Entrust Datacard Corporation

Patent Trials and Appeals Board

Jan 24, 2022

2020004204 (P.T.A.B. Jan. 24, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/941,960 03/30/2018 Christophe BIEHLMANN 02968.0552USU1 3742 52835 7590 01/24/2022 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 Minneapolis, MN 55402-1683 EXAMINER DULANEY, BENJAMIN O ART UNIT PAPER NUMBER 2672 NOTIFICATION DATE DELIVERY MODE 01/24/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PTOMail@hsml.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHE BIEHLMANN and VISHAL ARORA Appeal 2020-004204 Application 15/941,960 Technology Center 2600 Before JEAN R. HOMERE, ADAM J. PYONIN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20, which are all of the claims pending in the application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Entrust Datacard Corp. as the real party in interest. Appeal Br. 2. Appeal 2020-004204 Application 15/941,960 2 TECHNOLOGY The application relates to “printing a multi-media document from an image file” with “personalization of the multi-media document” via “metadata.” Spec. 1:6-7, 1:18-26. ILLUSTRATIVE CLAIM Claim 1 is illustrative and reproduced below with certain limitations at issue emphasized: 1. A method for printing a multi-media document using a printing device, the method comprising: the printing device receiving a data holding image file, the data holding image file including image data to be printed on the multi-media document and document data stored as metadata in the data holding image file; a processor of the printing device parsing and extracting the document data stored as the metadata from the data holding image file for printing the multi-media document; sending the image data to a first printer operation component of the printing device in order to print the image data onto the multi-media document; sending a portion of the document data to a second printer operation component of the printing device in order to perform a printing operation on the multi-media document; the first printer operation component performing a first printing operation of printing the image data on the multi-media document; and the second printer operation component performing a second printing operation on the multi-media document using the portion of the document data extracted from the data holding image file. Appeal 2020-004204 Application 15/941,960 3 REFERENCES The Examiner relies on the following references as prior art: Name Number Date Denniston US 2010/0128296 A1 May 27, 2010 Nakano US 2016/0269588 A1 Sept. 15, 2016 Takami US 2007/0139741 A1 June 21, 2007 Tucker US 2016/0078247 A1 Mar. 17, 2016 REJECTIONS The Examiner makes the following rejections under 35 U.S.C. § 102 or § 103: Claims Statute Reference(s) Final Act. 1-5, 7 § 102 Nakano 3-5 9-13 § 102 Denniston 5-6 6 § 103 Nakano, Tucker 7 8 § 103 Nakano, Takami 7-8 14 § 103 Denniston, Takami 8-9 15-19 § 103 Nakano, Denniston 9-11 20 § 103 Nakano, Denniston, Tucker 11-12 ISSUES 1. Did the Examiner err in finding Nakano discloses “the printing device receiving a data holding image file, the data holding image file including image data to be printed on the multi-media document and document data stored as metadata in the data holding image file,” as recited in claim 1? 2. Did the Examiner err in finding Denniston discloses (A) all the limitations recited in independent claim 9; (B) “processing the document data for storage into the image file as metadata,” as recited in claim 10; and (C) “digitally signing the processed document data in the data holding image file,” as recited in claim 12? Appeal 2020-004204 Application 15/941,960 4 ANALYSIS § 102: Claims 1-5 and 7 over Nakano Claim 1 recites “the printing device receiving a data holding image file . . . including image data to be printed on the multi-media document and document data stored as metadata in the data holding image file.” The Examiner relies on Nakano’s “forgery preventing character” for disclosing the claimed “metadata.” Ans. 13. Nakano’s “forgery preventing character is printed in a black color in which the CMY inks are superposed” such that “the black image cannot be visually recognized by the naked eye, but can be detected by a detection device.” Nakano ¶ 69. Examples are shown in Figures 5B and 5C of Nakano. Even if we assume Nakano’s “forgery preventing character” discloses “document data” and “metadata,” we agree with Appellant that the Examiner fails to explain how Nakano discloses a printing device receiving “a data holding image file” that includes both image data and the forgery preventing character. Appeal Br. 7-8, 10-11. Based on the record before us, Nakano teaches outputting a product with both image data and a forgery preventing character (Nakano ¶¶ 69, 74, 102), but it is not clear where the forgery preventing character comes from and whether the printing device receives the forgery preventing character in the same file as the image data. Accordingly, we do not sustain the rejection of claim 1 and its dependent claims 2-5 and 7. § 103: Claims 6 and 8 over combinations with Nakano Claims 6 and 8 ultimately depend from claim 1, and the Examiner does not rely on obviousness, Tucker, or Takami to cure the deficiencies Appeal 2020-004204 Application 15/941,960 5 noted above for claim 1. Accordingly, we do not sustain the rejection of claims 6 and 8 for the same reasons discussed above. § 103: Claims 15-20 over combinations with Nakano and Denniston For independent claim 15, the Examiner relies on Nakano for limitations substantially similar to claim 1. See Ans. 17; Final Act. 9-11 (relying on Denniston solely for “a network input/output that receives a data holding image file”). Accordingly, we do not sustain the rejection