Ex Parte Henke et al

Patent Trial and Appeal Board

Dec 30, 2016

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

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.
12/754,726 04/06/2010 Jeffrey S. Henke 077047-9577-01 7264
23409 7590 01/04/2017
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
RODRIGUEZGONZALEZ, LENNIN R
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
01/04/2017 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):
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
Appeal 2014-008757
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 REQUEST FOR REHEARING
Appeal 2014-008757
Application 12/754,726
Appellants requested a rehearing of our Decision dated October 4,
2016, wherein we affirmed the rejections of claims 1—8, 10-18, and 19. We
grant the Rehearing Request to the extent that we consider the Appellants’
arguments infra, but DENY the request to modify our Decision. As noted
infra, we are still of the view that the invention set forth in the claims would
have been obvious in view of the teachings and suggestions of the
combination of Krhio and Palmer (and Fabel, or Crivella) under 35 U.S.C. §
103(a). We incorporate our earlier Decision herein by reference. See 37
C.F.R. §41.52(a)(1).
Appellants argue claims 1 and 10 require aggregating the
corresponding customized versions of the printable work to produce a
content data file (Req. Reh’g 2).
Appellants in particular assert that Kriho at most merely discloses
providing multiple user workstations 20 having access to a data merge
system 40 that can be used to create a customized document (Req. Reh’g 2).
According to Appellants, one of skill in the art might appreciate that
numerous users might contribute to various different pages of a catalog or a
brochure of Kriho, but Kriho does not suggest that the users are creating
different customized versions of the catalog or brochure that are then
aggregated together (Req. Reh’g 5). Appellants state that such an endeavor
would be nonsensical, because the actual objective of Kriho is understood to
be the production of a single version of the catalog or brochure (Req. Reh’g
5). It must be appreciated that merging the various “customized” pages of a
catalog or brochure is not the same as aggregating different customized
versions of a printable work, nor an obvious variant thereof (Req. Reh’g 5).
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Appeal 2014-008757
Application 12/754,726
As we previously stated in our Decision, we 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) (Dec. 4). We further agree 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 identified (para. 33) (Dec. 4—5). 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 at least suggested to one
skilled in the art at the time of the invention, merging (i.e., aggregating the
corresponding versions of the brochure, wherein the brochure constitutes the
printable work) all variable and not variable fields from multiple users based
on the project, for example for the formation of a brochure (see para. 22;
Dec. 5). 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; Dec. 5).
For example if a brochure includes pictures and written sections,
different users can create versions of the printable work wherein a
photographer provides the customized version with the pictures and the
author provides the customized version with the written sections. The
aggregation of the versions of the printable work provides the content file of
the brochure.
We further 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
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Appeal 2014-008757
Application 12/754,726
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.
Although we have considered the arguments raised by Appellants in
the Request for Rehearing, Appellants have not identified that the Board has
misapplied the relevant law or misapprehended Appellants’ arguments.
Accordingly, Appellants’ request for rehearing has been granted to the
extent that our decision has been reconsidered, but such request is denied
with respect to making any modifications to the decision.
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).
REHEARING DENIED
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