Appeal No. 2005-0784
Application No. 10/138,315
rejection before us fall short of establishing a prima facie case
of obviousness.
In this latter regard, we fully agree with the appellants
that appealed claim 26, by repeated and clear language, is
unquestionably directed to “A method of manufacturing only a
single booklet from a single rectangular sheet of paper”
(emphasis added) which comprises applying glue “along only a
single linear path on said rectangular sheet of paper” (emphasis
added). In contrast, Lyon expressly discloses a method directed
to the manufacture of multiple folding booklets (e.g., see the
title and the abstract) from multiple sheets of paper (e.g., see
15, 16 and 17 in patentee’s drawing and the specification
disclosure relating thereto) which comprises applying glue along
multiple linear paths (e.g., see 10, 12 and 14 of patentee’s
drawing and the specification disclosure relating thereto) on the
sheets of paper. Apparently, the examiner believes that the
claim 26 term “comprising” permits him to interpret the claim as
encompassing the multiple booklets, sheets of paper and glue
paths of Lyon. This is incorrect.
It is true that “comprising” leaves claim 26 open to the
inclusion of other steps, elements or materials. See In re
Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981). As
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007