Ex Parte Bettinger

Patent Trial and Appeal Board

Mar 21, 2016

12338638 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/338,638 12/18/2008 James Bettinger
24126 7590 03/23/2016
ST ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
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.
04773-P0025B 5763
EXAMINER
BATTISTI, DEREK J
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES BETTINGER
Appeal2013-007312
Application 12/338,638
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATE1\1ENT OF THE CASE
James Bettinger (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner's decision rejecting claims 1--4, 8, 9, and 12. 1 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to bound envelopes. Spec. 1 (Title).
Claim 1 is illustrative of the claims on appeal and is reproduced below.
1. An envelope package, comprising:
1 Claims 14--20 have been withdrawn. Claims 5-7, 10, 11, and 13 have been
canceled. Appeal Br. 2.
Appeal2013-007312
Application 12/338,638
an upper cover comprising adhesive labels attached to the
upper cover by a releasable adhesive;
a lower cover;
a plurality of pre-assembled, ready to mail envelopes
disposed between said upper cover and said lower cover, each
of the plurality of envelopes comprising:
a rectangular front panel;
a pair of side flaps at opposite sides of said front panel, each of
the side flaps being folded over the front panel along a vertical
fold line there between;
a back panel extending from and folded over the
front panel along a horizontal fold line there between, wherein
said back panel is secured to said side flaps by an adhesive to
define a pocket of the envelope; and
a closure flap extending from the front panel along
a horizontal fold line there between for folding over the back
panel to close the pocket and seal the envelope, wherein said
closure flap comprises a series of punched holes at one end of
the closure flap away from and parallel to the horizontal fold
line between the closure flap and the front panel,
wherein said upper cover and said lower cover
each comprise corresponding punched holes along an edge of
the covers aligned with the holes in said closure flaps; and
a binding disposed along a spine of the envelope
package, the binding comprising a wire helix that is wound
through said holes in said upper cover, said lower cover and
said closure flaps to provide a flexible hinge at the spine of the
envelope package.
Appeal Br. 1 7.
REFERENCES RELIED ON BY THE EXAMINER
Barler
Friedman
Papageorge
Volz
us 618,821
us 5,042,841
US 6,419,150 Bl
Re. 35,791
2
Feb. 7, 1899
Aug. 27, 1991
July 16, 2002
May 12, 1998
Appeal2013-007312
Application 12/338,638
THE REJECTIONS ON APPEAL
(I) Claims 1--4, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barler, Papageorge, Volz, and Friedman.
(II) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barler, Papageorge, Friedman, and Volz.
ANALYSIS
Appellant argues all of claims 1--4, 8, 9, and 12 as a group. Appeal
Br. 5. We select claim 1 as the representative claim to decide the appeal of
this rejection, with claims 2--4, 8, 9, and 12 standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds that Barler teaches an envelope package including
an upper cover, a lower cover, and a plurality of envelopes located between
the two covers. Final Act. 2. The Examiner further finds that Barler
discloses a binding disposed along a spine of the envelope package. Final
Act. 2. The Examiner finds that Barler does not disclose certain limitations
relating to the envelopes within the covers and relies on Papageorge to teach
these features. Final Act. 2. The Examiner reasons that "it would have been
obvious to one of ordinary skill in the art at the time of the invention to
substitute the envelopes of Papageorge for the structure of the envelopes in
the package of Barler in order to facilitate detachment and use of pre-
assembled, ready to mail envelopes." Final Act. 3. The Examiner relies on
Volz to teach adhesive labels and relies on Friedman to teach a spine
comprising a wire helix. Final Act. 4.
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Application 12/338,638
Appellant asserts that "Barler is not directed to envelopes" and "does
not disclose any of the envelope features of the present invention." Appeal
Br. 7. Appellant further asserts:
Barler fails to disclose an upper cover comprising adhesive labels
attached to the upper cover by a releasable adhesive, and a
binding disposed along a spine of the envelope package and
comprising a wire helix that is wound through the holes in the
upper cover, lower cover and closure flaps to provide a flexible
hinge at the spine of the envelope package.
Appeal Br. 7-8. Appellant contends, "[t]here is absolutely no disclosure in
Barler of the envelopes or that the document pockets/files of Barler are
designed for being mailed." Appeal Br. 8.
