Ex Parte Williams

Patent Trial and Appeal Board

Sep 14, 2018

11982750 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
11/982,750
23990 7590
DOCKET CLERK
FILING DATE
11/05/2007
09/18/2018
P.O. DRAWER 800889
DALLAS, TX 75380
FIRST NAMED INVENTOR
Patrick Williams
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KOFIOl-02301 3306
EXAMINER
KATCOFF, MATTHEW GORDON
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
09/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@munckwilson.com
munckwilson@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK WILLIAMS
Appeal2017-003498
Application 11/982,750
Technology Center 3700
Before KEVIN F. TURNER, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 2-7, 9-14,
and 16-26, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we do not find error in the
rejections. Accordingly, we AFFIRM.
1 The real party in interest is identified as Kofile Preservation. Appeal Br. 4.
Appeal2017-003498
Application 11/982,750
Claimed Subject Matter
Claims 2, 9, and 16 are independent. Claim 2, reproduced below,
illustrates the claimed subject matter.
2. A disaster-safe document binder comprising:
a first substantially planar cover member having an upper
surface and a lower surface;
a second substantially planar cover member having an
upper surface and a lower surface;
a spine assembly having a first end and a second end;
a first piano hinge assembly connecting the first
substantially planar cover member to the spine assembly;
a second piano hinge assembly connecting the second
substantially planar cover member to the spine assembly;
an apron assembly extending along the lower surface of
the first substantially planar cover member from the first end of
the spine assembly to the second end of the spine assembly;
a plurality of straight linear mounting brackets disposed
adjacent to the spine assembly and between the first and second
cover members;
a first material configured to regulate relative humidity
and atmospheric pollutants that are within a micro-climate
environment by at least reducing a relative humidity in the
microclimate environment; and
a latch assembly configured to secure the apron assembly
to the second substantially planar cover member;
wherein the disaster-safe document binder comprises the
micro-climate environment formed interiorly when the apron
assembly is secured to the second substantially planar cover
member.
2
Appeal2017-003498
Application 11/982,750
Rejections2' 3
I. Claims 2, 4, 9, 11, 21, 22, 24, and26 stand rejected underpre-
AIA 35 U.S.C. § I03(a) as unpatentable over Rubilino (US 2,180,997,
issued Nov. 21, 1939), Hollinger (US 5,525,296, issued June 11, 1996), and
Bee (US 5,127,755, issued July 7, 1992). Final Act. 3-7.
II. Claims 3 and 10 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Rubilino, Hollinger, Bee, and Meth (US
5,590,910, issued Jan. 7, 1997). Final Act. 7-8.
III. Claims 5, 6, 12, and 13 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Rubilino, Hollinger, Bee, and Darrah (US
5,779,047, issued July 14, 1998). Final Act. 8-9.
IV. Claims 7, 14, and 17 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Rubilino, Hollinger, Bee, and Moor (US
6,276,722 Bl, issued Aug. 21, 2001). Final Act. 9.
V. Claims 16, 19, 20, and 23 stand rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Rubilino, Hollinger, Bee, and Byrd
(US 3,692,203, issued Sept. 19, 1972). Final Act. 10-14.
2 The Examiner withdraws the rejection of claims 4, 11, and 20 under
35 U.S.C. § 112, first paragraph. Ans. 14.
3 We agree with Appellant that claim 18 is among the pending claims
rejected by the Final Office Action, and, therefore, subject to this appeal.
Appeal Br. 6; Final Act. 1 (listing rejected claims 2-7, 9-14, and 16-26).
Although the precise grounds of rejection of claim 18 are not specified in the
Final Office Action, the claim is not indicated as allowable and the
additional subject matter is similar to claims 5, 6, 12, and 13. Absent
argument directed to claim 18, the rejection of this claim will stand or fall
with claim 16, from which it depends.
3
Appeal2017-003498
Application 11/982,750
VI. Claim 25 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Rubilino, Hollinger, Bee, and MicroChamber. 4 Final Act.
14--15.
