Ex Parte Mastie et al

Patent Trial and Appeal Board

Jun 21, 2016

11613068 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111613,068 12/19/2006
50441 7590 06/23/2016
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
FIRST NAMED INVENTOR
Lynn M. Mastie
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.
BLD9-2006-0023-US 1 7132
EXAMINER
MILIA, MARK R
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
docketing@dbflaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LYNN M. MASTIE and SCOTT D. MAS TIE
Appeal2015-000261
Application 11/613,068
Technology Center 2600
Before KARA L. SZPONDOWSKI, SHARON PENICK, and
JOHN R. KENNY, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-5, 7-14, and 16-20. Claims 6 and 15 have been
cancelled. (App. Br. 15, 18). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal2015-000261
Application 11/613,068
STATEMENT OF THE CASE
Appellants' invention is directed to repositioning processing of a
presentation data stream starting from user defined boundaries, rather than
page boundaries. (Spec. 1--4). Claims 1, 5, and 8, reproduced below with
the disputed limitations in italics, are exemplary of the claimed subject
matter:
1. A method for processing a data stream, the method comprising:
receiving a data stream comprising user-created boundaries
that are each defined in an Advance Function Presentation (AFP)
Begin Named Group (BNG) structured field, wherein each boundary
is a non-printing portion of the data stream that does not alter
presentation data for the data stream;
receiving input that selects one of the user-created boundaries
in the data stream;
repositioning the data stream for a presentation device to start
processing from the selected user-created boundary; and
presenting the data stream on the presentation device starting
from the selected user-created boundary.
5. The method of claim 1 wherein the repositioning step further
comprises:
receiving a page-level repositioning command, wherein the
page-level repositioning command identifies a page at which to
reposition the data stream; and
repositioning the data stream for the presentation device
starting from a user created boundary adjacent to the page identified
by the page-level repositioning command.
8. The method of claim 1 wherein the data stream comprises a
plurality of objects and the repositioning step further comprises:
2
Appeal2015-000261
Application 11/613,068
receiving user input defining a search criterion for an object in
the data stream;
locating a boundary for the object matching the search
criterion; and
repositioning the data stream for the presentation device
starting from the boundary for the object.
REJECTIONS
Claims 1-5, 7-14, and 16-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Kayama (US 200710024901
Al; published Feb. 1, 2008), Hashimoto (US 2007 /0242282 Al; published
Oct. 18, 2007) and La Rosa Ducato et al. (US 2006/0136442 Al; published
June 22, 2006) (hereinafter "Ducato").
ANALYSIS
Claim 1
Issue 1: Did the Examiner err in finding the combination of Kayama,
Hashimoto, and Ducato teaches or suggests "receiving a data stream
comprising user-created boundaries that are each defined in an Advance
Function Presentation (APP) Begin Named Group (BNG) structured field,
wherein each boundary is a non-printing portion of the data stream that does
not alter presentation data for the data stream," as recited in independent
claim 1 and commensurately recited in independent claims 10 and 19?
The Examiner relies on Kayama to teach or suggest receiving a data
stream comprising user defined boundaries, Ducato to teach or suggest
boundaries defined in an Advance Function Presentation (APP) Begin
3
Appeal2015-000261
Application 11/613,068
Named Group (BNG) structured field, and Hashimoto to teach or suggest
that each boundary is a non-printing portion of the data stream that does not
alter presentation data for the data stream. (Final Act. 2--4, citing Kayama
Fig. 7B, i-fi-f 144--148, 154, 156, Hashimoto Figs. 3, 5, 9, 17,
i-fi-146, 47, 53---61, 67, 68, 72-78, 90, 94, 121, Ducato Figs. 2, 4,
i-fi-175, 77; see also Ans. 9-11). Moreover, the Examiner relies on Kayama
to teach or suggest the "repositioning the data stream" limitation. (Final
Act. 3).
Appellants contend "the page breaks of Kayama do not suggest the
user-created boundaries of claim 1, which are defined in AFP BNG fields,
and which are non-printing portions of the data stream that do not alter
presentation data for the data stream." (App. Br. 8). Appellants also argue
Kayama does not teach or suggest a "data stream" because "[ n Jot all generic
print jobs are data streams for APP print data." (Id.)
Regarding Hashimoto, Appellants argue "[ w ]hile Hashimoto
discusses defining a range of chapters of a PDF to use for printing,
Hashimoto sheds no light on repositioning print data streams based on user-
created boundaries within AFP BNG fields ... because the indices of
Hashimoto have nothing to do with Begin Named Group (BNG) structured
fields." (Id. at 9). Appellants further contend"[ e ]ven if PDF documents of
Hashimoto were modified to include APP BNG fields, there would be no
reason to use such fields for repositioning print data streams, because the
PDF index is already used for repositioning." (Id.) Appellants also argue "it
is not possible for Hashimoto to teach or suggest using user-created APP
BNG fields in order to reposition a data stream[.]" (Id. at 10).
4
Appeal2015-000261
Application 11/613,068
Finally, Appellants contend "Ducato makes no mention of using non-
printing, user-created boundaries defined in AFP BNG fields to reposition a
print data stream, nor does Ducato mention any reason to do so." (Id.).
With regard to the combination, Appellants argue:
A person of ordinary skill in the art, even after reading
these references, would not be motivated or enabled to place
non-printing user-defined boundaries in APP BNG fields.
Furthermore, none of the references suggest implementing user-
created boundaries defined in APP BNG fields in order to
decide when or how to reposition a data stream.
(Id. at 10).
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings. (Final Act. 2-6, Ans. 9-11 ). Appellants' arguments
attack the three references in isolation, but do not substantively address the
combined teachings of Kayama, Ducato, and Hashimoto as relied upon by
the Examiner. That is, Appellants' arguments do not take into account what
the collective teachings would have suggested to one of ordinary skill in the
art, and are therefore ineffective to rebut the Examiner's prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981):
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
(citations omitted). Appellants' arguments do not persuasively address the
Examiner's findings because Appellants argue the references do not teach or
suggest limitations for which the Examiner has not relied on that particular
5
Appeal2015-000261
Application 11/613,068
reference. For example, Appellants' arguments regarding Kayama's
purported deficiencies do not take into account that the Examiner has relied
on Ducato and Hashimoto to teach or suggest "boundaries that are each
defined in an Advance Function Presentation (APP) Begin Named Group
(BNG) structured field, wherein each boundary is a non-printing portion of
the data stream that does not alter presentation data for the data stream."
Similarly, Appellants' arguments with respect to Hashimoto do not take into
account the Examiner's findings with respect to Ducato and Kayama, and
Appellants' arguments regarding Ducato do not take into account the
Examiner's findings with respect to Hashimoto and Kayama.
Moreover, we are not persuaded by Appellants' arguments that
Kayama does not teach or suggest a data stream. We note Appellants have
not explicitly defined a "data stream" in their Specification. However,
Appellants describe in their Specification "[ d]uring printing of a print job
(e.g., a presentation data stream) ... " (Spec. 1, 1. 16). We agree with the
Examiner that Kayama's "print job which includes print data" teaches or
suggests a data stream, consistent with Appellants' Specification. (See Ans.
9, citing Kayama i-f 145). Additionally, regarding Appellants' arguments
pertaining to Hashimoto, we note Hashimoto is not limited to PDF
documents. (See Hashimoto i-f 43 (describing XML format and HTML
format)).
We also find the Examiner has articulated how the claimed features
are met by the proposed combination of the reference teachings with some
rational underpinning consistent with the guidelines stated in KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398 (2007). Appellants have not pointed to any
reason, supported by sufficient facts, explaining why the combined
6
Appeal2015-000261
Application 11/613,068
functionality of Kayama, Ducato, and Hashimoto as described by the
Examiner (Final Act. 5---6, Ans. 11 ), would not result in the features recited
in claim 1. Nor have the Appellants persuasively addressed the Examiner's
stated reasoning to combine the references.
Accordingly, we are not persuaded the Examiner erred and therefore
sustain the Examiner's 35 U.S.C. § 103(a) rejection of independent claims 1,
10, and 19, and dependent claims 2--4, 7, 9, 11-14, 16, 18, and 20, which
were not argued separately.
Claim 5
Issue 2: Did the Examiner err in finding the combination of Kayama,
Hashimoto, and Ducato teaches or suggests "repositioning the data stream
for the presentation device starting from a user created boundary adjacent to
the page identified by the page-level repositioning command," as recited in
dependent claim 5?
