Ex Parte Richards

Patent Trial and Appeal Board

Aug 14, 2013

12069674 (P.T.A.B. Aug. 14, 2013)

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 Claim 1 is withdrawn.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
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Application 12/069,674

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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
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Application 12/069,674

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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).
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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” + 0.9”). 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).
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Application 12/069,674

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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.

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Application 12/069,674

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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

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