Xerox Corporation

Patent Trials and Appeals Board

Oct 27, 2021

2020003184 (P.T.A.B. Oct. 27, 2021)

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.
15/299,730 10/21/2016 Jeremy Griffith 20160548US01 2388
81368 7590 10/27/2021
GIBB & RILEY, LLC
Frederick W. Gibb, III, Esq.
550M Ritchie Highway, #286
Severna Park, MD 21146
EXAMINER
SHIH, HAOSHIAN
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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):
support@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY GRIFFITH
Appeal 2020-003184
Application 15/299,730
Technology Center 2100
Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 5, 7, 8, 10, 11, 13–15, 17, 18, and 20, which are
all of the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Xerox Corp. as the real party in
interest. Appeal Br. 3.
Appeal 2020-003184
Application 15/299,730

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TECHNOLOGY
The application relates to “human readable sentences that are used to
represent complex color changes in a print driver.” Spec. ¶ 1.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below:
1. A method comprising:
providing an electronic display image having a wizard
menu option in a document printing menu to begin a natural
language wizard;
providing an electronic display image having a first wizard
question page in response to selection of said wizard menu
option, said first wizard question page displays only a menu of
colors, and said menu of colors includes icons of different colors;
providing an electronic display image having a second
wizard question page in response to selection of a selected color
from said menu of colors, said second wizard question page
displays only a menu of change magnitude and change
orientation phrases, and said menu of change magnitude and
change orientation phrases includes icons of change and
orientation;
providing an electronic display image having a third
wizard question page in response to selection of a change
magnitude and change orientation phrase from said menu of
change magnitude and change orientation phrases, said third
wizard question page displays only a menu of color characteristic
terms, and said menu of color characteristic terms includes icons
for types of changes;
creating, in response to selection of a color characteristic
term from said menu of color characteristic terms, a natural
language sentence by combining said selected color, said change
magnitude and change orientation phrase, and said color
characteristic term, wherein said icons of different colors
demonstrate different color changes to logically progress a user,
step by step, through said creating of said natural language
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Application 15/299,730

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sentence by displaying a real-time visualization of said natural
language sentence as said natural language sentence is being
created; and
altering, in response to said natural language sentence, a
color item by changing locations of said color item that have said
selected color according to said change magnitude and change
orientation phrase, and said color characteristic term.
REFERENCES
The Examiner relies on the following references as prior art:
Name Number Date
Glass US 8,510,100 B2 Aug. 13, 2013
Kajiyama US 2014/0281966 A1 Sept. 18, 2014
O’Leary US 2012/0131486 A1 May 24, 2012
Thurlow US 5,917,489 June 29, 1999
REJECTIONS
The Examiner makes the following rejections:
Claims Statute Basis Final Act.
1, 2, 4, 5, 182 § 103 Glass, Thurlow, Kajiyama 3–5
7, 8, 10, 11,
13–15, 17, 20
§ 103 Glass, Thurlow, Kajiyama, O’Leary 6–9
ISSUES
1. Did the Examiner err in finding a person of ordinary skill in the
art would have had reason to combine Glass with Thurlow and Kajiyama for
purposes of claim 1?

