Appeal No. 2006-2560
Application No. 10/315,422
On pages 26 and 27 of the brief, appellant presents a statement of what claim 12
recites, and presents the same argument as applied to claim 1. On pages 27 through 30 of
the brief, appellant makes similar statements identifying the limitations recited in
independent claims 22, 47, 48 49 and 50, and presents the same argument.
We do not consider these statements to constitute arguments as to why the claims
are separately patentable under 37 C.F.R. § 41.67(c)(1)(vii) which states: “A statement
which merely points out what a claim recites will not be a separate argument for separate
patentability of the claim.” Accordingly, we group all of the claims rejected under 35
U.S.C. § 103 as being unpatentable over Ranson in view of Deschamps, claims 1, 2, 5
through 13, 16 through 24, 27 through 30 and 47 through 50 , and we select claim 12 as
the representative claim.
Claim 12 recites a “book cover” and does not limit the claim to any particular
type of book or manner of attaching the cover to the book. Therefore, we consider the
scope of this claim limitation to include any item that covers a book. Claim 12 further
recites a transparent sheet having two surfaces, wherein there is wrong reading indicia
applied to one side of the sheet and adhesive applied to the same side of the sheet as the
indicia. There are three pieces that are adhered to the sheet, by the adhesive, a front
board and back board and spine board between the boards. We find that one skilled in
the art would understand these boards to correspond to the locations in the front, back
and spine of the book. We do not find any limitation in claim 12 directed to these boards
being separate boards to which the sheet is adhered. Rather we hold that the scope of the
claim includes an assembly or a board with three sections that correspond to the locations
on the book (i.e., the board bent around the binding to make a soft cover book or bound
brochure).1
1 Given this broad interpretation, it appears that Deschamps alone anticipates claim12.
As shown in figure 1, transparent sheet 2 is adhered to synthetic material which forms the
outer surface (or board) of a book which has a front, back and binding section. Further,
placing Deschamps’ film over any book would appear to meet this claim as there is no
limitation that addresses the number of layers in the cover.
11
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