Ex Parte Rolleston et alDownload PDFPatent Trial and Appeal BoardSep 30, 201613239932 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/239,932 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. 20090679-US-NP 7701 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, andAANANDNATARAJAN Appeal2014-008655 Application 13/239,932 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 1-17 and 19-22.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 This appeal is related to Appeal Nos. 2014-008330, 2015-001577, and 2016-004170. 2 Claim 18 was canceled by an amendment after final filed Feb. 5, 2014, which was entered by the Examiner (Adv. Act. 1 ). Appeal2014-008655 Application 13/239,932 STATEMENT OF THE CASE Appellants' invention is directed to a system and method "employing texture to simulate binding elements 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; and a plurality of binding elements and associated meta-data managed by the controller, the controller configured to transform the binding elements and associated meta-data as specified by the binder requirement specification into a 2D binder display model characterizing at least a surface texture for inclusion in the transformation of the print product definition into a print product display model that can be displayed as a virtual rendering on a graphical user interface. REFERENCES and REJECTIONS3,4 The Examiner provisionally rejected claim 1 under non-statutory double patenting over claim 1 of co-pending Application No. 13/239,908, Sato (US 2007/0240042 Al; Oct. 11, 2007), and Sauer (US 2008/0037066 Al; Feb. 14, 2008). 3 Claim 11 is objected to because of informalities (see Final Act. 29). Claim objections are petitionable, not appealable, matters and generally are not within the jurisdiction of the Board. See MPEP § § 1002 and 1201. 4 The Examiner withdrew the indefiniteness rejection of claim 21 in the Advisory Action dated Feb. 13, 2014. 2 Appeal2014-008655 Application 13/239,932 The Examiner provisionally rejected claim 1 under non-statutory double patenting over claims 1 and 7 of co-pending Application No. 13/239,946 and Sauer. The Examiner provisionally rejected claim 1 under non-statutory double patenting over claims 19 and 20 of co-pending Application No. 13/239,960 and Sauer. The Examiner provisionally rejected claim 1 under non-statutory double patenting over claim 1 of co-pending Application No. 13/239,988, Sato, and Sauer. The Examiner provisionally rejected claim 1 under non-statutory double patenting over claim 11 of co-pending Application No. 13/240,019, Sato, and Sauer. 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), Sato, and Sauer. The Examiner rejected claims 1-17 and 19-22 under 35 U.S.C. § 103(a) based upon the teachings ofRolleston (US 2006/0114490 Al; June 1, 2006), Sato, and Sauer. ANALYSIS Non-statutory Double Patenting Rejections Appellants contend the rejections of claim 1 under non-statutory double patenting over claims 1 and 7 of co-pending Application No. 13/239,946 and Sauer, and over claim 11 of co-pending Application No. 13/240,019, Sato, and Sauer are not appropriate (App. Br. 9-11, 16-19). Appellants' support for this contention, however, relies upon Appellants' 3 Appeal2014-008655 Application 13/239,932 argument that Sato and Sauer do not teach or suggest a 2D binder display model characterizing at least a surface texture, as recited in claim 1 (App. Br. 9-11, 16-19). As discussed infra, with respect to the rejection of claim 1under35 U.S.C. § 103(a), we are not persuaded by Appellants' arguments that Sato and Sauer do not teach these limitations of claim 1. Therefore, we sustain the Examiner's double-patenting rejections of claim 1 (see Ans. 3--4, 7-8). 5 We do not reach a conclusion regarding the Examiner's rejections of claim 1 on the ground of non-statutory double patenting over claim 1 of co- pending Application No. 13/239,908 in combination with Sato and Sauer, and over claim 1 of Application No. 13/552,970 (now US Patent 9,105,116) in combination with Sato and Sauer, as the claims relied upon in the rejections-amended on May 27, 2014 (for Application No. 13/239,908) and July 21, 2014 (for Application No. 13/552,970}-are not the same as the claims originally considered by the Examiner when the double patenting rejections were asserted. 6 Should there be further prosecution of independent claim 1 of the present application, the Examiner may wish to 5 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 rejection for "other sets of claims within each application that mirror each other" (Final Act. 20, 27). 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 2-17 or 19-22, of the present application under non- statutory double patenting over claims of Application Nos. 13/239,946 or 13/240,019. 6 We also note the double patenting rejection based on Application No. 13/239,908 in the Examiner's Answer does not reflect the 13/239,908 amendments. 