Ex Parte Reese et al

Patent Trial and Appeal Board

Feb 20, 2013

10141571 (P.T.A.B. Feb. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CURTIS REESE and MARK M. JOSEPHSEN
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Appeal 2010-000031
Application 10/141,571
Technology Center 2600
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Before BRUCE R. WINSOR, BARBARA A. BENOIT, and
JAMES B. ARPIN, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-40. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.

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STATEMENT OF THE CASE
Appellants’ invention relates to printing photocopy-protected
documents. See generally Abstract. A copy-protection template creates
substantially hidden copy-protection symbols on an originally printed
document. Id. A photocopy of the original document reveals the copy-
protection symbols that were not noticeable in the original document. Id.
Claim 1 is illustrative and reads as follows, with key disputed limitations
emphasized:
1. A method of printing a copy-protected document comprising:
receiving a print job that includes a copy-protection instruction;
based on the instruction, merging the print job with a copy-protection
template; and
printing the print job.
The Examiner relies on the following as evidence of unpatentability:
Al-Hussein US 5,809,167 Sept. 15, 1998
Koltai US 6,104,812 Aug. 15, 2000
Alasia US 6,859,534 B1 Feb. 22, 2005
(filed Jan. 12, 1998)
The Rejections
1. The Examiner rejected claims 1-16, 19-25, and 27-32 under 35
U.S.C. § 102(b) as anticipated by Koltai. Ans. 3-10.1
2. The Examiner rejected claims 17, 18, 26, 38, and 39 under 35
U.S.C. § 103(a) as unpatentable over Koltai and Alasia. Ans. 10-13, 16-18.
3. The Examiner rejected claims 33-37 under 35 U.S.C. § 103(a) as
unpatentable over Koltai and Al-Hussein. Ans. 13-16.

1 Throughout this opinion, we refer to the Appeal Brief filed January 10,
2007 (App. Br.), the Examiner’s Answer mailed June 18, 2009 (Ans.), and
the Reply Brief filed August 1, 2007 (Reply Br.). We have not considered
the Examiner’s Answers mailed June 6, 2007, and August 15, 2007, as they
are deemed to have been superseded.
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4. The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as
unpatentable over Koltai, Alasia, and Al-Hussein. Ans. 18-19.

THE CONTENTIONS
The Examiner finds that Koltai discloses every element of illustrative
claim 1, including “receiving a print job that includes a copy-protection
instruction” and “a copy-protection template.” Ans. 3-4 (citing col. 11, ll.
48-49, 54-65; col. 14, ll. 15-45; Figs. 13, 14A, 14B). The Examiner
interprets Koltai’s primary (or visible) image as equating to the recited print
job, Koltai’s secondary (or hidden) image as the recited copy-protection
template, and Koltai’s user-selectable security parameters or priorities as the
recited copy-protection instruction. Ans. 20.
Appellants argue that Koltai does not disclose “receiving a print job
that includes a copy-protection instruction” or “based on the instruction,
merging the print job with a copy-protection template,” as recited in claim 1.

THE ANTICIPATION REJECTION
Claims 1-3 and 29-32
Koltai describes producing counterfeit-deterring hidden indicia
images by combining a primary image with a secondary image. See col. 1,
ll. 5-15; col. 6, ll. 61-67; col. 11, ll. 54-65. Koltai’s secondary image is
created by modifying elements from the primary image. See col. 1, ll. 5-15;
col. 6, ll. 61-67. Once the primary and second images are combined, the
primary image remains visible, whereas the secondary image (or hidden
image) is invisible, unless viewed through a special decoding device. See
col. 1, ll. 10-15; col. 6, ll. 63-67.
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First, Appellants argue that Koltai does not disclose the recited
“receiving a print job that includes a copy-protection instruction” because
Koltai’s unified file does not include a copy-protection instruction and
because the Examiner has an overly broad interpretation of the term “print
job.” App. Br. 18-20, 22; Reply Br. 2-4.
In finding that Koltai discloses the recited print job, the Examiner
equates the recited print job to Koltai’s primary (or visible) image (Ans. 20),
not to Koltai’s unified file. Thus, Appellants’ arguments (App. Br. 18-20;
Reply Br. 3-4) regarding Koltai’s unified file are unpersuasive because they
are not consistent with the rejection. The Examiner equates Koltai’s primary
image to the recited print job, explaining that a print job means data that is
destined to be printed and so encompasses Koltai’s primary image. Ans. 20.
In challenging the Examiner’s interpretation as overly broad,
Appellants pose a series of hypothetical questions regarding when an image
becomes a print job (Reply Br. 3-4). Leaving aside the breadth of the term
“a print job,” Appellants do not provide evidence as to how an ordinarily
skilled artisan would understand a print job differently than the Examiner’s
interpretation or how their Specification defines the term so as to preclude
the Examiner’s interpretation. Mere speculation unsupported by factual
evidence is entitled to little probative value. Cf. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997).
Likewise, Appellants’ argument that Koltai considers only the unified
file to be a print job is unavailing for, even if Appellants’ assertion is
correct, what Koltai considers to be a print job is not germane to whether
Koltai, as applied in the rejection, anticipates claim 1. The test of whether
Koltai anticipates claim 1 is not how the reference views the claim terms.
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Rather, the test whether a reference anticipates a claim is whether the claim
elements are arranged as in the claim under review. In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990) (citations omitted).
The Examiner further indicates that a copy-protection instruction is
included in Koltai’s primary image (i.e., the recited print job). Ans. 20
(citing col. 11, ll. 35-49). The cited portion of Koltai describes user selected
parameters or priorities, which include security (such as data protection or
protection against reproduction). See col. 11, ll. 35-49. The Examiner
explains that the user-selected security parameters are instructions pertaining
to copy-protection and, thus, disclose the recited copy-protection instruction.
Ans. 4. Appellants have not squarely addressed – much less, persuasively
demonstrated – why the Examiner’s explanation regarding Koltai’s security
parameters is unreasonable. See App. Br. 18-20; Reply Br. 2-5.
Second, Appellants argue that Koltai does not disclose “based on the
instruction, merging the print job with a copy-protection template” recited in
claim 1 because of how their Specification defines the term “copy-protection
template.” App. Br. 20-22; Reply Br. 4-5. Pointing to an exemplary
embodiment in their Specification, Appellants assert that a copy-protection
template provides a layout that indicates where objects and pixel patterns are
to be placed on a copy-protected document. App. Br. 21 (citing Spec. 10:19-
21; 15:1-12).
The portion of the Specification relied on by Appellants, however,
only provides an example—albeit, an exemplary embodiment—and uses
equivocating terms in stating “[a] copy-protection template 426 generally
provides a layout . . . .” Spec. 10:19-21 (emphasis added). As such, the
Specification does not set forth a definition of “a copy-protection template”
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to limit the claim term. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002) (Claim terms are properly construed to include
limitations not otherwise inherent in the term when the Specification
“clearly set[s] forth a definition of the disputed claim term.”). The
exemplary embodiment is, however, an informative example of how to
practice their invention. Cf. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (explaining that examples in a specification may be used to
teach an ordinarily skilled artisan how to practice the invention, rather than
intending to limit the claims to the embodiments disclosed in the
specification).
Under the broadest reasonable interpretation, a copy-protection
template is something that serves as a pattern for preventing unauthorized
reproduction of printed documents.2 This construction encompasses
Appellants’ exemplary embodiment in the Specification – that is, a layout
(or pattern) that indicates where objects and pixel patterns are to be placed
on a copy-protected document (Spec. 10:19-21).
With this claim construction in mind, we agree with Appellants that
Koltai’s secondary image is not a copy-protection template (Ans. 4, 21).
Rather than serving as a pattern for preventing unauthorized reproduction of
documents, Koltai’s secondary image is created as part of Koltai’s copy-
protection process for each primary image to be protected. See, e.g., col. 14,
ll. 36-43; Ans. 4 (citing col. 14, ll. 15-45; Figs. 13, 14A, 14B).

2 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1213 (10th ed. 1999)
(defining “template” as “3: something that establishes or serves as a
pattern”).
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We therefore are persuaded that the Examiner erred in rejecting
(1) independent claim 1; (2) independent claims 29 and 31, each of which
require a copy-protection template; and (3) dependent claims 2, 3, 30, and 32
for similar reasons.
Claims 4-15
Independent claim 4, like claim 1, recites “receiving a print job that
includes a copy-protection instruction.” Appellants repeat their arguments
made in connection with claim 1 regarding “receiving a print job that
includes a copy-protection instruction.” Appellants also assert that, because
Koltai does not disclose “receiving a print job that includes a copy-
protection instruction,” Koltai does not disclose the additional features
recited in claim 4 based on a copy-protected instruction. App. Br. 24. We
are not persuaded for the reasons discussed above with regard to the printing
element recited in claim 1.
Accordingly, we will sustain the rejection of independent claim 4 and
dependent claims 5-15, not argued separately with particularity.
Claims 16, 19-25, 27, and 28
Appellants do not contest the Examiner’s anticipation rejection of
(1) independent claim 16 and its dependent claims 19-25 and
(2) independent claim 27 and its dependent claim 28. See App. Br. 2
(indicating only claims 1-15, 26, 29-32, 34-37, 39, and 40 have been
appealed); see generally App. Br. 16-27; Reply Br. 2-6. We therefore
summarily sustain the rejection of claims 16, 19-25, 27, and 28. See MPEP
§ 1205.02 (“If a ground of rejection stated by the examiner is not addressed
in the appellant’s brief, that ground of rejection will be summarily sustained
by the Board.”).
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THE OBVIOUSNESS REJECTION OVER KOLTAI AND ALASIA
Claims 26 and 39
Each of independent claims 26 and 39 recites copy-protection
templates. Because the Examiner has not shown that Koltai, under the
obviousness standards of § 103, or Alasia remedies the deficiencies noted
above with respect to Koltai, we do not sustain the obviousness rejection of
independent claims 26 and 39.
Claims 17, 18, and 38
Appellants do not contest the Examiner’s obviousness rejection of
claims 17, 18, and 38 (see, e.g., App. Br. 2). We therefore summarily
sustain the rejection of claims 17, 18, and 38.

THE OBVIOUSNESS REJECTION OVER
KOLTAI AND AL-HUSSEIN
Each of independent claims 34 and 36 recites a copy-protection
template. We are persuaded of error for the reasons discussed above with
respect to claim 1. We therefore do not sustain the rejection of
(1) independent claim 34 and its dependent claim 35, and (2) independent
claim 36 and its dependent claim 37.
Appellants do not contest the Examiner’s obviousness rejection of
claim 33 (see, e.g., App. Br. 2). We therefore summarily sustain the
rejection of claim 33.

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THE OBVIOUSNESS REJECTION OVER
KOLTAI, ALASIA, AND AL-HUSSEIN
Claim 40, which depends from claim 39, recites copy-protection
templates. Because the Examiner has not shown that Koltai, under the
obviousness standards of § 103, Alasia, or Al-Hussein remedies the
deficiencies noted above with respect to Koltai’s disclosure of a copy-
protection template, we do not sustain the obviousness rejection of claim 40.

CONCLUSION
Under § 102, the Examiner erred in rejecting claims 1-3 and 29-32 but
did not err in rejecting claims 4-16, 19-25, 27, and 28. Under § 103, the
Examiner erred in rejecting 26, 34-37, 39, and 40 but did not err in rejecting
claims 17, 18, 33, and 38.

ORDER
The Examiner’s decision rejecting claims 4-25, 27, 28, 33, and 38 is
affirmed.
The Examiner’s decision rejecting claims 1-3, 26, 29-32, 34-37, 39,
and 40 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)(1)(iv).

AFFIRMED-IN-PART

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