Ex Parte 6213703 et al

Board of Patent Appeals and Interferences

Mar 28, 2012

95000393 (B.P.A.I. Mar. 28, 2012)

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.
95/000,393 11/11/2008 6213703 CEL.100C2XC1D1 9167
7590 03/28/2012
VICTOR MANUEL CELORIO GARRIDO
12300 N.W. 56TH AVE.
GAINESVILLE, FL 32653
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

BOB HOLT
Requester, Appellant, Cross-Respondent

v.

VICTOR MANUEL CELORIO GARRIDO.
Patent Owner, Respondent, Cross-Appellant
________

Appeal 2012-000170
Inter partes Reexamination Control 95/000,393
United States Patent 6,213,703 B1
Technology Center 3900
____________

Before RICHARD TORCZON, BIBHU R. MOHANTY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-000170
Reexamination Control No. 95/000,393
Patent 6,213,703 B1

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Patent Owner, Victor Manuel Celorio Garrido, (hereinafter “Patent
Owner”) appeals1 under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s
decision to reject claims 1-9, 11-18, 20-33, 36-61, 63-102, and 104-105,
with claims 10, 19, 34, 35, 62, and 103 having been confirmed.2 Third-Party
Requester, Bob Holt, (hereinafter “Requester”) cross-appeals under 35
U.S.C. §§ 134(c) and 315(b) from the Examiner’s decision to not adopt
various proposed rejections.3 We have jurisdiction under 35 U.S.C. §§ 134
and 315.
With respect to Patent Owner’s Appeal, we AFFIRM.
With respect to Requester’s Cross-Appeal, we AFFIRM-IN-PART
and REVERSE-IN-PART, designating our reversal as NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.77(b).

STATEMENT OF THE CASE
This proceeding arose from a corrected request for inter partes
reexamination filed by Jeffrey Sonnabend on behalf of Bob Holt, Requester,
on November 11, 20084, of United States Patent 6,213,703 B1 (“the '703

1 See Corrected Patent Owner’s Appeal Brief filed September 14, 2010,
hereinafter “PO App. Br.,” at 1.
2 See Right of Appeal Notice, mailed December 10, 2009, hereinafter
“RAN;” see also Corrected Requester’s Respondent Brief filed September
30, 2010, hereinafter “TPR Resp. Br.”
3 See Corrected Requester’s Appeal Brief filed September 13, 2010,
hereinafter “TPR App. Br.,” at 16-17; see also Corrected Patent Owner’s
Respondent Brief filed September 14, 2010, hereinafter “PO Resp. Br.”
4 In a Notification of Incomplete Inter Partes Reexam Request, mailed
October 15, 2008, the original request for inter partes reexamination, filed
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patent”), issued to Victor Manuel Celorio Garrido on April 10, 2001, based
on U.S. Application No. 09/559,500, filed April 27, 2000. The '703 patent
claims priority as a continuation-in-part to U.S. Application No. 09/353,006,
filed July 13, 1999, now abandoned, which claims priority to both U.S.
Provisional Application No. 60/130,993, filed April 4, 1999 and PCT
Application Serial No. PCT/US98/20421, designating the United States,
filed Sep. 29, 1998, which is a continuation-in-part to U.S. Application No.
08/943,175, filed Oct. 3, 1997, now U.S. Patent No. 6,012,890 (“the '890
patent”), issued January 11, 2000, claiming priority to U.S. Provisional
Application No. 60/028,068, filed Oct. 4, 1996.

THE INVENTION
Patentee’s invention relates to a system and method for producing and
distributing books on-demand. (Col. 2, ll. 66-67.) Specifically, the
invention describes an electronic bookstore vending machine which receives
the contents of books in the form of an electronic text file from a central
distribution unit. The electronic bookstore then prints and binds a copy of
the book. (Col. 3, ll. 4-7.)
Exemplary claims 1 and 12 on appeal read as follows:
1. A system for producing and distributing books, comprising:
an input means for inputting requests for one or more books,
a plurality of printing and binding means for printing and
binding a book upon receipt of data corresponding to a book's content
and control data, and

August 26, 2008, was vacated for failure to comply with the requirements
set forth in 37 C.F.R. § 1.915(b).
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at least one distribution unit which receives a request for a
selected book and causes said data corresponding to a book’s content
and control data to be transferred to said printing and binding means,
wherein at least one of said at least one distribution unit and at least
one of said plurality of printing and binding means are geographically
separated.

12. A method for producing and distributing books, comprising
the following steps:
creating a plurality of electronic text files corresponding to a
plurality of books such that each electronic text file corresponds to
one’s book content;
storing said plurality of text files;
allowing a customer to order one or more of said plurality of
books; and
transmitting the electronic text files corresponding to the
ordered book(s) to a device capable of printing and binding said
ordered book(s),
wherein said device capable of printing and binding said
ordered book(s) comprises:
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; and
a glueing means for applying glue to a spine of the book block,
wherein said ordered books are printed and bound such as to
allow the customer to pick-up the ordered book(s).

(PO App. Br. 32-34, Claims Appendix.)
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The prior art references relied upon by the Examiner in rejecting the
claims are:
Rosenberg US 3,575,501 Apr. 20, 1971
Meyer, Jr. et al. US 4,140,733 Feb. 20, 1979
Lewis US 4,653,972 Mar. 31, 1987

Howard M. Fenton and Frank J. Romano, On-Demand Printing: The
Revolution in Digital and Customized Printing, 1995, hereinafter “Fenton.”
Jim Wallace, Exploring IBM Print On Demand Technology, 1997,
hereinafter “Wallace.”
The Power of Print on Demand, Xerox Corp., 1994, hereinafter
“Xerox.”
Patent Owner relied on several exhibits and declarations in rebuttal to
the Examiner’s rejections discussed below.

Additionally, the Requester relied upon the following prior art
reference in their non-adopted rejections:
Jim Hamilton, The Print-on-Demand Opportunity: Technology,
Products & the Business, 1996, hereinafter “CAP Ventures.”

The Examiner adopted and Patent Owner Appeals the rejections as
follows:
A. Claims 1, 3, 9, 20, 22-27, 32-33, 37, 39-50, 52, 54-61, and 103
rejected under 35 U.S.C. § 102(b) as anticipated by Fenton and claims 9, 25,
33, 39-48, 51, 53-55, 57, and 58 rejected under 35 US.C. § 103(a) as obvious
over Fenton.
B. Claim 5 rejected under 35 U.S.C. § 102(b) as anticipated by
Fenton.
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C. Claim 6 rejected under 35 U.S.C. § 102(b) as anticipated by
Fenton.
D. Claim 8 rejected under 35 U.S.C. § 102(b) as anticipated by
Fenton.
E. Claim 11 rejected under 35 U.S.C. § 102(b) as anticipated by
Fenton.
F. Claim 5 rejected under 35 U.S.C. § 103(a) as obvious over Fenton.
G. Claim 7 rejected under 35 U.S.C. § 103(a) as obvious over Fenton.
H. Claim 8 rejected under 35 U.S.C. § 103(a) as obvious over Fenton.
I. Claim 11 rejected under 35 U.S.C. § 103(a) as obvious over Fenton
and Meyer.
K. Claims 1, 3-4, 22, 27, 37, 52, 59, and 61 rejected under 35 U.S.C. §
102(b) as anticipated by Wallace, claim 9 rejected under 35 U.S.C. § 103(a)
as obvious over Wallace and Rosenberg, claims 25, 33, 39-48, 51, 53-55, 57,
and 58 rejected under 35 U.S.C. § 103(a) as obvious over Wallace, and
claims 28, 38, 63-100, and 102 rejected under 35 U.S.C. § 103(a) over
Wallace, Rosenberg, and Lewis.
L. Claim 5 rejected under 35 U.S.C. § 102(b) as anticipated by
Wallace.
M. Claim 8 rejected under 35 U.S.C. § 102(b) as anticipated by
Wallace.
N. Claims 4 and 7 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace.
O. Claims 2 and 6 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace and Lewis.
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P. Claim 11 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace, Meyer, and Lewis.
Q. Claims 12-16 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace, Rosenberg, and Lewis.
R. Claim 17 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace, Rosenberg, Lewis, and Meyer.
S. Claim 18 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace, Rosenberg, Lewis, and Fenton.
T. Claim 21 rejected under 35 U.S.C. § 102(b) as anticipated by
Wallace.
U. Claim 31 rejected under 35 U.S.C. § 102(b) as anticipated by
Wallace.
V. Claim 36 rejected under 35 U.S.C. § 102(b) as anticipated by
Wallace.
W. Claim 49 rejected under 35 U.S.C. § 102(b) as anticipated by
Wallace.
X. Claim 50 rejected under 35 U.S.C. § 102(b) as anticipated by
Wallace.
Y. Claim 56 rejected under 35 U.S.C. § 102(b) as anticipated by
Wallace.
Z. Claims 29 and 32 rejected under 35 U.S.C. § 103(a) as obvious
over Wallace and Rosenberg.
AA. Claim 30 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace and Rosenberg.
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BB. Claims 1, 3, 9, 20, 22-27, 29, 32, 33, 39-50, 52, and 54-61
rejected under 35 U.S.C. § 102(b) as anticipated by Xerox, claims 25, 39-48,
51, 53-55, 57, and 58 rejected under 35 U.S.C. § 103(a) as obvious over
Xerox, and claim 103 rejected under 35 U.S.C. § 103(a) as obvious over
Xerox, Rosenberg, and Lewis.
CC. Claim 5 rejected under 35 U.S.C. § 102(b) as anticipated by
Xerox.
DD. Claim 8 rejected under 35 U.S.C. § 102(b) as anticipated by
Xerox.
EE. Claim 7 rejected under 35 U.S.C. § 103(a) as obvious over Xerox.
FF. Claims 2 and 6 rejected under 35 U.S.C. § 103(a) as obvious over
Xerox and Lewis and claim 11 rejected under 35 U.S.C. § 103(a) as obvious
over Xerox, Meyer, and Lewis.
GG. Claims 1, 3, 9, 22, 23, 27, 29, 49, and 52 rejected under 35 U.S.C.
§ 102(b) as anticipated by Rosenberg.
HH. Claim 2 rejected under 35 U.S.C. § 102(b) as anticipated by
Rosenberg.
II. Claim 20 rejected under 35 U.S.C. § 102(b) as anticipated by
Rosenberg.

