Ex parte HILL et al.

Board of Patent Appeals and Interferences

Jun 19, 1998

08313548 (B.P.A.I. Jun. 19, 1998)

Application for patent filed September 23, 1994. According to1
appellants, this application is a continuation of application 08/036,436,
filed March 24, 1993, which is a continuation-in-part of application
08/019,865, filed February 19, 1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEFFREY L. HILL, GREGORY S. HILL and ROBERT J. BRETL
_____________
Appeal No. 96-2712
Application 08/313,548 1
______________
HEARD: June 8, 1998
_______________
Before COHEN, MEISTER and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3 through 5, 9 through 12, 19 and 20.
Appeal No. 96-2712
Application 08/313,548
Claims 1 and 3 have been amended (subsequent to the final rejection)2
in a paper filed August 7, 1995 (Paper No. 18). As indicated on page 2 of the
examiner's answer, the rejections of claims 1, 3-5, 10 and 11 under 35 U.S.C.
§ 112, second paragraph, in the final rejection have now been overcome by the
above-noted amendment and are therefore withdrawn.
2
Claims 13 through 18, the only other claims remaining in
this application, stand allowed. Claims 2, 6, 7 and 8 have been
canceled. 2
Appellants' invention relates to a card carrying mailing
form (10) which is adapted to allow automatic insertion,
attachment and carrying of at least one card (30). Claim 1 is
representative of the subject matter on appeal and a copy of that
claim, as it appears in the Appendix to appellants' brief, is
attached to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness of the claimed subject matter
are:
Clark 1,141,172 Jun. 01, 1915
Coit 1,171,592 Feb. 15, 1916
Standal et al. (Standal) 1,932,536 Oct. 31, 1933
Jory 3,484,097 Dec. 16, 1969
Appeal No. 96-2712
Application 08/313,548
3
Claims 1, 3 through 5, 9 and 11 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Coit in view of Clark or Standal.
Claims 1, 10 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Jory in view of Coit.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over "the art as applied to claim 1" (answer, page 4).
Reference is made to the examiner's answer (Paper No. 23,
mailed March 6, 1996) for the examiner's reasoning in support of
the above-noted rejections and to appellants' brief (Paper No. 22,
filed December 18, 1995) for appellants' arguments thereagainst.
OPINION
Our evaluation of the obviousness issues raised in this appeal
has included a careful assessment of appellants' specification and
claims, the applied prior art references, and the respective
positions advanced by appellants and the examiner. As a conse-
quence of our review, we will sustain the examiner's rejections of
the appealed claims. Our reasoning follows.
Appeal No. 96-2712
Application 08/313,548
4
Before addressing the examiner's rejection based on prior
art, we note the statements on page 2 of the answer that claims 3
through 5, 10 and 11 are considered to stand or fall together and
that claims 1, 9, 12, 19 and 20 have been separately argued by
appellants. Finding no contrary statement in the brief and no
separate argument in the brief for dependent claims 3 through 5,
10 and 11, we agree with the examiner's assessment. Accordingly,
we select claim 1 as being representative of the group containing
claims 1, 3-5, 10 and 11, and address separately the rejections
of claims 9, 12, 19 and 20 (see 37 CFR § 1.192(c)(7)).
In rejecting claims 1, 3 through 5, 9 and 11 under 35 U.S.C.
§ 103 relying on Coit in view of Clark or Standal, the examiner
has expressed the view that Coit (particularly, Figure 5)
includes all of the claimed features except for a flap formed
from a closed slot. To address this difference, the examiner has
relied on the teachings of Clark (Figs. 3 and 4) or Standal
(Figures 2 and 3), noting that the card carrying mailer of Clark
shows a curved flap (unnumbered) which entraps an edge of the
card (3), and that Standal shows a curved flap (17) in a carrier
form for entrapping an edge of a card (16). According to the
examiner,
Appeal No. 96-2712
Application 08/313,548
5
It would have been obvious to one of ordinary skill in
the art at the time the invention was made to provide
the lower edge of Coit's card, as seen in Figure 5,
with an entrapping flap, as taught by either Clark or
Standal et al., because it would provide an extra
measure of security for Coit's card when the folder is
unfolded. The flap would provide the sole means for
releasably holding the card against movement out of the
corner pockets in a fourth direction when Coit's mailer
is folded and when it is unfolded. As can be seen from
Figure 2 of Coit, the card is spaced from the fold.
Therefore, when an entrapping flap is added, as taught
by either Clark or Standal et al., the fold does not
engage the card when Coit's mailer is folded and, thus,
does not hold the card against movement. The partic-
ular shape of the flap (claim 9) would have been an
obvious matter of design.
