Ex Parte Henke et al

Patent Trial and Appeal Board

Sep 30, 2016

12754726 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121754,726 04/06/2010
23409 7590 10/04/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Jeffrey S. Henke
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.
077047-9577-01 7264
EXAMINER
RODRIGUEZGONZALEZ, LENNIN R
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY S. HENKE and JEFFREY D. BREKKE
Appeal2014-008757
Application 12/754,726
Technology Center 2600
Before: THU A. DANG, ELENI MANTIS MERCADER, and
JOHN D. HAMANN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008757
Application 12/754,726
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 1-8, 10-18, and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to producing a printable work by
determining an electronic template of the printable work including a fixed
portion with predetermined content and a customizable portion. A form
accessible via a network is provided to allow a user to associate customized
content with the customizable portion from the user accessing the form via a
network customized content for the customizable portion. Customized
content received from the user and the predetermined content of the fixed
portion define a customized version of the printable work. The customized
version of the printable work is printed. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for producing a printable work, the method
compnsmg:
determining an electronic template of the printable work
including a fixed portion with predetermined content and a
customizable portion, providing a form accessible via a network
to allow a plurality of different users to associate customized
content with the customizable portion,
receiving from the plurality of users accessing the form
via a network corresponding customized content for the
customizable portion, the corresponding customized content
together with the predetermined content of the fixed portion
defining a plurality of corresponding customized versions of the
printable work,
aggregating the corresponding customized versions of the
printable work to produce a content data file, and printing the
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plurality of corresponding customized versions of the printable
work from the content data file.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fabel
Palmer
Kriho et al.
Crivella et al.
us 5,836,622
us 6,078,403
US 2002/0103826 Al
US 2004/0117404 Al
REJECTIONS
The Examiner made the following rejections:
Nov. 17, 1998
June 20, 2000
Aug. 1, 2002
June 17, 2004
Claims 1--4, 7-8, 10-13 and 17-18 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Kriho in view of Palmer.
Claims 5---6 and 14--16 stand rejected under 35 U.S.C § 103(a) Kriho
in view of Palmer and further in view of Fabel.
Claim 19 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Kriho and Palmer in view of Crivella.
ISSUE
The pivotal issue is whether the Examiner erred by finding that the
combination of Kriho and Palmer teaches the limitations of:
[R] eceiving from the plurality of users accessing the form via a
network corresponding customized content for the customizable
portion, the corresponding customized content together with the
predetermined content of the fixed portion defining a plurality of
corresponding customized versions of the printable work,
aggregating the corresponding customized versions of the
printable work to produce a content data file[,]
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as recited in claim 1 and similarly recited in claim 10.
ANALYSIS
Appellants argue, with respect to claim 1, that Palmer does not teach
or suggest merging multiple customized versions of a template, created by
different users into a single content data file (App. Br. 7). Appellants rely on
the same argument for claims 2--4 and 7 (App. Br. 8).
Appellants' argument is not commensurate in scope with claim 1
because the term "single" does not appear in the claimed language. Claim 1
refers to "a printable work" and "a plurality of corresponding customized
versions of the printable work" (see claim 1 ). Claim 1 does not recite the
term "single" as argued by Appellants (App. Br. 7), and thus, "a printable
work" can be broadly and reasonably interpreted as plural printable works
corresponding to the plurality of the customized versions from the plurality
of users. An indefinite article such as "a" in a claim with a "comprising"
transitional term, generally means one or more. See Baldi,vin Graphic Sy's. v.
Siebert, Inc., 512 F.3d 1338, 1342-32 (Fed. Cir. 2008). Thus, the claim
language does not limit the printable work as a single printable work from
various users, but rather could be multiple users, each having aggregate
documents as printable work (i.e., each document having a fixed and a
customizable portion creating multiple customizable versions or an
aggregate of them).
We also agree with the Examiner's findings that Kriho teaches users
having access to a template over the network and the ability to fill the
customizable portions (see para. 30) (Ans. 11). We further agree that Kriho
teaches or suggests that multiple users can have customized versions (see
paras. 33-34) (Ans. 11) because the author of the customized version is
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Application 12/754,726
identified (para. 33). Because multiple users have access to the customized
