Ex Parte Wiechers

Board of Patent Appeals and Interferences

Jun 4, 2009

10635437 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEJANDRO WIECHERS
_____________

Appeal 2009-3725
Application 10/635,437
Technology Center 2600
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Decided:1 June 4, 2009
____________

Before MAHSHID D. SAADAT, KARL D. EASTHOM,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-8 and 18-23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

INVENTION
Appellant’s claimed invention is directed to a method, program
product, and system for performing automated packaging in a commercial
printing environment including a designer location and a print service
provider location (Spec. ¶ [0012]). According to the invention, a production
ready file is created at the designer location using updated device
configuration information from the print service provider location, where the
production ready file includes packaging instructions (Spec. ¶ [0012]). The
production ready file is provided to the print service provider location via an
electronic network and the printed output is packaged at a packaging device
in accordance with packaging instructions from the production ready file
(Spec. ¶ [0012]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
A method of performing automated packaging on a
printed output in a commercial printing environment that
includes a designer location and a print service provider
location, said method comprising:
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creating at the designer location a digital file that
represents an image to be printed;
receiving at the designer location from the print service
provider location real time configuration information regarding
a print production device at the print service provider location;
generating at the designer location packaging instructions
that describe how the printed output is to be packaged for
shipment after printing, the packaging instructions being
generated relative to the received configuration information;
creating at the designer location a high performance file
that contains the digital file and the packaging instructions;
submitting the high performance file from the designer
location to the print service provider location via an electronic
network; and
generating at the print service provider location a printed
output of the digital file and packaging the printed output at the
print service provider location in accordance with the packaging
instructions contained within the high performance file.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hansen US 6,407,820 B1 Jun. 18, 2002

The following rejection is before us for review:
The Examiner rejected claims 1-8 and 18-23 under 35 U.S.C. § 102(b)
as being anticipated by Hansen.
Appellant argues claims 1-8 as a group, with claim 1 as representative
(App. Br. 8-16). Furthermore, Appellant relies on the same arguments
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presented for claims 18-23 (App. Br. 17-18), and thus, these claims also
stand or fall with claim 1.2 See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Creating at the Designer Location a Digital File
Appellant contends that Hansen’s job preparation is an action, not a
location, and Hansen explicitly states that the action is performed at the print
shop, not at a designer location wherein the document to be printed was
created (App. Br. 9).
The Examiner finds that just because the job preparation stations are
located in the print shop, it does not mean that they do not constitute
designer locations (Ans. 10). The Examiner finds that any location that can
create/modify and submit a print job over the network can be a designer
location (Ans. 10).
The first issue before us, then, is as follows:
Has Appellant shown that the Examiner erred by finding that Hansen
teaches “creating at the designer location a digital file that represents an
image to be printed” as recited in representative claim 1?
Real Time Configuration Information Regarding a Print Production Device
Appellant argues that a disclosure of a print server being coupled to
output devices is not a teaching of receiving “real time configuration

2 Only arguments made by Appellant have been considered in this decision.
Arguments which Appellant could have made but did not make in the Brief
have not been considered and are deemed waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).
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information,” and neither is a general reference to job attributes and load
balancing (App. Br. 12).
The Examiner responds that Hansen teaches that the print server
performs automated processes including spooling and queuing jobs and job
content, directing the jobs to specific production output devices, and load
balancing among the various production output devices (Ans. 11; col. 7, l.
63-col. 8, l. 1). The Examiner further finds that Hansen teaches that the
print server 120 is coupled to the job preparation stations 116 (Ans. 11; col.
7, ll. 42-46). The Examiner also finds that Hansen teaches that the workflow
management software provides visual feedback of each of the output devices
status to the user such as the current job queue (Ans. 11; col. 13, ll. 4-10).
The Examiner reasons that Hansen’s reference to the “current” job queues
feedback constitutes information being exchanged in real time (Ans. 11).
The second issue before us is as follows:
Has Appellant shown that the Examiner erred by finding that Hansen
teaches “receiving at the designer location . . . real time configuration
information regarding a print production device at the print service provider
location” as recited in representative claim 1?
Generating at the Designer Location Packaging Instructions and Packaging
the Printed Output
Appellant contends that Hansen does not disclose generating at the
designer location packaging instructions that describe how the printed output
is packaged for shipment (App. Br. 11).
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The Examiner responds that Hansen teaches that job preparation
includes preparing the documents for printing according to the instructions
in the ticket, which includes all of the instructions for completing the
production printing task (Ans. 12; col. 5, ll. 11-29). Furthermore, the
Examiner finds that Hansen teaches various degrees of finishing, such as
stapling or binding (Ans. 12; col. 8, ll. 7-20). The Examiner reasoned that
the job preparation stations are the designer location and the instructions for
completing the production printing include finishing tasks such as binding.
The Examiner further states that how the printed document is to be bound
constitutes the packaging instructions (Ans. 13).
The third issue before us is as follows:
Has Appellant shown that the Examiner erred by finding that Hansen
teaches “generating at the designer location packaging instructions” and
“packaging the printed output” as recited in representative claim 1?

