Ex Parte Liccini et alDownload PDFPatent Trial and Appeal BoardJul 3, 201311078085 (P.T.A.B. Jul. 3, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROMAN D. LICCINI and NISHAN D. HOSSEPIAN ____________________ Appeal 2011-000045 Application 11/078,085 Technology Center 2600 ____________________ Before ERIC B. CHEN, JUSTIN BUSCH, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000045 Application 11/078,085 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1–5, 7–11, 13–19, 21–26, and 28. Claims 6, 12, 20, 27 and 29-32 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim Appellants’ disclosure relates to registration of two-sided printing (Spec. ¶1). Claim 1 is illustrative and is reproduced below with the disputed limitation emphasized: 1. A printing system comprising: an input adapted to receive unrasterized printing data to be printed on both sides of a printing medium; a processor adapted to arrange said unrasterized printing data to be printed on both sides of said printing medium; and a graphic user interface adapted to display an image, wherein said processor is further adapted to overlay a first page of said unrasterized printing data on a next consecutive page of said unrasterized printing data in said image, such that said first page and said next consecutive page are simultaneously displayed in said image as a one sided document image using different colors for said first page and said next consecutive page, wherein said processor is further adapted to move a position of one individual item, relative to other items of said first page, and relative to said next consecutive page in said image, wherein at least one of said first page and said next consecutive page comprise color unrasterized printing data, and wherein said graphic user interface is adapted to display said Appeal 2011-000045 Application 11/078,085 3 first page and said next consecutive page using a different color palette, wherein said color palette comprises tints between white and a user-specified preview color. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Farrell Stodersching Atkins US 5,666,208 US 2004/0150853 A1 US 2006/0103891 A1 Sep. 9, 1997 Aug. 5, 2004 May 18, 2006 Niida US 7,161,619 B1 Jan. 9, 2007 Rejections The Examiner made the following rejections: Claims 1–4, 7–10, 13–18, 21–25, and 28 stand rejected under 35 U.S.C § 103(a) as unpatentable over Farrell, Atkins, and Niida (Ans. 3–10). Claims 5, 11, 19, and 26 stand rejected under 35 U.S.C § 103(a) as unpatentable over Farrell, Atkins, Niida, and Stodersching (Ans. 10–12). ANALYSIS Independent claims 1, 8, 15, and 22 Appellants’ contentions present us with the issue of whether the Examiner erred in finding the independent claims unpatentable over Farrell, Atkins, and Niida. Appellants specifically contend that the Examiner erred by relying on Niida for the limitation “wherein said color palette comprises tints between white and a user-specified preview color,” as recited in each of the independent claims (App. Br. 17–20). In arguing that “[n]owhere is there Appeal 2011-000045 Application 11/078,085 4 any teaching or suggestion that Niida’s color/tint adjustment is to be used for displaying a next consecutive page in an image with a first page” (App. Br. 19 ( emphasis in original)), Appellants attack Niida individually when the Examiner has, in fact, relied on a combination of references. The Examiner’s application of Niida is narrower than the argument suggests, and relies on the combination of (1) Farrell’s teaching of displaying a next consecutive page in an image with a first page, with (2) Niida’s teaching of a tint color palette (Ans. 5, 12–13). The proper test is what the combined teachings of the references would have suggested to the hypothetical person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants’ further contention that “[n]owhere in Niida is there any disclosure of ‘a color palette comprises tints between white and a user- specified preview color’” (App. Br. 19 (emphasis in original)) does not meaningfully address the Examiner’s finding that “white is inherently included whenever a tint is involved” (Ans. 5). Although Appellants’ contention implies disagreement with the Examiner’s finding, they provide insufficient evidence or reasoning that the Examiner’s inherency finding is incorrect. Instead, we agree with the Examiner’s finding that in Niida: If an initial tint color is specified/manually adjusted by [the] user all the way toward green and previewed on the screen 2973 so that green is considered a user-specified preview color, then any tint color result[ing] from further adjustment towards [the] purple side is certainly between white … and the user-specified preview color green. (Ans. 5). We accordingly disagree with Appellants’ argument that the Examiner has erred and sustain the rejections of claims 1, 8, 15, and 22 under 35 U.S.C. § 103(a). Appeal 2011-000045 Application 11/078,085 5 Dependent claims 2–5, 7, 9–11, 13, 14, 16–19, 21, 23–26, and 28 Although Appellants group the various dependent claims and assert that “[e]ach sub-grouping … stands alone and does not stand or fall with their associated independent claims” (App. Br. 20), we do not consider their individual assertions to be arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”) In each instance, Appellants merely identify a limitation and nakedly state their disagreement with the Examiner’s finding, without providing any reasoning for us to consider. We accordingly sustain the Examiner’s rejections of the dependent claims under 35 U.S.C. § 103(a). CONCLUSION On the record before us, we conclude the following: (1) The Examiner did not err in rejecting claims 1–4, 7–10, 13–18, 21–25, and 28 under 35 U.S.C. § 103(a) as unpatentable over Farrell, Atkins, and Niida. (2) The Examiner did not err in rejecting claims 5, 11, 19, and 26 as under 35 U.S.C. § 103(a) as unpatentable over Farrell, Atkins, Niida, and Stodersching. Appeal 2011-000045 Application 11/078,085 6 DECISION The Examiner’s decision rejecting claims 1–5, 7–11, 13–19, 21–26, and 28 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)(1)(iv). AFFIRMED ELD Copy with citationCopy as parenthetical citation