Ex Parte Ibara et al

Board of Patent Appeals and Interferences

Feb 11, 2009

10712281 (B.P.A.I. Feb. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN STEWART IBARA, CRYSTAL GWEN STEINKE,
JOEL HARIAN JONES, VICKY GREENBAUM,
DAVID A. WOODLEY M. PACKARD, and ELISA MARIE JONES
____________

Appeal 2008-2086
Application 10/712,281
Technology Center 3600
____________

Decided:1 February 11, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Steven Stewart Ibara et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-5, 7-11, 13, 14, 16, and
18-24, which are all of the pending claims. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is to a page holder enabling
unencumbered manual page turning (Spec. 1, Title). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A page holder comprising:
(a) a tensioning mechanism set at a predetermined
strength, being sufficiently strong to retain pages
in an open position, yet sufficiently light to enable
page turning,
(b) a plurality of gripping members, and
(c) a retaining line of predetermined length,
(d) said tensioning mechanism being attached to
one of said gripping members, and
(e) said line being attached to said tensioning
mechanism so that said tensioning mechanism
feeds in additional line to enable page turning and
subsequently retracts said additional line as the
page turn is completed,

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(f) the other end of said line being attached to the
second gripping member, and
(g) the tensioning mechanism including a tension
adjustment control that allows a user to vary
tension the tensioning mechanism applies to the
retaining line,
whereby said pages are retained in an open
position, and
whereby a user can turn said page without delay or
encumbrance, and
whereby the remaining pages are secure
throughout the page turn.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Capper US 3,813,075 May 28, 1974
Johnson US 4,826,099 May 2, 1989
Pannu US 5,377,946 Jan. 3, 1995
Pagano US 5,855,329 Jan. 5, 1999
Sherratt US 6,375,165 B1 Apr. 23, 2002
Hashimoto US 2004/0076825 A1 Apr. 22, 2004
The Appellants seek review of the following Examiner’s rejections:
1. Claims 1, 3, 4, 7, 10, 11, 13, 14, 16, and 21-24 under 35 U.S.C.
§ 103(a) as unpatentable over Pannu and Sherratt.
2. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Pannu,
Sherratt, and Pagano.
3. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Pannu,
Sherratt, and Johnson.
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4. Claims 8, 9, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over
Pannu, Sherratt, and Hashimoto.
5. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Pannu,
Sherratt, and Capper.

ISSUES
The Examiner found that Pannu teaches all of the elements of the
independent claims except for a tension adjustment control on the reel, and
that Sherratt teaches a winding mechanism with a tension adjustment
control. Ans. 4. The Examiner determined that it would have been obvious
to modify the reel of Pannu to add a tension adjustment control, as taught in
Sherratt, “in order to control the tension of the line in Pannu and the method
thereof.” Ans. 5.
The Appellants contend that Pannu’s book holder makes no provision
for the tension of a predetermined strength in the range claimed, or any
mention of page turning because Pannu’s holder is for retention only. App.
Br. 17. The Appellants further contend that there would have been no
reason for one having ordinary skill in the art to modify Pannu’s reel with
Sherratt’s tension adjustment control, because Pannu’s book holder and
Sherratt’s movable barrier for infants are each complete and functional in
themselves. App. Br. 18.
The issue presented by this appeal is:
Have the Appellants shown the Examiner erred in determining that the
combined teachings of the prior art would have led to the claimed page
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holder having a tensioning mechanism set at a predetermined strength, being
sufficiently strong to retain pages in an open position, yet sufficiently light
to enable page turning and having a tension adjustment control to allow a
user to vary tension applied to the retaining line?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Pannu discloses a bed tray 10 having a page holder 90 in the form
of a thin transparent strip 92 of flexible plastic material which is
stored in a spring-biased reel 94 that is bonded to the tray handle
21. Pannu, col. 4, ll. 60-65; Fig. 7.
2. Pannu discloses that the strip 92 can be withdrawn from the reel
against the action of the reel spring and extended to lie across the
open pages of a book supported on an inclined panel insert 24 of
the tray 10. Pannu, col. 4, ll. 65-68; Fig. 7.
3. Pannu discloses that the free end of the strip 92 is provided with a
grommet or eyelet 97 adapted for positioning about a fastening pin
98, or the like, which is mounted on the other side of the bed tray
10. Pannu, col. 5, ll. 1-4; Fig. 7.
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4. Pannu discloses that owing to the spring bias of the reel 94, the
strip 92 will be held against the open pages of a book placed on the
panel 24. Pannu, col. 5, ll. 7-9.
5. Pannu does not disclose any specific amount of tension applied to
the strip 92 by the reel. Pannu, passim.
6. Pannu also does not disclose applying a sufficient amount of
tension to the strip 92 to retain pages in an open position and yet
enable page turning. Pannu, passim.
7. Pannu is focused solely on retention of the open pages of the book
and does not address how the user is to turn the pages of the book.
Pannu, col. 5, ll. 7-9.
8. Sherratt discloses a barrier to close off access across a doorway,
hallway, or other throughway in a house from a child or dog.
Sherratt, col. 1, ll. 4-10.
9. Sherratt discloses the barrier device 10 has a flexible barrier sheet
14 that extends from and retracts onto a roll 16, and a tensioning
handle 38 that can be rotated in a tightening position to add more
tension in the barrier sheet 14 to solidify the barrier. Sherratt, col.
2, ll. 26-37 and 55-60; id., col. 5, ll. 15-26.

