09981392 (B.P.A.I. Jan. 18, 2011)

Ex Parte Simpson

Board of Patent Appeals and InterferencesJan 18, 2011

09981392 (B.P.A.I. Jan. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SHELL S. SIMPSON ____________ Appeal 2009-006248 Application 09/981,392 Technology Center 2100 ____________ Before HUBERT C. LORIN, JEAN R. HOMERE, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-006248 Application 09/981,392 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-46 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention is directed a system and method for printing a controlled image including a predetermined graphic symbol, such as for example a signature on a check or other document. (Spec. 2:9- 12). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter of appeal. 1. From a client program in a web-based environment, a method for controlling production and display of an image represented by data generated at a source service, said data representing at least in part a predetermined graphic symbol referencing a particular symbol set, said method comprising the steps of: accessing said source service; dynamically generating a printable version of said image represented by said data at said source service under interactive control of said client program, said printable version including said predetermined graphic symbol referencing said particular symbol set; referencing said printable version of said image represented by said data from a composition stored in an imaging store; accessing said composition from a destination service; and [1] if said destination service contains said particular symbol set and if said destination service is instructed to produce said printable version of said represented image, then forwarding said printable version of said represented image to said destination service Appeal 2009-006248 Application 09/981,392 3 and then producing said represented image including said predetermined graphic symbol under interactive control by said client program, wherein said particular symbol set identifies mapping characteristics for producing said predetermined graphic symbol on said represented image. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Shima US 6,369,909 B1 Apr. 9, 2002 Powers US 6,438,584 B1 Aug. 20, 2002 Adamske US 6,615,234 B1 Sep. 2, 2003 Savoray US 6,631,200 B1 Oct. 7, 2003 The following rejections are before us for review: 1. Claims 1-7, 11-13, 18-23, 25-35, 37-43, and 46 are rejected under 35 U.S.C. § 103(a) as unpatentable over Adamske and Savoray. 2. Claims 8, 14-16, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Adamske, Savoray, and Powers. 3. Claims 9-10, 34, and 44-45 are rejected under 35 U.S.C. § 103(a) as unpatentable over Adamske, Savoray, and Shima. 4. Claims 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Adamske, Savoray, Powers, and Shima. THE ISSUES With regards to claim 1 and its dependent claims the issue turns on whether Adamske and Savoray disclose claim limitation [1]. With regards to the remaining claims, the issue turns on whether Adamske and Savoray disclose a similar claim limitation. Appeal 2009-006248 Application 09/981,392 4 FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:2 FF1: Savoray is directed to a method for producing an electronic signature which is verifiable and has the visual appearance of a true-life, handwritten manual signature (Col. 3: 12-15). The main function of the conversion software is to convert a raster or bitmap image of a handwritten signature into a scalable font format (Col. 3:24-28). FF2. Savoray at Col. 4:39-46 discloses the conversion of a signature raster image into a font by “hinting”. A hinted image 30 is produced from guidelines 28 by identifying hints. Types of hints include “stems” and “overshoot” controls. FF3. Adamske has disclosed a system for delivering an electronic document over a network and printing a hard copy at a remote destination (Abstract). Adamske at Col. 9:19-28 discloses that users can access the print preview function to see all of the signatory signatures placed on the document to date. The document will be held until all designated signatories have signed before being released to the destination printer 40. FF4. Savoray at Col. 4:39-46 and Adamske at Col. 9:19-28 do not disclose a particular symbol set that identifies mapping characteristics for producing a predetermined graphic symbol on a represented image. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2009-006248 Application 09/981,392 5 ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the cited prior art fails to disclose claim limitation [1] (Br. 8-10, Reply Brief 2-3). In contrast, the Examiner has determined that the cited claim limitation is shown by Savoray at Col. 4:39-46 and Adamske at Col. 9:19- 28. We agree with the Appellant. Claim limitation [1] requires: [1] “if said destination service contains said particular symbol set and if said destination service is instructed to produce said printable version of said represented image, then forwarding said printable version of said represented image to said destination service and then producing said represented image including said predetermined graphic symbol under interactive control by said client program, wherein said particular symbol set identifies mapping characteristics for producing said predetermined graphic symbol on said represented image”. (Claim 1, emphasis added). The Examiner has taken the initial position that the cited claim limitation [1] contains “if” statements that are not requirements in the claim (Ans. 29-30). We disagree and find the claim to require the method to handle the situations contained in the “if” statements as well. Further, an argued portion of the cited claim limitation [1] requires “wherein said particular symbol set identifies mapping characteristics for producing said predetermined graphic symbol on said represented image” and in this claim the “wherein” clause makes the clause a claim limitation. The Examiner has stated that this portion of the cited claim limitation [1] is found at Savoray and Adamske (Ans. 30) but we disagree and do not find Savoray at Col. 4:39-46 or Adamske at Col. 9:19-28 to disclose this (FF4). Savoray discloses the Appeal 2009-006248 Application 09/981,392 6 conversion of a signature raster image into a font by “hinting” (FF2) but not the claimed particular symbol set or mapping characteristics for producing a graphic symbol on the image (FF4). Adamske has disclosed that the document will be held until all designated signatories have signed before being released to the destination printer (FF3) but also does not show the claimed particular symbol set or mapping characteristics for producing a graphic symbol on the image (FF4). For these reasons the rejection of claim 1 and its dependent claims is reversed. Independent claims 25 and 38 contain similar claim limitations and the rejection of these claims as well as their dependent claims is reversed for the same above reasons. DECISION The Examiner’s rejection of claims 1-46 is reversed. REVERSED MP HEWLETT-PACKARD COMPANY Intellectual Property Administration 3404 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528