Ex Parte Giannetti et al

Patent Trial and Appeal Board

Mar 29, 2017

13699776 (P.T.A.B. Mar. 29, 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.
13/699,776 11/26/2012 Fabio Giannetti 83135817 6707
22879
HP Tnr
7590 03/31/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
RUDOLPH, VINCENT M
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FABIO GIANNETTI, KOK-WEI KOH,
JOSE MANUEL PEREZ, BENJAMIN I. DEMPSTER, and
ALYSHA NAPLES
Appeal 2016-004541
Application 13/699,776
Technology Center 2600
Before CARLA M. KRIVAK, JON M. JURGOVAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b) for independent claim 10.
Appeal 2016-004541
Application 13/699,776
STATEMENT OF THE CASE
Appellants’ invention is directed to a method and system for optimal
die-cutting. Spec. Tflf 10, 11. Claims 1 and 10, reproduced below with the
disputed limitations in italics, are exemplary of the claimed subject matter:
1. A print ordering system for ganging individual label printing
jobs, comprising:
a processor; and
a memory, wherein the memory comprises code configured to
direct the processor to:
identify individual label printing jobs that are similar,
wherein the individual label printing jobs use different dies; and
form a ganged print job from the individual label printing
jobs, wherein the ganged print job uses a multi-format die.
10. A method for optimizing a die cutting process, comprising:
identifying individual label printing jobs that are similar,
wherein the individual label printing jobs use different dies;
forming a ganged print job from the individual label printing
jobs, wherein the ganged print job uses a multi-format die; and
locating a print service provider (PSP) that can perform the
ganged print job.
REJECTIONS
Claims 1 and 13 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Debaere (US 2010/0014109 Al; published Jan. 21, 2010).
Claims 1,3, and 13 stand rejected under 35 U.S.C. § 103(a) as being
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Application 13/699,776
unpatentable over the combination of Matsuhashi (US 2009/0060610 Al;
published Mar. 5, 2009), Nedblake et al. (US 5,421,933; issued June 6,
1995) (“Nedblake”), and Markus Klemm, Spartanics® White Paper,
Technical Guide: How to Match Today’s Laser Cutting Technology to
Application Requirements (2008) (“Klemm”).
Claims 2, 4—12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsuhashi, Nedblake, Klemm, and Parry
(US 2003/0133146 Al; published July 17, 2003).
ANALYSIS
Issue 1\ Did the Examiner err in finding Debaere discloses a “multi­
format die,” as recited in independent claims 1 and 13?
Appellants contend Debaere “does not disclose a multi-format die
whatsoever,” but instead “recites a laser based die cutter.” App. Br. 7, citing
Debaere 195. Appellants further contend a “’multi-format die’ is a physical
object that either already exists in the system or can be created, built, or
made when no other existing multi-format die can properly handle a specific
multi-format job.” App. Br. 7, citing Spec. 12, 16, 21, 24, Fig. 3; see
Reply Br. 2, citing Spec. Tflf 10, 12. According to Appellants, “[ljaser based
cutters cut using the energy of a laser and are not physical dies.” App. Br. 7.
Therefore, Appellants argue, the Examiner’s interpretation of the term
“multi-format die” is unreasonable. App. Br. 8.
We are not persuaded by Appellants’ arguments. Debaere describes a
multiplexing operation where a first interpreted object is assigned to a first
logical print zone, and a second interpreted object is assigned to a second
logical print zone. Debaere 179, Fig. 7. Debaere discloses “[i]n yet another
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Application 13/699,776
alternative a laser based die cutter is used to cut out the individual labels.”
Debaere 195. The Examiner finds this “indicates that a tool-based die is
used to cut ganged jobs on a printing medium as a non-alternative method,
meaning, this tool-based die is a multi-format die since it can cut labels just
the same as the laser die.” Ans. 20. The Examiner further finds “based on
the broadest reasonable interpretation, in the practice of label cutting
industry, ‘different dies’ and ‘multi-format’ dies available in database
includes different types and shapes of machinery or toll-based dies, custom-
made dies, and laser dies.” Ans. 19—20.
Generally, unless an applicant has clearly set forth a special definition
of a disputed claim term in the specification, we give the term its broadest
reasonable interpretation in light of the specification. See Phillips v. A WH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). Here, the cited
portions of Appellants’ Specification do not clearly define a “multi-format
die” and Appellants have not identified any part of the Specification that
defines a “multi-format die” as a “physical object.” Rather, Appellants’
Specification describes a “database of available ‘multi-format’ dies” and a
“multi-format die . . . can be added to the database.” Spec. 112. Although
the Specification describes that the “multi-format dies are created,” (Spec.
112), “produced” (Spec. 112), “made” (Spec. 121), and “built” (Spec.
121), this description does not exclude non-physical objects. Therefore, we
are not persuaded the Examiner’s interpretation is overly broad in light of
the Specification.
Accordingly, we are not persuaded the Examiner erred and we sustain
the Examiner’s 35 U.S.C. § 102(e) rejection of independent claims 1 and 13.
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Issue 2\ Did the Examiner err in finding the combination of
Matsuhashi, Nedblake, and Klemm teaches or suggests “the ganged print job
uses a multi-format die,” as recited in independent claims 1,10, and 13?
Appellants contend “Matsuhashi does not disclose ‘the ganged print
job uses a multi-format die,’” but instead describes “a means for aligning at
least a first and second image with a predetermined direction of a printing
medium.” App. Br. 11. Appellants further argue “Nedblake does not
