Ex Parte Bacus

Patent Trial and Appeal Board

May 18, 2016

12774929 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121774,929 05/06/2010 Mike Bacus
22907 7590 05/20/2016
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
005156.00045 9076
EXAMINER
HANG,VUB
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
05/20/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
eofficeaction@bannerwitcoff.com
GPD@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE BACUS
Appeal2014-009948
Application 12/774,929
Technology Center 2600
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1--4, 6-12, 14--16, and 18-25, which constitute all
the claims pending in this application. Claims 5, 13, and 17 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The real party in interest identified by Appellant is Celartem, Inc. Appeal
Br. 2.
Appeal2014-009948
Application 12/774,929
STATEMENT OF THE CASE
Introduction
Appellant's invention relates generally to a system and method that
processes documents, identifies fonts being used to reproduce the
documents, and identifies conflicts based on the identified fonts. Abstract.
Claim 1 is representative and reads as follows:
1. One or more non-transitory computer readable media
storing computer readable instructions that, when executed,
cause an apparatus to:
identify a first font that is required for processing a first
document;
determine a match between one or more characteristics of
the first font and one or more characteristics of a second font;
and
responsive to determining the match between the one or
more characteristics of the first font and the one or more
characteristics of the second font:
determine a substitute font for the first document;
modify information of the substitute font based on
the match, resulting in modified information of the
substitute font; and
based on the modified information of the substitute
font, modify the first document such that the substitute
font is required for processing the first document instead
of the first font.
Appeal Br. 24 (Claims App.).
References
Cartier us 6,111,654 Aug. 29, 2000
Oomura US 2003/0002063 Al Jan.2,2003
2
Appeal2014-009948
Application 12/774,929
Rejection on Appeal
Claims 1--4, 6-12, 14--16, and 18-25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Cartier in view of Oomura.
Issue on Appeal
Appellant's arguments in the Appeal Brief2 and Reply Brief present
us with the following dispositive issue: does the combination of Cartier and
Oomura teach or suggest "responsive to determining the match between the
one or more characteristics of the first font and the one or more
characteristics of the second font ... based on the modified information of
the substitute font, modify the first document such that the substitute font is
required for processing the first document instead of the first font," as
recited in claim 1, and as similarly recited in claims 8 and 15?3
ANALYSIS
The Examiner finds Cartier teaches "modifying the first document
such that the substitute font is required for processing the first document
instead of the first font." Final Act. 4; Ans. 3. According to the Examiner,
Cartier discloses loading a replacement font stored in a non-volatile memory
device into a random access memory (RAM) of a printer when there is a
match in font descriptors, and, thus, teaches modifying a first document, as
2 Our Decision refers to the Final Office Action (mailed Oct. 9, 2013, "Final
Act."), Appellant's Appeal Brief (filed Apr. 9, 2014, "Appeal Br.") and
Reply Brief (filed Sept. 16, 2014, "Reply Br."), the Examiner's Answer
(mailed July 16, 2014, "Ans."), and the original Specification (filed May 6,
2010, "Spec.").
3 Appellant's arguments raise additional issues, but we do not reach them
because the identified issues are dispositive of the appeal.
3
Appeal2014-009948
Application 12/774,929
required by the claim language. Ans. 3. Appellant argues Cartier does not
teach modifying a document, and, instead, teaches loading a replacement
font to a memory such that the document can be printed using the
replacement font. Appeal Br. 11. Appellant further argues the Examiner
fails to provide any reasoning as to what exactly is modified in the document
by the act of loading the replacement font into the RAM of the printer, and,
instead, the Examiner merely concludes loading the replacement font into
the RAM of the printer modifies the document. Reply Br. 2.
We are persuaded by Appellant's argument. We agree the Examiner
has failed to establish how loading a replacement font into RAM of a printer,
and causing the printer to use the replacement font in a print job, modifies a
document. Thus, we are persuaded the Examiner has not established the
combination of Cartier and Oomura teaches or suggests the limitations at
lSSUe.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
8, and 15, as well as dependent claims 2--4, 6-7, 9--12, 14, 16, and 18-25,
which variously depend therefrom.
DECISION
We reverse the Examiner's decision rejecting claims 1--4, 6-12, 14--
16, and 18-25.
REVERSED
4