FINDINGS OF FACT
The relevant facts include the following:
1. Hansen teaches that job preparation workstations 116 provide the
print shop with the capability to add value to the print production process by
modifying the documents provided by the customer by adding features such
as adding page numbers, or adjusting page layout, or aligning the output to
account for binding (col. 6, ll. 51-59).
2. Hansen also teaches that job preparation stations 114 provide the
capability to fix errors in the documents such as removing artifacts in
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scanned images and masking over unwanted text or markings (col. 6, ll. 59-
67).
3. Hansen teaches that the print server performs automated processes
including spooling and queuing jobs and job content (i.e., the document),
directing the jobs to specific production output devices based on the
attributes of the print job, and load balancing among the various production
output devices to keep all printers fully utilized (col. 7, l. 61-col. 8, l. 1).
4. Hansen further teaches that the print server 120 is coupled to the job
preparation stations 116 (col. 7, ll. 42-46).
5. Hansen also teaches that the workflow management software provides
visual feedback of each of the output devices status to the job preparation
workstations 116 including information such as the “current job queues”
(col. 13, ll. 4-10).
6. Hansen teaches that front computers 114 provide the ability to
generate an electronic ticket containing all the instructions for completing
the production printing task (col. 5, ll. 11-29).
7. Hansen further teaches various degrees of finishing processes, such as
stapling or binding (col. 8, ll. 7-20).
8. The term “packaging” is defined, in pertinent part as: “to present (as a
product) in such a way as to heighten its appeal to the public.” Merriam-
Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/packaging (last visited May 29, 2009).
9. Appellant’s own definition of packaging is: “[p]ackaging refers to the
organization and preparation of the finished output in a cost-effective
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manner so that it may be shipped to the appropriate parties” (Spec. ¶ [0009]
(emphasis added)).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. Inc., v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
The claim terms should be given their broadest reasonable meaning in
their ordinary usage as such claim terms would be understood by one skilled
in the art by way of definitions and the written description. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
The claims, of course, do not stand alone. Rather, they are part
of “a fully integrated written instrument” . . . consisting
principally of a specification that concludes with the claims.
For that reason, claims “must be read in view of the
specification, of which they are a part.” . . . . [T]he
specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).