PRINCIPLES OF LAW
“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
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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., 550 U.S. 398, ___,
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 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, 550 U.S. at ___, 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.”)

ANALYSIS
Independent claim 1 recites a page holder comprising “a tensioning
mechanism set at a predetermined strength, being sufficiently strong to
retain pages in an open position, yet sufficiently light to enable page
turning.” Independent method claims 11, 21, and 23 similarly recite the step
of providing a page holder(s) comprising a tensioning mechanism as recited
in claim 1. Independent claims 1 and 21 further recite that the tensioning
mechanism includes “a tension adjustment control” that allows “a user to
vary tension the tensioning mechanism applies to the retaining line.” The
combined teachings of Pannu and Sherratt would not have led one having
ordinary skill in the art to the claimed page holder or method, as recited in
claims 1, 11, 21, and 23.
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The Examiner appears to be relying solely on Pannu for the disclosure
of a tensioning mechanism set at a predetermined strength that is sufficiently
strong to retain pages in an open position, yet sufficiently light to enable
page turning. Ans. 3-4. The Examiner’s position is that a spring with a
certain “K” constant will set a predetermined strength for the reel. Id.
While Pannu discloses that owing to the spring bias of the reel 94, the
strip 92 will be held against the open pages of a book placed on the panel 24
(Fact 4), Pannu does not disclose any specific amount of tension to be
applied to the strip 92 by the reel and does not disclose applying a sufficient
amount of tension to the strip 92 to retain pages in an open position and yet
enable page turning (Facts 5 & 6). Further, nothing in the disclosure of
Pannu necessarily requires that the reel has a tension set to retain pages, yet
allow page turning. Rather, Pannu is focused solely on retention of the open
pages of the book and does not address how the user is to turn the pages of
the book (Fact 7).
Further, we do not see any reason to modify the page holder of Pannu
to include the tension adjustment control of Sherratt. Pannu is directed to
retaining pages of a book in an open position and does not address the
specific tension necessary, nor does it address page turning (Facts 5 & 7).
Sherratt is directed to a barrier device used to block a doorway, hallway, or
other throughway from entry by children or pets (Fact 8). Thus, the tension
adjustment control of Sherratt is provided to increase the tension as much as
possible on the barrier sheet to “solidify” the barrier (Fact 9). We fail to see
how the teaching of using a tension adjustment control to solidify a barrier
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wall would have led one having ordinary skill in the art to modify the reel of
Pannu to adjust and possibly lessen the tension on its retention strip so that
pages can be retained in an open position, yet also turned, as claimed.
The Examiner found that “[i]t was well within the knowledge
generally available that the tension line (92) would need to be adjustable in
order to accommodate thicker books such as a dictionary and thinner pages
such as sheet music.” Ans. 8. However, the tension itself need not be
adjustable, as the ability to accommodate books of different thicknesses is
provided by having a shorter or longer section of the transparent strip
unreeled from the spring-biased reel.
Thus, we cannot sustain the Examiner’s rejection of claims 1, 11, 21,
and 23 under 35 U.S.C. § 103(a) as being unpatentable over Pannu and
Sherratt. For these same reasons, we also cannot sustain the Examiner’s
rejection of dependent claims 3, 4, 7, 10, 13, 14, 16, 22, and 24, which is
based on the combined teachings of Pannu and Sherratt.
The Examiner’s rejections of claims 2, 5, 8, 9, and 18-20 are all based
on the underlying combination of Pannu and Sherratt. The Examiner has not
relied upon Pagano, Johnson, Hashimoto, or Capper to cure the deficiencies
noted supra in the combined teachings of Pannu and Sherratt. Of these
references, only Pagano and Capper are directed to book or page holders,
and both of these references, like Pannu, focus solely on retention of the
book pages in an open position. As such, for the same reasons provided
supra, we cannot sustain the Examiner’s rejections of claims 2, 5, 8, 9, and
18-20.
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CONCLUSION
The Appellants have shown the Examiner erred in determining that
the combined teachings of the prior art would have led to the claimed page
holder and method having a tensioning mechanism set at a predetermined
strength, being sufficiently strong to retain pages in an open position, yet
sufficiently light to enable page turning and having a tension adjustment
control to allow a user to vary tension applied to the retaining line.

DECISION
The decision of the Examiner to reject claims 1-5, 7-11, 13, 14, 16,
and 18-24 is REVERSED.

REVERSED

Vsh

ELISA JONES
1745 CREEK DR.
SAN JOSE CA 95125-1841