Ex Parte 5,689,623 et al

Patent Trial and Appeal Board

Mar 7, 2013

90011392 (P.T.A.B. Mar. 7, 2013)

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.
90/011,392 12/16/2010 5,689,623 025140.63075RX 6885
64828 7590 03/07/2013
Harold McGurk
The Law Office of Clay McGurk
P.O. BOX 1488
Orange, CA 92856
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/07/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SPREAD SPECTRUM SCREENING LLC
________________

Appeal 2013-002808
Reexamination Control 90/011,392
Patent No. 5,689,623
Technology Center 3900
________________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

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Patent Owner (Appellant), Spread Spectrum Screening LLC appeals
under 35 U.S.C. § 134(b) from a final rejection of claims 1-21 of U.S. Patent
No. 5,689,623 (the “623 patent”). We have jurisdiction under 35 U.S.C.
§§134(b) and 306.
We affirm.

STATEMENT OF THE CASE
Reexamination Proceedings
A request for ex parte reexamination of the „623 patent was filed on
December 16, 2010.
Related Litigation
The „623 patent was asserted in three patent infringement suits in
Spread Spectrum Screening LLC v. Eastman Kodak Co., No. 10-CV-06523
(W.D.N.Y.); Spread Spectrum Screening LLC v. Continental Web Press,
Inc. et al., No. 1:10-CV-1101 (N.D. Ill.); and Spread Spectrum Screening
LLC v. Dainippon Screen Graphics (USA), LLC, et al., No. 1:10-CV-07428
(N.D. Ill.). App. Br. 4.
The Rejections
Claims 1-15 and 17-19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Parker (PCT Patent Publication No. WO 1992/10905; June 25,
1992) in view of Victor Ostromoukhov, Pseudo-Random Halftone Screening
for Color and Black & White Printing, The 9
th
International Congress in
Non-Impact Printing Technologies, Proceedings pp. 579-582 (1993)
(Ostromoukhov). Final Rej. 6-35.
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Claim 16 stands rejected under 35 U.S.C. § 103(a) as obvious over
Parker, Ostromoukhov, and further in view of Moriguchi (US 4,809,063).
Final Rej. 35-36.
Claims 1-9, 11, 13-15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Parker in view of Ralph Levien, Output Dependent
Feedback in Error Diffusion Halftoning, The Society for Imaging Science
and Technology, IS&T 46
th
Annual Conference (1993). Final Rej. 36-47.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as obvious over
Parker in view of Levien and Moriguchi. Final Rej. 47-48.
Claims 1-7, 9, 11, 13-15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Parker in view of Thomas Scheermesser, Digital
Halftoning With Texture Control, Electronic Publishing, Vol. 63(3), pp. 207-
212 (1993) (Scheermesser). Final Rej. 49-60.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as obvious over
Parker, Scheermesser, and Moriguchi. Final Rej. 60-62.
Claims 1 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious
over Parker, Scheermesser and further in view of Mark A. Schulze, Blue
Noise and Model-Based Halftoning, Proc. SPIE Vol. 2179 Human Vision,
Visual Processing, and Digital Display V, pp. 182-194 (1994) (Schulze).
Final Rej. 62-66.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious
over Parker and Ostromoukhov. Final Rej. 66.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious
over Parker and Levien. Final Rej. 66-67.
All rejections based upon Ostromoukhov as the primary reference
have been withdrawn. Final Rej. 5.
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The Invention
The „623 patent relates to a screening mask used in commercial
printing software. The invention uses “a halftone screen to produce a binary
image.” Abstract; Col. 1:5; col. 2:13-14; App. Br. 9:5-6.
The Claims
Independent claim 1 is illustrative showing paragraph numbers
assigned to the limitations by the Examiner and with key disputed
limitations emphasized:
1.0 1. A digital screening mask comprising:
1.1 a computer readable memory for storing data, wherein stored in the
memory is a two dimensional array of optical density threshold
values,

1.2 each value being in a range between a minimum value and a
maximum value,

1.3 wherein a frequency domain plot of said array of
threshold values is characterized by a function in magnitude
independent of angle within a band of frequencies between a minimum
frequency and a maximum frequency,

1.4 the minimum frequency normally being imperceptible to humans and

1.5 the maximum frequency being a frequency within the ability of a
printing press to print.

