Ex Parte Sklenar

Patent Trial and Appeal Board

Nov 27, 2013

11165452 (P.T.A.B. Nov. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOHN A. SKLENAR
__________

Appeal 2011-007093
Application 11/165,452
Technology Center 1600
__________

Before DEMETRA J. MILLS, LORA M. GREEN and
ULRIKE W. JENKS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF CASE
The following claim is representative.
1. A machine-implemented method comprising:
adding information to a template;
printing said template;
inserting said template between pages of a printed document to
produce a template containing document;
scanning said template-containing document to produce a scanned
document, wherein said scanning identifies, using a processor, a location of
said template within said pages of said template-containing document and
identifies said information added to said template; and
processing said scanned document through at least one printing device,
such that a media page includes a portion of said information added to said
template printed thereon and is inserted at a location of said template in
printed copies of said template-containing document,
wherein, during said scanning, said processor automatically identifies
pages of said printed copies between which said media page will be inserted
by noting a relative position of said template within said template-containing
document.

Cited References

Pepin et al. US 6,151,131 Nov. 21, 2000
Farrell US 6,873,426 B1 Mar. 29, 2005
Young US 6,177,933 B1 Jan. 23, 2001

Grounds of Rejection
Claims 1and 3-5 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Pepin in view of Farrell.
Claims 6, 8-11, 13-16, and 18-20 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Pepin in view of Farrell and Young.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
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3-17.

Discussion
ISSUE
The Examiner concludes that Pepin teaches each element claimed
except
Pepin ’131 does not explicitly show wherein said
scanning identifies, using a processor, a location of said
template within said pages of said template-containing
document; the media page will be inserted by noting a relative
position of the template within the template containing
document.
However, the above-mentioned claimed limitations are
well known in the art as evidenced by Farrell ’426.

(Ans. 4.)

Appellant
submits, that neither Pepin, nor Farrell, nor any alleged
combination thereof, teaches or suggests, “processing said
scanned document through at least one printing device, such
that a media page includes a portion of said information added
to said template printed thereon and is inserted at a location of
said template in printed copies of said template-containing
document,” per Appellant's independent claim 1.

(App. Br. 15.) Appellant argues that Farrell teaches away from Pepin. (Br.
21.) Appellant maintains that the motivation to combine the references is
totally hindsight reasoning based solely on the Appellant’s claimed
invention. (App. Br. 19.)
The dispositive issue is: Does the cited prior art support the
Examiner’s conclusion that the claimed subject matter is obvious?
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PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir.
1993) (citations omitted). In order to determine whether a prima facie case
of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The Patent Office has the initial duty of supplying the factual basis for
its rejection. It may not resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in the cited references. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). The United States Court of
Appeals Circuit, our reviewing court, has stated that “the best defense
against hindsight-based obviousness analysis is the rigorous application of
the requirement for a showing of a teaching or motivation to combine the
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prior art references.” Ecolochem, Inc. v. Southern California Edison Co.,
227 F.3d 1361, 1371 (Fed. Cir. 2000).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection,
and responses to Appellant’s arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to augment the
position set forth in the Answer. Appellant provides separate argument for
claims 1, 3-6, 8-11, 13-16, and 18-20 in the Brief at pages 15-45, each of
which have been fully addressed in the Answer. We address both
obviousness rejections together.
Appellant contends that
that neither Pepin, nor Farrell, nor any alleged combination
thereof, teaches or suggests, “processing said scanned
document through at least one printing device, such that a
media page includes a portion of said information added to
said template printed thereon and is inserted at a location of
said template in printed copies of said template-containing
document” per Appellant’s independent claim 1.

(App. Br. 15.)

We are not persuaded and agree with the Examiner that

Pepin ‘131 discloses processing said scanned document through
at least one printing device (scanned print service, column 12,
lines 25-27, fig. 7), such that a media page includes a portion of
said information added to said template printed thereon (a
placeholder page may contain a description of the page to be
added and corresponding instructions could be written or
printed in the form of machine readable characters or structural
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information; col. 9, lines 64-67 and col. 10, lines 1-5) is
inserted at a location of said template in printed copies of said
template-containing document (a page is added at the print
service designated by the placeholder, column 9, lines 65-67,
column 12, lines 37-40).

(Ans. 17-18.) Nor are we persuaded by Appellant’s argument that one of
ordinary skill in the art would not have been motivated to substitute the
slipsheet or marker pages of Farrell for the “placeholder page” of Pepin (Br.
33-34). We agree with the Examiner’s response to this argument on pages
18-20 of the Answer. We also agree with the Examiner’s response to
Appellant’s “teaching away” argument on page 20 of the Answer.
With respect to Appellant’s hindsight argument, we find that the
Examiner has relied on a factual showing, teaching, or motivation to
combine the prior art references consistent with legal precedent. Ecolochem,
227 F.3d at 1371 . Therefore, on this record we do not agree that the
Examiner has engaged in hindsight reconstruction of Appellant’s invention
based on the disclosure.
Finally, the Examiner has cogently addressed the subject matter of
each of the separately argued claims in the Answer, and we remain
unpersuaded by Appellant’s arguments with respect to these claims. We
find that a preponderance of the evidence of record supports a finding of
obviousness of the claimed subject matter which has not been rebutted by
Appellant with sufficient evidence. The obviousness rejections are affirmed
for the reasons of record.

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CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections,
which are affirmed for the reasons of record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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