In response, the Examiner states, "Barler discloses an envelope
package with an upper cover, a lower cover, and a binding that binds
removable preassembled 'official envelopes.' See Barler, Figs. 1-2; and col.
1 11. 47-52." Ans. 3. The Examiner further states that Appellant
misconstrues the rejection of claim 1 inasmuch as "it is the envelopes of
Papageorge that are used between the upper and lower covers of Barler that
are then subsequently mailed upon removal." Ans. 3--4.
We agree with the Examiner on this point. The portion of Barler cited
above and Figure 2 of Barler support, by a preponderance of the evidence,
the Examiner's finding that Barler discloses a plurality of envelopes because
Barler specifically refers to envelopes in column 1, and Figure 2 of Barler
depicts envelopes in a package. See Barler, col. 1, 11. 47-52. Further, as
noted above, the Examiner's proposed combination substitutes the envelopes
of Papageorge for the envelopes of Barler. Final Act. 3. As for Appellant's
assertion that, among other things, "Barler fails to disclose an upper cover
comprising adhesive labels" and a wire helix binding (Appeal Br. 7-8), the
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Application 12/338,638
Examiner's rejection of claim 1 also relies on Volz and Friedman to teach
certain features (see Final Act. 4 stating that Volz teaches "adhesive labels
attached to a ready to mail envelope" and that Friedman teaches "a binding
comprising a wire helix that is wound through an envelope package.").
Appellant does not persuasively explain why the Examiner's proposed
combination of references would not include the above-noted features. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
In relation to the Examiner's reliance on Friedman to teach a binding
comprising a wire helix, Appellant asserts, "a person of skill would never
have been motivated to modify the document file system of Barler to include
a wire helix binding of Friedman." Appeal Br. 9; see also Reply Br. 4--9.
Appellant asserts "[u]sing a wire helix instead of the cord to bind the pockets
and the covers in the document file of Barler would make it impossible to
quickly and efficiently remove/add pockets to the file, and therefore not
achieve the expressly stated objective of the document file of Barler."
Appeal Br. 9 (emphasis added). Appellant states, "[ w ]hile helix bindings
are removable in theory, such bindings are certainly not designed for quick
and easy removal of the bound materials or addition of materials to the
bound package, which is the objective of the document file of Barler."
Appeal Br. 11. Appellant asserts, "if the document-file system of Barler
were modified to include detachable pockets of Papageorge bound by the
wire helix of Friedman, such system would still not allow the pockets to be
easily removed and additional pockets to be easily added to the system, and
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Application 12/338,638
therefore, not achieve the expressly stated objective of the document file of
Barler." Reply Br. 5.
In response, the Examiner states that the helix of Friedman would
secure the envelopes in the proposed combination, and this is another of
Barler's stated purposes. Ans. 4. Further, the Examiner states that the
envelope of Papageorge would be easily removable and addable. Ans. 4
(citing Papageorge, col. 5, 11. 10-18). The Examiner also finds, "helix
bindings are removable such that a user could remove an envelope if
desired." Final Act. 9.
We do not agree with Appellant's arguments. Appellant provides no
persuasive evidence or argument that the use of the spiral binder taught by
Friedman would preclude the addition of more envelopes in the Examiner's
proposed combination. 2 As for whether addition of the envelopes could be
performed "quickly and efficiently" and whether "additional pockets [may]
be easily added to the system," Appellant overstates the stated objectives of
Barler. Specifically, Barler states, "my invention relates to an improvement
in document-files, one object of the invention being to provide simple and
efficient means whereby to quickly and securely bind pockets between
suitable covers and permit their ready removal and to allow additional
pockets to be added, if desired." Barler, col. 1, 11. 11-17 (emphasis added).
Thus, Barler does not state that the addition of envelopes must be easy.
Further, even assuming for the purposes of argument that Barler required
such addition to be "easy," Appellant's assertion that the addition of
envelopes in the Examiner's proposed combination could not be done easily
2 Friedman describes adding spiral spine 36 to the "entire assembly." Col. 3,
11. 64---65.
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is not supported by any persuasive evidence. Attorney argument cannot take
the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
Regarding the removal of envelopes, Appellant provides no
persuasive argument or evidence that removal of an envelope from a helical
binding, in the Examiner's proposed combination, would not satisfy the
objectives of Barler. Indeed, as noted above, the Examiner's proposed
combination substitutes the envelopes of Papageorge for those of Barler, and
the envelopes of Papageorge include perforation 16 specifically for allowing
removal. Papageorge, Abstract.
