Ex Parte RichardsDownload PDFPatent Trial and Appeal BoardAug 14, 201312069674 (P.T.A.B. Aug. 14, 2013) Copy Citation 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. 12/069,674 02/12/2008 John Sheridan Richards 6003.1038DIV 7126 23280 7590 08/14/2013 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER HARMON, CHRISTOPHER R ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 08/14/2013 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 JOHN SHERIDAN RICHARDS ____________ Appeal 2011-009179 Application 12/069,674 Technology Center 3700 ____________ Before JAMES P. CALVE, JEREMY M. PLENZLER, and BEVERLY M. BUNTING, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the rejection of claims 2-7. App. Br. 2. Claim 1 is withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-009179 Application 12/069,674 2 CLAIMED SUBJECT MATTER Claims 2 and 7 are independent. Claim 2 is reproduced below: Claim 2: A method for forming a Berliner format newspaper comprising the steps of: folding a newspaper at a cross fold, the cross fold being 33% to 45% or 55% to 67% of a height of the newspaper; and inserting the newspaper into a pocket. REJECTION Claims 2-7 are rejected under 35 U.S.C. § 102(b) as anticipated by, or alternatively, are rejected under § 103(a) as being unpatentable over, Dufour (US 6,733,431 B2; iss. May 11, 2004). ANALYSIS Appellant argues claims 2-6 as a group and separately argues claim 7. See Reply Br. 1-3. We select claim 2 as representative and address Appellant’s arguments for claim 7. See 37 C.F.R. §41.37(c)(1)(vii) (2011). Claims 2-6 The Examiner found that Dufour discloses a broadsheet newspaper printing press that modifies placement of the fold with respect to the height of the newspaper to create laps of approximately 10mm to 25mm to accept inserts from an inserter and insert the folded papers into pockets of a pocket conveyor 12. Ans. 4. The Examiner found that the disclosed laps are a direct teaching of a cross fold placed off-center in the newspaper and while this offset does not amount to the claimed ratio, it would have been obvious to adjust the spacing of the folding mechanism to create a lap at the claimed ratio by placing a fold line at 8 to 10.5 inches from the edge to accept a number of inserts. Ans. 4. The Examiner found that a Berliner newspaper is Appeal 2011-009179 Application 12/069,674 3 a broadsheet newspaper of 18.5 inches in height and a standard insert is 10.5 inches. Ans. 4-5 (citing Spec., para [0013]); see also Spec. 1, para. [0004]. The Examiner reasoned that a skilled artisan would recognize that in order to provide a known Berliner newspaper with a standard insert, the cross fold would be located to provide a side that is 10.5 inches in height to completely hide the standard insert. The Examiner also found that Dufour’s disclosure of adjusting the location of a cross fold for flexibility for inserts would give insight to a skilled artisan to do this for a standard insert in a Berliner paper resulting in a cross fold ratio that is within the claimed ranges. Ans. 7. The Examiner also determined that a skilled artisan could arrive at a cross fold within the claimed ranges with minimal experimentation using Dufour’s process and teachings to adjust the cross fold location to accept inserts of different sizes including a standard insert. Ans. 4, 7. Appellant argues that Dufour lacks a cross fold in the claimed ranges so there is no anticipation and the Examiner’s finding that slight alterations of the disclosed dimensions can provide a ratio within the claimed range does not meet an anticipation rejection, as these limitations are not shown to be inherent in Dufour. App. Br. 4; Reply Br. 2. We agree and, therefore, do not sustain the rejection of claims 2-6 as anticipated by Dufour. However, the Examiner also rejected claim 2 as unpatentable over Dufour. Ans. 3-5. Regarding the obviousness rejection of claim 2, Appellant argues that creating a 2.5 inch lap does not alter the number of inserts available to the newspaper; therefore the motivation to modify Dufour to accept a number of inserts is improper because the lap in Dufour already permits any number of inserts to be accepted so there is no need to lengthen it. App. Br. 4-5. As a result, Appellant argues that a skilled artisan would not have wanted a larger Appeal 2011-009179 Application 12/069,674 4 lap and there is no reason provided in Dufour for a large lap. App. Br. 5. These arguments are not persuasive of error in the Examiner’s finding that Dufour discloses a range of lap sizes and experiments with different lap sizes to provide for flexible placement of inserts. See col. 1, ll. 48-49 and 65-67; col. 2, l. 61 to col. 3, l. 17; fig. 2. The Examiner reasonably found that a skilled artisan aware of Dufour’s teachings, industry standard Berliner newspapers of 18.5 inches height, and standard inserts of 10.5 inches height, would have been motivated to place a cross fold at 10.5 inches to provide a newspaper side that completely hides the standard insert and the resulting cross fold is within the claimed ranges. Ans. 