Ex Parte Hiebert

Patent Trial and Appeal Board

Mar 20, 2018

11412258 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111412,258 0412712006
22879 7590 03/22/2018
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Steven P. Hiebert
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.
82217168 7467
EXAMINER
DICKERSON, CHAD S
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEVENP. HIEBERT
Appeal2015-002933
Application 11/412,258
Technology Center 2600
Before LORA M. GREEN, DENISE M. POTHIER, and
ERICA A. FRANKLIN, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1' 2 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20. App. Br. 4. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse. We present new grounds of rejection for some of the
claims pursuant to 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed April 7, 2014, (2) the Appeal Brief (App. Br.) filed September 4,
2014, (3) the Examiner's Answer (Ans.) mailed November 20, 2014, and (4)
the Reply Brief (Reply Br.) filed January 15, 2015.
2 The real party in interest is listed as Hewlett-Packard Development
Company. App. Br. 2.
Appeal2015-002933
Application 11/412,258
On August 21, 2013, another panel at the Board reversed an appealed
rejection of claims 1through20. Ex Parte Hiebert, No. 2011-7899, 2013
WL 4478708 (PTAB August 21, 2013). This case returns to the Board once
agam.
Invention
Appellant's invention relates to Variable Data Printing (VDP).
Documents printed using VDP involve specific elements of a document
(e.g., text or pictures) changing from one print to the next while static
portions remain the same. See Spec. i-fi-15, 17. In the past, VDP merged a
database containing all the data for the variable portions of the document
with a template that contained the static portions at the source level. Id.
i-f 18. After which, the resulting document is processed by one or more
Raster Image Processing (RIP) engines at a Digital Front End (DFE) to
produce rasterized image data and is then transmitted to the press. Id. i-fi-17,
15, 20. The present invention "intends to split the task of VDP between the
DFE and the press to avoid potential bottlenecks that have occurred in
previous systems." Id. i122; see also id. i17.
Claim 1 is reproduced below with emphasis:
1. A digital printing press system for variable data printing
(VDP) comprising:
a front end; and
a press;
wherein said front end processes a static template and
transmits the processed static template to said press; and
wherein said press merges variable data processed
subsequently by said front end with said static template to
produce a desired stream of customized documents.
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The Examiner relies on the following as evidence of unpatentability:
Heiney US 5,983,243 Nov. 9, 1999
Bloomquist US 2002/0054398 Al May 9, 2002
Giannetti US 2005/0063010 Al Mar. 24, 2005
PODi - The PPML Working Group, PPML Templates: Methods and
Worliflows, Functional Specification, PPML Templating Specification 1-55
(Version 1.0 2002) ("PPML").
The Rejections
Claims 1, 2, 9, 10, 17, and 18 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over PPML, Heiney, and Bloomquist. Final Act.
7-32.
Claims 3-8, 11-16, 19, and 20 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over PPML, Heiney, Bloomquist, and Giannetti.
Final Act. 32--45.
THE OBVIOUSNESS REJECTION OVER PPML, HEINEY, AND
BLOOMQUIST
Regarding independent claim 1, the Examiner finds PPML teaches a
front end, a press, the front end processes a static template and transmits the
processed static template to the press, and a process of merging variable data
processed subsequently by the front end with the static template to produce a
desired stream of customized documents. Final Act. 7-8 (citing PPML 4, 5,
8-10). For the "front end ... transmits the processed static template to said
press" limitation, the Examiner specifically turns to PPML and states the
document template is transmitted to "a digital printing device." Id. at 8
(citing PPML 8-10). The Examiner turns to Heiney and Bloomquist for the
remaining features. Id. at 8-15.
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Among other arguments, Appellant contends PPML does not teach the
recited "wherein said front end ... transmits the processed static template to
said press." App. Br. 9--10. In particular, Appellant asserts that even
assuming PPML teaches "a static template being generated, no such
template is sent to the press" as recited. Id. at 11 (citing PPML 9--1 O); Reply
Br. 4. 3 Rather, Appellant argues a Producer sends such a static template to a
Consumer and PPML's Consumer, receiving such PPML documents from
the PPML Producer, sends the resulting stream to the press. See id. at 11-12
(citing PPML 9).
