Ex Parte Conlon

Patent Trial and Appeal Board

Sep 2, 2016

12338318 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/338,318 12/18/2008
75931 7590
Basch & Nickerson LLP
1751 Penfield Road
Penfield, NY 14526
09/07/2016
FIRST NAMED INVENTOR
Paul Roberts Conlon
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.
20061983-US-NP 5228
EXAMINER
YANG, ANDREW GUS
ART UNIT PAPER NUMBER
2614
NOTIFICATION DATE DELIVERY MODE
09/07/2016 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):
usptomail@bnpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ROBERTS CONLON
Appeal2015-002191
Application 12/338,318 1
Technology Center 2600
Before THU A. DANG, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-29. Final Act. 8. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
The invention relates to rendering rasterized data. Abstract. Claim 1
is exemplary of the matter on appeal:
1 According to Appellant, the real party in interest is Xerox Corporation.
App. Br. 2.
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Application 12/338,318
1. A method of rendering a rasterized data,
compnsmg:
receiving a non-rasterized page description language data
and a source transformation matrix, the source transformation
matrix being a transformation matrix created by an ordered
matrix multiplication of a plurality of individual transformation
operation matrices, each individual transformation operation
matrix representing a rotation transformation operation, a scaling
transformation operation, or a translation transformation
operation;
rasterizing, using a processor, the non-rasterized page
description language data;
generating, from the source transformation matrix, a
rotation transformation matrix, a scaling transformation matrix
and a translation transformation matrix based on a predetermined
matrix order;
determining a rotation value from the rotation
transformation matrix,
determining an order of transformation operations to be
performed upon the rasterized data;
creating an order dependent rotation value dependent
scaling transformation matrix and an order dependent rotation
value dependent translation transformation matrix;
creating a target transformation matrix by matrix
multiplying the order dependent rotation value dependent scaling
transformation matrix, the order dependent rotation value
dependent translation transformation matrix, and the rotation
transformation operation in a matrix order corresponding to the
determined order of transformation operations to be performed
upon the rasterized data;
decomposing the target transformation matrix into a
plurality of individual transformation operation matrices;
generating a discrete transformation operation value, from
a corresponding individual transformation operation matrix, for
each transformation operation to be performed upon the
rasterized data; and
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Application 12/338,318
performing the transformation operations upon the
rasterized data based upon the generated discrete transformation
operation values.
App. Br. 171-72 (Claims App.).
THE REJECTIONS
Claims 1-29 stand provisionally rejected for obviousness-type double
patenting over claims 1-20 of copending patent application number
12/636,331. Final Act. 2-7; Ans. 2---6.
Claims 1-29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Warmus et al. ("Warmus") (US 2001/0051964 Al,
published Dec. 13, 2001) in view of Le Tuan (US 2008/0049025 Al,
published Feb. 28, 2008). Final Act. 8-20.
ANALYSIS
The double patenting rejection
Appellant argues copending application '331 is a continuation in part
invented at a later time and, therefore, the Examiner errs by not establishing
two-way obviousness. App. Br. 9 (citing MPEP §804(11)(8)(1)(b)).
Appellant also argues the Examiner's findings regarding one-way
obviousness are inadequate as required for obviousness-type double
patenting. Id. at 10-40. As discussed below, we are not persuaded by
Appellant's arguments.
We are not persuaded by Appellant's argument that two-way
obviousness is applicable to the record before us. As stated in the MPEP:
Similarly, even if the application under examination is the
earlier-filed application, only a one-way determination of
distinctness is needed to support a double patenting rejection in
the absence of a finding: (A) that "the PTO is solely responsible
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for any delays" in prosecution of the earlier-filed application (Jn
re Hubbell, 709 F.3d 1140, 1150, 106 USPQ2d 1032, 1039 (Fed.
Cir. 2013); and (B) that the applicant could not have filed the
conflicting claims in a single (i.e., the earlier-filed) application
(In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986)).
In Kaplan, a generic invention (use of solvents) was invented by
Kaplan, and a species thereof (i.e., use of a specific combination
of solvents) was invented by Kaplan and Walker. Multiple
applications were necessary to claim both the broad and narrow
inventions because at the time the applications were filed, 3 5
U.S.C. 116 did not expressly authorize filing a patent application
in the name of joint inventors who did not make a contribution
to the invention defined in each claim in the patent.). Compare
In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998),
wherein the genus and species claims could have been filed in
the same application.
