Ex parte Coleman

Board of Patent Appeals and Interferences

Oct 13, 2000

08579385 (B.P.A.I. Oct. 13, 2000)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT M. COLEMAN
____________
Appeal No. 98-1474
Application No. 08/579,385
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 1 and 3. We reverse.
BACKGROUND
The invention at issue in this appeal relates to digital
color printing in which gray objects and color objects are
both printed. Gray can be specified by a page description
language to be printed in either black colorant or in process
Appeal No. 98-1474 Page 2
Application No. 08/579,385
black, which is a combination of cyan, magenta, yellow, and
black (C, M, Y, K). Black colorant has a different gloss than
process black. Accordingly, a more pleasing print will be
made if process black is used over a colored (i.e., a C, M, Y)
background and black colorant is used over a white or gray
background. Also, process black exhibits slight edges of C,
M, Y color if its layers of color are not perfectly aligned.
Such edges are obvious over a gray or white background not
over a colored background.

Claim 1, which is representative for our purposes,
follows:
1. In a system which uses electronic signals
to specify black and non black colorants to be used
in a printing process to print a grey area over a
background area, a method for determining colorants
to be used to print said grey area comprising the
steps of:
testing said signals to determine if the
background is to be printed using a non black
colorant,
if a non black colorant is to be used to print
the background, generate a signal specifying that
said grey color will comprise a non black colorant,
and
printing said grey area.
Appeal No. 98-1474 Page 3
Application No. 08/579,385
The reference relied on in rejecting the claims follows:
Bollman et al. (Bollman) 5,289,297 Feb.
22, 1994.
Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
obvious over Bollman. Rather than repeat the arguments of the
appellant or examiner in toto, we refer the reader to the
briefs and answer for the respective details thereof.
OPINION
In deciding this appeal, we considered the subject matter
on appeal and the rejection advanced by the examiner.
Furthermore, we duly considered the arguments and evidence of
the appellant and examiner. After considering the totality of
the record, we are persuaded that the examiner erred in
rejecting claims 1 and 3. Accordingly, we reverse.
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
Appeal No. 98-1474 Page 4
Application No. 08/579,385
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these principles in mind, we address the examiner's
rejection and the appellant's argument.
The examiner makes the following assertion.
Bollman teaches ... testing signals to determine if
the background uses non-black colorant. This is
described in the determining step 250 as taught at
col. 6, lines 38-43, where it states that
determination is made as to whether each color in
the LUT, as determined by the area which has been
designated, as being a foreground color or
background color; and if a non-black colorant is
used in the background, then the grey value will
consist of non-black colorant, i.e., a value more
than the densest value of each of the r, g and b
components of the system, see col. 6, lines 8-13.
(Examiner's Answer at 4-5.) The appellant argues, "in Bollman
it is the density of colorants in the background that is being
tested against a reference level, while in this application it
is the presence of non black colorant of any density that is
Appeal No. 98-1474 Page 5
Application No. 08/579,385
tested for. Testing for the existence of a non-black colorant
(of any density) and testing whether the background is above
or below a density reference do not read on one another."
(Appeal Br. at 4.)
“‘[T]he main purpose of the examination, to which every
application is subjected, is to try to make sure that what
each claim defines is patentable. [T]he name of the game is
the claim ....’” In re Hiniker Co., 150 F.3d 1362, 1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (quoting Giles S. Rich,
The Extent of the Protection and Interpretation of
Claims--American Perspectives, 21 Int'l Rev. Indus. Prop. &
Copyright L. 497, 499, 501 (1990)). Here, claim 1 and 3
specify in pertinent part the following limitations: "[i]n a
system which uses electronic signals to specify black and non
black colorants to be used in a printing process to print a
grey area over a background area, ... testing said signals to
determine if the background is to be printed using a non black
colorant ...." Accordingly, the limitations require testing
signals indicating both black and non black colorants to
Appeal No. 98-1474 Page 6
Application No. 08/579,385
determine if a background is to be printed using a non black
colorant.
The examiner fails to show a suggestion of the
limitations in the prior art. “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983)). “The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as
an instruction manual or ‘template’ to piece together the
teachings of the prior art so that the claimed invention is
rendered obvious.” Id. at 1266, 23 USPQ2d at 1784, (citing In
Appeal No. 98-1474 Page 7
Application No. 08/579,385
re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991)).
Here, the examiner alleges that Bollman teaches testing
signals to determine if the background uses non-black colorant
at column 6, lines 38-43. (Examiner's Answer at 4-5.) The
reference, however, belies the allegation. Although Bollman
teaches testing signals specifying colorants, the signals do
not indicate black colorants, and the testing does not
determine if a background is to be printed using a non black
colorant. To the contrary, the signals indicate only non
black colorants, viz., red, green, and blue (r, g, b). Col.
6, l. 41. Further to the contrary, the testing determines
whether a pixel is in the foreground or the background.
Specifically, "at step 250, a determination is made as to
whether each color the look up table
color in the selected area is a background or foreground color
...." Id. at ll. 39-41.
Because Bollman teaches indicating only non black
colorants and determining whether a pixel is in the foreground
Appeal No. 98-1474 Page 8
Application No. 08/579,385
or the background, we are not persuaded that teachings from
the prior art would have suggested the limitations of "[i]n a
system which uses electronic signals to specify black and non
black colorants to be used in a printing process to print a
grey area over a background area, ... testing said signals to
determine if the background is to be printed using a non black
colorant ...." The examiner fails to establish a prima facie
case of obviousness. Therefore, we reverse the rejections of
claims 1 and 3 as obvious over Bollman.
CONCLUSION
In summary, the rejection of claims 1 and 3 under 35
U.S.C. § 103(a) is reversed.
Appeal No. 98-1474 Page 9
Application No. 08/579,385
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
)INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
lp
Appeal No. 98-1474 Page 10
Application No. 08/579,385
RONALD ZIBELLI
XEROX CORPORATION
XEROX SQUARE 020
ROCHESTER NY 14644
APPEAL NO. 98-1474 - JUDGE BARRY
APPLICATION NO. 08/579,385
APJ BARRY - 2 copies
APJ JERRY SMITH
APJ FLEMING
DECISION: REVERSED
Prepared By: APJ BARRY
DRAFT SUBMITTED: 20 Sep 01
FINAL TYPED:
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