Ex Parte Edge et al

Board of Patent Appeals and Interferences

Jul 19, 2010

09534824 (B.P.A.I. Jul. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/534,824 03/23/2000 Christopher J. Edge 10128US01 (EKC 90048) 9982
1333 7590 07/19/2010
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
BASEHOAR, ADAM L
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
07/19/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER J. EDGE, WILLIAM A. ROZZI, and
TIMOTHY A. FISCHER
____________

Appeal 2008-006000
Application 09/534,824
Technology Center 2100
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY, III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2008-006000
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-27, 29-33, 35-39, and 41-50. Claims 28,
34, and 40 have been cancelled. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
Appellants’ invention relates to digital color imaging. More
particularly, the invention on appeal is directed to modification of color
values in page description files. (Spec. 1).
ILLUSTRATIVE CLAIM

Claim 1 is illustrative:
1. A method for modification of color values in a page
description file, the method comprising:

identifying at least some implicit color commands within
the page description file;

converting the identified implicit color commands within
the page description file to explicit color commands such that
the explicit color commands replace the implicit color
commands within the page description file; and

modifying color values specified by the explicit color
commands.

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PRIOR ART
The Examiner relies upon the following references as evidence:
Vyncke U.S. 5,926,185 July 20,1999
R.L. Henley, et al., Concurrent PostScript Rasterizers Based High
Throughput Color Printer Architecture, IBM Technical Disclosure Bulletin,
Vol. 40, No. 3, Doc. ID NN9703141, pp.1-2 (March 1997)(hereinafter
“IBM”).

Adobe Illustrator 8.0 (Help Section) Using Gradients, Blends, and
Patterns: Changing gradients, blends and patterns into filled objects, pp.1-2
(cited in Applicants’ 10/20/2000 IDS)(hereinafter “Illustrator”).

REJECTIONS
Appellants appeal the following rejections:
1. The Examiner rejected claims 1, 2, 4-11, 13-19, 21-27, 29-33, 35-
39, 41-43 under 35 U.S.C. § 103(a) as unpatentable over Vyncke and
Illustrator.
2. The Examiner rejected claims 3, 12, 20, and 44-50 under 35 U.S.C.
§ 103(a) as unpatentable over Vyncke, Illustrator, and IBM.

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Did the Examiner err by improperly combining the cited references
under § 103?
2. Did the Examiner err in finding under § 103 that the combination of
Vynck and Illustrator would have taught or suggested modifying color
values specified by the explicit color commands, within the meaning of
representative claim 1?
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3. Did the Examiner err in finding under § 103 that the combination of
Vyncke and Illustrator would have taught or suggested modification of color
values specified by the implicit color sub-commands, as required by
independent claims 26, 32, and 38?

FACTUAL FINDINGS
1. Appellants’ Specification states that “[i]mplicit color commands
specify color values indirectly, for example, by defining color as a
function of other graphic information and color reference values.”
(Spec. 2, ll. 12-13).
2. Appellants’ Specification states that “[a] ‘blend’ is an example of an
implicit color command. A ‘blend’ may specify first and second
endpoint color values, and define a shading function that generates
intermediate color values ranging between the endpoint values based
on pixel position. In this manner, a ‘blend’ command may call for
generation of several intermediate color values, but explicitly define
only the endpoint values.” (Spec. 2, 17-21).
3. Vyncke teaches creating a color database (as PostScript commands
are interpreted) that “contains, like a palette, all the colors used in the
file.” (Col. 5, ll. 47-50).
4. Vyncke teaches that the color database or palette does not contain any
relationships between colors, such as a color and 50% of the same
color, i.e., a tint, are listed in the database as distinct unrelated colors.
(Col. 5, ll. 50-53).
5. Vyncke teaches a type of blend that is created between two colors
where the intermediate colors are defined as separate colors that
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gradually vary from one of the extreme colors to the other. (Col. 6, ll.
22-24).
6. Vyncke teaches applying a color mapping to blends to reduce the
palette size where each of the intermediate colors of blends is defined
in the color list as a mixture of the extreme colors of the blend. (Col.
6, ll. 19-20, 35-37).
7. Vyncke teaches analyzing the complete color palette for possible
relationships between the colors to eliminate redundancies so as
(according to one embodiment) to reduce the number of inks used for
printing. (Col. 5, ll. 55-57 and Col. 6, ll. 55-57).
8. Illustrator teaches the use an “Expand Command” that converts the
intermediate colors in a gradient or blend into a series of intermediate
filled (i.e., single color) objects to overcome printing problems. (pp.
1-2).
9. IBM teaches defining a (color) translation from device to device by
means of tables and procedures in a Color Rendering Dictionary in the
PostScript Language. (p. 2).

