Ex parte Wright

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, Board of Patent Appeals
and Interferences

Eoard of Patent Appeals
and Interferences

Judicially
Informative Affirmed
Cpinion Opinion

The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte TED EUGENE WRIGHT

Appeal No. 2006-0003 MAILED

Application 09/499,069 - . APR 0.6 2006

US. PATENT AND TRADEMARK OFFICE
ON BRIEF BOARD OF PATENT APPEALS
AND INTERFERENCES

—=

Before OWENS, WALTZ, and KRATZ, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal from the primary examiner’s
non-final rejection of claims 1 through 5, 7, and 11 through 21.
The only other claim pending in this application is claim 6,
which has been objected to by the examiner as depending on a
rejected claim, but has been indicated as allowable if rewritten
in independent form including all of the limitations of the base
claim and any intervening claims (Answer, page 2, 4I(3), and page
8). Although the rejection appealed from was a non-final action

(mailed June 4, 2004), we have jurisdiction since the claims have

been twice presented 	and rejected. 	See 35 U.S.C. 5 	134; Ex parte
Lemoine, 46 USPQ2d 	1420, 1422-23 	(Bd. Pat. App. 	& 	Int. 1998).
According to appellant, the invention is directed to a
single-sheet registration form and key packet 	intended for use in
hotels, motels, and other such businesses in which 	customers are
registered and provided with 	keys, where the clerk separates the
registration form from the key packet along a line of
perforations, and then assembles the key packet 	in two steps by
folding along two lines of perforations, inserting one or more
room keys into slots dye-cut into the key packet, and handing the
assembled key packet 	to the customer 	(Brief, page 	2) . l
Representative independent claims 1 and 	11 are reproduced below:
1. A 	rectangular, single-sheet registration form and
key packet comprising:
a registration form;
an unfolded 	key packet separated from the registration
form by 	a line of perforations, the unfolded 	key packet
including at most 	two lines of perforations that allow the
unfolded 	key packet 	to be quickly and accurately folded into
a complete key packet 	in two or fewer steps; and
one or more 	die-cut slots in the unfolded 	key packet
which 	serve as a slot or slots to hold a number of keys
in the complete key packet.
11. A 	single-sheet registration form and 	key packet
comprising:
a single sheet dimensioned to feed through a
commercially available computer printer, the single sheet
including
a registration form,
an unfolded 	key packet separated 	[sic, separating]
the registration form by a line of perforations, the
unfolded key packet 	including at most 	two lines of
'unless otherwise noted, we refer to and cite from the
Supplemental Brief on Appeal dated Oct. 7, 2004.

Appeal No. 	2006-0003
Application No. 	09/499,069
perforations that allow the unfolded key packet to be
quickly and accurately folded into a complete key
packet 	in two or fewer steps, and
one or more 	die-cut slots in the unfolded key
packet which 	serve as a slot or slots to hold a number
of 	keys in the complete key packet.
The examiner has relied upon the following evidence of
obviousness:
Thompson 	3,655,119 	Apr. 	11, 1972
Crowell 	4,592,573 	Jun. 03, 1986
Skelton 	4,850,611 	Jul. 25, 1989
Claims 1-5 and 7 stand rejected under 	35 U. S.C. 5 	103 (a) as
unpatentable over Thompson 	in view of Skelton 	(Answer, page 	3).
Claims 11-21 stand rejected under 35 U.S.C. 5 	103(a) as
unpatentable over Thompson 	in view of Skelton and Crowell
(Answer, page 	5) .2
Based on the totality of the record, including due
consideration of appellant's 	Brief dated March 	11, 2004, the
2 ~ h eexaminer, in both the Answer and the non-final
rejection mailed 	June 4, 2004, lists "claims 11-15" as subject to
this ground of rejection. 	However, since appellant recognizes
that the examiner intended to reject claims 11-21 and argues
these claims as rejected 	(Brief, page 2, and page 	4, first
paragraph), we determine that appellant had adequate notice of
this rejection. 	Furthermore, the examiner recognizes that claims
11-21 are rejected and sets forth a separate discussion of each
claim 	(Answer, pages 2 and 	5-8; Office action mailed 	June 4,
2004, pages 	5-7). 	Therefore we 	consider this error harmless.
For purposes of this appeal, we 	consider this rejection to
include claims 11-21.

