Ex Parte Clements

Patent Trial and Appeal Board

Nov 28, 2012

10801401 (P.T.A.B. Nov. 28, 2012)

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.
10/801,401 03/15/2004 Jehan Clements 02013-06034s 1672
27171 7590 11/28/2012
MILBANK, TWEED, HADLEY & MCCLOY
1 CHASE MANHATTAN PLAZA
NEW YORK, NY 10005-1413
EXAMINER
GISHNOCK, NIKOLAI A
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
11/28/2012 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 JEHAN CLEMENTS
____________________

Appeal 2010-009514
Application 10/801,401
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, MICHAEL L. HOELTER, and
HYUN J. JUNG, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
21-24, 26-29, and 31-34. Appellant’s representative presented oral
argument on November 5, 2012. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

The Invention
Appellant’s claimed invention relates to a system, method, and kit for
producing a storytelling book. Spec. 2:2-7. Claim 21, reproduced below, is
illustrative of the claimed subject matter:
21. A system for producing a storytelling book,
comprising:
a software program in a computer having
subroutines for
(a) accepting by the computer a first set of
inputs from a user in a first blank story book
screen, the first set of inputs comprising title
information and author information and one or
more images;
(b) automatically generating by the
computer a cover page for printing on a first leaf’s
front-side from the first set of inputs, wherein the
cover page includes at least one of title
information, author information, and one or more
images;
(c) automatically generating by the
computer a title page for printing on the first leaf’s
back-side and a second leaf’s front-side, wherein
the title page includes the title and author
information and a copyright notice information;
(d) accepting by the computer a second set
of inputs from the user in a second blank story
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book screen, the second set of inputs comprising
one or more images and corresponding text;
(e) automatically generating by the
computer a first story page from the one or more
images from the second set of inputs for printing
on the second leaf’s back-side and automatically
proportionally enlarging the one or more images
from the second set of inputs on the first story page
to a maximum size that does not overlap margins
of the first story page;
(f) automatically generating by the computer
a second story page from the one or more images
and the corresponding text from the second set of
inputs for printing on a third leaf’s front-side,
wherein the one or more images and corresponding
text from the second set of inputs, when printed,
appear oriented in diametric contraposition to the
one or more images on the first story page;
(g) automatically generating by the
computer one or more indicia on the title page and
first and second story pages for indicating how to
assemble the second story page in diametric
contraposition to the first story page; and
(h) allowing by the computer the user to
print the cover page, the title page, and the first
and second story pages, wherein the first story
page and second story page are printed for binding
the second story page in diametric contraposition
to the first story page.

Evidence Relied Upon
Schubert
Schach
Scocca
Clements
US 5,127,879
US 5,397,156
US 6,126,202
US 6,210,172 B1
Jul. 7, 1992
Mar. 14, 1995
Oct. 3, 2000
Apr. 3, 2001
Gonzales US 2002/0161603 A1 Oct. 31, 2002

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The Rejections
The following rejections are before us on review:
1. Claims 21-24 and 26-29 under 35 U.S.C. § 103(a) as unpatentable over
Gonzales, Scocca, Clements, and Schubert. Ans. 3.
2. Claims 31-34 under 35 U.S.C. § 103(a) as unpatentable over Gonzales,
Scocca, Clements, Schubert, and Schach. Ans. 9.

ANALYSIS
Claims 21-24 and 26-29 over Gonzales, Scocca, Clements, and Schubert1
Appellant presents five arguments that the subject matter of claim 21
would not have been obvious over Gonzales, Scocca, Clement, and
Schubert: 1) that the proposed combination does not disclose all of the
limitations of claim 21; 2) that Gonzales is nonanalogous art; 3) that the
proposed combination impermissibly changes the principle of operation of
Gonzales; 4) that Clements teaches away from the proposed combination;
and 5) that the proposed combination is not based upon a sufficient rationale.
App. Br. 17-18, 28-30. We address these arguments in turn.
1) All Limitations
Appellant makes several arguments that the proposed combination
does not disclose all of the limitations of the claimed subject matter. App.
Br. 11-14, 17-27; Reply Br. 5-7.