The limitations which relate to automatic insertion add
no structure to the claimed form.
Appellants argue that none of the references relied upon by
the examiner in this rejection show carriers adapted for auto-
matic insertion (brief, page 8). More specifically, appellants
contend (brief, page 9) that Coit is not adaptable for automatic
insertion and "expressly teaches manual insertion of a mailing
folder," that Clark "emphasizes manual insertion and teaches away
from a flap," and that Standal "relates to envelopes with paper
inserts which are shared [sic] separately by hand." In addition,
appellants urge that Coit clearly teaches away from a flap by
"emphasizing wedge trapping of a card across preweakened fold
lines."
Appeal No. 96-2712
Application 08/313,548
6
Notwithstanding appellants' above-noted arguments to the
contrary, we find nothing in Coit, Clark or Standal which would
preclude each of the clearly flexible card carrying mailing
folders of these references from being considered to be an
"automatic insertion adapted carrier form" (emphasis added), as
set forth in appellants' claims on appeal. In this regard, we
note particularly that Coit (page 1, lines 86-90) indicates that
the sheet (1) of the mailer therein is formed of "suitable stock,
which is preferably somewhat heavier and somewhat stiffer than
the usual writing paper." Thus, it is apparent to us that the
paper stock used in Coit would inherently possess a degree of
stiffness and flexibility so as to be capable of use in an
appropriate automatic insertion apparatus and that the corner
pockets (defined by the slits 2 and tabs 3, or slits 7) would be
inherently capable of resiliently flexing from the planar body of
the mailer when the planar body is automatically bent to open the
pockets for receipt of one of the two pairs of opposed corners of
the card to be received therein. As a further point regarding
appellants' argument that the carriers of Coit, Clark and Standal
are not "adapted for automatic insertion," we expressly note that
appellants have provided no explanation or evidence in support of
this bare assertion.
Appeal No. 96-2712
Application 08/313,548
7
As for appellants' contention that Coit "expressly teaches,"
and that Clark "emphasizes," manual insertion of the cards
therein, we find absolutely no mention whatsoever of "manual
insertion" in these references, and no indication that the
insertion of the cards therein necessarily must be done by hand.
Nor do we find in Coit any emphasis placed on "wedge trapping" of
the card therein across preweakened fold lines, as urged by
appellants.
Moreover, we do not share appellants' view that Coit
"clearly teaches away from a flap" (brief, page 9), merely
because Coit shows no flap and happens to show a fold line
adjacent the side of the card opposite the pair of opposed
corners received in the corner pockets of the mailing folder
therein. Like the examiner, when we consider the combined
teachings of the applied references (Coit and Clark, or Coit and
Standal), we are of the opinion that it would have been obvious
to one of ordinary skill in the art at the time of appellants'
invention to provide the mailing folder of Coit with a flap
formed from at least one closed slot cut through the body of the
Appeal No. 96-2712
Application 08/313,548
8
mailer and positioned opposite the pair of opposed card corners
received in the corner pockets of the mailing folder, so as to
provide additional securement for the card therein when the
mailing folder is in an unfolded condition. Appellants' own
arguments (brief, page 13) note that the mailing folder of Coit
has "nothing to prevent the... inserted card from falling out the
bottom (i.e. fourth rectilinear direction) of the mailing
folder... when the mailing folder envelope is opened."
In this regard, we note that it is well settled that where
the issue is one of obviousness under 35 U.S.C. § 103, the proper
inquiry should not be limited to the specific structure shown by
a reference, but should be into the concepts fairly contained
therein, with the overriding question to be determined being
whether those concepts would suggest to one skilled in the art
the modification called for by the claims. See In re Bascom, 230
F.2d 612, 614, 109 USPQ 98, 100 (CCPA 1956). Furthermore, under
35 U.S.C. § 103, a reference must be considered not only for what
it expressly teaches, but also for what it fairly suggests (In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979); In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976)), as
Appeal No. 96-2712
Application 08/313,548
9
well as the reasonable inferences which the artisan would
logically draw from the reference. See In re Shepard, 319 F.2d
194, 197, 138 USPQ 148, 150 (CCPA 1963). In addition, while
there clearly must be some teaching or suggestion to combine
existing elements in the prior art to arrive at the claimed
invention, we note that it is not necessary that such teaching or
suggestion be found only within the four corners of the applied
reference or references themselves; a conclusion of obviousness
may be made from common knowledge and common sense of the person
of ordinary skill in the art without any specific hint or
suggestion in a particular reference (see In re Boezk, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969)), this is because we
must presume skill on the part of the artisan, rather than the
converse. See In re Sovish, 769 F.2d, 738, 743, 226 USPQ 771,
774 (Fed. Cir 1985).