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that PPML, Heiney, and Bloomquist collectively would have taught or
suggested "said front end processes a static template and transmits the
processed static template to said press"?
ANALYSIS
In the Final Action, the Examiner relies on PPML to teach the recited
"front end" and "press." Final Act. 7 (citing PPML 4). The Examiner
articulates a clear mapping of the recited "front end" and the "press," stating
"if the PPML Template Consumer is distinct from a PPML Consumer that is
comprised of a digital printing press, the reference can be interpreted as
having the PPML Template Consumer as a DFE [and] the PPML Consumer
as a press." Ans. 42 (citing PPML 5, 7). The Examiner also states in the
3 Several pages of the Reply Brief are not numbered. We refer to each page
of the Reply Brief sequentially, starting with page one.
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Examiner's Answer the rejection presented "a plurality of alternate
interpretations of the [PPML] reference." Id. at 41 (citing Final Act. 2-3).
In the Response to Argument section of the Final Action, the Examiner
states "the PPML consumer can be a digital printing press" (Final Act. 3)
and "a PPML template processed by a PPML template consumer at a DFE or
press" (id.).
As best understood, the Examiner's "alternate interpretations" include
the PPML Template Consumer as either the recited "front end" or "press"
and the PPML Consumer as either the recited "digital printing press system"
or "press." Three, possible mappings result in: (1) PPML's Template
Consumer is the "front end" and the PPML's Consumer is the "press," (2)
the Template Consumer is the "front end" and the Consumer is the "digital
printing press system," or (3) the Template Consumer is the "press" and the
Consumer is the "digital printing press system."
We find the Examiner's mappings problematic. As for mapping ( 1 ),
claim 1 recites that the "front end ... transmits the processed static template
to said press." App. Br. 21 (Claims App'x). In the scenario where the
PPML Template Consumer is the "front end" and the PPML Consumer is
the "press," PPML teaches the Producer4 generates "[a] document template"
containing with rules related to how to select reusable content elements (e.g.,
a static template). PPML 8-9 (stating the job setup "is very similar to the
conventional workflow" in the PPML Template workflow5). PPML teaches
4 The Producer has not been discussed or mapped to either the recited "front
end" or "press" by the Examiner. See Final Act. 2-3, 7-8; Ans. 42.
5 As explained by the Examiner (Ans. 40-41), PPML discusses two different
workflows: (1) the Conventional Variable Data workflow and (2) PPML
Template workflow. PPML 8-10, cited in Final Act. 8. Concerning claim
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downloading or sending (e.g., transmitting) the template from the PPML
Producer to the PPML Template Consumer, which is mapped to the recited
"front end," in the PPML Template workflow scenario. Id. at 9--10.
Given this discussion, we disagree PPML teaches transmitting the
"static template to said press" as recited. Instead, PPML teaches
transmitting the static template to the mapped "front end" or the Template
Consumer. See Final Act. 8 (citing PPML 8-10). Granted, PPML states
"much of the print stream," (e.g., templating) "can be stored in the digital
printing press (the PPML Consumer)." PPML 7, cited in both Final Act. 3
and Ans. 42. However, this discussion does not explicitly address storing
templates. See PPML 7. Also, this discussion is applicable to the
Conventional Variable Data workflow, where the Reusable Object
definitions are transmitted to the Consumer for processing and storage (id. at
8-9), or when the PPML Template Consumer is resident inside the PPML
Consumer (id. at 9) in the above PPML Template workflow scenario. In the
latter case, however, data and the document template are transmitted to the
Template Consumer of the PPML Consumer, which is mapped to the "front
end," as previously explained. Id. at 9--10.
Moreover, the Examiner has not explained how the teachings of
Heiney or Bloomquist cure this deficiency. See id. at 8-15 (addressing only
how Heiney and Bloomquist teach or suggests the "press merges variable
data processed subsequently by said front end with said static template" as
recited).
1, the rejection focuses on the latter workflow- the PPML Template
workflow. See Ans. 40-41.
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As for mapping (2), where the PPML Template Consumer is the
"front end" and the PPML Consumer is the "digital printing press system,"
the record does not articulate sufficiently what is the separately recited
"press." See Final Act. 2-3, 7-8; Ans. 40-41. In any event, this scenario
has the same deficiencies as mapping (1) previously noted- the static
template is transmitted to the PPML Template Consumer, which is the "front
end," and not to the "press" as required by claim 1. We refer above for more
details.
Regarding mapping (3), where the Template Consumer is the "press"
and the Consumer is the recited "digital printing press system" (see Final
Act. 3), 6 the record does not articulate sufficiently what element in PPML is
the recited "front end" (see id.; see also Ans. 40-42). At one point, the
Examiner identifies the PPML Producer as a possible component for
elements of the claims. See Ans. 42 (stating "alternate variations of the
components of the workflows (e.g., press, DFE) with the roles of these
components (e.g.[,] PPML Producer, PPML Consumer or Template
Consumer)"). Yet, this mapping runs counter to some of PPML' s teachings,
given PPML states the PPML Consumer-not the PPML Producer-is
typically a DFE or digital front end. PPML 4, cited in App. Br. 10.
Additionally, the rejection further states PPML fails to teach the press
merges variable data processed subsequently by the front end with the static
template to produce a stream of customized documents. Final Act. 8; see
6 In this scenario, the PPML Template Consumer must be part of the PPML
Consumer (e.g., built-in Template Consumer capability (PPML 5)) because
claim 1 requires the "digital printing press system" (i.e., the PPML
Consumer in this mapping) to comprise the "press" (i.e., the PPML
Template Consumer).
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also Ans. 42. Given this statement, we presume the rejection cannot be
mapping the Template Consumer to the press because in the PPML
Template Workflow, the Template Consumer performs the function of
merging variable data and static template. See PPML 9--10.
As for any remaining "alternate interpretations of the reference" (Ans.
41 ), the record does not clearly articulate which elements in PPML are the
recited "front end" or "press." See Final Act. 2-3, 7-8; Ans. 41--42. Nor
does the rejection rely on Heiney's and Bloomquist to teach the above
deficiencies. See Final Act. 8-15.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 1, (2) independent claims 9 and 18, which
recite commensurate limitations, and (3) dependent claims 2, 10, and 17 for
similar reasons.
THE OBVIOUSNESS REJECTION OVER PPML, HEINEY,
BLOOMQUIST, AND GIANNETTI
Claims 3-8, 11-16, 19, and 20 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over PPML, Heiney, Bloomquist, and Giannetti.
Final Act. 32--45. The Examiner does not rely on Giannetti to overcome the
above-noted deficiencies. See id. Accordingly, Appellant has persuaded us
of error in the rejection of claims 3-8, 11-16, 19, and 20 for the same
reasons discussed above regarding the combination of PPML, Heiney, and
B 1 oomquist.
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New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter new grounds of rejection under
35 U.S.C. § 103 for claims 1-5, 7-13, and 15-19. Although we use the
same references cited by the Examiner for some of the new grounds and
agree with the Examiner's conclusions of unpatentability, we rely on
passages of the cited references not cited by the Examiner, do not rely on all
of the passages cited by the Examiner, and provide additional explanations
related to these passages. We thus designate the rejections as new grounds.
The new grounds are:
(I) Claims 1, 2, 9, 10, 17, and 18 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over Heiney, PPML, and (A) Bloomquist or (B)
Dziesietnik.
(II) Claims 3-5, 7, 8, 11-13, 15, 16, and 19 are rejected under 35
U.S.C. § 103(a) (pre-AIA) as unpatentable over PPML, Heiney, Bloomquist
or Dziesietnik, and Giannetti.
I.
Regarding the recited "front end" in claims 1, 9, and 18, the
Specification describes a digital front end (DFE) as "the unit that typically
includes the RIP engines and rasterizes image data before sending the data to
the imager or print engine of the digital press." Spec. i-f 7; see also id. i-f 15.
This describes what a DFE typically includes but is not a definition. As for
the recited "press" in claims 1, 9, and 19, the Specification describes a
"digital press (102)" to include imager 117 and memory. Id. i-f 36, Fig. 3.
This, however, does not define a "press."