2 Appellant correctly notes “claim 18 may more properly be included in the
next rejection because it does not depend from claim 1” and instead depends
from claim 7. Appeal Br. 14. We agree and treat this as harmless error,
given that claim 18 is not argued separately. Therefore, we treat claim 18 as
if it was rejected in view of Glass, Thurlow, Kajiyama, and O’Leary.
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2. Did the Examiner err in finding O’Leary teaches or suggests
“creating, by said processor, in response to selection of an expanded color
from said first menu of colors, a modified menu of colors by expanding said
first menu of colors to include sub-colors of said expanded color in addition
to color choices provided within said first menu of colors,” as recited in
claim 7?
ANALYSIS
Claims 1, 2, 4, and 5
Claim 1 recites providing a series of three “wizard question pages”
that display, in order, (1) “a menu of colors”; (2) “a menu of change
magnitude and change orientation phrases”; and (3) “a menu of color
characteristic terms.” The selections from these three menus are then used
to create “a natural language sentence.”
The Examiner relies on Glass for teaching the three claimed menus
(e.g., colors, change magnitude/orientation, and color characteristics), and
relies on Thurlow for placing those three menus on separate pages rather
than combining them into one single page. Final Act. 3–4. The Examiner
further relies on Kajiyama for teaching icons for the second and third menus.
Id. at 4–5.
Appellant first argues that “there is no motivation for one attempting
to improve the system in Glass to use the teachings of Thurlow to modify
printing color selection menus [in Glass] because Thurlow relates to
programming script creation.” Appeal Br. 21.
While Thurlow discloses an improvement for converting a user’s
logical steps into programmable scripts through which future
data (e.g., e-mails) can be processed, such teachings would not
modify the color print selections of Glass because the creation of
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a programmable script is unrelated to selecting print colors
through a print driver (teachings regarding using multiple pages
for creation of a multi-step logic script is not reasonably
applicable to a selection of a single color selection).
Appeal Br. 23.
We are not persuaded of error by Appellant’s arguments. Although
not phrased as such, Appellant is essentially arguing that a person of
ordinary skill in the art would not have been motivated to combine Glass and
Thurlow because they are not analogous art to each other. For the following
reasons, this is not persuasive.
First, we note the test for analogous art is whether a reference is
“analogous to the claimed invention,” not a second reference. In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis added). Nothing in the
record before us alleges that Thurlow is not analogous art to the present
application.
Second, the test for analogous art presents two alternative paths:
Prior art is analogous where either (1) the art is from the same
field of endeavor [as the claimed invention], regardless of the
problem addressed or (2) even if the reference is not within the
same field of endeavor [as the claimed invention], the reference
still is reasonably pertinent to the particular problem with which
the inventor is involved.
In re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017) (quotations
omitted). Even if we found that Thurlow was from a different field of
endeavor than the present application, Appellant still has not addressed the
second part of the analogous art test, i.e., whether the reference would have
been reasonably pertinent to the particular problem with which the inventor
was involved.
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We agree with the Examiner that “Thurlow explicitly discloses
creating or editing rules using natural language [phrases] in a step by step,
page by page manner because using a cryptic, programming-type language
approach is not very user-friendly.” Ans. 3 (citing Thurlow 1:36–45, 2:1–
32) (emphasis omitted). Such a step-by-step manner of using natural
language phrases would have been reasonably pertinent to a person of
ordinary skill at the time of the invention in trying to solve the particular
problem with which the inventor was involved. For example, the
Specification discloses the desire “to create human readable sentences that
describe complex color changes” in order to overcome the problem that
“increases in print driver sophistication have come at the cost of potential
user confusion and lack of familiarity with different features that a print
driver may offer.” Spec. ¶ 20. “Such methods and devices logically
progress the user, step by step, through the process of creating or editing a
natural language sentence.” Id. To the extent the field of endeavor may be
different (e.g., natural language phrases for emails in Thurlow versus natural
language phrases for color changes in the present application and Glass), the
underlying problem and solution (simplifying complex user selections into
natural language phrases) are similar such that Thurlow would have been
reasonably pertinent to the particular problem with which the inventor was
involved. As the Examiner correctly held, “the motivation [would have
been] to allow the user to create natural language rules by walking the user
through the process of creating a rule[] in a step by step manner.” Ans. 4
(citing Thurlow 14:55–60, 15:5–9).
Third, even leaving aside questions of analogous art, “[t]he
combination of familiar elements according to known methods is likely to be
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obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, “a court must ask whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
Here, Glass is also assigned to Appellant and the sole named inventor
of the present application is also a named inventor of Glass. Glass at (73),
(75). Glass asks the same three questions as the present invention:
