’s cutting blade by using a
punching head, as suggested by Bauman.” Ans. 4. The Examiner goes on to
explain that Bauman “may not disclose a three sided head puncher,” but that
“it is nothing more than a matter of engineering design choice to come up
with whatever shape of cutting die/punches [sic] head.” Id.
Appellant argues that the Examiner’s conclusion of obviousness is
“based on the unreasonability of attempting to combine any teaching with
respect to a hand-held punching device, such as that disclosed in Schwarz,
with an industrial-sized, whole sheet manufacturing process [as taught in
Bauman].” Reply Br. 5. In support of this, Appellant first correctly points
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Application 12/408,283

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out that “Schwarz is not a finisher disposed in any machine … [r]ather,
Schwarz is a stand-alone hand-held device.” App. Br. 8. Appellant further
notes that in contrast
Bauman discloses presenting paper 104 in a large roll 108 in the
machine 112 shown in Fig. 6. Bauman specifically states that
the paper 104 is scored, die cut and sheeted in the machine 112.
Specifically, Bauman explicitly teaches that “[e]ssentially a
square die 148 is used that has its front blade removed and its
last blade in place so a constant feeding, cutting, feeding,
cutting of sheets is provided.” See, col. 4, lines 17-20. Bauman
goes on to explain that the “scoring and cutting steps” are at the
same time followed by the sheeting step, all by the die 148. A
stripper 150 then removes the excess paper matrix. The sheets
152 produced are loosely stacked coming off the machine 112
in a stack 156 before the sheets are then sent to the folder/gluer
machine 260 shown in Fig. 6. In this regard, Bauman discloses
a large sheet cutter that cuts whole individual sheets out of a
roll of paper.

App. Br. 11.

The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C.
§ 103 should be made explicit. The Federal Circuit has stated that
“rejections 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.” In re
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Application 12/408,283

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Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
The Examiner’s conclusory statements noted supra do not provide the
requisite articulated reasoning with a rational underpinning as to why one of
skill in the art would take a punching head from a large automated finisher
as in Bauman, which punches whole sheets from roll stock, and substitute a
reduced-size version of that head into the hand-held device of Schwarz to
achieve an entirely different purpose of creating a tab that can be folded out
from the edge of the page. We further note that, even if one were to utilize a
three-sided blade in Schwarz, Schwarz teaches cutting out two sides of the
tab at the edge of the sheet and folding the tab at a forty-five degree angle to
create the tab. See Schwarz Figure 1B. Simply substituting a three-sided
bladed into the device of Schwarz as proposed by the Examiner would
seemingly separate the punched tab from the sheet entirely. Accordingly,
we do not agree, as the Examiner has stated, that “it is nothing more than a
matter of design choice to come up with whatever shape of cutting die” that
partially punches out at least one section of the sheet against the backing
plate as claimed in claim 1. Ans. 4. As such, we do not sustain the
Examiner’s rejection of claims 1-5, 7, and 11 as unpatentable over Schwarz
and Bauman.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1-5, 7, and 11.
REVERSED
Klh