Ex Parte Schuder et al

Board of Patent Appeals and Interferences

Mar 22, 2012

10820649 (B.P.A.I. Mar. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAYMOND G. SCHUDER, JOHN P. ERTEL,
ROBERT L. COBENE, STEVEN W. TROVINGER, and ROSS R. ALLEN
____________

Appeal 2010-007415
Application 10/820,649
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
WILLIAM V. SAINDON, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Raymond G. Schuder et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 9-13, 21-24, 27-
30, and 36-39. Claims 1-8, 14-20, and 31-35 have been canceled, and
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claims 25 and 26 have been allowed. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
THE INVENTION
Appellants’ claimed invention relates to a bookbinding system for
“attaching a cover to a text body.” Spec. 1, ll. 4-5. Claim 9, reproduced
below, is representative of the subject matter on appeal.
9. A bookbinding system, comprising:
a sheet binder configured to bind with an adhesive two or
more sheets into an adhesively bound text body having an
exposed spine bounded by two exposed side hinge areas;
an adhesive dispenser configured to apply a solid
pressure sensitive adhesive film between a cover and the side
hinge areas of the text body; and
a cover binder configured to bind the cover to the side
hinge areas of the text body by applying pressure to the cover.
Independent claim 30 is also directed to a bookbinding system
comprising “an adhesive dispenser configured to apply a solid pressure
sensitive adhesive film between a cover and the side hinge areas of the text
body” and “a cover binder configured to bind the cover to the side hinge
areas of the text body by applying pressure to the cover.”
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 9-12, 21-24, 27-29, and 36-39 under 35 U.S.C. § 103(a) as
unpatentable over Leclerc (US 5,261,769, iss. Nov. 16, 1993) and
Ensign (US 6,422,281 B1, iss. Jul. 23, 2002).
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2. Claims 9-12, 21-24, 27-30, and 36-39 under 35 U.S.C. § 103(a) as
unpatentable over Leclerc and Rossini (US 5,261,996, iss. Nov. 16,
1993).
3. Claims 13 and 30 under 35 U.S.C. § 103(a) as unpatentable over
Leclerc, Ensign, and Rossini.
ISSUE
The issue presented by this appeal is whether, in the embodiment of
Figures 7 and 8 of Leclerc’s apparatus, the cover binder 16 is configured to
bind the cover to the side hinge areas of the text body by applying pressure
to the cover.
ANALYSIS
Rejection based on Leclerc and Ensign
The Examiner determined that Leclerc discloses the bookbinding
system of claim 9, including “an adhesive dispenser 50/82 configured to
apply an adhesive 62/84 between a cover 20 and the side hinge areas of the
text body; and a cover binder 16 configured to bind the cover to the side
hinge areas of the text body by applying pressure to the cover.” Ans. 3; see
also Ans. 18 (relying on the embodiment of Figures 7 and 8, which apply
strips of adhesive 62/84 to the cover 20). The Examiner determined that it
would have been obvious to replace the hot melt glue guns 50/82 of Leclerc
with the pressure sensitive adhesive system of Ensign that applies a well-
known alternative adhesive material. Ans. 4.
Appellants argue that “the Examiner’s proposed modification of
Lerclerc’s bookbinding apparatus would not result in the inventive subject
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matter defined in claim 9 because the side hinge areas of the cover would
not be bound to the text body.” App. Br. 7-8. We agree with Appellants
that “the adhesives 62/84 bind the crash 29 [sic, 24] to the side portions
64/68 of the cover 20, but the crash [24] is not bound to the sides 66, 70 of
the text block 70; instead, the crash [24] is bound only to the spine portion
32 of the text block 70.” App. Br. 8; Leclerc, col. 3, ll. 44-61 (describing
that the glue gun 50 applies a first strip of adhesive 62 to the first portion 64
of cover 20, glue gun 82 applies a second strip of adhesive 84 to the second
portion 68 of cover 20, and crash 24 being attached to the first and second
portions 64, 68 of the cover 20); figs. 7 & 8 (showing adhesive 62/84
attaching crash 29 [sic, 24] to cover 20, and showing no adhesive between
side hinge areas of the text body and the cover). As such, in the embodiment
of Figures 7 and 8 of Leclerc, the cover is not bound to the side hinge areas
of the book block.
In the embodiment of Figures 7 and 8, Leclerc’s cover applying
station 16 does not bind the cover to the text body by applying pressure to
the adhesive strips 62/84. Rather, crash 24 is bound to adhesive strips 62/84
prior to the cover reaching cover applying station 16. Leclerc, fig. 1. The
cover applying station 16 attaches the strip of glue 44 on the spine 32 of
book block 14 to the crash 24 on cover 20. Leclerc, col. 3, ll. 56-59; col. 4,
ll. 16-19; and fig. 1. Thus, the Examiner erred in finding that in the
embodiment of Figures 7 and 8 Leclerc’s cover binder 16 is configured to
bind the cover to the side hinge areas of the text body by applying pressure
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to the cover.1 As such, we do not sustain the rejection of claim 9, or claims
10-12, 21-24, 27-29, and 36-39 depending therefrom, under 35 U.S.C.
§ 103(a) as unpatentable over Leclerc and Ensign.
Rejection based on Leclerc and Rossini
The Examiner relied on the same findings as to the disclosure of
Leclerc in the second ground of rejection as in the first ground of rejection.
Appellants again argue that “the Examiner’s proposed modification of
Lerclerc’s bookbinding apparatus would not result in the inventive subject
matter defined in claim 9 because the side hinge areas of the cover would
not be bound to the text body.” App. Br. 15. For the reasons set forth supra,
the Examiner erred in finding that in the embodiment of Figures 7 and 8
Leclerc’s cover binder 16 is configured to bind the cover to the side hinge
areas of the text body by applying pressure to the cover. As such, we do not
sustain the rejection of independent claims 9 and 30, or claims 10-12, 21-24,

