Ex parte Stephenson

Board of Patent Appeals and Interferences

Aug 18, 1998

08584908 (B.P.A.I. Aug. 18, 1998)

Application for patent filed January 11, 1996.1
See Notice of Appeal (Paper No. 10).2
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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journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte STANLEY W. STEPHENSON III
________________
Appeal No. 97-3400
Application 08/584,9081
________________
ON BRIEF
________________
Before COHEN, ABRAMS and STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1, 3 and 5-7. Claim 2 has been canceled. Claim 4, the
only other claim pending in the application, has been finally
rejected but not appealed. Accordingly, the final rejection of2
Appeal No. 97-3400
Application 08/584,908
The copy of the appealed claims appended to appellant’s3
brief is incorrect in that line 1 of claim 3 should read “. . .
as recited in claim 1 . . . .”
-2-
claim 4 is not before us. An amendment filed subsequent to the
final rejection correcting a typographical error in claim 1 has
been entered.
Appellant’s invention pertains to an index print sheet on
which is printed a series of pictures that match a series of
images recorded on a film medium, with the index print sheet
being capable of storing or holding the film medium. Independent
claim 5, a copy of which is appended to appellant’s brief, is
illustrative of the appealed subject matter.3
The references of record relied upon by the examiner in
support of a rejection under 35 U.S.C. § 103 are:
Lowenstein 1,233,076 Jul. 10, 1917
Holson 4,263,357 Apr. 21, 1981
In addition, the examiner relies upon Official Notice,
explained below, in support of the rejection.
Claims 1, 3 and 5-7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over “Official Notice in view of Holson and
Lowenstein” (answer, page 3).
Considering first independent claim 5, this claim is
directed to a film package comprising a film sheet and an index
Appeal No. 97-3400
Application 08/584,908
Appellant has not challenged the examiner’s taking of4
Official Notice to the extent quoted.
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print sheet. The film sheet has a series of images recorded on
one side and a non-image area on the same side. The index print
sheet has a series of pictures on one side and a non-picture area
on the same side. According to the claim, the pictures on the
index print sheet “match the series of images recorded on said
film sheet” and the non-picture area of the index print sheet is
“in the same relative location as said non-image area on the film
sheet and [is] sized to permit the film sheet to be placed over
said non-picture area without covering any of the pictures.” In
addition, the index print sheet is provided with holding means
for releasably securing the film sheet to the non-picture area of
the index print sheet. Thus, it is clear that the picture and
non-picture areas on the claimed index print sheet and the image
and non-image areas on the claimed film sheet are positively
related to each other.
In rejecting this claim, the examiner has taken Official
Notice “that it is conventional to display photographs, film
negatives, transparent strips, or positive images in a
transparent photographic album with pockets” (answer, pages 3-
4). The examiner has also found that “Holson teaches providing4
Appeal No. 97-3400
Application 08/584,908
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a photographic album page comprising multiple pockets for
retaining pictures thereon” and that “Lowenstein teaches
providing a carrier 10 with retaining strips forming a pocket for
holding a removable transparent strip” (answer, page 4).
Based on these findings, the examiner has made the following
conclusions of obviousness:
It would have been obvious . . . to store film in
a desired location on a conventional picture storing
album sheet in an arrangement with the photographs. To
have provided the film in any desired location with
respect to the photographs . . . would further have
been obvious, for a purpose such as to facilitate
identification of the desired negatives for further
processing. No patentable or unobvious distinction is
seen between associating negatives with a plurality of
individual prints or with a contact sheet made from
those negatives. These are old and conventional
practices in the art of storing photographic negatives.
[Answer, page 4.]
We agree with appellant, however, that the examiner’s taking
of Official Notice that it is conventional to insert pictures or
negatives into transparent album pockets, in combination with the
teachings of Holson and Lowenstein, would not have suggested to
the ordinarily skilled artisan the claim requirement of providing
picture bearing index print sheet having a non-picture area in
the same relative location on the index print sheet as a non-
image area on the film sheet. In particular, Lowenstein, which
we view as the more pertinent of the applied references, is not
Appeal No. 97-3400
Application 08/584,908
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seen as providing any such suggestion. Lowenstein pertains to a
classification and indexing system for motion pictures, the main
component of which is an article which carries a series of
chronologically non-consecutive views occurring on a particular
motion picture film. Holson’s disclosure, insofar as pertinent,