With respect to appellants' argument (brief, page 15) that
Clark teaches away from use of a flap by showing a corner slit
(e.g., 6) engaging the edge of the card which the flap also
engages, we note that it is clear from the disclosure of the
Clark patent (page 1, lines 71-78) that the arc slit flap seen in
Appeal No. 96-2712
Application 08/313,548
10
Figures 3 and 4 of Clark is meant to be an alternative to the
corner slit seen therein, and that the flap seen in Figures 3 and
4 may thus be used alone as the sole means to prevent
displacement of the card (3) in that direction.
As for appellants' argument that the examiner is using
hindsight reconstruction in light of appellants' teaching and
disclosure to render the claimed invention obvious, in light of
the foregoing determinations, we do not find such argument to be
persuasive of error in this case on the examiner's part. In the
present case, we are convinced that it would have been obvious to
the person of ordinary skill in the art at the time of
appellants' invention to combine the teachings and suggestions
found in Coit, Clark and Standal in the manner urged by the
examiner so as to arrive at an "automatic insertion adapted card
carrier" like that claimed by appellants in claim 1 on appeal.
The examiner's rejection of claim 1 on appeal under 35 U.S.C.
§ 103 based on Coit and Clark or Standal, accordingly, is
sustained.
Given our above determination that claims 1, 3 through 5, 10
and 11 should be considered as standing or falling together, it
Appeal No. 96-2712
Application 08/313,548
11
follows that claims 3 through 5, 10 and 11 will fall with claim 1
and that the rejection of these claims on appeal under 35 U.S.C.
§ 103 on the basis of Coit and Clark or Standal is likewise
sustained.
With respect to dependent claims 9, 19 and 20, we must agree
with the examiner that the specific shape of the flap (i.e.,
triangular as in claim 9) and the specific shape of the corner
pocket so as to result in an ear which is acutely angled or
rounded as in claims 19 and 20, would have been obvious matters
of design choice to one of ordinary skill in the art given the
fact that appellants' specification merely indicates (e.g., page
6) that the flap is "preferably" of such a shape and further that
appellants' have provided no indication in their specification
that the shapes in question solve any stated problem or provide
any unexpected result. Thus, we consider that the recitations
regarding the shape of the flap and of the ears do not serve to
patentably distinguish the claimed invention over the structure
of the mailing folder suggested by the applied prior art. See In
re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975). We
further consider that this position is bolstered by the
Appeal No. 96-2712
Application 08/313,548
12
disclosure in Clark (page 1, lines 71-78) regarding the flap
therein and in Coit (page 2, lines 61-72) regarding the
configuration of the ears or tabs (3) therein. In each instance,
it is indicated that the shape of these elements may be of
varying forms so long as they perform their function in a
satisfactory manner, thus, in our view, indicating that the
specific configuration of these elements is well within the skill
of the art.
Based on the foregoing, the examiner's rejections of claims
1, 3 through 5, 9, 11, 19 and 20 based on the teachings of Coit
and Clark or Standal are sustained.
The next of the examiner's rejections for our consideration
is that of claims 1, 10 and 12 under 35 U.S.C. § 103 based on the
combined teachings of Jory and Coit. In this rejection, the
examiner is of the opinion that Jory (e.g., Figure 3) discloses
the claimed invention with the exception that the flap (66) of
Jory is not the sole means for releasably holding the card (14)
against movement out of the corner pockets (formed by slits 20)
in a fourth direction, and that such corner pockets are not L-
shaped, as required in appellants' claim 1 on appeal. However,
Appeal No. 96-2712
Application 08/313,548
13
the examiner is of the opinion that it would have been obvious to
one of ordinary skill in the art at the time the invention was
made to eliminate the closed slits (18) and resulting pockets
since it has been held that the elimination of an
element and its function in a combination where the
remaining elements perform the same functions as before
involves only routine skill in the art. In re Karlson,
136 USPQ 184. (answer, page 4).
The examiner is also of the view that it would have been
obvious to one of ordinary skill in the art to make Jory's
pockets (formed by slits 20) L-shaped, as taught by Coit, because
such a modification is considered to be an obvious matter of
design.
