Ex parte Smith

PRECEDENTIAL OPINION
Pursuant to the Board of Patent Appeals and Interference’s Standard Operating Procedure 2, the opinion below has
been designated a precedential opinion.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARY SMITH
____________
Appeal 2007-1925
Application 09/391,869
Technology Center 3700
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Decided: June 25, 2007
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Before MICHAEL R. FLEMING, Chief Administrative Patent Judge, and
WILLIAM F. PATE, III, JENNIFER D. BAHR, LINDA E. HORNER, and
DAVID B. WALKER, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL

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STATEMENT OF THE CASE
Mary Smith (“Appellant”) seeks our review under 35 U.S.C. § 134 of the
Examiner’s final rejection of claims 1-21 and 32-36. We have jurisdiction under
35 U.S.C. § 6(b) (2002). We affirm.1
THE INVENTION
Appellant claims a pocket insert for a bound book, which includes at least
one pocket adapted to receive and retain supplemental material that cannot easily
be bound directly to the book binding, such as a diskette or CD-ROM
(Specification 1:3-7). Claims 1, 10, and 35, reproduced below, are representative
of the subject matter on appeal.
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
1 Only those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to make in
the Briefs have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).

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glued to the first surface of the base sheet to form
continuous two ply seams defining a closed pocket and
the free edge section 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.
35. An improved pocket insert for operably passing
through a printer or a copier in sequence with a single
sheet of paper having a given width and a given length,
the improvement comprising:
(a) a base sheet having a single thickness and a
binding edge located at an end of the sheet, the base sheet
having a width equal to the given width and a length
equal to the given length;
(b) a pocket sheet having a single sheet thickness;
(c) an adhesive between the base sheet and the
pocket sheet to bond the base sheet to the pocket sheet to
form a pocket with an opening facing the binding edge,
the pocket insert having a thickness rendering the insert
passable through a copier or printer in sequence with a
sheet of paper having the given width and length, the
thickness of the pocket insert being at its maximum equal
to a combined thickness of the base sheet single

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thickness, the pocket sheet single sheet thickness and the
adhesive.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Dick 	US 1,495,953 	May 27, 1924
Ruebens 	US 4,965,948 	Oct. 30, 1990
Michlin 	US 5,141,252 	Aug. 25, 1992
Wyant 	US 5,540,513 	Jul. 30, 1996
The following rejections are before us for review.
1. Claim 35 is rejected under 35 U.S.C. § 102(b) as anticipated by Michlin.
2. Claims 1-9, 11-13, 16-18, and 32-24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Wyant in view of Dick.
3. Claims 10, 14, 15, 19-21, and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wyant in view of Dick, and further in view of Ruebens.
ANTICIPATION UNDER § 102(b)
The § 102(b) Issue
The anticipation issue before us is whether Appellant has shown that the
Examiner erred in rejecting claim 35 under 35 U.S.C. § 102(b) as anticipated by
Michlin. The anticipation issue turns on whether Michlin expressly or inherently
discloses a pocket insert that has “a thickness rendering the insert passable through
a copier or printer in sequence with a sheet of paper.”

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Findings of Fact Relating to Anticipation
1. 	Michlin discloses a pocketed insert with a front ply having a single
thickness secured to a back ply having a single thickness to form a
pocket (Michlin, col. 2, ll. 37-46, Figs. 1 and 2).
2. 	Michlin discloses that the pocketed insert is “of multi-ply construction
with a back ply, a front ply disposed over the back ply to define a
pocket and at least one insert ply in the pocket” (Michlin, col. 1,
ll. 32-35).
3. 	“In other cases, one or more inserts may be provided within the
pocket and may extend slightly out of the pocket in order to be
manually grasped and removed.” (Michlin, col. 1, ll. 48-51). Thus,
Michlin teaches that one or more insert plies optionally may be
inserted in, but are separate from, the pocket.
4. 	The pocket of Michlin is shown and described as having an opening
facing toward the binding (Michlin, col. 2, ll. 53-55, Figs. 1 and 2).
5. 	Michlin also teaches that the back surface of the back ply can be
preprinted with reply address information and postal indicia so as to
be conveniently mailed (Michlin, col. 3, ll. 15-18). Michlin does not
specify whether the back ply can be preprinted before assembly of the
pocket insert or after assembly into the pocket insert but before
binding into the book (Michlin passim).