describe ‘the ganged print job uses a multi-format die’” because the custom
die described in Nedblake is “’custom’ only insomuch that it can match
specific shape and materials of ‘each type of label’ rather than the
combination of formats of a ‘multi-format die.’” App. Br. 11. Appellants
further argue “Klemm makes no reference to the ganging of print jobs, nor
to a ‘multi-format die.’” App. Br. 11.
After consideration of the record before us, we are persuaded by
Appellants’ arguments that the Examiner has not shown that Matsuhashi,
Nedblake, Klemm, or the combination of the three references, teach or
suggest a “multi-format die” consistent with the disclosure in Appellants’
Specification. See, e.g., Spec. Tflf 16, 28, 29, Fig. 3. Although we observe
Nedblake teaches that “a die must be custom manufactured for each type of
label,” (col. 1,11. 35—36), we agree with Appellants a custom die does not
necessarily describe a “multi-format die.” See App. Br. 11. Further, the
portions of Klemm cited by the Examiner (Final Act. 4, Ans. 22) merely
discuss disadvantages of laser cutting and tool-based cutting. Klemm, p. 6.
In the Answer, the Examiner finds “[ajlthough Matsuhashi does not
explicitly [] state a multi-format die issued in cutting each image (label) of
images (labels) printed on the continuous medium, it is obvious[] to see in
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order to cut each image (or label) illustrated in Figs. 9A-9C from a
continuous print medium (Fig. 5A), it is necessary to apply a so call multi­
format die in the second embodiment of Matsuhashi (paragraphs [0088] to
[0095], Matsuhashi).” Ans. 21.
The Examiner has not sufficiently established inherency, which
requires more than asserting that a multi-format die is necessary. To
establish 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.” Ex parte Levy, 17USPQ2d 1461, 1464 (BPAI 1990).
Inherency “may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264,
1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA
1981)). Paragraphs 88 through 95 of Matsuhashi and the corresponding
Figures 8 and 9A through 9C describe a “process in which the layout
software determines a printing process that minimizes the margin,” and
makes no mention of what type of die may be ultimately used in the printing
process. Matsuhashi | 89. The Examiner’s position that “it is necessary to
apply a [so-called] multi-format die” is unsupported and speculative.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 1,10, and 13. For the same reasons, we do
not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of dependent claims
2-9, 11, 12, 14, and 15.
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NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of independent claim 10 under 35 U.S.C. § 101 for
failing to recite statutory subject matter. Specifically, claim 10 recites the
abstract mental steps of “identifying individual label printing jobs that are
similar, wherein the individual label printing jobs use different dies,”
“forming a ganged print job from the individual label printing jobs, wherein
the ganged print job uses a multi-format die,” and “locating a print service
provider (PSP) that can perform the ganged print job” to “optimiz[e] a die
cutting process.”
To determine whether a claim is eligible under § 101, “[w]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept.” Alice Corp. v. CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). If it
is, we then “consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct.
1289, 1297-98 (2012)).
Processes directed to steps that can be performed mentally or with
pencil and paper, without more, have been determined to be essentially
mental processes within the abstract-idea category that are not patent-
eligible under § 101. See, e.g., Elec. Power Grp. LLC v. Alstom, 830 F.3d
1350, 1353—54 (Fed. Cir. 2016); Synopsis, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1149—1151 (Fed. Cir. 2016); Fort Properties, Inc. v.
American Master Lease LLC, 671 F.3d 1317, 1322—1323 (Fed. Cir. 2012);
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Application 13/699,776
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011).
The steps in method claim 10 are a purely mental process in the sense
that they may be performed in the human mind, or by a human alone. On its
face, claim 10 does not call for any form of computer implementation of the
claimed method. Nor does claim 10 limit its scope to any particular
algorithm, computer, or other equipment. Rather, the broad scope of claim
10 extends essentially any method for optimizing a die cutting process by
performing the recited steps, even methods that can be performed in the
human mind or with pencil and paper. Accordingly, we determine that
claim 10 is directed to a patent-ineligible abstract idea.
Turning to the second step in the § 101 analysis, we find that claim 10
does not recite additional elements that transform the nature of the claim.
Given that claim 10 recites nothing more than the mental steps necessary to
optimize a die cutting process, it contains nothing that “amounts to
significantly more than a patent upon the [abstract idea] itself.” Alice, 134
S.Ct. at 2355 (citation omitted). Accordingly, we enter a new ground of
rejection against claim 10 under § 101 as directed to non-statutory subject
matter.
In setting forth this new ground, we only reject independent claim 10,
and leave any potential rejection of dependent claims 11 and 12 to the
Examiner.
DECISION
The Examiner’s 35 U.S.C. § 102(e) rejection of claims 1 and 13 is
affirmed.
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Application 13/699,776
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—15 is
reversed. However, we enter a NEW GROUND OF REJECTION against
claim 10 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01 (9th ed., rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
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