Ex Parte Carter

Patent Trial and Appeal Board

Dec 5, 2012

09971804 (P.T.A.B. Dec. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRYAN KEITH CARTER
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Appeal 2010-000374
1

Application 09/971,804
Technology Center 2600
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Before JEAN R. HOMERE, JOHNNY A. KUMAR, and JOHN G. NEW,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Hewlett-Packard Development Company, LP.
(App. Br. 1.)

Appeal 2010-000374
Application 09/971,804

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4-8, 13, 14, and 16-20. Claims 2, 3, 9-11, 12, and 15
have been canceled. (App. Br. 2.)
2
We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appellant’s Invention
Appellant invented a method and system for translating text in a print
job from one language to another. (Spec. 1, ll. 4-6.) In particular, upon
receiving the print job from an input device (102), a variable data language
translation (VDLT) module (220) in a printing device (104) parses the
received text to identify data tags previously inserted therein to thereby
translate the received text from a current language into another language.
The translated text is used to subsequently replace the received text in the
print job before it is printed as a hard copy document. (Fig. 2, Spec. 8, l. 20-
Spec. 9, l. 6.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A method of language translation imaging comprising:
receiving an image job;
distinguishing variable data that is current language text
from any other variable data and fixed data within the image
job, wherein the distinguishing includes recognizing data tags

2
The Status of Claims section indicates that claim 12 is pending for review
in this appeal. However, the Claims Appendix lists claim 12 as being
canceled. We therefore treat claim 12 as being canceled.
Appeal 2010-000374
Application 09/971,804

3
inserted into the image job prior to the receiving, the data tags
identifying the variable data that is current language text;
translating the current language text into new language
text;
modifying the variable data that is current language text
to new variable data that is new language text; and
printing an image from the image job, wherein the image
job comprises the new language text.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Takaoka US 6,539,116 B2 Mar. 25, 2003

Rejection on Appeal
3

The Examiner rejects claims 1, 4-8, 13, 14, and 16-20 under 35 U.S.C. §
102(e) as being anticipated by Takaoka.

3
As noted by Appellant in the Reply Brief, the Examiner has omitted from
the Answer the indefiniteness rejection of claim 57, and the Examiner has
not responded to Appellant’s rebuttal arguments to the rejection. (Reply Br.
1.) Because the Examiner has not expressly indicated an intent to withdraw
the rejection in the Answer, we presume that the rejection is still in force.
However, in view of the Examiner’s failure to respond to Appellant’s
rebuttal arguments thereto, we pro forma reverse the indefiniteness rejection.
Appeal 2010-000374
Application 09/971,804

4
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Appeal Brief, pages 8-13 and the Reply Brief, pages 2-9.
Representative Claim 1
Dispositive Issue: Has Appellant shown the Examiner erred in
finding that Takaoka describes recognizing data tags previously inserted
within the text of a received image job, as recited claim 1?
Appellant argues that the Examiner erred in finding that Takaoka
describes the disputed limitations emphasized above. (App. Br. 8-9, Reply
Br. 3-4.) In particular, Appellant argues that Takaoka at best discloses
performing character recognition on text blocks within a received document
image data to thereby translate the identified text from one language to
another. (Id.) In response, the Examiner finds that Takaoka inherently
describes the disputed limitations. (Ans. 7-8.)
On the record before us, we do not agree with the Examiner’s finding
of anticipation. Our reviewing court has previously held that “[i]n relying
upon the theory of inherency, the Examiner must provide a basis in fact
and/or technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Inter. 1990) (emphasis in original)(citations omitted). Further, the court has
held that “after the PTO establishes a prima facie case of anticipation based
on inherency, the burden shifts to appellant to ‘prove that the subject matter
shown to be in the prior art does not possess the characteristic relied on.’”
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5
In re King, 801 F.2d 1324, 1327, (Fed. Cir. 1986) (quoting In re Swinehart,
439 F.2d 210, 212-13, (CCPA 1971)). See also MPEP §§ 2112 (IV.), (V.).
This reasoning is applicable here. The Examiner finds that, because
Takaoka discloses a translation of text within a document image from one
language to another that inherently involves recognizing data tags,
Takaoka’s disclosure describes the disputed limitations. (Ans. 7-8.) In
response, Appellant argues that because the disclosed document image data
is simply represented as a bitmap, and not data tags, Takaoka’s disclosed
translation does not describe recognizing previously inserted data tags in the
print job. (Reply Br. 3-4.) We find Appellant has met the burden of proving
that the subject matter shown to be in the prior art does not possess the
characteristic relied on by the Examiner. That is, Appellant has shown by a
preponderance of the evidence that Takaoka’s disclosed translation of text in
the data image does not necessarily involve the use of data tags as alleged by
the Examiner. Because Appellant has shown at least one error in the
Examiner’s rejection, we need not reach Appellant’s other arguments. It
follows Appellant has shown error in the Examiner’s rejection of claim 1 by
Takaoka.
Because claims 4-8, 13, 14, and 16-20 recite the disputed limitations
discussed above, we find for the same aforementioned reasons that
Appellant has similarly shown error in the Examiner’s rejection of those
claims.

Appeal 2010-000374
Application 09/971,804

6
DECISION
We reverse the Examiner’s rejection of claims 1, 4-8, 13, 14, and 16-
20.
REVERSED

ELD