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6. 	The Specification discusses that the pocket insert may be
automatically collated along with the pages:
For example, the pages may be collated
automatically as they are copied on a copier. Some
copiers provide a supplemental tray to collate a
supplement page along with the copied pages, i.e.,
a supplemental page onto which no information is
being applied to the page. The pocket insert of this
invention is suitable for such copying
environments, thereby permitting the insert to be
collated automatically with the various pages while
the pages are being photocopied. For this
embodiment, the pocket insert should be
assembled of standard weight paper, and it is
important that the insert is arranged in the collator
tray such that edge 12 (this edge having a single-
sheet thickness) is pushed by the copier roller
during collation.
(Specification 6:31 – 7:10). The Specification thus provides no
detailed description of what thickness is required to render the insert
passable through a copier or printer in sequence with a sheet of paper
other than to say that “the pocket insert should be assembled of
standard weight paper.” Id.
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631,

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2 USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102
begins with a determination of the scope of the claim. We determine the scope of
the claims in patent applications not solely on the basis of the claim language, but
upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed.
Cir. 2004). The properly interpreted claim must then be compared with the prior
art.
“It is well settled that a prior art reference may anticipate when the claim
limitations not expressly found in that reference are nonetheless inherent in it.
Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.” In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
"[A] prima facie case of anticipation [may be] based on inherency." In re
King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986). Once a
prima facie case of anticipation has been established, the burden shifts to the
Appellant to prove that the prior art product does not necessarily or inherently

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possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977) ("Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics of his
claimed product."). See also In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655,
1657-58 (Fed. Cir. 1990).
Analysis of Anticipation Issue
Appellant argues that Michlin does not disclose that the pocket insert of the
invention has “a thickness rendering the insert passable through a copier or printer
in sequence with a sheet of paper” (Substitute Br. 6-8). Appellant asserts that the
teaching of Michlin that “the back surface of the back ply can be preprinted with
reply address information and postal indicia so as to be conveniently mailed,”
(Finding of Fact 5), “does not equate to a disclosure or a suggestion that the pocket
insert itself and as a whole is of a thickness passable through a printer or copier in
sequence with a sheet of paper having the same size as the base sheet.” (Substitute
Br. 6) (emphasis in original).
The Examiner found that “if the pocket sheet and base can be one ply,
wherein the pocket sheet is folded and attached to the base sheet to form the insert
(as stated in Col. 2, lines 40-46), then the insert is capable of being passed through
a printer as a whole.” (Answer 4). There is nothing in the Specification to indicate
that the thickness necessary to render the insert passable through a copier or printer

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is anything more than the inherent result of constructing the insert of standard
materials in accordance with claim 35’s other limitations, which are expressly
disclosed in Michlin (Finding of Fact 6). We thus agree with the Examiner that a
prima facie case of anticipation is established by Michlin. Because the Appellant
presented no evidence to overcome the Examiner’s finding of the inherent ability
of Michlin’s insert to pass through a copier or printer, she failed to meet her burden
to overcome that prima facie case. We therefore find that claim 35 is anticipated
by Michlin.
OBVIOUSNESS
The § 103(a) Issues
There are two obviousness issues before us. The first is whether Appellant
has shown that the Examiner erred in rejecting claims 1-9, 11-13, 16-18, and 32-24
under 35 U.S.C. § 103(a) as unpatentable over Wyant in view of Dick. The first
issue 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 second obviousness issue is whether Appellant has shown that the
Examiner erred in rejecting claims 10, 14, 15, 19-21, and 36 under 35 U.S.C.
§ 103(a) as unpatentable over Wyant in view of Dick, and further in view of
Ruebens. This issue turns on 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.