1 Appellant presents a single argument for claims 21-24 and 26-29. App. Br.
11-34; Reply Br. 4-10. As such, we select claim 21 as representative and
claims 22-24 and 26-29 stand or fall with claim 21. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2011). We note Appellant does not distinguish between
the two grounds of rejection. We do not address arguments related to
Schach in the first rejection because Schach is not included as a reference in
the first rejection.
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Appellant argues that the proposed combination does not disclose
automatically generating by the computer a: cover page, title page, first story
page, and second story page as claimed, because the references operate in a
What You See Is What You Get (WYSIWYG) manner. App. Br. 12, 18-19.
Specifically, Appellant characterizes Gonzales as operating in a WYSIWYG
manner, because “content inputted into the templates, once published,
appear as they are inputted (Gonzales, ¶¶ 0068-00712; Figs. 2, 5 and 6).”
App. Br. 12. Appellant contrasts a WYSIWYG approach with that of the
claimed subject matter, which calls for “a hard-copy book assembly system
with such precise outputs as to generate story pages for printing on particular
sides of a paper with specific images enlarged and certain text used on
particular sides of the paper where the printed and bound result has the
second story page in diametric contraposition to the first story page.” Reply
Br. 5-7 (quotation at 6); see also App. Br. 12, 19-21.
Such contention is unpersuasive because it does not address the
rejection as articulated by the Examiner. The Examiner did not find that
Gonzales discloses some action after creation of the template that
corresponds to automatically generating as claimed. Rather, the Examiner
found that the conversion of inputted information to a template format
corresponds to automatically generating as claimed. See, e.g., Ans. 4. This
finding is well supported by the reference, which discloses that content is
inputted to the system and then the user may select to display the

2 These cited portions describe that an author may create, edit, or delete an
article. We fail to see, and Appellant fails to cogently explain how such
disclosure demonstrates error in the Examiner’s finding that Gonzales’s
conversion of inputted information into a selected template corresponds to
automatically generating a page as claimed.
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information in the layout of the select template. See e.g., Gonzales, para.
[0099] (module 312 formats the article in accordance with a template), fig.
3A; para. [0194] (the content management application displays the input in
the layout of the selected template), fig. 4. By altering the input to fit the
template, Gonzales’s system has automatically generated by the computer3 a
page4 from the inputted content.5
Appellant contends that Gonzales discloses a general web page
publishing system and method for publishing, but does not disclose a
storytelling book or blank story book screens as claimed. App. Br. 11-12,
20-21; Reply Br. 5.
Regarding a story telling book, even assuming, arguendo, that the
recitation in the preamble of a “storytelling book” is entitled to patentable
weight, Appellant’s assertion is unconvincing because the Examiner did not
rely upon Gonzales as disclosing a storytelling book. Ans. 5 (“What
Gonzales fails to teach is where the published book is a story book”).
Rather, the Examiner relied upon a combination of the references for
disclosure of a storytelling book. See Ans. 5-9. Appellant’s contention is
unpersuasive both because it does not address the rejection as articulated,
and because it is an individual attack upon the reference (Gonzales). See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller,