The Examiner refused to adopt, and Requester Cross-Appeals the non-
adoption of the proposed rejections as follows:
A1. Claims 2, 4, 12-18, 21, 28, and 36 rejected under 35 U.S.C.
§ 102(b) as anticipated by Fenton.
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B1. Claims 10, 15, 19, 29-31, 34, and 35 are rejected under 35 U.S.C.
§ 103(a) as obvious over Fenton.
C1. Claim 17 rejected under 35 U.S.C. § 103(a) as obvious over
Fenton and Meyer.
D1. Claims 12, 38, 62-102 rejected under 35 U.S.C. §103(a) as
obvious over Fenton and Rosenberg.
E1. Claims 4, 10, and 12-61 rejected under 35 U.S.C. §103(a) as
obvious over Fenton and Xerox.
F1. The rejections under 35 U.S.C. §§ 102(a) and 103(a) made with
respect to the CAP Ventures reference based upon the Garrido Declaration,
filed October 27, 2009, under 37 C.F.R. § 1.131.5

5 Further to the issue raised by Requester, the following rejections were
withdrawn by the Examiner pursuant to the RAN (See RAN 69-72; see also
ACP 42-52), and if we find the Requester’s arguments to be persuasive,
these rejections will be entered as new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.77(b). Specifically, the Examiner rejected
claims 1, 3, 5, 6, 8, 9, 20-25, 27, 32, 33, 36, 37, and 56-59 under 35 U.S.C.
§ 102(a) as being anticipated by CAP Ventures, claim 2 under 35 U.S.C.
§ 103(a) as obvious over CAP Ventures and Lewis, claim 11 under 35
U.S.C. § 103(a) as obvious over CAP Ventures and Meyer, claims 12-19,
28, 38, 62, 63-71, 74-91, 97(1), 98(1), 97(2), 98(2), 99, 100 and 103 under
35 U.S.C. § 103(a) as obvious over CAP Ventures, Lewis, and Fenton, and
claims 26, 39-48, 54-55, 57, and 58 alternatively under 35 U.S.C. § 103(a)
as obvious over CAP Ventures in the ACP. (ACP 42-52.) We refer to the
claims of these rejections as the Examiner has referred to them in the ACP
and RAN. (RAN 69-72.)
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ISSUES6
Patent Owner Appeal
Issue 1 - Rejections A-I:
Does Fenton disclose all the limitations of claims 1, 3, 5, 6, 8, 9, 11,
20, 22-27, 32-33, 37, 39-50, 52, 54-61, and 103 under 35 U.S.C. § 102(b),
does Fenton disclose all the limitations of claims 5, 7-9, 25, 33, 39-48, 51,
53-55, 57, and 58 under 35 US.C. § 103(a), and does the combination of
Fenton and Meyer disclose the limitation of claim 11 under 35 U.S.C.
§ 103(a)?
Issue 2 - Rejections K-P, T-Y, Z, and AA:
Did the Examiner err in relying on Wallace as a prior art reference
under 35 U.S.C. § 102(b), and as such err in relying on Wallace with respect
to rejections K-P, T-Y, Z, and AA?
Issue 3 - Rejections Q, R, S:
Does the combination of Wallace, Rosenberg, and Lewis disclose all
the limitations of claims 12-16, 38, 63-100, and 102 under 35 U.S.C.
§ 103(a), does the combination of Wallace, Rosenberg, Lewis, and Meyer
disclose the limitation of claim 17 under 35 U.S.C. § 103(a), and does the
combination of Wallace, Rosenberg, Lewis, and Fenton disclose the
limitation of claim 18 under 35 U.S.C. § 103(a)?

6 We have considered in this decision only those arguments that the Patent
Owner and the Requester actually raised in the Briefs. Arguments which the
Patent Owner or the Requester could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).
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Issue 4 - Rejections BB-FF:
Does Xerox disclose all the limitations of claims 1, 3, 5, 8, 9, 20, 22-
27, 29, 32, 33, 39-50, 52, and 54-61 under 35 U.S.C. § 102(b), does Xerox
disclose all the limitations of claims 7, 25, 39-48, 51, 53-55, 57, and 58
under 35 U.S.C. § 103(a), does the combination of Xerox and Lewis disclose
all the limitations of claims 2 and 6 under 35 U.S.C. § 103(a), does the
combination of Xerox, Meyer, and Lewis disclose the limitation of claim 11
under 35 U.S.C. § 103(a), and does the combination of Xerox, Rosenberg,
and Lewis disclose the limitation of claim 103 under 35 U.S.C. § 103(a)?
Issue 5 – Rejections GG-II
Does Rosenberg disclose all the limitations of claims 1-3, 9, 20, 22,
23, 27, 29, 49, and 52 under 35 U.S.C. § 102(b)?

Requester Cross-Appeal
Issue A
Did the Examiner err in not adopting the rejection of claims 2, 4, 12-
18, 21, 28, and 36 as anticipated by Fenton under 35 U.S.C. § 102(b)?
Issue B
Did the Examiner err in not adopting the rejection of claims 10, 15,
19, 29-31, 34, and 35 as obvious over Fenton under 35 U.S.C. § 103(a)?
Issue C
Did the Examiner err in not adopting the rejection of claim 17 as
obvious over Fenton and Meyer under 35 U.S.C. § 103(a)?
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Issue D
Did the Examiner err in not adopting the rejection of claims 12, 38,
62-102 as obvious over Fenton and Rosenberg under 35 U.S.C. §103(a)?
Issue E
Did the Examiner err in not adopting the rejection of claims 4, 10, and
12-61 as obvious over Fenton and Xerox under 35 U.S.C. §103(a)?
Issue F
Did the Examiner err in determining the Garrido Declaration, filed
October 27, 2009, persuasive to antedate the CAP Ventures reference, and
thus err in withdrawing the CAP Ventures rejections discussed supra?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Claim Interpretation
C1. The '703 patent describes that a “distribution means 7”:
distributes the information to the printing means 8
regarding the size of each sheet of paper, number of
pages to print onto each sheet of paper, ways of
distributing said pages into the sheets of paper,
numbering of said pages, order in which they are to be
printed, type and size of fonts to be used, design of the
printed matter, graphics to be included, etc. Some of this
information, for example paper size, font size, and type,
may be changed by the customer according to the
customer's needs.
(Col. 9, ll. 37-46.)
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C2. The '703 patent describes that formatting data can be “for
example, paper size, font size, and type . . . .” (Col. 7, ll. 38-43; see
also Col. 9, ll. 42-46.)
C3. The ordinary and customary meaning of “formatting” in the
bookbinding art is “the shape and size of a book as determined by the
number of times the original sheet has been folded to form the
leaves.”7
C4. The '703 patent describes that a “user interaction means 6”
as “a touch screen display, a keyboard, a voice recognition system, or
any other system to allow a user to provide input and/or preview the
information pertaining to available books and/or preview the received
data.” (Col. 6, l. 66 – Col. 7, l. 3.)
C5. The ordinary and customary meaning of “distribute” is “to pass
out or deliver (mail, newspapers, etc.) to intended recipients.”8
C6. The '703 patent describes that a central distribution unit
(CDU) can store and/or access electronic text files at a plurality of
storage facilities. Additionally, upon receiving a book request, the
CDU can access and transmit the electronic text file to an appropriate
electronic bookstore (EBS). (Col. 3, ll. 7-13.)
C7. The '703 patent identifies “printer means 8” as a laser
printer. (Col. 7, ll. 50-51.)

7 Formatting Definition. Random House Dictionary, (2012),
http://dictionary.reference.com/browse/formatting (last visited February 28,
2012).
8 Distribute Definition. Random House Dictionary, (2012),
http://dictionary.reference.com/browse/distribute (last visited February 28,
2012).
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C8. The '703 patent refers to “electronic text files” as
“electronic text (bits) file.” (Col. 7, ll. 15-26 and 35-38.)
C9. The Authoritative Dictionary of IEEE Standards defines a
“bit” as “[a] contraction of the term ‘binary digit;’ a unit of
information represented by either a zero or a one.”9
C10. The Authoritative Dictionary of IEEE Standards defines a
“bit map” as “a block of memory that stores a raster image of pixels in
a device-specific format, in which the characteristics of each pixel are
determined by a set of bits.”10

Garrido Declaration
D1. The Garrido Declaration at issue was filed October 27,
2009.
D2. The Garrido Declaration states that a letter dated July 27,
1995, discusses that “the production of books will be local, and not
centralized as in InstaPrensa. That’s why we need a machine in each
bookstore.” (Garrido Dec. 2; see also Ex. D.)
D3. The Garrido Declaration additionally states that a letter
dated July 27, 1995 discusses:
[w]hen a client requests a book, the file of that book will
be sent through the modem, will be printed locally with
the changes the customer requests (type of font,
personalize the cover, etc.) and will be delivered

9 Bit Definition. The Authoritative Dictionary of IEEE Standards Terms
Seventh Edition, (2000).
10 Bit map Definition. The Authoritative Dictionary of IEEE Standards
Terms Seventh Edition, (2000).
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instantly. In that aspect we will continue to work with
the customers just as before. The client will design how
he wants his book printed. Is he wants it with large
letters or small ones, etc. [sic]
(Ex. F. Garrido Dec. 2; see also Ex. D.)
D4. Garrido states “after the sheets of paper are printed they
need to be moved to an in line cutter which will cut the paper to the
size of the desired book.” (Garrido Dec. 2; see also Ex. C.)

Fenton
F1. Fenton is a book which summarizes the concepts,
technologies, and applications of on-demand printing. (P. 53-54.)
F2. Fenton describes an integrated hardware and software
system which has the ability to scan original documents at a personal
computer using the Xerox DocuCM 620 scanner and store the
digitized originals on a jukebox server which can be recalled, updated,
and reprinted on-demand. (P. 54.)
F3. Fenton describes that its system allows a user to index,
search, and print documents on a DocuTech Publisher or DocuPrint
printer which can be bound and assembled in-line. (P. 54, 121, 122.)
F4. Fenton further describes that the network server runs
TCP/IP software which links the document creation and storage
system to the production printer located at remote locations. (P. 54.)
F5. Fenton describes that users can distribute and print
documents such as books, manuals, brochures, price lists, and
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marketing materials to remote DocuTech Network Printers over a
Wide Area Network (WAN). (P. 108-09.)
F6. Fenton describes that the network server enables documents
and work tickets created on network workstations to be transferred in
electronic form for printing on the DocuTech. (P. 120.)
F7. Fenton describes that the controller stores and manipulates
scanned images (i.e., scaling, rotating, cropping, masking, sharpening,
etc.), but does not provide text creation or editing features. (P. 119.)

Wallace
W1. The Wallace reference describes IBM’s Print On Demand
Technology and displays a Copyright notice of “1997 by Maximum
Press.”
W2. Wallace describes that the “the format of the data stored in
POD Library doesn’t matter. It may be job tickets, source files from
the application, PostScript output from the application, TIFF (Tag
Image File Format) data, or even printer-specific RIP (Raster Image
Processor) formats.” (P. 39.)
W3. Wallace describes that its “printing system also includes
standard interfaces for preprocessing and postprocessing attachments
to perform more sophisticated output handling than the normal output
stacker. This could include attachments to fold, trim, bind, and
shrinkwrap documents coming out of the printer.” (P. 64.)

