Ex Parte Vanderhye

Board of Patent Appeals and Interferences

Mar 5, 2010

10740486 (B.P.A.I. Mar. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROBERT A. VANDERHYE
_____________

Appeal 2009-004151
Application 10/740,486
Technology Center 2600
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Decided: March 5, 2010
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Before, MAHSHID D. SAADAT, ROBERT E. NAPPI, and
ELENI MANTIS-MERCADER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004151
Application 10/740,486

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3, 5-17, and 20-25.1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method of producing a piece of artwork
by controlling the colors of a color printer, printing out an image, and adding
artistic elements. See Spec: 1-4. Claim 1 is representative of the invention
and reproduced below:
1. A method of producing a piece of artwork using a
computer-controlled color printer capable of printing
at least three colors, comprising:
(a) inputting or selecting a multicolor image so that
it is provided in the computer;
(b) selectively disabling one or more of the colors,
while not disabling all of the colors besides black, of
the printer to insure little or none of the one or more
disabled colors is printed by the printer;
(c) with the printer, printing the non-disabled color
or colors of the image onto a substrate; and then
(d) acting upon the substrate c) to add artistic
elements to the substrate to produce an artwork.

REFERENCES
Abram US 2002/0003631 A1 Jan. 10, 2002

Kohno US 6,749,282 B2 Jun. 15, 2004
(filed Feb. 22, 2001)

1 Claims 2, 4, and 18-19 were cancelled in an Amendment filed 11 October
2007.
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REJECTIONS AT ISSUE
Claims 1, 3, 5-10, 12-17, and 20-25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Abram. Ans. 3-14.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Abram in view of Kohno. Ans. 14.
ISSUES
Rejection of claims 1, 3, 5-10, 12-17, and 20-25 under 35 U.S.C. § 103(a) as
being unpatentable over Abram
Independent claims 1 and 24 and Dependent claims 3, 5-10, 12-17, 23, and
25
Appellant argues on page 7 of the Appeal Brief and pages 4-5 of the
Reply Brief that the Examiner’s rejection of claims 1, 3, 5-10, 12-17, and
23-25 is in error. Appellants argue that Abram does not disclose selectively
disabling one or more of the colors, as required by independent claims 1 and
24. App. Br. 7; Reply Br. 4-5.
Thus, Appellant’s contentions with respect to claims 1, 3, 5-10, 12-17,
and 23-25 present us with the issue: Has that the Examiner erred in finding
that Abram discloses selectively disabling one or more of the colors?2

2 Appellant makes additional arguments regarding claims 1, 3, 5-10, 12-17,
and 20-25. App. Br. 3-10; Reply Br. 1-6. We do not reach these additional
issues since whether Abrams discloses selectively disabling one or more
colors is dispositive of the case.
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Independent claim 20
Appellant argues on pages 5-9 of the Appeal Brief and pages 4-6 of
the Reply Brief that the Examiner’s rejection of claim 20 is in error.
Appellant argues that Abram does not disclose “a thermal inkjet printer
having an active black inkjet cartridge and at least one active primary color
inkjet cartridge.” App. Br. 7. Appellant additionally agues that Abram does
not disclose disabling 80-100% of the black or near black color from the ink
cartridge and printing a substantially accurate representation of the image
without 80-100% of the black or near black color. App. Br. 7; Reply Br. 4.
Thus, Appellant’s contentions with respect to claim 20 present us with
two issues: (1) Has the Examiner erred in finding that Abram discloses a
thermal inkjet printer having an active black inkjet cartridge and at least one
active primary color inkjet cartridge? (2) Has the Examiner erred in finding
that Abram discloses disabling 80-100% of the black or near black color
from the ink cartridge and printing a substantially accurate representation of
the image without 80-100% of the black or near black color?
Dependent claim 21
Appellant argues on page 9 of the Appeal Brief that the Examiner’s
rejection of claim 21 is in error. Claim 21 depends upon claim 20 and
contains similar limitations to claim 20. Appellant presents the same issues
with respect to claim 20. App. Br. 9. Additionally, Appellant argues that
Abram does not disclose applying acrylic paint to a portion of the substrate.
App. Br. 9.
Thus, Appellant’s contentions with respect to claim 21 present us with
the same issue as claim 20 and the additional issue: Has the Examiner erred
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in finding that Abram discloses applying acrylic paint to a portion of the
substrate?
Dependent claim 22
Appellant argues on page 9 of the Appeal Brief that the Examiner’s
rejection of claim 22 is in error. Claim 22 depends upon claim 20 and
contains similar limitations to claim 20. Appellant presents the same issues
with respect to claim 20. App. Br. 9. Additionally, Appellant argues that
Abram does not disclose utilizing 30 lb. matte paper. App. Br. 9.
Thus, Appellant’s contentions with respect to claim 22 present us with
the same issue as claim 20 and the additional issue: Has the Examiner erred
in finding that Abram discloses utilizing 30 lb. matte paper?
Rejection of claim 11 under 35 U.S.C. § 103(a) as being unpatentable over
Abram in view of Kohno
Appellant argues on pages 10-11 of the Appeal Brief and page 6 of
the Reply Brief that the Examiner’s rejection of claim 11 is in error. Claim
11 is dependent upon claim 1 and contains similar limitations to claim 1.
Appellant presents the same issue with respect to claim 1. App. Br. 10-11;
Reply Br. 6. Thus, Appellant’s arguments with respect to the Examiner’s
rejection of claim 11 presents us with the same issue as claim 1.3