3 Gonzales’s system is computer implemented. Gonzales, para. [0015]; fig.
1.
4 “Page,” as used in Appellant’s disclosure, refers to both a printed page and
matter to be printed. Spec. 3:4-5; see also Spec. 2:10, and 3:9 (referring to
the software producing a page); fig. 1.
5 Because the rejection relies upon Gonzales for disclosing automatically
generating as claimed, we need not address Appellant’s contention that
Clements operates in a WYSIWYG manner and thus does not disclose
automatically generating as claimed. See App. Br. 25; Reply Br. 6.
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642 F.2d 413, 425 (CCPA 1981) (one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references)).
Regarding blank story book screens, the Examiner interprets, and we
agree, that the content of the input is not functionally related to the substrate
and therefore is nonfunctional descriptive material so that a blank input
screen corresponds to a blank story book screen as claimed. See Ans. 23-24;
see also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Based upon this
interpretation, the Examiner found that Gonzales’s input screens correspond
to blank story screens as claimed. Ans. 3, 22-23. Appellant’s naked
assertion that Gonzales does not disclose a blank story book screen,
unsupported by a cogent explanation or evidence, fails to point out the error
in this finding. Contra. App. Br. 12, 19, 20-21; Reply Br. 5-6.
Appellant contends that claim 21 calls for automatically generating
indicia on the title page and the first and second story pages indicating how
to assemble the second story page in diametric contraposition to the first
story page, and argues that with regard to this limitation, the Examiner
mistakenly interpreted the computer program as the substrate, when in fact,
the pages are the substrate. Reply Br. 8. Further, according to Appellant,
this indicia (the assembly instructions) is printed matter that is functionally
related to the substrate (the pages). Reply Br. 7-9. Specifically, Appellant
contends
each indicia bear a direct relationship to other indicia appearing
on other pages so as to orient the first and second story pages in
diametric contraposition. Likewise, the substrate depends on
the indicia, without which assembly of the pages of the
storytelling book would not be in diametric contraposition.
Said another way, the desired result of a storytelling book
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whose pages are assembled in diametric contraposition would
not be achieved without the indicia.
Reply Br. 9.
For the reasons that follow, this line of argument is unpersuasive.
First, claim 21 calls for indicia regarding assembly to be on the title
page and first and second story book pages. Thus, some portion of the
indicia is on the title page rather than on the first and second story pages, yet
the indicia permits the second story page to be assembled in diametric
contraposition. The significance is that the entire indicia need not be on the
page being assembled, undermining Appellant’s assertion that the indicia
must be on the page being assembled.
Second, contrary to Appellant’s assertion, the pages may be
assembled in diametric contraposition without the indicia. The Specification
does not state that the indicia are necessary for assembly; rather, the
Specification states that the generated pages “may include” indicia
indicating the sequence and orientation of the first and second set of pages.
Spec. para. 2:7-9. Such disclosure indicates that the instructional indicia is
optional, and therefore the pages may be assembled without the indicia.
Also supporting this interpretation, claim 16 calls for pages to be oriented in
diametric contraposition, but does not call for indicia indicating how to so
orient the pages, demonstrating that instructional indicia are not necessary
for assembly in the claimed orientation.
Appellant also cites Gulack in connection with whether printed matter
is “functionally related to the substrate.” See Reply Br. 8 (citing In re
Gulack, 703 F.2d 1381 (Fed. Cir. 1983)). However, in Gulack, the court

6 Though claim 1 is not before us on review, it is part of Appellant’s original
disclosure.
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held there was a functional relationship between a particular sequence of
digits (descriptive material) displayed on the outside surface of a band (a
substrate) because the digits were related to the band in two ways: “(1) the
band supports the digits; and (2) there is an endless sequence of digits-each
digit residing in a unique position with respect to every other digit in an
endless loop. Thus, the digits exploit the endless nature of the band.” In re
Gulack, 703 F.2d at 1386-1387.
While Appellant’s substrate (title page and the first and second story
pages) supports the indicia by virtue of the indicia being printed on the
substrate, this is true of any substrate having indicia printed on it, and this
fact alone is insufficient to demonstrate a new and unobvious functional
relationship between the printed matter and the substrate under Gulack. We
fail to see how the indicia of claim 21 exploit Appellant’s substrate. As
explained supra, the instructions need not be on the substrate in order for the
pages to be placed in diametric contraposition as claimed. For example, a
user may be able to assemble the pages without the indicia (perhaps from
prior experience), or the indicia might be printed on a substrate other than
the title page and first and second story pages (e.g., a separate instructional
page).
Here the title page and first and second story pages do not depend on
the indicia to achieve the desired result of assembling the pages in diametric
contraposition, while in contrast, “[i]n Gulack, the printed matter would not
achieve its educational purposes without the band, and the band without the
printed matter would similarly be unable to produce the desired result.” In
re Ngai, 367 F.3d at 1339 (distinguishing the functional relationship in
Gulack from the nonfunctional relationship between a kit and its instructions
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where “the printed matter [instructions] in no way depends on the kit, and
the kit does not depend on the printed matter.”). Therefore, the claimed
indicia is not functionally related to the substrate and thus will not
distinguish the invention from the prior art in terms of patentability. See In
re Ngai, 367 F.3d at 1339.7
Therefore, Appellant’s argument that the proposed combination fails
to disclose all the limitations of claim 21 is unpersuasive.
2) Nonanalogous art
Appellant argues that Gonzales is nonanalogous art for two reasons:
one, because Gonzales discloses, “a method for web publishing and not book
publishing,” and two, because Gonzales is a complex system, difficult for a
student to use. App Br. 28.
First, Appellant’s characterization that Gonzales is a method for web
publishing unfairly narrows the disclosure of the reference. While
Gonzales’s system is particularly suited for management of content that may
be published on a web site, the system may be employed for the publishing
of hard copy material, such as a brochure, magazine, or print on demand
marketing and business communications. Gonzales, paras. [0003], [0032],
[0117]; Ans. 5, 10; see also App. Br. 19 (acknowledging Gonzales discloses
publishing of hard copy material). Further, the Specification does not
provide a lexicographical definition of “book,” which is commonly

