Ex Parte Walker

Board of Patent Appeals and Interferences

Dec 11, 2009

10729162 (B.P.A.I. Dec. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERIC WALKER
__________

Appeal 2009-005396
Application 10/729,162
Technology Center 2100
__________

Decided: December 11, 2009
__________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-10, 12, 16-21. Claims 11 and 13-15 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2009-005396
Application 10/729,162

2
Invention
The invention relates to computer-implemented automated electronic
product design (Spec. 1).
Independent claim 1 is illustrative:
1. A computer-implemented method for generating a color
image, the method comprising
associating at least one color with a markup language
element capable of accepting image content,
applying a grayscale image as content of the element, and
applying the at least one color associated with the
element as at least one component color of the content
image.
References
The Examiner relies upon the following references as evidence in
support of the rejections:
Coloring.com, Coloring.com – free online interactive coloring pages
and coloring book, (identified as pages 1-31) (Nov. 29, 2002), available at
http://web.archive.org/web/20021129165101/http://www.coloring.com/
(“Coloring.com”).

Joe Habraken, Sams Teach Yourself Microsoft Publisher 2000 in 10
Minutes, ProQuest Safari Tech Books Online (identified as pages 1-16)
(Sams Publishing, 1999) (“Sams Publishing”).
Rejections
Claims 1, 3, 4, 6-8, 10, 16-18, 20, and 21 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Coloring.com.
Appeal 2009-005396
Application 10/729,162

3
Claims 2, 5, 9, 12, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Coloring.com and Sams Publishing.
ISSUE 1
Appellant argues that “Coloring.com does not teach or suggest an
image container having grayscale image content” (App. Br. 12). Appellant
submits the Specification defines “a ‘grayscale’ image [as] one that is
‘rendered in multiple color tones based on the combination of two
component colors’” (App. Br. 13). Appellant further argues that “the black
outlines of the shape elements [of Coloring.com] are not even part of the
image content” (id.).
Issue: Did Appellant demonstrate that the Examiner erred in finding
that Coloring.com teaches an element having a grayscale image as its
content?
ISSUE 2
Appellant argues that in Coloring.com “only one color can be selected
at any given time, and the selected color is used to fill the entire image
container” (App. Br. 16).
Issue: Did Appellant demonstrate that the Examiner erred in finding
that Coloring.com teaches replacing one of the color components of a
content image with a selected color?
Appeal 2009-005396
Application 10/729,162

4
ISSUE 3
Appellant argues that “Coloring.com fills its shapes as solid colors or
as image imports, and not as a pattern fill” (App. Br. 16).
Issue: Did Appellant demonstrate that the Examiner erred in finding
that Coloring.com teaches a grayscale image applied as pattern fill content
of a shape?
ISSUE 4
Appellant argues that Coloring.com is silent on the limitation of
“allowing the user to place an order for the production of one or more
products from [an] electronic product design” (App. Br. 18).
Issue: Did Appellant demonstrate that the Examiner erred in finding
that Coloring.com teaches allowing the user to place an order for the
production of one or more products from an electronic product design?
ISSUE 5
Appellant argues that “Sams Publishing teaches nothing about
component colors associated with grayscale images, and therefore does not
teach or suggest any mechanism for selecting and applying a component
color of a grayscale image” (App. Br. 19).
Issue: Did Appellant demonstrate that the Examiner erred in finding
that the combination of the Coloring.com and Sams Publishing references
teaches modifying a content image by replacing at least one of the color
components of the content image with at least one of the colors in a selected
group?
Appeal 2009-005396
Application 10/729,162

5
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Appellant’s Specification teaches that
Of particular relevance to the current invention are
“grayscale” images. As is well known in the art,
grayscale images are images containing multiple shades
or levels of gray. Depending on the system used to
create the grayscale image, from 16 to 256 gray levels
will typically be available to render the image, ranging
from white at one extreme of the range to black at the
other. . . . It will also be understood that the use of the
term “grayscale” or “grayscale image” does not
necessarily mean that the image is either stored or
displayed to the user in gray shades, but rather the terms
are used herein more broadly to refer generally to image
content intended to be rendered in multiple color tones
based on the combination of two component colors.
(¶ [0023]).
2. Coloring.com teaches applying a black and white (i.e.,
grayscale) image (pp. 8, 17) as content of a markup language
element (pp. 9-16).
3. Coloring.com teaches selecting a color (p. 20) and then
selecting a portion of image content represented as a shape
(p. 21), such that the system replaces a color component for that
portion of content with the selected color (p. 22).
4. Appellant admits that “Coloring.com provides the user
with a color palette which includes a number of different
Appeal 2009-005396
Application 10/729,162

6
individual colors” (App. Br. 16). “[O]ne color can be selected
at any given time, and the selected color is used to fill the entire
image container” (id.).
5. Coloring.com shows a link that enables a user to print the
graphic (p. 28).
6. Sams Publishing teaches a system that enables the user to
select a publication (p. 2-3) such as a business card design
(p. 3), and then to select a color scheme for the publication
(p. 3-4).
PRINCIPLES OF LAW
Claim interpretation
“In the patentability context, claims are to be given their broadest
reasonable interpretations. . . . [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) (citations omitted). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d
1473, 1477 (Fed. Cir. 1998).
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
Appeal 2009-005396
Application 10/729,162

7
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The 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
Issue 1
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal with respect to issue 1 on the basis of claim 1 alone. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellant argues that “[b]lack and white images are not ‘grayscale’
images as defined in [the] Specification” (App. Br. 13). For “grayscale” to
exclude images that are merely black and white, the Specification must be
sufficiently clear so that an artisan would understand Appellant’s specialized
meaning. See Multiform Desiccants, 133 F.3d at 1477. Yet, the
Specification does not provide the requisite notice that black and white
images are to be excluded.
Appeal 2009-005396
Application 10/729,162

