Ex Parte Evert

Patent Trials and Appeals Board

Mar 20, 2019

13014341 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/014,341 01/26/2011
92269 7590 03/22/2019
Global Intellectual Property Agency, LLC
P.O. Box 382
Swedesboro, NJ 08085
FIRST NAMED INVENTOR
John R. Evert
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.
JOHEVE.POOOl 1416
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
info@globalipa.com
notifications@globalipa.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. EVERT 1
Appeal2018-005934
Application 13/014,341
Technology Center 3600
Before JAMES P. CALVE, BRANDON J. WARNER, and
NATHAN A. ENGELS, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 2-13, 17, and 18. Br. 1, 5. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 John R. Evert is identified as the real party in interest. Br. 3.
Appeal2018-005934
Application 13/014,341
CLAIMED SUBJECT MATTER
Claims 17 and 18 are independent, with claim 17 reproduced below.
17. An apparatus for distributing samples, comprising:
a publication having a front cover, a back cover, and one or
more pages between the front and back covers;
a sample package secured to the publication and comprising a
sample product to be distributed, an adhesive, and a
sample backing supporting the sample product;
wherein the sample backing comprises a portion that is internal
to the publication and a portion that is external to said
publication, and the adhesive adheres the portion of the
sample backing that is internal to the publication to a
page of the one or more pages of the publication;
wherein internal to the publication is not extending past a
periphery edge of the one or more pages of the
publication; and
wherein said sample product is external to the periphery of at
least one of the front and back covers of said publication,
is removably attached to the portion of said sample
backing that is external to said publication, and does not
extend beyond an edge of the sample backing.
REJECTIONS
Claims 2, 4, 6-10, 13, 17, and 18 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Robertson (US 2010/0181751 Al, pub. July
22, 2010) and Olson (US 5,249,827, iss. Oct. 5, 1993).
Claims 3 and 5 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Robertson, Olson, and Evert, Jr. (US 5,716,075, iss. Feb. 10, 1998)
("Evert").
Claims 11 and 12 are rejected over 35 U.S.C. § I03(a) as unpatentable
over Robertson, Olson, and Hollwarth-Oberholz (US 6,669,236 Bl, iss. Dec.
30, 2003).
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Appeal2018-005934
Application 13/014,341
ANALYSIS
Claims 2, 4, 6--10, 13, 17, and 18
As Unpatentable Over Robertson and Olson
Appellant argues claims 2, 4, 6-10, 13, 17, and 18 as a group. Br. 10-
16. We select independent claim 17 as representative, and claims 2, 4, 6-10,
13, and 18 stand or fall with claim 17. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Robertson discloses an apparatus as recited in
claim 17, comprising a sample package with a sample product and backing
supporting the sample product ( attachable substrate 110) and also discloses
that this sample package and substrate may be attached to bound text pages
of the publication. Final Act. 2-3. The Examiner reasons that if a substrate
and containers were attached to pages of the text, the card must be internal to
the publication to attach to the internal pages with the rest of the substrate
card and containers outside the periphery of the publication. Id. at 3; Ans. 4
("The substrate is attachable, and thus must be attached to a book in its
basic form (two covers and internal pages)."). The Examiner also reasons
that it would have been obvious to attach a substrate and containers to book
pages so some of the substrate is internal to create a surface to overlap the
text pages with the containers remaining outside. Final Act. 3; Ans. 4.
The Examiner finds that Olson teaches a similar publication including
attached cards that carry other material or articles, and applies such substrate
of card-like material to a publication with adhesive by attaching a portion of
the card-like material to an interior region of the publication. Final Act. 3;
Ans. 4. The Examiner determines that it would have been obvious to use
this known technique of using adhesive to secure a card-like material to an
internal portion of the publication in Robertson. Final Act. 3; Ans. 4.
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Appeal2018-005934
Application 13/014,341
Appellant argues that the references do not teach or suggest a sample
backing with "a portion that is internal to the publication and a portion that
is external to said publication, and the adhesive adheres the portion of the
sample backing that is internal to the publication to a page of the one or
more pages of the publication," as recited in independent claims 17. Br. 10.
Appellant further argues that Robertson teaches a spine embodiment where
containers are attached to the spine, a cover embodiment where containers
are attached to a cover, and page embodiments where containers are attached
to a bound text page. Id. at 11. However, Appellant argues that Robertson
does not address how a container would be attached (directly or indirectly)
to a text page using attachable substrate 110, and Robertson does not teach
explicitly that attachable substrate 110 is attached to a text page of the book
such that a portion of the attachable substrate is internal to the book. Id. In
addition, Appellant argues that a skilled artisan would understand that, in the
page embodiment, attachable substrate 110 would be attached to an external
margin of a wide or tall text page in the same way attachable substrate 110 is
attached to an external margin of a wide or tall back cover in the illustrated
cover embodiments of Figures 3-5. Id. at 11-12. Appellant further argues
that Robertson only describes attachable substrate 110 being external to
book 10 so no portion of the substrate 110 is internal to book 10. Id. at 12.
Appellant argues that Olson discloses embodiments where reference-
aid apparatus 10 is entirely internal to the publication but none with internal
and external parts as claimed. Id. Appellant argues that there is no evidence
to support a conclusion that it would have been obvious to depart from the
disclosures of Robertson and Olson and attach substrate 110 to text pages
with a portion of substrate 110 internal to the book as claimed. Id. at 12-13.
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Appeal2018-005934
