Ex Parte Morales

Patent Trial and Appeal Board

Nov 30, 2017

13584785 (P.T.A.B. Nov. 30, 2017)

United States Patent and Trademark Office
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.
13/584,785 08/13/2012 Javier A. Morales 20071248-US-CNT 9240
41030 7590 12/04/20:
Xerox Corporation
c/o ORTIZ & LOPEZ, PLLC
P. O. BOX 4484
ALBUQUERQUE, NM 87196-4484
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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 @ olpatentlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAVIER A. MORALES
Appeal 2017-006205
Application 13/584,785
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-006205
Application 13/584,785
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
41-54. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s application relates to document printing, specifically,
imposition and exception page programming for print jobs. Spec. ^ 2.
Imposition is the process of assigning individual pages of a print job to
positions on a large sheet, for example, in an industrial printing operation
where the sheet is then folded, cut, stacked, and bound. Spec. ^ 29.
Exception pages are those requiring special handling before imposition, for
example, a simplex page in a print job that is to be duplex printed. Spec.
9, 29. Exception page programming causes a plex exception in such cases
where pages with different plexes are to be imposed on the same sheet, and
the plex exception can be resolved, for example, by adding a blank page
onto the sheet opposite a simplex page in a duplex print job. Spec. ^ 9.
Claim 41, reproduced below, is illustrative of the claimed subject matter:
41. A document printing system that obtains a print j ob
wherein:
the print job comprises an imposition specification,
exception page programming, and a plurality of page
descriptions specifying a plurality of pages;
the document printing system automatically flattens the
print job, wherein the print job specifies a first plex, wherein the
exception page programming specifies a second plex that is
different from the first plex, wherein the specification of the
second plex is a plex exception because the second plex is
different from the first plex, wherein the document printing
system detects the plex exception, wherein the document printing
2
Appeal 2017-006205
Application 13/584,785
system flattens the print job, wherein flattening the print job
comprises resolving the plex exception, and wherein the
document printing system produces a flattened print job;
the document printing system produces at least one
imposed sheet definition by imposing the flattened print job to
produce the at least one imposed sheet definition wherein the
document printing system produces the flattened print job before
the imposed sheet definition is produced; and
the document printing system produces a printed
document by printing the at least one imposed sheet definition
onto at least one sheet.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hansen US 6,462,756 B1 Oct. 8, 2002
Ryan US 2002/0018235 A1 Feb. 14, 2002
Carlin US 2002/0184324 A1 Dec. 5, 2002
Goel US 2003/0020956 A1 Jan. 30, 2003
Sato US 2005/0243372 A1 Nov. 3, 2005
Out of Hand Ltd, “Artwork Specifications,” January 18, 2006, available at
https://web.archive.Org/web/20060118085930/http://www.outofhand.co.uk/
quicklink/artwork specifications/ (hereinafter “Artwork Specifications”)
REJECTIONS
The Examiner made the following rejections:
Claims 41-54 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 41^48 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
3
Appeal 2017-006205
Application 13/584,785
Claims 41-54 stand rejected under 35 U.S.C. §112, second paragraph,
as being indefinite.
Claims 41—45 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goel, Carlin, and Artwork Specifications.
Claim 44 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goel, Carlin, Artwork Specifications, and Ryan.
Claim 46 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goel, Carlin, Artwork Specifications, and Hansen.
Claim 48 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goel, Carlin, Artwork Specifications, and Sato.
Claims 49, 50, 52, and 53 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goel and Carlin.
Claims 51 and 54 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goel, Carlin, and Sato.
ANALYSIS
The Non-Statutory Subject Matter Rejection
The Examiner finds independent claims 41 and 49 recite software per
se, and thus neither claim is directed to a “process, machine, manufacture, or
composition of matter” as defined in 35 U.S.C. §101. Final Act. 3—4.
Appellant contends the Examiner fails to consider the claim 41 and claim 49
limitations directed to physically printing onto sheets. App. Br. 10. We are
persuaded by Appellant’s argument.
