Ex Parte Conlon

Patent Trial and Appeal BoardMar 14, 2016

12636287 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/636,287 12/11/2009 75931 7590 Basch & Nickerson LLP 1751 Penfield Road Penfield, NY 14526 03/16/2016 FIRST NAMED INVENTOR Paul Roberts Conlon 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 200817 62Q2-US-CIP 1040 EXAMINER PRINGLE-PARKER, JASON A ART UNIT PAPER NUMBER 2618 NOTIFICATION DATE DELIVERY MODE 03/16/2016 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): usptomail@bnpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL ROBERTS CONLON Appeal2014-002558 Application 12/636,287 1 Technology Center 2600 Before THU A. DANG, NATHAN A. ENGELS, and CARLL. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. STATEMENT OF THE CASE The invention relates to processing rasterized or non-rasterized data for rendering by a printer. Abstract. Claim 1 is exemplary of the matter on appeal: 1 According to Appellant, the real party in interest is Xerox Corporation. App. Br. 2. Appeal2014-002558 Application 12/636,287 1. ii.. method of controlling operations of a printing device, comprising: receiving a non-rasterized page description language data and a source transformation matrix representing source transformation operations, the source transformation operations being a source rotation transformation operation, a source scaling transformation operation, and a source translation transformation operation; rasterizing the non-rasterized page description language data; determining an order of transformation operations to be performed upon the rasterized data; generating, from the source transformation matrix, a rotation transformation matrix and a scaling transformation matrix based upon a rotation scaling order of the determined order of transformation operations; generating a translation transformation matrix from the generated rotation and scaling transformation matrices; creating a target transformation matrix by matrix multiplying the generated rotation transformation matrix, the generated scaling transformation matrix, and the generated transformation operation in a matrix order corresponding to the determined order of transformation operations to be performed upon the rasterized data; decomposing the corresponding transformation matrix into a rotation transformation operation matrix, a first scaling transformation operation matrix, and a translation transformation operation matrix; decomposing the first scaling transformation operation matrix into a shear transformation operation matrix and a second scaling transformation operation matrix; generating a discrete rotation transformation operation value from the rotation transformation operation matrix; generating a discrete scaling transformation operation value from the second scaling transformation operation matrix; generating a discrete translation transformation operation value from the translation transformation operation matrix; generating a discrete shear transformation operation value from the shear transformation operation matrix; and 2 Appeal2014-002558 Application 12/636,287 controlling operations of the printing device based upon the generated discrete transformation operation values. App. Br. 235-36 Claims App.). THE REJECTIONS Claims 1-20 of the subject application on appeal 12/636,287 ("I"); stand provisionally rejected for obviousness-type double patenting over copending patent application numbers: 12/338,300 ("A," now abandoned); 12/338,318 ("B"); 12/338,260 ("C"); 12/339, 148 ("D," now U.S. Patent No. 8,754,909); 12/636,361 ("E"); 12/636,348 ("F"); 12/636,331 ("G"); 12/636,297 ("H"); 12/636,274 ("J); 12/636,266 ("K"); and 12/636,311 ("L"). Final Act. 2-3; App. Br. 10. Claims 1-20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Warmus et al. (hereinafter "Warmus") (US 2001/0051964 Al, published Dec. 13, 2001) in view of Hemingway (US 6,166,741, issued Dec. 26, 2000). Final Act. 13-32. ANALYSIS The double patenting rejection Appellant argues the Examiner does not present a prima facie case of obviousness-type double patenting and provides inadequate findings of fact to support the rejection as required under Graham v. John Deere Co., 383 U.S. 1 (1966), and the Manual of Patent Examining Procedure (MPEP) Â§ 804 (9th Ed., Mar. 2014). App. Br. 10-163; Reply Br. 2-8. As discussed below, we are persuaded by Appellant's arguments. According to Appellant: MPEP Â§804 states that the analysis employed in an obviousness-type double patenting determination parallels the guidelines for a 35 U.S.C. Â§103 rejection. Moreover, MPEP 3 Appeal2014-002558 Application 12/636,287 Â§804 states that the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), for determining obviousness under 35 U.S.C. Â§103, are employed when making an obvious-type double patenting analysis. MPEP Â§804 states that the factual inqmnes are (A) determine the scope and content of a patent claim relative to a claim in the application at issue; (B) determine the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue; (C) determine the level of ordinary skill in the pertinent art; and (D) evaluate any objective indicia of non-obviousness. Lastly, MPEP Â§804 states that any obviousness-type double patenting rejection should make clear (A) the differences between the inventions defined by the conflicting claims; and (B) the reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent. App. Br. 10-11. The record before us includes the following: 1. Final Office Action. The Examiner provides a chart ("chart") setting forth relationships among claim 1 of the identified copending applications (designated A-L, with I being the current application on appeal). Final Act. 2-3. According to the Examiner, the chart shows "claim 1 of all applications relate to the use of non-rasterized page description language data and a transformation matrix which is decomposed into at least rotation, scaling and translation and generating from that discrete transformation operation values." Id. at 3. 4 Appeal2014-002558 Application 12/636,287 2. 1A .. ppeal Brief. Appellant argues the chart (Final Act. 2-3) is inadequate basis for obviousness-type double patenting and provides claim charts showing independent claims of the current application on appeal (I) as compared to the eleven copending applications (A-Hand J-L) identified as the basis for the double patenting rejection, along with commentary. App. Br. 10-163. The provided claim charts constitute: 12/338,300 (A); 12/338,260 (C); 12/636,274 (J); 12/338,311 (L); 12/339, 148 (D) 12/338,318 (B); 12/636,266 (K); 12/636,287 (I); 12/636,297 (H); 12/636,331 (G); 12/636,348 (F); and 12/636,361 (E). 3. Answer. The Examiner provides "a more detailed mapping [("mapping")] of all of the limitations in claim 1 for each of the [ eight2 copending] applications" along with commentary on the mapping. Ans. 23-26. Specifically, the Examiner provides Table 1 which maps claim 1 along with Table 2 which identifies the claim language of the eight copending applications. 3 Id. at 24--26. The Examiner provides commentary for two identified copending applications and identifies differences from the application on appeal 12/636,287 (I). Id. at 23-24. 4. Reply Brief. Appellant argues the Examiner's mapping and commentary are inadequate bases for the double patenting rejection, and the Examiner does not address copending 2 The eight copending applications are E, F, G, H, I, J, Kand L. Ans. 20-21. 3 Table 1 and 2 are attached as Exhibit 1. 5 Appeal2014-002558 Application 12/636,287 application numbers: 12/338,300 (ii,); 12/338,318 (B); 12/338,260 (C); and 12/339, 148 (D). Reply Br. 2-8. We are persuaded the chart (Final Act. 2-3) is inadequate basis for obviousness, because, while it may show a relationship among the copending applications, it provides no discussion of the required inquiry for obviousness and no discussion of claims for any of the identified copending applications. App. Br. 10-11; Graham, 383 U.S. at 17; MPEP Â§ 804; see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Regarding the mapping and commentary provided in the Answer, because we agree with Appellant that the Final Office Action chart (Final Act. 2-3) is inadequate basis for obviousness for any of the identified copending applications, and the Examiner presents no additional basis in the Answer for the four copending applications A-D,4 we do not sustain the rejection over copending applications B-D. Reply Br. 4. We now address the double patenting rejections of current application I ('287) over copending applications E, F, G, H, J, K, and L. Ans. 23-26; Reply Br. 2-8. We are persuaded by Appellant's argument that the mapping and commentary do not address claims 2-20 and, therefore, we do not sustain the double patenting rejection for these claims. Reply Br. 4. We agree with Appellant that the mapping by itself, without additional commentary, is inadequate to support a prima facie case of obviousness-type double patenting because the mapping provides inadequate evidence required by Graham and the MPEP, supra. Reply Br. 7. 4 A is now abandoned. Accordingly, the rejection over A is moot. 6 Appeal2014-002558 Application 12/636,287 In the commentaf'J, the Examiner finds all of the limitations in 12/636,266 (K) are found within the current application 12/636,287 (I) as shown by the chart and, therefore, the provisional obviousness-type double patenting rejection is proper. Ans. 23. Appellant argues, and we agree, this is inadequate as it provides no explanation why the differences are obvious. Reply Br. 2-3. Regarding copending application L (' 311 ), the Examiner's commentary finds it is most similar to the current application and the difference is "controlling operations of the printing device [OJ" and "performing transformation operations upon the rasterized data [O']," where both are the final step in the method and involve operations. Ans. 24. According to the Examiner, in the preamble of both applications, the method is for "controlling operations of a printing device" and "[b ]ased upon the language, it being the final step, and the preamble, it is clear that 'performing transformation operations with the rasterized data' relates to transformation for printing like the 12/636,287 [I] application does." Ans. 24. Appellant argues, and we agree, the Examiner errs in finding "controlling operations of a printing device is the same as performing transformation operations upon rasterized data." Reply Br. 7-8 (citing Spec. i-fi-1272, 196). According to Appellant: These are two distinct operations - one is directed to controlling the mechanics of a printing device and the other is the electronic manipulation of electronic data. The Examiner has failed to demonstrate how these two distinct operations are obvious variants of each other. Thus, contrary to the Examiner's assertion, controlling operations of a printing device is NOT the same as performing transformation operations upon rasterized data[.] 7 Appeal2014-002558 Application 12/636,287 Reply Br. 7-8. In view of the above, we do not sustain the provisional double patenting rejection over copending applications B-H and J-L. The 35 U.S.C. Â§ 103(a) rejection Appellant argues W arnms and Hemingway do not teach limitations recited in independent claims 1, 5, 9, 13, and 17. App. Br. 164--233. For example, Appellant argues Warmus does not teach the claim 1 limitation "determining an order of transformation operations to be performed upon the rasterized data." App. Br. 165. According to Appellant, while the Examiner relies on Warmus for this limitation the cited portions of Warmus disclose changing the orientation (portrait to landscape or landscape to portrait). Id. (citing Warmus i-fi-1383, 389, 405). Therefore, Appellant argues Warmus fails to disclose or suggest "the determination of an order of transformation operations to be performed upon the rasterized data because the determination is of the orientation of the output device, not the order of the transformation operations to be performed upon the rasterized data." Id.; see also Reply Br. 10. The Examiner finds Warmus teaches the disputed limitation. Final Act. 14 (citing Warmus i-fi-1383, 389, 405). The Examiner addresses the claim terms "determining" and "order" and finds Warmus teaches both terms. Ans. 28-35. Regarding the term "order" the Examiner finds "order" is taught by W armus, and if not taught, it is inherent and even if not taught and not inherent, no specific order is specifically claimed. Id. at 30 (citing Warmus Figs. 27, 26A, 26B, i1402). 8 Appeal2014-002558 Application 12/636,287 ii~ppellant argues, and \'l.;e agree, the Examiner's ii~ns\'l/er is not relevant to Appellant's arguments. Reply Br. 9-13. We are persuaded by Appellant's arguments because the disputed limitation recites "determining an order of transformation operations to be performed upon the rasterized data" (emphasis added) and the Examiner does not show where Warmus teaches or suggests determining an order of transformation to be performed "upon the rasterized data." In view of the above, we do not sustain the rejection of claim 1. Independent claims 5, 9, 13, and 17 recite substantially the same limitation, and, therefore, we do not sustain the rejection of these claims. Claims 2--4, 6-8, 10-12, 14--16, and 18-20 are dependent claims and, therefore, we also do not sustain the rejection of these claims. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious"). DECISION We reverse the Examiner's decision provisionally rejecting claims 1- 20 for obviousness-type double patenting. We reverse the Examiner's decision rejecting claims 1-20 under 35 U.S.C. Â§ 103(a). REVERSED 9