Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Sep 21, 2020

15327923 - (D) (P.T.A.B. Sep. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/327,923 01/20/2017 Steven Holland 84589556 7507
22879 7590 09/21/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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
jessica.pazdan@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 STEVEN HOLLAND, JOHN D. WILCOX,
CHARLES M. REKIERE, and SEAN MICHAEL COLLISON
____________

Appeal 2019-003674
Application 15/327,923
Technology Center 2100
____________

Before CARL L. SILVERMAN, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 3–15. Appeal Br. 7, 14, 17. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies the
real party in interest as Hewlett-Packard Development Company, L.P.
Appeal Br. 3.
Appeal 2019-003674
Application 15/327,923

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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention generally relates to a method and system for
producing multiple pages for output (such as by printing or displaying),
where such pages share an image or a portion of an image, without
duplicating the shared image portion in memory. Spec. ¶¶ 8–10, 12,
Figs. 1–2. According to the Specification, “to avoid such duplication of an
image portion that is to be shared across multiple pages, attribute
information can be generated for the shared image portion,” where “at least
some of the versions of the attribute information can differ due to different
arrangements of the shared image portion in respective pages.” Spec. ¶ 11.
“The manner in which a shared image portion is arranged within a page can
include one or some combination of: a position of the shared image portion,
an orientation of the shared image portion, or another feature that affects a
placement or other characteristic of the shared image portion in the page.”
Spec. ¶ 11. A media production system, such as a printer, produces (prints)
the pages with the shared image based on the attribute information.
Spec. ¶ 12, Fig. 1. According to the Specification, using this attribute
information, as opposed to multiple duplicate images or image portions,
results in more efficient use of memory storage capacity. Spec. ¶¶ 10, 25.
Appeal 2019-003674
Application 15/327,923

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Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method comprising:
receiving, by a system including a processor, an image to
be shared across a plurality of pages;
computing, by the system, versions of attribute
information for the image, each of the versions of the attribute
information associated with a respective different page of the
plurality of pages,
wherein a first version of the attribute information
is associated with a first page of the plurality pages and is
different from a second version of the attribute
information that is associated with a second page of the
plurality of pages, and
each version of the attribute information specifying
a respective arrangement of at least a portion of the image
in the respective page of the plurality of pages; and
producing, by the system, the plurality of pages for output
on a single device according to the respective versions of the
attribute information,
wherein the produced plurality of pages includes the
first page configured according to the first version of the
attribute information and the second page configured
according to the second version of the attribute
information.
Appeal Br. 19 (Claims App.).
The Applied References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Redin US 4,677,575 June 30, 1987
Yuasa US 2003/0016390 A1 Jan. 23, 2003
Dorai US 2004/0099741 A1 May 27, 2004
Wyler US 2007/0206221 A1 Sept. 6, 2007
Appeal 2019-003674
Application 15/327,923

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The Examiner’s Rejections
The Examiner made the following rejections of the claims on appeal:
Claims 1, 3, and 14 stand rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Wyler. Advisory Act. 2–4.
Claims 4, 5, 7–10, 12, 13, and 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Wyler and Yuasa. Advisory
Act. 5–9.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Wyler and Redin. Advisory Act. 9–10.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Wyler and Dorai. Advisory Act. 10–11.
We note that in the Advisory Action the Examiner withdrew “the
objection to claim 10; and the rejection of claims 1–15 under 35 U.S.C.
§ 112(b); and the rejection of claims 1–15 under 35 U.S.C. § 101,” which
the Examiner had made in the Final Action. Advisory Act. 11; see Final
Act. 3–6. As such, we do not address this objection and these rejections
herein.

ANALYSIS2
Appellant disputes, inter alia, the Examiner’s findings that Wyler
anticipates independent claims 1 and 14 and, in combination with Yuasa,
renders obvious independent claim 10. Appeal Br. 7–17; Reply Br. 6–14.