ANALYSIS
Creating at the Designer Location a Digital File
Hansen teaches that job preparation workstations 116 provide the
print shop with the capability to add value to the print production process by
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modifying the documents provided by the customer by adding features such
as adding page numbers, or adjusting page layout, or aligning the output to
account for binding (Finding of Fact 1). Hansen also teaches that job
preparation stations 114 provide the capability to fix errors in the documents
such as removing artifacts in scanned images and masking over unwanted
text or markings (Finding of Fact 2). Thus, Hansen does teach “creating at
the designer location a digital file that represents an image to be printed”
(i.e., digital file created at workstations 116 and 114 to be printed, which
includes modifications and corrections) as recited in representative claim 1.
The claim language does not preclude the “designer location” from being
within the “print service provider location.”
Therefore, we are not persuaded by Appellant’s argument that
Hansen’s job preparation is an action, not a location (App. Br. 9), because
workstations 114 and 116 do in fact constitute a designer location.
Real Time Configuration Information Regarding a Print Production Device
Hansen teaches that the print server performs automated processes
including spooling and queuing jobs and job content (i.e., the document),
directing the jobs to specific production output devices based on the
attributes of the print job, and load balancing among the various production
output devices to keep all printers fully utilized (Finding of Fact 3). Hansen
further teaches that the print server 120 is coupled to the job preparation
stations 116 (Finding of Fact 4). Hansen also teaches that the workflow
management software provides visual feedback of each of the output devices
status to the job preparation workstations 116 including information such as
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the “current job queues” (Finding of Fact 5). Thus, Hansen teaches
receiving at the designer location (i.e., job preparation stations 116) real time
configuration information regarding a print production device at the print
service provider location (i.e., feedback of each of the output devices status
such as current job queues). In order for the job queues to be current, that
information must necessarily be transmitted in real time. Accordingly, we
do not agree with Appellant’s argument (App. Br. 12) that Hansen only
discloses that a print server is coupled to output devices and that Hansen
only generally refers to job attributes and load balancing. As stated supra,
Hansen teaches real time configuration information being received at the
designer location (Findings of Fact 3-5).
Generating at the Designer Location Packaging Instructions and Packaging
the Printed Output
Hansen teaches that front computers 114 provide the ability to
generate an electronic ticket containing all the instructions for completing
the production printing task (Finding of Fact 6). Hansen further teaches
various degrees of finishing, such as stapling or binding (Finding of Fact 7).
The term “packaging” is defined, in pertinent part: “to present (as a product)
in such a way as to heighten its appeal to the public” (Finding of Fact 8).
Binding does heighten the appeal of the product to the public. It then
follows, that binding constitutes packaging, and consequently, instructions
on how the documents will be bound constitute packaging instructions.
Furthermore, Appellant’s own definition of packaging is: “[p]ackaging
refers to the organization and preparation of the finished output in a cost-
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effective manner so that it may be shipped to the appropriate parties”
(Finding of Fact 9). Accordingly, based on Appellant’s own definition,
binding, which is a preparation of the finished output, does in fact constitute
packaging. The claim term “packaging” was given its broadest reasonable
meaning in its ordinary usage as such a claim term would be understood by
one skilled in the art by way of definitions (i.e., dictionary definition of
packaging) and the written description (i.e., Appellant’s own Specification
definition of packaging). See Morris, 127 F.3d at 1054.
Thus, we do not agree with Appellant’s argument that Hansen does
not disclose generating at the designer location packaging instructions that
describe how the printed output is packaged for shipment (App. Br. 11).
For all of the above stated reasons, Appellant has not persuaded us
that the Examiner erred in rejecting representative claim 1 and claims 2-8
and 18-23, which fall with claim 1. Accordingly, we sustain the Examiner’s
rejection of those claims.

CONCLUSIONS
1. Under 35 U.S.C. § 102, Appellant has not shown that the Examiner
erred by finding that Hansen teaches “creating at the designer location a
digital file that represents an image to be printed” as recited in representative
claim 1 and claims 2-8 and 18-23, which fall with claim 1.
2. Under 35 U.S.C. § 102, Appellant has not shown that the Examiner
erred by finding that Hansen teaches “receiving at the designer
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location . . . real time configuration information regarding a print production
device at the print service provider location” as recited in representative
claim 1 and claims 2-8 and 18-23, which fall with claim 1.
3. Under 35 U.S.C. § 102, Appellant has not shown that the Examiner
erred by finding that Hansen teaches “generating at the designer location
packaging instructions” and “packaging the printed output” as recited in
representative claim 1 and claims 2-8 and 18-23, which fall with claim 1.

ORDER
The decision of the Examiner to reject claims 1-8 and 18-23 under 35
U.S.C. § 102 is affirmed.
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

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