Appeal No. 	2006-0003
Application No. 	09/499,069
Supplemental Brief dated Oct. 7, 2004, the Declarations and
Exhibits, as well as the Answer and Office action dated June 4,
2004, we 	affirm both 	rejections on appeal essentially for the
reasons set forth in the Answer and those reasons set forth
below.
OPINION
The examiner finds that Thompson discloses a ticket envelope
(10) comprising a registration form 	(26), an unfolded packet
(combination of 22 and 24) separated from the registration form
by a score line 	(40), where the unfolded packet 	includes at most
two score lines 	(30 and 	36) that allow the unfolded packet to be
quickly and accurately folded into a complete packet in two or
fewer steps, and a die-cut 	slot.(42) in the unfolded packet which
is capable of holding any number of items 	(Answer, page 3). 	Thus
the examiner finds that Thompson discloses all the claim
limitations except for the score lines being perforations as
required by 	the claims on appeal 	(Answer, page 	4). 	Therefore the
examiner applies Skelton for its disclosure of a similar foldable
envelope to that of Thompson, where the plurality of panels are
separated from each other by a perforated, embossed or scored
line, with 	Skelton further teaching that scores and perforations
are equivalent structures known in the art 	for folding, with

Appeal No. 	2006-0003
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later possibilities of severing and separation 	(id.). 	From these
findings, the examiner concludes that 	it would have been obvious
to one of ordinary skill in this art at the time of appellant's
invention to use alternate creasing methods in the ticket
envelope of Thompson, i.e., to substitute lines of perforations,
as taught by 	Skelton, for the score lines disclosed by Thompson
i d . . 	We agree.
Implicit in our review of the examiner's 	obviousness
analysis is that the claim must 	first have been 	correctly
construed to define the 	scope and meaning of any contested
limitations. 	See Gechter v . 	Davidson, 	116 F.3d 	1454, 1457, 1460
n.3, 	43 USPQ2d 	1030, 1032, 1035 n.3 	(Fed. Cir. 	1997). 	During
examination proceedings, claims are given their broadest
reasonable interpretation as the terms are ordinarily used,
consistent with 	the specification. 	See In 	r e Morris, 	127 F.3d
1048, 1054, 44 USPQ2d 	1023, 1027 	(Fed. Cir. 	1997); 	In 	re Graves,
69 F.3d 	1147, 1152, 36 USPQ2d 	1697, 1701 	(Fed. Cir. 	1995). 	With
regard to the language used in claim 1 on appeal, we 	construe the
claim as including at least3 a rectangular, single-sheet blank
3 ~ o t ethe use of the transitional term "comprising" which
opens the claim to additional elements. 	See Genentech Inc. 	v .
Chiron Corp., 	112 F.3d 495, 501, 42 USPQ2d 1608, 1613 	(Fed. Cir.
1997).

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where one portion of the blank 	is designated a 	"registration
form," and that portion 	is separated from another portion of the
blank 	(designated the "key packet") 	by 	a line of perforations.
We 	further construe this claim as having this other portion of
the blank including at most two lines of perforations, with the
capability of being 	folded in two or fewer steps, and having one
or more die-cut slots which are capable of serving as a slot to
hold a number of 	keys. 	It is clear that the claim is directed to
the "unfolded" product which merely has the 	capability of being
folded to form a complete key packet 	and registration form, as
disclosed and exemplified in appellant's 	Figure 2 	(see claim 1 on
appeal, line 3, and the specification, page 	5, 11. 	9-26) .
Appellant argues that the ticket envelope disclosed by
Thompson is "non-rectangular" while claim 1 on appeal requires a
rectangular single-sheet registration form 	(Brief dated Mar. 	11,
2004, pages 	9-10; Reply Brief, unnumbered page 	14). 	Appellant
further argues that the unfolded 	form of Skelton is not
rectangular 	(Brief, pages 	6-7; Reply Brief, unnumbered page 	14).
These arguments are not persuasive. 	Merely 	changing the shape of
a paper 	form does not render the claimed form patentable, absent
some showing of criticality. 	See In re Dailey, 	357 F.2d 669,
672-73, 149 USPQ 47, 50 	(CCPA 1966). 	Appellant does not allege,

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much 	less show, any criticality for the shape of the registration
form.4 	We note that 	independent claim 11 on appeal does not
require any particular 	shape for the single-sheet registration
form and 	key packet. 	Finally, we note that Skelton was only
relied upon by 	the examiner to show the art-recognized
equivalency of 	score lines and perforations, and thus was not
relied upon to show a rectangular form.
Appellant argues that Thompson fails to teach, mention or
suggest a rectangular, single-sheet entity of any kind, two
components separable via perforations, and a 	key packet including
at most two lines of perforations 	(Brief dated Mar. 	11, 2004,
page 12; Reply Brief, unnumbered page 	16). 	Appellant 	also argues
that Thompson does not disclose a key packet that would be
"sufficiently stiff or properly dimensioned" 	for holding metallic
keys or key cards 	(Reply Brief, unnumbered page 	16).
Appellant's 	arguments are not persuasive. 	As 	admitted by
the examiner, Thompson does not disclose or teach the use of
perforations to 	fold the portions of the single-sheet form
(Answer, page 	4). 	However, the examiner has applied Skelton for
its teaching of alternative or equivalent methods 	of creasing or
4 ~ o	the contrary, appellant's 	specification teaches that the
single-sheet registration form "may have any number of different
shapes" 	(page 8, 11. 10-12) .

