Ex Parte Stemmle

Board of Patent Appeals and Interferences

May 27, 2010

10177590 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENIS J. STEMMLE
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Appeal 2009-006406
Application 10/177,590
Technology Center 3700
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Decided: May 27, 2010
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Denis J. Stemmle (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting claims 1-12, 15-18, 21, 22, 26, 28-31,
and 68. Claims 13, 14, 19, 20, 23-25, 27, 42-46, 58-62, 67, and 69 have
been canceled. Claims 32-41, 47-57, and 63-66 have been withdrawn from
consideration. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).

The Invention
Appellant's claimed invention is directed to a method for fabricating
an enclosure. Spec., para. 1.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A method for fabricating an enclosure
comprising:
positioning content material on a sheet
material;
folding the sheet material along a first
opposed portion;
folding the sheet material along a second
opposed portion;
folding the sheet material at approximately a
half-way point of the sheet material;
attaching mechanically the sheet material
along the first opposed portion;
attaching mechanically the sheet material
along the second opposed portion; and
attaching mechanically at least a portion of
two edges of the sheet material together to enclose
the content material within the sheet material.

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The Rejections
The Examiner relies on the following evidence:
Ashby US 4,969,594 Nov. 13, 1990
Irvine US 5,052,977 Oct. 1, 1991
Steidinger US 5,095,682 Mar. 17, 1992
Baker US 5,196,083 Mar. 23, 1993
Ginsberg US 5,527,418 Jun. 18, 1996
Kristal US 5,727,686 Mar. 17, 1998
Martin US 6,432,232 B1 Aug. 13, 2002
Sette US 6,435,245 B1 Aug. 20, 2002
Kamoi US 6,592,022 B1 Jul. 15, 2003

Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 102(e) of claims 1-4, 15-17, and 68 anticipated by Kamoi, under § 102(b)
of claims 1-4, 15-17, 30, 31, and 68 as anticipated by Baker, and under §
103(a) of claims 5-12, 18, 21, 22, 26, 28, and 29 as unpatentable over Kamoi
and of claims 5-12, 18, 21, 22, 26, 28, and 29 as unpatentable over Baker.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Rejection (1) - Anticipation by Kamoi
The first issue in this appeal is whether the Examiner erred in finding
that Kamoi describes a method for fabricating an enclosure by "attaching
mechanically" portions of the sheet as recited in claim 1, or in finding that
Kamoi describes a method for fabricating an enclosure by "folding the
enclosure material along a mid-section" and by "attaching mechanically" the
portions of the enclosure material as recited in claim 15.
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Appellant first argues that Kamoi uses an adhesive and that Appellant
does not claim an adhesive. Appeal Br. 5-6. However, claims 1 and 15 do
not recite any limitation precluding adhesives. It is well-established that
limitations not appearing in the claims cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Indeed,
claims 1 and 15, read in light of the Specification, support an interpretation
that the "attaching" can be done with an adhesive. See, e.g., Spec., para. 13
(the "attaching is suitably performed by knurling, gluing, crimping, tabbing,
using a pressure sensitive adhesive, embossing or using a hot-melt
compound"). The Specification also discusses mechanizing an attaching
step which uses an adhesive. See Spec., para. 32-33. Appellant's
Specification does not set forth a definition of "attaching mechanically." As
such, the Specification does not preclude reading "attaching mechanically"
on a mechanical device mechanically attaching the portions with an
adhesive. Moreover, Appellant does not allege, much less provide evidence
showing, that the terminology "attaching mechanically" has established a
meaning in the art that precludes use of adhesives.
The Examiner found that Kamoi uses a mechanized heater and press
to mechanically adhere the portions of the enclosure. Ans. 4-5; Final Rej. 3
(Office Action mailed Aug. 13, 2004). Appellant does not challenge the
Examiner's findings. In light of the record before us, using a machine to
attach portions of the sheet material using adhesives falls within a broad,
reasonable interpretation of "attaching mechanically the sheet material" and
"attaching mechanically together … the enclosure material." Thus, we are
not persuaded that the Examiner erred in finding that Kamoi describes a
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method for fabricating an enclosure with steps of "attaching mechanically"
portions of the sheet as recited in claims 1 and 15.
Appellant next argues that Kamoi "folds twice along the long edges
and twice along the short edges. Applicant folds less." Appeal Br. 5.
However, the claims do not require any particular number of folds. Further,
the preamble of claim 1 ends with the open-ended term "comprising," and
thus does not exclude additional, unrecited elements, such as additional
folding steps. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed.
Cir. 2004) (the use of the transitional term "comprising," which is
synonymous with "'including,'" "'containing,'" or "'characterized by,'" is
inclusive or open-ended and does not exclude additional, unrecited elements
or method steps).
Appellant finally argues that Kamoi does not disclose "folding the
enclosure along a mid-section" as recited in claim 15. Appeal Br. 5. The
Examiner found that Kamoi describes a fold along a mid-section between
sections 6 and 7, as shown in figure 3(d). See Ans. 5; Final Rej. 3. In
contrast to the Examiner's particular findings, Appellant does not provide
any particular explanation why the Examiner's findings are insufficient to
establish that Kamoi describes the claimed subject matter. Instead,
Appellant merely points out claim limitations. In view of the particular
findings of the Examiner, Appellant's mere allegations are not persuasive.
See Ex parte Belinne, 2009-004693, slip op. at 7, 8 (BPAI Aug. 10, 2009)
(designated as an "Informative Opinion"), http://www.uspto.gov/ip/boards/
bpai/decisions/inform/fd09004693.pdf (last visited May. 14, 2010) (citing 37
C.F.R. § 41.37 (c)(l)(vii) (2009)); see also id. at n. 2 ("A statement which
merely points out what a claim recites will not be considered an argument
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for separate patentability of the claim"). Thus, we are not persuaded that the
Examiner erred in finding that Kamoi describes a method for fabricating an
enclosure by "folding the enclosure material along a mid-section" as recited
in claim 15.
We are not persuaded of error in the Examiner's rejection of claims 1
and 15 as anticipated by Kamoi. Claims 2-4 and 68 stand or fall with claim
1, and claims 16 and 17 stand or fall with claim 15. 37 C.F.R. §
41.37(c)(1)(vii) (2007). Therefore, we sustain the Examiner's rejection of
claims 1-4, 15-17, and 68 as anticipated by Kamoi.

Rejection (2) - Anticipation by Baker
The second issue in this appeal is whether the Examiner erred in
finding that Baker describes a method for fabricating an enclosure with steps
of "attaching mechanically" portions of the sheet as recited in claims 1 and
15. Appellant argues that "Baker utilizes an adhesive," apparently
attempting to argue the "attaching mechanically" limitations of claims 1 and
15. Appeal Br. 6. However, as we note in our discussion of Rejection (1)
above, claims 1 and 15 do not preclude the use of adhesives while "attaching
mechanically" various portions of the enclosure. Thus, for the same reasons
discussed with respect to Rejection (1), we are not persuaded that the
Examiner erred in finding that Baker describes a method for fabricating an
enclosure with steps of "attaching mechanically" portions of the sheet as
recited in claims 1 and 15.
Appellant also argues that "Baker's [sic] uses a unique envelop form,
whereas Appellant's sheet for the enclosure (envelope) and sheet for the
contents are the same." Appeal Br. 6. However, the claims do not require
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that the enclosure and sheet be the same. Furthermore, Baker discloses
accumulating additional sheets (content material) with the unique envelope
form (sheet material) and folding the form together with the accumulated
sheets to form a mail piece. See Baker 5:35-44.
We are not persuaded of error in the Examiner's rejection of claims 1
and 15 as anticipated by Baker. Claims 2-4 and 68 stand or fall with claim
1, and claims 16-17, 30, and 31 stand or fall with claim 15. 37 C.F.R. §
41.37(c)(1)(vii) (2007). Therefore, we sustain the Examiner's rejection of
claims 1-4, 15-17, 30, 31, and 68 as anticipated by Kamoi.

