Ex Parte Rose

Patent Trial and Appeal Board

Oct 2, 2014

11567241 (P.T.A.B. Oct. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PHILIP C. ROSE
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Appeal 2012-004253
Application 11/567,241
Technology Center 2600
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Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
variable information printing method. The Examiner rejected the claims as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellant identifies the Real Party in Interest as Xerox Corp. (see
App. Br. 1).
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Statement of the Case
Background
“A single variable information job, such as utilized in transactional
and personalized marketing printing environments, is akin to a computer
program, in that it contains commands to combine one or more input file
specifications with one or more design specifications to produce the final
output” (Spec. 1 ¶ 2). The Specification teaches that changes in the variable
information job may be tested by creating “a series of outputs from a sample
set of data both before and after the edits, and manually or automatically
visually compare these two sets of output for any visual differences” (Spec.
1 ¶ 2). However, the Specification teaches that as the number of changes
increases, “the size and complexity of the task can grow to such
unmanageable proportions that change requests may linger unfulfilled
because the cost to perform the testing exceeds the cost saved by the
change” (Spec. 1 ¶ 2).
The Claims
Claims 1–20 are on appeal. Claim 1 is representative and reads as
follows:
1. A computer-implemented method comprising:
supplying test data to a variable information (VI) print
job to produce first visual data records using a computer;
applying a numeric generation application to said first
visual data records to produce first numerical representations
of said first visual data records using said computer;
altering said VI print job to create an altered VI print
job;
supplying said test data to said altered VI print job to
produce second visual data records;
applying said numeric generation application to said
second visual data records to produce second numerical
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representations of said second visual data records using said
computer; and
comparing said first numerical representations of said
first visual data records to said second numerical
representations of said second visual data records to identify
altered visual data records caused by said altering of said VI
print job.

The issue
The Examiner rejected claims 1–20 under 35 U.S.C. § 102(b) as
anticipated by Murray2 (Ans. 4–11).
The Examiner finds that Murray teaches
supplying test data to a variable information (VI) print
job (page 3, paragraph 18, printed documents employing
variable print data) to produce first visual data records using
a computer (page 10, paragraph 85, the print controller 14
performs page normalization 162 which includes the
collection of all image data);
applying a numeric generation application to said first
visual data records to produce first numerical representations
of said first visual data records using said computer (page
10, paragraph 85, print controller 14 converts the normalized
page and encodes the verification information as a control
string 40 which is placed in the control channel 22 as a
“truth” source [control string 40 corresponds to said first
visual data records]) (page 10, paragraph 87, the control
string could contain specifications for multiple fields of
image information to be verified on the analog page (e.g. the
payee name and dollar amount of a check));
altering said VI print job to create an altered VI print
job (page 10, paragraph 86, the document is processed by
the IOT 16) (page 7, paragraph 67, if the bitmap page 38 is
provided to the image channel input 110 and routed to the
process station function 112, the process station 108

2 Murray, D.M., US 2002/0075505 A1, published June 20, 2002.
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performs its function on the bitmap page 38 and passes it
along to the image channel output 114 [i.e. performing a
function on a bitmap image creates an altered print job]);
supplying said test data to said altered VI print job to
produce second visual data records (page 10, paragraph 86,
the print engine verifies the correctness of the analog page
by sensing certain information to be verified [the analog
page corresponds to the second visual data records]);
applying said numeric generation application to said
second visual data records to produce second numerical
representations of said second visual data records using said
computer (page 10, paragraph 87, verified information can
include specifications for multiple fields of image
information to be verified on the analog page (e.g. the payee
name and dollar amount of a check)); and
comparing said first numerical representations of said
first visual data records to said second numerical
representations of said second visual data records to identify
altered visual data records caused by said altering of said VI
print job (page 10, paragraph 86, the print engine verifies the
correctness of the analog page by sensing certain
information to be verified and comparing the measured
information to the “truth” from the control string 40) (page
10, paragraph 86, if the analog page is not correct [i.e. a
field of image information has been changed during
processing], a mismatch is identified).

(Ans. 5–6.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Murray anticipates the claims?
Findings of Fact
1. Murray teaches that “[d]igital print systems that produce
printed documents by employing variable print and last second merging of
data with digital forms frequently are required to keep a digital copy of the
resulting document set” (Murray 3 ¶ 18).
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2. Figure 6 of Murray is reproduced below:

“FIG. 6 shows a flow chart illustrating verification of analog page integrity
within a digital print system” (Murray 3 ¶ 32).
3. Murray teaches that “print controller 14 performs page
normalization 162 which includes the collection of all image data, job
instructions, page instructions, and verification information necessary to
print each normalized page” (Murray 10 ¶ 85).
4. Murray teaches that “print controller 14 converts and renders
each normalized page to a bitmap page and a control string 164. In so doing,
the print controller 14 . . . encodes the verification information as a control
string 40 which is placed in the control channel 22 as a ‘truth’ source”
(Murray 10 ¶ 85).
5. Murray teaches that “the control string could contain . . .
control information from preceding and succeeding pages to ensure the page
is in its proper sequence . . . [or] specifications for multiple fields of image
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information to be verified on the analog page (e.g., the payee name and
dollar amount of a check)” (Murray 10 ¶ 87).
6. Murray teaches that as
[T]he document is now ready to be processed by the IOT 16,
the print controller 14 commands a feeding station to
advance paper stock along the paper path 172, advances the
bitmap page along the image channel to the print engine
174, and sends the control string via the control channel to
the print engine 176

(Murray 10 ¶ 86).
7. Murray teaches that “if the bitmap page 38 is provided to the
image channel input 110 and routed to the process station function 112, the
process station 108 performs its function on the bitmap page 38 and passes it
along to the image channel output 114” (Murray 7 ¶ 67).
8. Murray teaches that
Examples of process station functions include “fusing” the
transferred toner image on a page of stock, “sorting” printed
pages, or “stapling” documents. As the analog page 50
travels through the analog page output 102, it passes by the
sensor 104. The sensor 104 detects certain characteristics of
the analog page 50 that were expected to be created or
altered by the process station function 100. The sensor 104
produces a measurement related to such characteristics and
provides the measurement to the comparator circuit 106.

(Murray 6 ¶ 64.)
9. Murray teaches that “the print engine verifies the correctness of
the analog page 184 by sensing certain information to be verified and
comparing the measured information to the ‘truth’ from the control string
40” (Murray 10 ¶ 86).
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10. Murray teaches that
[I]f the analog page 50 is not correct, a mismatch is
identified and the digital print system 10 implements
corrective measures 186, including purging the mismatched
page. If the correctness of the analog page 50 is confirmed,
the print engine advances the analog page along the image
channel to the finishing station 188.

(Murray 10 ¶ 86.)
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4–11; FF 1–10) and agree that the
claims are anticipated by Murray. We address Appellant’s arguments
below.
Claims 1, 6, 11, and 16
Appellant contends that “while the claimed invention compares
different print jobs, Murray only performs comparisons to determine if a
printing device is properly processing an individual print job” (App. Br. 16).
Appellant contends that “unlike Murray that identifies print processing
errors, the present claims define a process that uses numerical
representations in a comparison process to identify altered visual data
records that resulted from altering a print job” (App. Br. 16).
We are not persuaded because Murray teaches each of the claimed
steps. Specifically, Murray teaches the “supplying” and “applying” steps
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where “print controller 14 performs page normalization 162 which includes
the collection of all image data . . . and renders each normalized page to a
bitmap page and a control string 164” (Murray 10 ¶ 85; FF 3–4). Murray’s
bitmap page is the “first visual data record” and the “control string” is the
numeric representation of the “first visual data record” (FF 3–4).
Murray teaches “altering” the job where “process station 108
performs its function on the bitmap page 38 and passes it along to the image
channel output 114” (Murray 7 ¶ 67; FF 7). The changes performed by the
process station result in a second visual data record, since the bitmap page
has been altered (FF 7). Murray teaches a second “applying” step where
“the print engine verifies the correctness of the analog page 184 by sensing
certain information to be verified and comparing the measured information
to the ‘truth’ from the control string 40” (Murray 10 ¶ 86; FF 9). Here, for
Murray’s sensed information of the altered analog page to have the capacity
for comparison with control string, that sensed information is necessarily
numerical, and Murray’s comparison is of two numerical representations as
required by claim 1 (FF 9).
Appellant contends that
Murray defines a methodology for checking to see whether
the intended print processing occurs. To the contrary, as
explained above, the claimed invention is directed toward
identifying altered visual data records (when a print job is
altered) through a numeric comparison in order to reduce the
amount of time it takes to visually check whether the print
job alteration achieved its desired goals.

(App. Br. 17.) Appellant contends that “even if the control string or bitmap
could somehow be considered an altered print job, Murray would still not
teach the claimed invention because Murray only identifies errors that were
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not expected while the claimed invention specifically identifies items that
were expected to be different” (App. Br. 18).
We find these arguments unpersuasive because Murray teaches each
of the limitations of the claims. While Appellant may intend a different
process, the words of the claim do not capture the intended differences.
“[L]imitations are not to be read into the claims from the specification.” In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”).
Claims 2, 7, 12, and 17
Appellant contends that “neither paragraph 0086 (nor any other
section of Murray) teaches a process that determines which visual data
records were intended to be changed (when a variable information print job
is altered)” (App. Br. 19).
The Examiner finds that Murray teaches that a “control string could
contain control information from preceding and succeeding pages to ensure
the page is in its proper sequence . . . . Therefore, visual data including a
field containing a page number would be intended to change to the
preceding or succeeding page number in processing of the print job” (Ans.
13–14).
Appellant responds that “the most that this portion of Murray
discloses is checking sequencing within a single print job. Therefore, this
again demonstrates that Murray is only checking the proper execution of a
single print job and is not comparing a first print job to an altered print job
as is claimed” (Reply Br. 5).
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We find that the Examiner has the better position. Murray generates
the control string when generating a first bitmap page (FF 4), which
constitutes the first visual record required by claim 2. Murray then verifies
the accuracy of the analog page by sensing information, comprising a second
visual record, which is then compared to the control string (FF 9) which
sensed information may include the page numbers of the preceding and
following pages (FF 5). The claims provide no specific recitation limiting
the visual data record in a manner which distinguishes the data from the data
sensed by Murray.
Claims 3–5, 8–10, 13–15, and 18–20
Appellant contends that “Murray does not disclose any processing that
occurs with respect to altered variable information print jobs. Therefore,
logically, Murray cannot teach the claimed feature of ‘visually comparing
said first visual data records with corresponding unexpected altered visual
data records’ defined by claims 3, 8, 13, and 18” (App. Br. 21). Appellant
also contends that “Murray cannot teach the claimed process/system that
‘identifies said altered visual data records as ones that correspond to
numerical representations that are different after said altering of said VI print
job’ as defined by claims 4, 9, 14, and 19” (App. Br. 21). Appellant
similarly contends that “Murray cannot teach ‘said VI print job comprises a
plurality of VI print programs and wherein said altering alters a
characteristic of at least one of said VI print programs’ as defined by claims
5, 10, 15, and 20” (App. Br. 22).
We are not persuaded. Murray teaches processing of the print jobs,
including purging mismatched pages (FF 10). As discussed above, Murray
reasonably addresses the visually comparing data records when teaching that
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“the print engine verifies the correctness of the analog page 184 by sensing
certain information to be verified and comparing the measured information
to the ‘truth’ from the control string 40” (Murray 10 ¶ 86; FF 9). In each
case, there are records which are altered, and then compared and verified to
identify and properly address these alterations (FF 1–10).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Murray anticipates the claims.
SUMMARY
In summary, we affirm the rejection of claims 1–20 under 35 U.S.C.
§ 102(b) as anticipated by Murray.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc