Appeal No. 95-4014
Application 08/128,929
examiner: claims 36 and 53 are unpatentable over Doery in view of Ito et al.; claims 37 through 393 4
are unpatentable over Doery in view of Ito et al., further in view of Jones and Barber et al.; claims 41
through 51 are unpatentable over Doery in view of Ito et al., further in view of Jones and Barber et al.,
further in view of Leahy; and claims 40 and 52 are unpatentable over Doery in view of Ito et al.,
further in view of Jones and Barber et al., further in view of Leahy, further in view of Ojha or Rourke
(answer, pages 3-6). It is well settled that the examiner must satisfy his burden of establishing a prima
facie case of obviousness by showing some objective teaching or suggestion in the applied prior art
taken as a whole or that knowledge generally available to one of ordinary skill in the art would have led
that person to the claimed invention, including each and every limitation of the claims, without recourse
to the teachings in appellant’s disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-
1076, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chemical Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
In the present case, the examiner has failed to make out a prima facie case of obviousness as
to appealed claims 36 through 53 as a whole since he has not provided evidence and/or scientific
reasoning in the record why one of ordinary skill in this art would have modified the method of thermally
applying adhesive tape to the spine of a set of sheets in Doery by winding a binder tape completely
around a paper bundle as taught by Ito et al. in order to arrive at the claimed methods of organizing
multiple print job sets and printed documents of the appealed claims by applying a multiplicity of small
thin strips of low-tack adhesive tape “only partially around each of two opposing sides of each of said
neatly stacked job set, intermediately thereof, extending over only a minor portion of the dimensions of
said job set, so that each said strip wraps around one edge of said stacked job set to removably adhere
to only a minor portion of only said top and bottom sheets” as specified by claim 36 and by “applying a
selectively removable adhesive tab on opposing side edges of said stacked plural printed documents”
3See the supplemental examiner’s answer (Paper No. 12).
4The references relied on by the examiner with respect to the grounds of rejection are listed at page 3
of the answer. We refer to these references in our opinion by the name associated therewith by the
examiner.
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Last modified: November 3, 2007