Ex parte Hoarau
Appeal 2009003673; Appl. No. 10/953,549; Tech. Center 1700
Decided: January 22, 2010
The application on appeal was directed to a bookbinding system. The Applicant appealed several independent claims, two of which are reproduced below:
10. A method of binding sheets, comprising:The Examiner rejected all three independent claims as being anticipated by Taillie, as follows:
accumulating plural sheets (206) to be bound by placing an edge of each sheet adjacent an adhesive strip (202);
locally heating (208) the adhesive strip (202) to selectively melt a portion of the adhesive on the adhesive strip in a vicinity of less than all of the plural sheets to be bound.
11. A method of binding sheets, comprising:
accumulating plural sheets (206) to be bound, each of the plural sheets being sequentially placed adjacent to an adhesive strip (202); and
locally heating (208) the strip (202), wherein the adhesive strip is locally heated on a sheet-by-sheet basis, as each of the sheets is placed adjacent to the adhesive strip.
Taillie teaches a method of binding multiple sheets to each other after heating an adhesive layer thereon, one sheet at a time. Multiple sheets can mean at least two sheets. By interpreting the claims, it is disclosed that plural sheets are bound through an adjacent adhesive strip.The Applicant appealed. The Applicant argued that claim 10 specified binding a plurality of sheets with an adhesive strip, where in Taillie, "each single sheet is associated with a single adhesive, which is prefused in the sheet or an adjacent sheet." As another distinction, the Applicant also argued that claim 10 specified heating a portion of the adhesive, where in Taillie, "each adhesive area [is] heated in its entirety to bind the sheets."
With respect to claim 11, the Applicant argued that in Taillie "an adhesive is prefused into a surface edge of the sheet and the sheets are placed adjacent to each other" where claim 11 specified placing a sheet adjacent to an adhesive layer."
In the Answer, the Examiner explained claim interpretation as follows:
In interpreting claim 10, the limitation stating melting a "portion" of the adhesive includes the "entire" amount of adhesive in the strip.In a Reply Brief, the Applicant argued broadest reasonable interpretation. For claim 10, the Applicant argued that a reasonable interpretation "cannot include multiple adhesive strips such that more than one adhesive strip is used to bind the plural sheets." For claim 11, the Applicant argued that "the adhesive strip that the sets of sheets are sequentially placed adjacent to, is the same adhesive strip that is locally heated each time a new set of sheets is placed adjacent to it."
With respect to claim 11 ... "locally heating the adhesive strip", this limitation refers to the previous set of sheets and is not limited to only one adhesive strip.
The Board was not persuaded by all of the Applicant's arguments, but did reverse both rejections.
The Board found that Claim 10 was not limited to single adhesive sheet as urged by the Applicant. The claim language "placing an edge of each sheet adjacent an adhesive strip" was therefore met by Taillie's "[placing] an edge of each sheet adjacent to the underlying sheet’s adhesive strip." br />
Continuing on to Applicant's second argument for claim 10, the Board found the Examiner's interpretation of "a portion of the adhesive" to be unreasonable. The Examiner read "a portion of" on the entire amount of adhesive in the strip. The Board referred to a dictionary definition for plain and ordinary meaning ("something less than the whole to which it belongs"), and Board noted that "[t]he Examiner has not established that the Appellant is giving the term 'portion' any meaning other than its ordinary meaning." Because the Examiner's interpretation of claim 10 was in error, the Board reversed the rejection of claim 10.
For claim 11, the Board also found the Examiner's interpretation "locally heating the adhesive strip," to allow for multiple adhesive strips, to be unreasonable. The Board explained as follows:
The Appellant’s Claim 11 requires that the adhesive strip is locally heated on a sheet-by-sheet basis as each of the sheets is placed adjacent to “the” adhesive strip, i.e., the same adhesive strip. Taillie locally heats each sheet’s adhesive strip when a sheet edge is placed on it (col. 6, ll. 49-59). Thus, Taillie’s local heating takes place when each sheet is placed adjacent to “an” adhesive strip, but not adjacent to “the” adhesive strip, i.e., the same adhesive strip.My two cents: No surprise that "a portion" doesn't read on "entire," but it's a bummer that the Examiner dug in his heels and went all the way to appeal on this point
The Board's treatment of "an adhesive strip" seems inconsisent between claim 10 and claim 11. In claim 10, the Board said "placing an edge of each sheet adjacentan adhesive strip" allowed for more than one strip, with each sheet adjacent to a different strip. Claim 11 also recited "an adhesive strip," but the Board said the phrase "locally heating the adhesive strip" was limited to one strip, the same one each time.
Presumably the difference is "an" in claim 10 versus "the" in claim 11. So if claim 10 is reworded to look more like claim 11, does this avoid Taillie?
providing an adhesive strip;The "providing" step doesn't itself prohibit multiple strips, but the article "the" in the placing phrase does. Right?
accumulating plural sheets to be bound by placing an edge of each sheet adjacent the adhesive strip;