DISCUSSION
Rejection I: Claims 2, 4, 9, 11, 21, 22, 24, and 26
Claim 2
Appellant argues regarding the rejection of claim 2 that "the Examiner
appears to fail to consider the full teachings of Rubilino and Hollinger" in
finding one of skill in the art would have added silica gel to the interior of
Rubilino' s document binder. Appeal Br. 20-21. The Examiner reasons that
one of skill in the art would have used Hollinger' s silica gel in this manner
because, as taught by Hollinger, the silica gel absorbs moisture and thus
better preserves the archival material. Final Act. 5 ( citing Hollinger
Abstract, col. 9, 11. 13-16). Appellant asserts that Rubilino's reference to a
"waterproof' document binder "refers to keeping out water that is outside
the record book from entering the interior of the record book," and "Rubilino
does not contemplate protecting the papers inside its record book from
moisture that is already in the interior of the record book." Appeal Br. 21;
see Reply Br. 6. Appellant argues regarding Hollinger:
Further, Hollinger discloses a molecular sieve including
microporous structures. The pores (micro-pores) of the
molecular sieve are of uniform size and Hollinger therefore,
4 "MicroChamber" is an archived version of a website entitled
MicroChamber Archival Materials, available at https://web.archive.org/
web/20050807011556/http://www.conservationresources.com/Main/
S%20CATALOG/MicroChamber.htm (archived Aug. 7, 2005).
4
Appeal2017-003498
Application 11/982,750
requires an absorbent due to having these pores. Such material
is not conducive to promoting a regulation of relative humidity.
Appeal Br. 21; see Reply Br. 6-7. Appellant argues that, for these reasons,
neither Rubilino nor Hollinger teaches or suggests a micro-climate
environment formed interiorly within a disaster-safe document binder, and
that the Examiner has not provided a proper rationale for using Hollinger's
silica gel in Rubilino's binder. Appeal Br. 21-22; see Reply Br. 7-9.
As the Examiner finds, Rubilino teaches a record book with all the
structural features of the disaster-safe document binder recited in claim 2,
except for a first material to regulate relative humidity and atmospheric
pollutants within a micro-climate environment and a plurality of straight
linear mounting brackets. Final Act. 3-5. The Examiner finds Rubilino
teaches that "the disaster-safe document binder comprises the micro-climate
environment formed interiorly when the apron assembly is secured to the
second substantially planar cover member," as recited in claim 2, because
"when the binder is closed, the covers and spine regulate the air and liquids
[that] enter the binder while the asbestos liner prevents fire." Id. at 4.
Hollinger teaches a "preservation article for the preservation of an
archival article," Hollinger Abstract, and "[a]rchival articles are generally
defined as objects of historical, aesthetic or sentimental significance, such as
papers and photographs," id. at col. 1, 11. 22-24. Hollinger recognizes that
"previous attempts have been made to protect archival articles by storing
them in containers designed to protect the archival articles from the
deleterious effects of both impurities outside of the container and from
residual chemicals within the container material." Id. at col. 1, 11. 27-31.
"Preferably, undesirable water vapor in the environment of the archival
5
Appeal2017-003498
Application 11/982,750
article is removed or controlled." Id. at col. 9, 11. 11-13. "For example, a
water vapor absorbent, such as a silica gel, may be provided in the
environment of the archival article or incorporated in the preservation
article." Id. at col. 9, 11. 13-16; see Final Act. 5.
The above-recited passages of Hollinger provide sufficient reason for
one of ordinary skill in the art to have combined the teachings of the
references in the manner claimed, consistent with the Examiner's findings
and determinations. We are not persuaded that Rubilino must discuss the
detrimental effects of water already in the interior of the book in order for
one of skill in the art to recognize the benefit, as taught by Hollinger, of
using silica gel to remove undesirable water vapor from the environment of
records to be preserved. In addition, Appellant's attorney argument that
Hollinger's materials are "not conducive to promoting a regulation of
relative humidity" contradicts the teachings of Hollinger highlighted above.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 2 under
35 U.S.C. § 103(a) as unpatentable over Rubilino, Hollinger, and Bee.
Claims 4, 21, and 22
Claim 4 depends from claim 2 and recites that the document binder
further comprises "a fire retardant material disposed on the upper surface of
the first cover member, the lower surface of the second cover member, and
the spine assembly." The Examiner finds Rubilino teaches a fire retardant
material on each of the claimed surfaces because "asbestos is known to be a
flame retardant material which is on the lower surface of the second cover
and spine," and "the upper cover uses steel which is also fire retardant as it
6
Appeal2017-003498
Application 11/982,750
forms a protective layer that prevents the interior of the binder from
igniting." Final Act. 6 (citing Rubilino col. 1, 11. 48-51, col. 2, 11. 49-55).