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Xerox
X1. Xerox is a book which describes Xerox Corporation’s print
on-demand hardware and software technology. (P. x.)
X2. Xerox describes that “book printing requests” are submitted
from the Xerox Documents On Demand (XDOD) viewing station
which is depicted as a personal computer and includes a keyboard and
mouse. (P. 19.)
X3. Xerox describes the advantages of distributing and printing
using print on-demand DocuTech technology. (P. x.)
X4. Xerox describes that “[t]he DocuTech Network Publisher is
a network-integrated publishing system that brings together high-
resolution digital scan-ning, [sic] electronic image retrieval, storage
and manipulation, high-speed laser printing and in-line finishing.” (P.
21.)
X5. Xerox describes that the DocuTech Network Publisher
includes “in-line collating, stitching or thermal-binding.” (P. 30.)
X6. Xerox describes that color-page inserts require the Network
Publisher and the Xerox 5775 Digital Color Copier/Printer. (P. 30.)
X7. Xerox describes that the goal of its on-demand printing
system is to provide quality, global, distributed printing and
distribution to remote locations. (P. 63.)
X8. Xerox describes that a user can recall a title from the
optical jukebox document server and send it to the Network Publisher.
(P. 18.)

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CAP Ventures
V1. The CAP Ventures reference displays a Copyright notice of
“1996 by CAP Ventures.”

Lewis
L1. Lewis is directed to a bookbinding machine which
describes a moveable book clamp 4. (Col. 2, ll. 5-13.)

PRINCIPLES OF LAW
37 C.F.R. § 1.131
The Board evaluates a declaration submitted pursuant to 37 C.F.R.
§ 1.131 on its merits, considering the evidence relied upon in light of the
arguments explaining why the evidence is sufficient. The Board has broad
discretion in weighing declaration evidence. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); In re Inland Steel, Co., 265 F.3d
1354, 1366 (Fed. Cir. 2001).

Claim Construction
The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989). We determine the scope of the claims in patent
applications “not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). In this
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regard, “claims are not to be read in a vacuum, and limitations therein are to
be interpreted in light of the specification in giving them their broadest
reasonable interpretation.” In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976).
We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim. For
example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment”). The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
Although a patent applicant is entitled to be his or her own
lexicographer of patent claim terms, the applicant must do so by placing
such definitions in the specification with sufficient clarity to provide a
person of ordinary skill in the art with clear and precise notice of the
meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) (although an inventor is free to define the specific terms
used to describe the invention, this must be done with reasonable clarity,
deliberateness, and precision; where an inventor chooses to give terms
uncommon meanings, the inventor must set out any uncommon definition in
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some manner within the patent disclosure so as to give one of ordinary skill
in the art notice of the change).

Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). Analysis of whether a claim is patentable over the prior art
under 35 U.S.C. § 102 begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the prior art.

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

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ANALYSIS
PATENT OWNER APPEAL
ISSUE 1
REJECTION A
Claims 1, 3, 9, 20, 22-27, 32-33, 37, 39-50, 52, 54-61, and 103
rejected as anticipated by Fenton.
Independent claim 1
Patent Owner argues that Fenton fails to disclose “a system for
producing ‘an input means for inputting requests for one or more books.’
[sic]” (Po App. Br. 7.) Specifically, Patent Owner argues that Fenton
discloses inputting requests for the printing of a client’s document, but fails
to disclose inputting requests for books, as presently claimed. (PO App. Br.
7.) However, Patent Owner further states that Fenton “has nothing to do
with distributing a book, but, rather, with just producing the book.” (PO
App. Br. 7.)
We are not persuaded by Patent Owner’s arguments and are unclear as
to how Patent Owner can argue that the Fenton reference is related to
“documents,” not books, but then go on to state that Fenton produces
“books.” Nevertheless, Fenton discloses a personal computer which we find
anticipates the “input means” recited by claim 1. Specifically, we find that
Fenton’s personal computer is equivalent structure to the “user interaction
means” which Patent Owner identifies as the corresponding structure for the
“input means.” (FF F1, C5.) Specifically, the '703 patent describes that the
“input means” is “a touch screen display, a keyboard, a voice recognition
system, or any other system to allow a user to provide input and/or preview
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the information pertaining to available books and/or preview the received
data.” (FF C2.) Accordingly, we find that the personal computer disclosed
in Fenton is capable of “inputting request[s] for one or more books,” as
presently recited by independent claim 1. See Kemco Sales Inc. v. Control
Papers Co., Inc., 208 F.3d 1352, 1364 (Fed. Cir. 2000).
While Patent Owner admits that Fenton discloses inputting requests
for a “document,” Patent Owner argues that a “document” is not the same as
a “book.” However, we find that Patent Owner has failed to provide any
persuasive evidence from the '703 patent’s Specification or a dictionary
definition which would serve to distinguish these terms. As noted above,
Patent Owner states that the Fenton reference discloses producing books.
(See PO App. Br. 7.) Notwithstanding the absence of an express definition
for the terms, we find that Fenton describes an on-demand printing system
which allows users to distribute and print documents such as books,
manuals, brochures, price lists, and marketing materials. (FF F5.) Thus, we
find one skilled in the art would readily understand that the “documents”
described in the Fenton reference encompass “books,” as presently claimed.
Additionally, Patent Owner’s contention that Fenton produces books,
but fails to distribute books is unpersuasive as it is relies on the preamble of
independent claim 1 as limitation. Independent claim 1 recites that the
system is “for producing and distributing books.” However, the body of
claim 1 defines a structurally complete invention, and as such, we find that
the preamble of claim 1 is not limiting. See Symantec Corp. v. Computer
Assoc. Int’l, 522 F.3d 1279, 1288 (Fed. Cir. 2008). Moreover, we are unable
to identify any term in the body of the claim for which the preamble is vital
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to understanding, and thus, we find that the preamble is not essential to give
life, meaning, or vitality to claim 1. Accordingly, Patent Owner’s contention
is not commensurate in scope with independent claim 1. See Catalina Mktg.
Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999)).
Furthermore, even if we do give weight to the preamble, it is a
statement of intended use. Fenton describes an on-demand printing system
which details hardware and software for distributing and printing documents
such as books (FF F1, F2, F5), in a manner commensurate with the scope of
the claim, and as such is capable of “producing and distributing books” as
recited by the preamble of independent claim 1. Therefore, in the absence of
a special definition for the term “distribute” in the '703 patent or in Patent
Owner’s brief, we define the term to mean “to pass out or deliver (mail,
newspapers, etc.) to intended recipients” (FFC5), and conclude that the
Fenton reference implicitly discloses this recitation.
Accordingly, we find that Patent Owner has failed to distinguish the
subject matter of independent claim 1 from Fenton based on any structural
differences, such that Patent Owner has persuaded us that Fenton is not
capable of performing the functionally defined limitations of the claimed
system or the recitation of the preamble. “[A]pparatus claims cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
Next, Patent Owner contends that the Fenton reference fails to
disclose that a student (i.e., user) actually performs the step of “inputting a
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request to the system . . . via an input means as claimed in claim 1.” (PO
App. Br. 7-8.) While we disagree with Patent Owner’s contention, we are
not of the opinion that the claim actually requires a specific type of user to
input a request into the system. Instead, to anticipate the claim, Fenton need
only disclose an “input means” capable of performing the intended function
of “inputting requests for one or more books,” discussed supra. A patent
applicant is free to recite features of an apparatus either structurally or
functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). “Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In terms
of claim 1, the request could come, for example, from a store clerk or
technician assisting an ultimate customer. Accordingly, Patent Owner’s
argument is not persuasive.
Moreover, Patent Owner argues that Fenton fails to disclose “a
plurality of printing and binding means for printing and binding a book upon
receipt of data corresponding to a book’s content and control data,” as
presently recited by independent claim 1. (PO App. Br. 8.) While Patent
Owner concedes that Fenton does disclose “a remote ‘DocuTech Publisher’
or ‘DocuPrint Printer’ for printing” and “a variety of binders and finishers
that can be used to bind or finish the printed pages of the scanned
document,” Patent Owner argues that “the Requester does not cite teaching
of a plurality of printing and binding means.” (emphasis original) (PO App.
Br. 8) We are not persuaded by Patent Owner’s argument and are unclear as
to what distinction Patent Owner is trying to create between the “plurality of
printing and binding means” of independent claim 1 and the printers and
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binders located at remote locations in the Fenton reference. (FF F4.) For
example, the Patent Owner does not identify specific corresponding
structure in the patent disclosure.
The Fenton reference describes printing documents on a DocuTech
Publisher or DocuPrint Printer which can be bound and assembled in-line.
(FF F3.) Fenton additionally describes that its on-demand printing system
runs over a WAN using TCP/IP software which links the document creation
and storage system to production printers located at remote locations. (FF
F4, F5.) These structures appear to be equivalent to the broadly described
means in the patent disclosure. In any case, the Patent Owner’s brief does
not identify a structural difference. Accordingly, since Patent Owner has
failed to differentiate the printing and binding means disclosed in Fenton
from the “printing and binding means” recited by claim 1, we find that
Fenton anticipates the “printing and binding means” of independent claim 1.
Additionally, we find that Fenton describes a “plurality of printing
and binding means” (emphasis added). Specifically, Fenton describes that
the Network Server connects the document creation and storage system to
production printers located at remote locations over a WAN (FF F4, F5),
which one skilled in the art would immediately recognize as more than one
printer and binder. Therefore, since Patent Owner has failed to provide
persuasive evidence showing otherwise, we find that Fenton discloses “a
plurality of printing and binding means” capable of “printing and binding a
book upon receipt of data corresponding to a book’s content and control
data,” as presently recited by independent claim 1.
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Still, Patent Owner asserts that Fenton fails to disclose “at least one
distribution unit which receives a request for a selected book and causes said
data corresponding to a book’s content and control data to be transferred to
said printing and binding means.” (PO App. Br. 8.) Specifically, Patent
Owner contends that in Fenton, it is the operator who sends the document to
the network server, rather than the network server receiving a request for a
selected book and causing the data corresponding to a book’s content and
control data to be transferred to said printing and binding means. (PO App.
Br. 9.) We cannot agree.
Fenton discloses a system which scans original documents at a
personal computer and stores the digitized originals on a jukebox server.
(FF F2.) This server enables documents created on network workstations to
be transferred in electronic form for printing at the printing and binding
means discussed supra. (FF F6.) Thus, we find that Fenton discloses at
least one distribution unit which receives a request for a selected book and
causes said data corresponding to a book’s content and control data to be
transferred to said printing and binding means.
Furthermore, we cannot agree with Patent Owner’s contention that it
is the system operator in Fenton that causes the book’s data to be transferred
to the printing and binding means and not the distribution unit. While we
can agree with Patent Owner that Fenton discloses that a “Job Ticket is sent
along with the document to the Network Server” (PO App. Br. 8; citing
P. 120), this does not prevent the instant limitation from reading on the
system disclosed in Fenton. The distribution unit language of independent
claim 1 is broad enough to read on either communication between a
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workstation and the printing and binding means or between both a
workstation and network server and the printing and binding means, and as
such, whether a job ticket is submitted along with a document or not, it is the
workstation which causes “data corresponding to a book’s content and
control data to be transferred to said printing and binding means,” and not
the operator. Therefore, Patent Owner’s argument is unpersuasive.
Additionally, Patent Owner argues that Fenton fails to disclose
“wherein at least one of said at least one distribution unit and at least one of
said plurality of printing and binding means are geographically separated.”
(PO App. Br. 9.) While Patent Owner acknowledges that the on-demand
printing system of Fenton communicates over a WAN and prints to remote
locations, Patent Owner asserts that this refers to the production printer
being at a remote location with respect to the document creation and storage
system, not “geographically separated,” as presently claimed. (PO App. Br.
9-10.)
We are not persuaded by Patent Owner’s argument and as discussed
supra, find that the “distribution unit” recited by claim 1 is broad enough to
read on either Fenton’s workstation or a combination of the workstation and
network server. Therefore, Patent Owner’s assertion supports the fact that
the document creation and storage system, which we interpret to be the
“distribution unit,” is geographically separated from the printing and binding
means disclosed in Fenton. Nevertheless, we find that the claim does not
necessarily require that the “at least one distribution unit” be geographically
separated from the “at least one of said plurality of printing and binding
means” so long as there is another “printing and binding means” at some
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location, geographically separated, from that “printing and binding means”
and that “at least one distribution unit.” Based upon this interpretation, we
find that Fenton at least discloses “a plurality of printing and binding means”
at remote locations connected by a WAN (FF F4, F5), and as such
anticipates the “geographically separated” limitation of independent claim 1.
Therefore, Patent Owner’s arguments are unpersuasive.