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folding the portions of a single-sheet form, namely the
equivalence of score lines and perforations 	(id.) . 	See 	In r e
F o u t , 	675 F.2d 297, 301, 213 USPQ 532, 536 	(CCPA 1982) ("Express
suggestion to substitute one equivalent for another need not be
present to render such substitution obvious"). 	Appellant has not
addressed the combination of prior art references as 	a 	whole but
simply improperly argues the merits of each reference
individually. 	See 	In r e K e l l e r , 	642 F.2d 413, 425, 208 USPQ 871,
881 	(CCPA 1981).
Appellant provides 	no reasoning or support for the
conclusion that the packet 	taught by Thompson would not be
"sufficiently stiff or properly dimensioned" 	for holding metallic
keys or 	key cards 	(Reply Brief, unnumbered page 	16). 	See
In r e Scarborough, 	500 F.2d 560, 566, 182 USPQ 298, 302 	(CCPA
1974)(generally held that attorney argument is not 	sufficient to
replace evidence or expert testimony). 	We note that the slot 42
disclosed by Thompson 	is exemplified as holding a baggage 	claim
ticket 	(52)(see Figure 	I), as well as being 	capable of holding
travel tickets 	(col. 1, 11. 4-6). 	Claim 1 on appeal merely
requires that the "one or more die-cuts" must be 	capable 	of
serving "as a slot 	. . . 	to hold a number of 	keys," and the type of
key is not recited. 	Appellant has not set forth any reasoning

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why the slot 52 of Thompson would not be 	capable of holding a
number of keys, whether the keys are metal or paper. 	See
In 	re Schxeiber, 	128 F.3d 	1473, 1477-78, 44 USPQ2d 	1429, 1431-32
(Fed. Cir. 	1997)(functional language does not confer
patentability if prior art structure has capability of
functioning in the same manner).
Appellant's 	argument that Thompson does not teach, mention
or suggest a rectangular, single-sheet "entity of any kind"
(Brief dated Mar. 	11, 2004, page 	12) is not well 	taken. 	The
"rectangular" 	shape of the form has been discussed above.
Thompson clearly discloses a "single-sheet" form 	(unitary blank
12; see Figure 2). 	Thompson also clearly discloses the
corresponding number of score lines 30, 36 and 	40 	(instead of the
claimed perforations), with 	a unitary blank where the packet 	(for
holding baggage claim tickets or travel tickets) is capable of
being 	folded into a complete packet 	in "two or 	fewer steps" as
required by the claims on appeal 	(see col. 2, 11. 49-59).
For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima 	facie case
of obviousness in view of the reference evidence to Thompson and
Skelton.

Appeal No. 	2006-0003
Application No. 	09/499,069
With 	regard to the rejection of claims 11-21, the examiner
applies Thompson and Skelton as discussed above and in the
Answer, and additionally applies Crowell to show the well known
pre-printing 	of 	information by 	computer printers 	onto foldable
sheets 	(Answer, page 	7). 	From these findings, the examiner
concludes that it would 	have been obvious to one of ordinary
skill in the art at the time of appellant's 	invention to include
pre-printing 	of information on the envelope of Thompson, as
taught by Crowell, before 	folding 	(id.). 	We 	also agree with the
examiner's 	findings of 	fact and conclusion of 	law.
Appellant admits that Crowell teaches imprinting on a card
or sheet before 	assembly but argues that Crowell does not remedy
the deficiencies in Thompson and Skelton 	(Brief dated Mar. 	11,
2004, page 	13). 	Accordingly, we adopt our remarks and reasons
from above and determine 	that the examiner has established a
prima 	facie case of obviousness in view of the reference
evidence.
Appellant presents 	extensive arguments concerning secondary
considerations of non-obviousness, i.e., commercial success,
copying by 	others, attempts to remove patent pending 	labels, and
long-felt need 	(Brief, pages 	4-5; Brief dated Mar. 	11, 2004,
pages 4-9; and the Reply Brief, unnumbered pages 	7-13).