MPEP §804(11 )(8)(1 )(b ).
The above cited cases make it clear the two-way test is a "narrow
exception to general rule of the one-way test" (Berg, 140 F.3d at 1432) and
the two-way test does not apply where PTO was not "solely responsible for
the delay in causing [a] second-filed application to issue prior to the first."
(Hubbell, 709 F.3d at 1149).
On the record before us, Appellant presents inadequate basis to
warrant application of the two-way test. We also agree Appellant has not
rebutted the Examiner finding "there was no administrative delay." Ans. 2;
Reply Br. 2.
Regarding the one-way test presented by the Examiner, Appellant
argues claim 1 of the present application sets forth generating a discrete
transformation operation value, from a corresponding individual
transformation operation matrix, for each transformation operation to be
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Application 12/338,318
performed upon the rasterized data. App. Br. 12; see also Reply Br. 2-8. In
particular, Appellant argues:
Thus, independent claim 1 of co-pending US Patent
Application Number 12/636,331 fails to recite generating a
discrete transformation operation value, from a corresponding
individual transformation operation matrix, for each
transformation operation to be performed upon the rasterized
data because two of the transformation operations to be
performed upon the rasterized data are NOT generated from a
corresponding individual transformation operation matrix,
wherein the corresponding individual transformation operation
matrices are created by decomposing the target transformation
matrix.
Moreover, the Examiner has failed to show how this
difference between independent claim 1 of co-pending US Patent
Application Number 12/636,331 and independent claim 1 of the
present application would have been obvious to one of ordinary
skill in the art.
Id. at 13.
We are not persuaded by Appellant's arguments and, instead, agree
with the findings and determinations of the Examiner:
However, copending claim 1 does not recite which
specific transformation operations are to be performed.
Copending claim 1 also does not recite that transformation
operations are generated from a corresponding individual
transformation operation matrix. Rather, the copending claim 1
only recites "performing transformation operations" and
generating various discrete transformation values from
corresponding transformation operation matrix. Furthermore,
the copending claim 1 does in fact recite generating a discrete
transformation operation value, from a corresponding individual
transformation operation matrix, for each transformation
operation to be performed upon the rasterized data; ...
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Application 12/338,318
Current claim 1 recites: "decomposing the target
transformation matrix into a plurality of individual
transformation operation matrices" and does not limit the
plurality of matrices to any number or type of matrix. Copending
claim 1 recites decomposing into a rotation transformation
operation matrix, scaling transformation operation matrix,
translation transformation operation matrix, and shear
transformation operation matrix. Therefore, the current claim 1
limitation "decomposing the target transformation matrix into a
plurality of individual transformation operation matrices" is
obvious in light of the copending claim 1.
Appellant argues that the Examiner has failed to show how
this difference between independent claim 1 of co-pending US
Patent Application Number 12/636,331 and independent claim 1
of the present application would have been obvious to one of
ordinary skill in the art (page 13, paragraph 2). However, current
claim 1 only recites "decomposing the target transformation
matrix into a plurality of individual transformation operation
matrices." Current claim 1 does not limit the target
transformation matrix to specific transformation matrices, nor
limit the number of decompositions. Co-pending claim 1 recites
the individual transformation operation matrices; and
decomposing one of these individual transformation operation
matrices into two additional matrices. The difference would
have been obvious because decomposing the corresponding
transformation matrix into the individual transformation
operation matrices (i.e., rotation, first scaling, and translating)
and further decomposing one of these individual transformation
operation matrices reads on the step of decomposing the
transformation matrix into a plurality of individual
transformation operation matrices. In other words, both sets of
claims recite decomposing a transformation matrix into a
plurality of matrices.
Ans. 3-5.
In view of the above, we sustain the obviousness-type provisional
double patenting rejection of claim 1, similarly argued independent claims 8,
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15, 22, and 25, and not argued separately dependent claims 2-7, 9-14, 16-
21, 23, and 24 over copending application '331.
The 35 U.S.C. § 103(a) rejection
Appellant argues the claim 1 invention "sets forth the decomposing of
the source transformation matrix into two individual transformation matrices
(an order dependent rotation value dependent scaling transformation matrix
and an order dependent rotation value dependent translation transformation
matrix) and then reconstructing a target transformation matrix." App. Br.