2 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed December 17, 2018 (“Appeal Br.”); Appellant’s Reply Brief filed
April 8, 2019 (“Reply Br.”); the Examiner’s Answer mailed February 8,
2019 (“Ans.”); the Final Office Action mailed August 3, 2018 (“Final
Act.”); the Examiner’s Advisory Action resulting from the After Final
Appeal 2019-003674
Application 15/327,923

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Wyler relates generally to “provid[ing] improved functionalities for
displaying web content on mobile communicators.” Wyler ¶ 9. In
operation, “when a user requests a web page, such as web page 100, the web
page is downloaded to a server, such as server 106 (FIG. 1) and converted to
a tree representation of the Document Object Model (DOM) thereof.”
Wyler ¶ 335. Wyler discloses that “[a] web page which is adapted for each
particular model of mobile communicator is generated using information
received by the server, identifying the mobile communicator which is
requesting the web page, and using the DOM representation.” Wyler ¶ 337.
Wyler also discloses that, during analysis of the web page, “fragmented
images are identified,” and “[f]or each fragmented image, the server creates
a file, typically an XML file, which includes information related to each of
the sub-images and to the whole image.” Wyler ¶ 780. Subsequently, “[t]he
adapted page, including [a] cluster of navlinks, is supplied to the mobile
communicator, such as mobile communicator 104.” Wyler ¶ 339. In sum,
Wyler discloses a system for manipulated web pages downloaded to a server
for display on different models of mobile devices.
To serve as an anticipatory reference, “the reference must disclose
each and every element of the claimed invention, whether it does so
explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009). The Examiner finds Wyler anticipates claims 1 and 14, and, as
relevant here, both the limitations of “receiving . . . an image to be shared
across a plurality of pages” and “producing . . . the plurality of pages for
output on a single device according to the respective versions of the attribute

Consideration Program Decision mailed October 15, 2018 (“Advisory
Act.”); and Appellant’s Specification filed January 20, 2017 (“Spec.”).
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Application 15/327,923

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information.” Ans. 3–13; Advisory Act. 3. In doing so, the Examiner finds:
(1) “[a] received image is ‘shared across a plurality of pages’ when Wyler
creates a plurality of device adapted web pages” (Ans. 6); and (2) “Wyler
does directly disclose [outputting] a plurality of pages on a single device”
(Ans. 10; see id. at 11 (“Wyler unquestionably discloses that the generated
pages are output, and are thus ‘for output.’”)).
As a preliminary matter, based on the present record, we do not adopt
the Examiner’s determination that:
On its face, the limitation “producing . . . the plurality of pages
for output on a single device according to the respective versions
of the attribute information” is subject to two, mutually exclusive
interpretations: (1) “producing . . . the plurality of pages for
output, wherein the pages are output on a single device
according to the respective versions of the attribute information;”
or (2) “producing . . . the plurality of pages for output, where the
pages are produced on a single device according to the
respective versions of the attribute information.”
Ans. 9. Notably, notwithstanding this statement, the Examiner has not
rejected the subject claims and claim limitation as being indefinite or lacking
written description under 35 U.S.C. § 112. Instead, in both the Final Action
and Advisory Action, the Examiner finds the subject limitation disclosed by
Wyler’s description of “producing the custom webpage including the image
for output on ‘a particular model of mobile communicator’ (i.e., a single
device),” which targets “interpretation (1)” above, namely producing pages
so that such pages are configured for output on a single device. Final Act. 7
(emphasis added); Advisory Act. 3. The Examiner does add “if this
limitation is intended to indicate that the production by the system is on a
single device, Wyler discloses . . . that these steps are performed by a server
(i.e., a single device).” Final Act. 7; Advisory Act. 3.
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Application 15/327,923

