Ex Parte Bauer

Board of Patent Appeals and Interferences

Mar 25, 2011

10198864 (B.P.A.I. Mar. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN W. BAUER
____________

Appeal 2009-009256
Application 10/198,864
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009256
Application 10/198,864

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Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 5-25. Claims 1-4 are withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a method and apparatus for reducing
banding artifacts in the printing of scanned images. Image scanning
introduces directional characteristic defects in the form of bands of image
defects. The bands are parallel to the longitudinal axis of a scanner’s
scanning bar that transports or carries image sensors relative to the media on
which the image appears. (Spec. ¶ [0001]). Similarly, image printing
introduces directional characteristic defects in the same direction as the
scanner’s directional characteristic defects. The printer’s directional
characteristic defects can additively combine with the scanner’s directional
characteristic defects, degrading the image quality. (Spec. ¶ [0002]). By
rotating the image so that the scanner’s directional characteristic defect is
orthogonal to the printer’s directional characteristic defect image,
degradation is reduced. (Spec. ¶ [0016]). Claim 5, which is illustrative of
the invention, reads as follows:
5. A method of reducing banding in printing a
scanned image comprising:
scanning an image using a scanner having a characteristic
defect direction to produce a scanned image having a first
characteristic defect in a first direction;
processing the scanned image to rotate the image such
that the first characteristic defect in the first direction is
generally orthogonal to a second characteristic defect in a
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second direction of a printer on which the image will be
printed, wherein the second direction originally can be
substantially the same direction as the first direction;
printing the scanned image such that a printed image has
the first characteristic defect in the first direction oriented
generally orthogonal to the second characteristic defect in the
second direction.
The Examiner relies on the following prior art in rejecting the claims:
Greivenkamp US 4,987,496 Jan. 22, 1991
Barrett US 5,301,036 Apr. 5, 1994
Edgar US 5,608,538 Mar. 4, 1997
Chapnik US 5,982,529 Nov. 9, 1999
Barclay US 6,789,876 B2 Sep. 14, 2004
Fotland US 6,873,438 B2 Mar. 29, 2005
Claims 5-8, 11-20, and 22-25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Edgar in view of Chapnik, and further in view of
Barclay and Barrett.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edgar in view of Fotland, and further in view of Barclay,
Chapnik, and Barrett.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edgar in view of Fotland, and further in view of Barclay,
Chapnik, Barrett, and Greivenkamp.
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Sep. 4, 2008; Reply Br. filed Jan. 15, 2009) and the
Answer (mailed Nov. 21, 2008) for the respective positions of Appellant and
the Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
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ISSUE
The central issue raised by Appellant’s arguments is whether the
combination of Edgar, Barclay, Chapnik, and Barrett teaches or suggests
printing a scanned image with the direction of banding defects introduced in
the scanning process orthogonal to the direction of banding defects
introduced in the printing process in order to reduce the additive effect of the
scanning and printing banding defects as recited in claim 5 (App. Br. 10).

FINDINGS OF FACT (FF)
Barrett
1. Barrett discloses scanning an image with an image input
scanner 4 (Abstract; Figs. 2, 11).
2. Barrett discloses processing an image in a controller 7 to re-
orient it 90º (Abstract; Figs. 2, 11).
3. Barrett discloses printing the reoriented image using a printer 8
(Abstract; Figs. 2, 11).
Edgar
4. Edgar discloses errors 23, 24, 25, and 26 introduced into a
scanned image in the form of speed jitter, lateral jitter, size jitter, and twist
jitter, and that the errors are generally parallel to a longitudinal axis of a
sensor array 21 (Fig. 1; col. 4, ll. 25-47).
Barclay
5. Barclay discloses banding artifacts produced by a printer due to
media advance inaccuracies (col. 5, l. 53 – col. 6, l. 63) which would be
understood by one of ordinary skill in the art as being parallel to the
longitudinal axis of the print head carriage.
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Chapnik
6. Chapnik discloses a printer having a scanning optical printing
head that produces linear artifacts 41 parallel to a transverse scanning
direction 31 of the print head and other linear artifacts 43 orthogonal to the
transverse scanning direction 31 (Fig. 5; col. 3, ll. 46-67).

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
If . . . the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999); see also MPEP § 2111.02(II).
Where a rejection is based on a combination of references, the order
in which prior art references are cited to the Applicant is of no significance,
but merely a matter of exposition. In re Bush, 296 F.2d 491, 496 (CCPA
1961).
“The fact that appellant has recognized another advantage which
would flow naturally from following the suggestion of the prior art cannot
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be the basis for patentability when the differences would otherwise be
obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
On appeal, Appellant may rebut the Examiner’s findings and
reasoning with opposing evidence or argument. Failure to do so may
constitute a waiver of potential arguments. See Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010).