8
The Specification notes that grayscale images typically have 16 to 256
gray levels (FF 1). The Specification does not teach that images with a
smaller number of gray levels are not grayscale images. Instead, it teaches
that black and white are the colors at the extreme range in grayscale images
(FF 1), thus black and white images fit the description of 2 level grayscale
images.
The Specification provides a specialized meaning for “grayscale.”
“Grayscale,” as used in the Specification, is understood “more broadly to
refer generally to image content intended to be rendered in multiple color
tones based on the combination of two component colors” (FF 1) (emphasis
added). An artisan would understand that the tones in a grayscale image, as
specially defined, are not limited to tones formed by combining black and
white, but may include tones formed by two component colors in general.
This definition does not narrow the term “grayscale” to exclude black and
white images. Instead, this definition expands the term “grayscale” to
include images not necessarily “stored or displayed to the user in gray
shades” (FF 1).
Appellant argues that “the black outlines of the shape elements are not
even part of the image content” (App. Br. 13) because “[t]he outline remains
black and is unchangeable” (id.). However, nothing in the claims requires
that both component colors of the grayscale image be changeable.
Therefore, Coloring.com’s teaching of applying a black and white image as
content of a markup language element (FF 2) teaches an element having a
grayscale image as its content.
Appeal 2009-005396
Application 10/729,162

9
For at least these reasons, we find that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s 35 U.S.C. § 102(b) rejection of claims 1, 3, 4, 6-8,
10, 16-18, 20, and 21 or in the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 2, 5, 9, 12, and 19 with respect to this issue.
Issue 2
Coloring.com teaches selecting a color and a portion of image content
represented as a shape (FF 3). This results in the system replacing a color
component for that portion of image content with the selected color (FF 3).
This comports with Appellant’s admission that the selected color fills the
entire image container (i.e., the selected portion of image content) (FF 4).
As discussed previously, the black and white image content is a grayscale
image. Thus, Coloring.com teaches changing a color component (the
portion of image content represented as a shape) of a grayscale image.
For at least these reasons, we find that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s 35 U.S.C. § 102(b) rejection of claim 3 with respect
to this issue.
Issue 3
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal with respect to issue 3 on the basis of claim 4 alone. See 37
C.F.R. § 41.37(c)(1)(vii).
Appeal 2009-005396
Application 10/729,162

10
Appellant admits that Coloring.com teaches filling an entire image
container (i.e., the selected portion of image content) with a selected color
(FF 4). Yet, Appellant provided no arguments or evidence to show that a
solid fill is not a type of pattern fill.
For at least these reasons, we find that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s 35 U.S.C. § 102(b) rejections of claims 4 and 8 with
respect to this issue.
Issue 4
Coloring.com shows a link that enables a user to print the graphic
(FF 5). We agree with the Examiner’s unchallenged finding that
“request[ing] [a printout of] the electronic design [teaches] plac[ing] an
order for the production (printed copy) of the electronic product design”
(Ans. 17).
For at least these reasons, we find that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s 35 U.S.C. § 102(b) rejection of claim 21 with respect
to this issue.
Issue 5
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal with respect to issue 5 on the basis of claim 2 alone. See 37
C.F.R. § 41.37(c)(1)(vii).
Appeal 2009-005396
Application 10/729,162

11
Appellant argues that “Sams Publishing does not teach or suggest . . .
‘applying a grayscale image as content of the element’ (or similar
recitation), which is missing from Coloring.com” (App. Br. 19). As
discussed, we find that Coloring.com teaches an element having grayscale
image content. Moreover, Sams Publishing is related to publication design
systems (FF 6), which are closely related to the invention’s field of
computer-implemented automated electronic product design (Spec. 1).
Therefore, it would have been obvious to one of ordinary skill in the art to
combine the color scheme selection teachings of Sams Publishing (FF 6)
with Coloring.com’s teachings of applying a grayscale image as content of a
markup language (FF 2). This combination would have taught or suggested
modifying a content image by replacing at least one of the color components
of a content image (the grayscale image of Coloring.com) by replacing at
least one of the color components of the content image with at least one of
the colors in a selected group (the color scheme selection of Sams
Publishing).
For at least these reasons, we find that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s 35 U.S.C. § 103(a) rejection of claims 2, 5, 9, 12,
and 19 with respect to this issue.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not demonstrated:
Appeal 2009-005396
Application 10/729,162

12
1. that the Examiner erred in finding that Coloring.com teaches an
element having a grayscale image as its content (Issue 1);
2. that the Examiner erred in finding that Coloring.com teaches
replacing one of the color components of a content image with a selected
color (Issue 2);
3. that the Examiner erred in finding that Coloring.com teaches a
grayscale image applied as pattern fill content of a shape (Issue 3);
4. that the Examiner erred in finding that Coloring.com teaches
allowing the user to place an order for the production of one or more
products from an electronic product design (Issue 4); and
5. that the combination of the Coloring.com and Sams Publishing
references teaches modifying a content image by replacing at least one of the
color components of the content image with at least one of the colors in a
selected group (Issue 5).
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3, 4, 6-8, 10,
16-18, 20, and 21 under 35 U.S.C. § 102(b) and claims 2, 5, 9, 12, and 19
under 35 U.S.C. § 103(a).
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).

AFFIRMED

Appeal 2009-005396
Application 10/729,162

13

msc

VISTA PRINT USA, INC.
ATTN: PATENT COUNSEL
95 HAYDEN AVENUE
LEXINGTON MA 02421