3 Appellant makes additional arguments with respect to claim 11. App. Br.
10-11; Reply Br. 6. We do not reach these additional issues since the issue
addressed with respect to claim 1 is dispositive of the case.
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FINDINGS OF FACT
Appellant’s Specification
1. Appellant’s invention uses inkjet, laser printers, or any type of
computer controlled color printer that prints in more than one color.
Spec. 1:8-11.
2. In creating a final piece of art, many types of art techniques may be
used to apply color and texture, including: using a paint brush to apply
paint, using a palette knife to apply paint or wax, and incorporating
foreign materials into artwork. All of these techniques are well-
known in the art. Spec. 8:8-10.
3. Printers can use many types of substrates that receive and retain ink,
including paper. Types of known papers include: twenty-four pound
or greater bond wood paper, glossy photo paper, cotton hemp or flax
paper, and thirty pound or greater matte finish photo paper. Spec. 7-8.
Abram
4. Abram discloses producing coloring book images from digital images.
¶ [0002].
5. Digital images are uploaded to a client. A line-art image is rendered
from the digital image and a coloring book image is formatted from
the line-art image. The coloring book image is then printed. ¶ [0025].
6. Color samples are generated from the digital image and either a fixed
or programmable palette of colors can be assigned to areas of the
coloring book. A color-by-numbers coloring book image may be
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created by printing index numbers and a color that corresponds to a
sample color on the coloring book image. ¶ [0028].

PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).
On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Rejection of claims 1, 3, 5-10, 12-17, and 20-25 under 35 U.S.C. § 103(a) as
being unpatentable over Abram
Independent claims 1 and 24 and Dependent claims 3, 5-10, 12-17, 23, and
25
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1 and 24 and dependent claims 3, 5-10, 12-
17, 23, and 25. Independent claim 1 recites “selectively disabling one or
more of the colors, while not disabling all of the colors besides black, of the
printer to insure little or none of the one or more disabled colors is printed
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by the printer.” Independent claim 24 recites similar limitations. Dependent
claims 3, 5-10, and 12-17 depend upon claim 1 and dependent claim 25
depends upon claim 24 and, therefore, also recites similar limitations to their
independent claims. Appellant argues that Abrams does not selectively
disable any of the colors. App. Br. 5; Reply Br. 4. We agree.
Abram discloses a programmable or fixed palette of colors that is
assigned to an image area of the coloring book image. FF 6. In order to
create a color-by-numbers coloring book image, an index number assigned
to a corresponding sample color and the color itself may be printed with the
coloring book image. FF 6. The Examiner finds that since the palette is
programmable, Abram discloses that a user selects colors to be printed
and/or not printed on the storyboard. Ans. 16. The Examiner interprets the
ability to select colors to be printed as “abling” the colors and disabling all
the other colors. Ans. 16. We disagree. The ability to select colors to be
printed is not the same as selectively disabling colors. “Selectively
disabling” a color implies a specific intent by a user not to print a particular
color, just as selectively printing a color requires specific intent by a user to
print a particular color. Abram discloses that sample colors are chosen for
the palette. FF 6. While these sample colors may be chosen and printed,
nowhere in Abrams does it discuss or disclose preventing other colors from
being printed by the printer. Since Abram does not disclose a specific intent
not to print a color, we will not sustain the Examiner’s rejection of claims 1,
3, 5-10, 12-17, and 23-25.
Independent claim 20
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 20. Claim 20 recites, in the preamble, “[a]
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method of producing a work of art using a thermal ink-jet printer having an
active black ink cartridge and at least one active primary color ink
cartridge.” Appellant argues that Abram does not disclose a thermal inkjet
printer with black and color cartridges. App. Br. 7. The Examiner does not
give any patentable weight to this portion of the claim since it is in the
preamble and the process steps or structural limitations in the body of the
claim stand alone. Ans. 18. As a result, this limitation need not be found in
prior art. However, the Examiner finds that inkjet printing has been used for
many years and is therefore well known in the art. Ans. 18. In addition,
Appellant’s own Specification admits that inkjet and laser printers that print
more than one color are well known. FF 1. Thus, we do not find
Appellant’s arguments to be persuasive.
Claim 20 additionally recites “(b) removing the active black ink
cartridge from the printer, or controlling the printer with software, to disable
from about 80-100% the capability of the printer to print black and near
black while not significantly disturbing operation of the active primary
colors cartridge; [and] (c) with the printer, printing a substantially accurate
representation of the image, but without about 80-100% of the black and
near black, onto a substrate of paper or canvas.” Appellant argues that not
printing black for line art is contrary to the teachings of Abram and that
Abram does not disclose printing a substantially accurate representation of
the image without 80-100% of the black and near black. App. Br. 7-8. We
disagree. Abram teaches rendering a line-art image from a digital image and
formatting and printing a coloring book image from the line-art image. FF
5. Abram does not preclude the ability to print the coloring book image that
is formatted from the line-art image in a different color other than black.
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Therefore, Abram does not preclude disabling 100% the capability of the
printer to print black and near black. As a result, Appellant’s arguments are
not found to be persuasive and we sustain the Examiner’s rejection of claim
20.
Dependent claim 21
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 21. Claim 21 contains similar limitations and
is dependent upon claim 20. Appellant presents many of the same
arguments discussed above with respect to claim 20. App. Br. 9. Therefore,
we do not find Appellant’s arguments to be persuasive.
Appellant’s additional argument that Abram does not disclose
applying acrylic paint to portions of the substrate is also not persuasive.
App. Br. 9. While it is true that Abram does not specifically disclose
applying acrylic paint to portions of the substrate, Appellant has indicated in
Appellant’s own Specification that there are several known art techniques to
apply color and texture to produce a final piece of art. FF 2. For instance,
Appellant indicates that using a paint brush to apply paint, using a palette
knife to apply paint or wax, or incorporating foreign materials into the
artwork are well known. FF 2. Therefore, using a well known method of
applying acrylic paint to Abram’s coloring book image is nothing more than
using a known art technique to add color and texture to a coloring book. As
a result, Appellant’s argument is not found to be persuasive and we sustain
the Examiner’s rejection of claim 21.
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Dependent claim 22
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 22. Claim 22 contains similar limitations and
is dependent upon claim 20. Appellant presents many of the same
arguments discussed above with respect to claim 20. App. Br. 9. Therefore,
we do not find Appellant’s arguments to be persuasive.
Appellant’s additional argument that Abram does not disclose a
substrate that is at least thirty pound matte paper is also not persuasive.
App. Br. 9; Reply Br. 6. While it is true that Abram does not specifically
disclose thirty pound matte paper, Appellant has indicated in Appellant’s
own Specification that thirty pound matte finish photo paper is known to be
used to receive and retain ink dispensed by printers. FF 3. Therefore, using
well known thirty pound matte paper to print Abram’s coloring book image
is nothing more than using a known substrate for its known purpose of
receiving and retaining ink. As a result, Appellant’s argument is not found
to be persuasive and we sustain the Examiner’s rejection of claim 22.
Rejection of claim 11 under 35 U.S.C. § 103(a) as being unpatentable over
Abram in view of Kohno
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claim 11. Claim 11 ultimately depends upon claim 1 and
contains similar limitations discussed supra with respect to claim 1. The
Examiner has not found that the additional teachings of Kohno make up for
the deficiencies noted in the rejection of claim 1. Therefore, we sustain the
Examiner’s rejection of claim 11 for the reasons discussed supra with
respect to claim 1.
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SUMMARY
The Examiner’s decision to reject claims 1, 3, 5-10, 12-17, and 23
under 35 U.S.C. § 103(a) as being unpatentable over Abram is reversed.
The Examiner’s decision to reject claims 20-22 under 35 U.S.C.
§ 103(a) as being unpatentable over Abram is affirmed.
The Examiner’s decision to reject claim 11 under 35 U.S.C. § 103(a)
as being unpatentable over Abram in view of Kohno is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a)(1)(iv).
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AFFIRMED-IN-PART

ELD

ROBERT A. VANDERHYE
801 RIDGE DR.
MCLEAN, VA 22101

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