Ex Parte Freiman et al

Patent Trial and Appeal Board

Jun 7, 2017

11863732 (P.T.A.B. Jun. 7, 2017)

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.
11/863,732 09/28/2007 Daniel J. Freiman 10379-24US 2215
570 7590 06/09/2017
PANITCH SCHWARZE BELISARIO & NADEL LLP
ONE COMMERCE SQUARE
2005 MARKET STREET, SUITE 2200
PHILADELPHIA, PA 19103
EXAMINER
FABER, DAVID
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
u sptomail @ panitchlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. FREIMAN, JEREMY C. HERR,
MARK A. WEISS, and CHRISTOPHER M. FREY
Appeal 2015-004561
Application 11/863,732
Technology Center 2100
Before JOSEPH L. DIXON, GREGG I. ANDERSON, and
GARTH D. BAER, Administrative Patent Judges.
ANDERSON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of a rejection of claims 1—
7 and 15—21.1 Claims 8—14 were previously cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 In this Opinion, we refer to the Transcript of the hearing on appeal (Tr.,
heard April 26, 2017), the Appeal Brief (“App. Br.,” filed November 24,
2014), the Reply Brief (“Reply Br.,” filed March 6, 2015), the Examiner’s
Answer (“Ans.,” mailed January 30, 2015), the Final Office Action (“Final
Act.,” mailed August 28, 2014), and the original Specification (“Spec.,”
filed September 28, 2007).
Appeal 2015-004561
Application 11/863,732
STATEMENT OF THE CASE
THE INVENTION
The Specification states that the prior art to Herr (upon which the
rejection here is based) includes “a method of preparing production data for
a print job, wherein the production data includes an electronic document
defined by a page description language (PDL) and the electronic document
is stored in a PDL image file.” Spec. 1:21—24. The claimed invention
“extends” the prior art method to “allow graphical objects to be inserted into
the image display of the still image proxy and to revise the PDL image file
in accordance with the properties of the inserted graphical objects.” Id. at
1:30-2:1.
ILL USTRA TIVE CLAIM
Claim 1 is an independent method claim and claim 15 is an
independent claim to an article of manufacture. Claims 2—7 depend directly
or indirectly from claim 1 and claims 16—21 depend directly or indirectly
from claim 15. Independent claim 1, reproduced below, is illustrative:
1. An automated computer-implemented method of preparing
production data for a print job, the
production data including an electronic document defined by
a page description language (PDL), the electronic document
being stored in a PDL image file, the method comprising:
(a) creating a still image proxy of the PDL image file;
(b) inserting one or more graphical objects into an image
display of the still image proxy and recording properties of the
inserted graphical objects; and
(c) using the recorded properties of the inserted graphical
objects to revise or rebuild the PDL image file so as to match the
PDL image file to the inserted graphical objects.
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Application 11/863,732
THE REJECTIONS
1. Claims 1—6 and 15—20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Herr (US Patent 6,839,149 B2, issued January 4, 2005). Final
Act. 9-11.
2. Claims 7 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Herr and Adobe (“Sample files -TSP301,” online since
December 10, 2004, 1—3). Final Act. 11—12.
ISSUE
Only those arguments actually made by Appellants in the Briefs have
been considered in this Decision. Arguments that Appellants did not make
in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv)(2012). Appellants
argue independent claims 1 and 15 “rise and fall together.” App. Br. 6. The
arguments for patentability of the dependent claims are based on their
dependency on the independent claims. Id. at 6, 23.
Accordingly, Appellants’ arguments present the following issue:
Has the Examiner erred by finding that Herr discloses “using the
recorded properties of the inserted graphical objects to revise or rebuild the
PDL image file so as to match the PDL image file to the inserted graphical
objects” (the “revise or rebuild limitation”), as recited in claims 1 and 15.
Id.
ANALYSIS
We are not persuaded by Appellants’ arguments that the Examiner has
erred. App. Br. 6—23; Reply Br. 1—7. For reasons discussed below, we
agree with, and adopt as our own, the Examiner’s findings and reasons as set
forth by the Examiner in the action from which this appeal is taken (Final
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Appeal 2015-004561
Application 11/863,732
Act. 2—13) and as set forth by the Examiner in the Examiner’s Answer (Ans.
2-10).
In making our determination, we have considered Appellants’
Answer, Reply, and declaration evidence. The declaration evidence includes
a Declaration of Jeremy Herr under 37 C.F.R. § 1.132 (App. Br., Ex. A) and
a Second Declaration of Jeremy Herr under 37 C.F.R. § 1.132 (App. Br., Ex.
B).2 Mark Weiss, a co-inventor and president of the assignee, appeared at
the hearing and made statements on behalf of Appellants. Mr. Weiss’
statements at the hearing are not evidence of record. Appellants provided
Mr. Weiss’ testimony as technical background.3 Our analysis of the revise
or rebuild limitation follows.
The Examiner relies on Herr to show all the limitations of claim 1.
Final Act. 9—11. The Examiner cites to Herr’s disclosure of “bindery data”
as meeting the “graphical objects” language in the revise or rebuild
limitation. Id. at 3—5. Based on the preceding, the Examiner finds that
“bindery data” is a “graphical object” that is “electronically added to the
image display of the still image display wherein the information about the
bindery data is recorded.” Id. at 5.
As to the revise or rebuild limitation, the Examiner asserts that Herr
2 The second Herr declaration includes paragraphs 1—8 of the first Herr
declaration, adding paragraphs 9 and 10. For purposes of this Decision, we
will refer only to the second Herr declaration (the “Herr Declaration,” or
“Herr Deck”). The Herr Declaration includes Mr. Herr’s work experience as
Attachment A and the home page of ColorQuick, LLC, Mr. Herr’s employer
