Ex Parte Morovic et al

Patent Trial and Appeal Board

Sep 19, 2016

13173940 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/173,940 06/30/2011
22879 7590 09/21/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
PETER MOROVIC
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.
82585629 1018
EXAMINER
WALLACE, JOHN R
ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER MOROVIC and JAN MOROVIC
Appeal2015-006508
Application 13/173,940
Technology Center 2600
Before JOHN A. EV ANS, MATTHEW J. McNEILL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-15, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 3.
Appeal2015-006508
Application 13/173,940
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns "a print system
for adjusting a color profile," for example, due to differences in ink obtained
from different manufacturers. Spec. i-fi-f 11-18; Abstract. 2
Representative Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. A print system for adjusting a color profile comprising:
a system comprising:
a memory for storing computer executable
instructions; and
a processing unit for accessing the memory and
executing the computer executable instructions, the
computer executable instructions comprising:
a profile transformer to:
receive a color sample comprising a color
measurement of a proper subset of a gamut of
colors printable with ink deposited at a printer; and
provide an adjusted color profile for the printer
based on (i) an original color profile for the printer
and (ii) the color sample, wherein the original
color profile for the printer is associated with a
substrate.
App. Br. 22 (Claims App.).
2 This decision employs the following abbreviations: "Spec." for the
Specification, filed June 30, 2011; "Final Act." for the Final Office Action,
mailed August 1, 2014; "App. Br." for the Appeal Brief, filed December 15,
2014; "Ans." for the Examiner's Answer, mailed May 7, 2015; and "Reply
Br." for the Reply Brief, filed June 18, 2015.
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Application 13/173,940
The Prior Art Supporting the Re} ections on Appeal
As evidence ofunpatentability, the Examiner relies on the following
prior art:
Olson et al. ("Olson")
Adam et al. ("Adam")
Perez et al. ("Perez")
Doser
us 5,581,480
US 2004/0130739 Al
US 2008/0130023 Al
US 2009/0284554 Al
The Rejections on Appeal
Dec. 3, 1996
July 8, 2004
June 5, 2008
Nov. 19, 2009
Claims 1--4, 6, 7, 9, and 11-15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Adam and Perez. Final Act. 2-13; App. Br. 3;
Ans. 2-13.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Adam, Perez, and Olson. Final Act. 14; App. Br. 3; Ans. 13-14.
Claims 8 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adam, Perez, and Doser. Final Act. 15-16; App. Br. 3;
Ans. 14--15.
ANALYSIS
We have reviewed the rejections of claims 1-15 in light of
Appellants' arguments that the Examiner erred. In doing so, we have
evaluated only the arguments that Appellants actually make on appeal.
Arguments that Appellants could have made but declined to make are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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The Rejection of Claims 1--4, 6, 7, 9,
and 11-15 Under 35U.S.C.§103(a)
Independent Claim 1
A "Color Sample Comprising ... a Proper Subset
of [the] Gamut of Colors Printable" by a Printer
Claim 1 requires a "color sample comprising ... a proper subset of
[the] gamut of colors printable" by a printer. App. Br. 22 (Claims App.).
The Examiner finds that Adam and Perez each disclose the claimed color
sample. Final Act. (citing Adam i-fi-f 113-14; Perez i-fi-154--56, 95, 98); Ans.
3--4 (citing Adam i-fi-f 113-14; Perez i-fi-154--56, 95, 98).
Appellants argue that Adam does not teach or suggest a "color sample
comprising ... a proper subset of [the] gamut of colors printable" because
"in Adam a large number of patches (e.g., 512) are scanned that have every
combination of Red, Blue and Green inks." App. Br. 9 (citing Adam i-f 117).
In addition, Appellants argue that Perez does not teach or suggest the
claimed color sample because Perez "explicitly notes that all possible
combinations of four different colors of ink, Cyan, Magenta, Yellow and
Black (CYMK) are employed as a profiling target of printers." Id. at 9-10
(citing Perez i-fi-155-56, 95-98).
Appellants' arguments rest on a misunderstanding of Adam and Perez.
Adam describes print target patches (color samples) containing "every
possible combination of red, green, and blue." Adam i-f 117. But Adam
explains that those combinations of red, green, and blue inks "only have the
values of 0, 32, 64, 128, 160, 192, 224, or 256" out of 256 bits. Id.; see
Perez i-f 105 (discussing 3x8 bit color representations having 256 values).
