Ex Parte Roudot

Board of Patent Appeals and Interferences

Mar 25, 2010

10276596 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DENIS ROUDOT
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Appeal 2009-001173
Application 10/276,596
Technology Center 2100
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Decided: March 26, 2010
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and JAY P. LUCAS,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Final
Rejection of claims 58, and 60-82. Claims 1-57 and 59 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method for defining,
collecting, and storing the data compositions of a plurality of pages of a
document (Abstract).

The Illustrative Claim
Claim 58, an illustrative claim, reads as follows:
58. A method of constituting a database relating to layout
and data contained in a document to be printed, the database
being made from a storage and generated by software
processing, the storage being comprised of a file adapted for
transmission to a printer so as to allow for the printing of the
document, the storage containing data related to blocks
belonging to an aggregate of blocks corresponding to the
document, each of the blocks corresponding to a text or to an
image of a page of the document, each of the blocks containing
data relating to a container of the concerned text or image on
the particular page and date related to content of the text or
image, a determined arrangement of the blocks defining a
composition of the page of the document, the storage storing in
ordered blocks all data related to the container and all data
related to the content of the considered texts and/or images of
the document, each of the blocks being associated with an
identifier so as to allow for identification within the storage, the
method comprising the following steps:
collecting all blocks, block after block, at the storage;
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collecting for each of the blocks the data related to the
container and to the content of the concerned text or image by
collecting various types of unitary data corresponding to said
data related to the container and to said data related to the
content of each text and image of the document;
creating a table and transferring into said table the unitary
data for each block in connection with the corresponding
identifier;
associating the identifier of each block and each unitary
data corresponding to each type of data related to the container
and to the content of each block with a location in the database
by copying said table into said database;
detecting the blocks corresponding to a text;

collecting at the storage the content of a text block for
each block corresponding to a text;

creating a text file for each of the text blocks into which
the content of the concerned text block is transferred;

associating the identifier of each text block and each text
file corresponding to the text block with a location in the
database;

detecting data related to colors associated with images or
texts in the blocks at the storage;

decomposing the data related to colors into a composition
of primary color data;

transferring the composition of primary color data into a
corresponding primary color table;
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associating said primary color table with a location in the
database, the database containing accessible and amendable
data comprising the unitary data, the text content data and the
image content data of each block, so as to be used for
intervening on the blocks of the aggregate corresponding to the
document and for either reconstituting the document or
constituting a new document.

The References
Smith US 5,181,162 Jan. 19, 1993
Wang US 6,496,198 B1 Dec. 17, 2002

The Rejections
Claims 58, and 60-82 stand rejected under 35 U.S.C. § 112
second paragraph.
Claims 58, and 60-82 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith in view of Wang.

II. ISSUES
The issue is whether claims 58 and 60-82 are sufficiently definite in
claim scope so as to evaluate the patentability of the claims in view of the
cited prior art.
Has the Appellant shown that the Examiner erred in finding that the
combination of Smith and Wang teaches or fairly suggests “creating a table
and transferring into said table the unitary data for each block in connection
with the corresponding identifier,” as recited in independent claim 58?
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III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).

35 U.S.C. §112, second paragraph
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

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IV. FINDING OF FACT
Wang
1. Wang discloses utilizing a hierarchical tree structure 52 to represent
the blocked representation 50 (col. 6, ll. 4-30). In particular, “[t]able node
71 represents table block 78 in blocked representation 52. As shown in the
Fig. 4, areas within table block 78 are represented by supercell nodes, which
are parent nodes to text nodes representing text within the areas defined by
parent supercell.” (Col. 7, ll. 15-19).
V. ANALYSIS
The Examiner set forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellant’s Brief to show error in the proffered reasoned conclusion.
See Kahn, 441 F.3d at 985-86 (citing Rouffet, 149 F.3d at, 1355).

35 U.S.C. § 112 Rejection
With respect to claims 58 and 60-82, the Appellant contends that the
claimed terms “block” and “container” have different meanings and are
definite because “[i]t is important to consistently apply and consider the
definitions with the Applicant as the lexicographer when the claim language
is at issue.” (App. Br. 7-8).
We agree with the Appellant’s contention. The Examiner's focus
during the examination of claims for compliance with the requirement for
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definiteness of 35 U.S.C. § 112, second paragraph, is whether the claims
meet the threshold requirements of clarity and precision, not whether more
suitable language or modes of expression is available. See Ex parte Porter,
25 USPQ2d 1144, 1146 (Bd. Pat. App. & Int. 1992). Claims are considered
to be definite, as required by the second paragraph of 35 U.S.C. § 112, when
they define the metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530 F.2d 956, 958
(CCPA 1976). Here, we find that claim 58 recites “each of the blocks
corresponding to a text or to an image of a page of the document, each of the
blocks containing data relating to a container of the concerned text or image
on the particular page.” (See the representative claim 58). Clearly, the
Appellant describes the block and the relationship of the “block” and
“container.” Thus, “block” and “container” recited in claims are reasonable
to meet the threshold requirement of clarity and precision. Accordingly, we
cannot sustain the Examiner’s rejection under 35 U.S.C. § 112.

35 U.S.C. § 103(a) Rejections
With respect to independent claim 58, the Appellant contends that
Wang does not disclose the step of creating an actual table (App. Br. 11). In
particular, Wang only teaches table node 71 that is used to describe a table
block 78 in Fig. 4 (Id. at 12).
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The Examiner states that Wang teaches creating a buffer of text that is
corresponding to creating a table of text, and thus, Wang teaches the step of
creating table as claimed (Ans. 11).
We disagree with the Examiner’s reading of the Wang reference. We
find that the paragraphs of the Wang reference relied upon by the Examiner
only discusses utilizing a hierarchical tree structure to represent a blocked
representation as the table node 71 to represent the table block 78 (FF 1).
Clearly, the table node 71 is a hierarchical tree (or sub-tree) with parent
nodes of supercells and children nodes of texts for representing the table
block 78 in Fig. 4. Therefore, we conclude that Wang does not teach or
fairly suggest the argued claim limitations. Accordingly, we find the
Examiner’s position is untenable.
Because we agree with at least one of the Appellant’s contentions, we
find that the Examiner has not made a requisite showing of obviousness as
required to teach or fairly suggest the invention as recited in claim 58 by the
combination of Smith and Wang. The rejection of dependent claims 60-82
contains the same deficiency. The Appellant, thus, has demonstrated error
in the Examiner’s reasoned conclusion of obviousness of the subject matter
of claims 58 and 60-82.
We, therefore, cannot sustain the rejection of claims 58 and 60-82
under 35 U.S.C. § 103.

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VI. CONCLUSION
We conclude that the Appellant has shown that the Examiner erred in
finding that claims 58 and 60-82 are not sufficiently definite in claim scope
so as to evaluate the patentability of the claims in view of the cited prior art.
We also conclude that the Appellant has shown that the Examiner
erred in finding that the combination of Smith and Wang teaches or fairly
suggests “creating a table and transferring into said table the unitary data for
each block in connection with the corresponding identifier,” as recited in
independent claim 58.

VII. ORDER
We reverse the indefinite rejection of claims 58 and 60-82 under
35 U.S.C. § 112.
We also reverse the obviousness rejection of claims 58 and 60-82
under 35 U.S.C. § 103(a).

REVERSED

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