Ex parte Jackson

Board of Patent Appeals and Interferences

Jan 29, 1999

08275882 (B.P.A.I. Jan. 29, 1999)

Application for patent filed July 15, 1994. According1
to appellants, this application is a continuation of
Application 07/779,024, filed October 18, 1991.
1
Paper No. 24
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte BRION JACKSON
and MARVIN WILLIAMS
______________
Appeal No. 96-1082
Application 08/275,8821
_______________
ON BRIEF
_______________
Before URYNOWICZ, JERRY SMITH, and BARRETT, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 96-1082
Application 08/275,882
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 10-17, which
constitute all the claims remaining in the application.
The disclosed invention pertains to a method for
displaying a preview of a text string as it will actually
appear on a peripheral device, such as a printer, based on the
nature of the application running and the selected peripheral
device. More particularly, query parameters are used to
access a table which stores bit maps containing a facsimile
response of a combination of an application and a peripheral
device.
Representative claim 10 is reproduced as follows:
10. A method of assembling an image for display of a
combined response of at least an application and a peripheral
device from bit maps of image data including the steps of
determining at least one of first, second and third query
parameters in accordance with at least one of said application
and said peripheral device,
obtaining a table address in response to a query portion
containing first and second query parameters,
addressing at least one bit map containing a facsimile
response of a combination of an application and a peripheral
device in response to said table address, a text string and a
third query parameter, and
displaying said at least one bit map.
Appeal No. 96-1082
Application 08/275,882
3
The examiner relies on the following references:
Boulia et al. (Boulia) 4,594,674 June 10, 1986
Torres 5,001,697 Mar. 19, 1991
In the final rejection claims 10-17 were rejected
under 35 U.S.C. § 102(b) as being anticipated by a patent
granted to Rush [4,686,649]. Claims 10-17 were also rejected
under
35 U.S.C. § 103 as being unpatentable over “Torres and Boulia
in view of Rush.” In response to the appeal brief, the
examiner withdrew the rejections based upon Rush [answer, page
2]. Claims 10-17 now stand rejected under 35 U.S.C. § 103 as
being unpatentable over “Torres... and Boulia” [Id. at page
3]. Although the examiner refers to the combined teachings of
Torres and Boulia with respect to claims 16 and 17, the
examiner also reads each of claims 10-15 on Boulia and reads
each of claims 10-17 on Torres in an anticipatory manner.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
Appeal No. 96-1082
Application 08/275,882
4
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 10-17. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual deter-
minations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (CCPA 1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
Appeal No. 96-1082
Application 08/275,882
5
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
In the final rejection of the claims under 35 U.S.C.
§ 103, the examiner basically took the position that Boulia
and Torres disclosed the invention as claimed except for the
facsimile response of the addressing step (claim 10) and the
retrieving step (claim 14). The examiner relied on Rush to
support the obviousness of this feature of the claims. Since
Appeal No. 96-1082
Application 08/275,882
6
Rush is no longer relied upon in the rejection of the claims,
the examiner now asserts that the claimed facsimile response
is disclosed in both the Boulia and Torres references. The
examiner has also now read the claimed invention on the
disclosures of Boulia and Torres in an anticipatory manner.
The original appeal brief is primarily directed to
pointing out the inadequacies of the Rush reference which was
relied on for all the rejections in the final rejection.
Appellants also pointed out in the original brief, however,
that there is no teaching or suggestion in Torres of a
facsimile response which combines an application and a
peripheral device as claimed. With respect to Boulia,
appellants argued that there is also no teaching therein of a
facsimile response which combines applications with peripheral
devices.
The examiner responded to appellants’ arguments by
reiterating that Boulia and Torres teach “facsimile response”
in the sense of “exact copy or likeness” [answer, page 12].
Appellants responded that the devices of Boulia and Torres do
not provide a facsimile response of a combination of an
Appeal No. 96-1082
Application 08/275,882
7
application and a peripheral device as recited in the appealed
claims.
We agree with appellants. In our view, the examiner
has not properly interpreted the scope of the claimed
invention nor the disclosures of Boulia and Torres. A
critical feature of independent claims 10 and 14 is that the
stored bit maps contain “a facsimile response of a combination
of an application and a peripheral device.” We construe this
claim language as requiring that the stored bit maps be a
function of both the application running and a peripheral
device upon which the information is to be generated.
Although the examiner asserts that this condition is present
in Boulia and Torres, we agree with appellants that the
claimed feature quoted above is not suggested by Boulia and
Torres, whether considered individually or together.
Although we consider the stored bit maps of Boulia and
Torres to be a facsimile response of “something”, that
something is not a combination of an application and a
peripheral device. The bit maps stored in Boulia and Torres
are based on information derived only from the selected font
and items related to that font. There is no suggestion in
Appeal No. 96-1082
Application 08/275,882
8
Boulia or Torres that the stored bit maps are different based
on the application running or on an attached peripheral device
or on a combination thereof. Although Boulia and Torres
suggest that data is displayed and/or printed, the stored bit
maps which are displayed are not a function of a combination
of an application and a peripheral device as claimed.
Since the examiner has not properly addressed the differences
between the claimed invention and the teachings of the applied
references, the examiner has failed to establish a prima facie
case of the obviousness of the appealed claims.
Therefore, the decision of the examiner rejecting claims
10-17 under 35 U.S.C. § 103 is reversed.
REVERSED
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-1082
Application 08/275,882
9

JS/cam
Appeal No. 96-1082
Application 08/275,882
10
WHITHAM, CURTIS, WHITMAN & MCGINN
11800 Sunrise Valley Drive
Suite 900
Reston, VA 22091