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Findings of Fact Relating to Obviousness
7. 	Wyant discloses at least one pocket formed between a card and a tab
yielding panel (Wyant, col. 3, ll. 28-29).
8. 	Wyant teaches that the card may be of any convenient size or shape
(Wyant, col. 2, ll. 16-20).
9. 	Wyant also discloses that the indexing member may be formed from
any conventional stationary paper including card stock and paper
stock (Wyant, col. 2, ll. 21-25).
10. 	Wyant teaches that the tab yielding panel can be folded inwardly to
secure the panel to the card with an adhesive along the inside margins
of the tab yielding panel, which results in two-ply seams (Wyant,
col. 2, ll. 49-53).
11. 	In an alternate embodiment, Wyant teaches securing the tab yielding
panel to the card by top and bottom marginal panels which overlap the
tab yielding panel, resulting in three plies along its top and bottom
edges (Wyant, col. 2, ll. 53-61).
12. 	The pocket is shown and described as facing toward the apertures
used to retain the card in a three ring binder (Wyant, col. 2, ll. 53-55,
col. 3, ll. 9-13, Figure 1).
13. 	Any convenient bonding method including adhesive can be used to
secure the tab yielding panel to the card (Wyant, col. 2, ll. 50-53).
14. 	Dick discloses that it has been a common practice to have portfolios in
which leaves are permanently attached to a binder element of the book

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and teaches an arrangement for loose leaf pockets (Dick, p. 1,
ll. 16-25).
15. 	Dick teaches and displays a pocket that is stitched or otherwise
suitably secured to a fly leaf along three of its four edges to define a
closed pocket with an opening along its fourth edge (Dick, p. 1,
ll. 54-60, Fig. 1).
16. 	Dick acknowledges that the pocket may be secured by any suitable
means (Dick, p. 1, l. 90).
17. 	Ruebens describes an improved photo album in which a transparent
cover is attached to three edges of each display page to form one or
more pockets (Ruebens, col. 2, ll. 52-54, col. 3, ll. 40-42, Fig. 1).
18. 	The transparent cover is attached to the display page by lines of
attachment by any convenient means such as various well-known
adhesives (Ruebens, col. 3, ll. 53-55).
19. 	Figure 1 of Ruebens shows that the transparent cover is attached to the
display page by lines of attachment along its upper and lower edges
and also via an additional line of attachment parallel to the upper and
lower edges to separate two pockets formed between the transparent
cover and the display page (Ruebens, Fig. 1, col. 4, ll. 39-46).
20. 	The prior art differs from the disputed claim limitations only in its
failure to explicitly state a pocket insert construction “rendering the
insert passable through a copier or printer in sequence with a sheet of
paper.”

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21. 	Because Wyant discloses that the indexing member may be formed
from any conventional stationary paper (Finding of Fact 9), the two-
ply embodiment of Wyant, or the two-ply seams of Dick combined
with the single pocket arrangement of Wyant, would inherently be
capable of passing through a copier or printer in sequence with a sheet
of paper (Finding of Fact 6).
Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level of
skill in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See
also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82

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USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss,
11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.
John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. 	If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. 	For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after Graham
[that] illustrate this doctrine.” Id. at 1739, 82 USPQ2d at 1395. “In United States
v. Adams, … [t]he Court recognized that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a predictable

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result.” Id. at 1739-40, 82 USPQ2d at 1395. “Sakraida and Anderson’s-Black
Rock are illustrative – a court must ask whether the improvement is more that the
predictable use of prior art elements according to their established function.” Id. at
1740, 82 USPQ2d at 1395.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained, “[o]ften, it will be necessary for a court
to look to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). 	However, “the
analysis need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.