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A. Heiney, PPML, and Bloomquist
Claims 1, 2, 9, 10, 17, and 18 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over Heiney, PPML, and Bloomquist. Heiney
discloses a print on demand system 10 that includes printer server 40 (e.g., a
front end) that includes disk cache 44 for storing documents to be raster
image processed and presentation-ready documents (e.g., rasterized fixed
data pages 112 and rasterized variable data pages 114) and printer 50 (e.g., a
press), which prints the documents. Heiney 3:10-16, 25, 48-52, 3:60-4:3,
Figs. 1-2. Specifically, Heiney teaches transmitting a document containing
fixed and variable data to the print server at block 74, processing fixed and
variable data/objects using RIP (raster image processor) 110 into rasterized
fixed and variable pages 112 and 114 respectively at block 76, and storing
the data pages in disk cache 44 of print server 40 at block 78. See id. at
3:61---62, 4:19-34, 5:5-9, 21-23, 29-32, Figs. 2-3. Heiney further teaches at
block 82 the fixed and variable data pages are merged at collator 120 of
printer 50. Id. at 5:32-36, 52-57, Figs. 2-3. Finally, collated document 122
is printed as printed document 126 at block 84 using printhead 124. Id. at
5:61---64, Figs. 2-3.
Given the above understanding, Heiney's printer server 40, which
contains a RIP engine (e.g., 110), reasonably corresponds to the recited
"front end," and this server (e.g., a front end) processes or rasterizes fixed
and variable image data (e.g., 112, 114) before sending the data to printer 50
of a digital press. See Heiney 5:20-32, Figs. 1-3. Additionally, Heiney's
printer 50 reasonably corresponds to the recited "press," because it includes
an imager (e.g., printhead 124). Id. at 5:61---64, Figs. 2-3. Hence, Heiney
teaches a known "digital printing press system for variable data printing" as
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recited in claim 1, where (1) the "front end" (e.g., print server 40)
"processes static" data (e.g., rasterizes fixed data into rasterized fixed data
pages 112) and "transmits the processed static" data "to a press" as recited in
claim 1 (e.g., printer 50) and (2) "the press" (e.g., printer 50) "merges
[processed] variable data" (e.g., rasterized variable data pages 114) "with the
static" data (e.g., data pages 112) as recited in claim 1 at collator 120 "to
produce a desired stream of customized documents" (e.g., 126) as further
recited by claim 1. Id. at 5:20-32, 52---64, Figs. 1-3.
Similarly, as discussed above, Heiney teaches or suggests the recited
"front end" and "press system" performing the recited "processing,"
"transmitting", and "merging" steps recited in independent claim 9.
Likewise, Heiney teaches or suggests the recited "means for processing a
static" data page "with a front end of said press system "and transmitting the
processed static" data page "to a press of said press system" and "means, on
said press, for merging [processed] variable data ... with said static" data
page "to produce a desired stream of customized documents" recited in
independent claim 18.
On the record, Appellant has not disputed these findings. App. Br.
9-15.
As noted above, Heiney teaches the front end or printer server 40
processing static objects/data into rasterized, fixed data pages 112. Heiney
5:20-32, Figs. 1-3. To the extent these static "objects" or "data" are not
templates, PPML teaches a known technique (e.g., conventional variable
data workflow or PPML template workflow) to create static templates (e.g.,
a document template containing rules on how to select reusable or static
content elements) so as to "download[] as much as possible of a
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personalized print project before the production begins" (PPML 7) and
"offers significant efficiencies in file size" (id.). PPML further teaches the
general concept of offloading templates to another component, such as in the
PPML Template workflow process, for subsequent merging of the template
with variable data in order to (1) perform routine, iterative operations, like
inserting data into a pre-defined layout, (2) avoid redundant generation and
transmission of basic document structures, and (3) minimize data handling.
See PPML 7, 9--10.
Appellant asserts PPML teaches away from combining with Heiney
because PPML processes all of the data before it is sent to a printing device
and does not "minimiz[e] the demands on the Digital Front End." App. Br.
12; Reply Br. 6. We are not persuaded.
