14984134 (P.T.A.B. Dec. 19, 2018)

Ex Parte MADDRELL et al

Patent Trial and Appeal BoardDec 19, 2018

14984134 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/984,134 12/30/2015 42419 7590 12/19/2018 PAULEY ERICKSON & KOTTIS 2800 WEST HIGGINS ROAD SUITE 365 HOFFMAN ESTATES, IL 60169 FIRST NAMED INVENTOR Richard G. MADDRELL 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. CDPL-101 8210 EXAMINER GRABOWSKI, KYLE ROBERT ART UNIT PAPER NUMBER 3638 MAIL DATE DELIVERY MODE 12/19/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD G. MADDRELL and ANGELA M. HODGES 1 Appeal 2018-004653 Application 14/984,134 Technology Center 3600 Before LINDA E. HORNER, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's Final Rejection of claims 1-7 and 9-21. Br. 2. "Claim 8 has been cancelled." Br. 2. We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons explained below, we find error in the Examiner's rejections. Accordingly, we REVERSE. 1 As expressed in the Appeal Brief, "The real party in interest is Cottage Door Press, LLC, the assignee of the present application ( as recorded at reel 038108, frame 0767)." Br. 2. Based on this statement, we understand "Cottage Door Press, LLC" as Appellant. Appeal 2018-004653 Application 14/984,134 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a book having a cover movable with respect to a body of the book, to expose a writing surface and/or another suitable printable surface, displayable surface and/or other surface that can be used to write and/or otherwise display information, such as greeting information." Spec. 2. 2 Claims 1, 14, and 17 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A greeting card book comprising: a plurality of book pages bound with respect to each other and forming a book, the book pages movable with respect to each other, a greeting card cover connected to the book, a greeting card formed integral to the greeting card cover and including: a message surface of the greeting card cover, the message surface displaying a message, a flap formed in or on an outer surface of the greeting card book and movable with respect to the greeting card cover, and the flap opening with respect to the greeting card cover to reveal at least a portion of the message surface of the greeting card. REFERENCES RELIED ON BY THE EXAMINER Hyde Hendee US 6,951,352 Bl US 7,137,752 B2 THE REJECTIONS ON APPEAL Oct. 4, 2005 Nov. 21, 2006 Claims 1-3, 5, 7, and 10-13 are rejected under 35 U.S.C. Â§ I02(a)(l) as anticipated by Hyde. 3 2 Appellant's Specification lacks both line and paragraph numbering. Hence, we reference Appellant's Specification via page number only. 3 The Examiner withdrew the rejection of claims 4, 6, and 14--21 under 35 U.S.C. Â§ I02(a)(l) as anticipated by Hyde. Ans. 2. 2 Appeal 2018-004653 Application 14/984,134 Claims 1-7, 10-14, 16-18, 20, and 21 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Hyde. 4 Claims 9, 15, and 19 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Hyde and Hendee. ANALYSIS The rejection of claims 1-3, 5, 7, and 10-13 as anticipated by Hyde Independent claim 1 (and hence dependent claims 2, 3, 5, 7, and 10- 13) includes the limitation "a flap formed in or on an outer surface of the greeting card book." The Examiner references Figure IC of Hyde as disclosing "flap 28." Final Act. 2. Regarding the limitation of the flap being "formed in or on an outer surface of the greeting card book," the Examiner states that Hyde discloses a book "wherein each page (including the covers) are each made of the same card stock." Final Act. 2. From this finding, the Examiner reasons that "providing the flap 28 on a page, includes the cover ( which is a 'page' and identical to the others)." Final Act. 3. In other words, Hyde's disclosure of providing a flap on a book's page operates as a disclosure of providing a flap on a book's cover because of the similar construction between Hyde's pages and cover. Appellant acknowledges that Hyde shows "the flap 28 on an internal surface of an internal page of the book" and that "Appellant's claimed 4 The Examiner does not initially include claim 21 in this rejection. See Final Act. 4. However, the Examiner includes claim 21 when discussing this rejection in the Examiner's Answer. See Ans. 3. Appellant is silent on this point as no Reply Brief has been filed. Accordingly, we understand claim 21 is rejected under 35 U.S.C. Â§ 103 in view of Hyde, and that the Examiner's omission in the Final Office Action was inadvertent error. 3 Appeal 2018-004653 Application 14/984,134 invention is a book with a greeting card integrally formed on an outer surface, desirably the front surface, of a book." Br. 6. Appellant thus argues, "Hyde discloses flaps on internal pages, as part of the text/story, but does not disclose or suggest a greeting card cover with a flap on the book's outer surface."5 Br. 6. For an anticipation rejection, not only must each claim element be shown in a single reference, but the elements must be "arranged or combined in the same way as recited in the claims." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). It is clear that the arrangement of the flaps in Hyde is not the same arrangement as recited. However, "a reference can anticipate a claim even if it 'd[ oes] not expressly spell out' all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would 'at once envisage' the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)). It is not self-evident that a skilled person would "at once envisage" the Examiner's arrangement of a flap on the outer surface of the book from a reading of Hyde. This is because Hyde states that "it is an object of the present invention to provide a lift-a-flap board book." Hyde 2:49-50. Hyde describes such a book as being one "geared toward children and facilitates their learning process by more effectively posing a test/question/picture to the child and then revealing the answer under the flap." Hyde 1 :41--45. 5 Appellant further contends, "[ o ]ne of ordinary skill in the art of book manufacturing/printing would not reasonably consider the internal flaps 28 of Hyde as a greeting card or a greeting card cover." Br. 6. 4 Appeal 2018-004653 Application 14/984,134 This is consistent with Appellant's characterization of Hyde, i.e., Hyde discloses "flaps on internal pages, as part of the text/story." Br. 6. Consequently, it is not altogether clear that placing a text/story with a flap on the outer swface of Hyde's book would at once be envisaged because Hyde reserves this "flap" feature for internal pages where the text/story resides. See Hyde generally. In other words, the Examiner does not explain how placing a flap along with the accompanying "text/story" on the outer surface of Hyde's book would have been "at once envisaged" by one skilled in the art upon reading Hyde. Accordingly, we are not persuaded the Examiner has established by a preponderance of the evidence that Hyde anticipates claim 1, or dependent claims 2, 3, 5, 7, and 10-13. The rejection of claims 1-7, 10-14, 16-18, 20, and 21 as unpatentable over Hyde Each independent claim, i.e., claims 1, 14, and 17, includes a limitation similar to the one discussed above regarding claim 1. 6 The Examiner again addresses book construction and the equivalence of covers and pages stating, "it is believed to be inherently in a 'standard board book', for all pages to be identical, and thus a disclosure of the flap on any page includes the cover page." Final Act. 4; see also Ans. 4. The Examiner concludes that it would have been obvious "to modify a flap taught on an interior page (Fig. 1 C) [of Hyde] to be included on the first (cover) page." 6 Claim 1 recites "a flap formed in or on an outer surface of the greeting card book." Claim 14 recites "a flap formed in or on the outer front surface of the greeting card book." Claim 17 recites "a greeting card cover permanently connectible to a front surface of the cover of the book" and a "flap opening with respect to the greeting card cover to reveal at least a portion of the message surface of the greeting card." 5 Appeal 2018-004653 Application 14/984,134 Final Act. 4; see also Ans. 4. The Examiner provides two reasons for the proposed modification. First, "[t]he claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, provision of the flap [on] any page, including the front (cover) page." Final Act. 4. Second, "[t]he location of the flap on the cover page in respect to the interior pages, has no unexpected result." Final Act. 4; see also Ans. 4. Appellant contends ( similar to the above) that "[ t ]he internal book page of Hyde Fig. 1 C is not a cover for a book according to Appellant's claimed invention." Br. 9. Further, Appellant argues, "Hyde also only discloses flaps on internal pages, as part of the text/story, but does not disclose or suggest a greeting card cover with a flap on the book's outer surface." Br. 9. Appellant additionally contends, "[ o ]ne of ordinary skill in the art of book manufacturing/printing would not reasonably consider the internal flaps 28 of Hyde as a book cover, a greeting card, or a greeting card cover." Br. 10. There is some merit to the Examiner's contention that providing a flap on Hyde's cover is "well within the capability of one in the art" (Final Act. 4), but the Examiner never explains why one would have been motivated to modify Hyde's book in the manner claimed. Adding a flap as expressed may "provide no unexpected result whatsoever" (Ans. 4), but again, why modify Hyde in the first place so as to have a flap on the outer surface of the book? The Examiner does not point to Hyde for the motivation to do so, or otherwise explain why one would have been led to modify Hyde in the manner stated. Instead, the Examiner stresses that such a modification could readily be accomplished. 6 Appeal 2018-004653 Application 14/984,134 The Examiner is not necessarily wrong that it may have been relatively easy to achieve such a modification. But, the Examiner must make explicit a reason for the modification, and the reason is not to be gleaned from Appellant's own disclosure. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring that the analysis of a reason to combine must be made explicit to facilitate review). Here, however, it appears that the motivation to modify Hyde stems from Appellant's own disclosure. This is because the Examiner does not identify any other source or reason ( other than ease of doing so) that might have motivated a skilled person to install a flap on the outer surface of Hyde's book. See Final Act. 4; see also Ans. 4. Accordingly, hindsight appears to have provided the motivating or the guiding factor for the Examiner's rejection. In other words, we are not persuaded the Examiner has articulated sufficient reasoning with rational underpinning (i.e., rational underpinning absent hindsight) to support the legal conclusion of obviousness. We thus reverse the Examiner's rejection of independent claims 1, 14, and 17, and also claims 2-7, 10-13, 16, 18, 20, and 21 which depend therefrom. The rejection of claims 9, 15, and 19 as unpatentable over Hyde and Hendee Each dependent claim 9, 15, and 19 recites a magnetic closure. The Examiner relies on Hendee for such teachings. Final Act. 5. The Examiner does not employ Hendee in a manner that might cure the defect discussed above. Accordingly, we likewise reverse the Examiner's rejection of claims 9, 15, and 19. 7 Appeal 2018-004653 Application 14/984,134 DECISION The Examiner's rejections of claims 1-7 and 9-21 are reversed. REVERSED 8