Ex Parte Morgana et alDownload PDFPatent Trial and Appeal BoardMay 9, 201813669826 (P.T.A.B. May. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/669,826 11/06/2012 Stephen C. Morgana 75313 7590 05/11/2018 XEROX CORPORATION C/O FOX ROTHSCHILD LLP Princeton Pike Corporate Center 997 Lenox Drive, Building 3 Princeton, NJ 08648-2311 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. 20120083USNP/106681.36501 6154 EXAMINER KABIR, SAAD M ART UNIT PAPER NUMBER 2127 NOTIFICATION DATE DELIVERY MODE 05/11/2018 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): ipdocket@foxrothschild.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN C. MORGANA and REINER ESCHBACH Appeal2017-009041 Application 13/669,826 1 Technology Center 2100 Before ST. JOHN COURTENAY III, NORMAN H. BEAMER, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-7, 9-15, and 17-20. Appellants have canceled claims 8 and 16. App. Br. 22, 25. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Xerox Corporation as the real party in interest. App. Br. 3. Appeal2017-009041 Application 13/669,826 STATEMENT OF THE CASE Introduction Appellants' disclosed and claimed invention is directed to more efficiently using substrates in package generation. Spec. i-f 1. In particular, after positioning a package design file on a substrate, an unused portion of the substrate (i.e., a portion of the substrate that will not form part of the package) may be identified. Spec. i-fi-13, 28. In a disclosed embodiment, an ornamental structure may be placed in the unused area. Spec. i-fi-13, 30. According to the Specification, an ornamental structure is "a decorative or content-carrying structure that is attached to one or more facets of the package." Spec. ,-r 30. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics: 1. A method, comprising: by a processor: receiving a package design file contammg data representing a plurality of facets and a plurality of dimensions for a package; identifying, from the package design file, a two- dimensional layout of the package; identifying a first area of a substrate to be used to form a two-dimensional flat of the package; identifying an unused area of the substrate that will not form part of the package; applying one or more rules to identifY an ornamental structure that is attachable to a facet of the package and which fits within a portion of the unused area adjacent to the facet; and outputting a representation of the ornamental structure to a user. 2 Appeal2017-009041 Application 13/669,826 The Examiner's Rejection Claims 1-7, 9-15, and 17-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Magnell (US 2008/0020916 Al; Jan. 24, 2008); Doyle (US 3,596,068; July 27, 1971); and Crowell (US 5,983,538; Nov. 16, 1999). Final Act. 6-25. ANALYSIS 2 Appellants dispute the Examiner's finding that Doyle teaches "identify[ing] an ornamental structure that is attachable to a facet of the package and which fits within a portion of the unused area adjacent to the facet." App. Br. 10-14; Reply Br. 6. In particular, Appellants argue Doyle is directed to positioning pieces of a template on a substrate in order to reduce the total length of the substrate. App. Br. 10-13 (citing Doyle, col. 2, 11. 54---60, 65----67, col. 3, 11. 6-10, 13-16); Reply Br. 5----6. Additionally, Appellants contend because Doyle merely places already identified pieces in a predetermined sequence, Doyle does not teach applying one or more rules to identify an ornamental structure. App. Br. 11- 14; Reply Br. 5. Doyle is generally directed to optimizing the placement of pieces on the surface of a material (i.e., a substrate) to reduce the amount of wasted (i.e., unused) material. Doyle, col. 1, 11. 13-25, 45--49. Doyle discloses the substrate may be fabric (for use in the construction of apparel), upholstery 2 Throughout this Decision, we have considered the amended Appeal Brief, filed December 13, 2016 ("App. Br."); the Reply Brief, filed June 9, 2017 ("Reply Br."); the Examiner's Answer, mailed April 10, 2017("Ans."); and the Final Office Action, mailed May 3, 2016 ("Final Act."), from which this Appeal is taken. 3 Appeal2017-009041 Application 13/669,826 fabric (for automobile seats and headliners), or corrugated or pasteboard stock (for use in carton blanks within the container industry). Doyle, col. 1, 11. 15-20-25. Doyle "automatically arrang[ es] a predetermined sequence of arbitrarily shaped patterns in an organized and controlled fashion so as to decrease the amount of space required." Doyle, col. 2, 11. 54--57. As shown in Figure 1 of Doyle, the individual pieces to be prepared from a substrate (in the given example, the substrate is a bolt of cloth) are identified on a drawing board. Doyle, col. 3, 11. 11-16, Fig. 1. The boundaries of the individual pieces are digitized by the system such that they may be arranged (within the fixed width of the substrate) to minimize the total length of substrate required. Doyle, col. 3, 11. 6-10, col. 4, 11. 47-53, Fig. 5. In rejecting claim 1, and in response to Appellants' arguments, the Examiner finds Doyle teaches a "layout contains an arrangement of pieces other than a first piece which do not form part of the first piece (Fig. 1 ), where the first piece is being interpreted as package." Ans. 24; see also Final Act. 8. Additionally, the Examiner finds "[t]he pieces other than the first piece is [sic] being interpreted as ornamental structure." Ans. 26. In other words, the Examiner interprets Doyle as teaching a plurality of pieces are placed and arranged on a substrate and the first piece corresponds to the main structure (i.e., package) and the subsequently added pieces correspond to ornamental structures. When construing claim terminology during prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the Specification, reading claim language in light of the Specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 4 Appeal2017-009041 Application 13/669,826 We are mindful, however, that limitations are not to be read into the claims from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellants describe an ornamental structure as "a decorative or content-carrying structure that is attached to one or more facets of the package and which is not required to support the finished package." Spec. i-f 30. Example ornamental structures include ribbons, bows, hearts, stars coupons, and/or other text or graphic images. Spec. i-f 30; see also Fig. 3 (47). Here, we find the Examiner's construction is overly broad and not reasonably consistent with Appellants' Specification. Further, the Examiner has not provided sufficient evidence or technical reasoning to support the finding that one of ordinary skill in the art would understand Doyle teaches or suggests that of all the pieces arranged on the substrate, only the first piece represents the structure (i.e., package) and the subsequent pieces are ornamental structures. We decline to resort to impermissible speculation or unfounded assumptions or rationales to cure the deficiencies in the factual bases of the rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). For the reasons discussed supra, and constrained by the record before us, we do not sustain the Examiner's rejection of independent claim 1. For similar reasons, we do not sustain the Examiner's rejection of independent claims 10 and 19, which recite similar limitations. Additionally, we do not sustain the Examiner's rejection of claims 2-7, 9, 11-15, 17, 18, and 20, which depend directly or indirectly therefrom. 5 Appeal2017-009041 Application 13/669,826 DECISION We reverse the Examiner's decision rejecting claims 1-7, 9-15, and 17-20. REVERSED 6 Copy with citationCopy as parenthetical citation