First, just because PPML does not discuss minimizing the demands on
a DFE like Appellant attempts to resolve (see Spec. i-fi-f 16, 31 ), PPML does
not teach away from the claimed invention. See In re Kahn, 441F.3d977,
987 (Fed. Cir. 2006) (stating "[i]n considering motivation in the obviousness
analysis, the problem examined is not the specific problem to be solved by
the invention but the general problem that confronted the inventor before the
invention was made."). Second, PPML is being cited to teach creating
templates-not for its features concerning where data is processed. Third,
the record does not demonstrate sufficiently how one skilled in the art would
have been discourage from making Heiney's static data/objects into "a static
template" as taught by PPML. See App. Br. 12-13. Nor is there adequate
evidence (see id.) that PPML' s teaching would have directed an ordinarily
skilled artisan in a direction divergent from creating "a static template" as
recited. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
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Additionally, to the extent Heiney does not teach or suggest variable
data pages 114 processed by the front end are "processed subsequently" to
the processed static template as recited in claims 1, 9, and 18, Bloomquist
teaches this concept. Bloomquist teaches a known method of processing
two raster, image data at different times (e.g., one subsequent to the other)
prior to printing. Bloomquist i-fi-f 17, 75-78. Bloomquist teaches first raster
data 170 is processed by RIP 34 in block 234. Id. i175. Next or
subsequently, Bloomquist teaches second raster data 176 or "the
modification image" is processed by RIP 34 in block 23 6 and rasterize at
block 240. Id. i176 (stating the modification image may be created "after the
original image ... . ");see id. i-fi-177-78. One skilled in the art would have
combined Bloomquist's teaching with Heiney and PPML in order to process
variable data page after processing a static data page or "template" in order
to have the ability to identify modifications (variable data) to the static data
page or "template." See id. i176.
Appellant argues Bloomquist discloses neither a static template nor a
combination of a static template and variable data. App. Br. 13-14.
Bloomquist has been cited for the limited purpose of teaching processing
different data (e.g., ripping) at different times. Thus, when combined with
Heiney and PPML, the collective teachings suggests the recited "press
merg[ing] variable data processed subsequently by said front end with said
static template" as recited in independent claim 1 and similarly recited in
independent claims 9 and 18.
Appellant asserts Bloomquist is (1) not in the same field of endeavor
as the claimed invention, because Bloomquist does not teach templates of
any kind or the combination of templates with variable data and (2) not
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reasonably pertinent to the problem Appellant was concerned with- solving
the bottlenecking problem between the DFE and the press to minimize DFE
processing demands. App. Br. 13-14 (citing Spec. i-f 23); Reply Br. 7-8.
We are not persuaded. As noted by Appellant, Bloomquist concerns
rasterizing image data by using multiple RIP engines and combining image
data. See App. Br. 13; see also Ans. 44 (citing Bloomquist i-fi-1 17, 66-78).
Similarly, the Specification discusses digital image data being rasterized by
RIP engines into format for printing. See Spec. i-fi-12, 16, 20, 42.
Accordingly, Bloomquist is in Appellant's field of endeavor and is
analogous art.
Appellant further contends Bloomquist teaches away 7 from the
claimed invention because data is merged and sent to a printing press. Reply
Br. 7-8. However, as proposed, Bloomquist is cited for the limited purpose
of processing some raster image data after other raster image data-not for
its merging features. Moreover, we are not persuaded Bloomquist teaches
away from processing some data, including Heiney's "variable data,"
subsequently to processing other data, including Heiney/PPML "static
template," as recited in independent claims 1, 9, and 18.
As for claims 2 and 10, Heiney teaches printer server 40, the mapped
"front end," has a RIP engine (e.g., 110) for rasterizing static data into
rasterized static data pages 112 before transmitting data pages 112 to printer
50, the mapped "press." Heiney 5:21-23, Fig. 3. Regarding whether
Heiney's static data/objects are a static "template," we refer to our previous
discussion related to combining PPML's teaching with Heiney.
7 Although difficult to discern, we presume "te che w y" as it appears in the
Reply Brief is intended to state "teaches away." Reply Br. 7.
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As for claim 17, Heiney teaches printer 50, the mapped "press,"
involves producing printed document 126 from collator document 122
created by merging rasterized fixed data pages 112 and rasterized variable
data pages 114 or "printing said stream of customized documents" as
recited. Heiney 5:52-64, Figs. 2-3.