ANALYSIS
Claim 5
Appellant contends that the combination of Edgar, Barclay, Chapnik,
and Barrett fails to disclose, teach, or suggest features of the invention
claimed in claim 5.
In particular, the combined references do not disclose,
teach or suggest selecting the orientation of an image on paper
to eliminate printed artifacts, either in a scanner or a printer. In
addition, none of the references discuss the additive problem of
scan artifacts and print artifacts whose solution is the primary
motivation for this invention. This is because selecting a print
artifact direction to be orthogonal to a scan artifact direction is
not disclosed, taught or suggested in these references.
(App. Br. 10).
Appellant further contends that the Examiner has exercised
impermissible hindsight (App. Br. 14; Reply Br. 6-7) in combining the
references.
The Examiner correctly responds that a statement of purpose or use in
the preamble is generally not given any patentable weight where, as here, the
body of the claim can stand alone (Ans. 18). See Pitney Bowes, 182 F.3d at
1305. The Examiner further responds that the additive nature of scan and
print artifacts is a matter of common sense (Ans. 16) and points to Barrett as
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disclosing that rotating an image so that its print direction is orthogonal to its
scan direction is well known (Ans. 18-19). The Examiner further finds that
the invention recited in claim 5 is a combination of known elements
according to known methods to yield predictable results (App. Br. 19). See
KSR, 550 U.S. at 416-17.
We find no error in the Examiner’s rejection of claim 5. We make the
following observations and findings for emphasis.
Appellant correctly points out that Barrett does not recognize the
advantage of reducing printed image degradation when the scanned image
file is printed by arranging the characteristic direction of the banding
artifacts produced in scanning orthogonal to the characteristic direction of
the banding artifacts produced in printing (App. Br. 11). However, with the
exception of verbiage relating to the advantages recognized by Appellant,
Barrett discloses every step of the recited method of claim 5 (FF 1-3; see
Bush, 296 F.2d at 496). Edgar teaches that the occurrence of banding
artifacts (“characteristic defects”) having an original characteristic direction
in the scanning of images is known (FF 4). Both Barclay and Chapnik teach
that banding artifacts (“characteristic defects”) are produced in printing and
that the printing artifacts have a characteristic direction in the same direction
as the original characteristic direction of the artifacts produced in scanning
(FF 5, 6).
Accordingly, we find that one skilled in the art would recognize from
the teachings of Edgar (FF 4), Barclay (FF 5), and Chapnik (FF 6) that such
defects would be present in Barrett’s scanning and printing processes. We
also find that the additive nature of these defects is a matter of common
sense (see Ans. 18), readily apparent to the person of ordinary skill in the art.
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Since knowledge of the additive nature of the defects is based on common
sense, it is predictable that rotating the image to be printed so that the scan
defects are orthogonal to the print defects will reduce the additive effect
(Ans. 19). Furthermore, it is clear that Appellant’s recognized advantage
would flow naturally from practicing Barrett’s teaching when Barrett rotates
a scanned image 90º (or 270º, i.e., -90º) prior to printing. As Appellant has
merely recognized an advantage that flows naturally from following the
method taught or suggested by the prior art, the recognition of the advantage
cannot be the basis for patentability. See Obiaya, 227 USPQ at 60.
Turning to Appellant’s contention that the Examiner has resorted to
impermissible hindsight in rejecting the claims (App. Br. 14; Reply Br. 6-7),
we find the Examiner’s response (Ans. 25-26) to be persuasive, particularly
in view of the Examiner’s extensive rationale and explanations (Ans. 3-6,
17-22), as well as the observations and findings supra.
Therefore, we agree with the Examiner’s finding that claim 5 recites a
combination of familiar elements according to known methods that does no
more than yield predictable results, see KSR, 550 U.S. at 416, that can be
implemented by a person of ordinary skill, see id. at 417. Accordingly, we
sustain the rejection of claim 5 and of claims 6-8, 11-20, and 22-25 which
were argued together with claim 5.
Claims 9 and 10
Appellant contends that the Examiner has mischaracterized Fotland in
that “Fotland does not disclose, teach or suggest anything about a
directionally-oriented characteristic defect attributable to a scanning
process” (App. Br. 12). The Examiner responds with further explanation of
the rejection (Ans. 20-22), which does not reference the teachings of
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Fotland, but relies only on the teachings of the other four references cited,
Edgar, Barclay, Chapnik, and Barrett. Implied in this further explanation is
that the relevant teachings of Fotland are cumulative of teaching found in the
other references, such as Barrett (cf. FF 2). Appellant’s Reply Brief includes
no argument to dispute the Examiner’s further explanation. See Frye, 94
USPQ2d at 1075. Accordingly, we sustain the rejection of claims 9 and 10.
Claim 21
Appellant argues the patentability of claim 21 on the same basis as
claim 5 (App. Br. 13). The Examiner’s additional explanation of the
rejection (Ans. 23-24) was not disputed in Appellant’s Reply Brief.
Accordingly, we sustain the rejection of claim 21.

ORDER
The decision of the Examiner to reject claims 5-25 is affirmed. No
time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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