Specific to claim 4, Appellant argues "one of ordinary skill in the art
would not rely on the 'asbestos' disclosed in Rubilino to teach a fire
retardant material disposed" on the claimed surfaces because, even though
"it may have been common to use asbestos" at the time of Rubilino, "at the
time of filing of the instant application, it was well known to those of
ordinary skill to not use asbestos, especially in products to be handled by
humans." Appeal Br. 24; see Reply Br. 11.
Appellant's argument does not inform us of error in the rejection of
claim 4. Whether one could safely use the product taught in Rubilino or
whether it would be commercially viable today does not detract from the
finding that the claimed limitations are technically feasible and taught in the
reference. See In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) ("That
a given combination would not be made by businessmen for economic
reasons does not mean that persons skilled in the art would not make the
combination because of some technological incompatibility. Only the latter
fact would be relevant."). In addition, the Examiner finds Rubilino teaches
the claimed limitations of claim 4, and does not propose to modify
Rubilino's steel or asbestos layers. Similar arguments are presented in
support of claims 21 and 22, Appeal Br. 24--25, and the arguments do not
inform us of error in the rejection of those claims for the same reasons.
Claim 9
Appellant argues "[c]laim 9 recites features analogous to Claim 2 with
respect to the current rejection" and is allowable for the same reasons argued
in support of claim 2." Appeal Br. 23. For the same reasons discussed
7
Appeal2017-003498
Application 11/982,750
above for claim 2, this argument does not inform us of error in the rejection
of claim 9.
Conclusion
Appellant does not provide separate argument in support of claims 11,
24, or 26. In view of the foregoing, we sustain the rejection of claims 2, 4,
9, 11, 21, 22, 24, and 26 under 35 U.S.C. § 103(a).
Rejection II: Claims 3 and 10
Claim 3 depends from claim 2 and recites "wherein the first cover
member, the second cover member, the spine assembly, and the apron
assembly are stainless steel." The Examiner finds Rubilino's cover
members, spine assembly, and apron assembly are steel. Final Act. 8. Meth
teaches that, in metal construction, stainless steel is preferable because it
provides water resistance. Id. (citing Meth col. 5, 11. 3-5). The Examiner
finds one of skill in the art would have substituted the steel material of
Rubilino with stainless steel because of Meth' s teaching that stainless steel is
a water-resistant material. Id.
Appellant argues, "[i]f Rubilino already is directed towards making a
water resistant notebook, one of ordinary skill in the art would not look to
Meth for a water resistant material." Appeal Br. 25; see Reply Br. 10.
Stated more generally, Appellant contends throughout the briefs that "[a]
skilled person would not look to a second patent to solve a problem already
solved by a first patent." E.g., Appeal Br. 25-26.
Appellant's arguments do not inform us of error in the rejection of
claim 3. Appellant does not dispute that using stainless steel would provide
enhanced water resistance over non-stainless steel, and that one of ordinary
8
Appeal2017-003498
Application 11/982,750
skill would have recognized this as evidenced by Meth's teachings. In
addition, even if using stainless steel were not recognized as an
improvement over Rubilino' s more general teaching, "when a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). Substituting stainless steel for steel yields the
predictable result of enhanced water resistance, as taught by Meth.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 3 under
35 U.S.C. § 103(a) as unpatentable over Rubilino, Hollinger, Bee, and Meth.
For the same reasons, we sustain the rejection of claim 10, which is not
argued separately.
Rejection III: Claims 5, 6, 12, and 13
Claim 5 depends from claim 2 and recites that the binder further
comprises "a gasket member disposed on an edge of the apron assembly,
wherein the gasket member extends substantially along an entire length of
the apron assembly perimeter." Specific to claim 5, Appellant argues that
combining teachings of Darrah regarding use of a gasket to provide an
airtight and watertight seal is neither obvious nor correct. Appeal Br. 26. In
particular, Appellant asserts:
For example, the Examiner asserts that column 1, lines 39-43 of
Rubilino 's illustrates a concern for a water and air tight seal.
Appellant is unable to locate a teaching in the cited portion of
Rubilino where a concern for a water and air tight seal is
disclosed. Notwithstanding, if Rubilino already is directed
towards making a notebook with a water and air tight seal, one
9
Appeal2017-003498
Application 11/982,750
of ordinary skill in the art would not look to Darrah for a gasket
to provide a water and air tight seal. A skilled person would not
look to a second patent to solve a problem already solved by a
first patent.