B. Heiney, PPML, and Dziesietnik
Claims 1, 2, 9, 10, 17, and 18 are also rejected under 35 U.S.C.
§ 103(a) (pre-AIA) as unpatentable over Heiney, PPML, and Dziesietnik. 8
For this rejection, we adopt the same findings and conclusion discussed
above related to Heiney and PPML. To the extent Bloomquist is considered
non-analogous art, we alternatively rely on Dziesietnik.
Whether or not Heiney/PPML teaches or suggests variable
data/objects processed by the front end are "processed subsequently" to the
processed static template as recited in claims 1, 9, and 18, Dziesietnik
teaches a known two stage method (e.g., 30 and 32) for adding variable data
to a print job. See Dziesietnik, Abstract, 8:21-23, Fig. 3. Dziesietnik
teaches a first stage where master document 30 is ripped (e.g., RIPed) into a
format and cached in storage. Id. at Abstract, 8:33-34. Dziesietnik further
teaches a next or second stage where variable data document 32 is ripped.
Id. at 9: 11-12, Fig. 3. Dziesietnik thus teaches and suggests "variable data
processed subsequently" to the static data as recited in claim 1.
Notably, Dziesietnik states the master documents are repeatedly
accessed and are used (id. at 9: 18-19), further suggesting the master
documents contain reusable or static elements arranged in a template (see
8 Dziesietnik (WO 99/17539, published April 8, 1999) was cited in an
information disclosure statement (IDS) submitted April 27, 2006.
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also id. at 1:30-35, 2:30-31, 4:28-31 ). Dziesietnik also states this two-page
process creates personalized or "unique documents [that] can be delivered
on-the-fly as quickly as possible" (id. at 2:2-3) and improves personalized
printing job performance (id. at 5:20-23, 9:18-21). Thus, when combining
Dziesietnik's teaching with Heiney and PPML, the combination teaches and
suggests "said press merges variable data processed subsequently by said
front end with said static template to produce a desired stream of customized
documents" as recited in independent claim 1 and similarly in independent
claims 9 and 18.
As for claims 2, 10, and 17, we adopt the same findings and
conclusion related to Heiney and PPML as discussed previously. We refer
above for details. Additionally, as noted above, Dziesietnik teaches RIPing
the master or reusable document and printing customized documents and
thus teaches using a RIP engine for rasterizing static data is known.
II. Heiney, PPML, Bloomquist or Dziesietnik, and Giannetti
Claims 3-5, 7, 8, 11-13, 15, 16, and 19 are rejected under 35 U.S.C.
§ 103(a) (pre-AIA) as unpatentable over Heiney, PPML, Bloomquist or
Dziesietnik, and Giannetti. For claims 3, 11, and 19, Heiney teaches
documents ready to be processed (e.g., documents that include variable
data/objects), and presentation-ready documents to be printed (e.g.,
rasterized data pages 112 and 114) are stored in disk cache 44 of print server
40. Heiney 4: 1-3, 5:9-20, 29-32, Figs. 1-3. Heiney thus suggests a front
end comprising "a database containing a plurality of sets of said variable
data" as recited in claim 3. Heiney does not teach the front end comprises "a
merge engine for merging said variable data with a variable template" as
further recited.
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However, as previously discussed, PPML teaches the general concept
of creating templates for data to (1) avoid redundant generation and
transmission of basic document structures and (2) minimize data handling.
See PPML 9-10. Giannetti supplements PPML, further teaching a merge
engine for merging variable data, such as that disclosed in Heiney, with a
variable template. Giannetti i-fi-1 47--48, 50. Specifically, Giannetti teaches
"an XSL-FO document ('XSL-FO flow template') can be used to generate a
new flow of content in an XSL-FO document on the fly." Id. i1 48.
Giannetti further teaches an example of XSL-FO documents containing an
XSL-FO content flow, which "may be dynamic in that it is variable as
between different XSL-FO documents" (id. i150) and "typically having
different characteristics" (id. i1 49) (e.g., a variable template).