7 Given this claim construction, we need not further address Appellant’s
arguments with regard to indicia as disclosed by Scocca, and Clements. See
App. Br. 23-26. Further, even if the Examiner mistakenly referred to the
computer program as the substrate instead of the pages, the Examiner’s
conclusion that the indicia is nonfunctional descriptive material is correct.
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understood to mean a written document.8 Therefore, Gonzales, which
addresses written documents like brochures and magazines, would be
relevant to a person of ordinary skill in the art considering a problem related
to book publishing. See App. Br. 29 (characterizing the claimed subject
matter as directed to book publishing); Spec. 2:2-7; see also In re Icon
Health & Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (“‘A reference
is reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem.’” “In other words, ‘familiar items may have
obvious uses beyond their primary purposes.”’)(internal citations omitted).
Second, Appellant’s contention that Gonzales is complex and difficult
for a student to use is not commensurate in scope with claim 21, which does
not contain a limitation regarding use by a student or ease of use generally.
More importantly, as the Examiner correctly points out, the proper inquiry
regarding whether a reference is analogous art is whether that reference is in
the same field of endeavor or reasonably pertinent, not whether the reference
is difficult to use. See Ans. 26-27; see also In re Kahn, 441 F.3d 977, 986-
87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.
1992)) (“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.”)

8 “Book: a written document,” n., Oxford English Dictionary (1989)
available at www.OED.com, last accessed Nov. 9, 2012.

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Therefore, Appellant’s contention that Gonzales is not analogous art is
unpersuasive.
3) Change in Principle of Operation
According to Appellant, the proposed modification would change the
operating principle of Gonzales in two respects. App. Br. 29-30. First,
pagination (how information and content appears and is arranged in a printed
book page) is critical to book publishing while in contrast, web page
publishing, such as in Gonzales, is unconcerned with pagination. Id.
Second, such modification to automatically generate pages violates
Gonzales’s “what you see is what you get” functionality. Id.
Appellant’s contentions are based upon the characterizations that
Gonzales is only concerned with web publishing and operates in a
WYSIWYG manner. However, as detailed, supra, Gonzales discloses
publishing written documents so that no change in the principle of
Gonzales’s method of operation is needed, and Gonzales discloses
automatically generating pages as claimed. Consequently, Appellant’s
argument is unconvincing.
4) Teaching Away
Appellant argues that Clements’ disclosure of using one-sided
insertion pages would have led a person of ordinary skill in the art in the
divergent direction of printing on one side of a sheet of paper, and therefore
teaches away from the use of two-sided printing as claimed. App. Br. 30-31;
Reply Br. 7.
Clements discloses that insertion pages are preferably one-sided, and
is silent regarding the use of two-sided printing. Clements, col. 6, ll. 24-26.
A disclosure that one-sided printing is preferred implies that two-sided
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printing is possible, but not preferred. Such disclosure does not teach away
from utilization of two-sided printing. See In re Beattie, 974 F.2d 1309,
1312-13 (Fed. Cir. 1992) (holding that the disclosure of a preferred
alternative did not obliterate and teach away from a combination utilizing
the non-preferred alternative; rather, the alternatives may co-exist); see also
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed in the '198
application.”). In view of this, Appellant’s argument is unconvincing.
5) Rationale
Appellant argues that the Examiner has not provided a sufficient
rationale for the proposed combination. App. Br. 31-34. Specifically,
Appellant contends that the rationale provided by the Examiner amounts to
conclusory statements, and does not “explain why one of ordinary skill in
the art at the time of the invention would have a reason to combine this
group of WYSIWYG-type disclosures to create” the claimed subject matter.
App. Br. 32-33 (quotation at 33).9
This argument, similar to previous arguments, is premised on the
characterization that Gonzales operates in a WYSIWYG manner. As
explained in the first argument, supra, such characterization is inaccurate.

