Ex Parte Jacobs et al

Patent Trial and Appeal Board

Jul 29, 2013

11214393 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/214,393 08/29/2005 William S. Jacobs 20050350USNP-XER1063US01 2911
62095 7590 07/30/2013
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
WASHINGTON, JAMARES
ART UNIT PAPER NUMBER
2675
MAIL DATE DELIVERY MODE
07/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM S. JACOBS, MICHAEL E. FARRELL,
JOHN P. MONAHAN, DAVID C. ROBINSON, DAVID E. RUMPH,
and TERRY C. WELLS
____________________

Appeal 2011-001780
Application 11/214,3931
Technology Center 2600
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and
BARBARA A. BENOIT, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention is a method of determining chromatic content of
a page of an electronic document. The invention detects different color
formats and splits the responsibility for their imaging accordingly. Object

1 The real party in interest is Xerox Corporation.
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level color analysis is performed on a page of the electronic document to
determine whether the page is chromatic, achromatic, or has highlight color.
The page is then classified accordingly and directed to the most efficient
printer system (Spec. 1, 3).
Claim 1 is exemplary of the claims on appeal:
1. An image generating system configured to perform a method of
determining chromatic content of a page of an electronic document, wherein
the method comprises:

performing object level color analysis on image objects of the page of
the electronic document of the image generating system;

determining, by the image generating system, whether the page is
chromatic, achromatic or highlight color based on the object level color
analysis; and

classifying, by the image generating system, the page as chromatic,
achromatic or highlight color.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Wagley US 5,568,248 Oct. 22, 1996
Munemori US 6,029,023 Feb. 22, 2000
Rumph US 6,302,522 B1 Oct. 16, 2001
Grosso US 6,718,878 B2 Apr. 13, 2004
Miyahara US 7,359,079 B2 Apr. 15, 2008
(filed Aug. 10, 2005

Claims 1, 2, 4-13, 15, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rumph in view of Grosso, and Wagley.
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Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rumph in view of Grosso, Wagley, and Munemori.
Claims 16-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rumph in view of Grosso, Wagley, and Miyahara.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Apr. 5, 2010), the Reply Brief (“Reply Br.,” filed Aug. 23,
2010), and the Examiner’s Answer (“Ans.,” mailed Jun. 23, 2010) for their
respective details.
ISSUES
Appellants argue, inter alia, that the combination of Rumph, Grosso,
and Wagley fails to teach or suggest determiningor classifying a page as
chromatic, achromatic, or highlight color, as independent claims 1, 2, and 16
recite (App. Br. 14). Appellants further contend that Rumph teaches away
from performing pixel level color analysis of the rasterized image (App. Br.
19).
Appellants’ contentions present us with the following issues:
1. Does the combination of Rumph, Grosso, and Wagley teach or
fairly suggest determining whether a page is chromatic, achromatic, or
highlight color based on object level color analysis, as recited in claims 1, 2,
and 16?
2. Does the combination of Rumph, Grosso, and Wagley teach or
fairly suggest classifying a page as chromatic when a chromatic pixel is
found in the searching step, and classifying the page as achromatic when no
chromatic pixel is found, as recited in claim 20?
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PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
ANALYSIS
CLAIMS 1, 2, 4-13, AND 15-19
We are persuaded by Appellants that the combination of Rumph,
Grosso, and Wagley fails to teach determining whether a page is chromatic,
achromatic, or highlight color, as independent claims 1, 2, and 16 recite
(App. Br. 14).
The Examiner admits that Rumph and Grosso do not teach
determining whether a page is highlight color (Ans. 6-7). We agree with the
Examiner that Wagley discloses the concept of generating hardcopy
documents with selected areas and/or selected fonts printed in a highlight
color (col. 1, ll. 19-21). We find, however, that Wagley discloses only
detecting that a color is present and printing the document with a highlight
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color printer (including printing an optically distinguishable pattern in the
highlight color printing areas so the areas will be visually identifiable if the
document is subsequently reproduced on a black and white reproduction
apparatus) (col. 3, ll. 40-59).
We do not agree with the Examiner that modifying Rumph and
Grosso in view of Wagley to further determine if a page is highlight color
would have been obvious is “well within the reasoning ability of one [or]
ordinary skill” or “a predictable modification” (Ans. 7). None of Rumph,
Grosso, or Wagley teaches or suggests how to distinguish between a
chromatic page and a highlight color page. The teachings of the three
references would not have suggested to a person having ordinary skill in the
art the claimed three-way distinction between page types.
We conclude that the Examiner erred in rejecting claims 1, 2, 4-13,
and 15 over Rumph in view of Grosso, and Wagley. We will not sustain the
§ 103 rejection.
We further find that Miyahara does not remedy the deficiencies of
Rumph, Grosso, and Wagley. We will not sustain the § 103 rejection of
claims 16-19.
CLAIMS 3 AND 14
Claim 3 depends from claim 2, and claim 14 depends from claim 1.
We find that Munemori does not remedy the deficiencies of Rumph, Grosso,
and Wagley, discussed supra. We will not sustain the § 103 rejection of
claims 3 and 14.
CLAIM 20
Appellants’ arguments concerning determining whether a page is
chromatic, achromatic, or highlight color (App. Br. 14-15) are not applicable
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to claim 20, which does not recite determining highlight color.
Nevertheless, we agree with Appellants that Rumph fails to teach
“pixel-level color analysis” (App. Br. 19). Claim 20 recites “classifying the
page as chromatic when a chromatic pixel is found in the searching step, or .
. . classifying the page as achromatic when no chromatic pixel is found in
the search step.” In contrast, Rumph discloses that “[i]t is impractical to
maintain the aforementioned achromatic flag by looking at every color of
every pixel in an image” (col. 2, ll. 39-41).
We do not agree with the Examiner that Rumph’s teaching of a “color
space” is sufficient to teach the classifying steps of claim 20 (Ans. 27). The
claim requires that each pixel be examined, because a page will only be
classified as achromatic when no chromatic pixel is found.
We conclude that the Examiner erred in rejecting claim 20, and we
will not sustain the § 103 rejection.

CONCLUSIONS
1. The combination of Rumph, Grosso, and Wagley does not teach or
fairly suggest determining whether a page is chromatic, achromatic, or
highlight color based on object level color analysis, as recited in claims 1, 2,
and 16.
2. The combination of Rumph, Grosso, and Wagley does not teach or
fairly suggest classifying a page as chromatic when a chromatic pixel is
found in the searching step, and classifying the page as achromatic when no
chromatic pixel is found, as recited in claim 20.

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ORDER
The Examiner’s rejection of claims 1-20 is reversed.

REVERSED

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