Ex Parte Rolleston et al

Patent Trial and Appeal Board

Sep 30, 2016

13240019 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/240,019 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.
20091771US01 2462
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
Appeal2015-001577
Application 13/240,019
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 1-22. 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
2016-004170.
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Application 13/240,019
STATEMENT OF THE CASE
Appellants' invention is directed to a system and method "employing
variable size mechanical 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 method,
compnsmg:
creating a directly proportional sized 3D binding element
repository in a memory managed by a controller operatively
associated with at least one computer having access to the
memory, said repository including at least one basic 3D binding
element model for each type of adjustable binding available for
visualization along with associated meta-data;
receiving a print product definition;
receiving a binder requirement specification;
transforming the directly proportional sized 3D binding
element model and associated meta-data from the repository
into an directly proportional sized 3D binder display model as
specified by the binder requirement specification and the print
product definition; and
transforming the print product definition into a 3D
display model including the directly proportional sized 3D
binder display model to provide a 3D virtual rendering of the
print product definition on a graphical user interface.
REFERENCES and REJECTIONS2
The Examiner provisionally rejected claim 11 under non-statutory
double patenting over claim 1 of co-pending Application No. 13/239,908
2 Claim 20 is objected to due to informalities (see Final Act. 30). Claim
objections are petitionable, not appealable, matters and generally are not
within the jurisdiction of the Board. See MPEP § § 1002 and 1201.
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Application 13/240,019
and OfficeMax ("OfficeMax - Office Supplies - Clips, Fasteners, and
Rubberbands," 2009).
The Examiner provisionally rejected claim 11 under non-statutory
double patenting over claim 1 of co-pending Application No. 13/239,932
and OfficeMax.
The Examiner provisionally rejected claim 11 under non-statutory
double patenting over claim 1 of co-pending Application No. 13/239,946
and OfficeMax.
The Examiner provisionally rejected claim 11 under non-statutory
double patenting over claim 19 of co-pending Application No. 13/239,960
and OfficeMax.
The Examiner provisionally rejected claim 11 under non-statutory
double patenting over claim 1 of co-pending Application No. 13/239,988
and OfficeMax.
The Examiner rejected claim 11 under non-statutory double patenting
over claim 1 of co-pending Application No. 13/552,970 (now US Patent
9,105,116), Rolleston (US 2006/0114490 Al; June 1, 2006), and OfficeMax.
The Examiner rejected claims 1-8 and 11-22 under
35 U.S.C. § 103(a) based upon the teachings of Rolleston, Enloe (US
2007/0268513 Al; Nov. 22, 2007), OfficeMax, and Mukouchi (US
6,104,403; Aug. 15, 2000).
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) based upon
the teachings of Rolleston, Enloe, OfficeMax, Mukouchi, and Brown (US
5,079,808; Jan. 14, 1992).
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Application 13/240,019
The Examiner rejected claim 10 under 35 U.S.C. § 103(a) based upon
the teachings ofRolleston, Enloe, OfficeMax, Mukouchi, and DeRose (US
6,037,949; Mar. 14, 2000).
ANALYSIS
Non-statutory Double Patenting Rejections
Appellants contend the rejections of claim 11 under non-statutory
double patenting over claim 1 of co-pending Application No. 13/239,932
and OfficeMax, and over claim 1 of co-pending Application No. 13/239,946
and OfficeMax are not appropriate (App. Br. 11-17). Appellants' support
for this contention, however, relies upon Appellants' argument that the
claimed directly proportional sized 3D binding element would not be
obvious from the disclosure of a 3D binding element in combination with
the variable-sized binders of OfficeMax (App. Br. 11-17). As discussed
infra, with respect to the rejection of claims 1, 11, and 20 under
35 U.S.C. § 103(a), we are not persuaded by Appellants' arguments that the
disclosure of a 3D binding element in combination with the variable-sized
binders of OfficeMax does not teach and suggest this claim 11 limitation.
Therefore, we sustain the Examiner's double-patenting rejections of claim
11 (see Final Act. 19-23; Ans. 3-5).3
3 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. 21, 23). We consider this statement to be of
no consequence, as the Examiner has only made the rejection with respect to
claims 1 and 11, and not claims 2-10 and 12-22, under non-statutory double
patenting over claims of Application Nos. 13/239,932 or 13/239,946.
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We do not reach a conclusion regarding the Examiner's rejections of
claim 11 on the ground of non-statutory double patenting over claim 1 of co-
pending Application No. 13/239,908 and OfficeMax, and over claim 1 of
Application No. 13/552,970 (now US Patent 9, 105, 116), Rolleston, and
OfficeMax, 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. 4 Should there be further prosecution of independent claim 11 of
the present application, the Examiner may wish to reconsider the double
patenting rejections of claim 11 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 11 over
Application Nos. 13/239,960 (Final Act. 23-25) and 13/239,988 (Final Act.
25-27) are moot in view of the abandonment of these applications. 5
35 U.S.C. § 103 Rejections
Claims 1-3, 5, 11-14, 16, and 19-21
With respect to claim 1, Appellants contend Rolleston, Enloe,
OfficeMax, and Mukouchi, alone or in combination, fail to teach or suggest
a directly proportional sized 3D binding element as recited in claim 1 (App.
Br. 30). According to Appellants, a directly proportional sized 3D binding
element "represents a binding model having a variable size element (e.g., a
4 The double patenting rejections in the Examiner's Answer also do not
reflect the claim amendments in Application Nos. 13/239,908 and
13/552,970.
5 Application No. 13/239,960 was abandoned on August 25, 2014, and
Application No. 13/239,988 was abandoned on September 17, 2015.
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connector plate of a spring clip type of binding)," which is not taught by the
references (App. Br. 30, 34 (citing Spec. i-f 160)). Further, with respect to
OfficeMax, Appellants contend it discloses
various binding products . . . [but] such teachings, alone or in
combination with the remaining references could not have
resulted in one of ordinary skill understanding that there would
be a teaching of transforming the directly proportional sized 3D
binding element model and associated meta-data from the
repository into an directly proportional sized 3D binder display
model.
App. Br. 33-34.
Appellants have not addressed the Examiner's findings directed to
Rolleston in combination with OfficeMax and Enloe. See In re Keller, 642
F.2d 413, 426 (CCPA 1981). Specifically, the Examiner relies on Rolleston
for a 3D binding element model for each type of binding, including spiral
and stapled bindings (Final Act. 31 (citing Rolleston Figs. 3 and 6; i-fi-1 46, 48,
55)). The Examiner relies on Enloe for a binding element model of an
adjustable binding (Final Act. 33 (citing Enloe Fig. 5; i-f 33)), and on
OfficeMax for directly proportional sized binders such as spring clips and
paper clips (Final Act. 34 (OfficeMax pp. 3-6)). The Examiner concludes it
would have been obvious to modify Rolleston's 3D binding element models
to include Enloe' s adjustable binding model applied to the variable-sized
binder clips of OfficeMax, to allow users to visualize adjustable clip binding
of documents with the OfficeMax clips (Final Act. 33-34; Ans. 11-12). We
agree with the Examiner's reasonable findings and conclusion. Further,
Enloe' s binding element-whose variable size is updated by a user to fit a
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document thickness on a screen (see Enloe if 33 )6-is commensurate with
the broad description of "directly proportional sized binding element" in
Appellants' Specification. 7
Appellants further contend the references do not teach or suggest
creating a directly proportional sized 3D binding element repository, as
recited in claim 1 (App. Br. 34; Reply Br. 5). We agree with the Examiner,
however, Rolleston creates a repository in memory for storing 3D binding
element models for each type of binding including spiral and stapled binding
(Final Act. 31 (citing Rolleston Figs. 3 and 6; iii! 46, 48, 55)). Additionally,
as discussed supra, Rolleston in combination with Enloe and OfficeMax
teaches and suggests directly proportional sized 3D binding element models.
Thus, the combination of Rolleston, Enloe, and OfficeMax teaches and
suggests directly proportional sized 3D binding element models in
Rolleston's repository (Final Act. 34).
Appellants further contend the references do not teach or suggest
transforming the directly proportional sized 3D binding element model from
the repository into a directly proportional sized 3D binder display model, as
recited in claim 1 (App. Br. 34). As discussed supra, we are not persuaded
6 Enloe provides that the "thickness for the number of sheets in the
document is calculated" to determine an appropriate binding size, and "[i]f
the user selects the suggested binding size, the job ticket and visualization
are updated to reflect the selected solution" (Enloe if 33 (emphasis added)).
7 Appellants' Specification describes "an adjustable or directly
proportional sized (variable-sized) 3D binding element" for which "variable
sized is intended to indicate that the binding model permits the binding to be
rendered in direct proportion to the thickness of the document," for example
through a "bi-directional flow of information with [a] graphical user
interface in order to iteratively select and modify the directly proportional
size binder" (Spec. iii! 159, 161 (emphasis added)).
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that the combination of Rolleston, Enloe, and OtliceMax does not teach a
directly proportional sized 3D binding element model. We further agree
with the Examiner's findings that Rolleston's JDF data conversion to
generate a 3D virtual rendering of a spiral-bound book transforms a 3D
binding element model into a 3D binder display model, as shown in Figure 6
(Final Act. 32 (citing Rolleston Fig. 6; i-fi-f 10, 20-22, 46, 48, 55)).
Appellants' arguments do not address the Examiner's specific findings that
Rolleston teaches the claimed transforming.
Appellants additionally contend Mukouchi is "directed to creating
object views based upon an assembly of 3D parts, [but] Mukouchi in
combination with Rolleston, Enloe and OfficeMax is not believed to be
directed to, nor does it disclose or suggest the use of a basic 3D binding
element model" (App. Br. 34--35 (emphasis added)). The Examiner relies
on Rolleston as teaching a repository including 3D binding element models,
and Mukouchi as teaching basic element models from which a 3D object
model is assembled (Final Act. 35 (citing Mukouchi Figs. 11 and 15; col. 2,
11. 21-53); Ans. 12). The Examiner concludes it would have been obvious to
store, in Rolleston's repository, a basic model representing a binding
piece--such as an OfficeMax clip--to be assembled with other binding
pieces for rendering a complete document binder (Final Act. 35; Ans. 12).
Appellants' arguments do not specifically address these reasonable findings
or the Examiner's rationale, with which we concur.
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
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20 for which Appellants provide substantially the same arguments as those
asserted for claim 1 (App. Br. 35-38), and dependent claims 2, 3, 5, 12-14,
16, 19, and 21 argued for their dependency on claims 1, 11, and 20 (App. Br.
41).
Claims 4 and 15
With respect to dependent claim 4, Appellants contend "Rolleston,
alone or in combination with Enloe, OfficeMax and Mukouchi, while
teaching selection of binding types, does not disclose modifying properties
of a model, particularly the directly proportional sized 3D binding element
model of claim 1" (App. Br. 38).
The Examiner finds, however, that Rolleston and Enloe modify
binding properties, such as binding type and size, by user gestures
interacting with a graphical user interface (Final Act. 36-37 (citing
Rolleston Fig. 6; i-fi-148, 55; Enloe Fig. 5; i133); Ans. 15-16). We agree with
the Examiner's reasonable findings, which Appellants have not rebutted. As
Appellants' arguments do not address the Examiner's findings, we sustain
the Examiner's rejection of claim 4, and claim 15 for which Appellants
provide substantially the same arguments (App. Br. 40).
Claims 6 and 7
With respect to dependent claim 6, Appellants contend the rejection
"fails to specifically identify the recited binding type [of base claim 5]" and
fails to provide a reason why one of skill in the art would have been
motivated to combine Rolleston with OfficeMax (App. Br. 38-39; Reply Br.
6-7).
We do not agree. The Examiner has cited evidence that Appellants do
not address. Specifically, the Examiner finds Figure 6 of Rolleston and
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Figure 5 of Enloe disclose binding elements of multiple types including
spiral and stapled binding, and OfficeMax discloses additional binders of the
type recited in claim 5 (Final Act. 37-38; Ans. 17-18). Additionally, as
discussed supra with respect to independent claims 1, 11, and 20, the
Examiner has provided sufficient articulated reasoning with a rational
underpinning for combining OfficeMax with Rolleston to supplement
Rolleston's collection of binding models with models for the binders
disclosed in OfficeMax (Final Act. 34; Ans. 11-12). As Appellants'
arguments have not addressed the Examiner's findings, we sustain the
Examiner's rejection of claim 6.
With respect to dependent claim 7, Appellants contend "there is no
disclosure of a proportional, let alone directly proportional size element for
any of the products displayed at p. 3 - 6 of the OfficeMax catalog" (App. Br.
39; Reply Br. 7-8). As discussed supra with respect to independent claim 1,
we are not persuaded that the combination ofRolleston with Enloe and
OfficeMax does not teach a directly proportional sized element.
Accordingly, we sustain the Examiner's rejection of claim 7.
