Ex Parte Makofsky

Board of Patent Appeals and Interferences

Feb 27, 2012

10896449 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/896,449 07/22/2004 Marvin A. Makofsky 9420
7590 02/27/2012
Francis C. Hand, Esq.
c/o Carella Byrne, Bain, Gilfillan, Cecchi,
Stewart & Olstein
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
02/27/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARVIN A. MAKOFSKY
____________________

Appeal 2010-003081
Application 10/896,449
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003081
Application 10/896,449
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-11, 14, 15, 17, 18, 20 and 21. App. Br. 3. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
The claims are directed to an expandable holder. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A pad holder comprising
a back ply having a horizontally disposed score line
spaced from a bottom edge thereof, a horizontally disposed
score line spaced from a top edge thereof, a vertically disposed
score line spaced from one side edge thereof, a vertically
disposed score line spaced from another side edge thereof and a
plurality of angularly disposed score lines, each said angularly
disposed score line extending from an intersection of a
respective horizontally disposed score line and a vertically
disposed score line towards a respective comer of said ply;
a pair of side flaps at opposite sides of said back ply,
each said side flap being of a height equal to a minor fraction of
the height of said back ply and folded over said back ply along
a fold line therebetween and including a score line spaced from
and parallel to said fold line;
a flap extending from said bottom edge of said back ply
in overlying relation to said back ply and secured to said side
flaps between said score lines thereof to define a pocket of a
height less than the height of said back ply. said flap being of a
height equal to the height of each said side flap and having a
score line spaced from and parallel to said bottom edge
whereby upon insertion of materials into said pocket, said flap
and said back ply are expandable from each other to enlarge the
thickness of said pocket while decreasing the width of said
pocket; and
a front ply secured to and extending from said top edge
of said back ply in overlying relation to said pocket.

Appeal 2010-003081
Application 10/896,449
3
REJECTIONS
Claims 1-11, 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyle (US 5,921,463, iss. Jul. 13, 1999), Ho
(US 6,354,486 B1, iss. Mar. 12, 2002) and Makoesky (US 6,227,444 B1, iss.
May 8, 2001). Ans. 3.
Claims 17, 18, 20 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyle, Makoesky and Wyant (US 3,870,223, iss. Mar. 11,
1975). Ans. 6.
OPINION
In each of the rejections the Examiner concluded that it would have
been obvious to include Makoesky’s score lines on Boyle’s back panel or
“ply.” Ans. 4, 5, 7. Unlike Makoesky, which has trapezoidal sections 26, 29
bounding the vertically scored 20 panel 11 (Fig. 9), Boyle’s back panel is
constrained along its entire top and bottom edge (Fig. 2). Thus, we agree
with Appellant that “placing score lines, as claimed, in the back ply 22 of
Boyle would not allow expansion of the back ply or accommodate more
material in the pocket of Boyle.” App. Br. 9. Thus, the Examiner failed to
articulate reasoning with a rational underpinning to establish why the
proposed combination would have been obvious to one having ordinary skill
in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Neither Ho nor Wyant, as applied by the Examiner, cure this deficiency.
Accordingly, we must reverse the Examiner’s rejections.
DECISION
The Examiner’s rejections of claims 1-11, 14, 15, 17, 18, 20 and 21
are reversed.
REVERSED
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