Ex Parte Reichhart

Patent Trial and Appeal Board

Jun 7, 2017

12278652 (P.T.A.B. Jun. 7, 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.
12/278,652 08/07/2008 Dieter Reichhart 82949585 3506
22879
HP Tnr
7590 06/09/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
BECKLEY, JONATHAN R
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETER REICHHART
Appeal 2016-002423
Application 12/278,652
Technology Center 2600
Before CAROLYN D. THOMAS, ERIC B. CHEN, and
JON M. JURGOVAN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 8—26. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to selecting a format for a
section to be printed, in which at least one signature, is placed on the section
to be printed. See Abstract.
Appeal 2016-002423
Application 12/278,652
Claim 8 is illustrative:
8. A method for producing a print product including
selecting a print section format for a section to be printed having at
least one signature, the steps comprising:
selecting, by a processor, a print section layout that
divides the section to be printed in a running direction and in a
transversal direction into adjacent units;
assigning at least one signature which includes pages in a
page format of the print product to a unit of the adjacent units;
determining border regions outside of the at least one
signature, longitudinal dimensions in a running direction of the at
least one signature, and transversal dimensions in a transversal
direction of the at least one signature, wherein at least one of the
border regions adjoins an adjacent border region for an adjacent page;
calculating a minimum longitudinal dimension from the
sums of the longitudinal dimensions and the border regions adjoining
in the running direction;
calculating a minimum transversal dimension from the
sums of the transversal dimensions and the border regions adjoining in
the transversal direction, and selecting the print section format so that
a longitudinal dimension of the print section format is at least equal to
the minimum longitudinal dimension and a transversal dimension of
the print section format is at least equal to the minimum transversal
dimension; and
imprinting the section to be printed;
collating the at least one signature for the imprinted
section; and
cutting the imprinted and collated section into page
format to form the print product.
Appellant appeals the following rejections:
R1: Claims 8—26 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Goel (US 7,177,045 B2, Feb. 13, 2007); and
R2: Claim 26 is rejected under 35 U.S.C. § 102(b) as being
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Appeal 2016-002423
Application 12/278,652
anticipated by Sano (US 7,777,901 B2, Aug. 17, 2010) (Final Act. 13)1.
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
ANALYSIS
Claims 8, 17, 26
Issue: Did the Examiner err in finding that Goel discloses border
regions, as set forth in claim 8?
Appellant contends that “the Examiner fails to address how [the cited]
aspects of Goel teach or suggest ‘determining border regions outside of the
at least one signature,’ and further ‘wherein at least one of the border regions
adjoins an adjacent border region for an adjacent page’ ... at most. . . Goel
appear to describe different types of imposition settings and gutter size
specification” (App. Br. 12). Appellant further contends that “[w]ith respect
to ‘Screen #2’ of Figure 5, Goel appears to describe various options for trim
marks and fold marks. ... At most, these sections of Goel appear to
describe various types of impositions attributes . . . none of these aspect of
Goel include . . . border regions outside of the at least one signature” (App.
Br. 13-14).
The Examiner finds that “[t]he border regions are understood as any
area or space outside the live area (print content)” (Ans. 19). We agree with
the Examiner.
1 Although the rejection heading notes that claim 26 is rejected by Goel, we
shall treat this as harmless error and as a typographical error because the
body of the rejection refers to Sano, not Goel, and Appellant appears to
understand the basis of the rejection (see App. Br. 2).
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Appeal 2016-002423
Application 12/278,652
Although Appellant appears to emphasize, by merely underlining
claim language, that Goel does not teach border regions outside of the at
least one signature (see App. Br. 12), Appellant fails to provide substantive
arguments specifically distinguishing the claimed “border regions” from
Goel’s trim areas/gutters and rebut the Examiner’s conclusion that it is
understood that the placement of the gutter is outside the print content.
For example, Appellant’s Specification states that “[t]he border areas
outside of the pages ... are used at least partially for binding at one edge of
each page; the others are separated in the context of the production of the
print product as ‘cutoff areas’” (17; see also 18). In other words, the
claimed “border areas” appear to be synonymous with “cutoff areas.”
Goel discloses in Figure 5 buttons for defining printer’s marks 31 and
“[b]y selecting the printer’s marks button 31, the user is granted access to
screen #2 (36) through which the user is able to set properties for trim marks
and fold marks” (6:7—16). Appellant fails to explain why Goel’s “trim
marks” are distinguishable from the claimed “border areas” given the
aforementioned consistent description in their Specification. Instead,
Appellant broadly argues that Goel at most teaches imposition settings
without providing any meaningful analysis that explains why the Examiner
erred in mapping this feature to Goel’s Fig. 5 and teachings contained
therein, i.e., at least the trim marks. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”).
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Appeal 2016-002423
Application 12/278,652
Similarly, Appellant further contends that “Goel clearly does not teach
or suggest. . . ‘calculation of] a minimum longitudinal dimension from the
sums of the longitudinal dimensions and the border regions adjoining in the
running direction” (App. Br. 15). Appellant largely premise this conclusory
argument on their above noted contention that Goel does not teach “border
areas,” which we find unpersuasive. Therefore, we similarly find this
contention unavailing.
Accordingly, we sustain the Examiner’s rejection of claim 8.
Appellant’s arguments regarding the Examiner’s rejection of independent
claims 17 and 26 rely on the same arguments as for claim 8, and Appellant
do not argue separate patentability for the dependent claims 9, 12—16, 18,
and 21—25. We therefore also sustain the Examiner’s rejection of claims 9,
12-18, and 21-26.
Claims 10 and 19
Appellant contends that “at most, Goel appears to describe setting of
properties for trim marks and fold marks. . . . Goel do not teach or suggest
that the setting of the trim marks and fold marks provides for the trim marks
to be disposed in any type of border region adjoining an edge of a signature .
. . so that it overlaps in a cutoff area on the signature” (App. Br. 19).
The Examiner finds that in Goel “the marks placement and size are
determined, wherein the marks are outside of the ImageAble sheet or outside
the active area as illustrated in Figures 2 and 3” (Ans. 24—25). We agree
with the Examiner.
Although Appellant contends that Goel does not teach disposing trim
marks in a border region adjoining an edge of a signature (see App. Br. 19),
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Appeal 2016-002423
Application 12/278,652
we highlight that claim 10 does not recite trim marks in a border region . . .
but rather broadly recites a printing element is disposed in a border region
(see claim 10). Thus, Appellant’s contention is not commensurate with the
scope of claim 10.
In any case, Appellant fails to explain why Goel’s “[bjuttons for
defining printer’s marks 31 and bleeds 32” (see 6:11—12) doesn’t disclose
such a placement criteria for the trim marks, as proffered by the Examiner.
For example, Goel discloses that “[a] text box 35 allows values to be entered
specifying horizontal and vertical offsets” (6:17—18) and “when the user
enters data in one field, values for the other fields are automatically
calculated, based on the entered value” (6:44-46). In other words, Goel’s
user can set trim marks, i.e., border areas, which automatically triggers the
setting of fold marks, i.e., the signature. The Examiner reasoned, and we
agree, that one of ordinary skill in the art would recognize that such trim
marks are necessarily outside the image area and signature. Appellant fails
to specifically address the Examiner’s fmdings/conclusion.
Thus, we find unavailing Appellant’s contention that Goel fails to
disclose a printing element is disposed in a border region adjoining an edge
of the at least one signature, as set forth in claim 10, and similarly recited in
claim 19. Accordingly, we sustain the Examiner’s rejection of claims 10
and 19.
Claims 11 and 20
Appellant contends that “Goel do[es] not teach or suggest that the
gutter is disposed in any type of border region adjoining an edge of the
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Application 12/278,652
signature ... so the gutter overlaps onto a page on the signature” (App. Br.
21).
The Examiner finds that “Goel does teach specifying the gutter size
. . . also known as an inner margin closest to the binding edge. . . . the gutter
is disposed in a border region adjoining an edge of the at least one signature”
(Ans. 25). We agree with the Examiner.
For example, Goel discloses that “[t]he user can also specify gutter
size by entering a value in its vertical gutter size field 26 or its horizontal
gutter size field 27. It is also possible to specify a negative gutter value, for
example, to join together two pages located in adjacent slots” (9:4—8). Goel
further discloses that “when the user enters data in one field, values for the
other two fields are automatically calculated, based on the entered value”
(6:44-46). Appellant fails to explain why Goel’s setting of the gutter size
doesn’t automatically dispose the gutter in a border region adjoining an edge
of at least one signature, i.e. folding area, as proffered by the Examiner.
Appellant merely emphasize certain claim language by underlining the
same, without providing any substantive arguments to explain why the
Examiner has erred.
Thus, we find unavailing Appellant’s contention that Goel fails to
disclose a non-printing element is disposed in a border region, as set forth in
claim 11. Accordingly, we sustain the Examiner’s rejection of claims 11
and 20.
DECISION
We affirm the Examiner’s § 102(e) rejections R1 and R2.
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Application 12/278,652
Our affirmance is dispositive as to all claims on appeal. It is not
necessary, therefore, to address the other grounds of rejection entered by the
Examiner. See In re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012)
(Affirmance of rejection of all claims under § 103(a) made it unnecessary to
reach other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (Having decided a single dispositive issue, the ITC
was not required to review other matters decided by the presiding officer).
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
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