Ex Parte Beretta

Patent Trial and Appeal Board

Dec 11, 2012

11123560 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GIORDANO BRUNO BERETTA
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Appeal 2010-006810
Application 11/123,560
Technology Center 2600
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Before: ROBERT E. NAPPI, HUNG H. BUI, and LYNNE E. PETTIGREW
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006810
Application 11/123,560

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 41.
We affirm-in-part.
INVENTION
The invention is directed to method for proofing a page for color
discriminability problems. Specification page 3 and figure 4. Claim 1 is
representative of the invention and reproduced below:
1. An automated computer-implemented method for
proofing a page for color discriminability problems, the method
comprising:
converting a first color of a first object appearing on the
page and a second color of a second object appearing on the
page to coordinates of a color naming system;
identifying a first color name of the first color and a
second color name of the second color based on the
coordinates; and
identifying whether the first color and the second color
are discriminable based on the first color name and the second
color name.

REFERENCES
MacPeake US 2005/0084152 A1 Apr. 21, 2005
Moravec US 2005/0157926 A1 Jul. 21, 2005
Mojsilovic US 2006/0087517 A1 Apr. 27, 2006

Appeal 2010-006810
Application 11/123,560

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REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 14, 16, 18, and 19 under
35 U.S.C. § 101 as directed to non-statutory subject matter. Ans. 3-4.1
The Examiner has rejected claims 1 through 7, 10 through 23, 26
through 33, and 36 through 39 under 35 U.S.C. § 103(a) as unpatentable
over Moravec and Mojsilovic. Ans. 5-16.
The Examiner has rejected claims 8, 9, 24, 25, 34, 35, 40, and 41
under 35 U.S.C. § 103(a) as unpatentable over Moravec, Mojsilovic, and
MacPeake. Ans. 16-19.

ISSUES
Rejection under 35 U.S.C. § 101
Appellant argues on pages 6 and 7 of the Appeal Brief, and pages 2
through 3 of the Reply Brief that the Examiner’s rejection under 35 U.S.C.
§ 101 is in error because the claim is directed to a particular machine.2
These arguments present us with the issue did the Examiner err in
concluding that independent claim 1 is not drawn to statutory subject matter?

Rejections under 35 U.S.C. § 103(a)
Appellant argues on pages 7 through 9 of the Appeal Brief, and pages
3 through 6 of the Reply Brief that the Examiner’s rejection of independent
claims 1, 20, 30, and 36 under 35 U.S.C. § 103 is in error. These arguments

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
November 20, 2009.
2 Throughout this opinion we refer to the Appeal Brief dated September 4,
2009, and Reply Brief dated January 20, 2010.
Appeal 2010-006810
Application 11/123,560

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present us with the issue did the Examiner err in finding the combination of
Moravec and Mojsilovic teaches identifying whether a first color and a
second color are discriminable based on the first color name and the second
color name, as recited in independent claims 1, 20, 30 and 36?

ANALYSIS
Rejection under 35 U.S.C. § 101
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellant’s assertion that the Examiner erred
in in concluding that independent claim 1 is not drawn to statutory subject
matter. Appellant argues that claim 1 is directed to statutory subject matter
as it recites a particular machine (an automated computer implemented
method), and a transformation step (converting colors to coordinates of a
color naming system). App. Br. 6-7. In response, the Examiner states the
recitation of a computer implemented method is in the preamble of the claim
and, as such, does not limit the claim. Further, the Examiner finds that the
body of the claim recites only steps that are not tied to a machine and, as
such, the claim is not drawn to statutory subject matter. Ans. 19. We concur
with the Examiner that the preamble does not limit the claim. Our reviewing
court has said “[p]reamble language that merely states the purpose or
intended use of an invention is generally not treated as limiting the scope of
the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir.
2006). Further, the argued conversion of color to coordinates of a color
naming system is not a transformation; rather, the conversion is just a step of
interpreting data (i.e. the color is not transformed). Accordingly, we sustain
Appeal 2010-006810
Application 11/123,560

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the Examiner’s rejection of claims 1 through 14, 16, 18, and 19 under 35
U.S.C. § 101.

Rejections under 35 U.S.C. § 103(a)
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We agree with Appellant’s conclusion, that the Examiner erred
in finding the combination of Moravec and Mojsilovic teaches identifying
whether a first color and a second color are discriminable based on the first
color name and the second color name, as recited in independent claims 1,
20, 30, and 36. The Examiner finds that Moravec teaches a system that
evaluates design and measures contrast distance between colors of the
foreground and background and that Mojsilovic teaches attaching names to
colors based upon perceived color differences. Ans. 20. Based upon these
findings, the Examiner further finds that the step of identifying whether a
first color and a second color are discriminable based on the first color name
and the second color name is obvious. We disagree; we do not find that the
combination of these teachings suggests that the colors are discriminated
based on color name. Accordingly, we will not sustain the Examiner’s
rejection of independent claims 1, 20, 30, and 36. Similarly, we will not
sustain the Examiner’s rejections of dependent claims 2 through 19, 21
through 29, 31 through 35, and 37 through 41.

Appeal 2010-006810
Application 11/123,560

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CONCLUSION
We sustain the Examiner’s rejections of claims 1 through 14, 16, 18,
and 19 under 35 U.S.C. § 101.
We do not sustain the Examiner’s rejection of claims 1 through 41
under 35 U.S.C. § 103(a).
The decision of the Examiner to reject claims 1 through 41is affirmed-
in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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