Ex Parte Cadieux et al

Patent Trial and Appeal Board

Mar 27, 2013

10447063 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDMOND J. CADIEUX, JR., BARRY S. SMITH, G.
ROBERT SCOTT, MARTIN T. GARTHAFFNER,
STEVE R. RINEHART, XUAN PHAM,
LINWOOD H. CARNEAL, JR.,
HUBERT COLEMAN GOODMAN, JR.,
JOSHUA L. ROBY, and CHRISTOPHER CRAWFORD
____________________

Appeal 2010-010968
Application 10/447,063
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to an in-line insert folder system for folding
printed inserts and serially delivering them to an applicator for placement
directly onto, e.g., cigarette packs. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. An in-line insert folder system comprising:
a continuous roll of preprinted inserts;
a cutter constructed and arranged to cut individual
inserts from the roll;
a transport for serially conveying the individual
inserts in a downstream direction;
a buckle folder constructed and arranged to receive
each individual insert and fold each insert along at
least one fold line; and
an applicator for serially receiving the folded inserts
from the buckle folder and applying the folded inserts
to consumer packs.

REFERENCES
Voltmer
Vijuk
Draghetti
Tallier
US 4,605,459
US 5,044,873
US 6,105,340
US 6,467,614 B1
Aug. 12, 1986
Sep. 3, 1991
Aug. 22, 2000
Oct. 22, 2002

REJECTIONS
Claims 1-3, 5-7, and 9 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Voltmer and Vijuk. Ans. 4.
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Claims 4 and 8 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Voltmer, Vijuk, Draghetti, and Tallier. Ans. 5.
Claim 10 stands rejected under 35 U.S.C § 103(a) as unpatentable
over Draghetti, Vijuk, and Voltmer. Ans. 5-6.
ANALYSIS
Claims 1-3, 5-7, and 9 – Obviousness – Voltmer and Vijuk

Appellants argue claims 1-3, 5-7, and 9 as a group. Br. 6. We select
claim 1 as representative, with the remaining claims standing or falling with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Voltmer discloses the invention substantially
as claimed, and in particular discloses an applicator that serially receives
inserts from a folder and applies them to consumer packages. Ans. 4 (citing
Voltmer, figs. 1-4; col. 2, l. 12 – col. 3, l. 60); Ans. 8 (citing Voltmer fig. 1;
col. 1 ll. 6-11; col. 3, ll. 3-7, 53-56, 61-63). The Examiner further found that
Vijuk discloses structure for creating folded inserts from a continuous roll
including a feed roll, cutter, and buckle folder. Id. at 4 (citing Vijuk, figs. 1-
4, col. 4, ll. – 26-59, col. 12, l. 62 – col. 3, l. 9); Ans. 8-9 (citing, e.g., fig. 1;
col. 3, ll. 47-54, 28-41; col. 4, ll. 60-65). The Examiner determined that one
of ordinary skill at the time of the invention would have combined Voltmer
and Vijuk for “efficiently folding items prior to attachment to a consumer
package.” Id.
Appellants first argue that claim 1 requires that “the folded inserts
remain spaced apart from one another from the [moment] they are initially
formed until direct application to the cigarette packs or outer wrap material
for the packs.” Br. 7. Appellants assert that prior art systems such as
Voltmer’s differ from this claim requirement because in those systems pre-
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folded inserts are introduced from a supply hopper or magazine to the
applicator rather than coming directly from the buckle folder. Id.
According to Appellants, in Voltmer’s system “a sufficient quantity of
inserts are collected in the chute 158 and the bottom insert of the inventory
within the chute is then applied to the passing products.” Br. 8.
We do not find this argument persuasive. Claim 1 requires that the
inserts be serially conveyed from the cutter to the buckle folder, and then to
the applicator. We do not read this limitation as requiring that the folded
inserts remain spaced apart until they are applied to packages, or to exclude
the accumulation of inserts in a chute between the folder and the applicator.
Appellants have not persuaded us that the Examiner erred in finding that the
Voltmer’s chute 158 serially receives inserts from a folder and that
Voltmer’s applicator serially receives the inserts from chute 158, as claim 1
requires.
Appellants next argue that the rejection is based on prohibited
hindsight because there is “no suggestion, teaching or motivation in the prior
art combination of Voltmer/Vijuk . . . relied upon in the rejection.” Br. 9-10.
But an express teaching, suggestion or motivation to combine references is
not required to support a conclusion of obviousness based on the
combination of the references. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007). In order to establish a prima facie case that a claim is obvious
based on teachings of multiple prior art references, the Examiner must
nevertheless articulate some “reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir 2006). Appellants have not addressed the Examiner’s reason to
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combine or explained why it lacks a rational underpinning or is otherwise
erroneous.
We sustain the Examiner’s rejection of claims 1-3, 5-7, and 9 as
obvious over Voltmer and Vijuk.

Claims 4 and 8 – Obviousness – Voltmer, Vijuk, and Tallier

Appellants raise the same arguments for the patentability of claims 4
and 8 as were raised with respect to claim 1. Br. 6. Because we found those
arguments unpersuasive, we sustain the rejection of claims 4 and 8 as
obvious over Voltmer, Vijuk, and Tallier.

Claim 10 – Obviousness – Draghetti, Vijuk, and Voltmer

Appellants do not separately argue the patentability of claim 10. We
therefore sustain the Examiner’s rejection of claim 10 as obvious over
Draghetti, Vijuk, and Voltmer.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-10 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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