Ex Parte Burke et al

Board of Patent Appeals and Interferences

Apr 19, 2010

10208551 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY ANDREW BURKE, DAVID ROBERT DAWLEY,
and DREW EDWIN KIEFABER
____________

Appeal 2009-005546
Application 10/208,551
Technology Center 3700
____________

Decided: 20 April 2010
____________

Before JAMESON LEE, RICHARD TORCZON and SALLY C. MEDLEY,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
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A. STATEMENT OF THE CASE
Goss International Americas, Inc. (“Goss”), the real party in interest,
seeks review under 35 U.S.C. § 134(a) of a Final Rejection of claims 1 and
4-15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
References Relied on by the Examiner
Thumim 3,528,332 Sep. 15, 1970
Dutro 1,372,221 Mar. 22, 1921
Richard 1,320,923 Nov. 4, 1919

Rejections on Appeal
The Examiner rejected claims 1, 6 and 11 under 35 U.S.C. § 102(b) as
anticipated by Richard.
The Examiner rejected claim 15 under 35 U.S.C. § 102(b) as
anticipated by Dutro.
The Examiner rejected claims 4-5, 7-10 and 12-13 under
35 U.S.C. § 103(a) as unpatentable over Richard.
The Examiner rejected claims 1 and 4-15 under 35 U.S.C. § 103(a) as
unpatentable over Thumim and Richard.
The Invention
Goss discloses, referring to Goss’ figure 3 reproduced below
[numbers from figure 3 inserted], a book trimmer [60] including a support
surface [32], a trim blade [40] and a reciprocating actuator [50]. The trim
blade [40] has a trim blade edge [45] having a first section [42] and a second
section [44]. The first blade section [42] forms a first acute angle [Θ1] with
the support surface [32] and the second blade section [44] forms a second
acute angle [Θ2] with the support surface [32]. Abs.; Spec. 4-5.
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Goss’ figure 3 is below:

Figure 3 depicts a book trimmer.
Claim 1, reproduced from the Claims Appendix of the Brief, reads as
follows:
A trimmer for trimming of a book comprising:
a support for supporting the book, the support having a support
surface supporting the book so that a plane of a spine of the book is
perpendicular to the support surface;
a trim blade for trimming an edge of the book, the trim blade
having a trim blade edge, the trim blade edge having a first section
and a second section, the second section being angled with respect to
the first section; the first section cutting through the spine and the
second section cutting a rest of the book, the first section forming a
first acute angle with the support surface and the second section
forming a second acute angle with the support surface, the first acute
angle being nonzero and being greater than the second acute angle;
and
a reciprocating actuator for moving the trim blade toward the
book to trim the edge of the book.

Br., Claims App’x 1.
B. ISSUES
1. Has Goss shown that the Examiner was incorrect in finding that the
combination of Thumim and Richard describes a trim blade having
first and second trim blade sections, where the first trim blade edge
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section is capable of cutting the spine of a book and the second trim
blade section is capable of cutting the rest of the book?
2. Has Goss shown that the Examiner was incorrect in determining that
substituting Richard’s blade for the blade of Thumim’s device would
have been obvious to a person of ordinary skill in the art based on the
rationale provided by the Examiner?
C. FINDINGS OF FACT
Thumim
1. Thumim describes, referring to Thumim’s figure 1 reproduced below
[numbers from figure 1 inserted], a trimmer [10] for trimming a book
[20] which includes a front knife assembly [23] and two side knife
assemblies [22]. Col. 2, ll. 34-53.
Thumim’s figure 1 is below:

Figure 1 depicts a book and magazine trimming machine.
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Richard
2. Richard describes, referring to Richard’s figure 1 reproduced below
[numbers from figure 1 inserted], a belt cutter which includes a cutter
blade [16] with a cutting edge [19] with a rear portion [20] of the
cutting edge arranged at an upward angle. LL. 66-70.
Richard’s figure 1 is below:

