Appeal No. 2006-2560
Application No. 10/315,422
Examiner's office action, the disclosure wherein the printing "will generally" be
applied to the outer cover" [sic] does not restrict that indicia is not capable of
being printed or placed on the interior surface of the cover sheet. The
Examiner in turn uses the French Patent to only disclose wherein printing
can be placed on the interior surface of the cover in a wrong-reading
direction.
Therefore, the Examiner[‘s] rejections have been maintained. (emphasis
original)
Initially, we note that appellant’s arguments on pages 9 through 22 of the brief are
directed to the examiner’s findings regarding Ranson and Deschamps. As such we first
address appellant’s arguments directed to the examiner’s findings regarding the teachings
of the prior art and then we will address arguments directed to specific claims.
We concur with the examiner’s finding that Ranson teaches a method of binding
a book which makes use of a cover sheet, which is adhered to two support boards and a
spine board. See column 4, lines 61 through 63. Ranson teaches that the cover sheet may
be made of any suitable material, and lists several materials. We find that one skilled in
the art would recognize that suitable material refers to the materials’ ability to form hinge
regions 69 and provide a durable outer surface. See for example column 1, lines 60
through 62 which discuss durability, and column 4, lines 53 through 54 which discuss
hinge regions formed in a cover sheet. As appellant points out, several of the materials
discussed in Ranson are opaque. However, as the examiner points out, several of the
materials, i.e., thermoplastics and laminated polyester films are known to be available as
transparent materials, and it is known to use the transparent materials in a book cover.
The examiner has presented the Learned reference as evidence to show that one skilled in
the art would know that transparent thermoplastics and laminated polyester are used as
part of a book cover. Thus, while we do not find that Ranson teaches that the cover
material is transparent, we do not find that Ranson teaches that the cover material is
opaque. We find that Ranson teaches a method of making a cover and makes no
statement concerning the transparency of the cover sheet. We are not persuaded by
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