Claim 8
The Examiner finds OfficeMax discloses spring clips with connector
plates of various sizes (Final Act. 39 (citing OfficeMax pp. 3---6) ). The
Examiner concludes it would have been obvious to supplement Rolleston's
collection of binding models with a directly proportional sized element
model for the spring clips, to allow users to visualize adjustable clip binding
of documents (Final Act. 39; Ans. 21-22). Appellants' arguments have not
addressed these findings by the Examiner, and merely state, "[t]here does
not appear to be any teaching or suggestion [in the references] of the directly
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proportional size element including a connector plate of a spring clip type of
binding," without persuasive evidence or reasoning (Reply Br. 8; see also
App. Br. 39--40). As Appellants' arguments have not addressed the
Examiner's findings, we sustain the Examiner's rejection of claim 8.
Claim 9
With respect to dependent claim 9, Appellants recognize Brown
discloses a spring biased paper clip, but contend Brown "fails to even
suggest any model, let alone a binding model includes a hinged relationship
between at least two elements of the model" as claimed (App. Br. 42--43;
Reply Br. 8-9).
The Examiner, however, relies on Rolleston as teaching a binding
model, and Brown as teaching a binder having a hinged relationship between
its two plate elements (Final Act. 52-53 (citing Brown Figs. 1-7; col. 1,
11. 5-11, col. 2, 11. 50-55); Ans. 30-31 (citing Rolleston Figs. 3 and 6; i-fi-146,
48, 55)). The Examiner concludes it would have been obvious to
supplement Rolleston's collection of binding models with a model for
Brown's improved paper clip to allow users to visualize document binding
with hinged paper clips which "provide increasing clamping force with
increasing document thickness" (see Brown Abstract; Final Act. 52-53; Ans.
30-31 ). We agree.
As Appellants do not address the Examiner's findings directed to
Rolleston in combination with Brown, Appellants' arguments do not
persuade us of error in the Examiner's rejection of claim 9. Therefore, we
sustain the Examiner's rejection of claim 9.
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Claim 10
With respect to dependent claim 10, Appellants recognize DeRose
discloses control points, but contend DeRose teaches animation, not flexing
as claimed (App. Br. 43--44).
The Examiner finds DeRose discloses a model whose control points
move to create animated motion, thereby teaching flexing for a portion of
the model as recited in claim 10 (Final Act. 53 (citing DeRose Figs. 7-12;
col. 4, 11. 27-58)). We agree. DeRose's control points create a realistic
movement of gestures for an animated character (see DeRose, col. 4, 11. 27-
3 5), which is commensurate with Appellants' broad description of "flexing"
to represent realistic movement of a model in response to physical forces
applied to the model's control points (see Spec. i-f 174). Accordingly, we
sustain the Examiner's rejection of claim 10.
Claims 17, 18, and 22
With respect to dependent claims 17 and 22, Appellants contend the
rejection "fails to specifically identify the recited binding type" of claims 16
and 21 (App. Br. 40--41 ). The Examiner finds, however, OfficeMax
discloses binding types as recited in claims 16 and 21 (Final Act. 45; Ans.
25, 28; see OfficeMax pp. 3, 5). We agree with the Examiner's findings,
which Appellants have not rebutted.
Appellants further contend the rejection of claims 17 and 22 "asserts
that teaching of OfficeMax may be used to modify Rolleston without
providing a reason why one of skill in the art would have been motivated to
do so" (App. Br. 41; see also App. Br. 40). We are not persuaded by
Appellants' argument for the reasons discussed supra with respect to the
Examiner's rejection and findings of independent claims 1, 11, and 20,
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which provide sufficient articulated reasoning with a rational underpinning
for supporting the rejection based on Rolleston and OfficeMax (Final Act.
34, 40, 50; Ans. 11-12).
Accordingly, we sustain the Examiner's rejection of claim 22, claim
1 7, and dependent claim 18 for which no separate arguments are provided
(App. Br. 41).
DECISION
The Examiner's decision provisionally rejecting claim 11 under non-
statutory double patenting over claim 1 of co-pending Application No.
13/239,932 and OfficeMax, and over claim 1 of co-pending Application No.
13/239,946 and OfficeMax, is affirmed.
We do not reach the rejections of claim 11 under non-statutory double
patenting over claim 1 of co-pending Application No. 13/239,908 and
OfficeMax, and over claim 1 of Application No. 13/552,970 (US Patent
9,105,116), Rolleston, and OfficeMax.
The Examiner's decision rejecting claims 1-22 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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