of independent claim 15 and its dependent claims 16-20 for the same reasons discussed above. § 102: Claims 9-13 over Denniston Independent claim 9 recites a method comprising the following steps: receiving document data for performing one or more printing operations onto the multimedia document; receiving an image file to be printed on the multimedia document; storing the document data as metadata into the image file to form a data holding image file; and sending the data holding image file to the printing device. The Examiner relies on Denniston’s “codes” for disclosing the claimed “metadata.” Ans. 15-16. Denniston’s “printed codes” are “not visible to the human eye” but are “printed . . . at the same time that visible information is printed on the patient identification bracelet.” Denniston ¶¶ 81-82. An example of a patient identification bracelet is shown in Figure 9 of Denniston. “Within each printed region” on a patient identification bracelet, such as region 4001 through 4005, “a single printed code would be Appeal 2020-004204 Application 15/941,960 6 repeatedly printed so as to cover the entirety of the select region.” Id. ¶ 82. “These printed codes would be sufficiently unique to the patient such that the codes of a first patient would not be mistaken for the codes of a second patient within the same healthcare facility during the same period of time.” Id. Although the human eye might not easily read the printed codes, a machine can. Thus, when a “healthcare worker touches the handheld device 300 to a region of the patient identification bracelet, such as region 4003 containing the patient’s name,” “[t]he hand-held device 300 registers the patient name and the device preferably audibly states the patient’s name.” Id. ¶ 84, Fig. 9. Appellant argues that the Examiner interprets “metadata” too broadly in view of the Specification. Appeal Br. 15 (citing in part Spec. 5:24-6:4, 12:3-13:29). The Specification, however, contradicts Appellant’s argument. The portions of the Specification cited by Appellant expressly disclose that “document data can include, for example, personalization data,” which “can include personal data unique for the multi-media document to be printed” such as “personal information (e.g., name, address, phone number, social security number, etc.).” Spec. 12:3-10. Thus, the Specification discloses the metadata can be a person’s name, and Denniston discloses using printed codes for a patient name. Denniston ¶¶ 81, 82, 84, Fig. 9; Ans. 16. Appellant further argues that Denniston “is silent as to code data for printing code invisible to the human eye being used for performing one or more printing operations onto the multi-media document, or the code data being stored as metadata in an image file.” Appeal Br. 15. However, we agree with the Examiner that “paragraph 154 of Denniston clearly discloses that image data can be received at the printer driver” and “the image data Appeal 2020-004204 Application 15/941,960 7 may contain regions of code (i.e. the ‘document data’ or ‘metadata’).” Ans. 15-16. In particular, Denniston discloses: when the image contains regions of code, further steps must occur before printing. Images containing regions of code are further processed by a step which removes the process black from all the portions of the image that are not printed code. The black channel in the background image is removed and substituted with a CMY blend 11050 at the printer driver level 11000. Then, the printed code index image is merged in pure black K channel at the pixel level 11060. After the merger, printing is able to occur and the printed document will contain the printed code. It is contemplated that at this point the CMYK encoded version of the file may be saved for future use. Denniston ¶ 154 (emphasis added). Thus, Denniston discloses additional “printing operations” done for such codes and further discloses a “file” storing both the codes and the original image. Appellant’s cursory argument fails to adequately address this portion of Denniston. See Appeal Br. 16. Appellant does not argue dependent claims 11 and 13 separately. For dependent claim 10, Appellant’s argument that Denniston “is not processing the code for storage into an image file as metadata” is not persuasive for the same reasons as claim 9. Appeal Br. 16. Dependent claim 12 recites “digitally signing the processed document data in the data holding image file.” The Examiner determines “a patient’s name can be printed as hidden code (i.e. the name is the digital signature).” Ans. 16. However, for independent claim 9-from which claim 12 depends-the Examiner identifies the code as the claimed “document data,” and we agree with Appellant that the Examiner fails to explain how a hospital printing a code for a patient’s name on the patient’s wristband discloses “digitally signing” the code for a patient’s name. See also Reply Appeal 2020-004204 Application 15/941,960 8 Br. 14 (“a digital signature . . . is well known in the art as a mathematical algorithm used to validate the authenticity of a digital document”). Accordingly, we sustain the rejection of claims 9-11 and 13, but we do not sustain the rejection of claim 12. § 103: Claim 14 over Denniston and Takami Appellant does not argue dependent claim 14 separately. Accordingly, we sustain the rejection of claim 14. OUTCOME The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-5, 7 102 Nakano 1-5, 7 9-13 102 Denniston 9-11, 13 12 6 103 Nakano, Tucker 6 8 103 Nakano, Takami 8 14 103 Denniston, Takami 14 15-19 103 Nakano, Denniston 15-19 20 103 Nakano, Denniston, Tucker 20 Overall Outcome 9-11, 13, 14 1-8, 12, 15-20 TIME TO RESPOND No time for taking subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv). AFFIRMED IN PART