as Attachment B.
3 See Tr. 2:7—11 (“And Mark’s [Mr. Weiss] available to answer any
technical questions that I can’t easily field or any other questions you have
about how the invention works.”)
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Application 11/863,732
[discloses Information [sic] about the manipulations are
recorded and subsequently used to revise the PDL image file so
as to match the PDL image file to the manipulations made to the
image display of the still image proxy. Since adding the
graphical object/bindery data is a form a manipulation that was
added to still image proxy and record, the manipulation involving
the graphical object/bindery data is used to revise the PDL
image file so as to match the PDL image file to the manipulations
made to the image display of the still image proxy.
Final Action, 9—10 (citing Herr, col. 1,11. 62—66, col. 10,11. 1—3, col. 11,11.
56—59) (emphasis added). In responding to the Herr Declaration evidence,
the Examiner states, among other things, that “FIG 7 and Col 8, lines 10—61
discloses bindery data is used to revise a PDL image file as to match the
PDL image file to the production data inserted into the image display of the
still image proxy.” Id. at 7. Figure 7 of Herr is reproduced below.
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Appeal 2015-004561
Application 11/863,732
Figure 7 of Herr is a flowchart of the steps associated with the invention.
Herr, col. 3,11. 21—22.
Appellants argue that Herr’s “bindery data inherently is not processed
in a manner similar to the claimed graphical objects.” App. Br. 5.
Appellants contend specifically “the bindery operations in Herr are not part
of the process in step 60 of Fig. 7 of Herr wherein content is prepared for
printing by making modifications to the original PDL image file so as to
match the manipulations made to the image display of the still image proxy.”
Id. at 5—6; see also Reply Br. 4. In responding to the Examiner’s arguments,
Appellants contend that “even if bindery data is considered to be a graphical
object, bindery data is still not used to revise or rebuild the PDL image
data.” Reply Br. 2. Further, Appellants contend, “the process of performing
bindery operations for a print job is separate and distinct from the process of
preparing content for printing the print job.” Id. at 3.
At the hearing, Appellants argued that production data for printing, as
disclosed in Herr, does not end up in a content file. See generally Tr. 5:13—
10:8. Appellants, through Mr. Weiss, contended that “[y]ou really don’t
want that [production data or bindery data] in your content file because if
you started to put your bindery marks in your content file they could
accidentally get printed and sometimes you actually even see it.” Id. at
6:17—19. However, Mr. Weiss also agreed that some production data, but
not bindery data, would appear in the revised PDL image file. Id. at 7:9-24.
These arguments, like arguments based on limitations in the Specification
discussed below, attempt to distinguish Herr over the claims through
limitations found in the product. We do not read such limitations into the
claims. Further, the arguments are not evidence of record. As such, these
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Appeal 2015-004561
Application 11/863,732
arguments do not show how the Examiner erred in finding that Herr
discloses the revise or rebuild limitation.
Appellants argue the Herr reference discloses, “bindery data is only
used to provide appropriate instructions to the production data for the print
job.” App. Br. 7 (citing Herr, col. 10,11. 1—10). Thus, according to
Appellants, Herr does not disclose using bindery data to revise or rebuild the
PDL image file. Appellants rely on the “text portion” of the Specification
and not the claims to support the argument that Herr does not disclose the
revise or rebuild limitation. Reply Br. 4—5. We agree with the Examiner
that Appellants’ arguments are not based on the claim limitations but rather
rely on improper incorporation of limitations from the Specification. Ans.
2-3.
In sum, we agree with the Examiner that “adding the graphical
object/bindery data is a form a manipulation ... the manipulation involving
the graphical object/bindery data is used to revise the PDL image file so as
to match the PDL image file to the manipulations made to the image display
of the still image proxy.” See Final Act. 9—10. This finding is all but an
exact quote from Herr, Figure 7 step 60. The Examiner cites to Herr’s
disclosure that bindery data is a type of production specification, which also
ties directly to the disclosure of Herr’s step 60. Id. (citing Herr, col. 10,11.
1—3); see also id. at 7 (citing Herr, col. 8,11. 10-61 (“[o]ne type of
production specification is a bindery specification . . .”)).
Our review of the Herr Declaration does not change our
determination. To the extent the Herr Declaration denies the Examiner’s
findings, it is not persuasive. As relevant here, the Herr Declaration states
“bindery operations in Herr are not part of the process in step 60 of Fig. 7.”
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Application 11/863,732
Herr Decl. 110. The Herr Declaration continues in paragraph 10, stating,
“[bjindery operations are physical manipulations to printing stock, typically
performed after printing.” Id. As noted above, the Examiner states correctly
that limitations from the Specification are not read into the claims. Final
Act. 3. These statements are in direct contradiction of the Herr disclosure,
which states that the production specification, which includes bindery data,
modifies the PDL image file to match the modifications made to the still
image proxy. Herr, Fig. 7, step 60; see also Final Act. 7 (citing Herr col. 10,
11. 1—3 (bindery data is a production specification).
DECISION
For the above reasons, the Examiner’s rejections of claims 1—7 and
15—21 are affirmed.
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
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