13199556 (P.T.A.B. Jul. 13, 2017)

Ex Parte Miranti

Patent Trial and Appeal BoardJul 13, 2017

13199556 (P.T.A.B. Jul. 13, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/199,556 09/06/2011 Laura J. Miranti MIR-02 6775 30568 7590 Mary J. Gaskin Annelin & Gaskin 7 Switchbud Place, Ste 192-271 The Woodlands, TX 77380 EXAMINER LEWIS, JUSTIN V ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 07/14/2017 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 LAURA J. MIRANTI Appeal 2016-005262 Application 13/199,556 Technology Center 3700 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAYAT, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’ Final Rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. Appeal 2016-005262 Application 13/199,556 THE INVENTION Claim 1, reproduced below with line breaks and indentation added for clarity, is illustrative of the subject matter on appeal. 1. A sturdy photo album comprising: a plurality of stiff pages, each of the pages having a first bound edge, an unbound edge opposite the first bound edge, a lower portion, a central portion having a single die cutout opening, and an upper portion having a slot with an opening along an edge of the upper portion leading to the die cutout opening, each of the pages comprising a first face and a second face, each of the faces formed from one half of a single continuous spread of white board material so that adjoining open pages are formed with a first face and a second face from the continuous spread with a fold line in between the adjoining open pages along the first bound edge, each of the faces further having a backside, each of the pages further comprising a U-shaped stiff spacer disposed between the backside of the first face and the backside of the second face of each page, the spacer being glued to both the backside of corresponding portions of the first face and to the backside of corresponding portions of the second face; and a plurality of pieces of clear plastic for covering the die cutout openings in the pages; the album being designed for inserting two photographs, back to back, through the opening into the slot in the upper portion of each page and arranging the photographs for viewing through the die cutout opening in each page. 2 Appeal 2016-005262 Application 13/199,556 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Ortis et al. (“Ortis”) US 2,850,291 Sept. 2, 1958 Lu US 4,822,195 Apr. 18, 1989 Rosinski, III US 5,199,743 Apr. 6, 1993 Minch US 5,437,514 Aug. 1, 1995 Nelson et al. (“Nelson”) US 6,139,210 Oct. 31,2000 Jordan US 6,547,472 B2 Apr. 15,2003 Hewitt et al. (“Hewitt”) US 2006/0261591 Al Nov. 23, 2006 Loo US 2007/0024046 Al Leb. 1,2007 Alon et al. (“Alon”) US 2007/0029782 Al Leb. 8, 2007 The following rejections are before us for review: 1. Claims 1—3, 5, and 7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Minch, Loo, Nelson, Hewitt, and Lu. 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Minch, Loo, Nelson, Hewitt, Lu, and Rosinski. 3. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Minch, Loo, Nelson, Hewitt, Lu, and Jordan. 4. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Minch, Loo, Nelson, Hewitt, Lu, and Alon. 5. Claims 9—13, 15, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Minch, Ortis, Loo, Nelson, Hewitt, and Lu. 6. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Minch, Ortis, Loo, Nelson, Hewitt, Lu, and Rosinski. 3 Appeal 2016-005262 Application 13/199,556 7. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Minch, Ortis, Loo, Nelson, Hewitt, Lu, and Jordan. 8. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Minch, Ortis, Loo, Nelson, Hewitt, Lu, and Alon. ANALYSIS Both independent claims (claims 1 and 9) call for “a U-shaped stiff spacer disposed between the backside of the first face and the backside of the second face of each page” (Appeal Br. 27—29, Claims Appendix). The Examiner found said limitation in Minch at Figures 3 and 5, numeral 13, and col. 3,11. 7—10 (Ans. 2—3, 8—9, 15). We have reviewed said disclosures but agree with the Appellant (Appeal Br. 8—10; Reply Br. 3) that the evidence does not support the Examiner’s finding. The Appellant’s Specification, in the “Summary of the Invention” section, describes the “U-shaped spacer” thusly: The U-shaped spacer is formed to have an opening that is larger than the outer dimensions of the sides and bottom of the of the die cutout, creating a hidden “pocket” between the unglued portions of the backs of the pieces of white board material. An opening, or slot, in the top of each page (between the two pieces of white board material) allows two photographs to be inserted inside each page, back to back. (Spec. 3,11. 16-19.) As the Appellant argues (Appeal Br. 8), Minch at col. 1,11. 54—60 discloses that “the present invention avoids the use of an intermediate spacing member.” Minch discloses that numeral 13 is “a decorative edging layer” that “[e]xtend[s] around the outer periphery of the other sides of the backing layer 11” (Minch col. 2,11. 51—53). This arrangement is shown in 4 Appeal 2016-005262 Application 13/199,556 Figure 3 of Minch. Minch discloses that the space for insertion of photographs is created by raised portion 30 and transition portion 31 of frame layer 17 (Minch col. 3,11. 42—68). Although the presence of decorative edging layer 13 creates a gap between backing layer 11 and frame layer 17, as shown in Figure 3, this inconsequential gap is entirely separate from slot 32 and is not related to the insertion of photographs. Minch does not disclose that decorative edging layer 13 creates any kind of space or pocket suitable for insertion of photographs. A prima facie case of obviousness has not been made out in the first instance by a preponderance of the evidence. Accordingly, we reverse the rejection of independent claims 1 and 9. For the same reasons, we also do not sustain the rejection of dependent claims 2—8 and 10-18. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonob vious”). CONCLUSION The Appellant has shown that the Examiner erred in rejecting claims 1—18 under 35 U.S.C. § 103(a). DECISION The Examiner’s rejections under 35 U.S.C. § 103(a) are reversed. REVERSED 5