Ex Parte ConlonDownload PDFPatent Trial and Appeal BoardMar 30, 201612636361 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/636,361 12/11/2009 75931 7590 Basch & Nickerson LLP 1751 Penfield Road Penfield, NY 14526 04/01/2016 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. 20061977-US-CIP 1185 EXAMINER PRINGLE-PARKER, JASON A ART UNIT PAPER NUMBER 2618 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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 Appeal2014-002555 Application 12/636,361 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 1-20. 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, Figure 1. Claim 1 is exemplary of the matter on appeal: 1. A method of rendering rasterized data, comprising: 1 According to Appellant, the real party in interest is Xerox Corporation. App. Br. 2. Appeal2014-002555 Application 12/636,361 receiving non=rasterized page description language data and a corresponding transformation matrix representing transformation operations to be performed; rasterizing, using a processor, the non-rasterized page description language data to create rasterized data; decomposing the corresponding transformation matrix into a rotation transformation operation matrix, a first scaling transformation operation matrix, and a translation transformation operation matrix; decomposing the first scaling transformation operation matrix into a shear transformation operation matrix and a second scaling transformation operation matrix; generating a discrete rotation transformation operation value from the rotation transformation operation matrix; generating a discrete scaling transformation operation value from the second scaling transformation operation matrix; generating a discrete translation transformation operation value from the translation transformation operation matrix; generating a discrete shear transformation operation value from the shear transformation operation matrix; and performing transformation operations upon the rasterized data based upon the generated discrete transformation operation values. App. Br. 111 (Claims App.). THE REJECTIONS Claims 1-20 of the subject application on appeal 12/636,361 ("E"); stand provisionally rejected for obviousness-type double patenting over copending patent application numbers: 12/338,300 ("A," now abandoned); 12/338,318 ("B"); 12/338,260 ("C"); 12/339, 148 ("D," now U.S. Patent No. 8,754,909); 12/636,348 ("F"); 12/636,331 ("G"); 12/636,297 ("H"); 12/636,287 ("I"); 12/636,274 ("J); 12/636,266 ("K"); and 12/636,311 ("L"). Final Act. 2--4. 2 Appeal2014-002555 Application 12/636,361 Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Warmus et al. (hereinafter "Warmus") (US 2001/0051964 Al, published Dec. 13, 2001) in view of Hemingway (US 6,166,741, issued Dec. 26, 2000). Final Act. 7-29. ANALYSIS The double patenting rejection Appellant argues the Examiner does not present a prima facie case of obviousness-type double patenting and provides inadequate findings of fact to support the rejection as required under Graham v. John Deere Co., 383 U.S. 1 (1966), and the Manual of Patent Examining Procedure (MPEP) § 804 (9th Ed., Mar. 2014). App. Br. 9-95; Reply Br. 2--46. As discussed below, we are persuaded by Appellant's arguments. According to Appellant: MPEP §804 states that the analysis employed in an obviousness-type double patenting determination parallels the guidelines for a 35 U.S.C. §103 rejection. Moreover, MPEP §804 states that the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), for determining obviousness under 35 U.S.C. §103, are employed when making an obvious-type double patenting analysis. MPEP §804 states that the factual inqmnes are (A) determine the scope and content of a patent claim relative to a claim in the application at issue; (B) determine the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue; (C) determine the level of ordinary skill in the pertinent art; and (D) evaluate any objective indicia of non-obviousness. Lastly, MPEP §804 states that any obviousness-type double patenting rejection should make clear (A) the differences between the inventions defined by the conflicting claims; and (B) 3 Appeal2014-002555 Application 12/636,361 the reasons \'l1hy a person of ordinaf'J skill in the art \'l/ould conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent. App. Br. 9. The record before us includes the following: 1. Final Office Action. The Examiner provides a chart ("chart") setting forth relationships among claim 1 of the identified copending applications (designated A-L, with E being the current application on appeal). Final Act. 2--4. According to the Examiner, the chart shows "claim 1 of all applications relate to the use of non-rasterized page description language data and a transformation matrix which is decomposed into at least rotation, scaling and translation and generating from that discrete transformation operation values." Id. at 3. 2. Appeal Brief. Appellant argues the chart (Final Act. 2--4) is inadequate basis for obviousness-type double patenting and provides claim charts showing independent claims of the current application on appeal (E) as compared to seven of the eleven copending applications (A-D and F-L) identified as the basis for the double patenting rejection, along with commentary. App. Br. 9-95. The provided2 claim charts constitute: 12/338,300 (A); 12/338,260 (C); 12/339, 148 (D); 2 Four additional copending applications and identified differences are provided in the Reply Brief. Reply Br. 10--45. 