The Expert Declaration
Appellant provides a Declaration by Daniel Lau, Ph.D.

ISSUE
The Examiner concludes that subsection 1.3 does not define or limit
how wide the recited frequency band must be or what the maximum
frequency can be. Final Rej. 8; Ans. 12:3-5. That is, there is no restriction
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on frequency content that falls outside the band of frequencies. Ans. 5:9-10;
8:9-10. Based on that conclusion, the Examiner finds that Figure 1 of Parker
teaches a frequency band between minimum and maximum frequencies.
Final Rej. 8; Ans. 11:12-14
Appellant argues that subsection 1.3 must be read to restrict frequency
content to a band of frequencies (App. Br. 17:14-16; 18:10-12) which Parker
does not teach because Parker shows significant frequency content outside
the Examiner‟s arbitrarily designated maximum frequency in the Examiner‟s
annotated version of Parker‟s Figure 1. App. Br. 22:17-21.
The issues, therefore, are
(1) whether subsection 1.3 limits the maximum frequency in the
band of frequencies; and
(2) whether Parker teaches a band of frequencies between a
minimum frequency and a maximum frequency.

ANALYSIS
Interpretation of subsection 1.3
Appellant and the Examiner disagree about the interpretation of the
phrase “is characterized by” in subsection 1.3.
Appellant contends that, consistent with the Specification, “is
characterized by” means “restricted in” or “substantially restricted to,” or
“limited to.” App. Br. 17. Appellant cites, for example, Specification
column 6, lines 38-44 which states: “the spread spectrum mask generated in
step 28 is restricted in the frequency domain to within the spread spectrum
band of frequencies.” App. Br. 17. Based on this citation, and others (Spec.
col. 4:39-44, 51-53; App. Br. 17), as well as its arguments during
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prosecution (id.), Appellant contends that frequency content in the frequency
domain is restricted to a band of frequencies so that subsection 1.3 is not
satisfied if there is frequency content outside the band of frequencies. App.
Br. 17. Appellant further contends that its interpretation is further supported
by its annotated Figure 2 showing a band of frequencies between minimum
and maximum frequencies that does not change with angle. App. Br. 18-19.
If, according to Appellant, there is any significant frequency content outside
Figure 2‟s donut-shaped band of frequencies, the limitation is not met. App.
Br. 19. See also Reply Br. 5-6.
The credibility of Appellant‟s reliance on the preferred embodiment in
its Specification (col. 4:51-52, cited at App. Br. 17 n. 8) is substantially
reduced by the Specification‟s discussion of less preferred embodiments: “It
is contemplated however that less preferred embodiments may include a
tapering off of magnitude that extends beyond a designated spread spectrum
band.” Spec. Col. 4:53-55 (emphasis added). This less preferred
embodiment substantially reduces the strength of Appellant‟s contention that
its Specification unequivocally supports its interpretation of “is
characterized by” to “restricted in,” “limited to,” or similar interpretations.
Citing MPEP 2111.03, the Examiner concludes that “characterized
by” is an open ended transitional phrase which is synonymous with
“comprising,” “including,” or “containing.” Ans. 4. Appellant does not
dispute that MPEP 2111.03 discusses these phrases. Appellant contends that
the terms discussed in the MPEP are transitional phrases that transition from
the preamble to the body of a claim. Because claim 1 uses the transitional
word “comprising” between the preamble and the body of the claim, and
uses “characterized by” in the body of the claim, Appellant contends that
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“characterized by” is not a transitional word and should not be interpreted as
equivalent to “comprising.” Reply Br. 4. Appellant also cites two
definitions of “characterize” from a general purpose dictionary and contends
that those definitions support its limited interpretation of “characterized by”
in claim 1. Reply Br. 5.
Finally, Appellant notes that MPEP 2111.03 did not first appear in the
MPEP until July 1996, a number of months after its application using the
“characterized” claim language was filed on March 27, 1995. Reply Br. 4.
This argument seems to imply, but does not expressly assert, that the
chronological relationship between Appellant‟s 1995 claim language and the
July 1996 version of the MPEP prevents the Office from relying upon the
MPEP‟s equating “characterized by” with the breadth accorded other
transitional phrases.
We note, however, that at least as early as January 1995, MPEP
§ 1824 reproduced PCT Rule 6.3 which stated, in part:
(b) . . . claims shall contain . . . (ii) a characterizing portion –
preceded by the words “characterized in that,” “characterized
by,” “wherein the improvement comprises,” or any other words
to the same effect – stating concisely the technical features
which, in combination with the features stated under (i), it is
desired to protect.