Application 13/014,341
The Examiner has the better position. As the Examiner points out, it
would have been obvious when attaching a substrate to pages of a book to
position part of the substrate internal to the book where pages are located in
order to create a surface area for the substrate to overlap the text pages. Ans.
4. The prior art teachings support this finding and reasoning. Robertson
teaches to attach the containers directly or indirectly to spine 25, or another
way, as long as the part of the bound text pages or the cover of the book that
supports the containers is made of a material rigid enough to support the
weight of the containers. Robertson ,r 17. Robertson also teaches that the
substrate and containers form a single piece/assembly that "can be attached
in a variety of ways." Id. The Examiner reasonably concludes that it would
have been obvious ( common sense) when attaching a substrate and container
assembly to the internal pages of a publication to position some part of the
substrate internal to the publication to attach to the bound text pages, which
Robertson illustrates as being internal to the publication in all embodiments,
and part of the substrate external to the publication to support the containers
externally as Robertson also illustrates. Ans. 4; see Robertson ,r 20 ("There
is no restriction on [the] way the containers are attached to the book.").
Appellant is correct that Robertson illustrates publications with covers
that are extended to support containers and substrates. Robertson, Figs. 3-5.
However, neither Robertson nor Olson provide any teaching or suggestion to
extend the bound text pages beyond the cover of a publication. Therefore, in
embodiments that attach a substrate with containers to bound text pages of a
publication, finite options exist. The substrate is attached to surfaces of the
text pages that are internal to the publication, or the substrate and containers
are attached to outer edges of the text pages (like the spine embodiment).
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Appeal2018-005934
Application 13/014,341
We agree with the Examiner that it would have been obvious to secure
substrate 110 and containers 21-24 to surfaces of bound text pages that are
located entirely internal of the publication (i.e., within the periphery of the
cover) as was known in the art at the time of the invention and as Robertson
illustrates. Robertson, Figs. 1, 3-5, 7. Olson likewise illustrates this known
configuration. Olson, Figs. 1, 9, 11.
Furthermore, Olson teaches to adhere substrates and articles to pages
of a publication that are entirely internal to the publication (i.e., within the
periphery of the covers). Id. at Fig. 1. These teachings provide a rational
underpinning for the Examiner's determination that it would have been
obvious to attach Robertson's substrate 110 and containers similarly to
bound text pages of the publication of Robertson so that part of substrate 110
is positioned internally (i.e., the part that is adhered to the pages by adhesive
per Olson's teachings) and part of substrate 110 is positioned externally to
the publication so the containers are accessible, as Robertson teaches.
Appellant is correct that Olson also teaches an embodiment in which
an apparatus is glued to spine portion 42 of publication within the bound text
pages of the publication. Olson, 22:18-23, Fig. 9; Br. 12. However, marker
11, 18 is a flat substrate that is illustrated as fitting between pages without
altering the shape of the pages or book.
Robertson's substrate 110 supports three-dimensional containers that
have a height/thickness equivalent to the thickness of the publication itself.
Robertson, Figs. 1-5. Therefore, a skilled artisan, being a person of ordinary
creativity, would understand to attach Robertson's substrate 110 to internal
bound text pages by adhering a portion of substrate 110 directly to the pages
internally while another portion supports containers externally.
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Appeal2018-005934
Application 13/014,341
Moreover, Robertson teaches that the content of the containers may be
related to the story in the interactive book 10. Robertson ,r 15. Securing a
substrate and container on text pages with adhesive as taught by Olson thus
would associate the container and item therein with the relevant page of the
story to which it relates. The substrate-supported containers thus provide a
reference-aid article/device similar to markers taught in Olson. See Olson,
1: 19-31, Fig. 1. Olson also uses substrate 21 to support three-dimensional
articles such as game markers. Id. at Fig. 4 7. The combined teachings of
Robertson and Olson thus render obvious the claimed configuration of
substrate-supported articles attached by part of the backing to the internal
pages of the publication with another part of the backing external to the
publication to support the article as claimed.
We are not persuaded by Appellant's arguments that a skilled artisan
would have placed a substrate with three-dimensional containers entirely
within the pages of a book or attached the same to peripheral edges of a text
page. Br. 12, 15-16. A skilled artisan would appreciate that placing the
entire substrate with containers between the pages of a book would result in
the book not closing properly, unlike the situation in Figure 9 of Olson
where the articles on substrate 11 are flat. On the other hand, adhering a
substrate and containers to the peripheral edges of text pages would prevent
the pages from being opened and read. In addition, Robertson (Fig. 1)
teaches to use spine 25, not text pages, for such peripheral attachments of
substrates and containers.
For all the foregoing reasons, we sustain the rejection of claim 17 and
of claims 2, 4, 6-10, 13, and 18, which fall therewith.
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Appeal2018-005934
Application 13/014,341
Claims 3 and 5
As Unpatentable Over Robertson, Olson, and Evert
Appellant does not present arguments for this rejection. Br. 10-17.
Therefore, we summarily sustain this rejection.
Claims 11 and 12
As Unpatentable Over Robertson, Olson, and Hollwarth-Oberholz
Appellant does not present arguments for this rejection. Br. 10-17.
Therefore, we summarily sustain this rejection.
DECISION
We affirm the rejections of claims 2-13, 17, and 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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