versions (para. 33 and also see Fig. 1) and a common merger exists for
merging the various fields (para. 33-34 and also see Fig. 1 ), Kriho certainly
would have suggested to one skilled in the art at the time of the invention,
merging all variable and not variable fields from multiple users based on the
project, for example for the formation of a brochure (see para. 22). In other
words, Kriho at least suggests that a single user may be involved in altering
the variable fields for printing personal business cards as opposed to variable
users altering variable fields for printing a brochure (see paras. 33-34, para.
22, and Fig. 1; Ans. 11 ). An artisan is presumed to possess both skill and
common sense. See KSR, 550 U.S. at 421 ("A person of ordinary skill is
also a person of ordinary creativity, not an automaton.").
We agree with the Examiner that Palmer teaches aggregating based on
document 44 and variable data 48, creating a merged document 52
producing a content data file, and printing from the content data file (see
Final Act. 4 referring to col. 4, 11. 1-33). While Palmer does not expressly
teach that the source of the variable data 48 may be from various
sources/users, one skilled in the art would have known at the time of the
invention that multiple users could have contributed to the presentation
project, and thus, the variable data may have been received from multiple
users.
Thus, we affirm the Examiner's rejection of claim 1 and for the same
reasons the rejections of claims 2--4 and 7.
Appellants further argue, with respect to claim 8, that Appellants'
Figure 10 teaches a user making a selection regarding the content to define
the customizable portion, and this is significantly different from simply
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having a system automatically populate postal information from a mailing
list into copies of a single letter as taught by Kriho (App. Br. 9). Appellants
repeat similar arguments with respect to claim 18 (App. Br. 11-12).
We do not agree with Appellants' arguments. Claim 8 simply recites
"permitting each of the plurality of users to determine different customized
versions for different intended recipients" (claim 8). We agree with the
Examiner that Kriho teaches a plurality of users having individual
customized versions depending on the recipient as can be seen in
(para. 49), stating that "the data merge system 40 then creates a different
document for each part of the mailing list using the related document
design" allowing for the creation of individualized document versions for
each person of the address list (Ans. 12-13).
Thus, we also affirm the Examiner's rejections of claim 8 and 18.
Appellants further argue with respect to claims 10, that Kriho implies
that multiple users may access the system, but is silent regarding Appellants'
claimed step of aggregating customized versions and the associated printing
step, "while Palmer relates to a method to create one customized document
(merged from a base document and variable data input from a single user)"
(App. Br. 10). According to Appellants, both documents are limited in
scope, with varying levels of detail, to create a customized version of a
document, and neither reference, nor the combination thereof, even touches
whatsoever on the handling of multiple versions of a document customized
by different users (App. Br. 10). Appellants rely on the same arguments for
claims 11-13 and 17-18 (App. Br. 11).
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We do not agree with Appellants. Claim 10 mirrors claim 1, and thus,
for the same reasons as stated above, we affirm the Examiner's rejections of
claims 10-13, 17, and 18.
Regarding claims 5-6 and 14--16, Appellants rely on the same
arguments as those raised for claims 1 and 10, respectively (App. Br. 12-
13). For the same reasons as stated above with respect to claims 1 and 10,
we affirm the rejections of 5---6 and 14--16.
Appellants argue with respect to claim 19 that "Crivella does not
teach or suggest that predetermined content options are received from high
authority users, from which the low authority users are allowed to choose for
the customizable portion" (App. Br. 13).
We do not agree with Appellants. We agree with the Examiner that
Crivella '404 teaches the ability to access and change/modify information
based on level of access (i.e., para. 70, where various levels of user access
exist and different levels of access allow for changing/customizing a
document) (Final Act. 10-11 ).
Thus, we also affirm the Examiner's rejection of claim 19.
CONCLUSION
The Examiner did not err in finding that the combination of Kriho and
Palmer teaches the limitations of:
[R]eceiving from the plurality of users accessing the form via a
network corresponding customized content for the customizable
portion, the corresponding customized content together with the
predetermined content of the fixed portion defining a plurality
of corresponding customized versions of the printable work,
aggregating the corresponding customized versions of the
printable work to produce a content data file[,]
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as recited in claim 1 and similarly recited in claim 10.
DECISION
For the above reasons, the Examiner's rejection of claims 1-8, 10---18,
and 19 is 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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