Thus, those combinations result from discrete increments of red, green, and
blue inks, such as 0 red, 32 green, 32 blue or 128 red, 32 green, and
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224 blue. Accordingly, Adam discloses a "color sample comprising ... a
proper subset of [the] gamut of colors printable" by a printer.
Perez also discloses the claimed color sample. Although Perez
describes profiling target patches (color samples) containing "all possible
combinations" of cyan, magenta, yellow, and black inks, Perez explains that
those combinations only have particular percentages of each different ink,
i.e., "0%, 10%, 20%, 40%, 70%, and 100%." Perez i-f 95. Similar to Adam,
the profiling target patches (color samples) result from discrete increments
of cyan, magenta, yellow, and black inks.
Therefore, contrary to Appellants' arguments, Adam and Perez do not
use "the entire printable color gamut of a printer" when producing color
samples. App. Br. 10.
A "Profile Transformer" That
Provides an Adjusted Printer Profile
Claim 1 requires a "profile transformer" that provides "an adjusted
color [printer] profile" based on "(i) an original color [printer] profile"
associated with a substrate and "(ii) the color sample." App. Br. 22 (Claims
App.). The Examiner relies on the combination of Adam and Perez for this
limitation. Ans. 3-5, 17-18; see Final Act. 3-5. In particular, the Examiner
finds that Adam discloses a "large portion" of this limitation, i.e., "an
adjusted color profile for the printer based on (i) an original color profile and
(ii) the color sample." Ans. 17 (citing Adam i-fi-1 114--16). The Examiner
further finds that Perez demonstrates that it is "known in the art" to provide
(1) "a color profile for a printer" and (2) "a color profile associated with a
substrate." Id. at 18 (citing Perez i-fi-1 15, 25, 66, 72, 115).
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Appellants argue that neither Adam nor Perez discloses a "profile
transformer" that provides an adjusted printer profile based on (i) an original
printer profile associated with a substrate and (ii) the color sample. App. Br.
10-12; Reply Br. 4---6. Appellants do not dispute that Perez discloses (1) "a
color profile for a printer" and (2) "a color profile associated with a
substrate." App. Br. 11; Reply Br. 4--6. Instead, Appellants contend that
"the Examiner has not explained how the cited sections of Perez would teach
one of ordinary skill in the art how to implement" the claimed "profile
transformer." App. Br. 11; see Reply Br. 6.
In essence, Appellants address Adam and Perez individually, asserting
that each does not teach or suggest the claimed "profile transformer." App
Br. 10-12; Reply Br. 4---6. Where a rejection rests on a combination of
references, however, an appellant cannot establish nonobviousness by
attacking the references individually. See In re Merck & Co., 800 F .2d
1091, 1097 (Fed. Cir. 1986).
Moreover, "the test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
art." In re McLaughlin, 443 F.2d 1392, 1395(CCPA1971); see In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants do not address what
the Adam-Perez combination "taken as a whole would suggest to one of
ordinary skill in the art" and, therefore, have not established Examiner error.
App. Br. 10-12; Reply Br. 4---6.
Teaching Away
Appellants argue that "Adam teaches away from its combination and
modification with any other reference" because Adam states that "a [printer]
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profile built on top of a [printer] profile is inferior to a profile built without
such a profile." App. Br. 12 (citing Adam i-f 118); Reply Br. 6 (quoting
Adam i-f 118).
Although Adam paragraph 118 describes a preferred embodiment
with print target patches (color samples) produced by bypassing a printer
profile, Adam paragraph 119 explains that "[t]here are certain situations in
which a [printer] profile can not be bypassed .... " Adam i-fi-1 118-19. Thus,
Adam teaches an adjusted printer profile based on an original printer profile.
See id. i-fi-1114--20, 124--28. "[J]ust because better alternatives exist in the
prior art does not mean that an inferior combination is inapt for obviousness
purposes." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).
Summary
Appellants' arguments have not persuaded us that the Examiner erred
in rejecting claim 1 for obviousness based on Adam and Perez. Hence, we
sustain the rejection.
Dependent Claims 2--4, 7, and 11
Claims 2--4, 7, and 11 depend directly or indirectly from claim 1.
App. Br. 22-24 (Claims App.). Appellants present the same patentability
arguments for these dependent claims as for claim 1. Id. at 13. When
urging patentability, Appellants' general statement concerning the "specific
elements recited" in these dependent claims does not constitute a separate
patentability argument. See 37 C.F.R. § 41.37(c)(l)(iv). Because
Appellants do not argue the claims separately, we sustain the obviousness
rejection of claims 2--4, 7, and 11 for the reasons applicable to claim 1. See
id.
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Dependent Claim 6
Claim 6 depends indirectly from claim 1 and recites "wherein the
reverse transform value is calculated based on a deduction of settings of the
original color profile." App. Br. 23 (Claims App.). The Examiner cites
Adam for this limitation. Final Act. 7-8 (citing Adam i-f 161, Fig 6B); Ans.
7, 20 (citing Adam i-f 161, Fig 6B). In particular, the Examiner finds that
that the forward CMY-to-CIEL *a*b* transform and subsequent inversion to
produce a reverse CIEL *a*b*-to-CMY transform according to Adam
paragraph 161 results in the claimed reverse transform value. Ans. 20; see
Final Act. 5; Ans. 5.
Appellants argue that nothing in Adam teaches or suggests the
claimed reverse transform value because Adam does not disclose an original
printer profile and, therefore, cannot disclose a reverse transform value
"calculated based on a deduction of settings" of the original printer profile.
App. Br. 14; Reply Br. 8-9.
Because claim 6 depends indirectly from claim 1, the obviousness
rejection rests on Perez as well as Adam. Final Act. 2; Ans. 2. As with
claim 1, Appellants do not for claim 6 address what the Adam-Perez
combination "taken as a whole would suggest to one of ordinary skill in the
art" and have not established Examiner error. App. Br. 13-14; Reply
Br. 8-9.
Appellants suggest that Adam's forward CMY-to-CIEL *a*b*
transform and subsequent inversion to produce a reverse CIEL *a*b*-to-
CMY transform do not correspond to a reverse transform value "calculated
based on a deduction of settings." App. Br. 14. In response, the Examiner
notes that ( 1) the phrase "calculated based on a deduction of settings" does
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not "imply some sort of specific method of calculation" and (2) an inversion
according to Adam paragraph 161 satisfies the claim language under the
broadest reasonable interpretation. Ans. 20.
We agree with the Examiner. Claim 6 does not recite a specific
method of calculation. Inventors can act as their own lexicographers if they
clearly set forth a definition of a claim term or phrase other than its plain and
ordinary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc.,
782 F.3d 671, 677 (Fed. Cir. 2015). Here, Appellants do not contend that
the Specification sets forth a definition for the term "deduction" or the
phrase "calculated based on a deduction of settings." App. Br. 13-14; Reply
Br. 8-9. Instead, the Specification broadly explains that a "profile settings
estimation engine" can "examine the forward and reverse color lookup table
of the original color profile" and then "deduce the settings employed to
generate and/or modify the original color profile." Spec. i-f 27. The
Specification does not describe any particular calculation that occurs when
the "profile settings estimation engine" operates to "deduce" various
settings. Id. i-fi-126-28, Fig. 4.
Accordingly, Appellants' arguments have not persuaded us that the
Examiner erred in rejecting claim 6 for obviousness based on Adam and
Perez. Hence, we sustain the rejection.
Dependent Claim 9
Claim 9 depends indirectly from claim 1 and recites "wherein the
forward transform value and the reverse transform value are calculated
based on a color profile calculated from a profiling chart comprising a set of
estimated color samples calculated on the basis of the color sample received
by the profile transformer." App. Br. 23 (Claims App.). The Examiner
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relies on Adam for this limitation. Final Act. 8 (citing Adam iii! 117-21,
160-61 ); Ans. 7-8, 21 (citing iii! 117-21, 160-61 ). In particular, the
Examiner finds that Adam's print target patches (color samples) "are
approximate/estimated versions of the true color" when scanned "due to
hardware limitations" and that the "approximation that occurs" from patch
scanning corresponds to the "estimated color samples" recited in claim 9.
Ans. 21.
Appellants contend that the "estimated color samples" recited in
claim 9 differ from the "color sample received by the profile transformer"
recited in claim 9. Reply Br. 10; see App. Br. 14--15. Appellants then
contend that Adam fails to disclose both types of color samples required by
claim 9. Reply Br. 10-11.
We agree with Appellants. Based on the record before us, the
Examiner has not adequately explained how the cited portions of Adam
disclose both types of color samples required by claim 9. Thus, we do not
sustain the obviousness rejection of claim 9 based on Adam and Perez.
Independent Claim 12
Claim 12 Rejected on the Same Grounds as Claim 1
Claim 12 defines a "method for adjusting a color profile," while
claim 1 defines a "print system for adjusting a color profile." App. Br. 22,
24 (Claims App.). Among other things, claim 12 requires "matching ...
each of the plurality of colors in the color sample with a color in a color
gamut defined by an original color profile for a printer, wherein the color
gamut comprises a superset of colors relative to the color sample." Id. at 24.
Claim 12 also requires "providing ... an adjusted color profile for the
printer based on the original color profile and the matching." Id.
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The Examiner rejects claim 12 on the same grounds as claim 1,
reasoning that "the structural elements of system claim 1 perform all of the
steps of method claim 12." Final Act. 9; Ans. 8.
Appellants assert that claims 1 and 12 "differ significantly" because
claim 1 lacks a feature equivalent to claim 12's matching step. App. Br. 15.
In response, the Examiner explains that a "color gamut compris[ing] a
superset of colors relative to the color sample" according to claim 12
corresponds to a "color sample comprising ... a proper subset of [the]
gamut of colors printable" according to claim 1 because the two phrases
cover mathematically equivalent concepts. Ans. 22. The Examiner reasons
that "if X is a superset of Y, Y is a subset of X." Id. In addition, the
Examiner explains that claims 1 and 12 "refer to the same concept" despite
using "providing" versus "matching" because "provid[ing] an adjusted color
profile" based on an original color profile and a color sample according to
claim 1 is equivalent to "matching ... colors in the color sample with a color
in a color gamut defined by an original color profile" according to claim 12.
Id. The Examiner points out that claim 12 "essentially concedes"
equivalence through the providing step that follows the matching step, i.e.,
"providing ... an adjusted color profile for the printer based on the original
color profile and the matching." Id. at 23.
Appellants do not dispute the Examiner's determination that a "color
gamut compris[ing] a superset of colors relative to the color sample"
according to claim 12 corresponds to a "color sample comprising ... a
proper subset of [the] gamut of colors printable" according to claim 1.
Reply Br. 11-12. In addition, Appellants do not advance any arguments
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controverting the Examiner's determination that claims 1 and 12 "refer to
the same concept." Id.
A "Color Gamut Compris[ing] a Superset
of Colors Relative to the Color Sample"
Appellants argue that Adam and Perez do not teach or suggest how to
implement claim 12' s matching and providing steps because neither Adam
nor Perez discloses a "color gamut compris[ing] a superset of colors relative
to the color sample." Reply Br. 12; see App. Br. 15-16.
As discussed above for claim 1, however, Adam and Perez each
disclose a "color sample comprising ... a proper subset of [the] gamut of
colors printable" by a printer. See Adam i-f 117; Perez i-f 95. Consequently,
Adam and Perez each disclose a "color gamut compris[ing] a superset of
colors relative to the color sample" as required by claim 12. As the
Examiner correctly reasons, "if Xis a superset ofY, Y is a subset of X."
Ans. 22.
Teaching Away
Appellants argue that Adam teaches away from claim 12 for the same
reasons that Adam teaches away from claim 1. App. Br. 12, 16-17; Reply
Br. 7-8. We do not consider that argument any more persuasive for
claim 12 than for claim 1.
Summary
Appellants' arguments have not persuaded us that the Examiner erred
in rejecting claim 12 for obviousness based on Adam and Perez. Hence, we
sustain the obviousness rejection.
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Dependent Claims 13 and 14
Claims 13 and 14 depend directly or indirectly from claim 12. App.
Br. 24 (Claims App.). Appellants present the same patentability arguments
for these dependent claims as for claim 12. Id. at 17. When urging
patentability, Appellants' general statement concerning the "specific
elements recited" in these dependent claims does not constitute a separate
patentability argument. See 37 C.F.R. § 41.37(c)(l)(iv). Because
Appellants do not argue the claims separately, we sustain the obviousness
rejection of claims 13 and 14 for the reasons applicable to claim 12. See id.
Independent Claim 15
A "Color Sample Comprising ... a Proper Subset
of [the] Gamut [of] Colors Printable" by a Printer
Like claim 1, claim 15 requires a "color sample comprising ... a
proper subset of [the] gamut [of] colors printable" by a printer. App. Br. 25
(Claims App.). Appellants' patentability arguments based on this limitation
in claim 15 parallel their patentability arguments for the corresponding
limitation in claim 1. App. Br. 8-10, 17-18; Reply Br. 2-3, 12-13. We do
not consider those arguments any more persuasive for claim 15 than for
claim 1.
A "Profile Transformer" That Provides
a First Adjusted ICC Printer Profile
Like claim 1, claim 15 requires a "profile transformer" that provides
"a first adjusted International Color Consortium (ICC) [printer] profile"
based on "(i) the color sample" and "(ii) an original first ICC [printer]
profile" associated with a first substrate. App. Br. 25 (Claims App.).
Appellants' patentability arguments based on this limitation in claim 15
parallel their patentability arguments for the corresponding limitation in
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claim 1. App. Br. 10-12, 18-19; Reply Br. 3---6, 12-13. We do not consider
those arguments any more persuasive for claim 15 than for claim 1.
Transform Values Calculated "Based on the Color
Sample and the Original Color [Printer] Profile"
Claim 15 recites "calculating a forward transform value and a reverse
transform value for the first adjusted [International Color Consortium] ICC
[printer] profile based on the color sample and the original color [printer]
profile." App. Br. 25 (Claims App.). The Examiner cites Adam for this
limitation. Final Act. 10 (citing Adam i-fi-f 159---61 ); Ans. 10, 28 (citing
Adam i-fi-f 159---61 ). In particular, the Examiner finds that Adam discloses
populating forward and reverse lookup tables using scanned print target
patches (color samples). Ans. 28.
Appellants contend that the concept of calculating forward and
reverse transform values for a first adjusted printer profile based on a color
sample and an original printer profile "is outside of the scope and content of
Adam taken in view of Perez." App. Br. 19. More specifically, Appellants
assert that Adam does not teach or suggest an "original color [printer]
profile" and, therefore, cannot teach or suggest "a forward transform value
and a reverse transform value" calculated "based on" a color sample and the
"original color [printer] profile." Reply Br. 13-14.
Like claim 6, the obviousness rejection for claim 15 rests on Perez as
well as Adam. Final Act. 2; Ans. 2. And like claim 6, Appellants do not for
claim 15 address what the Adam-Perez combination "taken as a whole
would suggest to one of ordinary skill in the art" and have not established
Examiner error. App. Br. 19; Reply Br. 13-14.
Appellants suggest that the forward CMY-to-CIEL *a*b* transform
and subsequent inversion to produce a reverse CIEL *a*b*-to-CMY
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transform according to Adam paragraph 161 does not correspond to the
forward and reverse transform values recited in claim 15. App. Br. 19.
Adam instructs that ( 1) print target patches (color samples) with
unique CMYK values "are read by a scanner and a spectrophotometer,"
(2) those values are matched to CIEL *a*b* values "to build a forward
transform from the CMY values to the CIEL *a*b* values," and (3) the
"forward table from CMY to scanned CIEL *a*b* values is inverted to
produce a CIEL *a *b* to CMY transform." Adam i-fi-f 160-61. Accordingly,
Adam discloses forward and reverse transform values based on scanned
color samples. See Ans. 28.
Teaching Away
Appellants argue that Adam teaches away from claim 15 for the same
reasons that Adam teaches away from claim 1. App. Br. 12, 19-20; Reply
Br. 7-8. We do not consider that argument any more persuasive for
claim 15 than for claim 1.
Summary
Appellants' arguments have not persuaded us that the Examiner erred
in rejecting claim 15 for obviousness based on Adam and Perez. Hence, we
sustain the obviousness rejection.
The Rejection of Claims 5, 8, and 10 Under 35 U.S.C. § 103(a)
Claims 5, 8, and 10 depend indirectly from claim 1. App. Br. 23
(Claims App.). Appellants assert that these dependent claims are
"patentable for at least the same reasons as claim 1, and for the specific
elements recited therein." Id. at 20. However, Appellants do not articulate
any patentability arguments for these dependent claims beyond the
arguments regarding claim 1. Id. at 20-21. Appellants' general references
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to the "specific elements recited therein" do not constitute separate
patentability arguments. See 37 C.F.R. § 41.37(c)(l)(iv). In addition, the
statements that Olson and Doser do not "make up for the deficiencies of
Adam and Perez" do nothing to separately distinguish these dependent
claims from the references. Hence, we sustain the obviousness rejections of
these dependent claims.
DECISION
We affirm the rejections of claims 1-8 and 10-15 under 35 U.S.C.
§ 103(a).
We reverse the rejection of claim 9 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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