41. Specifically, Appellant argues neither Warmus or Le Tuan teach the
claim 1 limitation "creating an order dependent rotation value dependent
scaling transformation matrix and an order dependent rotation value
dependent translation transformation matrix." Id. 40-44; Reply Br. 9-14.
According to Appellant, the disputed limitation of claim 1 recites "the
creation of two factor matrices, an order dependent rotation value dependent
scaling transformation matrix and an order dependent rotation value
dependent translation transformation matrix, wherein the values in these
factor matrices are order dependent." App. Br. 43. In particular, according
to Appellant:
Id.
In summary, independent claim 1 recites two sets of matrices, the
factor matrices and the product matrix, which are order
dependent, whereas Le Tuan teaches that the values in the
resulting product matrix are order dependent. Thus, at best, the
inherent teachings of Le Tuan would suggest that the claimed
target transformation matrix is order dependent, not the (factor)
matrices, the claimed order dependent rotation value dependent
scaling transformation matrix and the claimed order dependent
rotation value dependent translation transformation matrix.
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Application 12/338,318
The Examiner finds Le Tuan teaches the disputed claim 1 limitation
because:
it is deemed inherent these matrices are first created before they
are used in a computation in the next step of creating a target
transformation matrix because multiplying said order dependent
rotation value dependent scaling transformation matrix and said
order dependent rotation value dependent translation
transformation matrix requires these matrices to exist.
Final Act. 10-11.
Regarding the limitation "order dependent" the Examiner finds Le
Tuan teaches the multiplication of separate matrices, and "the order in which
matrices are multiplied can change the result of a series of matrix operations,
thus the matrices are order dependent." Final Act. 11 (citing Le Tuan i-f 58;
Fig. 4).
The Examiner additionally finds matrix multiplication is order
dependent and the claim
Ans. 9
is not limited to the individual factor matrices being order
dependent in a way that distinguishes the interpretation of the
matrices from Le Tuan. The claim is not specific to recite that
the values, in the factor matrices are order dependent, and thus,
is not interpreted as such. Le Tuan teaches that the matrices are
order dependent because the order in which they are multiplied
affects the end result when performing matrix multiplication.
The Examiner also finds, even if Appellant argues the matrix itself is
order dependent, Le Tuan teaches this because, for example, the individual
factors in a M_ resize 3x3 matrix value order can affect the end result by
differing in scaling in the x and y dimensions. Id. 9-10.
In reply, Appellant argues the Examiner presents insufficient basis for
the inherency finding. Reply Br. 9. In particular
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Id.
For example, Le Tuan could easily create a non-order
dependent translation value dependent scaling transformation
matrix and a non-order dependent scaling value dependent
translation transformation matrix and utilized these matrices in
performing a matrix multiplication.
In other words, the Examiner has not provided any evidence
that Le Tuan would provide (create) the specifically defined
transformation matrices, as set forth in the claims, in order to
perform a matrix multiplication.
According to Appellant, ' [ t ]he Examiner must present evidence or a
logically sound argument that the specifically defined transformation
matrices, as set forth in the claims, are necessarily present in the reference"
and "if the matrix multiplication can be realized by any other possible
transformation matrices, inherency fails." Id. (citing MPEP §2112(1 V) and
cited cases therein). Appellant additionally argue the Examiner's inherency
finding is also in error because it is inconsistent with Le Tuan' s teaching of
anchor point dependency, rather than the claimed order dependent and
rotation dependent. Id. at 11.
Regarding the interpretation of claim 1, we agree with Appellant the
matrix product and the matrices are required to be order dependent. Id. at
11; see also Spec. pp. 17-18.
Regarding inherency, we are persuaded by Appellant's arguments. In
relying upon the theory of inherency, the Examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349
(Fed. Cir. 2002).
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In view of the above, we do not sustain the rejection of claim 1.
Independent claims 8, 15, 22, and 25 recite substantially the same limitation,
and, therefore, we do not sustain the rejection of these claims. Claims 2-7,
9-14, 16-21, 23, and 24 are dependent claims and, therefore, we also do not
sustain the rejection of these claims. See In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent
claims from which they depend are nonobvious").
DECISION
We affirm the Examiner's decision provisionally rejecting claims 1-
29 for obviousness-type double patenting.
We reverse the Examiner's decision rejecting claims 1-29 under
35 U.S.C. § 103(a).
AFFIRMED-IN-PART
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