Dependent claims 3, 9, 20, 22-27, 32-33, 37, 39-50, 52, 54-61, and 103
Patent Owner does not separately argue claims 3, 9, 20, 22-27, 32-33,
37, 39-50, 52, 54-61, and 103, which depend from independent claim 1, and
so we sustain the rejection of claims 3, 9, 20, 22-27, 32-33, 37, 39-50, 52,
54-61, and 103 under 35 U.S.C. § 102(b) as anticipated by Fenton for the
same reasons we found as to claim 1 supra.
We note that claim 103 depends upon independent claim 12. The
Examiner withdrew the rejection of independent claim 12 under 35 U.S.C.
§ 102(b) as anticipated by Fenton, such that the rejection of 103 should have
also been withdrawn. However, as discussed in detail below, Requester has
persuaded us that the Examiner erred in not adopting the rejection of claim
12 as anticipated by Fenton under 35 U.S.C. § 102(b). (See Issue A, infra.)
For this reason we sustain the rejection of claim 103 under this same basis,
but in doing so, we denominate this determination as a new ground of
rejection. (37 C.F.R. § 41.77(b).)

Claims 9, 25, 33, 39-48, 51, 53-55, 57, and 58 rejected as obvious
over Fenton.
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Patent Owner does not separately argue claims 9, 25, 33, 39-48, 51,
53-55, 57, and 58, which depend from independent claim 1, and so we
sustain the rejection of claims 9, 25, 33, 39-48, 51, 53-55, 57, and 58 under
35 U.S.C. § 103(a) as obvious over Fenton for the same reasons we found as
to claim 1 supra.

REJECTION B
Dependent claim 5 rejected as anticipated by Fenton.
Patent Owner argues that Fenton fails to disclose “wherein the data
corresponding to the selected book’s content and control data transferred
from said at least one distribution unit to the printing and data binding means
includes formatting data,” as recited by claim 5. (PO App. Br. 10.)
Specifically, Patent Owner contends that Fenton discloses that the scanned
document is printed at a photo copier, and as such, there is no need for
Fenton to send formatting data. (PO App. Br. 10.)
We are not persuaded by Patent Owner’s argument and find that
formatting data as presently claimed would be transferred by the on-demand
print system disclosed in Fenton. Although the data corresponding to the
selected book’s content and control data are that of a scanned document, the
document would still have formatting data (such as paper size) embedded in
the electronic document transmitted from the distribution unit to the printing
and binding means, thus satisfying the recitation of claim 5.
Therefore, Patent Owner’s argument is unpersuasive.

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REJECTIONS C, D, E, G, H, I
Claims 6, 8, and 11 rejected as anticipated by Fenton, claims 7
and 8 rejected as obvious over Fenton, and claim 11 rejected as
obvious over Fenton and Meyer.
Patent Owner argues that the rejection of claims 6-8 and 11 should be
withdrawn based on their dependency on claim 2. (PO App. Br. 11-12.)
From the outset, we agree with Patent Owner that the Examiner erred in
maintaining the rejection of claims 6, 8, and 11 under 35 U.S.C. § 102(b) as
anticipated by Fenton, claims 7 and 8 under 35 U.S.C. § 103(a) as obvious
over Fenton, and claim 11 under 35 U.S.C. § 103(a) as obvious over Fenton
and Meyer, solely based on the Examiner’s decision to withdraw the
rejection of claim 2 as anticipated by Fenton. (RAN 9-10.) In other words,
the Examiner’s withdrawal of their rejections should have accompanied the
withdrawal of the rejection of claim 2.
However, as discussed in detail below, Requester has persuaded us
that the Examiner erred in not adopting the rejection of claim 2 as
anticipated by Fenton under 35 U.S.C. § 102(b). (See Issue A, infra.) In
light of this decision, we must sustain the Examiner’s decision to reject
claims 6, 8, and 11 under 35 U.S.C. § 102(b) as anticipated by Fenton,
claims 7 and 8 under 35 U.S.C. § 103(a) as obvious over Fenton, and claim
11 under 35 U.S.C. § 103(a) as obvious over Fenton and Meyer, but in doing
so, we denominate this determination as a new ground of rejection. (37
C.F.R. § 41.77(b).)
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REJECTION F
Dependent claim 5 rejected as obvious over Fenton
Affirmance of the anticipation rejection of claim 5 based on the
Fenton renders it unnecessary to reach the propriety of the Examiner’s
decision to reject that same claim on a different basis. Cf. In re Gleave, 560
F.3d at 1338 (not reaching other rejections after affirming an anticipation
finding).

ISSUE 2
REJECTIONS K-P, T-Y, Z, and AA
Independent claim 1 rejected as anticipated by Wallace and dependent
claims 2-9, 11, 21, 22, 25, 27, 29-33, 36, 37, 39-61 rejected by Wallace,
or in combination with Wallace as either anticipated or obvious.
The Examiner rejected claim 1 and its dependent claims 3-5, 8, 21-27,
31, 36, 37, 49, 50, 52, 56, 59, and 61 as anticipated under 35 U.S.C. § 102(b)
by Wallace. (RAN 24 and 47.) Claims 2, 4, 6, 7, 9, 11, 25, 29, 30, 32, 33,
39-48, 51, 53-55, 57, and 58 depend upon independent claim 1. In response
to this § 102(b) rejection, Patent Owner attempted to antedate Wallace,
asserting that Wallace depicts a Copyright notice of 1997, which is less than
one year from the '703 patent’s earliest effective filing date of October 3,
1997, the filing date of the '890 parent patent.11 (App. Br. 12; see also FF

11 The Examiner acknowledged and agreed with Patent Owner in the Action
Closing Prosecution, hereinafter “ACP,” that the earliest effective filing date
for the '703 patent is October 3, 1997, the filing date of the '890 patent.
(ACP 42.)
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W1.) Patent Owner further asserts that the actual copyright registration of
Wallace indicates that Wallace was published on December 16, 1996.12
(App. Br. 13.) Accordingly, Patent Owner contends that Wallace is
available as prior art under 35 U.S.C. § 102(a), not § 102(b). (App. Br. 13.)
Based upon this contention, Patent Owner submitted two declarations under
37 C.F.R. § 1.131.
In response, the Examiner considered both declarations, but found
them ineffective to overcome the Wallace reference since the rejection was
under 35 U.S.C. § 102(b), thus creating a statutory bar. (RAN 46-47.) To
support this decision, the Examiner stated that the current claims are not
entitled to the October 4, 1996 filing date of provisional application
60/028,068, and as such, denied Patent Owner’s attempt to antedate the
Wallace reference based on this statutory bar. (RAN 47.) We cannot agree.
Instead, we agree with Patent Owner that the Examiner erred in
relying on the Wallace reference as a § 102(b) reference since Wallace’s
publication date is at least less than one year prior to the earliest effective
filing date of the '703 patent. Specifically, we find that the '703 patent’s
earliest effective filing date is October 3, 1997, the filing date accepted for
the instant claims by the Examiner in the ACP.13 Based upon this effective
date, we find the Wallace reference was published less than one year prior to
the '703 patent’s earliest effective filing date, and as such not available as
prior art under § 102(b), but instead under § 102(a).

12 While Patent Owner does not substantiate this date with any extrinsic
evidence, we find this assertion to be credible as a statement against interest.
13 Requester has not contested the Examiner’s finding on the record.
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Therefore, in the absence of any persuasive evidence showing that
Wallace was published more than one year prior to the earliest effective
filing date of the '703 patent, we find that the Examiner erred in applying
Wallace under 35 U.S.C. § 102(b) to independent claim 1 and its dependent
claims rejected by rejections K-P, T-Y, Z, and AA.

ISSUE 3
REJECTION Q
Claims 12-18 rejected as obvious over Wallace, Rosenberg, and Lewis.
Patent Owner argues that the combination of Wallace, Rosenberg, and
Lewis fails to disclose “electronic text files,” as recited by independent
claim 12. (PO App. Br. 19.) Specifically, Patent Owner asserts that Wallace
scans and stores documents on a print-on-demand [POD] library as
“masters,” which are not the same as “electronic text files,” since a customer
cannot change or modify the font size or font type. (PO App. Br. 20.)
We are not persuaded by Patent Owner’s argument and agree with the
Examiner that Wallace discloses “electronic text files,” as presently claimed.
(RAN 43.) While Patent Owner may be correct that Wallace does not
explicitly disclose documents which specifically allow a customer to change
or modify the font size or font type of the stored document, we cannot agree
with Patent Owner that independent claim 12 recites a limitation which
would require such functionality. Nor does the term “electronic text files”
require us to read such a limitation into the claim. We must be careful not to
read a particular embodiment appearing in the written description into the
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claim if the claim language is broader than the embodiment. See Superguide
Corp., 358 F.3d at 875.
In making this determination, we rely on the '703 patent’s use of the
term “bits” to describe “electronic text files.” (FF C8.) While the '703
patent is silent as to any definition for the term “electronic text files,” we
find that the Specification’s addition of the term “bits” to “electronic text
files” broadens the meaning of “electronic text files” from its plain meaning
to include any type of electronic file representing text and comprised of bits.
(FF C9; see e.g., FF C10.)
Thus, in the absence of additional evidence that persons of ordinary
skill in the art would have understood the claim to have a more narrow
construction, we interpret “electronic text files” as any type of electronic
data file which corresponds to the contents of a book as consistent with the
broadest reasonable interpretation of the term. Accordingly, we find that the
“electronic text files,” as presently claimed, read on the documents stored in
the POD Library of Wallace (See FF W2), and as such, find Patent Owner’s
argument to be unpersuasive.
Additionally, Patent Owner argues that combination of Wallace fails
to disclose “a device capable of printing and binding an ordered book
comprising ‘a clamping means for clamping the printed sheets into a book
block.’” (PO App. Br. 20.) Patent Owner’s argument regarding the
deficiencies of Wallace does not persuade us of error on the part of the
Examiner because Patent Owner responds to the rejection by attacking the
references separately, even though the rejection is based on the combined
teachings of the combination of Wallace, Rosenberg, and Lewis.
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Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Accordingly, while Wallace may not explicitly disclose a binder, the
reference does suggest the desirability of binding documents, and
additionally describes that its system is able to interact with attachments to
fold, trim, and bind documents coming out of the printer. (FF W3.) Based
upon this suggestion, one of ordinary skill in the art would have recognized
and appreciated the moveable book clamp disclosed in Lewis which is
equivalent to the clamping means of independent claim 12. (FF L1.) As
such, one of ordinary skill in the art would have reasonably expected that
this modification would provide the printer of Wallace with the enhanced
capability of binding its output documents using the clamping means
disclosed by Lewis. Therefore, as stated in KSR, “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 407.
Accordingly, Patent Owner’s arguments are unpersuasive, and as
such, we sustain the Examiner’s rejection of independent claim 12, and its
dependent claims 13-16 as obvious over Wallace, Rosenberg, and Lewis
under 35 U.S.C. § 103(a).
Additionally, it appears that Patent Owner incorrectly included the
rejection of dependent claims 28, 38, 63-100, and 102 as obvious over
Wallace, Rosenberg, and Lewis under 35 U.S.C. § 103(a) in the portion of
their Appeal Brief labeled Rejection K. (PO App. Br. 12.) However,
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Rejection K does not address independent claim 12 from which these instant
claims depend, nor does Patent Owner make arguments directed to these
claims.
Therefore, since Patent Owner does not separately argue claims 28,
38, 63-100, and 102 which depend from independent claim 12 in Rejection
K, or in any other portion of the Brief, we sustain the rejection of claims 28,
38, 63-100, and 102 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace, Rosenberg, and Lewis for the same reasons we found as to claim
12 supra.