Figure 1 depicts a book and magazine trimming machine.
3. The angle end of the cutting edge of the blade permits a shearing cut.
LL. 72-74.
D. PRINCIPLES OF LAW
When the structural limitations are all found in the prior art, the
absence of a disclosure in the prior art relating to function does not defeat
the finding of unpatentability. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). Once the Examiner has established a prima facie case of
unpatentability, the burden shifts to the applicant to show that the prior art
structure does not inherently possess the functionally defined limitations of
the apparatus. Id. at 1478.
It is not necessary to find precise teachings in the prior art directed to
the specific subject matter claimed because inferences and creative steps that
a person of ordinary skill in the art would employ can be taken into account.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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When an application claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known
element, the combination is likely obvious when it does no more than yield a
predictable result. Id. at 416.
E. ANALYSIS
Rejection of Claims 1 and 4-15 over Thumim and Richard
Independent claim 1 is representative and is reproduced above. The
Examiner finds that Thumim describes all of the claim limitations with the
exception of the trim blade edge having a first section forming a first acute
angle with the support surface and a second section forming a second acute
angle with the support surface, where the first acute angle is greater than the
second acute angle. Final Rejection 4; Ans. 4. The Examiner finds that
Richard describes a trim blade having a trim blade edge and that the trim
blade edge has a first section [20] forming a first acute angle with the
support surface and a second section [19] forming a second acute angle with
the support surface, where the first acute angle is greater than the second
acute angle. Final Rejection 4-5; Ans. 4. The Examiner determined that it
would have been obvious to one with ordinary skill in the art at the time the
invention was made to employ or substitute the trim blade of Richard on the
device of Thumim in order to facilitate the shearing operation. Final
Rejection 5; Ans. 5, 7.
Goss argues that the limitations of claim 1 are not met by the
combination. In doing so, Goss attacks the references separately and
misconstrues the Examiner’s findings. Br. 9. Specifically, Goss argues that
Thumim does not describe a trim blade having a first section and a second
section as claimed. However, as explained above, the Examiner relied on
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Richard, not Thumim, to teach a trim blade having a first section and a
second section as claimed. Thus, the argument is misplaced. Similarly,
Goss argues that Richard does not describe a book cutter, but rather
describes a belt cutter. Br. 9. Again, the argument is misplaced because the
Examiner relied on Thumim, not Richard, to teach a book cutter. One
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091,1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426
(CCPA 1981). The Examiner relied on the combination of Thumim and
Richard to meet the claimed limitations. It is the combination of those
references that should be the focus.
Goss argues that the function related to the claimed first and second
trim blade portions, i.e., cutting through the spine of a book and the rest of
the book is not met by Richard’s belt cutter. Br. 9. In that regard, Goss
argues that it has not been demonstrated that Richard’s belt cutter can be
used to cut through the spine of a book and the rest of a book as claimed.
Again, Goss incorrectly focuses on one reference, when the focus should be
on the combination of references. The Examiner finds that the resultant
structure of the combined teachings of Thumim and Richard is capable of
trimming a book and that the specifics of the book have not been claimed.
Ans. 5. The Examiner’s findings in that regard are reasonable and consistent
with authority. When the structural limitations are accounted for in the prior
art, the absence of a disclosure in the prior art relating to function does not
defeat the finding of unpatentability. Schreiber, 128 F.3d at 1477.
Here, the Examiner accounted for the structural limitations of the
claim and explained that the combination of Thumim and Richard describe a
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trim blade edge having a first section [20] forming a first acute angle with
the support surface and a second section [19] forming a second acute angle
with the support surface, where the first acute angle is greater than the
second acute angle. Ans. 4. Goss does not sufficiently explain what, if any,
structure is missing from the combination in order to meet claim 1. Aside
from the trim blade first section forming a first acute angle and the trim