Thus, when Heiney, PPML, and Giannetti are combined, the
combination teaches or suggests "a merge engine for merging said variable
data," such as the variable data/objects disclosed in Heiney, "with a variable
template," as taught by PPML and Giannetti in order to generate new
content flow on the fly as well as (1) to avoid redundant generation and
transmission of basic document structures and (2) minimize data handling.
See PPML 10. We also adopt the Examiner's uncontested findings,
explanations, and conclusions related to these claims and Giannetti. See
Final Act. 33.
Regarding claims 4 and 12, as noted above, PPML teaches creating
templates for data (1) to avoid redundant generation and transmission of
basic document structures and (2) minimize data handling (see PPML 10).
Thus, PPML suggests combining with Heiney to avoid redundant
generations of document structure and to minimize data handling. PPML
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also teaches "a template processor" is good for performing routine, iterative
operations, such as inserting data in a predefined layout. Id. at 7. PPML
thus suggests using a "PPML" processor is good for processing the routine
operation of populating a template with data. See id. Also, as noted above,
Giannetti teaches processing a "variable template with [] variable data" as
recited in order to generate new content flow on the fly. Collectively,
Heiney, PPML, and Giannetti teach and suggest "a Personalized Print
Markup Language (PPML) processor for processing copies of said variable
template populated with said variable data" as recited in claim 4 and
similarly recited in claim 12 in order to generate variable data with the
variable template's copies on the fly without having to regenerate basic
document structures.
As for claims 5 and 13, Heiney teaches a RIP engine (e.g., 110) for
rasterizing variable data/objects into rasterized variable data pages 114 as
discussed previously. Heiney 5: 19--23, 29--32, Fig. 3. We further refer to
the above discussion related to the teachings of Heiney, PPML, and
Giannetti and the limitation "a merge engine for merging said variable data
with a variable template" as recited in claims 3 and 11. The combined
teachings suggest the recited RIP "Engine for rasterizing copies of said
variable template populated with said variable data." App. Br. 22 (Claims
App'x).
As for claims 7, 8, 15, and 16, PPML teaches a template in PPML
templating is a PPML document "which has been modified to enable varying
the content using a script language such as XSL T" (Extensible Stylesheet
Language Transformations). PPML 5. PPML also teaches "[a Jn XSL T style
sheet contains the transformation instructions that define how Data Records
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are merged with the Template." Id. When combined with the previously
discussed teachings of Heiney and Giannetti, the collective teachings teach
and suggest "said variable template comprises instructions for populating
said variable template with said variable data" as recited in claims 7 and 15
and "said instructions are Extensible Stylesheet Language Transformations
('XSLT')" as recited in claims 8 and 16. One skilled in the art would have
been motivated for a variable template, as taught by Heiney, PPML, and
Giannetti, to have XSL T instructions for populating the template with
variable data, because XLST is a natural choice given XSLT and PPML are
based on XML. See PPML 13.
Claims 6, 14, and 20
Claim 6 depends from claim 3 and further recites in pertinent part
"said press further comprises a copy engine for copying each copy of said
variable template populated with variable data." App. Br. 22 (Claims App.).
Dependent claims 14 and 20 recite similar limitations. Id. at 23-24 (Claims
App.) Based on the record, we agree with Appellant that Giannetti teaches a
copy engine is located prior to the press rather than being part of the press as
recited in claim 6. Id. at 18-19; Reply Br. 10 (citing Giannetti i-f 50).
Giannetti discusses the combined PPML and XSL-FO document is presented
to the digital press, suggesting the variable template (e.g., XSL-FO template)
is copied onto the static template (e.g., PPML) prior to the press. See
Giannetti i-f 50. To be sure, Giannetti shows PPML Merger 806 in digital
press 801. Id., Fig. 8. However, PPML merger 806 combines the PPML
document with SVG content, which contains extracted variable data from
the XSL-FO document (the mapped "variable template"), but is not a copy
of the variable template itself as recited. See id. i-f 50.
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DECISION
We reverse the Examiner's rejections of claims 1-20 under 35 U.S.C.
§ 103(a) (pre-AIA).
We present new grounds of rejection for claims 1-5, 7-13, and 15-19.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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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).
REVERSED
37 C.F.R. § 41.50(b)
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