REJECTIONS R and S
Claim 17 rejected as obvious over Wallace, Rosenberg, Lewis, and Meyer
and claim 18 rejected as obvious over Wallace, Rosenberg, Lewis, and
Fenton.
Patent Owner does not separately argue claims 17 and 18 which
depend from independent claim 12, and so we sustain the rejection of claim
17 under 35 U.S.C. § 103(a) as obvious over Wallace, Rosenberg, Lewis,
and Meyer and claim 18 rejected under 35 U.S.C. § 103(a) as obvious over
Wallace, Rosenberg, Lewis, and Fenton for the same reasons we found as to
claim 12 supra.

ISSUE 4
REJECTION BB
Claims 1, 3, 9, 20, 22-27, 29, 32, 33, 39-50, 52, and 54-61
rejected as anticipated by Xerox, claims 25, 39-48, 51, 53-55,
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57, and 58 rejected as obvious over Xerox, and claim 103
rejected as obvious over Xerox, Rosenberg, and Lewis.
Independent claim 1
Patent Owner first asserts that Xerox fails to disclose “an input means
for inputting requests for one or more books,” as recited by independent
claim 1. (PO App. Br. 22.) We are not persuaded by Patent Owner’s
assertion and find that Xerox does indeed disclose an “input means”
equivalent to the “user interaction means” which, as discussed supra, Patent
Owner identifies as the corresponding structure for the “input means” in the
'703 patent. (FF C4.) Specifically, Xerox discloses a printer located at
remote locations with a keyboard and mouse for submitting a “book printing
request.” (FF X2.) Accordingly, Xerox discloses the “input means” of
claim 1 capable of “inputting requests for one or more books.”
Additionally, Patent Owner asserts that Xerox’s print on-demand
system “just provid[es] printing services for a client” and has nothing to do
with distributing a book. (PO App. Br. 23.) We are not persuaded by Patent
Owner’s argument and as discussed supra find no limitation in the body of
claim 1 which explicitly requires “producing and distributing” as recited by
the preamble. Even so, we find that Xerox provides distributing within the
broad definition of that claim term, as discussed supra, with respect to
Fenton. As such, Patent Owner’s argument is not commensurate with the
scope of the limitations appearing in independent claim 1. Even so, we find
that the print on-demand system disclosed in the Xerox reference produces
and distributes books. (FF X3.)
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Patent Owner next contends that it is the system operator in Xerox
who works with the print on-demand system and not a customer, and as
such, Xerox fails to disclose “the customer inputting a request to the system
for the document to be printed.” (PO App. Br. 23.) We do not find Patent
Owner’s argument to be compelling and agree with the Examiner that “a
client can be considered a customer.” (RAN 57.) Moreover, this argument
is uncompelling as it is premised on limitations not appearing in the claim.
While Patent Owner tries to draw distinctions between the terms clients,
users, system operators, and customers, we find these alleged distinctions to
be unsupported by the language of independent claim 1. Therefore, as
discussed supra, we find that Xerox discloses “an input means” capable of
“inputting requests for one or more books,” as recited by independent
claim 1. Accordingly, Patent Owner’s arguments to this end are not
persuasive.
Additionally, Patent Owner argues that Xerox fails to disclose “a
plurality of printing and binding means for printing and binding a book upon
receipt of data corresponding to a book's content and control data,” as
recited by independent claim 1. (PO App. Br. 23.) Patent Owner contends
that Xerox discloses a printing means, but not a “printing and binding
means” as claimed. (PO App. Br. 24.) Patent Owner argues the Xerox
reference describes that “book block pages [are] taken to an on demand
bindery” to support this contention. (PO App. Br. 24, citing Xerox xii.)
Additionally, Patent Owner states that the DocuTech Signature Booklet
Maker and Xerox ASF 135 Automatic Stapler/Folder described in the Xerox
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reference for binding are stand alone or separate machines. (PO App. Br.
24.) We cannot agree.
Construing means-plus-function claim language in accordance with
35 U.S.C. § 112, paragraph 6, is a two-step process:
The first step in construing a means-plus-function
claim limitation is to define the particular function of the
claim limitation . . . .
The next step in construing a means-plus-function
claim limitation is to look to the specification and
identify the corresponding structure for that function.
“Under this second step, ‘structure disclosed in the
specification is “corresponding” structure only if the
specification or prosecution history clearly links or
associates that structure to the function recited in the
claim.’”
Golight, Inc. v. Wal-Mart Stores, 355 F.3d 1327, 1333-34 (Fed. Cir.
2004).
Turning to the first step, we define the particular function of this
means plus function limitation to be “printing and binding a book upon
receipt of data corresponding to a book's content and control data.” Next we
look to the '703 patent’s Specification to identify the corresponding structure
to perform this function. While Patent Owner does identify structure
corresponding to means for “printing” and means for “binding,” these means
appear to be separate, and Patent Owner’s Brief does not identify a specific
and singular “printing and binding means.” (See PO App. Br. 2.)
Thus, while we agree with Patent Owner that the Xerox reference
does describe taking book block pages to an on-demand bindery, we cannot
agree with Patent Owner that Xerox does not otherwise disclose a “printing
and binding means” equivalent to that recited by the instant claim.
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Specifically, Xerox describes that its printing means is a DocuTech Network
Publisher which includes a high-speed laser printing and in-line finisher.
(FF X5.) The Xerox reference goes on to describe that its in-line finisher
performs “in-line collating, stitching or thermal-binding.” (FF X6.)
Accordingly, one skilled in the art would understand this type of in-line
configuration to be a “printing and binding means,” as presently claimed,
and is in fact precisely the same type of configuration described in Patent
Owner’s Declaration. (FF D4.)
Furthermore, we find that Xerox discloses “a plurality of printing and
binding means” in contrast to Patent Owner’s contention otherwise. (PO
App. Br. 23.) Specifically, Xerox describes that its DocuTech Network
Publisher is a network-integrated solution for printing and distributing books
for providing global distributed printing and distribution. (FF X4, X7.) As
such, one skilled in the art would immediately recognize that the Xerox
reference discloses “a plurality of printing and binding means.”
Accordingly, Patent Owner’s position that Xerox fails to disclose a “a
plurality of printing and binding means” is unpersuasive.
Additionally, Patent Owner argues that Xerox fails to disclose “at
least one distribution unit which receives a request for a selected book and
causes said data corresponding to a book’s content and control data to be
transferred to said printing and binding means,” as recited by independent
claim 1. (PO App. Br. 24-25.) We are not persuaded by Patent Owner’s
argument and find that Xerox describes a workstation for making book
requests which is networked to a document server which stores electronic
documents (i.e., books). (FF X2, X8.) Upon receiving this book request, the
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document server transmits a “print-ready” document to the Network
Publisher for printing and binding. (FF X4, X8.) Thus, Xerox discloses at
least one distribution unit which receives a request for a selected book and
causes said data corresponding to a book’s content and control data to be
transferred to said printing and binding means.
As discussed supra, claim 1 reads on communication between a
workstation which itself stores the electronic document and the printing and
binding means directly or between both a workstation and network server
and the printing and binding means. Specifically, the claim does not prevent
the input means from also being a distribution unit. Therefore, in either
alternative, it is the workstation which causes “data corresponding to a
book’s content and control data to be transferred to said printing and binding
means,” and not the operator. Therefore, Patent Owner’s argument is
unpersuasive.
Lastly, Patent Owner argues that Xerox fails to disclose a system
where “at least one of said at least one distribution unit and at least one of
said plurality of printing and binding means are geographically separated,”
as recited by independent claim 1. (PO App. Br. 25.) Specifically, Patent
Owner asserts that the network depicted in the Figure of page 19 is an
Ethernet which is not the same as geographically separating a distribution
unit from a printing and binding means, as required by claim 1. (PO App.
Br. 25.) We cannot agree.
As discussed supra, we find that the language of claim 1 only requires
“at least one distribution unit” to be geographically separated from the “at
least one of said plurality of printing and binding means.” Thus, claim 1 is
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anticipated if there is another “printing and binding means” at some location,
geographically separated, from that “printing and binding means” and that
“at least one distribution unit.” Based upon this interpretation, we find that
Xerox at least discloses “a plurality of printing and binding means” at
remote locations (FF X7), and as such anticipates the “geographically
separated” limitation of independent claim 1. Therefore, Patent Owner’s
arguments are unpersuasive.

Dependent claims 3, 9, 20, 22-27, 29, 32, 33, 39-61, and 103
Patent Owner does not separately argue claims 3, 9, 20, 22-27, 29, 32,
33, 39-61, and 103 which depend from independent claim 1, and so we
sustain the rejection of claims 3, 9, 20, 22-27, 29, 32, 33, 39-50, 52, and 54-
61 under 35 U.S.C. § 102(b) as anticipated by Xerox, claims 25, 39-48, 51,
53-55, 57, and 58 under 35 U.S.C. § 103(a) as obvious over Xerox, and
claim 103 under 35 U.S.C. § 103(a) as obvious over Xerox, Rosenberg, and
Lewis for the same reasons we found as to claim 1 supra.

REJECTION CC
Dependent claim 5 rejected as anticipated by Xerox.
Affirmance of the anticipation rejection of claim 5 based on the
Fenton renders it unnecessary to reach the propriety of the Examiner’s
decision to reject that same claim on a different basis. Cf. In re Gleave, 560
F.3d at 1338 (not reaching other rejections after affirming an anticipation
rejection).