GROUPING OF CLAIMS
Appellants argue claims 1, 2, 4-11, 13-19, and 21-25 as a group (App.
Br. 8-12). We select representative claim 1 to decide the appeal for this
group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue claims 3, 12, and 20 as a group (App. Br. 13-15).
We select representative claim 3 to decide the appeal for this group.
Appellants argue claims 44-46 as a group (App. Br. 15). We select
representative claim 44 to decide the appeal for this group.
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We consider claims 26-43 on the basis of independent claims 26, 32,
and 38 infra.
Appellants do not present separate arguments for claims 47-49. (App.
Br. 15).
Appellants argue claim 50 separately (App. Br. 15). We address
claim 50 separately infra.

ANALYSIS
Issue 1
We decide the question of whether the Examiner erred by improperly
combining the cited references under § 103. Appellants contend that
Vyncke “teaches away” from the claimed invention because Vyncke relies
on replacing an explicit color value with an implicit color command which is
the opposite of converting implicit color commands to explicit color
commands within the meaning of Appellants’ claims. (App. Br. 9).
Appellants further contend that the Examiner has failed to show a suggestion
or motivation to combine the teachings of Vyncke and Illustrator. (App. Br.
9-11).
The Examiner responds that Illustrator was relied on to “give Vyncke
the added ability to replace implicit color commands with explicit color
commands (as is taught by Illustrator) so that the document would be
appropriately modified to overcome printing problems.” (Ans. 18). In
particular, the Examiner notes that “both Vyncke in col. 1 line 56 - col. 2
line 12, and Illustrator at page 1, indicate that it is desirable to edit page
description color commands to improve printing quality. Page 1 of
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Illustrator teaches that the ‘Expand’ command can convert gradients, blends2
or patterns into filled objects, and is particularly useful if one is having
difficulty printing objects that contain gradients, blends or patterns.” (Ans.
18, last paragraph).
At the outset, we acknowledge that “when the prior art teaches away
from combining certain known elements, discovery of a successful means of
combining them is more likely to be nonobvious.” KSR International Co. v.
Telefex Inc., 550 U.S. 398, 416 (2007) (citing United States v. Adams, 383
U.S. 39, 51-52 (1966)). However, “more likely” is not dispositive. Thus,
even if we assume arguendo that Vyncke and Illustrator do teach away in
the manner argued by Appellants, that does not end our inquiry.
Here, we agree with the Examiner that the Vyncke and Illustrator (and
IBM) references are each directed to the common purpose of overcoming
color printing problems to improve printing quality. (See Ans. 18). Thus,
we find the Vyncke, Illustrator, and IBM references are each directed to
special situations presented by specific types of devices, such as different
types of color printers. “As long as some motivation or suggestion
to combine the references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the reasons
contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (citations
omitted). We also find the alternative approaches3 to overcoming color

2 Cf. with Appellants’ Specification, see FF 1 and FF 2: “[a] ‘blend’ is an
example of an implicit color command.”
3 “[T]he prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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printing problems taught by the three cited references would have been
within the background knowledge possessed by a person having ordinary
skill. (See FFs. 3-9; see also Note 2 infra).
Based upon our review of the record, we are of the view that
Appellants’ purported improvement over the prior art (regarding claims 1-25
and 44-50) represents no more than the predictable use of prior art elements4
according to their established functions, and thus would have been obvious
to one of ordinary skill in the art. See KSR, 550 U.S. at 417. (“[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”) (citing
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
We are not persuaded that combining the respective familiar elements
of the cited references in the manner proffered by the Examiner would have
been “uniquely challenging or difficult for one of ordinary skill in the art” at
the time of Appellants’ invention (see Leapfrog Enters. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).
Lastly, we note that Appellants have not rebutted the Examiner’s legal
conclusion of obviousness by showing that the claimed combination of
familiar elements produces any new function. Appellants have not provided
any factual evidence of secondary considerations, such as unexpected or
unpredictable results, commercial success, or long felt but unmet need.
Thus, when we take account of the inferences and creative steps that a