Id. at 27 (footnote and internal quotation mark omitted); see Reply Br. 12.
Appellant does not persuasively challenge the Examiner's
determination that one of ordinary skill in the art would have added gaskets
as taught in Darrah to Rubilino in order to create a watertight and airtight
seal. See Final Act. 9. Rubilino teaches interlocking structures to exclude
water from the interior of the casing. Rubilino p. 1, col. 1, 11. 35--43; see
Final Act. 9. Rubilino' s attempt to seal the interior of its casing does not
establish that one of ordinary skill in the art would not have recognized the
benefit of also using a gasket as in Darrah to ensure a watertight seal. To the
contrary, Rubilino's concern for creating a seal and teaching of one way to
do so is consistent with incorporating teachings from Darrah as to other
structures that may be used to further that goal.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 5 under
35 U.S.C. § 103(a) as unpatentable over Rubilino, Hollinger, Bee, and
Darrah. For the same reasons, we sustain the rejection of claims 6, 12, and
13, which are not argued separately.
Rejection IV: Claims 7, 14, and 17
Claim 7 depends from claim 2 and recites "a foam member disposed
on the lower surface of the first substantially planar cover member." The
Examiner finds Moor teaches a binder with planar cover members that have
a foam member, and determines one of ordinary skill in the art would have
10
Appeal2017-003498
Application 11/982,750
added Moor's foam member to the lower surface of the cover member of
Rubilino "because, as disclosed by Moor, the inclusion of a foam member
cushions the material inside." Final Act. 9. Moor states that cushioning
material 46 is carried on rigid board 44, and that "[t]he use of the cushioning
material 46 with the rigid board 44 and textile outer covering 48 provides
surfaces which are padded, yet sturdy and durable." Moor col. 3, 11. 40-48.
Appellant argues Moor teaches that the cushioning material is on an
upper or outer side or surface of the covers, and does not teach that a foam
member cushions material inside. Appeal Br. 28-29; see Reply Br. 12-13.
Appellant also argues the Examiner has not provided a proper rationale and
is using improper hindsight in rejecting claim 7. Appeal Br. 29-30; see
Reply Br. 13.
We do not understand the Examiner's rejection to be based on finding
Moor teaches a cushioning material on the inner surface of a cover, but
rather that one of ordinary skill would have used a cushion such as taught in
Moor on the inner surface of Rubilino' s binder in order to cushion material
inside. See Final Act. 9. Thus, Appellant's contention as to the location of
the cushion in Moor does not address the rejection as articulated by the
Examiner. In addition, Appellant's mere statement that the Examiner has
not provided a proper rationale does not explain why the rationale articulated
by the Examiner is in error.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 7 under
35 U.S.C. § 103(a) as unpatentable over Rubilino, Hollinger, Bee, and Moor.
For the same reasons, we sustain the rejection of claims 14 and 17, which
are not argued separately.
11
Appeal2017-003498
Application 11/982,750
Rejection V: Claims 16, 19, 20, and 23
Claim 16
Independent claim 16 recites a disaster-safe binder similar in many
respects to claim 2. For the same reasons argued in support of claim 2,
Appellant contends Rubilino and Hollinger do not teach "a first material
configured to regulate relative humidity and atmospheric pollutants that are
within a micro-climate environment," as recited in claim 16, or would not
have been combined in the manner proposed by the Examiner. Appeal Br.
31-33; see Reply Br. 4--10. For the same reasons discussed supra regarding
claim 2, we are not informed of error in the rejection of claim 16 on this
basis.
Claim 16 recites a first cover panel and a second cover panel
comprising "a self-extinguishing material." Appellant challenges the
Examiner's reliance on Byrd for teaching a self-extinguishing material, and
the Examiner's determination that one of skill in the art would have
substituted the material of Rubilino's covers (steel) with Byrd's self-
extinguishing material "because, as disclosed by Byrd, this material is
lightweight, easy to form and virtually indestructible and a better alternative
to using metal." Final Act. 11 (citing Byrd col. 1, 11. 15-31, col. 4, 11. 30-
40). Appellant argues Byrd relates to a cargo container for a commercial
aircraft and "[ o ]ne of ordinary skill in the art would not look to an airplane
cargo container for luggage to design a cover for a document binder."
Appeal Br. 33-34. Thus, Appellant contends, "[t]he Examiner has simply
identified an element found in the prior art and combined it in a manner
required by Appellant's claims." Appeal Br. 34.