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Regardless, the Specification explains, for example, in reference to an
example media production system in Figure 1, that “page producer
engine 102 is able to produce multiple pages 106 for output by the media
production system 100,” and that “the media production system 100 can be
a printer to print the pages 106.” Spec. ¶ 12 (emphases added), Fig. 1.
We find, in view of and consistent with the Specification as a whole, that the
broadest reasonable, not possible, interpretation of “producing . . . the
plurality of pages for output on a single device according to the respective
versions of the attribute information” is “producing (or creating) the
plurality of pages so that such pages are configured for output on a single
device according to respective versions of attribute information.” See In re
Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017) (The broadest
reasonable interpretation differs from the broadest possible interpretation.);
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (“While
the broadest reasonable interpretation standard is broad, it does not give the
Board an unfettered license to interpret the words in a claim without regard
for the full claim language and the written description.”) (citations omitted);
Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (The
broadest reasonable interpretation must take into account “the context of the
entire patent.”) (emphasis added) (quoting Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (Fed. Cir. 2005) (en banc)); see also Reply Br. 9 (“[T]he
single image that is shared across a plurality of pages is outputted on a single
device.”).
Appellant argues “Wyler does not teach ‘receiving . . . an image to be
shared across a plurality of pages;’ and ‘producing . . . the plurality of pages
for output on a single device according to the respective versions of the
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Application 15/327,923

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attribute information.’” Reply Br. 12 (emphasis added). More specifically,
Appellant argues: “In sum, Wyler describes modifying a web page to be sent
to different devices, such that each device can properly display the web
page. In contrast, claim 1 requires an image to be shared across a plurality
of pages and the plurality of pages is being outputted to a single device.”
Reply Br. 12. Appellant also argues:
Even if one skilled in the art agreed with the Examiner’s
conclusion that Wyler describes a plurality of web pages, each
with different attribute, then the first page of the plurality of
pages would be on one model device and the second page of the
plurality of pages would be on a second model device/other
model device. Thus, given that each web page is on a different
model device, it would not be possible to output the plurality of
pages on a single device.
Appeal Br. 11. We find Appellant’s argument persuasive, and agree that the
Examiner has not provided sufficient evidence or technical reasoning to
show how Wyler explicitly or inherently discloses the combination of
limitations at issue (recited above). For example, even if Wyler discloses
creating or producing a plurality of device-adapted web pages, such as
adapting a given web page for output or display on mobile device model A
and adapting that same web page for output or display on mobile device
model B, and doing so for a plurality of web pages for each mobile device A
and B, we are unpersuaded on the present record that such a description
explicitly or inherently discloses producing (or creating) the plurality of web
pages so that the pages are configured for output on a single device, such as
on only mobile device A, according to different versions of attribute
information. Because we find this issue dispositive here, we do not address
Appellant’s other arguments.
Appeal 2019-003674
Application 15/327,923

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Accordingly, based on the present record, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 102(a)(1) of independent claim 1.
For similar reasons, we do not sustain the Examiner’s rejection under
35 U.S.C. § 102(a)(1) of independent claim 14, which recites commensurate
limitations. We also do not sustain the Examiner’s rejection under
35 U.S.C. § 102(a)(1) of claim 3, which depends therefrom.
In addition, because the Examiner has not persuasively shown how
the other cited art, particularly Yuasa, remedies the deficiency in Wyler (see
Ans. 15; Advisory Act. 7–8), we do not sustain the Examiner’s rejection
under 35 U.S.C. § 103 of independent claim 10, which, in relevant part,
recites limitations commensurate with those in independent claims 1 and 14
for which the Examiner relied upon disclosure in Wyler. We also do not
sustain the Examiner’s rejection under 35 U.S.C. § 103 of claims 4–9, 11–
13, and 15, which variously depend from independent claims 1, 10, and 14.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1, 3, 14 102(a)(1) Wyler 1, 3, 14
4, 5, 7–10,
12, 13, 15
103 Wyler, Yuasa 4, 5, 7–10,
12, 13, 15
6 103 Wyler, Redin 6
11 103 Wyler, Dorai 11
Overall
Outcome
1, 3–15

REVERSED