4 e.g., explicit and implicit color commands found in a page description file.
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person of ordinary skill in the art would have employed,5 we find the
Examiner has articulated an adequate reasoning with a rational underpinning
that reasonably supports the legal conclusion of obviousness. Therefore, we
find Appellants’ arguments unavailing regarding the combinability of the
cited references for essentially the same reasons proffered by the Examiner
in the Answer, and for the additional reasons discussed above. Accordingly,
we find the Examiner did not err by improperly combining the Vyncke and
Illustrator (and IBM) references under § 103.

Issue 2
We decide the question of whether the Examiner erred by finding that
the combination of Vyncke and Illustrator would have taught or suggested
modifying color values specified by the explicit color commands, within the
meaning of representative claim 1.
Appellants attempt to support their contention with the following
statement:
Vyncke et al. do not disclose modification of
explicit commands of color values. To the extent that
Illustrator may disclose the conversion of implicit

5 The conclusion of obviousness can be based on interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art and an obviousness “analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).

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commands to explicit commands, the process of
Illustrator is manually performed when a user is having
difficulty with the printing. Nothing in Illustrator
concerns the modification of color values.

(App. Br. 12).
We begin our analysis by observing that Appellants fail to provide
any specific citation to Vyncke or Illustrator to provide evidentiary support
for their statement. (Id.). Mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); 37 C.F.R.
§ 1.111(b); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI
Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
Moreover, Appellants’ statement that “Vyncke et al. do not disclose
modification of explicit commands of color values” (App. Br. 12) appears to
be contravened by Appellants’ previous statement that “Vyncke et al. rely on
replacing an explicit color value with an implicit color command.” (App.
Br. 9, ¶4, first sentence). We find Vyncke teaches replacing an explicit
color value that involves modifying (i.e., removing) the associated explicit
color command (in the page description file) by replacing it with an implicit
color command so as to eliminate redundancies (e.g., to reduce the number
of inks required for a color print job). (FFs. 6-7).
We also find unpersuasive Appellants sweeping statement that
“[n]othing in Illustrator concerns the modification of color values.” (App.
Br. 12). To the contrary, we find Illustrator teaches the use an Expand
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Command that converts (i.e., modifies) the intermediate colors in a gradient
or blend into a series of intermediate filled (i.e., single explicit color) objects
to overcome printing problems. (FF 8). Lastly, we observe that Appellants
have not filed a Reply Brief to further address the Examiner’s responsive
arguments. (See Ans. 19).6
On this record, we will sustain the Examiner’s § 103 rejection of
representative claim 1 over the combination of Vyncke and Illustrator.
Claims 2, 4-11, 13-19, and 21-25, not argued separately, fall
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 3, 12, and 20
Regarding dependent claims 3, 12, and 20, we have addressed the
combinability of the cited references supra. We observe again that
Appellants fail to provide any specific citation to Vyncke or Illustrator or
IBM to provide evidentiary support for their statement in paragraph 3 on
page 14 of the Brief. As discussed above, mere attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. See Geisler, 116 F.3d at 1470. On this record, we
sustain the Examiner’s § 103 rejection of representative claim 3 over the
combination of Vyncke, Illustrator, and IBM. Claims 12 and 20 fall
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

6 “Silence implies assent.” Harper & Row Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 572 (1985).
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Issue 3
We decide the question of whether the Examiner erred by finding that
the combination of Vyncke and Illustrator would have taught or suggested
modification of color values specified by the implicit color sub-commands,
as required by independent claims 26, 32, and 38.
Appellants make the following contentions:
In rejecting Claims 26, 32 and 38, the Examiner
argues that Illustrator teaches the conversion of implicit
color commands to implicit color sub-commands.
However, for the rejections of Claims 1, 10 and 18, the
Examiner argued that Illustrator teaches the conversion
of implicit color commands to explicit color commands.
Clearly, these arguments by the Examiner are mutually
exclusive. In fact, the "expand" command discussed in
Illustrator does not generate implicit sub-commands as
required by Claims 26, 32 and 38. However, in the
alternative, if the objects generated by Illustrator are
construed by the Examiner as being implicit sub-
commands, then they could not also be reasonably
construed as explicit commands. The Examiner cannot
attribute the same features of Illustrator to contradictory
features of different claims. Either the rejections of
[C]laims 1, 10 and 18 or the rejections of [C]laims 26, 32
and 38 must be overruled given this contradiction in the
Examiner's rationale.