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REJECTIONS DD and EE
Dependent claim 8 rejected as anticipated by Xerox and
dependent Claim 7 rejected as obvious over Xerox.
Affirmance of the rejection of claims 7 and 8 over Fenton renders it
unnecessary to reach the propriety of the Examiner’s decision to reject that
same claim on a different basis. Cf. In re Gleave, 560 F.3d at 1338 (not
reaching other rejections after affirming an anticipation rejection).

REJECTION FF
Claims 2 and 6 rejected as obvious over Xerox and Lewis and claim 11
rejected as obvious over Xerox, Meyer and Lewis.
Dependent claim 2
Patent Owner argues that the combination of Xerox and Lewis fails to
disclose a “formatting means,” as recited by claim 2. (PO App. Br. 28.)
Specifically, Patent Owner contends that any “last minute editing”
performed in Xerox is done at the page level to add or delete one page or
multiple pages, and as such fails to disclose a “formatting means.” (PO
App. Br. 28.) We cannot agree.
In making this determination, we find that the '703 patent’s
Specification fails to describe a specific “formatting means.” In fact, while
the '703 patent explicitly discusses at least nineteen “means,” the only
instance of a “formatting means” occurs in claims 2, 8, and 12, which
generally recite “a formatting means for formatting the book’s content into a
book distribution.” Nevertheless, Patent Owner’s Appeal Brief identifies the
corresponding structure to perform the functional step of formatting the
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book’s content into a book distribution as “distribution means 7.” (See PO
App. Br. 4.)
Turning to the Specification, the '703 patent describes that the
“‘distribution means 7’ distributes information to the ‘printing means 8.’”
(FF C1.) While Patent Owner asserts that formatting data “can include
paper size, font size, and type,” the '703 patent fails to provide a
lexicographic definition for the terms “formatting” or “formatting data.” (FF
C1, C2; see also PO App. Br. 10.) As such, we turn to the ordinary and
customary meaning of the term as “the shape and size of a book as
determined by the number of times the original sheet has been folded to
form the leaves.” (FF C3.)
Based upon this definition, and commensurate with the scope of the
'703 patent’s Specification, we find that the printing and binding means
disclosed in Xerox would receive these type of formatting data necessary for
its printers to at least print the appropriate sized sheets and for the binder to
properly bind the sheets based upon that size to create a book. (FF X7, X8.)
Therefore, while Patent Owner may be correct that the Xerox reference is
limited to “last minute editing” such as adding and deleting pages, we cannot
agree with Patent Owner that this inadequacy would otherwise change the
fact that the Xerox reference distributes formatting data for formatting the
book’s content, as presently claimed.
Thus, we find that the combination of Xerox and Lewis discloses the
requisite structure capable of “formatting the book’s content into a book
distribution,” as presently recited by dependent claim 2. Accordingly, we
are not persuaded by Patent Owner’s argument and sustain the Examiner’s
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decision to reject claim 2 under 35 U.S.C. § 103(a) as obvious over Xerox
and Lewis.

Dependent claims 6 and 11
Patent Owner does not separately argue claims 6 and 11 which depend
from dependent claim 2, and so we sustain the rejection of claim 6 under 35
U.S.C. § 103(a) as obvious over Xerox and Lewis and claim 11 under 35
U.S.C. § 103(a) as obvious over Xerox, Meyer, and Lewis for the same
reasons we found as to claim 2 supra.

ISSUE 5
REJECTIONS GG, HH, and II
Claims 1-3, 9, 20, 22, 23, 27, 29, 49, and 52 rejected as anticipated by
Rosenberg.
Affirmance of the rejection of claims 1-3, 9, 20, 22, 23, 27, 29, 49,
and 52 based on the rejections supra renders it unnecessary to reach the
propriety of the Examiner’s decision to reject those same claims on a
different basis. Cf. In re Gleave, 560 F.3d at 1338 (not reaching other
rejections after affirming an anticipation rejection). (PO App. Br. 28-31.)

CONCLUSIONS
Issue 1 - Rejections A-I:
We conclude that Fenton discloses all the limitations of claims 1, 3, 5,
6, 8, 9, 11, 20, 22-27, 32-33, 37, 39-50, 52, and 54-61 under 35 U.S.C. §
102(b), Fenton discloses all the limitations of claims 7-9, 25, 33, 39-48, 51,
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53-55, 57, and 58 under 35 US.C. § 103(a), and the combination of Fenton
and Meyer discloses the limitation of claim 11 under 35 U.S.C. § 103(a).

Issue 2 - Rejections K-P, T-Y, Z, and AA:
We conclude that the Examiner erred in relying on Wallace as a prior
art reference under 35 U.S.C. § 102(b). As such, we conclude that Wallace
cannot disclose all the limitations of at least independent claim 1 under this
basis, and as such the rejections made with respect to rejections K-P, T-Y, Z,
and AA.

Issue 3 - Rejections Q, R, S:
We conclude that the combination of Wallace, Rosenberg, and Lewis
discloses all the limitations of claims 12-16, 38, 63-100, and 102 under 35
U.S.C. § 103(a), the combination of Wallace, Rosenberg, Lewis, and Meyer
discloses the limitation of claim 17 under 35 U.S.C. § 103(a), and the
combination of Wallace, Rosenberg, Lewis, and Fenton discloses the
limitation of claim 18 under 35 U.S.C. § 103(a).

Issue 4 - Rejections BB-FF:
We conclude that Xerox discloses all the limitations of claims 1, 3, 9,
20, 22-27, 29, 32, 33, 39-50, 52, and 54-61 under 35 U.S.C. § 102(b), Xerox
discloses all the limitations of claims 25, 39-48, 51, 53-55, 57, and 58 under
35 U.S.C. § 103(a), the combination of Xerox and Lewis discloses all the
limitations of claims 2 and 6 under 35 U.S.C. § 103(a), the combination of
Xerox, Meyer, and Lewis discloses the limitation of claim 11 under 35
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U.S.C. § 103(a), and the combination of Xerox, Rosenberg, and Lewis
discloses the limitation of claim 103 under 35 U.S.C. § 103(a).

Issue 5 – Rejections GG-II:
For the reasons discussed supra, we make no findings of fact or
judgment with respect to the Examiner’s actions.

DECISION
The Examiner’s decision to reject claims 1-3, 5-9, 11-18, 20, 22-27,
29, 32-33, 37-61, 63-100, and 103 is AFFIRMED.
However, with respect to claims 6, 8, 11, and 103 rejected under 35
U.S.C. § 102(b) as anticipated by Fenton, claims 7 and 8 rejected under 35
U.S.C. § 103(a) as obvious over Fenton, and claim 11 rejected under 35
U.S.C. § 103(a) as obvious over Fenton and Meyer we denominate the
affirmance of these rejections as a new ground of rejection for the reasons
discussed supra. (37 C.F.R. § 41.77(b).)

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REQUESTER CROSS-APPEAL
ISSUE A
Claims 2, 4, 12-18, 21, 28, and 36 rejected as anticipated by Fenton
Dependent claim 2
Requester argues that Fenton discloses a “printing and binding
means” which comprises a “formatting means,” and as such, Requester
asserts that the Examiner erred in withdrawing the rejection of dependent
claim 2. (TPR App. Br. 17-18.) In response, the Examiner states that “the
formatting [in Fenton] occurs prior to reception at the printing and binding
unit and actually prior to scanning as the controller lacks any formatting
means . . . .” (RAN 9-10.) Patent Owner agrees with the Examiner and
asserts that Fenton explicitly states that there are no “text creation or editing
features” in the printing and binding means disclosed by the Fenton
reference. (PO Resp. Br. 9.) We find the Requester’s argument to be
compelling.
In making this determination, we find that the '703 patent’s
Specification fails to describe a specific “formatting means.” In fact, while
the '703 patent explicitly discusses at least nineteen “means,” the only
instance of a “formatting means” occurs in claims 2, 8, and 12, which
generally recite “a formatting means for formatting the book’s content into a
book distribution.” Nevertheless, Patent Owner’s Appeal Brief identifies the
corresponding structure to perform the functional step of formatting the
book’s content into a book distribution as a “distribution means 7.” (See PO
App. Br. 4.)
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Turning to the Specification, the '703 patent describes that the
“‘distribution means 7’ distributes information to the ‘printing means 8.’”
(FF C1.) Additionally, Patent Owner asserts that the '703 patent describes
that formatting data “can include paper size, font size, and type.” (FF C1,
C2; see also PO App. Br. 10.) In light of this disclosure, to anticipate this
means plus function limitation, Fenton need only disclose structure capable
of distributing information which “can include paper size, font size, and
type” to a printing and binding means. As such, we find that Fenton’s on-
demand printing system which operates via TCP/IP software to link the
document creation and storage system to its printers and binders discloses a
“formatting means,” as presently recited by dependent claim 2. (FF F4, F5.)
Furthermore, contrary to Patent Owner’s assertion that there are no
“text creation or editing features” at the printing and binding means
disclosed in the Fenton reference, we find that the claim does not require
such. Therefore, even though Patent Owner may be correct that Fenton does
not disclose text creation or editing features at the printing and binding
means, we find that this argument “fail[s] from the outset because…it is not
based on limitations appearing in the claim[] . . . .” In Re Self, 671 F.2d
1344, 1348 (CCPA 1982).
Similarly, while we agree with the Examiner that Fenton’s printer and
binder may lack a formatting means such that it would be able to format
each of “paper size, font size, and type” as Patent Owner asserts, we cannot
agree with the Examiner that the claim requires such a narrow interpretation.
Instead, we find that the Examiner has impermissibly narrowed the scope of
claim when neither the '703 patent’s Specification nor claims are so limiting.
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Since the '703 patent fails to provide a lexicographic definition for
“formatting” or “formatting data,” we turn to the ordinary and customary
meaning of the term, as “the shape and size of a book as determined by the
number of times the original sheet has been folded to form the leaves . . . .”
(FF C3) Based upon this definition, and commensurate with the scope of the
'703 patent’s Specification, we find that the printing and binding means
disclosed in Fenton would receive these type of formatting data necessary
for the printer to at least print the appropriate sized sheets and for the binder
to properly bind the sheets based upon that size to create a book. (FF F3.)
Thus, when properly construed, we find that the “formatting means” recited
in claim 2 reads on these types of data being distributed to the printing and
binding means to create a book using Fenton’s on-demand printing system.
Therefore, claim 2 does not require a “formatting means” which would
provide “text creation or editing features,” and as such, we agree with
Requester that Fenton discloses the requisite structure capable of performing
the function recited by dependent claim 2.
Accordingly, we conclude that the Examiner erred in not adopting the
rejection of claim 2 as anticipated by Fenton under 35 U.S.C. § 102(b).