Applying the test for obviousness set forth in In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981), which is what the
combined teachings of the applied references would have suggested
to those of ordinary skill in the art, it is our conclusion that
the artisan, armed with the disclosures of Jory and Coit, would
have found it obvious to eliminate the slits (18) adjacent the side
of the card (14) where the flap (66) is located and the function
Appeal No. 96-2712
Application 08/313,548
14
of these slits, so as to provide a more simplified mounting
arrangement for the card therein when a less refined or les
sophisticated mounting would be sufficient. Unlike appellants, we
do not see that Jory necessarily teaches away from removal of the
slits (18), or "expressly" teaches and requires a carrier form that
must have a five point restraint system. In this regard, we note
that the claims of the Jory patent do not in any way require that
the web carrier form include a five point restraint system. Se
particularly, claims 1 through 5 and 13 through 15 of Jory, with
specific emphasis on claims 5 and 15, which define apparatus for
coupling a flexible sheet (card) to a web carrier having only "a
pair of spaced slits." In reaching the conclusion that it would
have been obvious to one of ordinary skill in the art to eliminate
the slits (18) of Jory and their corresponding function, we again
presume skill on the part of those versed in this art rather than
the converse. See In re Sovish, supra.
While we have fully considered each of the arguments advanced
by appellants in their brief, we are not convinced thereby of any
error in the examiner's position. Like the examiner, we note that
appellants have not expressly indicated in the brief exactly why it
would not have been obvious to the ordinarily skilled artisan to
Appeal No. 96-2712
Application 08/313,548
15
modify Jory in the manner posited by the examiner in the rejection
under 35 U.S.C. § 103. Instead, appellants have merely made broad
assertions that the form of Jory as modified "would not be operable
in the insertion apparatus of Jory" (brief, page 20) and that the
card "could pivot on the intermediate slit 22 and become disengaged
with opposing slits 20" (brief, page 21). We find these assertions
to be based on pure speculation or mere attorney argument without
any evidence in this record to support such assertions.
As for the examiner's position that it would have been obvious
to one of ordinary skill in the art to make the slits (20) of Jory
in the form of L-shaped slits as in Coit, we are in agreement with
the examiner. From our perspective, the clear teaching of Coit, at
page 2, lines 61-72, is that the shape of the slits in such a
mailing folder is generally somewhat optional, as long as they
perform their intended function. Appellants' argument that Jory
fails to disclose a flap which resiliently flexes in the maner set
forth in claim 1 on appeal, is also unpersuasive. In our opinion
the flap of Jory is capable of such resilient flexing when the
mailer form web (12) is used in an appropriate automatic insertion
Appeal No. 96-2712
Application 08/313,548
16
apparatus. See, in this regard, Figure 7 of Jory wherein the flap
(66) is clearly resiliently flexed as a result of a portion of the
web body being bent by the finger (64), so that the flap can ride
up and over the edge of the card.
With respect to dependent claim 12, we note that appellants
have not specifically disputed the examiner's position that the
holes (24) of Jory are located adjacent the edge of the card
therein or that these holes serve to mark the "relative position"
of the pair of pockets (defined by slits 20) and flap (66). Absent
some specific argument from appellants, we see no reason to
overturn the examiner's position with regard to the holes (24).
For the reasons stated in the examiner's answer, as amplified
above, the decision of the examiner rejecting appealed claims 1, 10
and 12 under 35 U.S.C. § 103 based on the combined teachings of
Jory and Coit is sustained.
Turning next to the examiner's rejection of claims 19 and 20
based on Jory in view of Coit, for reasons similar to those
advanced above in our earlier discussion of claims 19 and 20, we
are in agreement with the examiner that it would have been an
Appeal No. 96-2712
Application 08/313,548
It appears to us that the dependency of claim 20 is in error, since we3
find no antecedent basis for "the intersection" set forth in claim 20, or "the
pair of rectilinear slots" set forth therein, in parent claim 1. Correction of
this error should be attended to in any further prosecution of the application
before the examiner.
17
obvious matter of design choice to form the slots/slits of Jory (as
modified) in the particular manner set forth in these claims. We
again point to the clear teachings of Coit (page 2, lines 61-72) in
support of this position. Moreover, we observe that Figures 1 and
2 of Coit appears to show slits like those required in appellants'
claim 20, while Figure 3 of Coit shows slits (5) in a configuration
like that required in appellants' claim 19. Thus, the examiner's3
rejection of claims 19 and 20 under 35 U.S.C. § 103 based on Jory
and Coit is sustained.
Given that each of the examiner's respective rejections of the
appealed claims has been sustained, it follows that the examiner's
decision to reject claims 1, 3 through 5, 9 through 12, 19 and 20
on appeal under 35 U.S.C. § 103 is affirmed.
Appeal No. 96-2712
Application 08/313,548
18
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-2712
Application 08/313,548
19
James W. Potthast
Potthast & Ring, Law Office
Suite 1750
10 South Riverside Plaza
Chicago, IL 60606