(1) “What Color to Change?”; (2) “How Much to Change?”; and (3) “What
Type of Change?” Figs. 4, 6, 7; Glass Figs. 1–2. Glass then creates the
same natural language phrase from the responses to those questions (e.g.,
“Make red colors slightly more blue” or “Make yellow colors slightly more
red”). Figs. 8–9; Glass Fig. 3. The only difference is that Glass asks the
three questions as three drop-down menus on the same page whereas the
claimed invention asks the three questions one-at-a-time, i.e., one menu per
page for three separate pages. Appeal Br. 16. Asking the same three
questions in Glass on three separate pages (i.e., step-by-step as in Thurlow)
rather than on one single page (as in Glass) would do no more than yield
predictable results, which would have been obvious under KSR. See also
Glass 6:56–7:5 (“The disclosure is not limited to any particular manner of
drop-down list or the like.”; “Many various designs may be appreciated by
one of ordinary skill in the art.”; and further discussing “tabs” as a one
alternative, albeit one that requires more space).
Therefore, we are not persuaded the Examiner erred in combining
Glass and Thurlow.
Appellant next argues that “Kajiyama’s teachings regarding using
icons on camera setting screens are insufficient to motivate one to modify
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Glass to include icons on separate pages of a print color selection menu”
because “rather than relating to menus for the selection of printing colors,
Kajiyama’s disclosure is focused on camera settings for taking pictures.”
Appeal Br. 21–22.
We are not persuaded of error for reasons similar to the combination
of Glass with Thurlow. To the extent Appellant essentially is arguing that
Kajiyama is not analogous art to Glass, that is not the proper test. Appellant
fails to address whether Kajiyama is analogous to the present application,
including whether Kajiyama would have been reasonably pertinent to the
particular problem (e.g., how to display questions about color characteristics
and change magnitude/orientation). Moreover, Appellant does not dispute
that Glass discloses showing icons for the first question. Final Act. 3 (citing
Glass Fig. 2). Although the figures in Glass only show the expanded drop-
down menu for one of the three questions (Glass Fig. 2), it would have been
predictable that the expanded menus for the other two questions shown in
Figure 1 of Glass would have looked similar (e.g., for the third question,
previewing what the selected color would look like if it were more “zippy”
or “vivid”). The Examiner correctly finds that “Kajiyama merely enhances
the editing interface by including additional editing icons” in this predictable
manner. Ans. 4 (citing Kajiyama Figs. 8A, 8B, 9A, 9B). Thus, the
combination would have been predictable and obvious under KSR.
Accordingly, we sustain the Examiner’s rejection of claim 1, and its
dependent claims 2, 4, and 5, which Appellant argues are patentable for
similar reasons. See Appeal Br. 24–25; 37 C.F.R. § 41.37(c)(1)(iv).
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Claims 7, 8, 10, 11, 13–15, 17, 18, and 20
Claim 7 recites “creating . . . in response to selection of an expanded
color from said first menu of colors, a modified menu of colors by
expanding said first menu of colors to include sub-colors of said expanded
color in addition to color choices provided within said first menu of colors.”
Appellant argues that “O’Leary only shows the expanded portion of
the color palette, without still showing the full palette.” Appeal Br. 26.
Appellant’s argument fails to rebut the Examiner’s findings. The
Examiner finds that “Glass discloses a menu of colors (fig.2, ‘130’) while
O’Leary discloses displaying an expanded color palette by selecting a color
from a first color palette.” Ans. 6 (citing O’Leary ¶ 30).
O’Leary relates to customizing an online merchant’s website.
O’Leary ¶¶ 2, 9. O’Leary further discloses customizing colors via two color
palettes:
[T]he merchant is presented with one or more color palettes. For
example, one color palette may show the spectrum of colors
available. The merchant can then select a range of colors, e.g.,
more blue, more orange, more green, etc. This can be done by
selecting the desired portion of the first color palette, such as with
a slide tool or by clicking on an area. The selected color region
may then be expanded into a second color palette that gives the
merchant the opportunity to further refine the color scheme. This
can be done by moving a mouse or other selector to a desired
portion within this second color palette. Wherever the selection
means is placed, the color changes, so that the merchant can see
how each color looks with the previously selected format and
funding sources.
O’Leary ¶ 30. Thus, O’Leary discloses selecting “a range of colors” in a
“first color palette,” and “[t]he selected color region may then be expanded
into a second color palette.” Id. (emphasis added).
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Appellant fails to explain its assumption that the first color palette is
removed when the second color palette is displayed, as O’Leary does not
appear to disclose that. To the contrary, in Figure 2C, O’Leary
simultaneously displays both the first and second color palettes. See also
O’Leary ¶ 39. Thus, Appellant’s assertion is not supported by O’Leary and
fails to rebut the Examiner’s finding.
Accordingly, we sustain the Examiner’s rejection of independent
claim 7, and its dependent claims 8, 10, 11, 13, 17, 18, and 20, which
Appellant argues are patentable for similar reasons. See Appeal Br. 27; 37
C.F.R. § 41.37(c)(1)(iv).
OUTCOME
The following table summarizes the outcome of each rejection:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5 103 Glass, Thurlow,
Kajiyama
1, 2, 4, 5
7, 8, 10, 11, 13–
15, 17, 18, 20
103 Glass, Thurlow,
Kajiyama, O’Leary
7, 8, 10, 11, 13–
15, 17, 18, 20

Overall
Outcome
1, 2, 4, 5, 7, 8,
10, 11, 13–15,
17, 18, 20

TIME TO RESPOND
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.36(a)(1)(iv).
AFFIRMED