Dependent claim 4
Requester argues that Fenton discloses “wherein said at least one
distribution unit accesses the data corresponding to the selected book’s
content from a plurality of storage facilities,” and as such, Requester asserts
that the Examiner erred in withdrawing the rejection of dependent claim 4.
(TPR App. Br. 18.) Specifically, Requester states that Fenton describes
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merging images with text and “give[s] employees access to information
stored in documents and databases throughout an organization.” (TPR App.
Br. 18; citing Fenton Pp. 106-107.) In response, the Examiner states that the
merging of images with text occurs prior to putting the document on the
jukebox server. (RAN 10.)
We are not persuaded by Requester’s argument and agree with the
Examiner that Fenton fails to disclose that a distribution unit accesses the
selected book’s content from a plurality of storage facilities. While we agree
with Requester that Fenton does describe providing access to databases, we
cannot agree with Requester that this disclosure anticipates accessing data
from a plurality of storage facilities, as presently claimed. Moreover, we
agree with the Examiner that the merging of images with text would occur
prior to uploading the document to the jukebox server. As such, we find
Requester’s reliance on Fenton to be faulty.
Therefore, we sustain the Examiner’s decision to not adopt the
rejection of claim 4 as anticipated by Fenton, and as such, we do not find
that the Examiner erred in that non-adoption.

Claims 12-18 and 28
The Examiner refused to adopt the rejection of independent claim 12
as anticipated by Fenton. (RAN 11.) In doing so, the Examiner stated that
one skilled in the art would understand that while Fenton discloses scanned
files in electronic form, scanned files do not constitute text files as they
cannot be edited. (RAN 12.) Requester disagrees with the Examiner’s
statement and generally argues with respect to independent claim 12 that
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Fenton discloses “electronic text files,” and as such, contends that Fenton
discloses inter alia the step of “transmitting the electronic text files . . . to a
device capable of printing and binding,” as presently recited by independent
claim 12. (TPR App. Br. 19.) Specifically, Requester argues that the
Examiner erred in interpreting “electronic text files” to mean files that can
be edited when the claim makes no recitation requiring the ability to edit text
files. (TPR App. Br. 19-20.) We agree with Requester.
In making this determination, we find that there is no recitation in
claim 12 which requires the claimed “electronic text files” to be edited nor
do we find that the term “electronic text files” would require us to read such
a limitation into the claim. Therefore, for these reasons, and the reasons
discussed supra with respect to Rejection Q, we conclude that the Examiner
erred in not adopting the rejection of independent claim 12 as anticipated by
Fenton under 35 U.S.C. § 102(b) and its dependent claims 13-18 and 28 for
these same reasons. (See RAN 12)

Dependent claims 21 and 36
Requester argues that the Examiner erred in withdrawing the rejection
of claim 21 for the same reason as those set forth with respect to
independent claim 12, supra. Additionally, Requester argues that the
Examiner erred in withdrawing the rejection of claim 36 due to its
dependence on claim 21. (TPR App. Br. 20.) We agree with Requester, and
for the reasons discussed supra, conclude that the Examiner erred in not
adopting the rejection of claims 21 and 36 as anticipated by Fenton under 35
U.S.C. § 102(b).
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ISSUE B
Claims 10, 15, 19, 29-31, 34, and 35 rejected as obvious over Fenton.
Dependent claims 10, 34, and 35
Requester argues that the Examiner erred in withdrawing the rejection
of claims 10, 34, and 35 for the same reason as those set forth with respect to
claim 4, supra. (TPR App. Br. 20.) Therefore, Requester does not
separately argue claims 10, 34, and 35, and so we sustain the Examiner’s
decision to not adopt the rejection of claims 10, 34, and 35 under 35 U.S.C.
§ 103(a) as obvious over Fenton for the same reasons we found as to claim 4
rejected as anticipated by Fenton under 35 U.S.C. § 102(b) supra.

Dependent claims 15 and 19
Requester argues that the Examiner erred in withdrawing the rejection
of claims 15 and 19 for the same reason as those set forth with respect to
independent claim 12, supra. We agree with Requester, and for the reasons
discussed supra with respect to claim 12, conclude that the Examiner erred
in not adopting the rejection of claims 15 and 19 as obvious over Fenton
under 35 U.S.C. § 103(a).

Dependent claims 29-31
The Examiner withdrew the rejection of claims 29-31 as obvious over
Fenton. (RAN 21.) In doing so, the Examiner stated that the scanned files
disclosed in Fenton cannot be searched for content or reformatted for font.
(RAN 21.) Requester disagrees and argues that Fenton does indeed disclose
these limitations. (TPR App. Br. 20.)
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With respect to claim 29, Requester’s argument is limited to pointing
out that Fenton describes that “[y]ou can index, search, and finally print your
documents.” (TPR App. Br. 20.) In response, Patent Owner argues that this
disclosure “describe[es] the capturing of originals with a scanner, storing the
scanned images of the documents, indexing the images, and searching the
index, not searching the content of the images since the content is an image
that cannot be indexed.” (PO Resp. Br. 13.) We find the Patent Owner’s
argument to be compelling.
Accordingly, since Requester’s brief fails to provide any additional
evidence which would persuade us that it is the book’s content which is
searchable in Fenton, as opposed to a searchable index of the scanned
images, we will sustain the Examiner’s decision to withdraw the rejection of
dependent claim 29 as obvious over Fenton.
With respect to dependent claims 30 and 31, Requester contends that
because Fenton describes that its Media Server includes Adobe PostScript
fonts and PCL fonts “it would be obvious to one of skill in the art to allow
users to specify different fonts for print jobs.” (TPR App. Br. 21.) In
response, Patent Owner asserts these page description languages (PDLs)
only describe what the original file contains. (PO Resp. Br. 13.)
We agree with Patent Owner and find that the scanned images
described by the Fenton reference are not capable of being reformatted for
font size and font type as recited by claims 30 and 31, respectively.
Specifically, Fenton describes that its controller can manipulate scanned
images using techniques such as scaling, rotating, cropping, and masking,
but explicitly states that its on-demand printing system fails to provide text
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creation or editing features. (FF F7.) Therefore, while Fenton’s system may
be able to scale or crop pages, we cannot agree with Requester that these
manipulation techniques reformat the font size and font type of a book’s
content, as presently recited by dependent claims 30 and 31. Additionally,
Requester has failed to persuade us that the subject matter of dependent
claims 30 and 31 would be obvious in light of the evidence submitted in
their Brief. “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Accordingly, we sustain the Examiner’s decision to withdraw the
rejection of dependent claims 30 and 31 as obvious over Fenton.

ISSUE C
Claim 17 rejected as obvious over Fenton and Meyer
Requester cross-appeals the Examiner’s decision to not adopt the
proposed rejection of claim 17 rejected under 35 U.S.C. § 103(a) as obvious
over Fenton and Meyer. (TPR App. Br. 21.) However, because we have
already affirmed the Examiner’s rejection of this claim, supra, we will not
reach a decision for the non-adopted rejection for the same claims. 37
C.F.R. § 41.77(a). As such, we make no findings of fact or judgment with
respect to the Examiner’s actions.

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ISSUE D
Claims 12, 38, and 62-102 rejected as obvious over Fenton and Rosenberg.
Independent claim 12
Requester argues that the Examiner withdrew the instant rejection “for
the same reasons as those provided for claim 2 over [Fenton],” and as such,
Requester contends that the Examiner erred in withdrawing the rejection of
independent claim 12 as obvious over Fenton and Rosenberg. (TPR App.
Br. 21.) Patent Owner’s only response to Requester argument is that the
Examiner correctly withdrew the instant rejection. (PO Resp. Br. 14.)
Accordingly, since we concluded that the Examiner erred in not
adopting the rejection of claim 2 as anticipated by Fenton under 35 U.S.C.
§ 102(b), as discussed supra with respect to Issue A, we additionally
conclude that the Examiner erred in not adopting the rejection of claims 12,
38, and 62-102 under 35 U.S.C. § 103(a) as obvious over Fenton and
Rosenberg for these same reasons.

ISSUE E
Claims 4, 10, and 12-61 rejected as obvious over Fenton and Xerox.
Dependent claim 4
Requester argues that the combination of Fenton and Xerox discloses
“wherein said at least one distribution unit accesses the data corresponding
to the selected book’s content from a plurality of storage facilities,” and as
such, Requester asserts that the Examiner erred in withdrawing the rejection
of dependent claim 4. (TPR App. Br. 22.) To support this argument,
Requester alleges that Xerox teaches that images and text may be merged
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and edited at the time of print production, thus demonstrating that
documents “are not immutably ‘merged’ prior to plac[ement] on a jukebox
server.” (TPR App. Br. 22-23; citing Xerox Pp. xi and 64.) We cannot
agree.
While Requester may be correct that Xerox describes limited editing
capabilities at the time of print production, we cannot agree with Requester
that this type of editing addresses the limitation recited by dependent claim
4. Specifically, claim 4 recites wherein “at least one distribution unit
accesses the data corresponding to the selected book’s content from a
plurality of storage facilities.” Based upon this language, any merging or
editing performed at the time of print production (i.e., at the “printing and
binding means”), as Requester alleges, would be based upon information
already transferred to the “printing and binding means” from the “at least
one distribution unit” in independent claim 1. Therefore, Requester’s
argument is not persuasive to show that the distribution unit is accessing
data from a plurality of storage facilities, as presently claimed. The addition
of Fenton does not cure this defect for the reasons discussed supra.
Accordingly, in the absence of any argument as to why this feature
would be obvious to one of ordinary skill in the art, we sustain the
Examiner’s decision to not adopt the rejection of claim 4 as obvious over
Xerox and Fenton, and as such, we do not find that the Examiner erred in
that non-adoption.

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Dependent claim 10
Requester argues that the Examiner erred in withdrawing the rejection
of claim 10 due to its dependency on claim 4. (TPR App. Br. 24.) As such,
Requester does not separately argue claim 10, and so we sustain the
Examiner’s decision to not adopt the rejection of claim 10 under 35 U.S.C.
§ 103(a) as obvious over Fenton and Xerox for the same reasons we found
as to claim 4 supra.

Claims 12-19, 28, and 38
Requester cross-appeals the Examiner’s decision to not adopt the
proposed rejection of claims 12-6114 rejected under 35 U.S.C. § 103(a) as
obvious over Fenton and Xerox. (TPR App. Br. 24.) However, because we
have already affirmed the Examiner’s rejection of claims 12-18, 28, and 38,
and concluded that the Examiner erred in not adopting the rejection of claim
19, supra, we will not reach a decision for the non-adopted rejection for
these same claims. 37 C.F.R. § 41.77(a). As such, we make no findings of
fact or judgment with respect to the Examiner’s actions.