1 While Leclerc discloses another embodiment in which adhesive applicators
73 apply strips of adhesive 72,76 to first and second sides 66, 70 of book
block 14 for attaching the first and second portions 64, 68 of the cover 20 to
the sides of the book block 14 (Leclerc, col. 3, ll. 30-33 and 36-40, figs. 5,
6), the Examiner’s proposed modification was to the bookbinding system
disclosed in the embodiment of Figure 7 and 8. Ans. 18. In the embodiment
of Figures 5 and 6, the strip of adhesive 62 applied by glue gun 50 is used to
bind the crash 24 to the side portion 64 of the cover 20, but glue gun 82 is
not used and side portion 68 is not attached to the crash 24. Leclerc, col. 3,
ll. 11-22; figs. 2, 4, 5). The Examiner’s proposed modification to replace
glue guns 50, 82 would not apply to the embodiment of Figures 5 and 6, in
which glue gun 82 is not used.
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27-29, and 36-39 depending from claim 9, under 35 U.S.C. § 103(a) as
unpatentable over Leclerc and Rossini.
Rejection based on Leclerc, Ensign, and Rossini
The Examiner relied on the same findings as to the disclosure of
Leclerc in the third ground of rejection as in the first ground of rejection.
Appellants relied on the same arguments regarding the deficiency of Leclerc.
App. Br. 17-18. For the reasons set forth supra, the Examiner erred in
finding that in the embodiment of Figures 7 and 8 Leclerc’s cover binder 16
is configured to bind the cover to the side hinge areas of the text body by
applying pressure to the cover. As such, we do not sustain the rejection of
claims 13 and 30 under 35 U.S.C. § 103(a) as unpatentable over Leclerc,
Ensign, and Rossini.
CONCLUSION
In the embodiment of Figures 7 and 8 of Leclerc’s apparatus, the
cover binder 16 is not configured to bind the cover to the side hinge areas of
the text body by applying pressure to the cover.
DECISION
We REVERSE the decision of the Examiner to reject claims 9-13, 21-
24, 27-30, and 36-39.
REVERSED

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