is nothing more a photo album page having a plurality of pockets
for receiving pictures. From our perspective, what is lacking in
the examiner’s evidentiary basis is any teaching of laying out
the picture and non-picture areas on an index print sheet in the
same relative locations as the image and non-image areas on the
film sheet.
We also must disagree with the examiner to the extent he
contends that the claimed relationship between the areas on the
film and index print sheet is of no patentable moment. The
examiner has failed to indicate any teaching in the applied
references or any prior knowledge generally available to one of
ordinary skill in the art that would have led an ordinarily
skilled artisan to provide a film sheet and an index print sheet
in accordance with the requirements of claim 5. In short, the
rejection of appealed claim 5 must fail for lack of a sufficient
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
Appeal No. 97-3400
Application 08/584,908
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We shall therefore not sustain the standing § 103 rejection
of claim 5, or claims 6 and 7 which depend therefrom.
Turning to independent claim 1, in asserting the
patentability of this claim, appellant argues on page 6 of the
brief that claim 1
is patentable for the same reason that Claim 5 is
patentable. Specifically, Claim 1 calls for a picture-
bearing index print sheet where a non-picture area is
in the same relative location on the picture-side of
the index print sheet as the non-image area is on a
film medium to be held on the index print sheet.
This argument is not well taken. As appellant acknowledges,
claim 1 differs from claim 5 in that claim 1 is directed to a
film storing sheet comprising an index print sheet per se. While
we appreciate that claim 1 includes terminology relating the
picture and non-picture areas of the index print sheet to image
and non-image areas on an inferentially recited film medium, and
that this terminology must be considered in determining the
patentability of the claim, the film medium is not a positively
recited part of the claimed subject matter.
As noted above, the main component of Lowenstein’s motion
picture classification and indexing system is an article which
carries a series of chronologically non-consecutive views
occurring on a particular motion picture film. Figures 1 and 2
Appeal No. 97-3400
Application 08/584,908
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constitute two such examples of this article. In Figure 1, the
article is in the form of an card or sheet carrying a series of
characteristic non-consecutive scenes of the film (page 2, lines
13-21). The card further includes an area at the top of the card
or sheet for cataloging information, which may include a pocket
“for holding in place a removable transparent strip 11 carryinga
dates or other variable matter” (page 2, lines 36-39). The
alternative article shown in Figure 2 comprises a short section
of ordinary motion picture film strip upon which non-consecutive
views from a particular motion picture film have been reproduced
(page 2, lines 70-73).
Relating the Figure 1 article of Lowenstein to claim 1, we
find that Lowenstein’s Figure 1 article comprises an index print
sheet 10 having a series of pictures printed on one side thereof
(see page 2, lines 103-112), and an upper non-picture area
including a holding means in the form of a pocket 11 which is
fully capable of releasably securing an appropriately sized film
medium to the sheet. Regarding the terminology appearing in the
preamble and body of the claim relating the picture and non-
picture areas of the print index sheet to an inferentially
recited film medium, Lowenstein’s print sheet meets this claim
terminology in that the arrangement of picture and non-picture
Appeal No. 97-3400
Application 08/584,908
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areas of Lowenstein’s Figure 1 sheet is as called for in the
claim for an appropriately sized film medium having an
appropriately arranged series of images recorded thereon.
For the reasons discussed above, claim 1 lacks novelty over
Lowenstein’s Figure 1 article. While we appreciate that the
examiner has expressed the rejection in terms of obviousness, we
note that evidence establishing lack of novelty in the claimed
invention necessarily evidences obviousness. Lack of novelty has
been characterized by one of the predecessors of our court of
review as being the ultimate or epitome of obviousness. See In
re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982)
and In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974). We therefore shall sustain the examiner’s rejection of
claim 1 under § 103, noting that Holson and the examiner’s taking
of Official Notice are cumulative.
We will also sustain the rejection of dependent claim 3
since appellant acknowledges on page 4 of the brief that this
claim stands or falls with claim 1.
In summary, the standing § 103 rejection of claims 1, 3 and
5-7 is reversed as to claim 5-7 but is affirmed as to claims 1
and 3.
Appeal No. 97-3400
Application 08/584,908
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The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-3400
Application 08/584,908
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Leonard W. Treash Jr.
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201