The accompanying MPEP § 1824 comment stated:
As to the manner of claiming, the claims must, whenever
appropriate, be in two distinct parts; namely, the statement of
the prior art and the statement of the features for which
protection is sought (“the characterizing portion”).

The discussions and guidance in PCT Rule 6.3 and in the MPEP take
precedence over definitions in a general purpose dictionary.
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Accordingly, when Appellant filed its application in March 1995, and
during prosecution up until the „623 patent issued on November 18, 1997,
Appellant was on notice that the Office did not accord “characterized by”
the restrictive interpretation Appellant now seeks to engraft onto it and,
instead, interpreted it as broadly as “comprising” and other transitional
phrases. During the pendency of the „623 patent, Appellant could have
amended claim 1 in light of the extant PCT and MPEP guidance to ensure
the claim was limited to the desired frequency range.
We therefore agree with the Examiner that “is characterized by” is
accorded a broad meaning and not the restrictive meaning sought by
Appellant.
Application of Parker to subsection 1.3
The Examiner finds that Parker teaches a band of frequencies between
a minimum frequency and a maximum frequency. See Final Rej. 8 and Ans.
11-12, both of which have an annotated copy of Parker‟s Figure 1showing a
band of frequencies having a maximum frequency and a minimum
frequency.
1

Based upon Appellant‟s proposed restrictive interpretation of
subsection 1.3, Appellant contends that Parker does not teach subsection 1.3
because Parker shows significant frequency content outside the Examiner‟s
annotated maximum frequency line of Parker Figure 1 (App. Br. 22:11-21)