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The Federal Circuit recently concluded that it would have been obvious to
combine (1) a mechanical device for actuating a phonograph to play back sounds
associated with a letter in a word on a puzzle piece with (2) an electronic,
processor-driven device capable of playing the sound associated with a first letter
of a word in a book. Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1161, 82 USPQ2d 1687, 1690-91 (Fed. Cir. 2007) (“[a]ccommodating a prior art
mechanical device that accomplishes [a desired] goal to modern electronics would
have been reasonably obvious to one of ordinary skill in designing children’s
learning devices”). In reaching that conclusion, the Federal Circuit recognized that
“[a]n obviousness determination is not the result of a rigid formula disassociated
from the consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been obvious
where others would not.” 	Id. at 1161, 82 USPQ2d at 1687 (citing KSR, 127 S.Ct.
1727, 1739, 82 USPQ2d 1385, 1395 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.”). 	The Federal Circuit relied in part on the fact that
Leapfrog had presented no evidence that the inclusion of a reader in the combined
device was “uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Id. (citing KSR, 127 S.Ct. at
1740-41, 82 USPQ2d at 1396).

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Analysis of Obviousness Issues
A. Rejection of claims 1-9, 11-13, 16-18, and 32-34 under 35 U.S.C.
§ 103(a) as unpatentable over Wyant in view of Dick.
Appellant separately argues claims 1, 8 and 32. For claim 5, Appellant
repeats the same argument made for claim 1. We will therefore treat claims 2-7, 9,
11-13 and 16-18 as standing or falling with claim 1. Claim 8 will be addressed
separately. Because Appellant repeats the same arguments for claims 32-34, we
will treat claims 33 and 34 as standing or falling with claim 32 	See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991).
Appellant disputes that the prior art teaches “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” as recited in Appellant’s claim 1. 	In particular, Appellant argues
that Dick does not disclose chemical bonding, fused or glued construction
(Substitute Br. 11). Dick teaches that the pocket may be secured by any suitable
means (Finding of Fact 16). Moreover, Wyant teaches that any convenient
bonding method including adhesive can be used to secure the tab yielding panel to
the card (Finding of Fact 13). From these teachings, we find that the combination
of Wyant and Dick would have taught one of ordinary skill in the art to use the
Wyant teaching of bonding method to secure the Dick pocket. Therefore, the prior
art teaches “at least a portion of the attached edge section being one of chemically

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bonded, fused or glued to the first surface of the base sheet” as recited in
Appellant’s claim 1.
Appellant argues that Wyant fails to disclose a pocket nor does it teach
“continuous two-ply seams” as recited in Appellant’s claim 1 (Substitute Br. 9-10).
We find that Wyant discloses embodiments alternately using two-ply (Finding of
Fact 10) and three-ply seams (Finding of Fact 11) to form a pocket. Also, Wyant
discloses a single pocket for each base sheet (Finding of Fact 7). However, Wyant
teaches forming the pocket by folding a single sheet, rather than gluing two
separate sheets together. This results in a pocket insert with two glued, two-ply
seams separated by a folded edge, not a continuous, two-ply seam. Thus, Wyant
teaches all of the limitations set forth in Appellant’s claim 1 except “continuous
two ply seams.” We find that Dick teaches a pocket made with a continuous two-
ply seam. Dick teaches forming a pocket from two single sheets by stitching or
otherwise suitably securing three of the four edges. (Finding of Facts 15 and 16).
Thus, Dick teaches another way of making a pocket. Instead of Wyant’s two-ply
pocket made by folding a single sheet and securing the two opposite edges, Dick
teaches forming a two-ply pocket by securing three edges of two sheets.
Furthermore, Wyant and Dick together teach that a pocket can made by either
method and yield a predictable result.
The question is whether one of ordinary skill in the art starting with Wyant’s
two-ply pocket would have found it obvious at the time the invention was made to
modify Wyant's pocket insert to include a continuous two-ply seam as taught by
Dick for providing a more secure pocket. In considering the teaching of Wyant