4 Appeal2014-002555 Application 12/636,361 12/338,318 (B); 12/636,266 (K); 12/636,287 (I); and 12/636,297 (H). 3. Answer. The Examiner provides "a more detailed mapping [("mapping")] of all of the limitations in claim 1 for each of the [ eight3 copending] applications" along with commentary on the mapping. Ans. 29-32. Specifically, the Examiner provides Table 1 which maps claim 1 along with Table 2 which identifies the claim language of the eight copending applications. 4 Id. at 30-32. The Examiner provides commentary for seven identified copending applications and identifies differences from the application on appeal 12/636,361 (E). Id. at 29. 4. Reply Brief. Appellant argues the Examiner's mapping and commentary are inadequate bases for the double patenting rejection, and the Examiner does not address copending application numbers: 12/338,300 (A); 12/338,318 (B); 12/338,260 (C); and 12/339, 148 (D). Reply Br. 2--4. We are persuaded the Examiner's chart (Final Act. 2-3) is inadequate basis for obviousness, because, while it may show a relationship among the copending applications, it provides no discussion of the required inquiry for obviousness and no discussion of claims for any of the identified copending applications. App. Br. 9-10; Graham, 383 U.S. at 17; MPEP § 804; see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). 3 The eight copending applications are E, F, G, H, I, J, Kand L. Ans. 21. 4 Table 1 and 2 are attached as Exhibit 1. 5 Appeal2014-002555 Application 12/636,361 Regarding the mapping and commentaf'J provided in the ii~ns\'l/er, because we agree with Appellant that the Final Office Action chart (Final Act. 2-3) is inadequate basis for obviousness for any of the identified copending applications, and the Examiner presents no additional basis in the Answer for the four copending applications A-D, 5 we do not sustain the rejection over copending applications B-D. Reply Br. 3--4. We now address the double patenting rejections of current application E ('361) over copending applications F, G, H, I, J, K, and L. Ans. 20-23; Reply Br. 2-8. We are persuaded by Appellant's argument that the mapping and commentary do not address claims 2-20 and, therefore, we do not sustain the double patenting rejection for these claims. Reply Br. 4. We agree with Appellant that the mapping by itself, without additional commentary, is inadequate to support a prima facie case of obviousness-type double patenting because the mapping provides inadequate evidence required by Graham and the MPEP, supra. Reply Br. 4--5. In the commentary, the Examiner finds all of the limitations of current application 12/636,361 (E) are found in copending applications 12/636,311 (L), 12/636,331 (G), and 12/636,348 (F) as shown by the chart and, therefore, the provisional obviousness-type double patenting rejection is proper. Ans. 29. Appellant argues, and we agree, this is inadequate as it provides no explanation why the differences are obvious. Reply Br. 45. Regarding copending application K ('266), the Examiner's commentary finds it is the most similar to the current application E (' 3 61) and the difference is "controlling operations of the printing device [OJ" and "performing transformation operations upon the rasterized data [O']," where 5 A is now abandoned. Accordingly, the rejection over A is moot. 6 Appeal2014-002555 Application 12/636,361 both are the final step in the method and involve operations. Anc ')Q .L :1.. .. LL0. ~_/ • According to the Examiner, in the preamble of both6 applications, the method is for "controlling operations of a printing device" and "[b ]ased upon the language, it being the final step, and the preamble, it is clear that 'performing transformation operations with the rasterized data' relates to transformation for printing like the 12/636,266 [K] application does." Id. Appellant argues, and we agree, the Examiner errs in finding "controlling operations of a printing device is a minor variation of performing transformation operations upon the rasterized data." Reply Br. 4--5. Specifically, we agree the finding is conclusory and the Examiner provides insufficient evidence to establish a prima facie case. Reply Br. 5. In view of the above, we do not sustain the provisional double patenting rejection over copending applications B-D and F-L. The 35 U.S.C. § 103(a) rejection A.ppellant argues \Varmus and Hemingv,ray do not teach the follmving claim 1 limitations: decomposing the corresponding transformation matrix into a rotation transformation operation matrix, a first scaling transformation operation matrix, and a translation transformation operation matrix; and decomposing the first scaling transformation operation matrix into a shear transformation operation matrix and a second scaling transformation operation matrix. App. Br. 96-98; Reply Br. 52-58. 6 We note the preamble of current Application E does not recite "controlling operations of a printing device." App. Br. 111. 