1
The Examiner also relies upon Parker‟s Figures 7-9 as identifying two
separate cutoff frequencies. Ans. 5-6, 8-9. Appellant disagrees, contending
that those figures relate to the optical density threshold values recited in
subsections 1.1 and 1.2. We agree with Appellant in view of the fact that the
Examiner has previously equated Figures 7-9 with optical density threshold
values. Final Rej. 7 discussing subsection 1.2.
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and Parker does not mention of suggest anything about a maximum
frequency or the elimination of high frequency content (App. Br. 23:10-12;
24:24-26). Appellant also contends that claim 1 requires that Parker‟s entire
digital screening mask must be considered, rather than only the portion
relied upon by the Examiner based upon the arbitrarily defined frequency
band relied upon by the Examiner. Reply Br. 6-7. We disagree with
Appellant because, as we showed above, subsection 1.3 does not require that
Parker‟s entire mask be considered. In addition, no part of claim 1 includes
the term “entire.”
Appellant relies upon Dr. Lau‟s Declaration to show that one skilled
in the art would say that Parker does not have a frequency domain within a
band of frequencies between minimum and maximum frequencies because
(1) Parker‟s frequency domain includes all the frequency content above a
minimum frequency (App. Br. 22, citing Lau Declaration ¶ 17); (2) Parker
cannot be compared to claim 1 because claim 1 refers to a dither array where
Parker‟s Figure 1 is a power spectrum for a dither pattern (App. Br. 24,
citing Lau Declaration ¶19); and (3) Parker teaches a blue-noise mask and
blue-noise masks do not have a maximum frequency (Reply Br. 8:3-7, citing
Lau Declaration ¶ 17). Dr. Lau‟s paragraph 17 also states that “[o]ne skilled
in the art would recognize that the dither pattern of „905 PCT [Parker] is
characterized by low and high frequencies including the flat high frequency
area. One skilled in the art could not just ignore the high frequencies.”
“[E]xtrinsic evidence in the form of expert testimony can be useful to
a court for a variety of purposes, such as to provide background on the
technology at issue, to explain how an invention works, to ensure that the
court‟s understanding of the technical aspects of the patent is consistent with
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that of a person of skill in the art, or to establish that a particular term in the
patent or the prior art has a particular meaning in the pertinent field.”
Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc).
However, “a court should discount any expert testimony „that is clearly at
odds with the claim construction mandated by the claims themselves, the
written description, and the prosecution history, in other words, with the
written record of the patent.” Id.
Appellant‟s reliance on Dr. Lau‟s Declaration is not persuasive
because it is clearly at odds with the claim construction mandated by claim 1
itself and the written description, as discussed above.
The remaining Reply Brief references to Dr. Lau‟s Declaration are not
directed to a discussion of Parker. They are, instead, directed to the fact that
none of the secondary references eliminate all of Parker‟s high frequency
content beyond the arbitrarily chosen maximum frequency. (Reply Br. 7-8;
11).
Accordingly, we agree with the Examiner that Parker teaches
subsection 1.3 of claim 1.
The rejection of subsection 1.5
Subsection 1.5 recites that the maximum frequency recited in
subsection 1.3 is a frequency within the ability of a printing press to print.
The Examiner rejects subsection 1.5 on various grounds using different
combinations of references for each ground.
Parker in View of Ostromoukhov
The Examiner finds that Ostromoukhov teaches (1) clustering to
improve printing performance by inherently removing high frequency
features that may otherwise be difficult to print; and (2) the Fourier
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amplitude spectrum shown in Ostromoukhov‟s Figure 4(b) inherently has a
maximum frequency within the ability of the printing press to print. Final
Rej. 10:7-14; Ans. 21.
Relying on Dr. Lau‟s Declaration regarding the shape of clusters in
Ostromoukhov, Appellant argues that Ostromoukhov does not inherently
disclose the Fourier amplitude spectrum has a maximum frequency within
the ability of the printing press to print because Ostromoukhov‟s clustering
does not necessarily remove all significant high frequency content; but only
reduces some of the high energy frequency. App. Br. 26:15; 27-28.
In response, the Examiner concludes that subsection 1.5 does not
recite removing high frequencies, high energy frequency, or anything related
to frequencies above a maximum frequency (Ans. 19:6-7; 20:18-19, 22-25)
and that Dr. Lau‟s discussion regarding the shape of clusters is not
persuasive because neither Dr. Lau nor Appellant point out how cluster
shapes are related to any claim limitations. Ans. 20:11-17. The Examiner
also finds that Appellant‟s Specification teaches that clustering is a method
that helps satisfy printing press requirements and that Ostromoukhov uses
the same method. Ans. 19.
Appellant‟s Reply Brief does not address or counter the Examiner‟s
analysis of subsection 1.5, Dr. Lau‟s Declaration, or the Examiner‟s finding
regarding Ostromoukhov and its similarity to Appellant‟s device. We find
that the Examiner‟s findings and conclusions have a rational underpinning
and we are not persuaded the Examiner erred in reaching them.
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Appellant also argues that Ostromoukhov fails to teach a digital
screening mask,
2
where a frequency domain plot of the mask is restricted
within a band of frequencies between minimum and maximum frequencies
as in subsection 1.3. App. Br. 26:15-18; 28-30. Thus, even though this
argument is purportedly about subsection 1.5, it is instead an argument about
whether Ostromoukhov teaches subsections 1.0 and 1.3. However, as
Appellant recognizes, “Parker was the only reference used in rejecting
subsection 1.3 of claim 1. No other prior art was cited or combined with
Parker for rejecting subsection 1.3 of claim 1.” Reply Br. 3:6-8.
Consequently, Appellant‟s contentions do not persuade us that
Ostromoukhov fails to teach the limitation in subsection 1.5.
Appellant also argues that the rejection relies upon inappropriate
hindsight and a strained interpretation of Ostromoukhov. App. Br. 26:18-19.
This argument is not persuasive because it is based on previously made
arguments regarding frequency domain plot, digital screening mask, a band
of frequencies between minimum and maximum frequencies, removing high
frequency components, and clustering (App. Br. 30-31) all of which we
disagree with as discussed above.
For all of the above reasons, we are not persuaded of error in the
Examiner‟s rejection of subsection 1.5 over Parker in view of
Ostromoukhov.
Parker in View of Levien

