Ex Parte Giannetti

Patent Trial and Appeal Board

May 19, 2014

11412795 (P.T.A.B. May. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte FABIO GIANNETTI
__________

Appeal 2012-000876
Application 11/412,795
Technology Center 2100
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
of generating a variable-data printing document template. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Hewlett-Packard
Development Company, LP (see App. Br. 3).
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Statement of the Case
Background
“Variable-data printing (VDP) is a form of on-demand printing in
which all the documents in a print run are similar but not identical. . . . For
example, personalized letters may have the same basic layout, but there will
be different a [sic] name and address on each letter” (Spec. 2, ll. 6-10).
The Specification teaches that “the invention enables production of
variable-data publishing (VDP) material for Digital Publishing (DP) that rely
upon complex document designs containing sections with variable content.
Such document sections which contain variable content are hereby referred
to as flows” (Spec. 8, ll. 1-5).
The Claims
Claims 10-30 are on appeal. Claim 10 is representative and reads as
follows:
10. A method of generating a variable-data printing
document template, the template defining a document to
contain variable content in response to input data, the
method comprising:
defining a template comprising a layout of document
portions, at least one of the document portions comprising a
main flow, having an Extensible Markup Language (XML)
based description, that contains content which is variable in
response to the input data; and
defining a nested-flow within said main flow and
comprising a further document portion containing further
content which is variable in response to the input data,
wherein a document is for generation from the
template in response to input data which defines the
document content and the template is in computer readable
format.

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The issues
A. The Examiner rejected claims 10, 11, 14-16, 19, 20, 22, 25-28, and 30
under 35 U.S.C. § 103(a) as obvious over Hayashi2 and PPML3 (Ans. 4-9).
B. The Examiner rejected claims 12, 13, 17, 18, 21, 23, 24, and 29 under
35 U.S.C. § 103(a) as obvious over Hayashi, PPML, and Harnsberger4 (Ans.
10-13).
A. 35 U.S.C. § 103(a) over Hayashi and PPML
The Examiner finds that Hayashi teaches the variable-data printing
elements of claim 10 (Ans. 4-5), except that “Hayashi does not expressly
teach ... having an Extensible Markup Language (XML) based description”
(Ans. 5). The Examiner finds that “PPML teaches ... having an Extensible
Markup Language (XML) based description (page 2: whereas, the business
rules for content selection (rules using input data to select content) are
encoded in a PPML (XML based) template; to generate a document for
printing)” (Ans. 5).
The Examiner finds it obvious “to have modified Hayashi’s layout
description, such that the layout descriptions can be in an XML based
description, as taught by PPML. The combination would have allowed
Hayashi to have implemented “‘standards and applications of XML
technology to improve the versatility and power of print’ (PPML, page 2)”
(Ans. 5).

2 Hayashi, K., US 5,381,523, issued Jan. 10, 1995.
3 PPML, Personalized Print Markup Language: The PPML Family
of XML Standards, pp. 1-8 (July 2003).
4 Harnsberger et al., US 2004/0107118 A1, published Jun. 3, 2004.
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Hayashi and PPML render claim 10
obvious?
Findings of Fact
1. Figure 5(a) of Hayashi is reproduced below:

“FIG. 5(a) shows a layout structure obtained by applying the partial layout
templates 240 and 250” (Hayashi, col. 15, ll. 16-17).
2. Hayashi teaches
[A] document processing device [that] comprises: means for
retaining a plurality of partial layout templates each
expressing rules for producing a layout of a partial logical
structure; means for extracting, from a logical structure of a
document to be processed, a logical node array including
first logical nodes corresponding to respective basic logical
objects having respective content portions and second
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logical nodes representing respective partial logical
structures and designating respective partial layout templates
selected from the partial layout templates retained by the
partial layout templates retaining means.

(Hayashi, col. 8, l. 57 to col. 9, l. 2.)
3. Figure 5(b) of Hayashi is reproduced below:

FIG. 5(b) shows a layout image expressed by the layout
result of FIG. 5(a), in which a page P1 is a layout image
corresponding to a structure including a layout object 512
(“page”) and layout objects below it, a page P2 is a layout
image corresponding to a structure including a layout object
516 (“page”) and layout objects below it, and a page P3 is a
layout image corresponding to a structure including a layout
object 525 (“page”) and layout objects below it

(Hayashi, col. 15, ll. 23-31).
4. Hayashi teaches that in
[T]he partial layout operation on the node 435, since the
nodes 436-438 are nested in the node 435 and the logical
node 216 corresponding to the node 435 designates the
partial layout template 250 . . . a layout operation on those
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nodes are performed prior to a layout operation on the nodes
439 and 440.

