Ex Parte Rolleston et alDownload PDFPatent Trial and Appeal BoardSep 30, 201613239946 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/239,946 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. 20091255-US-NP 4977 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, AANAND NATARAJAN, and MARESH NEGINHAL Appeal2014-008330 Application 13/239,946 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 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 This appeal is related to Appeal Nos. 2014-008655, 2015-001577, and 2016-004170. Appeal2014-008330 Application 13/239,946 STATEMENT OF THE CASE Appellants' invention is directed to a system and method "employing segmented models of 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 repository in memory accessible by the controller, the repository storing a basic 3D binding element as a partial model for each type of binding along with associated meta-data managed by the controller; the controller transforming the 3D binding elements and associated meta-data, in accordance with the binder requirement specification, into one of a plurality of 3D binder display models 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 associated binder by rendering on a graphical user interface. REFERENCES and REJECTIONS The Examiner provisionally rejected claim 1 under non-statutory double patenting over claim 1 of co-pending Application No. 13/239,908, Rolleston (US 2006/0114490 Al; June 1, 2006), and Mukouchi (US 6,104,403; Aug. 15, 2000). The Examiner provisionally rejected claim 1 under non-statutory double patenting over claim 1 of co-pending Application No. 13/239,932, Rolleston, and Mukouchi. 2 Appeal2014-008330 Application 13/239,946 The Examiner provisionally rejected claim 1 under non-statutory double patenting over claim 19 of co-pending Application No. 13/239,960, Rolleston, 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, and Mukouchi. The Examiner provisionally rejected claim 1 under non-statutory double patenting over claim 11 of co-pending Application No. 13/240,019, Rolleston, and Mukouchi. The Examiner rejected claim 1 under non-statutory double patenting over claim 1 of co-pending Application No. 13/552,970 (now U.S. Patent 9, 105, 116), Rolleston, and Mukouchi. The Examiner rejected claims 1---6, 8-14, 16, and 19-22 under 35 U.S.C. § 103(a) based upon the teachings of Rolleston, Enloe (US 2007/0268513 Al; Nov. 22, 2007), and Mukouchi. The Examiner rejected claims 7, 15, and 25 under 35 U.S.C. § 103(a) based upon the teachings of Rolleston, Enloe, Mukouchi, Sato (US 2007 /0240042 Al; Oct. 11, 2007), and Sauer (US 2008/0037066 Al; Feb. 14, 2008). The Examiner rejected claims 17, 18, 23, and 24 under 35 U.S.C. § 103(a) based upon the teachings ofRolleston, Enloe, Mukouchi, Crudo (US 6,773,216 B2; Aug. 10, 2004), and Tonkin (US 6,134,568; Oct. 17, 2000). 3 Appeal2014-008330 Application 13/239,946 ANALYSIS Non-statutory Double Patenting Rejections Appellants contend the rejections of claim 1 under non-statutory double patenting over claim 1 of co-pending Application No. 13/239,932, Rolleston and Mukouchi, and claim 11 of co-pending Application No. 13/240,019, Rolleston and Mukouchi are not appropriate (App. Br. 8-11, 15-17). Appellants' support for this contention, however, relies upon Appellants' argument that the combination of Rolleston and Mukouchi does not teach or suggest a repository in memory storing a basic 3D binding element as a partial model for each type of binding, and a controller transforming 3D binding elements, as recited in claim 1 (App. Br. 9-11, 15- 17). 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 Mukouchi does not teach these claim 1 limitations. Therefore, we sustain the Examiner's double-patenting rejections of claim 1 (see Ans. 3-5, 7-8).2 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, Rolleston and Mukouchi, and claim 1 of Application No. 13/552,970 (now US Patent 9,105,116), Rolleston and 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 rejection for "other sets of claims within each application that mirror each other" (Final Act. 29, 37). 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 2-25, under non-statutory double patenting over claims in Application Nos. 13/239,932 or 13/240,019. 4 Appeal2014-008330 Application 13/239,946 Mukouchi, 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. Should there be further prosecution of independent claim 1 of the present application, the Examiner may wish to reconsider the double patenting rejections of claim 1 in view of the amended claims in Application No. 13/239,908 and issued claims of US Patent 9,105,116. The non-statutory double patenting rejections of claim 1 over Application Nos. 13/239,960 (Final Act. 29-31) and 13/239,988 (Final Act. 32-34) are moot in view of the abandonment of those applications. 3 35 U.S.C. § 103 Rejections Claims 1, 2, 5, 8-14, and 19-22 With respect to claim 1, Appellants contend Rolleston, Enloe, and Mukouchi all fail to teach a repository in memory storing a basic 3D binding element as a partial model for each type of binding along with associated meta-data, as recited in claim 1 (App. Br. 23; Reply Br. 7). According to Appellants, Rolleston merely discloses conflicts detected by a validation model but not a basic 3D binding element as a partial model for each type of binding, and Mukouchi merely teaches "a model for a complete part, not a partial part" (App. Br. 23-25 (citing Rolleston i-f 55; Mukouchi col. 2, 11. 21- 53); Reply Br. 7). We do not find Appellants' arguments persuasive because Appellants individually attack the references whereas the rejection is based on a 3 Application No. 13/239,960 was abandoned on August 25, 2014, and Application No. 13/239,988 was abandoned on September 17, 2015. 5 Appeal2014-008330 Application 13/239,946 combination of Rolleston and Mukouchi. See Jn re Keller, 642 F.2d 413, 426 (CCP A 1981 ). Specifically, the Examiner relies on Rolleston for a repository in memory storing a 3D binding element for each type of binding including spiral and stapled binding (Final Act. 41 (citing Rolleston Figs. 2, 3 and 6, i-fi-120-22, 46-48, 55)). The Examiner relies on Mukouchi for storing a basic element as a partial model from which a 3D object model is assembled as a combination of partial models (Final Act. 43 (citing Mukouchi Figs. 11and15; col. 1, 11. 10-22; col. 2, 11. 21-53)). The Examiner concludes it would have been obvious to store a basic 3D binding element as a partial model representing a single staple or spiral loop in Rolleston, for assembly with other staples and/or loops to generate a staple or spiral binder model for accurate 3D rendering (Final Act. 43--44; Ans. 12; see also Rolleston Abstract). We agree with the Examiner's reasonable findings. Rolleston's Figure 6 discloses book finishing models for spiral or stapled bindings for 3D rendering on a screen (see Rolleston Fig. 6, Abstract); Mukouchi is similarly concerned with 3D object rendering on a screen, using partial models of the object (see Mukouchi Fig. 15; Abstract; col. 2, 11. 40--42 and 11. 52-53). Appellants' argument that Mukouchi' s part model "refer[ s] to a model for a complete part" in contrast to Appellants' partial model-which "represent[ s] a piece or portion of a binding" such that "partial models of a binding element would need to be combined to produce a complete binding"- is not commensurate with the scope of claim 1 (App. Br. 23-24). The claim does not recite a complete binding or a piece of binding. The claim also does not recite that a partial model cannot produce a complete binding. Additionally, Appellants' Specification does not provide an 6 Appeal2014-008330 Application 13/239,946 explicit and exclusive definition of the claimed term "partial model," it merely provides discussion of non-limiting examples of the term (see Spec. i-fi-f 124, 127 (discussing "replication of model segments ... in order to provide a rendering of the binding over the desired length")). Thus, we agree with the Examiner Mukouchi' s part model-which "must be assembled with other part models to generate a complete model"-is a partial model as recited in claim 1 (Ans. 12). Appellants further contend Rolleston, Mukouchi, and Enloe do not disclose transforming the 3D binding elements and associated meta-data, in accordance with the binder requirement specification, into one of a plurality of 3D binder display models, as recited in claim 1 (App. Br. 22, 25). Appellants' arguments, however, do not address the Examiner's specific findings that Rolleston's JDF data conversion to 3D virtual rendering transforms 3D binding elements and associated meta-data into a 3D binder display model of a book, as shown in Figure 6 (Final Act. 42 (citing Rolleston Fig. 6, i-fi-147--48, 55)). We agree with the Examiner's reasonable findings. 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 8 and 19 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. 26-28; Reply Br. 7). Thus, for the same reasons as claim 1, we sustain the rejection of 7 Appeal2014-008330 Application 13/239,946 independent claims 8 and 19, and dependent claims 2, 5, 9-14, and 20-22 for which no separate arguments are provided (App. Br. 29). Claims 3 and 4 With respect to dependent claim 3, Appellants contend the Final Action fails to provide evidence of multiple binding types (App. Br. 28; Reply Br. 8). We do not agree. The Examiner has cited evidence that Appellants do not address. Specifically, the Examiner finds Figure 6 of Rolleston and Figure 5 of Enloe disclose 3D binder display models for multiple binding types of spiral and stapled binding (Final Act. 44--45 (citing Rolleston Fig. 6, i-f 55; Enloe Fig. 5; i-f 33)). We agree with the Examiner's reasonable findings. As Appellants' arguments have not addressed the Examiner's findings, we sustain the Examiner's rejection of claim 3, and dependent claim 4 for which no separate arguments are provided (App. Br. 29). Claim 6 With respect to dependent claim 6, Appellants contend Rolleston does not disclose architecture layers including a physical model layer transforming a physical model into a display model and retrieving 3D binding elements from a model repository, as required by the claim (App. Br. 28-29; Reply Br. 8-9). The Examiner finds Rolleston discloses architecture layers as software modules that transform a physical model of a print job into a display model rendering a bound document in 3D (Final Act. 46-47 (citing Rolleston Figs. 1, 3, and 6; i-fi-110, 20-22, 33, 46, 48, 55)). Appellants' arguments have not addressed these specific findings by the Examiner. Additionally, we agree with the Examiner that Rolleston's "conversion of the JDF data to suitable 8 Appeal2014-008330 Application 13/239,946 objects for virtual rendering on a workstation" transforms a physical model into a display model as recited in claim 6 (see Rolleston i-f 48; Final Act. 46- 47; Ans. 17). Rolleston's JDF print job is commensurate with the broad description of "physical model" in Appellants' Specification (see Spec. i-fi-176, 99). Accordingly, we sustain the Examiner's rejection of claim 6. Claim 7 With respect to dependent claim 7, the Examiner finds Sato teaches a 2D binder display model representing a binder requirement portion as a 2D rendering, and Sauer teaches a 2D rendering associated with a 3D surface of a print product, as required by the claim (Final Act. 56-58 (citing Sato Fig. 2; i-fi-12, 30, 41--43, 53; Sauer Fig. 4; i-fi-12, 19-20, 23-24)). Appellants contend, Sato teaches away from a 2D binder display model to represent at least a portion of the binder requirement as a 2D rendering associated with a 3D surface of the print product ... because Sato teaches separate views and not a combination of a 2D rendering associated with a 3D surface of the print product. App. Br. 31. We do not find Appellants' arguments persuasive as they do not identify sufficient evidence of Sato criticizing, discrediting, or discouraging a 2D binder display model representing a binder requirement portion as a 2D rendering as set forth by the Examiner (Final Act. 56-58; Ans. 19-21; see In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004)). Appellants' arguments also do not address the Examiner's specific findings that Sauer discloses the claimed 2D rendering associated with a 3D surface of a print product (Final Act. 57-58). Appellants merely state, "one of ordinary skill in the art could not have understood the disclosure of Sauer relative to the application of rasterized texture maps to three-dimensional 9 Appeal2014-008330 Application 13/239,946 page objects ... as characterizing a 2D binder element for display in a 3D surface of the print product," without persuasive evidence or reasoning as to why this would be the case (App. Br. 30). Accordingly, Appellants' arguments have not persuaded us of error in the Examiner's rejection of claim 7, and we sustain the Examiner's rejection of dependent claim 7. Claim 15 and 25 With respect to dependent claim 15, Appellants contend "[t]he rejection makes no specific reference to where such disclosure [of claim 15] is found, nor what one of ordinary skill in the art would have been motivated to do" (App. Br. 31 ). Appellants' arguments, again, do not address the Examiner's specific findings that Sauer defines hole locations for 3D display of bound pages, and Rolleston discloses a 3D binder display model including holes for spiral binding (Final Act. 58-59 (citing Sauer Fig. 4, i-f 27; Rolleston Fig. 6, i-f 55); Ans. 22). We agree with the Examiner's reasonable findings, and sustain the Examiner's rejection of claim 15, and claim 25 for which Appellants provide substantially the same arguments (App. Br. 31 ). Claim 16-18 With respect to dependent claim 16, Appellants contend Enloe, alone or in combination with Rolleston, does not teach a binding model having a variable size element (App. Br. 29; Reply Br. 9). The Examiner finds Enloe allows specifying new values to modify the diameter of a variable size binding element visualized on a screen before printing (Final Act. 53 (citing Enloe Fig. 5, i-f 33); Ans. 18). The Examiner concludes it would have been obvious to modify Rolleston's binding model 10 Appeal2014-008330 Application 13/239,946 to accommodate Enloe's variable size binding element to avoid printing conflicts-a concern shared by Rolleston and Enloe (Ans. 18; Final Act. 53). Appellants' contentions, without more, do not persuasively rebut the Examiner's reasonable findings by identifying specific errors. Accordingly, we sustain the Examiner's rejection of claim 16. With respect to claim 17, which depends from claim 16, Appellants assert Crudo lacks the teaching the Examiner relied on Rolleston as disclosing, and asserts Crudo and Tonkin lack the teaching the Examiner relied on Enloe as disclosing. Specifically, Appellants contend "it is not apparent how one of skill in the art would have understood Crudo to result in the disclosure of aspects of a document visualization method'' (App. Br. 32 (emphasis added)). The Examiner, however, relies on Rolleston, not Crudo, as teaching a document production visualization method recited in claim 8, from which claim 17 ultimately depends (Final Act. 4 7 (citing Rolleston Fig. 6; i-f 55)). Appellants also contend "the rejection fails to indicate where Crudo or Tonkin teach all of the limitations set forth in claim 17 (e.g., length and diameter)" (App. Br. 32 (emphasis added)). The Examiner, however, relies on Enloe, not Crudo or Tonkin, as teaching variable size elements including binder diameter and length (Final Act. 60 (citing Enloe Fig. 5; ,-r,-r 25-27, 33)). Appellants are arguing the references separately and have not addressed the Examiner's findings directed to the combination of Rolleston, Enloe, Crudo, and Tonkin. Thus, the Examiner did not err in finding the combination of references teaches and suggests the variable size elements recited in claim 17. Accordingly, we sustain the Examiner's rejection of claim 17. 11 Appeal2014-008330 Application 13/239,946 With respect to claim 18, which depends from claim 17, Appellants again assert Crudo (App. Br. 33) lacks teaching of a "binder diameter," which the Examiner relies on Enloe as teaching (Final Act. 62 (citing Enloe Fig. 5; i-f 33)). Appellants also assert Enloe's identification of conflicts does not disclose the limitations of claim 18 (App. Br. 33). Appellants' arguments do not address the Examiner's findings that Enloe's conflict visualization-which determines a binder diameter as a function of document thickness, and determines if "a binding [is] not sized properly in length for the chosen media" (see Enloe i-f 25}-at a minimum suggests a binder diameter is determined based on document thickness and a binder length based on page size, as recited in claim 18 (Final Act. 62 (citing Enloe Fig. 5; i-fi-f 25, 33)). Accordingly, Appellants' arguments have not persuaded us of error in the Examiner's rejection of claim 18, and we sustain the Examiner's rejection of dependent claim 18. Claims 23 and 24 With respect to dependent claim 23, Appellants contend the rejection "provides no support for the alleged combination of teachings" and does not "indicate what one of skill in the art would have understood from the various disclosures" (App. Br. 33). With respect to dependent claim 24, Appellants similarly contend the rejection "fail[s] ... to specifically identify where the claims limitations are found" and the references "both alone and in combination, fail to disclose the specific limitations set forth in the claim[]" (App. Br. 33-34). The Examiner finds, however, with respect to claim 23, that Rolleston discloses a binding model having a binding type, to which one of ordinary 12 Appeal2014-008330 Application 13/239,946 skill would add a binder pitch as disclosed by Crudo (Ans. 24--25; Final Act. 62-63 (citing Rolleston Fig. 6; i-f 55; Crudo col. 5, 11. 54--67)). Additionally, with respect to claim 24, Crudo teaches a hook pitch measures a number of binding elements per unit length such that the pitch reciprocal (1/P) corresponds to the length of a single binding element, and a total binder length is greater than 1/P-the length of one binder element (Final Act. 63- 64; see Crudo col. 5, 11. 62----67 ("spacing the hooks 40ata1-to-l ratio of one hook per inch capable of universally holding most common sizes of commercial binders ... sets of hooks 40 are provided in various pitches and are user-interchangeable.")). Appellants' arguments have not addressed these specific findings by the Examiner. As the Examiner has made reasonable findings regarding Rolleston's and Crudo's teaching the limitations of claims 23 and 24, which Appellants have not rebutted, we sustain the Examiner's rejections of claim 23 and 24. DECISION The Examiner's decision provisionally rejecting claim 1 under non- statutory double patenting over claim 1 of co-pending Application No. 13/239,932, Rolleston, and Mukouchi, and claim 11 of co-pending Application No. 13/240,019, Rolleston, and Mukouchi, is affirmed. 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, Rolleston, and Mukouchi, and over claim 1 of Application No. 13/552,970 (US Patent No. 9,105,116), Rolleston, and Mukouchi. The Examiner's decision rejecting claims 1-25 under 35 U.S.C. § 103(a) is affirmed. 13 Appeal2014-008330 Application 13/239,946 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 14 Copy with citationCopy as parenthetical citation