12
Appeal2017-003498
Application 11/982,750
Although Byrd relates to a container to hold luggage, we agree with
the Examiner that one of ordinary skill in the art designing a disaster-proof
document binder would have been interested in the properties of Byrd's
material. In addition to the self-extinguishing property preventing
destruction by fire, Byrd teaches that the acrylic PVC alloy "Kydex" has
many other desirable qualities, such as being lightweight, easy to form, and
durable, as well as specifically teaching its use as an alternative to metal,
which is used in Rubilino. Byrd col. 1, 11. 15-31, col. 4, 11. 30-40. Based on
these teachings, Byrd readily commends itself to consideration in improving
a disaster-safe binder such as that taught in Rubilino. Thus, to the extent
Appellant contends Byrd is not analogous to the claimed invention, we
disagree. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) ("A reference
is reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem."). To the extent Appellant challenges only the
Examiner's determination that one of skill in the art would have had reason
to substitute the material of Rubilino' s covers with the material taught in
Byrd, the advantages of the material described in Byrd and identified by the
Examiner provide sufficient reasons supported by rational underpinning for
one of skill in the art to have made such a substitution.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 16 under
35 U.S.C. § 103(a) as unpatentable over Rubilino, Hollinger, Bee, and Byrd.
13
Appeal2017-003498
Application 11/982,750
For the same reasons, we sustain the rejection of claim 14, which is not
argued separately. 5
Claims 20 and 23
Claim 20 depends from claim 16 and recites "wherein at least one of
the first cover panel or the second cover panel further comprises a fire
retardant material." Claim 23 similarly depends from claim 16 and recites,
in part, "a protective cover coupled to at least one exterior surface of the
apron assembly." For the same reasons argued in support of claim 4,
Appellant contends "one of ordinary skill in the art would not rely on the
'asbestos' disclosed in Rubilino to teach a fire retardant material" on the
surfaces as recited in claim 20 and "would never use the asbestos of Rubilino
with a document binder at the time of the invention" as a protective cover as
recited in claim 23. Appeal Br. 34--36; see Reply Br. 14. For the same
reasons discussed supra regarding claim 4, we are not informed of error in
the rejection of claims 20 and 23 on this basis.
Conclusion
Appellant does not provide separate argument in support of claim 19.
In view of the foregoing, we sustain the rejection of claims 16, 19, 20, and
23 under 35 U.S.C. § 103(a).
Rejection VI: Claim 25
Claim 25 depends from claim 2 and recites a second material that
"comprises a MicroChamber barrier board configured to extract molecules
from an atmosphere within the micro-climate environment." The Examiner
5 We also sustain the rejection of claim 18, which depends from claim 16.
See footnote 3, supra.
14
Appeal2017-003498
Application 11/982,750
finds MicroChamber teaches a MicroChamber barrier board that is used to
protect materials and extract molecules of various compounds, including
smoke, from an atmosphere in order to create an archival environment.
Final Act. 15. The Examiner determines one of skill in the art would have
added MicroChamber' s barrier boards to Rubilino' s binder because all of the
references teach providing a micro-climate environment that protects papers
from harmful substances. Id.
Appellant argues the Examiner has not shown any of the references
teach a microclimate environment, that the Examiner bases the rejection on
the notion that the references disclose solving the same problems, and that a
skilled person would not look to a second patent to solve a problem already
solved by a first patent. Appeal Br. 36; see Reply Br. 14--15.
We agree with the Examiner that Rubilino and Hollinger teach a
micro-climate for the reasons discussed supra regarding claim 2, from which
claim 25 depends. As for the Examiner's articulated reasoning for why one
of skill in the art would have included MicroChamber' s barrier boards in
Rubilino's binder, we note Appellant does not assert that the MicroChamber
barrier boards are entirely redundant to the protection provided by
Rubilino's binder or Hollinger's silica gel. In this case, MicroChamber's
identification of a material that promotes Rubilino's and Hollinger's goal of
protecting documents and other articles provides sufficient motivation for
including an additional material to further that goal.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 25 under
35 U.S.C. § 103(a) as unpatentable over Rubilino, Hollinger, Bee, and
Micro Chamber.
15
Appeal2017-003498
Application 11/982,750
DECISION
We affirm the Examiner's rejection of claims 2-7, 9-14, and 16-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
16