blade second section forming a second acute angle with the first acute angle
being greater than the second acute angle, the claim language does not
otherwise describe a specific structure. Once a prima facie case of
unpatentability has been established, the burden shifts to the applicant to
show that the prior art structure does not inherently possess the functionally
defined limitations of the apparatus. Id. at 1478. Goss does not direct us to
objective evidence to demonstrate that Thumim’s trimmer modified to
include Richard’s trim blade is incapable of cutting the spine of a book and
cutting the rest of the book.
Goss further argues that it would not have been obvious to one of
ordinary skill in the art at the time the invention was made to place
Richard’s belt cutter blade on the Thumim device. Br. 9. Goss also argues
that one with ordinary skill in the art would have had no reason to place
Richard’s pivotally mounted belt cutter blade in the book trimming machine
of Thumim. Br. 9. Goss further argues that neither Thumim nor Richard
indicate a desire that Richard’s belt cutter blade be used for trimming books
or that the teachings of Richard would have any applicability to Thumim’s
book trimmer. Br. 9.
Goss’ arguments are misplaced because it is not necessary to find
precise teachings in the prior art directed to the specific subject matter
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claimed. Inferences and creative steps that a person of ordinary skill in the
art would employ can be taken into account. KSR, 550 U.S. at 418.
Moreover, the Examiner does not propose placing Richard’s pivotally
mounted belt cutter blade in Thumim’s book trimming machine. Rather the
Examiner determined that it would have been obvious to one with ordinary
skill in the art at the time the invention was made to substitute Richard’s
blade for the Thumim’s trim blade to facilitate the shearing operation. Ans.
5, 7. The Examiner’s rationale is reasonable. When an application claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another, the combination is likely obvious
when it does no more than yield a predictable result. Id. at 416. Here, the
Examiner has proposed replacing one known element, Thumim’s blade, for
another known element, Richard’s blade. Goss does not direct us to
objective evidence to demonstrate that the substitution of Richard’s blade for
the Thumim’s trim blade yields an unpredictable result or would be beyond
the skill level of one having ordinary skill in the art. Argument of counsel
cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
Lastly, Goss argues that Richard teaches away from using the trim
blade in a reciprocating manner since Richard teaches pivotally mounting
the cutter-blade. Br. 9. Goss’ arguments are unpersuasive because they do
not cogently explain how Richard’s description of a pivotally mounted cutter
blade suggests that the developments flowing from its disclosure are
unlikely to produce the objective of the Goss’ invention. “[A] reference will
teach away when it suggests that the developments flowing from its
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disclosures are unlikely to produce the objective of the applicant's
invention.” Syntex (U.S.A.) v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir.
2005), citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A teaching of
something different does not, by itself, constitute a teaching away.
For all these reasons, we sustain the rejection of claims 1 and 4-15 as
unpatentable over Thumim and Richard.
Alternative Prior Art Rejections
The Examiner set forth alternative rejections for claims 1 and 4-15.
Since we have sustained the rejection of claims 1 and 4-15 based on
Thumim and Richard, we need not reach the merits of the Examiner’s
alternative prior art rejections of claims 1 and 4-15.
F. CONCLUSION
1. Goss has not shown that the Examiner was incorrect in finding that
the combination of Thumim and Richard describes a trim blade
having first and second trim blade sections, where the first trim blade
edge section is capable of cutting the spine of a book and the second
trim blade section is capable of cutting the rest of the book.
2. Goss has not shown that the Examiner incorrectly determined that
substituting Richard’s blade for the blade of Thumim’s device would
have been obvious based on the rationale provided by the Examiner.
G. ORDER
The rejection of claims 1 and 4-15 under 35 U.S.C. § 103(a) as
unpatentable over Thumim and Richard is AFFIRMED.
We do not reach the merits of the rejection of claims 1, 6 and 11 under
35 U.S.C. § 102(b) as anticipated by Richard.
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We do not reach the merits of the rejection of claims 4-5, 7-10 and 12-
13 under 35 U.S.C. § 103(a) as unpatentable over Richard.
We do not reach the merits of the rejection of claim 15 under
35 U.S.C. § 102(b) as anticipated by Dutro.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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