Appeal No. 2006-2560
Application No. 10/315,422
we do not consider that one skilled in the art would be discouraged from using the
transparent materials. Further, while we do not find that Ranson teaches a preference
between transparent or opaque materials for the coversheet, we do find that Deschamps’
teaching that the use of a transparent sheet with “the mirror image of the desired
presentation printed on its back side” so that the printing is protected and “sheltered from
friction” would motivate the skilled artisan to select the transparent cover material.
Further, regarding appellant’s arguments directed to delaminating and increased cost, we
find that Deschamps provides the motivation to choose one type of coversheet disclosed
by Ranson, with the property of being transparent. Thus, we do not find that the
combined teachings add any problems to the cover that are not already present in
Ranson’s invention. Further, inasmuch as the art also suggests using Deschamps’
transparent coversheet over the coversheet of Ranson, we do not find any evidence to
support a finding that such a book cover would be less durable than without the
transparent cover. Rather, Deschamps’ disclosure that the invention reduces friction on
the printing suggests that such a cover would be more durable. Accordingly, appellant’s
arguments on pages 19 through 22 of the brief have not convinced us of error in the
examiner’s rejection.
On pages 22 through 24 of the brief, appellant argues that the examiner’s
rejection improperly relies upon hindsight reasoning. On pages 6 through 8 of the reply
brief, appellant also argues that the examiner’s rejection is based upon hindsight
reasoning. Appellant states on page 24 of the brief:
As stated previously, the references teach away from substitution of the '576
transparent sheet for the durable cover sheet of Ranson. Accordingly, the
materials of construction taught by Ranson include only durable, opaque
materials in which the outer surface may include printing to identify the book,
see Col. 4, lines 29-31. While the Examiner asserts that this does not restrict that
the indicia is not capable of being printed on the inside surface, every cover
material recited in Ranson is opaque, there is simply no reason one skilled in the
art would bother printing on the second, inner surface thereof because the printing
would be covered up by the opaque material itself.
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