2
The Examiner states: “[I]t appears that the Patentee is admitting that
Ostromoukhov discloses a „mask‟ after all, in spite of the Patentee‟s
previous argument that Ostromoukhov fails to teach a „mask.‟” Ans. 24:26-
28. We agree with Appellant (Reply Br. 10-11) that Appellant has not made
such an admission.
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Parker in View of Scheermesser
Parker in View of Scheermesser and Schulze
Appellant contests the rejections of subsection 1.5 based on Parker in
view of Levien (App. Br. 35-38), in view of Scheermesser (App. Br. 42-43),
and in view of Scheermesser and Schulze (App. Br. 46-47). The Examiner
disagrees with Appellant‟s contentions based on findings and conclusions
stated in the Answer regarding Levien (Ans. 33-40), Scheermesser (Ans. 42-
44), and Scheermesser and Schulze (Ans. 46-49). Appellant‟s Reply Brief
does not address or counter these findings and conclusions. We find that the
Examiner‟s rejections of subsection 1.5 based upon these references are
supported by articulated reasoning with some rational underpinning to
justify the Examiner‟s obviousness conclusions.
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 1; (2) claims 18, 20, and 21 for similar reasons; and
(3) claims 6-11, 13-15, 17, and 19 not separately argued with particularity.
Accordingly, we will sustain the Examiner‟s rejection of claims 1, 6-11, 13-
15, and 17-21.
Claims 2-5, 12, 16, and 18
Appellant presents numerous arguments that the Examiner‟s
rejections of claims 2 (App. Br. 31-32; 39; 43-44), 3(App. Br. 32; 39; 44), 4
(App. Br. 32-33; 39-40; 44); 5 (App. Br. 33; 40; 44-45), 12(App. Br. 33-34),
16 (App. Br. 48), 18 (App. Br. 34; 40; 45; 47) are erroneous. The Examiner
disagrees with Appellant‟s contentions based on findings and conclusions
stated in the Answer. Ans. 26-27; 40; 44 (claim 2); 27-28; 40; 44-45 (claim
3); 29; 40; 45 (claim 4); 29; 41; 45(claim 5); 30-31 (claim 12); 49 (claim
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16); 31-32; 41; 45; 49 (claim 18). Appellant‟s Reply Brief does not address
or counter the Examiner‟s findings and conclusions.
We find that the Examiner‟s rejections of claims 2-5, 12, 16, and 18
are supported by articulated reasoning with some rational underpinning to
justify the Examiner‟s obviousness conclusions.
We are therefore not persuaded that the Examiner erred in rejecting
claims 2-5, 12, 16, and 18.
Accordingly, we will sustain the Examiner‟s rejection of claims 2-5,
12, 16, and 18.
DECISION
The Examiner‟s decision to reject claims 1-21 is affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

alw

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Patent Owner:
Harold McGurk
The Law Office of Clay McGurk
P.O. BOX 1488
Orange, CA 92856

Third Party Requester:

Crowell & Moring LLP
Intellectual Property Group
P.O. Box 14300
Washington, DC 20044-4300