REJECTION F
The Examiner withdrew the Requester’s proposed rejections of at
least independent claim 1 rejected under 35 U.S.C. § 102(a) as anticipated

14 Requester argues that claims 13-61 depend from independent claim 12
(TPR App. Br. 24), however claims 20-27, 29-37, and 39-61 depend from
independent claim 1, and as such, we will not address claims which do not
depend from claim 12.
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by CAP Ventures15 and independent claim 12 rejected under 35 U.S.C.
§ 103(a) as obvious over CAP Ventures, Lewis, and Fenton in response to
Patent Owner’s Declaration under 37 C.F.R. § 1.131, filed October 27, 2009.
(RAN 69-71.) The Examiner determined that the Declaration provided
sufficient detail, to support an actual reduction to practice, prior to the
publication date of the CAP Ventures reference. (RAN 69-71.)
Specifically, the Examiner determined that “the evidence provide[d] a
teaching that the printing and binding means are geographically separated
and a teaching that formatting of the document text occurs at the local
printing and binding site,” and as such concluded that the Declaration was
effective to antedate the publication date of the CAP Ventures reference with
respect to independent claims 1 and 12.16
In response, Requester cross-appeals the Examiner’s decision to not
adopt the proposed rejections made with respect to the CAP Ventures
reference. (TPR App. Br. 24.) Specifically, Requester asserts that the
Examiner erred in determining that the Garrido Declaration, filed on October
27, 2009, establishes conception and reduction to practice of the instant
claims prior to the publication date of the CAP Ventures reference. (TPR

15 The Examiner changed the statutory basis for the rejection of claims 1, 3,
5, 6, 8, and 9 from 35 U.S.C. § 102(b), as proposed by Requester, to
35 U.S.C. § 102(a), based on Patent Owner’s argument that CAP Ventures
was published less than one year prior to the '703 patent’s earliest effective
filing date. (ACP 42-46.)
16 Interestingly, while the Examiner determined that Patent Owner’s
Declaration under 37 C.F.R. § 1.131 was effective to establish an actual
reduction to practice as early as November 1, 1995, the Examiner declined
to grant priority to Patent Owner’s provisional application, filed on October
4, 1996. (RAN 18-20.)
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App. Br. 24-25.) To support this assertion, Requester describes the Garrido
Declaration and its accompanying exhibits as inadequate, and nothing more
than discussion of what was already well-known in the art. (TPR App. Br.
25.) We find Requester’s position to be persuasive.
While the Examiner may be correct that the evidence submitted by
Patent Owner establishes conception, we cannot agree with the Examiner
that the Declaration or accompanying exhibits demonstrate a reduction to
practice coupled with diligence as required by 37 C.F.R. § 1.131(b). (See
RAN 69-70.)
On this record, Patent Owner has not demonstrated that the claimed
invention was actually reduced to practice prior to the publication date of
CAP Ventures. Specifically, Patent Owner has not shown that the claimed
invention was made or constructed prior to the publication date of CAP
Ventures, much less shown to work for its intended purpose prior to the
publication date of CAP Ventures. The Declaration and exhibits relied upon
by Patent Owner attempt to show that the claimed subject matter was
conceived at least as early as November 1, 1995, well prior to the
publication date of CAP Ventures. (FF D2, D3; see also FF V1.) However,
without demonstrating diligence from conception up to the filing date of the
subject application, any evidence of conception alone is insufficient.
Further, while the Declaration and accompanying exhibits detail dates
and facts for the last part of July 1995 through November 1, 1995, there is
no evidence showing diligence from November 1, 1995 up until the filing
date of U.S. provisional application 60/028,068 on October 4, 1996, let
alone October 3, 1997, the date which the Examiner accords as the earliest
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effective filing date. (See ACP 42.) A constructive reduction to practice of
the invention of the instant claims could have occurred with the filing of the
provisional application, but the Examiner has evidenced that there is no
support for the instant claims therefrom. As such, we find that Patent
Owner’s Declaration and accompanying exhibits fail to demonstrate that the
inventor was reasonably diligent during the critical time period from
conception continuously up to the earliest effective filing date of the '703
patent. See In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983); see also
Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966) (An applicant must
account for the entire period for which diligence is required; a mere
statement that there were no weeks or months that the invention was not
worked on the claimed invention is not enough.); In re Harry, 333 F.2d 920,
923 (CCPA 1964) (A mere statement that the claimed subject matter “was
diligently reduced to practice” is not a showing.).
Accordingly, we find that Patent Owner has failed to provide a
persuasive showing of diligence (in either this country or a WTO country)
from conception to subsequent reduction to practice, either actual or
constructive, as required by 37 C.F.R. § 1.131. Therefore, we do not
consider Patent Owner to have persuasively met the burden of proving
reduction to practice prior to the publication date of CAP Ventures, and as
such, conclude that the Examiner erred in withdrawing the rejections,
discussed supra, based on CAP Ventures for this reason.

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CONCLUSIONS
Issue A
We conclude that the Examiner erred in not adopting the rejection of
claims 2, 12-18, 21, 28, and 36 as anticipated by Fenton under 35 U.S.C.
§ 102(b). However, we conclude that the Examiner did not err in not
adopting the rejection of claim 4 as anticipated by Fenton under 35 U.S.C.
§ 102(b).
Issue B
We conclude that the Examiner erred in not adopting the rejection of
claims 15 and 19 as obvious over Fenton under 35 U.S.C. § 103(a).
However, we conclude that the Examiner did not err in not adopting the
rejection of claims 10, 29-31, 34, and 35 as obvious over Fenton under 35
U.S.C. § 103(a).
Issue C
We make no findings of fact or judgment with respect to the
Examiner’s actions.
Issue D
We conclude that the Examiner erred in not adopting the rejection of
claims 12, 38, 62-102 as obvious over Fenton and Rosenberg under 35
U.S.C. § 103(a).
Issue E
We conclude that the Examiner did not err in not adopting the
rejection of claims 4 and 10 as obvious over Fenton and Xerox under 35
U.S.C. § 103(a). However, we make no findings of fact or judgment of the
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Examiner’s actions with respect to the rejection of claims 12-19, 28, and 28
as obvious over Fenton and Xerox under 35 U.S.C. § 103(a) because we
have already affirmed the Examiner’s rejection of claims 12-18, 28, and 38,
and concluded that the Examiner erred in not adopting the rejection of claim
19.
Issue F
We conclude that the Examiner erred in determining the Garrido
Declaration, filed October 27, 2009, persuasive to antedate the CAP
Ventures reference, and as such, the Examiner erred in withdrawing the
rejection of claims 1, 3, 5, 6, 8, 9, 20-25, 27, 32, 33, 36, 37, and 56-59
rejected under 35 U.S.C. § 102(a) as being anticipated by CAP Ventures,
claim 2 rejected under 35 U.S.C. § 103(a) as obvious over CAP Ventures
and Lewis, claim 11 rejected under 35 U.S.C. § 103(a) as obvious over CAP
Ventures and Meyer, claims 12-19, 28, 38, 62, 63-71, 74-91, 97(1), 98(1),
97(2), 98(2), 99, 100 and 103 rejected under 35 U.S.C. § 103(a) as obvious
over CAP Ventures, Lewis, and Fenton, and claims 26, 39-48, 54-55, 57,
and 58 alternatively rejected under 35 U.S.C. § 103(a) as obvious over CAP
Ventures.

DECISION
The Examiner’s refusal to adopt the proposed rejections of claim 4 as
anticipated by Fenton under 35 U.S.C. § 102(b), claims 10, 29-31, 34, and
35 as obvious over Fenton under 35 U.S.C. § 103(a), and claims 4 and 10 as
obvious over Fenton and Xerox under 35 U.S.C. § 103(a) is AFFIRMED.
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The Examiner’s refusal to adopt the proposed rejections of claims 2,
12-18, 21, 28, and 36 as anticipated by Fenton under 35 U.S.C. § 102(b),
claims 15 and 19 as obvious over Fenton under 35 U.S.C. § 103(a), claims
12, 38, 62-102 as obvious over Fenton and Rosenberg under 35 U.S.C.
§ 103(a), and the rejections, discussed supra, with respect to the CAP
Ventures reference is REVERSED and denominated as a NEW GROUND
OF REJECTION pursuant to our authority under 37 C.F.R. § 41.77(b).

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Requests for rehearing in this inter partes reexamination proceeding
are governed by 37 C.F.R. § 41.79.
This decision also contains new grounds of rejection pursuant to 37
C.F.R. § 41.77(b) which provides “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.77(b) also provides that the Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner . . . .
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the same
record . . . .
Should the Patent Owner elect to prosecute further before the
Examiner pursuant to 37 C.F.R. § 41.77(b)(1), in order to preserve the right
to seek review under 35 U.S.C. § 141 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If the Patent Owner elects prosecution before the Examiner and this
does not result in patentable claims, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
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final action on the affirmed rejections, including any timely request for
rehearing thereof.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b)

ack
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TORCZON, Administrative Patent Judge, dissenting in part.
The various constructions proposed for the "formatting means" in
claim 2 (and other claims with similar limitations, e.g., claim 12 and claims
depending from claims 2 and 12) are unsatisfactory. The full limitation is:
a formatting means for formatting the book's content into a
book distribution
There are at least two problems. First, the patentee has failed in its duty to
provide a corresponding structure, the quid pro quo for using means-plus-
function language. See In re Katz Interactive Call Processing Patent
Litigation, 639 F.3d 1303, 1315 (Fed. Cir. 2011) (explaining that broad
disclosure of a computer with software is rarely sufficient). Second, the
claimed function does not make sense. "Formatting the book's content" is a
comprehensible, albeit broad, function, embracing both the text and the
grosser structure of the book. "Formatting the book's content into a book
distribution", however, has no meaning in plain English.
The patentee would resolve the ambiguity by reading the limitation to
mean "formatting the book's text". This construction of the function finds
some support in the specification, which refers to changing the "font size,
and type". How formatting the text relates to formatting "into a book
distribution" remains opaque. The majority would read the limitation as
"formatting the book structure", which also finds support in the "paper size"
teaching in the specification and at least suggests "formatting…into a book
distribution", if "book distribution" just means a "book to be distributed".
The problem with this construction is that it would ignore the "font size, and
type" disclosure. Moreover, it is not clear why the "book distribution"
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should be construed to be just the book since the book is already called a
book in the same limitation.
In short, the claim is fatally ambiguous inasmuch as the formatting-
means limitation lacks both a concrete corresponding structure and a
comprehensible function. The remedy for this sort of ambiguity is not to
read limitations in from the specification (which is not possible in the case
anyway) or to read the claim broadly, but rather to reject the claim as
indefinite. 35 U.S.C. 112(2); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d
1325, 1332 (Fed. Cir. 2010).
In the present case, it would be pointless to enter a new ground of
rejection on the basis of indefiniteness because the examiner would be
barred by rule from enforcing the rejection. 37 C.F.R. § 1.906(c). What
would be possible, however, is to reverse the rejection without prejudice to
its reinstitution if the patent owner files an amendment (or files a reissue
application) to cure the indefiniteness. While not satisfactory inasmuch as it
leaves a critical issue with the claims unresolved, this approach is more
consonant with the case law and rules than any of the other proposed
outcomes. Hence, I cannot join the affirmance of, or new grounds of,
rejection for any claim with the formatting-means limitation.
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cc:
PATENT OWNER:
VICTOR MANUEL CELORIO GARRIDO
12300 N.W. 56TH AVE.
GAINESVILLE, FL 32653

THIRD PARTY REQUESTER:
SONNABENDLAW
600 PROSPECT AVE
BROOKLYN, NY 11215