Ex Parte 6012890 et al

Patent Trial and Appeal Board

Jun 30, 2015

90012726 (P.T.A.B. Jun. 30, 2015)

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.
90/012,726 01/02/2013 6012890 CEL.100 7211
7590 07/01/2015
VICTOR MANUEL CELORIO GARRIDO
12300 56TH AVENUE, NW
GAINESVILLE, FL 32653
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/01/2015 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 VICTOR MANUEL CELORIO GARRIDO
____________________

Appeal 2015–004695
Reexamination Control 90/012,726
Patent US 6,012,8901
Technology Center 3900
____________________
Before: STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued January 11, 2000 to Victor Manuel Celorrio Garrido (hereinafter
"the '890 patent").
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from a Final
Rejection of claims 1–4, 6, 7, 9–11, 13–24, 26, 27, 29–31, 33–36, 38–40, 48,
50–53, 61–67, 75, 76, 78–82, 84–86, 88–90, 100, 102–105, 107, 108, 115,
117–150, 152–158, 163–186 and 188–223. We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
We are informed that the '890 patent is involved in two litigations:
Victor Manuel Celorio v. On Demand Books LLC et al., District of
Delaware, Case No. 1:12cv00821–GMS (currently stayed); and
Victor Manuel Celorio v. Google, Inc., Northern District of Florida,
Case No. 1:11–cv–00079–SPM–GRJ. See App. Br. 2; see also Request for
Ex Parte Reexamination dated November 27, 2012, pg. 1.
We AFFIRM.

THE INVENTION
Appellant’s invention is directed generally to "a method and system
for producing books on demand." Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A device for printing and binding a book, comprising:
a receiving means for receiving data corresponding to a
book's content;
a formatting means for formatting the book's content into
a book distribution;
a printing means for printing the book's content on paper
sheets upon receipt of a signal from said receiving means;
a clamping means for clamping the printed sheets into a
book block;
a glueing means for applying glue to a spine of the book
block;
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and a cutting means for cutting said paper sheets into
smaller sheets, wherein said printing means prints multiple
pages of the book's content on each paper sheet and said cutting
means cuts said paper sheet into smaller sheets such that each
smaller sheet has a book page printed on each side.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Segreto
Lindsay
Tasaki
Ross

US 3,093,396
US 5,028,192
JP 61–97795
WO 92/02888
Jun. 11, 1963
Jul. 2, 1991
May 16, 1986
Feb. 20, 1992
Wallace, Jim, "Exploring IBM Print on Demand Technology,"
Maximum Press (published no later than December 1996).
Fenton, Howard M., et al., "On Demand Printing: The Revolution in
Digital and Customized Printing," 1995, Graphic Arts Technical Foundation.