The Examiner relies on the combination of Kayama' s page level
repositioning (i.e., designating a page or pages to print) and paragraph 94 of
Hashimoto to teach or suggest the disputed limitation. (Final Act. 7; Ans.
12-13). Appellants contend "Kayama discusses only page-level
repositioning within APP systems." (App. Br. 11 ). Appellants further
contend "[t]he combination of references does not suggest the user ofuser-
created boundaries, either in place of or in combination with, page-level
repositioning, and specifically do not describe repositioning to user-created
boundaries which are adjacent to pages indicated in page-level repositioning
commands." (Id. at 12)
7
Appeal2015-000261
Application 11/613,068
We are persuaded by Appellants' arguments. Paragraph 94 of
Hashimoto describes a scenario where a different page can be outputted for
each different print setting. (See Hashimoto i-f 93). In particular, paragraph
94 states:
Assume, for example, that the boundary between the first
paragraph of the first section of the first chapter and the second
paragraph of the first section of the first chapter is located in a
given page and the print setting for the first paragraph and that
for the second paragraph are different from each other. In such
a case, CPU 11 can start the printing of the second paragraph
from the page next to the given page without printing the
leading position of the second paragraph in the given page.
Having considered the Examiner's findings with respect to these
teachings in Hashimoto, as combined with the teachings in Kayama
(page level repositioning), we find the Examiner has failed to explain
with specificity how the combination of Kayama and Hashimoto
teaches or suggests "repositioning the data stream for the presentation
device starting from a user created boundary adjacent to the page
identified by the page-level repositioning command," as recited in
claim 5. Absent the Examiner specifically addressing why the cited
portions of Kayama and Hashimoto disclose the disputed feature, we
are left to speculate how and why the references are being applied.
We decline to engage in speculation. Accordingly, we do not sustain
the Examiner's rejection of claim 5.
Claims 8 and 17
Issue 3: Did the Examiner err in finding the combination of Kayama,
Hashimoto, and Ducato teaches or suggests "receiving user input defining a
8
Appeal2015-000261
Application 11/613,068
search criterion for an object in the data stream; locating a boundary for the
object matching the search criterion; and repositioning the data stream for
the presentation device starting from the boundary for the object," as recited
in dependent claim 8 and commensurately recited in claim 1 7?
The Examiner relies on Kayama to teach or suggest the disputed
limitations. (Final Act. 7-8). Appellants contend "selecting a range of
pages to print is not the same thing as identifying object boundaries within a
print data stream that includes APP fields, at least because in APP, objects
are bounded by structured fields, while Kayama does not mention objects
bounded by structured fields." (App. Br. 13).
We agree with Appellants. The Examiner identifies the pages in
Kayama as the claimed "object" and the page number(s) as the claimed
"search criterion." (Final Act. 7-8). The Examiner also identifies Kayama's
page number(s) as the claimed "boundary." (Final Act. 8). In the
Specification, Appellants state "[a]s used herein, an object is a logical
grouping of one or more pages, such as a document comprising a plurality of
pages. Exemplary objects include mail-pieces, customer invoices, books,
chapters and other logical groupings of pages and documents." (Spec. 15, 11.
22-25). We also note Appellants differentiate between page boundaries and
user defined (or created) boundaries throughout the Specification. (See, e.g.,
Spec. 10, 11. 25-26; 11, 11. 15-18; 11, 11. 23-26, 12, 11. 10-24). We disagree
with the Examiner's findings that merely printing a page range or designated
pages teaches or suggests the limitations in claims 8 and 1 7. Moreover, the
Examiner's findings are inconsistent with the Examiner's application of
Kayama, Hashimoto, and Ducato as applied to independent claims 1 and 10,
from which claims 8 and 17 depend, as well as inconsistent with the
9
Appeal2015-000261
Application 11/613,068
description of "user-created boundaries," as used in claims 1 and 10, and
Appellants' description of user-created boundaries in the Specification.
Accordingly, the Examiner has not persuaded us that Kayama, alone, teaches
or suggests the disputed limitations as recited in claims 8 and 1 7. We
therefore do not sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claims 8 and 1 7.
DECISION
For the above reasons, the Examiner's rejection of claims 1--4, 7, 9-
14, 16, and 18-20 is affirmed.
The Examiner's rejection of claims 5, 8, and 17 is reversed.
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).
AFFIRMED-IN-PART
10