4 Appeal2014-008655 Application 13/239,932 reconsider the double patenting rejection of claim 1 in view of the amended claims in Application No. 13/239,908 and issued claims of US Patent 9,105,116. Finally, the non-statutory double patenting rejections of claim 1 over Application Nos. 13/239,960 (Final Act. 20-22) and 13/239,988 (Final Act. 22-24) are moot in view of the abandonment of these applications.7 35 U.S.C. § 103 Rejections Claims 1-3, 6, 7, 12-17, and 19-22 With respect to claim 1, Appellants contend Rolleston does not disclose a controller configured to transform binding elements and associated meta-data as specified by a binder requirement specification, for inclusion in a transformation of the print product definition into a print product display model (App. Br. 25, 27). The Examiner finds Rolleston specifies parameters that control virtual rendering of bound documents, thereby teaching a binder requirement specification as claimed (Final 1A .. ct. 31 (citing Rolleston i-fi-122, 47, 50); Ans. 10). The Examiner finds Rolleston's selection and placement of binding in a virtual rendering teaches binding elements and their properties/meta-data, as required by claim 1 (Final Act. 31-32 (citing Rolleston Fig. 6; i-fi-120-22, 47- 48, 50, 55)). The Examiner additionally finds a controller transforming binding elements and meta-data into data for inclusion in transforming a print product definition into a print product display model, as recited in claim 1, is taught by Rolleston's computer system that converts a document's JDF data and selected binding into a virtual rendering for 7 Application No. 13/239,960 was abandoned on August 25, 2014, and Application No. 13/239,988 was abandoned on September 17, 2015. 5 Appeal2014-008655 Application 13/239,932 display on a user interface (Final Act. 32 (citing Rolleston Fig. 6; iii! 47--48, 55); Ans. 10). We agree. Appellants have not persuasively rebutted the Examiner's specific findings by identifying specific errors; rather, Appellants' arguments merely state that "it remains unclear just what the Examiner relies upon in suggesting that Rolleston does teach [the controller]," without explanation of error in the Examiner's findings (App. Br. 26-27). Appellants further contend the portions of Rolleston cited by the Examiner teach conflicts detected by a validation model, not a controller transforming binding elements into a 2D binder display model characterizing at least a surface texture, as recited in claim 1 (App. Br. 26 (citing Rolleston Fig. 6; if 55)). The Examiner, however, relies on Rolleston as teaching a controller transforming binding elements, Sato as teaching a 2D binder display model, and Sauer as teaching a surface texture for virtual rendering (Final Act. 32-34 (citing Sato Fig. 2; iii! 2, 30, 41--43, 53; Sauer Fig. 4; iii! 2, 19-20, 23-24); Ans. 10-11). With respect to Sato, Appellants contend, "although Sato does disclose the use of 3D and 2D previews depending upon whether a document overview is provided or specific pages are being viewed (e.g., para. 0053) there is no teaching of a 2D binder display model" as recited in claim 1 (App. Br. 27). We agree with the Examiner, however, that Sato's 2- dimensional preview document data representing a stapled page teaches a 2D binder display model for a staple (Final Act. 32-33 (citing Sato Fig. 2; 6 Appeal2014-008655 Application 13/239,932 if 53)). This is commensurate with the description of "2D binder display model" in Appellants' Specification. 8 With respect to Sauer-which the Examiner relies on as teaching a surface texture for virtual rendering-Appellants acknowledge "Sauer discloses rasterized texture maps" but contend "there is no disclosure of the use of such maps relative to or with a 2D binder display model" (App. Br. 28). Appellants have not addressed the Examiner's findings directed to Sauer in combination with Sato, which teaches the 2D binder display model (Final Act. 32-33 (citing Sato Fig. 2; iii! 30, 41--43, 53)). Additionally, we agree with the Examiner Sauer's staple binding-"rasterized to a texture map" for virtually rendering a page---characterizes a surface texture, as required by claim 1 (see Sauer iii! 23-24; Final Act. 33-34). This is commensurate with the broad description of "surface texture" in Appellants' Specification. 9 8 Appellants' Specification provides "a virtual representation of a ring- bound document may also employ a 2D binder display model to represent at least a portion of the ring binder requirement (e.g., the hole through which a ring of said ring binder would pass) as a 2D rendering" (Spec. if 146 (emphasis added)). Additionally, Appellants' "FIG. 46 illustrat[ing] a 2D model for representing staples" (Spec. if 61 (emphasis added), Fig. 46) is similar to Sato' s Figure 2 representing staples. 9 Appellants' Specification provides "staples and similar low-profile or surface binding types ... may also be represented as 2D images which approximate in appearance the 3D objects (e.g., pages) which they are displayed as binding. The system and methods described also use 2D images as surface textures on the front and back of 3D objects ... presenting a pseudo-realistic rendering of . .. staples ... in pages" (Spec. iii! 202-203 (emphasis added)). 7 Appeal2014-008655 Application 13/239,932 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. Appellants contend the rejection of independent claims 13 and 22 is in error for at least the same reasons as claim 1, providing substantially the same arguments as those asserted for claim 1 (App. Br. 28-32). Thus, for the same reasons as claim 1, we sustain the rejection of independent claims 13 and 22, and dependent claims 2, 3, 6, 7, 12, 14--17, and 19-21 for which no separate arguments are provided (App. Br. 33). Claims 4 and 5 With respect to dependent claim 4, the Examiner finds Sato' s 2- dimensional preview document data for a stapled page teaches a 2D binder display model representing a binder requirement in combination with Sauer's binding/finishing rasterized to texture map that is applied to a 3D page object, teach a 2D texture associated with a 3D surface of a print product, as recited in claim 4 (Final Act. 35 (citing Sato i-fi-130, 53; Sauer i-fi-f 19-20, 23-24 (''finishing (such as staples) ... are rasterized to a texture map ... [and] rasterized texture maps are applied to a three-dimensional page object" (emphasis added))); Ans. 14--15). Appellants contend "there is no teaching in Sato or Sauer, alone or in combination with Rolleston, of a 2D binder display model," and one of ordinary skill in the art would not "have understood the disclosure of Sauer relative to the application of rasterized texture maps to three-dimensional page objects ... as characterizing at least a surface texture" (App. Br. 32- 8 Appeal2014-008655 Application 13/239,932 33). Appellants' arguments have not addressed the Examiner's specific findings regarding Sato and Sauer. Accordingly, Appellants' arguments have not persuaded us of error in the Examiner's rejection of dependent claim 4. We therefore sustain the Examiner's rejection of claim 4, and dependent claim 5, for which no separate arguments are provided (App. Br. 33). Claim 8 With respect to dependent claim 8, Appellants contend "the rejection fails to establish where Rolleston, alone or in combination with Sato and Sauer, teaches the 2D binding elements and associated meta-data are managed by the controller in a model repository" (App. Br. 33). We do not agree. The Examiner has cited evidence that Appellants do not address. Specifically, the Examiner finds Sato and Sauer teach 2D binding elements, as discussed supra with respect to independent claim 1 (Final Act. 32-33; see Sato Fig. 2; Sauer Fig. 4). The Examiner also finds Rolleston's computer system manages a memory storing binding elements and meta-data for rendering bound documents, thereby teaching a controller managing a model repository of binding elements, as recited in claim 8 (Final Act. 37-38 (citing Rolleston Figs. 3 and 6; i-fi-146, 48, 55); Ans. 16). We agree with the Examiner's reasonable findings. As Appellants have not addressed the Examiner's findings directed to the combination of Rolleston with Sato and Sauer, Appellants' arguments do not persuade us the Examiner erred in finding the combination of references teaches or suggests 2D binding elements and associated meta-data being managed by a controller in a model repository as recited in claim 8. Accordingly, we sustain the Examiner's rejection of claim 8. 9 Appeal2014-008655 Application 13/239,932 Claim 9-11 With respect to dependent claim 9, Appellants contend Rolleston does not disclose architecture layers, and "the rejection fails to establish how or why one of skill in the art would have understood the teachings alleged by the Examiner to result in a disclosure of the particular layers, models and transformations as expressly set forth in [the] claim" (App. Br. 33). Appellants' arguments do not address the Examiner's findings that Rolleston's software modules are architecture layers that "conver[t] ... the JDF data to suitable objects for virtual rendering on a workstation" (see Rolleston i-f 48), thereby transforming a physical model of a print job and binding into a display model, as recited in claim 9 (Final Act. 38-39 (citing Rolleston Figs. 1, 3, and 6; i-fi-110, 20-22, 46, 48, 55); Ans. 17). We agree with the Examiner's reasonable findings. Rolleston's JDF print job is commensurate with the broad description of "physical model" in Appellants' Specification (see Spec. i-f 7 6). Appellants' arguments have not addressed the Examiner's findings, therefore we sustain the Examiner's rejection of claim 9, and dependent claims 10 and 11, for which no separate arguments are provided (App. Br. 33). DECISION The Examiner's decision provisionally rejecting claim 1 under non- statutory double patenting over claims 1 and 7 of co-pending Application No. 13/239,946 and Sauer, and over claim 11 of co-pending Application No. 13/240,019, Sato, and Sauer, is affirmed. 10 Appeal2014-008655 Application 13/239,932 We do not reach the rejections of claim 1 under non-statutory double patenting over claim 1 of co-pending Application No. 13/239,908, Sato, and Sauer, and over claim 1 of Application No. 13/552,970 (US Patent 9,105,116), Sato, and Sauer. The Examiner's decision rejecting claims 1-17 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 11 Copy with citationCopy as parenthetical citation