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 6, 26, 38, 52, 53, 61–66, 75, 80, 81, 105, 107, 108, 120,
and 221–223 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Ross. Ans. 8.
2. Claims 6, 26, 38, 52, 53, 61–66, 75, 80, 81, 105, 107, 108, 120,
and 221–223 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ross and Tasaki. Ans. 9.
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3. Claims 1, 7, 9–11, 13–21, 27, 29–31, 33, 39, 40, 67, 102, 117,
and 184 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ross in view of Lindsay or Wallace. Ans. 10.
4. Claims 1, 7, 9–11, 13–21, 27, 29–31, 67, 102, 117, and 184
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ross in
view of Lindsay or Wallace, and further in view of Tasaki. Ans. 12.
5. Claims 48, 76, 100, and 115 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ross and Segreto. Id.
6. Claims 48, 76, and 100 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ross, Tasaki, and Segreto. Ans. 13.
7. Claims 2, 22, 34, 82, 86, and 88–90 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ross in view of Lindsay or
Wallace, and further in view of Segreto. Id.
8. Claims 2, 22, 82, 86, and 88–90 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ross in view of Lindsay or Wallace, and
further in view of Tasaki and Segreto. Ans. 14.
9. Claims 50, 51, 78, 79, 103, 104, 118, and 119 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Ross and Fenton. Id.
10. Claims 50, 51, 78, 79, 103, and 104 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ross, Tasaki, and Fenton.
Ans. 15.
11. Claims 3, 4, 23, 24, 35, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ross in view of Lindsay or Wallace, and
further in view of Fenton. Ans. 16.
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12. Claims 3, 4, 23, and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ross in view of Lindsay or Wallace, and further
in view of Tasaki, and Fenton. Id.
13. Claims 84 and 85 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Ross in view of Lindsay or Wallace, and further in
view of Segreto, and Fenton. Ans. 17.
14. Claims 84 and 85 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Ross in view of Lindsay or Wallace, and further in
view of Tasaki, Segreto, and Fenton. Id.
15. Claim 61–66 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ross in view of Fenton or Wallace. Ans. 18.
16. Claim 61–66 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ross and Tasaki, and further in view of Fenton or
Wallace. Ans. 19.
17. Claims 14–19, 67, and 184 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ross in view of Lindsay or Wallace, and
further in view of Fenton or Wallace. Ans. 20.
18. Claims 14–19, 67, and 184 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ross in view of Lindsay or Wallace, and
further in view of Tasaki, and further in view of Fenton or Wallace. Ans.
21.
19. Claims 122–127, 130–135, 137–139, 143–150, 152, 153, 168,
170–179, 185, 186, 211, and 213–223 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Ans. 28.
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20. Claims 128–130, 163, 166, and 215–220 stand rejected under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description and enablement requirements. Ans. 31.
21. Claims 121–123, 125–133, 136, 137, 140–146, 153–158,
163–186, 188–212, and 214–223 stand rejected under 35 U.S.C. § 112,
second paragraph as indefinite. Id.
ANALYSIS
Hindsight
Appellant makes a blanket argument against all of the rejections at
issue for alleged use of improper hindsight. See, e.g., Reply Br. 2. As the
Examiner correctly points out, "[t]his argument is not persuasive because the
patent owner misapprehends and misapplies the prohibition against
hindsight reconstruction." Ans. 38. Appellant's contention essentially takes
issue with the Examiner's use of a prior Board decision on a related patent
and using that prior decision to interpret certain claim limitations. See Reply
Br. 2. According to the Appellant, the Examiner "introduced ex post
arguments and resolutions from the inter partes reexamination of the '703
patent," and this amounts to improper hindsight. Reply Br. 3. As the
Examiner states, "the examiner's fact finding with respect to interpretation of
the claims in the instant proceeding is in keeping with the fact finding of the
BPAI [now PTAB], and such consistency is not only appropriate but
required when, as here, the claims of the patent owner's related Patent No.
6,213,703 recite the very same 'formatting means for formatting the book's
content into a book distribution'" and "the disclosure of Patent No. 6,213,703
is identical to the disclosure of Patent No. 6,012,890 as it relates to the
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'formatting means.'" Ans. 39. Because the Appellant has misapplied the
concept of hindsight to the Examiner's rejections, we find this argument
unpersuasive.
Ground 1
The Appellant argues that Ross fails to teach the "formatting means"
and the "receiving means" of claims 6. Appellant does not separately argue
claims 26, 61, 66, 75, and 107 subject to this rejection and so all claims
stand or fall with claim 6. The Appellant apparently confuses what his
Specification discloses as possible embodiments with what the claim means
under § 112, sixth paragraph. See, e.g., App. Br. 11–12. We agree with the
Examiner's detailed explanation of the proper construction of Appellant's
claims. Ans. 2–8.
Regarding the specific terms at issue, the Examiner states, and we
agree, that "when properly construed, [formatting means] requires only an
electronic device for processing electronic data, such as a computer, having
software for formatting an electronic text file corresponding to a book's
content and distributing the formatted text file to a printer, wherein the
formatting data determines at least one of the paper size, the font size, and
the font type." Ans. 41–42. We also agree that the Appellant "seeks to
impermissibly narrow the scope of the claims when neither the disclosure
nor the claims of Patent No. 6,012,890 are so limiting." Ans. 41.
With respect to the "receiving means," we agree with the Examiner
that "the rejected claims are not limited to a system that stores all the book
data remotely and uses 'receiving means' to receive the files downloaded
from a different place, with the book data stored remotely in an unformatted
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condition and then received by a receiving means and held while the file is
formatted and reformatted by the customer" as argued by the Appellant.
Ans. 42; App. Br. 16–18. We find no error in the Examiner's interpretation
as requiring "only an electronic device for receiving and storing electronic
data, such as a computer having a hard disk drive, with the data being in the
form of an electronic text file corresponding to a book's content." Ans. 43.
Accordingly, we are not persuaded of error in the Examiner's construction,
nor that Ross fails to teach these limitations when properly construed.
Based upon these claim constructions, which we endorse, the
Examiner finds that all of the elements of claim 6 are met by Ross. Ans. 8-