Claim 41 recites “the document printing system produces a printed
document by printing the at least one imposed sheet definition onto at least
one sheet” and claim 49 recites “the document printing system comprises a
rendering device that produces a printed document by printing the at least
4
Appeal 2017-006205
Application 13/584,785
one imposed sheet definition onto at least one sheet.” Accordingly, claims
41 and 49 both require a system that can physically print a document, and
are thus drawn to more than mere software per se, or mere transitory signals,
as the Examiner finds. Ans. 9-10.
We are, therefore, persuaded the Examiner erred in rejecting claims
41-54 as being directed to non-statutory subject matter.
The Enablement Rejection
The Examiner finds independent claim 41 is not enabled because the
Specification does not explain how to perform the limitation “wherein the
document printing system flattens the print job, wherein flattening the print
job comprises resolving the plex exception.” See Final Act. 5-6.
Specifically, the Examiner interprets “flattening” to mean “removing the
transparent elements within a document and creating a document with a
single layer,” and finds one of ordinary skill would not have understood how
to resolve a plex exception by removing transparencies in a document in
view of the Specification. Final Act. 6. Appellant contends the Examiner
relies on an incorrect definition of the term “flattening.” App. Br. 11. We
are persuaded by Appellant’s argument.
The Examiner’s definition of “flattening” is inapposite to the present
application. Claim 41 itself defines “flattening” by reciting “wherein
flattening the print job comprises resolving the plex exception.” (emphasis
added). The Specification provides this same definition: “If print job [] 103
is suitable for flattening, then the flattening module 107 can flatten it by
resolving the plex exceptions 122 to produce a flattened print job 108
Spec. ^ 31 (emphasis added). Moreover, the Specification describes how to
flatten a print job by resolving a plex exception, for example: “Fig. 10
5
Appeal 2017-006205
Application 13/584,785
illustrates a high level flow diagram of rules being applied to flatten a print
job in accordance with aspects of the embodiments. Note that certain of the
illustrated rules assume two sided or duplex printing. ... If the exception
page is a simplex page 1004, then a blank page can be inserted after the
simplex page 1005.” Spec. ^ 41. Accordingly, we conclude the disputed
limitation in claim 41 is properly enabled because the Specification
describes how to flatten a print job in at least one embodiment by adding a
blank page when there is a plex exception.
We are, therefore, persuaded the Examiner erred in rejecting claims
41-48 as failing to comply with the enablement requirement.
The Indefiniteness Rejection
Regarding independent claims 41 and 49, “[t]he Examiner is unable to
determine what structure or feature of the document printing system would
perform each of the individual functions claimed. Therefore, the Examiner
cannot determine the metes and bounds of the claimed invention, rendering
it indefinite.” Final Act. 6-7. Further, with respect to claim 41, the
Examiner finds “[t]he term ‘flattening’ is used by the claim to mean
‘resolving a plex exception’ while the accepted meaning is ‘to combine all
elements of a graphic into a single layer. ’ The term is indefinite because the
specification does not clearly redefine the term.” Final Act. 7. Appellant
contends there is no lack of clarity as to the metes and bounds of claims 41
and 49, and that the definition of the term “flatten” as used in claim 41 is
clear. App. Br. 13. We are persuaded by Appellant’s arguments.