Rejection (3) - Obviousness in view of Kamoi
The third issue in this appeal is whether the Examiner erred in
concluding that the teachings of Kamoi render obvious a method of
fabricating an enclosure, including "attaching mechanically" the sheet
material by knurling, as recited in claim 5. Appellant argues that Kamoi
does not "disclose or anticipate" the "attaching by knurling" limitation of
claim 5. Appeal Br. 7. Appellant does not separately argue claim 12, which
stands or falls with claim 5. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner rejected claim 5 under § 103(a) as unpatentable in view
of Kamoi, not merely as anticipated by Kamoi. Non-final Rej.1 5-6; Final
Rej. 5. The Examiner did not find that Kamoi, by itself, discloses or
anticipates the subject matter of claim 5. Id. In particular, the Examiner
found that Kamoi does not describe knurling, but that knurling is known in
the art, as demonstrated by Ginsberg, and it would have been obvious to a
person skilled in the art "as a matter of engineering design choice" to utilize

1 Office Action mailed Feb. 5, 2004.
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knurling to attach the sheet material. Id. Thus, the Examiner has taken
official notice that knurling is known in the art, and has provided Ginsberg
as documentary evidence.
Appellant has had the opportunity to rebut the Examiner's findings or
request production of further evidence, but does not allege, much less
produce evidence showing, any error in the Examiner's particular findings or
conclusions. Given this, and that the Examiner's proposed modification of
Kamoi's method of fabricating an enclosure is merely to use a known
attachment technique for enclosures, as evidenced by Ginsberg, to improve
Kamoi's method, Appellant's allegations are not persuasive. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill");
Ex parte Belinne, 2009-004693, slip op. at 7, 8 (mere allegations are not
persuasive in view of the particular findings).
Appellant also argues that Kamoi does not disclose or anticipate
various limitations of claim 15, from which claims 18, 21, 22, 26, 28, and 29
depend. Appeal Br. 7. As we discuss in addressing Rejection (1) above,
however, Appellant has not provided any evidence or argument that
persuades us that the Examiner erred in finding that Kamoi describes a
method for fabricating an enclosure by "attaching mechanically" the sheet
material "along a mid-section."
Therefore, we are not persuaded that the Examiner erred in
concluding that the teachings of Kamoi in view of the official notice, as
supported by Ginsberg, render obvious a method of fabricating an enclosure,
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including "attaching mechanically" the sheet material by knurling, as recited
in claim 5, or that the teachings of Kamoi render obvious a method of
fabricating an enclosure as recited in claim 15. We thus sustain the
Examiner's rejection of claims 5, 12, 18, 21, 22, 26, 28, and 29 as obvious in
view of Kamoi.

Rejection (4) - Obviousness in view of Baker
The fourth issue in this appeal is whether the Examiner erred in
concluding that the teachings of Baker render obvious a method of
fabricating an enclosure, including "attaching mechanically" the sheet
material by knurling, as recited in claim 5. Appellant argues that "Baker
does not disclose or anticipate … attaching by knurling." Appeal Br. 8.
However, the Examiner found that knurling was known in the art, as
demonstrated by Ginsberg, and that it would have been obvious to a skilled
person in the art "as a matter of engineering design choice" to use knurling
in the attaching of the sheet material in Baker. Non-final Rej. 6-7; Final Rej.
6. Thus, the Examiner has taken official notice that knurling is known in the
art, and has provided Ginsberg as documentary evidence. Further, the
Examiner's proposed modification of Baker's method of fabricating an
enclosure appears to be nothing more than using a known attachment
technique for enclosures, as evidenced by Ginsberg, to improve Baker's
method. See KSR, 550 U.S. at 417.
Appellant has had the opportunity to present arguments and evidence
as well as the opportunity to request further evidence regarding the
Examiner's official notice. However, Appellant does not allege any error in
the Examiner's particular findings or conclusions, but merely lists claim
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limitations allegedly not met by Baker. Thus, Appellant's allegations are not
persuasive that the Examiner erred in concluding that the teachings of Baker,
in combination with the official notice, as supported by Ginsberg, render
obvious a method of fabricating an enclosure, including "attaching
mechanically" the sheet material by knurling, as recited in claim 5. See Ex
parte Belinne, 2009-004693, slip op. at 7, 8.
Appellant also repeats the argument, discussed above, that "Baker
uses a unique envelope form." Appeal Br. 8. This argument is not
persuasive of error, for the reasons discussed above in regard to Rejection
(2).
Appellant presents no other arguments as to why the subject matter of
claims 5-12, 18, 21, 22, 26, 28, and 29 are patentable over Baker. We
therefore sustain the Examiner's rejection of claims 5-12, 18, 21, 22, 26, 28,
and 29 as obvious in view of Baker.

DECISION
The Examiner's decision is affirmed as to claims 1-12, 15-18, 21, 22,
26, 28-31, and 68. 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) (2007).

AFFIRMED

Appeal 2009-006406
Application 10/177,590

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