(App. Br. 12-13).
The Examiner disagrees and responds that “Illustrator teaches
converting an identified implicit color command into a set of color sub-
commands in pages 1 and 2. The figure shows a gradient being transformed
into a set of colored band sub-commands which collectively represent the
former gradient implicit color command. The figure also shows a color
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command being converted into a plurality of color sub-commands which are
individually manipulated.” (Ans. 20, ¶1).
We find Appellants’ argument to be convincing, given that the
Examiner has not clearly established in the record how the same portion of
Illustrator can be relied on to teach both an explicit color command (claim 1)
and also an implicit color sub-command within the meaning of independent
claims 26, 32, and 38. Cf. Ans. 4: “Illustrator does teach converting an
identified implicit color command into a set of explicit color commands in
pages 1 and 2” with Ans. 9: “Illustrator does teach converting an identified
implicit color command into a set of color sub-commands in pages 1 and 2.”
(underline added).
While we have sustained the Examiner’s rejection of claim 1 for the
reasons discussed supra, we will not sustain the Examiner’s rejection of
independent claims 26, 32, and 38 for the reasons argued by Appellants on
pages 12-13 of the Brief. Accordingly, we reverse the Examiner’s § 103
rejection of independent claims 26, 32, and 38 and also associated dependent
claims 27, 29-31, 33, 35-37, 39, and 41-43.

Claims 44-46
Appellants attack the Examiner’s rejection of claims 44-46 by merely
stating that “[t]he Examiner’s reliance on IBM is flawed because IBM is
specifically concerned with rasterization of the PS file.” (App. Br. 15). We
find this argument unpersuasive for the following reasons: (1) the Examiner
relies on Vyncke (and not IBM) for teaching that it is desirable to edit the
commands of the page description language before the commands are sent to
a raster image processor (Ans. 13), and (2) Appellants have provided no
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specific citations to any of the references relied upon by the Examiner in
support of their statement. (App. Br. 15).
As discussed above, mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. See Geisler, 116 F.3d at 1470. Moreover, arguments not
made are waived. See 37 C.F.R. § 41.37(c)(1)(vii). Cf. In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for nonobvious distinctions over the prior art.”)
For these reasons, we sustain the Examiner’s § 103 rejection of
representative claim 44 over the combination of Vyncke, Illustrator, and
IBM. Claims 45 and 46 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 47-49
Appellants do not present separate arguments for claims 47-49. (App.
Br. 15). Instead, Appellants contend these claims should be allowed for at
least the reasons previously advanced for independent claims 1, 20, and 18.
(Id.) Because we did not find Appellants’ arguments persuasive regarding
claims 1, 20, and 18, we affirm the Examiner’s rejection of claims 47-49
over the combination of Vyncke, Illustrator, and IBM for the same reasons
discussed supra regarding claim 1.

Claim 50
Regarding claim 50, Appellants merely recite the language of the
claim and assert “[n]othing in Vyncke et al., Illustrator or IBM suggests such
features.” (App. Br. 15). We find this statement lacks evidentiary support
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(i.e., specific citations and explanations regarding relevant portions of the
references relied on by the Examiner). Therefore, we do not find Appellants
conclusory statement to be persuasive of Examiner error.
For this reason, we also sustain the Examiner’s § 103 rejection of
claim 50 over the combination of Vyncke, Illustrator, and IBM.

DECISION
We affirm the Examiner’s § 103 rejections of claims 1-25 and 44-50.
We reverse the Examiner’s § 103 rejections of claims 26, 27, 29-33,
35-39, and 41-43.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(2009).

ORDER
AFFIRMED-IN-PART

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EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER NY 14650-2201