Moreover, in essence, Barler's intended purpose is to provide a file
for holding envelopes. Appellant's arguments regarding the ease and
efficiency of removal and addition of envelopes in the Examiner's proposed
modification of Barler are not persuasive for the additional reason that
Barler's intended purpose as an envelope file would be maintained in the
Examiner's proposed arrangement. Whether the removal and addition of
envelopes would in some way be affected by the Examiner's proposed
modification does not outweigh the Examiner's sound rationale, providing
"a flexible hinge at the spine of the envelope package" (Final Act. 4), for
making the modification. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (if there are tradeoffs involved regarding
features, such things do not necessarily prevent the proposed combination).
Appellant next argues that Papageorge does not disclose pre-
assembled, ready-to-mail envelopes and instead teaches envelopes in a sign-
in ledger, and the envelopes are provided in a flat, disassembled state.
Appeal Br. 11.
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In response, the Examiner refers to Figure lB of Papageorge finds that
the envelopes in Papageorge are in a completed state when in the guest
book. Ans. 5.
We agree with the Examiner on this point. Figure 1 B of Papageorge
depicts "the front view of the registry book showing the envelopes attached
in a book by a reclosable fastener." Col. 5, 11. 25-26 (emphasis added). As
further noted by the Examiner (Ans. 5), Papageorge describes a process of
removing the envelopes after the conclusion of an event, filling the envelope
with the appropriate correspondence, sealing the envelope, and mailing the
envelope. The fact that Papageorge does not mention assembling the
envelope during this process supports the Examiner's finding that the
envelope is already assembled.
Appellant further asserts, "there is absolutely no motivation or even
suggestion in Barler to replace the document pockets with the mailing
envelopes of Papageorge, as suggested by the Examiner." Ans. 12.
Appellant asserts that Barler is directed to a file system without envelopes,
the envelopes or Papageorge are not pre-assembled, and that Barler would
not benefit from using the envelope of Papageorge. See Appeal Br. 12-14;
see also Reply Br. 2--4.
Above, we addressed the issues of whether Barler uses envelopes and
whether the envelopes of Papageorge are preassembled. As for whether
Barler would benefit from the structure of the envelope taught by
Papageorge, the Examiner finds that this would "facilitate detachment and
use of pre-assembled, ready to mail envelopes." Final Act. 3. Papageorge
teaches that its envelopes are removed from the book "by tearing along the
perforated strip at 16 on FIG. 1-A." Col. 5, 17-18. Accordingly, the
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Application 12/338,638
envelopes of Papageorge are specifically designed to facilitate detachment.
Thus, the Examiner's rationale is supported by rational underpinnings, and
Appellant does not persuasively show that this rationale is inadequate.
Appellant next argues that there would have been no reason to add the
adhesive labels of Volz to what Appellant describes as "pockets" in Barler.
Appeal Br. 14.
As we discussed above, the Examiner's finding that Barler teaches the
use of envelopes is supported by a preponderance of the evidence. Thus,
Appellant's argument that Bader would not benefit from the use of labels as
taught in Volz because Barler uses pockets rather than envelopes is not
persuasive.
Appellant also argues that the objective in Barler is different from the
rationale used by the Examiner for modifying Barler to include adhesive
labels as taught by Volz. Appeal Br. 14. However, it is not necessary for
the modification to be done in order to advance an objective stated Barler,
and we are not persuaded the Examiner's rationale is inadequate.
Appellant further contends that the Examiner's modification of Barler
is based on impermissible hindsight. Appeal Br. 15. However, in this
section of Appellant's brief, aside from citing case law related to the
doctrine of impermissible hindsight and noting that the Examiner relies on
four references to reject claim 1, Appellant does not provide any
explanation, and certainly none that is persuasive, as to why the Examiner's
rationale for modifying Barler lacks a rational underpinning.
We have considered all of Appellant's arguments, but we are not
persuaded that the Examiner's decision to reject claim 1 over Barler,
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Application 12/338,638
Papageorge, Volz, and Friedman is incorrect. Accordingly, we sustain the
Examiner's rejection of claim 1. Claims 2--4, 8, 9, and 12 fall with claim 1.
DECISION
We affirm the Examiner's decision to reject claims 1--4, 8, 9, and 12.
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
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