First, we note that the features of an apparatus claim may be recited
either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). “Functional claim language that is not limited to a specific
6
Appeal 2017-006205
Application 13/584,785
structure covers all devices that are capable of performing the recited
function.” MPEP § 2114(IV). Accordingly, a functional limitation in an
apparatus claim may be interpreted broadly if not limited to a specific
structure for performing the particular function. However, “breadth is not to
be equated with indefiniteness.” In re Miller, 441 F.2d 689, 693 (CCPA
1971). Here, both claims 41 and 49 are drawn to “A document printing
system,” where the system is recited as performing various functions. The
Specification provides that the described embodiments can be implemented
as modules that can be software or hardware-based. Spec. ^ 44. However,
both claims 41 and 49 require the “document printing system” to be capable
of physically printing a document, as noted above with respect to the non-
statutory subject matter rejection, and thus claims 41 and 49 cannot be read
to cover software alone. Accordingly, when read in light of the
Specification, the claimed “document printing system” covers generic
hardware or hardware and software combinations that are capable of
performing the claimed functions. Although the structure required for
claims 41 and 49 are broadly interpreted to cover generic hardware or
hardware and software combinations, this breadth does not equal
indefmiteness. Thus, we agree with Appellant that the metes and bounds of
claims 41 and 49 are not unclear despite their breadth in defining the
required structure to perform the functional limitations.1
1 We make no finding here on whether the full breadth of the functional
limitations in claims 41 and 49 are properly enabled, aside from the narrow
issue discussed above of whether claim 41 is enabled with respect to the
“flattening” feature. See In re Borkowski, 422 F.2d 904, 908-909 (CCPA
1970) (finding undue breadth of a claim is an issue of enablement, not
definiteness).
7
Appeal 2017-006205
Application 13/584,785
Second, as discussed above regarding the enablement rejection, the
Examiner relies on an incorrect definition of the term “flattening,” contrary
to the explicit definition recited in claim 41 and provided in the
Specification, namely, that “flattening” means resolving a plex exception.
Accordingly, claim 41 is not indefinite for lack of clarity with respect to the
term “flattening.”
We are, therefore, persuaded the Examiner erred in rejecting claims
41-54 as being indefinite.
The Obviousness Rejections
Claims 41 and 49
Appellant contends Goel fails to teach exception page programming
as recited in claims 41 and 49 because Goel’s mixed page mode does not
relate to handling pages with different plexes, but rather pages of varying
dimension or orientation. App. Br. 15-16. Appellant also contends Goel
does not teach flattening a print job by resolving a plex exception before
imposing a print job. App. Br. 16-18.
Appellant contends Carlin also fails to teach resolving a plex
exception. App. Br. 18-21; Reply Br. 6-7. Specifically, Appellant argues
that “Carlin explains that part of the commingling process can include the
insertion of blank pages after pages that are to be printed simplex. Note that
the commingled print file never contains a plex exception because it is
assembled with all sheets having the same plex.” App. Br. 20. Further,
Appellant argues that “Carlin describes assembling documents with some
8
Appeal 2017-006205
Application 13/584,785
documents simplex, other documents duplex, but describes no document as
both simplex and duplex.” App. Br. 21.
Further, Appellant contends Goel and Carlin cannot be combined
because it would change Goel’s principle of operation, and moreover,
contends that such combination would not read on claims 41 and 49. We are
not persuaded by Appellant’s arguments.
Although Appellant argues that Goel does not teach exception page
programming and resolving a plex exception, we do not address these
arguments because the Examiner finds Carlin teaches these features (see
Final Act. 9-10; Ans. 23, 25-27, 30), and we are not persuaded by
Appellant’s arguments regarding Carlin.
Carlin discloses the following with respect to a commingled print file
assembled from multiple individual jobs:
Another important function advantageously performed at
this point is page insertion. Because some mail jobs from some
customers require only simplex printing (printing on only one
side of a page) while other mail jobs require duplex printing
(printing on both sides of a page), and because these jobs are
being commingled, it may be necessary to insert a blank page
after simplex page images to ensure that the next page image in
the print file does not print on the back of the previous page.
Carlin, ^ 51. We agree with the Examiner that here Carlin teaches both “the
exception page programming specifies a second plex that is different from
the first plex” and “the document printing system flattens the print job,
wherein flattening the print job comprises resolving the plex exception.”
Final Act. 9-10. That is, as quoted above, Carlin identifies that the print file
specifies both simplex and duplex printing—“specifies a second plex that is
different form the first plex”—and adds a blank page where necessary to
9
Appeal 2017-006205
Application 13/584,785
ensure the print file as a whole is properly printed—“resolv[es] the plex
exception.”
