Ex parte VOLLENWEIDER - Page 12




               Appeal No. 1998-2179                                                                         Page 12                 
               Application No. 08/433,231                                                                                           


                       As the appellant has elected not to separately argue the patentability of claims 14-18                       
               apart from claim 12 (see brief, page 12), we shall treat these claims as standing or falling with                    
               claim 12.  As we have sustained the examiner's rejection of claim 12, supra, as being                                
               unpatentable over Newsome in view of Reist, we shall thus also sustain the examiner's rejection                      
               of claims 14-18 as being unpatentable over Newsome in view of Riest, Schall and Shimanis.                            
                       We shall not, however, sustain the examiner's rejection of claims 1-11, which are                            
               directed to a process for storing blanks.  As discussed above, we interpret the language                             
               "individually one after the other" as precluding overlapping.  Newsome discloses conveying the                       
               printed signatures only in the form of a rough shingle 14 upstream of the holding location 15                        
               and in the form of a uniform running shingle 11 downstream of the holding location and, as                           
               such, lacks a step of "feeding the blanks individually one after the other" as required in each of                   
               claims 1-11.  While we have reviewed the teachings of Reist, Schall and Shimanis, we find                            
               nothing therein which overcomes the above-noted deficiency of Newsome.                                               
                       Accordingly, we cannot sustain the examiner's rejection of claims 1-11.                                      
                                                         CONCLUSION                                                                 
                       To summarize, the decision of the examiner to reject claims 1-23 under 35 U.S.C.                             
                103 is affirmed as to claims 12-23 but reversed as to claims 1-11.  The examiner's decision is                     
               affirmed-in-part.                                                                                                    











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