9 Appellant also contends that the rationale provided is not found within any
of the references and that Clements teaches away from the proposed
combination. App. Br. 34. The rationale need not be found within the
references. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(Rejecting the rigid requirement of a teaching, suggestion or motivation to
combine known elements in order to show obviousness). The teaching away
argument has been previously addressed.
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Appellant’s assertion that the Examiner’s rationale is conclusory does
not directly address each of the Examiner’s reasons for the proposed
combination. Given this, Appellant’s assertion that the rationale is
conclusory is itself a conclusory assertion, unsupported by a cogent
explanation of how such rationale is in error.
Regarding combining Scocca and Gonzales, the Examiner concluded
that:
it would have been obvious to one of ordinary skill in the art, at
the time the invention was made, to have adapted the publishing
templates of Gonzales to include the title and author
information on the title page; wherein the title page, and first
and second story pages include one or more indicia for
indicating how to assemble the second story page, as taught in
Scocca; in order to assist an amateur author in publishing a
professional looking storybook; and to adapt the printing
system and method of Gonzales to allow a user to print the first
story page and second story page for binding, taught by Scocca,
in order to allow an amateur publisher to print and bind "proof"
or "draft" copies of a storybook themselves, without requiring
outside assistance or additional postage [Claims 21 & 26].
Ans. 6.
The indicia for assembly, and title and author information are
nonfunctional descriptive material and therefore the modification to include
this information does not require a rationale. Regarding the modification to
allow a user to print pages for binding, Gonzales discloses a system that
permits documents to be formatted from templates and printed. See
Gonzales, paras. [0003], [0032], [0099], [0117]; Ans. 3-5, 8, 10. Scocca’s
storybook publishing kit must be mailed in for binding. Scocca, col. 1, ll. 5-
8; Ans. 5, 11. In light of this, the Examiner’s conclusion that a person of
ordinary skill would recognize that such modification has the benefit of
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permitting “an amateur publisher to print and bind ‘proof’ or ‘draft’ copies
of a storybook themselves, without requiring outside assistance or additional
postage” is reasonable. See Ans. 6.
Regarding combining Gonzales, Scocca and Clements, the Examiner
concluded that:
it would have been obvious to one of ordinary skill in the art, at
the time the invention was made, to have used the templates
taught by Gonzales to produce the storytelling book having
diametrically opposed story pages, having sets of pages with
identical illustrations but with one set omitting the narrative, as
taught by Clements '172, in light of the teachings of Scocca, in
order to easily allow a user to specify, preview, and remotely
produce the storybook document in volume [Claims 21 & 26].
Ans. 7.
Clements discloses a “storytelling book invention wherein the facing
book pages are ordered in diametric contraposition.” App. Br. 13; see also
Clements, col. 6, ll. 54-57; fig. 5; Ans. 7. Gonzales discloses that content is
inputted to the system and then the user may display the information in the
layout of the selected template. See e.g., Gonzales, para. [0099] (module
312 formats the article in accordance with a template), fig. 3A; para. [0194]
(the content management application displays the input in the layout of the
selected template), fig. 4. A person of ordinary skill in the art would
recognize that further modification of the Gonzales and Scocca combination
so that the templates are story pages in diametrical contraposition as taught
by Clements would allow producing such storybooks in volume.
The Examiner further reasoned that such a modification could be seen
as automation of the production of Clements’s storytelling book. Office
Action dated Mar. 4, 2009, at 10. Appellant contends that this is not the case
because Clements utilizes insertion pages or page holders and one-sided
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pages while the claimed subject matter does not. App. Br. 25. In other
words, Appellant asserts that the change from one to two-sided printing so
that page holders are not required is a nonobvious distinction between the
claimed subject matter and the automation of the production of Clements’s
storytelling book.
Generally, using automation for manually-operated methods is
commonplace and uses the common sense of an ordinarily skilled artisan.
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007).10 Appellant presents no evidence that the modification at issue was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” See Leapfrog. at 1162;
see also App. Br. passim; Reply Br. passim. Nor does Appellant’s
disclosure state that the claimed system produces unexpected results. Spec.
passim. Therefore, the modification is obvious because it is the product of
ordinary skill and common sense and not innovation. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007).
Appellant also mentions the rationale for the addition of copyright
information. App. Br. 32. Such information is nonfunctional descriptive
material that cannot serve to patentably distinguish the claimed subject
matter over the prior art. Therefore, analysis of this rationale is not required.
Appellant argues that the Examiner has used impermissible hindsight
because the proposed combination includes non-analogous art, the proposed
combination requires a change in principle of operation, or the cited
references do not give any reasons for the proposed combination. App. Br.