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Accordingly, we 	re-evaluate the evidence for obviousness against
appellant's 	countervailing evidence of non-obviousness. 	See
In 	re 	O e t i k e r , 	977 F.2d 	1443, 1445, 24 USPQ2d 	1443, 1444 	(Fed.
Cir. 1992).
Regarding the Wright 	Declaration under 	37 CFR § 	1.132 dated
July 21, 2003, we 	find no evidence to support appellant's
arguments but only Exhibits 1 through 4 showing the paper
requirements for commercial printing. 	We determine that this
evidence is not relevant to any argument of commercial success.
Appellant apparently relies solely on the Wright 	Declaration
under 37 CFR § 	1.132 dated Nov. 27, 2002, with accompanying
Exhibits A 	through D 	(Reply Brief, unnumbered pages 7-8).
However, this evidence is not persuasive of unobviousness for the
following reasons.
With 	regard to evidence of "commercial success," Declarant
Wright 	states the sales figures for the years 2000, 2001 and the
first five months 	of 2002 	(Declaration, page 	2) . 	However,
"information solely on numbers of units sold is insufficient to
establish commercial success." 	In 	re Baxter 	Travenol 	Labs.,
952 F.2d 388, 392, 21 USPQ2d 	1281, 1285 	(Fed. Cir. 	1991); see
a l s o C a b l e E l e c . 	Prods., 	Inc. 	v. 	Genmark, 	I n c . , 	770 F.2d 	1015,
1026-27, 226 USPQ 	881, 888 	(Fed. Cir. 1985). 	Furthermore,

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Declarant Wright 	states that "I feel that my 	[invention as
claimed] currently enjoys about 99% of the current market."
Declaration, page 	2, underlining added. 	Declarant does not
support this statement or "feeling" with any substantive economic
evidence. 	S e e 	C a b l e E l e c . 	P r o d s . , 	770 F.2d at 	1026, 226 USPQ at
8 8 8 	("Without further economic evidence, for example, it would be
improper to infer that the reported sales represent a substantial
share of any definable market"). 	For example, Exhibit A 	shows
the order forms for two competing businesses 	(Focus Services and
USFI) but 	Declarant has not specified, with 	concrete economic
evidence, their share of the market 	or if other businesses have
any market 	share 	(see the Reply Brief, unnumbered page 11).
Our reviewing court has also frequently held that
. . .for commercial success of a product embodying a
claimed invention to have true relevance to the issue
of nonobviousness, that success must be 	shown to have
in some way been due to the nature of the claimed
invention, as opposed to other economic and commercial
factors unrelated to the technical quality of the
patented 	subject matter. 	Thus, a 	'nexus is required
between 	the merits of the claimed invention and the
evidence offered, if that evidence is to be given
substantial weight enroute to 	[a] conclusion on the
obviousness issue.' 	[Case citations omitted]. 	C a b l e
E l e c . 	P r o d s . , 	I n c . 	v. 	Genmark, 	I n c . , 	770 F.2d at 1026,
226 USPQ at 8 8 8 .

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Application No. 	09/499,069
From our review of the evidence of record, we 	fail to find the
required nexus between 	the merits of the claimed subject matter
and the evidence offered.
With 	regard to Exhibit B, 	the e-mail correspondence merely
states that the term "patent pending" 	on appellant's 	paper 	forms
appears to be 	contrary to the Hilton company policy.
Furthermore, there 	is no evidence that the e-mail sender was
acting in any official capacity. 	Finally, Declarant has not
shown that this alleged attempt to remove "patent pending" 	from
appellant's 	paper 	forms constitutes evidence of nonobviousness.
With 	regard to Exhibit C, we note that this Exhibit merely
shows prior 	art forms 	(Declaration, pages 3-4, ¶ 5 ) . 	Finally,
Exhibit 	D merely 	shows an embodiment of the claimed 	invention
(Declaration, page 	4).
Contrary to appellant's 	arguments, we 	find no 	substantive
evidence in this Declaration of "copying" and 	"long-felt need"
(Reply Brief, unnumbered page 7). 	Declarant's 	statement that "I
believe that Hilton Hotels Corporation took this step" in order
to bid out production of the claimed form to other printers
(Declaration, page 	3) is mere 	speculation and 	is unsupported by
evidence. 	Furthermore, even assuming arguendo that Declarant's
statement is correct, there is no substantive evidence of product

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Application No. 	09/499,069
copying. 	S e e 	C a b l e E l e c . 	Prods., 	Inc. 	v. 	G e n m a r k , 	I n c . , 	770 F.2d
at 1026-27, 226 USPQ at 	888-889.
Based on the totality of the record, including due
consideration of appellant's 	evidence and arguments, we determine
that the preponderance of evidence weighs most heavily in favor
of obviousness within the meaning of section 103(a). 	Therefore
we affirm both 	rejections on appeal.
The decision of the examiner is affirmed.
No time period 	for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
5 	1.136 (a)(1)(iv)(2004).
AFFIRMED
)
Administrative 	Patent Judge 	)
1
L C . - - 	j
THOMAS A. WALTZ 	) 	BOARD OF PATENT
Administrative 	Patent Judge 	) 	APPEALS AND
) 	INTERFERENCES
1
1
PETER F. KRATZ 	1
Administrative 	Patent Judge 	)
0	-

Appeal No. 2006-0003
Application No. 09/499,069

OLYMPIC PATENT WORKS PLLC
P.O. BOX 4277
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