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Ex parte Smith: Obviousness at the USPTO in mechanical engineering
July 18, 2007

In another post-KSR opinion designated precedential today, the Board of Patent Appeals and Interferences affirmed an Examiner's final rejection of an application under 35 U.S.C. §§ 102 and 103. The claims "were combinations which only unite old elements with no change in their respective functions and which yield predictable results," and were thus found to be obvious post-KSR.

More details of Ex parte Smith after the jump.

Appellant's claims were directed towards a pocket insert for use with a bound book. The following claims (along with another independent claim, claim 35) were recited by the Board as representative:

1. A book comprising multiple pages and a pocket insert bound along a binding, wherein the pocket insert comprises:
(a) a base sheet of paper material having a length and width comparable to the length and width of a book page, the base sheet comprising a binding edge bound to the binding, the base sheet being one ply and having a planar first surface and a planar second surface; and
(b) a pocket sheet of paper material being one ply, the pocket sheet having a planar inner surface, a planar outer surface, and a perimeter defined by an attached edge section on the inner surface and a free edge section on the inner surface, at least a portion of the attached edge section being one of chemically bonded, fused or glued to the first surface of the base sheet to form continuous two ply seams defining a closed pocket and the free edge being unattached to the base sheet to form a pocket opening along the free edge section between the first surface and the inner surface of the pocket sheet, wherein the base sheet and the pocket sheet are arranged such that the pocket opening faces the binding.10. The book of claim 9 [which depends ultimately from claim 1], wherein the base sheet and the pocket sheet are further adhered to one another along a strip parallel to the third and fourth edges of the sheets, so as to separate two pockets formed between the sheets.

There were two obviousness rejections before the Board. The Examiner first rejected claims 1-9, 11-13, 16-18 and 32-34 as obvious under § 103 over U.S. Patent No. 5,540,513 ("Wyant") in view of U.S. Patent No. 1,495,953 ("Dick"). According to the Board, the first obviousness rejection "turns on whether it would have been obvious to glue two separate sheets to form a continuous two-ply seam, as taught by Dick, rather than folding one sheet to create a seam along the folded edge, as taught by Wyant". The Board found that Wyant teaches each of the limitations of claim 1 except for the recitation "continuous two ply seams" and that Dick teaches a pocket with a continuous two ply seam. The Board relied on the following findings in concluding that it would have been obvious to modify the pocket taught by Wyant to include the continuous two-ply seam taught by Dick:

(1) each of the claimed elements is found within the scope and content of the prior art; (2) one of ordinary skill in the art could have combined the elements as claimed by methods known at the time the invention was made; and (3) one of ordinary skill in the art would have recognized at the time the invention was made that the capabilities or functions of the combination were predictable. Furthermore, neither Appellant's Specification nor Appellant's arguments present any evidence that cutting the folded edge of Wyant and gluing the resulting separate pocket sheet and base sheet along the cut edge to form a continuous two-ply seam as taught by Dick was uniquely challenging or difficult for one of ordinary skill in the art.

The Board further noted that "the dispute claim limitation of 'continuous two-ply seams' and the function it performs—to create a pocket—are identical between the claimed limitation and the prior art." The Board rejected Appellant's argument that Wyant and Dick taught away from each other, noting that where the prior art does not specifically recite the capabilities or the function of a particular item, that that does not constitute teaching away from use of the particular item. As a result, these claims were obvious post-KSR.

The Examiner's second rejection concerned the remaining claims (including claim 10), rejecting them as obvious over Wyant in view of Dick, and further in view of U.S. Patent No. 4,965,948 ("Ruebens"). The main issue according to the Board in the second rejection concerned "whether it would have been obvious to improve a pocket insert by creating two pockets from a single pocket using an additional line of adhesive." The Board noted that the elements of Wyant, Dick and Ruebens, when combined by the Examiner, perform the same function as they do in the prior art, and thus the combination yields predictable results. Further, one of ordinary skill in the art would have been able to combine the Wyant and Dick combination pocket of the first rejection with the adhesive strip taught by Ruebens using methods which were known to one of ordinary skill in the art at the time of the invention. Therefore, these claims were also obvious post-KSR.

In its analysis, the Board did note, citing the Federal Circuit's recent Leapfrog decision, that if there was evidence that making the combination was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art," the outcome might have been different. As a result, it appears that in many mechanical cases, secondary evidence of nonobviousness may be necessary in order to avoid obviousness rejections, given that frequently mechanical inventions are combinations of preexisting technology.

To read the full decision in Ex parte Smith, click here.

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