Ex Parte Doyle

Patent Trial and Appeal Board

Sep 20, 2012

11625641 (P.T.A.B. Sep. 20, 2012)

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.
11/625,641 01/22/2007 Brian P. Doyle BLD9-2006-0022-US1 8821
50441 7590 09/20/2012
DUFT BORNSEN & FISHMAN, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
PARADISO, JOHN ROGER
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
09/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN P. DOYLE
____________

Appeal 2010-003430
Application 11/625,641
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian P. Doyle (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1-28 under 35 U.S.C. § 103(a) as
unpatentable over Anderson (US 6,119,051, issued Sep. 12, 2000). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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The Claimed Subject Matter
The claimed subject matter “relates to the field of printing systems
and, in particular, to providing printing architectures and associated methods
to implement virtual enclosure bins for post-printing processes.” Spec. 1, ll.
5-7. Claims 1, 6, 13, 18, and 25 are independent and claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A method of inserting enclosures with
documents in a printing architecture, the method
comprising:
receiving a document print job that includes
a plurality of documents, wherein a document of
the document print job includes enclosure data
referencing at least one enclosure;
processing the enclosure data in the
document to identify at least one enclosure image
from an image library that corresponds with the at
least one enclosure referenced in the enclosure
data in the document;
printing the at least one enclosure image to
generate at least one printed enclosure;
printing the document print job to generate
the document;
processing the enclosure data on the printed
document to identify the at least one printed
enclosure referenced in the enclosure data; and
inserting the at least one printed enclosure in
a mail piece with the printed document.

Independent claim 6 is directed to “[a] printing architecture for
inserting enclosures with documents,” and calls for a print job processing
system to be adapted to receive a document print job having a document that
includes enclosure data referencing at least one enclosure and to process the
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Application 11/625,641

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enclosure data to identify at least one enclosure image from an image
library. Br., Clms. App’x.

OPINION
The Examiner finds that Anderson “discloses a method of processing
mail pieces in which a printstream is generated in a computer (40) and
transmitted to printers (50) for printing documents, which are delivered to
inserter systems” and “[a] reprint database is generated as needed by the
database server (10) and a supervisor client monitors each job, tracking the
printstream, the mail pieces, and generating reprints or reports as needed.”
Ans. 3 (citing to Anderson, col. 3, l. 43 to col. 4, l. 30 and Fig. 1). The
Examiner also finds that Anderson discloses “[t]he ability to generate
reprints on demand.” Ans. 3. The Examiner also finds that: (1) “[t]he
claimed ‘enclosure image’ is being read on the images contained in the
printstream, used to generate a reprint”; (2) “[t]he claimed method step of
‘processing the enclosure data . . .’ (from claim 1) is inherent in the method
of A[nderson] . . . , since generating a printstream by its nature involves
processing the data”; and (3) “[t]he claimed ‘print on demand enclosure’ is
being read on the ability to generate reprints on demand, as required by the
operator.” Ans. 4. However, the Examiner admits that Anderson does not
specifically disclose “a virtual enclosure bin.” Id. To cure the deficiency of
Anderson, the Examiner takes “Official Notice that the use of cache files is
notoriously well known in the computer arts” and “[t]he claimed ‘virtual
enclosure bin’ is read on these cache files.” Id. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art “to use a
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cache file to store enclosures in the invention of A[nderson] . . . , in order to
provide faster access to the enclosures.” Id.
Independent claims 1 and 6 and dependent claims 2-5 and 7-12
With respect to independent claim 1, Appellant argues that “Anderson
does not teach ‘receiving a document print job . . . wherein a document of
the document print job includes enclosure data referencing at least one
enclosure,’” because “[t]here is no discussion in Anderson of enclosure data
being included in the print job that references an enclosure image to be
printed.” Br. 11-12. Appellant also argues that Anderson does not teach
“‘processing the enclosure data in the document to identify at least one
enclosure image from an image library that corresponds with the at least one
enclosure referenced in the enclosure data in the document,’” because “there
is no discussion in Anderson of identifying an ‘enclosure image’ from an
image library.” Id. Appellant also argues that “Anderson does not teach
‘printing the at least one enclosure image to generate at least one printed
enclosure,’” because “there is no discussion [in Anderson] that the printed
enclosure is identified from an image database based on the enclosure data
included in the print job.” Id. Appellant argues claim 6 along with claim 1.
Br. 12.
As discussed supra, the Examiner cites column 3, line 43 to column 4,
line 30 of Anderson as support for Anderson substantially disclosing the
subject matter of independent claims 1 and 6. Ans. 3. However, the portion
of Anderson cited to by the Examiner actually discloses “one possible
client/server architecture” including a database server computer 10 (the
central repository of all data), a client computer 20, a supervisory computer
30, and a computer network. Anderson, col. 3, ll. 52-55. Applications on
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the mainframe side of Anderson’s Figure1 send print images from a host
mainframe 40, for instance, to printers 50, and IntellaSertTM Data File (IDF)
data to the database server computer 10. Anderson, col. 4, ll. 6-9. Once the
material is printed on by the printers 50, the printed paper is presented to
mail processing finishing equipment, such as, for instance, mail processing
inserters 60. Anderson, col. 4, ll. 9-13. The mail processing finishing
equipment 60 requests information about the accounts it is about to process
from the database server 10, using a small key encoded in the account
barcode, and uses the information in the data file to continue processing the
account. Anderson, col. 4, ll. 14-17. Once processing has been completed,
for any pieces that were destroyed during processing, it can feed the
pertinent data back to the host to generate reprint material and new IDF data.
Anderson, col. 4, ll. 22-27.
Although the Examiner states that “[t]he claimed ‘enclosure image’ is
being read on the images contained in the printstream, used to generate a
reprint,” we cannot agree that the portion of Anderson relied upon by the
Examiner discloses anything about enclosures. Ans. 4. Thus, we agree with
Appellant that the portion of Anderson relied upon by the Examiner does not
specifically disclose “enclosure data referencing at least one enclosure”
being included in a document of the print job, “processing the enclosure data
to identify at least one enclosure image from an image library,” and
“printing the at least one enclosure image to generate at least one printed
enclosure,” as recited in claim 1. For the same reasons, Anderson also does

1 We note that 37 C.F.R. § 1.84(u)(1) states that “[w]here only a single view
is used in an application to illustrate the claimed invention, it must not be
numbered and the abbreviation ‘FIG.’ must not appear.” Therefore, we will
refer to Anderson’s single view as “Anderson’s Figure.”
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not disclose the subject matter of independent claim 6 which Appellant
argues along with claim 1. Br. 12.
Accordingly, we cannot sustain the Examiner’s rejection of
independent claims 1 and 6, and claims 2-5 and 7-12 dependent thereon,
under 35 U.S.C. § 103(a) as unpatentable over Anderson.
Independent claims 13 and 18 and dependent claims 14-17 and 19-24
Independent claim 13 is directed to a method of inserting enclosure
with documents in a printing architecture and includes, inter alia, the steps
of processing enclosure data in the document to identify at least one
enclosure bin, printing the at least one enclosure image, amending the
enclosure data, and processing the amended enclosure data. Br., Clms.
App’x. Independent claim 18 is directed to “[a] printing architecture for
inserting enclosures with documents” and includes, inter alia, a print job
processing system adapted to process enclosure data to identify at least one
enclosure bin and identify at least one enclosure image from an image
library. Id.
Appellant argues that Anderson does not disclose the third through
seventh and ninth paragraphs of the body of claim 13. Br. 12-13. Appellant
argues claim 18 along with claim 13. Br. 13.
As we found supra that the portion of Anderson relied upon by the
Examiner does not specifically disclose enclosures, we agree with Appellant
that Anderson does not disclose the third through seventh and ninth
paragraphs of the body of independent claim 13. For the same reasons,
Anderson also does not disclose the subject matter of independent claim 18
which Appellant argues along with claim 13.
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Accordingly, we do not sustain the Examiner’s rejection of
independent claims 13 and 18, and claims 14-17 and 19-24 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Anderson.
Independent claim 25 and dependent claims 26-28
Independent claim 25 is directed to “[a] method of processing a
document print job” including, inter alia, the steps of identifying at least one
enclosure image and generating an enclosure print job that includes at least
one enclosure image. Br., Clms. App’x.
Appellant argues that Anderson does not disclose the second and third
paragraphs of the body of claim 25. Br. 14.
As we found supra that the portion of Anderson relied upon by the
Examiner does not specifically disclose enclosures, we agree with Appellant
that Anderson does not disclose the second and third paragraphs of the body
of independent claim 25.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 25, and claims 26-28 dependent thereon, under 35 U.S.C.
§ 103(a) as unpatentable over Anderson.

DECISION
We reverse the Examiner’s decision to reject claims 1-28.

REVERSED

mls