Ex Parte Beretta

Patent Trial and Appeal BoardDec 11, 2012

11123560 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte GIORDANO BRUNO BERETTA _____________ Appeal 2010-006810 Application 11/123,560 Technology Center 2600 ______________ Before: ROBERT E. NAPPI, HUNG H. BUI, and LYNNE E. PETTIGREW Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006810 Application 11/123,560 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 41. We affirm-in-part. INVENTION The invention is directed to method for proofing a page for color discriminability problems. Specification page 3 and figure 4. Claim 1 is representative of the invention and reproduced below: 1. An automated computer-implemented method for proofing a page for color discriminability problems, the method comprising: converting a first color of a first object appearing on the page and a second color of a second object appearing on the page to coordinates of a color naming system; identifying a first color name of the first color and a second color name of the second color based on the coordinates; and identifying whether the first color and the second color are discriminable based on the first color name and the second color name. REFERENCES MacPeake US 2005/0084152 A1 Apr. 21, 2005 Moravec US 2005/0157926 A1 Jul. 21, 2005 Mojsilovic US 2006/0087517 A1 Apr. 27, 2006 Appeal 2010-006810 Application 11/123,560 3 REJECTIONS AT ISSUE The Examiner has rejected claims 1 through 14, 16, 18, and 19 under 35 U.S.C. § 101 as directed to non-statutory subject matter. Ans. 3-4.1 The Examiner has rejected claims 1 through 7, 10 through 23, 26 through 33, and 36 through 39 under 35 U.S.C. § 103(a) as unpatentable over Moravec and Mojsilovic. Ans. 5-16. The Examiner has rejected claims 8, 9, 24, 25, 34, 35, 40, and 41 under 35 U.S.C. § 103(a) as unpatentable over Moravec, Mojsilovic, and MacPeake. Ans. 16-19. ISSUES Rejection under 35 U.S.C. § 101 Appellant argues on pages 6 and 7 of the Appeal Brief, and pages 2 through 3 of the Reply Brief that the Examiner’s rejection under 35 U.S.C. § 101 is in error because the claim is directed to a particular machine.2 These arguments present us with the issue did the Examiner err in concluding that independent claim 1 is not drawn to statutory subject matter? Rejections under 35 U.S.C. § 103(a) Appellant argues on pages 7 through 9 of the Appeal Brief, and pages 3 through 6 of the Reply Brief that the Examiner’s rejection of independent claims 1, 20, 30, and 36 under 35 U.S.C. § 103 is in error. These arguments 1 Throughout this opinion we refer to the Examiner’s Answer mailed on November 20, 2009. 2 Throughout this opinion we refer to the Appeal Brief dated September 4, 2009, and Reply Brief dated January 20, 2010. Appeal 2010-006810 Application 11/123,560 4 present us with the issue did the Examiner err in finding the combination of Moravec and Mojsilovic teaches identifying whether a first color and a second color are discriminable based on the first color name and the second color name, as recited in independent claims 1, 20, 30 and 36? ANALYSIS Rejection under 35 U.S.C. § 101 We have reviewed Appellant’s arguments in the Appeal Brief, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We disagree with Appellant’s assertion that the Examiner erred in in concluding that independent claim 1 is not drawn to statutory subject matter. Appellant argues that claim 1 is directed to statutory subject matter as it recites a particular machine (an automated computer implemented method), and a transformation step (converting colors to coordinates of a color naming system). App. Br. 6-7. In response, the Examiner states the recitation of a computer implemented method is in the preamble of the claim and, as such, does not limit the claim. Further, the Examiner finds that the body of the claim recites only steps that are not tied to a machine and, as such, the claim is not drawn to statutory subject matter. Ans. 19. We concur with the Examiner that the preamble does not limit the claim. Our reviewing court has said “[p]reamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). Further, the argued conversion of color to coordinates of a color naming system is not a transformation; rather, the conversion is just a step of interpreting data (i.e. the color is not transformed). Accordingly, we sustain Appeal 2010-006810 Application 11/123,560 5 the Examiner’s rejection of claims 1 through 14, 16, 18, and 19 under 35 U.S.C. § 101. Rejections under 35 U.S.C. § 103(a) We have reviewed Appellant’s arguments in the Appeal Brief, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We agree with Appellant’s conclusion, that the Examiner erred in finding the combination of Moravec and Mojsilovic teaches identifying whether a first color and a second color are discriminable based on the first color name and the second color name, as recited in independent claims 1, 20, 30, and 36. The Examiner finds that Moravec teaches a system that evaluates design and measures contrast distance between colors of the foreground and background and that Mojsilovic teaches attaching names to colors based upon perceived color differences. Ans. 20. Based upon these findings, the Examiner further finds that the step of identifying whether a first color and a second color are discriminable based on the first color name and the second color name is obvious. We disagree; we do not find that the combination of these teachings suggests that the colors are discriminated based on color name. Accordingly, we will not sustain the Examiner’s rejection of independent claims 1, 20, 30, and 36. Similarly, we will not sustain the Examiner’s rejections of dependent claims 2 through 19, 21 through 29, 31 through 35, and 37 through 41. Appeal 2010-006810 Application 11/123,560 6 CONCLUSION We sustain the Examiner’s rejections of claims 1 through 14, 16, 18, and 19 under 35 U.S.C. § 101. We do not sustain the Examiner’s rejection of claims 1 through 41 under 35 U.S.C. § 103(a). The decision of the Examiner to reject claims 1 through 41is affirmed- in-part. 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-IN-PART msc