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and Dick, we have found that (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 substitution of the continuous, two-ply
seam of Dick for the folded seam of Wyant thus is no more than “the simple
substitution of one known element for another or the mere application of a known
technique to a piece of prior art ready for improvement.” KSR, 127 S.Ct. at 1740,
82 USPQ2d at 1396. Therefore, it would have been obvious at the time the
invention was made to modify Wyant's pocket insert to attach a separate pocket
sheet to a base sheet to form a pocket insert with continuous two-ply seams as
taught by Dick.
This conclusion is consistent with the line of case from the Federal Circuit
and its predecessor court. See, e.g., In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7,
8-9 (CCPA 1975) (holding that the claimed manner in which an electrical contact
was made, i.e. by “metallic wrapping,” that provided no novel or unexpected result
over the metallic connections used in the applied references was an obvious choice
within the skill of the art) (cited with approval in In re Chu, 66 F.3d 292, 299, 36

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USPQ2d 1089, 1094 (Fed. Cir. 1995)). In the present case, the disputed claim
limitation of “continuous two-ply seams” and the function it performs—to create a
pocket—are identical between the claimed invention and the prior art. Thus, the
selection of the continuous two-ply seam of Dick over the folded seam of Wyant
represents an obvious choice within the skill of the art, i.e., a choice between
known viable alternatives.
Appellant argues that Wyant and Dick teach away from each other
(Substitute Br. 14-18). The Examiner believed otherwise, finding that Wyant and
Dick do not teach away from each other, and that it would have been obvious to
one having ordinary skill in the art at the time the invention was made to modify
Wyant's pocket insert with a separate pocket sheet attached to a base sheet to form
a pocket insert as taught by Dick (Answer 5-6).
In particular, Appellant argues that Wyant and Dick teach away from each
other because combining Dick with Wyant would render Wyant inoperable for its
primary purpose—namely providing tabs that selectively can be folded outward of
the edge of the card (Substitute Br. 11). The Examiner correctly found that if the
base sheet and pocket sheet were attached along the perimeter edge as disclosed in
Dick, it would still be possible to fold back the tabs of Wyant near its attached
perimeter edge (Answer 6). Appellant argues that the only way the tabs of Wyant
can be formed is by forming the tab yielding sheet and the base sheet from a single
piece of material to form a folded line (Substitute Br. 11). Although this method is
consistent with an embodiment disclosed in Wyant, there is nothing in Wyant that
requires or suggests that this is the only way to attach tabs that can be selectively

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folded outward, much less to teach away from the use of a pocket constructed on
one side surface of a base sheet, the element for which the Examiner relies on Dick
(Answer 5). Where, as here, art is silent on the capabilities or function of any
particular item, that is not teaching away from its use. Further, the Court in KSR
noted that “[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton.” 127 S.Ct. at 1742, 82 USPQ2d at 1397. It would take no more
than ordinary creativity for a person of ordinary skill to adapt Wyant to form tabs
with the base sheet and pocket sheet attached along the perimeter edge as disclosed
in Dick. As noted by KSR:
Common sense teaches, however, that familiar items may
have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit
the teachings of multiple patents together like pieces of a
puzzle.
KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397.
Appellant’s claim 8 recites “the base sheet and the pocket sheet are adhered
to one another along their respective first edges, third edges and fourth edges.”
With respect to claim 8, Appellant argues that there is no specific suggestion in
either of the references to modify Wyant to adhere the pocket sheet to the base
sheet along their respective first, third, and fourth edges. 	KSR forecloses
Appellant's argument that a specific teaching is required for a finding of
obviousness. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
With respect to claim 32, Appellant reasserts the above arguments and
asserts that the combination of Wyant with Dick would not meet the limitation of
“rendering the insert passable through a copier or printer in sequence with a sheet

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of paper.” Wyant discloses that the indexing member may be formed from any
conventional stationary paper including card stock and paper stock (Finding of
Fact 9). As such, the two-ply embodiment of Wyant, or the two-ply seams of Dick
combined with the single pocket arrangement of Wyant, would inherently be
capable of passing through a copier or printer in sequence with a sheet of paper
(Finding of Fact 20). Accordingly, the argument fails as to claims 32-34 for the
same reasons as it did for claim 35.
Appellant’s claims 1-9, 11-13, 16-18, and 32-34 were combinations which
only unite old elements with no change in their respective functions and which
yield predictable results. Thus, the claimed subject matter likely would have been
obvious under KSR. In addition, neither Appellant’s Specification nor Appellant’s
arguments present any evidence that the modifications necessary to effect the
combination are uniquely challenging or difficult for one of ordinary skill in the
art. Because this is a case where the improvement is no more than “the simple
substitution of one known element for another or the mere application of a known
technique to a piece of prior art ready for improvement,” KSR, 127 S.Ct. at 1740,
82 USPQ2d at 1396, no further analysis was required by the Examiner. KSR, 127
S.Ct. at 1740, 82 USPQ2d at 1396. Under those circumstances, the Examiner did
not err in holding that it would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify Wyant's pocket insert with a
separate pocket sheet attached to a base sheet to form a pocket insert as taught by
Dick for providing a more secured pocket.

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B. 	Rejection of claims 10, 14, 15, 19-21, and 36 under 35 U.S.C. § 103(a) as
unpatentable over Wyant in view of Dick, and further in view of
Ruebens.
With respect to the combination of Wyant, Dick, and Ruebens, Appellant
reasserts the arguments made against the combination of Wyant and Dick, and
argues that Ruebens does not cure the deficiencies of that combination (Substitute
Br. 19-21). Appellant separately argues the allowability of claim 36. The
remaining claims stand or fall together. With respect to claim 36, Appellant
essentially reasserts the “thickness” argument asserted against the rejection of
claims 32-34. The argument fails as to claim 36 for the same reasons as it did for
claims 32-34.
The Examiner relies on Ruebens to show a pocket sheet that is adhered to a
base sheet along the base sheet's perimeter edge and along a strip or inner portion,
which separates the pocket sheet into two pockets (Answer 5). One of skill in the
art would have been able to combine the adhesive strip of Ruebens with the
combination of Wyant and Dick asserted by the Examiner in the preceding
rejection using methods known at the time the invention was made in the
bookbinding art. Moreover, each of the elements of Wyant, Dick, and Ruebens
combined by the Examiner performs the same function when combined as it does
in the prior art. Thus, such a combination would have yielded predictable results.
See Sakraida, 425 U.S. at 282, 189 USPQ at 453.
Claims 10, 14, 15, 19-21, and 36 were combinations which only unite old
elements with no change in their respective functions and which yield predictable

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results. Thus, the claimed subject matter likely would have been obvious under
KSR. In addition, neither Appellant’s Specification nor Appellant’s arguments
present any evidence that the separation of one pocket into two pockets using an
additional line of adhesive is uniquely challenging or difficult for one of ordinary
skill in the art. Moreover, the separation of one pocket into two pockets using an
additional line of adhesive is a technique that has been used to improve one device
(the photo album of Ruebens), and one of skill in the art would recognize that it
would improve similar devices in the same manner. Because Appellant has not
shown that the application of the Ruebens technique to the combination of Wyant
and Dick would have been beyond the skill of one of skill in the art, we find using
the technique would have been obvious. Under those circumstances, the Examiner
did not err in holding that it would have been obvious to one having ordinary skill
in the art at the time the invention was made to modify Wyant's and Dick's pocket
insert with an adhesive strip, as taught by Ruebens, for the purpose of defining a
plurality of pockets to hold numerous articles. Because this is a case where the
improvement is no more than the predictable use of prior art elements according to
their established functions, no further analysis is required by the Examiner. KSR,
127 S.Ct. at 1740, 82 USPQ2d at 1396.
CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-21 and 32-36.

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DECISION
The decision of the Examiner to reject claims 1-21 and 32-36 is affirmed.
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) (2006).
AFFIRMED
hh
STEPHEN B. SALAI, ESQ.
HARTER, SECREST & EMERY LLP
1600 BAUSCH & LOMB PLACE
ROCHESTER, NY 14604-2711