7 Appeal2014-002555 Application 12/636,361 ii~s discussed belo\'lv', \'l.;e agree \'l1ith the Examiner's findings and are not persuaded by Appellant's arguments. Appellant argues Hemingway "discloses a single Relative Transformation Matrix [RTM] having scalar (Sx and Sy), shear Rx and Ry), and translation (Tx and Ty) values" and, therefore, "discloses at best, decomposing the [RTM] into scaling, shear, and translation values." App. Br. 97. According to Appellant, Hemingway is "void of any teaching or suggestion of creating a rotation transformation operation matrix, a first scaling transformation operation matrix, and a translation transformation operation matrix by decomposing a [RTM]. Id. at 98. Appellant argues Hemingway does not teach or suggest "decomposing the first scaling transformation operation matrix into a shear transformation operation matrix and a second scaling transformation operation matrix because Hemingway discloses the [R TM] has scalar, shear, and translation values" and "[t]hus, it is not logical to suggest that Hemingway would disclose the decomposition of the scaling values to create shear values when the shears values are already readily available in the [RTM]." App. Br. 98. Appellant also argues the Examiner errs in finding that a matrix is an array of values that can be manipulated with or without a matrix. Id. According to Appellant, the combined teachings of Warmus and Hemingway do not disclose or suggest the disputed claim limitations. Id. The Examiner finds the combination of Warmus and Hemingway teaches the claim 1 limitations. Final Act. 7-10. In particular, the Examiner finds Hemingway teaches the disputed limitations. Id. at 9 (citing Hemingway col. 5, 1. 65---col. 6, 1. 18). Final Act. 9-10. The Examiner concludes it would have been obvious to combine Hemingway and W armus 8 Appeal2014-002555 Application 12/636,361 because one of ordinaf'J skill in the art \'l/ould use the shearing value from Hemingway's matrix to generate a discrete shear transform operation value along with the other discrete values as taught by Warmus. Id. at 10. The Examiner finds motivation for the combination is to provide greater control over the transformation. Id. In accordance with the Examiner's findings, Hemingway teaches a source transformation matrix that stores translation, shear, and rotation values. Ans. 33 (citing Hemingway col. 5, 1. 65---col. 6, 1. 18). According to the Examiner, Hemingway's RTM contains Rx, Ry, Sx, and Sy which provide rotation matrix information Sx and Sy, which apply scaling of the X and Y components. Id. The Examiner finds Hemingway teaches a rotation transformation matrix and a scaling transformation matrix generated from the matrix because the source matrix values can be isolated to perform the rotation and scaling. Id. The Examiner also finds "[S]toring the values in separate matrices, a single matrix, or even outside a matrix does not change the value since a matrix is merely an array of values that can be manipulated with or without the matrix." Id.; see also Advisory Act. 2. The Examiner also finds no mention of matrix size nor how many values are stored is made in the claim language, and W armus teaches the source matrix and generating the discrete values. Ans. 34--35. Regarding Warmus and Hemingway, the Examiner finds: Both Applicant and W armus in view of Hemingway start with a transformation matrix, and end with discrete values that perform the transformations. Applicant is arguing that the difference is with how the matrix transformation information is processed to generate the discrete values. Applicant has also repeatedly argued that order is critical in the process to get the correct output. So even if Warmus in view of Hemingway were considered to teach nothing beyond the input matrix and output discrete values for 9 Appeal2014-002555 Application 12/636,361 transforming, one of ordinaf'J skill in the art \'l/ould kno\'l/ ho\'l/ to perform the necessary calculations to generate the values since we have the same start (transformation matrix), the same end (discrete values that perform the transformations), and a middle that must be performed in a specific order. Ans. 36. We agree with the Examiner's findings above and are not persuaded by Appellant's arguments. In particular, Appellant's arguments are based on an unreasonably narrow reading of the combined teachings of Warmus and Hemingway as would be understood by a person of ordinary skill in the art as required for an obviousness inquiry. We also agree with the Examiner that a matrix is an array of values that can be manipulated with or without a matrix. Ans. 33-35; Advisory Act. 2; see also Final Act. 5. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). "A court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ," such as the complementary teachings of the references. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The reason to combine the cited references is found in the references and in the knowledge of one of ordinary skill in the art. We determine the benefit gained from the combination, as articulated by the Examiner, would have motivated an ordinarily skilled artisan to make such a combination. 10 Appeal2014-002555 Application 12/636,361 On this record, 1A .. ppellant does not present sufficient evidence that the combination of Warnms and Hemingway is "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor have Appellants provided objective evidence of secondary considerations, which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). In view of the above, we sustain the rejection of claim 1. Independent claims 5, 9, 13, and 17 recite similar limitations and Appellant presents similar arguments and, therefore, we sustain the rejection of these claims for the same reasons. Claims 2--4, 6-8, 10-12, 14--16, and 18-20 are dependent claims not argued separately and, therefore, we sustain the rejection of these claims. DECISION We reverse the Examiner's decision provisionally rejecting claims 1- 20 for obviousness-type double patenting. We affirm the Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation