Ex Parte Rolleston et al

Patent Trial and Appeal Board

Sep 30, 2016

13239908 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/239,908 09/22/2011
75931 7590
Basch & Nickerson LLP
1751 Penfield Road
Penfield, NY 14526
10/04/2016
FIRST NAMED INVENTOR
RobertJ. Rolleston
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.
20090600-US-NP 1054
EXAMINER
TSENG, CHARLES
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
usptomail@bnpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. ROLLESTON, ALAN T. COTE,
NEIL R. SEMBOWER, STEVEN J. HARRINGTON,
PASCAL VALOBRA, AANANDNATARAJAN, and
MARESH NEGINHAL
Appeal2016-004170
Application 13/239,908
Technology Center 2600
Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4--12, 14--17, and 19-22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 This appeal is related to Appeal Nos. 2014-008330, 2014-008655, and
2015-001577 (Br. 4).
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Application 13/239,908
STATEMENT OF THE CASE
Appellants' invention is directed to a system and method "employing
3D models in virtual rendering of a print production piece" (Title
(capitalization altered)).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A print document production visualization system,
compnsmg:
a controller operatively associated with at least one
computer;
a print product definition;
a binder requirement specification, wherein the binder
requirement specification is defined by user interaction with at
least a menu provided by a graphical user interface, and where
the menu provides for selection of both the type of binding to
be applied and characteristics of the binding;
a base model repository including models where each
model has a collection of artifacts that are utilized to create a
description of the attributes of the selected binding, wherein the
selection of the type of binding is from one of the models in the
repository; and
a plurality of 3D binding elements and associated meta-
data managed by the controller, the controller transforming the
binding elements and associated meta-data, as specified by the
binder requirement specification, into a 3D binder display
model for inclusion in a transformation of the print product
definition into a print product display model displayed as a
virtual 3D rendering of the print product and binder by
rendering on a graphical user interface;
wherein the binder requirement specification for
transforming a 3D binding element is determined by the
controller, at least in part, as a function of the print product
definition.
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REFERENCES and REJECTIONS
The Examiner provisionally rejected claim 1 under non-statutory
double patenting over claims 1 and 2 of co-pending Application No.
13/239,932, Rolleston (US 2006/0114490 Al; June 1, 2006), Enloe (US
2007/0268513 Al; Nov. 22, 2007), and Mukouchi (US 6,104,403; Aug. 15,
2000).
The Examiner provisionally rejected claim 1 under non-statutory
double patenting over claims 1 and 2 of co-pending Application No.
13/239,946, Rolleston, Enloe, and Mukouchi.
The Examiner provisionally rejected claim 1 under non-statutory
double patenting over claim 1 of co-pending Application No. 13/239,988,
Rolleston, Enloe, and Mukouchi.
The Examiner provisionally rejected claim 1 under non-statutory
double patenting over claims 11 and 12 of co-pending Application No.
13/240,019, Rolleston, Enloe, and Mukouchi.
The Examiner rejected claim 1 under non-statutory double patenting
over claim 1 of co-pending Application No. 13/552,970 (now US Patent
9,105,116), Rolleston, Enloe, and Mukouchi.
The Examiner rejected claims 1, 4-12, 14-17, and 19-22 under
35 U.S.C. § 103(a) based upon the teachings ofRolleston, Enloe, and
Mukouchi.
ANALYSIS
Non-statutory Double Patenting Rejections
Appellants contend the rejections of claim 1 under non-statutory
double patenting over: claims 1 and 2 of co-pending Application No.
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13/239,932, Rolleston, Enloe, and Mukouchi; claims 1 and 2 of co-pending
Application No. 13/239,946, Rolleston, Enloe, and Mukouchi; claims 11 and
12 of co-pending Application No. 13/240,019, Rolleston, Enloe, and
Mukouchi; and claim 1 of Application No. 13/552,970 (now US Patent
9, 105, 116), Rolleston, Enloe, and Mukouchi, are not appropriate (Br. IO-
15).
Appellants' support for this contention, however, relies upon
Appellants' argument that the combination of Rolleston, Enloe, and
Mukouchi does not teach or suggest a binder requirement specification
defined by user interaction with a menu providing for selection of both a
type of binding to be applied and characteristics of the binding, a base model
repository including models, and a controller transforming binding elements
and associated meta-data, as required by claim 1 (Br. 10-15). As discussed
infra, with respect to the rejection of claim 1 under 35 U.S.C. § 103(a), we
are not persuaded by Appellants' arguments that Rolleston in combination
with Enloe and Mukouchi does not teach these limitations of claim 1.
Therefore, we sustain the Examiner's double-patenting rejections of claim 1
(see Final Act. 26-33, 38--45; Ans. 2---6, 8-12).2
2 We further note the Examiner states, although "the claim comparison has
only been performed for a set of representative claim(s) from each
application," the Examiner reserves the right to maintain the double
patenting rejections for "other sets of claims within each application that
mirror each other" (Final Act. 30, 33-34, 41, 46). We consider this
statement to be of no consequence, as the Examiner has only made the
rejection with respect to claim 1, and not claims 4--12, 14--17, or 19-22,
under non-statutory double patenting over claims of Application Nos.
13/239,932, 13/239,946, 13/240,019, or 13/552,970 (US Patent 9,105,116).
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The non-statutory double patenting rejection of claim 1 over
Application No. 13/239,988 (Final Act. 34--37) is moot in view of the
abandonment of that application. 3
35 U.S.C. § 103 Rejections
Claims 1, 4-5, 7, 11, 12, 15-17, 20, and 22
With respect to claim 1, Appellants contend Rolleston, Enloe, and
Mukouchi, alone or in combination, fail to teach a menu providing for
selection of both a type of binding to be applied and characteristics of the
binding (Br. 19). According to Appellants, claim 1 requires selection of a
binding type separate and distinct from the characteristics of that binding
type, however Rolleston does not disclose "selections for the particular
characteristics of the binding" (Br. 19).
Appellants' arguments are not persuasive, as Appellants assert
Rolleston lacks the teaching the Examiner relied on Enloe as disclosing.
Specifically, the Examiner relies on Enloe, not Rolleston, for teaching
selecting the characteristics of a binding, such as binding diameter size
(Final Act. 49 (citing Enloe Fig. 5; i-f 33)). Further, the Examiner relies on
Rolleston for teaching a menu for selecting a type of binding to be applied,
such as a stapled or spiral type binding (Final Act. 4 7--48 (citing Rolleston
Fig. 6; i-fi-121, 38, 55)). Appellants have not addressed the Examiner's
findings directed to Rolleston in combination with Enloe. Additionally, we
agree with the Examiner's findings that Rolleston's Figure 6 and Enloe's
Figure 5 teach a menu providing a selection of a type of binding to be
applied and characteristics of the binding, as required by claim 1 (Final Act.
47--49; Ans. 14--15).
3 Application No. 13/239,988 was abandoned on September 17, 2015.
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Appellants further contend Rolleston, Mukouchi, and Enloe do not
disclose a controller transforming the binding elements and associated meta-
data, as specified by the binder requirement specification, into a 3D binder
display model for inclusion in a transformation of the print product
definition into a print product display model displayed as a virtual 3D
rendering of the print product and binder by rendering on a graphical user
interface (Br. 19-21 (citing Rolleston i-fi-147--48, 55)).
The Examiner finds Rolleston's graphic models for spiral and stapled
binding teach binding elements and associated meta-data, as recited in claim
1 (Final Act. 47--48 (citing Rolleston Fig. 6; i-fi-121, 38, 55)). The Examiner
further finds a controller transforming binding elements and meta-data
recited in claim 1 is taught by Rolleston' s computer system, which converts
a print job's JDF data and binding into a 3D binder display model of a
spiral-bound book displayed as a virtual rendering on a graphical user
interface (Final Act. 48--49 (citing Rolleston Fig. 6; i-fi-147--48, 55)). We
agree. Appellants have not persuasively rebutted the Examiner's specific
findings by identifying specific errors; rather, Appellants merely state, "[ n Jo
such teaching is apparent in the identified paragraphs [of the references], nor
would one of ordinary skill in the art have understood the cited paragraph to
result in such a teaching," without explanation of error in the Examiner's
findings (Br. 21 ).
In light of the broad terms recited in claim 1 and the arguments
presented, Appellants have failed to clearly distinguish the claimed
invention over the prior art relied on by the Examiner. Therefore, we sustain
the Examiner's rejection of independent claim 1, independent claims 11 and
16 for which Appellants provide substantially the same arguments as those
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asserted for claim 1 (Br. 24--28, 29-31 ), and dependent claims 4, 5, 7, 12,
15, 17, 20, and 22 argued for their dependency on claims 1, 11, and 16 (Br.
24, 28, 31).
Claim 6
With respect to dependent claim 6, Appellants contend Enloe does not
teach multiple 3D binder display models (Br. 23-24). Appellants contend,
Enloe merely "suggests an adjustment in the size of a ring binder, which
does not result in a teaching of an additional 3D binding element model"
(Br. 24).
The Examiner finds Rolleston's Figure 6 together with Enloe's Figure
5 disclose multiple 3D binder display models for visualizing spiral and
stapled binders (Final Act. 52-53 (citing Rolleston Fig. 6; i-f 55; Enloe Fig. 5;
i-f 33); Ans. 17). We agree Rolleston in combination with Enloe teaches
multiple 3D binder display models, as recited in claim 6. Appellants have
not persuasively rebutted the Examiner's findings. Accordingly, we sustain
the Examiner's rejection of claim 6.
Claims 8-10
With respect to dependent claim 8, Appellants contend "Mukouchi is
directed to an assembly of parts, but does not ... result in the recited
teaching of a plurality of 3D binding elements and associated meta-data
being managed by the controller in a base model repository" (Br. 24).
The Examiner finds Rolleston's computer system manages a memory
storing 3D binding elements to visualize spiral and stapled binders, thereby
teaching a controller managing a repository of binding models, as recited in
claim 8 (Final Act. 53-54 (citing Rolleston Figs. 3 and 6; i-fi-1 46, 48, 55);
Ans. 18). The Examiner relies on Mukouchi for storing base models as
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basic elements from which a 3D object model is assembled (Final Act. 54
(citing Mukouchi Figs. 11 and 15; col. 2, 11. 21-53); Ans. 18). The
Examiner concludes it would have been obvious to store, in Rolleston's
repository, a base model representing a single staple or spiral loop to be
assembled with other staples or loops to virtually render a complete book
binder (Final Act. 50, 54; Ans. 18-19; see also Rolleston Abstract; i-f 50).
Appellants' arguments do not specifically address these findings or the
Examiner's rationale; rather, Appellants merely discuss Mukouchi alone and
not in combination with Rolleston. We concur with the Examiner's
reasonable findings and rationale, and therefore sustain the Examiner's
rejection of claim 8, and claims 9 and 10, dependent therefrom and not
argued separately (Br. 24).
Claim 14, 19, and 21
Appellants contend "the Examiner has not identified a particular
teaching of the [claim 14] limitation" of receiving values used to modify the
binder requirement specification in response to user gestures interacting with
the graphical user interface menu (Br. 28).
The Examiner finds, however, Rolleston and Enloe, in combination do
teach this limitation (citing Rolleston Fig. 6; i-fi-1 48, 55; Enloe Fig. 5; i-f 33);
Ans. 24--25). We agree. Rolleston modifies a binder selection (see
Rolleston Fig. 6) and Enloe modifies a binding size (see Enloe i-f 33) in
response to a user's manipulation of input devices (see Rolleston i-fi-1 48, 53;
Enloe i-fi-1 8, 33). This is commensurate with the broad description of "user
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gestures" in Appellants' Specification. 4 Appellants' arguments have not
addressed the Examiner's findings. Thus, we sustain the Examiner's
rejection of claim 14, and claim 21 for which Appellants provide
substantially the same arguments (Br. 32).
With respect to dependent claim 19, Appellants contend Figure 5 and
paragraph 33 of Enloe do not disclose "a 3D display model, let alone a
model that updates spatial relationships in response to user gestures" (Br.
31 ). The Examiner, however, relies on Rolleston as teaching a 3D display
model, and Enloe for updating spatial relationships (Final Act. 65---66 (citing
Rolleston Figs. 1 and 6; i-fi-f 10, 20-22; Enloe i133 (updating binding size
depending on the number of sheets in a document))). Appellants have not
addressed the Examiner's findings directed to Rolleston in combination with
Enloe. Accordingly, Appellants' arguments have not persuaded us of error
in the Examiner's rejection of claim 19, and we sustain the Examiner's
rejection of claim 19.
DECISION
The Examiner's decision provisionally rejecting claim 1 under non-
statutory double patenting over: claims 1 and 2 of co-pending Application
No. 13/239,932, Rolleston, Enloe, and Mukouchi; claims 1 and 2 of co-
pending Application No. 13/239,946, Rolleston, Enloe, and Mukouchi; and
claims 11 and 12 of co-pending Application No. 13/240,019, Rolleston,
Enloe, and Mukouchi, is affirmed.
4 Appellants' Specification describes "a keyboard ... and a mouse ... or
similar pointing device, or ... any device for capturing and communicating
user gestures of commands" (Spec. i1 71 (emphasis added)).
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The Examiner's decision rejecting claim 1 under non-statutory double
patenting over claim 1 of Application No. 13/552,970 (US Patent
9, 105, 116), Rolleston, Enloe, and Mukouchi, is affirmed.
The Examiner's decision rejecting claims 1, 4--12, 14--17, and 19-22
under 35 U.S.C. § 103(a) is affirmed.
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
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