(Hayashi, col. 17, ll. 21-27.)
5. Hayashi teaches that “the logical objects designating the partial
layout template are called a ‘logical node’” (Hayashi, col. 13, ll. 1-2).
6. Hayashi further explains that the “logical node has a role of
designating activation of the partial layout means 109 or the content layout
means 104” (Hayashi, col. 13, ll. 4-6).
7. PPML teaches that the “business rules for content selection are
encoded into a PPML template in a Web-standard scripting method such as
XSLT or Perl. The row database information for each document can then be
submitted to the print system, and finished documents come out the other
end” (PPML 2).
8. The Specification teaches that
[T]here do not exist any XML based formats that are
currently capable of expressing or supporting multiple flows
without requiring additional extension. Using XSL-FO with
embedded SVG only provides the possibility of having a
single flow. Furthermore, SVG itself has a very limited
capability of flow and does not span across SVG documents
or SVG groups

(Spec. 9, ll. 13-17).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima face case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). Moreover, “obviousness requires a suggestion of all limitations in a
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claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003).
Analysis
Appellant contends that “the Examiner argues that Hayashi discloses
templates nested within or under a primary template, or that templates are
associated with logical structure nodes which can be nested in a tree
structure” (App. Br. 18). Appellant contends that “the logical nodes are not
the templates. Hayashi fails to disclose nesting of templates” (App. Br. 18).
The Examiner finds that claim 10 “only requires defining how
document portion data are included/comprised within the template using
XML; and does not expressly require the template to further define/describe
how the data within the document portions are defined to be nested using
XML” (Ans. 14). The Examiner further finds that “Hayashi teaches that
data portions within a template can include main and nested data (also
explained in Hayashi: column 17, lines 10-29: whereas the nested data can
be used /subjected to a partial layout template)” (Ans. 14).
We find that Appellant has the better position. Claim 10 expressly
requires “defining a nested-flow within said main flow.” The Specification
explains the meaning of a “flow,” teaching that “document sections which
contain variable content are hereby referred to as flows” (Spec. 8, ll. 1-5).
Therefore, claim 10 requires defining a nested document section with
variable content within the main document, as interpreted in light of the
Specification.
The Examiner does not establish that the nested “nodes” described by
Hayashi in column 17 and figure 4 correspond to document sections with
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variable content, as required by claim 10 in light of the Specification. We
interpret Hayashi’s “nodes” in light of Hayashi’s Specification, which
teaches that “the logical objects designating the partial layout template are
called a ‘logical node’” (Hayashi, col. 13, ll. 1-2; FF 5). Hayashi further
explains that the “logical node has a role of designating activation of the
partial layout means 109 or the content layout means 104” (Hayashi, col. 13,
ll. 4-6; FF 6). Thus, the “node” in Hayashi is not itself a document section
with variable content, as required by Claim 10 and the instant Specification,
but rather is involved in activation of a layout means (FF 6). Therefore, the
Examiner has not established that Hayashi teaches “defining a nested-flow
within said main flow” because the Examiner has not established that
Hayashi’s nodes are reasonably mapped to the claimed “nested flow.”
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Hayashi and PPML render claim 10 obvious.
B. 35 U.S.C. § 103(a) over Hayashi, PPML, and Harnsberger
This rejection relies upon the underlying obviousness rejection over
Hayashi and PPML. Having reversed the rejection of claim 10, we
necessarily reverse this obviousness rejection further including Harnsberger,
since Harnsberger is not relied upon to teach “defining a nested-flow within
said main flow” as required by claim 10.
SUMMARY
In summary, we reverse the rejection of claims 10, 11, 14-16, 19, 20,
22, 25-28, and 30 under 35 U.S.C. § 103(a) as obvious over Hayashi and
PPML.
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We reverse the rejection of claims 12, 13, 17, 18, 21, 23, 24, and 29
under 35 U.S.C. § 103(a) as obvious over Hayashi, PPML, and Harnsberger.

REVERSED

cdc