9. As the Examiner further explains regarding the formatting means:
Ross teaches the claimed "formatting means for formatting the
book's content into a book distribution" because Ross' system
for on-demand printing of books comprises a master
microcomputer 18 having software that responds to a user's
purchase request by retrieving a book's text and graphic cover
from storage disks 20, controlling a page printer 26 to print the
book's text on paper sheets in the same format as the original
publisher's printing, and controlling a paper cutter 52 to reduce
the size of the printed paper sheets to the desired dimension.
See page 3, lines 7-24; page 9, lines 4-11; page 14, line 12 to
page 15, line 19. The book's text and graphic cover are stored in
a specified electronic format on the storage disks 20. See page
10, lines 22-26. The page printer 26 is comprised of a plurality
of laser printers that print on both sides of the paper sheets in a
double page/double side printing, i.e., two pages printed on
each side of each sheet. See page 7, lines 19-34; page 14, line
35 to page 15, line 6; page 17, lines 26-31. The page printer can
also print on three different paper sizes. See page 7, lines 28-34.
Thus, in controlling the page printer 26 to print the book's text
on paper sheets in the same format as the original publisher's
printing, the master microcomputer 18 necessarily transmits
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formatting data to the page printer 26 to specify the format
(paper size, font size, font type, etc.) in which the paper sheets
are to be printed, and to select between the printer's different
paper sizes. Therefore, the master microcomputer 18 functions
as a formatting means for formatting the book's content into a
book distribution".
Ans. 42. The Examiner also explains in detail how each of the remaining
elements is taught by Ross. See Ans. 42-43.
The Patent Owner's arguments directed to its use of "formatting" in
the Specification of the ’890 to describe selection of paper size, font size and
type (see, e.g., App. Br. 11) are more directed towards the described "user
inter action means" or "distribution means" also described therein as
addressed by the Examiner. Ans. 5–6. Thus, we agree that Ross sufficiently
teaches the elements as construed by the Examiner and therefore sustain the
Examiner's rejection of claim 6 as well as the other claims subject to this
ground.
Objective Indicia of Nonobviousness
The Appellant argues that the Examiner failed to properly consider the
presented evidence of nonobviousness. See, e.g., Reply Br. 9–18. Contrary
to this assertion, the Examiner provided a detailed discussion of the
consideration of evidence of secondary considerations and found Appellant's
evidence lacking. Ans. 21–28. We agree with the Examiner's analysis and
adopt the findings and conclusions regarding secondary considerations of
obviousness as our own. As such we do not find this argument persuasive.
Wallace as Prior Art
The Appellant argues that Wallace is not proper prior art because it
lists a copyright date of 1997, which would disqualify it as prior art under
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35 U.S.C. § 102(b). See Reply Br. 22. The Appellant also argues that the
Examiner's use of a website listing a publication date for Wallace in 1996 is
improper because the website itself was not operational as of the publication
of Wallace and thus, cannot be used as evidence. See App. Br. 29. First, we
observe that each of the rejections that utilize Wallace as prior art
alternatively relies on Lindsay or Fenton in the place of Wallace. Thus, the
prior art status of Wallace is not determinative as to the patentability of the
rejected claims. Nonetheless, to any extent that the Examiner's reliance on
these alternative prior art references differ from that of Wallace, we address
the Patent Owner's arguments.
As to the alleged impropriety of using the website listing of the
publication as evidence, it is irrelevant that the website was not in operation
at the time of the publication of Wallace. Wallace is the prior art that must
be dated and the website is merely evidence of Wallace being published in
1996, earlier than its copyright of 1997. Whether the website operated in
1999 or 2015, if it substantiates a publication date of Wallace as being in
1996, then it may be properly used as evidence.
As to the publication date itself, despite listing a copyright of 1997,
even Wallace itself bears evidence of publication in 1996. In this sense,
Wallace itself corroborates the publication date given by the website. At the
bottom of the page listing the copyright, there is information regarding the
Library of Congress Cataloging–in–Publication Data as shown below:
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Wallace lists a Library of Congress classification "Z249.3.W35 1996" as
well as "96–25219" in the Library of Congress data. Alone these numbers
do not substantiate a publication in 1996, but they do corroborate the finding
by the Examiner that Wallace was published prior to 1997 based on the other
evidence. Furthermore, as noted by the Examiner, "the CAFC found that the
patent owner admitted in the record that the Wallace reference was
published on 16 December 1996, and also found that this fact was supported
by the copyright registration of Wallace which indicates that the reference
was published on December 16, 1996 ([CAFC] Appeal 2013–1194, Opinion
at p. 6–11)." Ans. 45. Accordingly, we agree with the Examiner that it is
already settled that Wallace was published at least as early as December 16,
1996, which qualifies it as prior art at least under 35 U.S.C. § 102(a).
Provisional Application
The Appellant also asserts that Wallace and Fenton do not qualify as
prior art because the claims are supported by an earlier Provisional
Application (60/028,068), and thus, the claims are entitled to an earlier
priority date. See App. Br. 29–32. We agree with the Examiner that while
the provisional application discusses "formatting means," "printing means,"
and "cutting means," the provisional does not properly disclose the detail
contained in the actual patent application or in the claims for the reasons
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already articulated by the Examiner, and thus, is insufficient to entitle the
claims at issue to the earlier priority date. See Ans. 45–47.
Rejections under 35 U.S.C. § 112
In neither the Appeal Brief nor the Reply Brief does the Appellant
provide any argument against the § 112 rejections. Accordingly, we
summarily affirm these rejections as stated by the Examiner.
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1–4, 6, 7, 9–11, 13–24, 26, 27, 29–31, 33–36, 38–40, 48, 50–53,
61–67, 75, 76, 78–82, 84–86, 88–90, 100, 102–105, 107, 108, 115, 117–150,
152–158, 163–186 and 188–223.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

pgc

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Victor Manuel Celorio Garrido
12300 56th Avenue, NW
Gainesville FL. 32653

Polster, Lieder, Woodruff & Lucchesi, LC
12412 Powerscourt drive
Suite 200
St. Louis, MO 63131-3615