10 Notably, Clements’s process involves some automation, such as
generating a corresponding insertion page utilizing a graphical computer
program. Col. 6, ll. 27-32.
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18, 29, 30, and 34. We have addressed supra the non-analogous art
argument and asserted change in principle of operation. As for reasons
within the references for the proposed combination, there is no requirement
that the references contain an explicit reason for making the proposed
combination. Thus, we are not persuaded impermissible hindsight was
required for the Examiner’s proposed combination.
Appellant has not cogently explained how the Examiner’s reasonable
rationale is insufficient. As such, we sustain the rejection of claim 21 and
claims 22-24 and 26-29 fall with claim 21.

Claims 31-34 over Gonzales, Scocca, Clements, Schubert, and Schach
Appellant presents a single argument for claims 31, 32, and 34 and a
separate argument for claim 33. App. Br. 11-34; Reply Br. 4-10. Therefore,
we address independent claim 31 as representative of claims 32 and 34 and
we separately address claim 33. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 31 is directed to a kit for producing a storytelling book that
includes “a front cover that houses the printed cover page and binds with the
printed title page, the first story page, the second story page, and a back
cover.”
The Examiner concluded that it would have been obvious to further
modify the Gonzales, Scocca, Clements, and Schubert combination so that
the kit includes a front and back cover as taught by Schach, “in order to
provide specialized, more durable paper to use for the cover of a storybook.”
Ans. 10.
Appellant argues that, in contrast to Examiner’s finding, Schach does
not teach a front cover that houses a printed cover page or binds with a
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printed title page because Schach does not include a printed cover page and
a printed title page. App. Br. 26-27. As the Examiner correctly points out,
the claimed printing is nonfunctional descriptive material and cannot serve
to patentably distinguish the claimed subject matter. See Ans. 26. Further,
the proposed combination does not rely upon Schach for the printed cover
and title pages. See Ans. 4, 5-6.
Similarly, Appellant argues that Schach does not disclose indicia as
claimed. App. Br. 27; Reply Br. 9. As explained, supra, such indicia is not
functionally related to the substrate and thus cannot serve to patentably
distinguish the claimed subject matter. Further, Appellant’s argument is
nonresponsive because the proposed combination does not rely upon Schach
for assembly indicia. See Ans. 5-6.
Appellant also repeats the arguments for claim 21, but does not
identify a distinction between claim 31 and claim 21 that alters our analysis
of the arguments analyzed with regard to claim 21, supra. App. Br. 11-34;
Reply Br. 4-10. Thus, those arguments are unconvincing here as well.
With regard to claim 33, Appellant argues that Scocca does not
disclose page numbers as claimed. App. Br. 24. Here again, Appellant
seeks to patentably distinguish the claimed subject matter based upon
nonfunctional descriptive material.
Consequently, we affirm the rejection of claims 31-34.

DECISION
We affirm the Examiner’s decision to reject claims 21-24, 26-29, and
31-34.
Appeal 2010-009514
Application 10/801,401

19
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Klh