We are also not persuaded by Appellant’s arguments that combining
Carlin with Goel would change the principle of operation of Goel. App. Br.
21. The Examiner does not propose changing Goel’s principle of operation;
rather, the Examiner’s combination adds Carlin’s functionality of resolving a
plex exception to Goel’s system that imposes a print job (see Final Act. 8-
10, 12-14). In this combination, Goel’s functionality of imposing a print job
would remain intact. Further, Appellant’s argument that the combination
does not teach resolving a plex exception (App. Br. 21-22) is not persuasive
because we find Carlin discloses this feature, as discussed above.
Additionally, we are also not persuaded by Appellant’s arguments
against Artwork Specifications as applied to claim 41 (see App. Br. 22-23)
because we find the Examiner’s reliance on this reference is merely
cumulative. As discussed above regarding the enablement rejection, we
disagree with the Examiner’s interpretation of the claim 41 term
“flattening.” The Examiner relied on Artwork Specifications for disclosing
the “flattening” limitation under the Examiner’s erroneous interpretation.
See Final Act. 14-15. As already discussed, we agree with Appellant’s
definition that “flattening” means resolving a plex exception. See App. Br.
11. We find Carlin discloses this limitation for the reasons presented above.
We are, therefore, not persuaded the Examiner erred in rejecting
claims 41^44 and 47 as obvious over Goel, Carlin, and Artwork
Specifications, and claims 49, 50, and 52 as obvious over Goel and Carlin.
10
Appeal 2017-006205
Application 13/584,785
Claim 44
Appellant contends Ryan does not teach exception page programing
directed to the media weight of an exception page. App. Br. 26. Appellant
also contends there is no rational basis for combining Ryan with the other
references. Id. We are not persuaded by Appellant’s arguments.
The limitation “exception page programming is directed to the media
weight of at least one exception page” does not add any further structural or
functional requirements to claim 44, and we thus do not give this limitation
patentable weight. Nevertheless, even if we were to consider the “media
weight” limitation, Appellant admits as prior art that exception page
programming can specify an exception page based on media weight. See
Spec. ^ 37. Moreover, the Examiner also separately rejected claim 44 over
Goel, Carlin, and Artwork Specifications, without Ryan (Final Act. 17-18),
and Appellant has not provided arguments showing claim 44 to be
patentable over that base combination. Accordingly, the Examiner’s
reliance on Ryan is merely cumulative to the combination of Goel, Carlin,
and Artwork Specifications.
We are, therefore, not persuaded the Examiner erred in rejecting claim
44 as obvious over Goel, Carlin, Artwork Specifications, and Ryan.
Claim 45
Appellant contends Goel does not teach a configuration rule for use
by a document printing system. App. Br. 27. Specifically, Appellant argues
Goel’s “GUI entries are per-job selections, not rules that the document
printing system uses.” Id. We disagree with Appellant.
As the Examiner finds (Final Act. 18; Ans. 41-42), Goel discloses
entering sheet settings, for example, size, creep adjustment, or orientation.
11
Appeal 2017-006205
Application 13/584,785
Goel, ^ 50. We agree with the Examiner that Goel’s sheet settings are
“configuration rule[s]” because they are attributes that, “when selected,
cause an effect to occur such as to change the size of the page or its
orientation.” Ans. 41 42.
We are, therefore, not persuaded the Examiner erred in rejecting claim
45 as obvious over Goel, Carlin, and Artwork Specifications.
Claim 46
Appellant contends Hansen does not teach a media programming
difference selected from the group of color, coating, and sides coated
because Hansen merely mentions color as an attribute. App. Br. 26-27.
Appellant also contends there is no rational basis for combining Hansen with
the other references. App. Br. 27. We are not persuaded by Appellant’s
arguments.
The Examiner relies on the combination of references to teach the
argued limitation. Specifically, Goel teaches an attribute can be different for
different pages on a sheet (Goel, 32-33), and Hansen teaches color as an
attribute. Hansen, col. 12,11. 28-35. Moreover, Appellant’s Specification
admits as prior art that color is a variable media type attribute. See Spec. ^
34. Further, Appellant does not specifically explain which particular
references are not combinable and why they are not combinable. See App.
Br. 27.
We are, therefore, not persuaded the Examiner erred in rejecting claim
46 as obvious over Goel, Carlin, Artwork Specifications, and Hansen.
12
Appeal 2017-006205
Application 13/584,785
Claim 48
Appellant contends Sato does not teach a chapter start can be an
exception page. App. Br. 23-24. However, the claim 48 limitation “at least
one exception page that is a chapter start” does not require any additional
structure or functionality, and therefore, we do not give this limitation
patentable weight. Nevertheless, as the Examiner finds (Ans. 34), an
exception page being a chapter start is admitted as prior art. See Spec. ^ 37.
We are, therefore, not persuaded the Examiner erred in rejecting claim
48 as obvious over Goel, Carlin, Artwork Specifications, and Sato.
Claim 51
Appellant contends Sato does not teach inserting a blank page at the
position of a cover page that is an exception page. App. Br. 24-25.
However, as discussed above, Carlin discloses inserting a page to resolve a
plex exception (see Carlin, 51). That the page is inserted at the position of
a cover page does not further structurally or functionally limit the claim, and
is therefore not due patentable weight. Nevertheless, an exception page
being a cover page, i.e., inside or outside cover, is admitted as prior art in
Appellant’s Specification. See Spec. ^ 37.
We are, therefore, not persuaded the Examiner erred in rejecting claim
51 as obvious over Goel, Carlin, and Sato.
Claim 53
Appellant contends Goel does not teach inserting blank pages at the
location of an insert. App. Br. 27-28. The Examiner finds Carlin teaches
inserting a blank page to resolve a plex exception, and that it would have
been obvious to modify Carlin by allowing multiple pages to be inserted, in
13
Appeal 2017-006205
Application 13/584,785
view of God’s teaching of inserting a whole sheet. Ans. 42-43; Carlin,
51; Goel, Fig. 11. Appellant has not specifically rebutted this finding by the
Examiner. See Reply Br. 1-7.
We are, therefore, not persuaded the Examiner erred in rejecting claim
53 as obvious over Goel and Carlin.
Claim 54
Appellant contends Sato does not teach detecting a chapter start with
an even page number, and inserting a blank page before the chapter start
page such that the page number becomes odd. App. Br. 25. We are not
persuaded by Appellant’s argument.
We first note that whether a detected page is a chapter start does not
further structurally or functionally limit claim 54, and thus we do not give
this feature patentable weight. Nevertheless, even if we consider the chapter
start limitation, we find Appellant admits as prior art that a chapter start can
be an exception page. See Spec. ]|37. Further, we agree with the Examiner
that the natural result of inserting a page before a certain page that was
originally even-numbered would make the original page odd-numbered.
Ans. 37. Thus, in view of Carlin’s teaching of inserting a page when a
particular portion of a document is to be simplex printed, i.e., when there is
an exception (Carlin, 51), it would have been obvious to insert a page at
the location of an even-numbered chapter start, which would then become an
odd-numbered chapter start. Accordingly, the Examiner’s reliance on Sato
is merely cumulative, and Appellant’s argument that Sato alone fails to teach
the limitations of claim 54 (see App. Br. 25) is not persuasive.
We are, therefore, not persuaded the Examiner erred in rejecting claim
54 as obvious over Goel, Carlin, and Sato.
14
Appeal 2017-006205
Application 13/584,785
CONCLUSIONS
Under 35 U.S.C. § 101, the Examiner erred in rejecting claims 41-54.
Under 35 U.S.C. § 112, first paragraph, the Examiner erred in
rejecting claims 41—48.
Under 35 U.S.C. § 112, second paragraph, the Examiner erred in
rejecting claims 41-54.
Under 35 U.S.C. § 103(a), the Examiner did not erred in rejecting
claims 41-54.
DECISION
The Examiner’s decision to reject claims 41-54 is affirmed. See 37
C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically 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
15