5-7. Appellant argues that the Examiner miscalculates a lap size of Dufour. App. Br. 5. Appellant also argues that Dufour’s disclosure that inserts can be placed at any location within the section of a half-folded newspaper has nothing to do with lap size. These arguments are not persuasive of error in the Examiner’s findings that a skilled artisan aware of Dufour’s teachings and industry standards would have been motivated to place a cross fold at 10.5 inches to completely hide a standard size insert. The other side of the paper would be 8 inches in height. Appellant has not shown error in these findings or conclusion of obviousness of the Examiner. Appellant discloses that a fold at 10.5 inches on a Berliner format is at 56.8% of the height of the newspaper and a fold at 8 inches is at 43.2% of the newspaper height. Spec. 4, para. [0026]. These values are within the claimed ranges of 33% to 45% and 55% to 67%. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (prima facie obviousness exists when the claimed range and prior art range overlap even slightly or are close enough to be expected to have the same properties). Appeal 2011-009179 Application 12/069,674 5 Appellant also argues that Dufour provides for approximately 10 to 25 mm of a cross fold, which would at most include 30 mm and for Dufour, with a 22 inch (558.8 mm) newspaper, even a 40 mm lap would not meet the claim limitations. Reply Br. 2. Appellant further argues that no larger lap is needed or desired in Dufour so that routine experimentation would not have occurred. App. Br. 5. These arguments do not address the Examiner’s findings and conclusions of obviousness as set forth in the Answer and as discussed supra. The Examiner had a sound basis for finding that Dufour uses different cross folds to provide flexibility for inserts and recognizes cross fold distance as a result effective variable. The Examiner reasonably found that a Berliner newspaper is only defined by its dimensions and is not a different type of newspaper defined by a different folding process than that used in Dufour so that it would have been obvious to use Dufour’s process to form a Berliner newspaper with a cross fold at 8 or 10.5 inches from an edge of the newspaper for a standard 10.5 inch insert. Ans. 4-5, 7. Dufour’s disclosure that typical inserts require a lap amount of approximately 0 to 25 mm (col. 2, ll. 19-20; col. 5, ll. 22-25) does not discourage experimentation with lap sizes outside that range, particularly for a typical industry standard 10.5 inch insert in a Berliner paper.1 We sustain the rejection of claims 2-6. 1 A lap size of 30 mm (1.181 inches) on a Berliner newspaper would have a fold at 0.9 inches from the center (9.25 inches) and produce halves of 8.35 inches (9.25†– 0.9 inches) and 10.15 inches (9.25†+ 0.9â€). A paper half with a height of 8.35 inches is 45% of the height of an 18.5 inch paper and a paper half of 10.15 inches is 54.86 % of a height of a Berliner paper. These values are at or very near end points of the claimed ranges. See Peterson, 315 F.3d at 1329 (prima facie obviousness established by a slight overlap or a prior art range close enough that a skilled artisan would have expected it to have the same properties as the claimed range). Appeal 2011-009179 Application 12/069,674 6 Claim 7 Claim 7 recites a method of forming a Berliner format newspaper by folding a newspaper at a cross fold of approximately 8 inches or 10.5 inches from an edge of the newspaper to create a Berliner newspaper having one side with a height of at least approximately 10.5 inches. Appellant reasserts arguments made for claim 2 and also argues that Dufour does not disclose a Berliner newspaper with one side having a height of approximately 10.5 inches and the other side of approximately 8 inches and there is no reason to provide over a 2 inch lap. App. Br. 6; Reply Br. 3. These arguments are not persuasive for the reasons discussed supra for claim 2 and do not persuade us of error in the Examiner’s findings and conclusions of obviousness. The Examiner reasonably found that a Berliner newspaper is only defined by its dimensions and is not a different type of newspaper defined by a different folding process than that used in Dufour so that it would have been obvious to use Dufour’s process to form a Berliner newspaper with a cross fold at 8 inches or 10.5 inches from an edge of the newspaper for a standard insert. Ans. 4-5, 7; see Spec. 1, para. [0004]. Appellant discloses the invention as a broadsheet newspaper printing press and folder and a preferred embodiment is a broadsheet newspaper in a Berliner format of about 18.5 inches. Spec. 1, para. [0002]; Spec. 2, para. [0013]. Accordingly, we sustain the rejection of claim 7 as unpatentable over Dufour but do not sustain the rejection of claim 7 as anticipated by Dufour. DECISION We AFFIRM the rejection of claims 2-7 as unpatentable over Dufour and REVERSE the rejection of claims 2-7 as anticipated by Dufour. Appeal 2011-009179 Application 12/069,674 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation