Ex Parte Smith

Patent Trial and Appeal Board

Nov 29, 2018

12721341 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/721,341 03/10/2010
22879 7590 12/03/2018
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Greg S. Smith
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.
82261955 1930
EXAMINER
ZIMMERMANN, JOHN P
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREG S. SMITH 1
Appeal2018-002647
Application 12/721,341
Technology Center 2800
Before BRADLEY R. GARRIS, MARK NAGUMO, and N. WHITNEY
WILSON, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-20 as unpatentable over
Ellison (US 1,866,968, July 12, 1932) in view of Cahill (US 7,267,498 B2,
Sept. 11, 2007). We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 Hewlett-Packard Development Company, LP is identified as the real party
in interest (App. Br. 1 ).
Appeal2018-002647
Application 12/721,341
Appellant claims a method comprising:
segmenting, by a system comprising a processor, a digital image into
a plurality of pixel rows (see Fig. 2);
prior to printing the digital image, generating a first barcode image by
stretching a first pixel row of the plurality of pixel rows from a first height to
a second height greater than the first height (see Fig. 3); and
after the generating, printing the digital image by depositing imaging
material forming the generated first barcode image on a face of a media page
at an edge such that the imaging material forming the generated first barcode
image forms the first pixel row on the edge of the media page (see Fig. 4)
(independent claim 1 ). According to Appellant, when media pages prepared
by this method are assembled into a stack, they combine to form a barcode
image on an edge of the stack (see Fig. 6, Spec. ,r 23). Appellant also claims
a non-transitory computer readable medium (independent claim 8) and an
image forming system ( remaining independent claim 14) containing
limitations generally corresponding to those of the claimed method.
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A method comprising:
segmenting, by a system comprising a processor, a digital
image into a plurality of pixel rows, each pixel row of the plurality of
pixel rows including plural pixels;
prior to printing the digital image, generating, by the system, a
first barcode image by stretching a first pixel row of the plurality of
pixel rows from a first height to a second height greater than the first
height; and
after the generating, causing, by the system, printing of the
digital image, the printing comprising depositing imaging material
forming the generated first barcode image on a face of a media page at
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Appeal2018-002647
Application 12/721,341
an edge such that the imaging material forming the generated first
barcode image forms the first pixel row on the edge of the media
page.
In rejecting claim 1, the Examiner finds that Ellison teaches a method
comprising the claimed steps (i.e., segmenting a digital image, prior to
printing the digital image generating a barcode image by stretching a pixel
row, and printing the digital image) except for the feature of using a system
comprising a processor (Final Action 2-3 ( citing Ellison 11. 66-7 6,
Figs. 3--4 for the generating prior to printing step)). The Examiner finds that
Cahill teaches a method of segmenting a digital image using a system
comprising a processor (id. at 4) and concludes that it would have been
obvious to modify Ellison to use a system comprising a processor as taught
by Cahill (id. at 7).
Appellant argues that, contrary to the Examiner's finding, Ellison
contains no teaching or suggestion of, prior to printing the digital image,
generating a first barcode image by stretching a first pixel row of the digital
image to be printed from a first height to a greater second height as required
by claim 1 (App. Br. 6-7). Appellant correctly explains that the Ellison
disclosure cited by the Examiner for teaching the claimed stretching of a
pixel row prior to printing instead teaches printing lines onto the leaves of a
book (id.).
The Examiner responds by stating that, in Ellison, the step of
generating a barcode image by stretching a pixel row prior to printing is
practiced by the human brain as a mental step (Ans. 11, 13) and that the
claim term "stretching" encompasses either standard printing practice for
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Appeal2018-002647
Application 12/721,341
borderless printing or merely assembling media images into a stack (id. at
12).
In reply, Appellant convincingly argues that the claimed "stretching"
does not include the act of printing or assembling media sheets after printing
as evinced by paragraph 31 of the Specification (Reply Br. 6). Appellant
also accurately points out that the Examiner provides no evidence in support
of the proposition that the generating by stretching step of claim 1 is
performed by the human brain as a mental step in Ellison (id. at 8).
There is no or inadequate supporting evidence and therefore no
persuasive merit in Examiner's position that the claimed step of generating,
prior to printing, a barcode from a first pixel row of the digital image to be
printed is practiced in Ellison in any way, even as a mental step.
Additionally, Appellant's argument reveals that the Examiner erroneously
interprets the claimed "stretching" as encompassing either standard printing
practice or assembling media images into a stack. For these reasons, we do
not sustain the§ 103 rejection of claims 1-20 as unpatentable over Ellison in
view of Cahill.
The decision of the Examiner is reversed.
REVERSED
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