Ex Parte Giannetti

Patent Trial and Appeal BoardNov 28, 2012

10836337 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte FABIO GIANNETTI _____________ Appeal 2010-005982 Application 10/836,337 Technology Center 2100 ______________ Before DAVID M. KOHUT, BRYAN F. MOORE, and JOHN G. NEW, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 2-6, 8, 9, 11, 12, 14, 17, 19, 20, 26, 27, and 29-37.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims and enter a new ground of rejection. 1 Claims 1, 7, 10, 13, 15, 16, 18, 21-25, and 28 were previously cancelled. Appeal 2010-005982 Application 10/836,337 2 INVENTION The invention is directed to a method, computer readable medium, and digital printing press for rendering a document, determining void spaces on the document, and filling the void spaces prior to a subsequent rendering of the document. Spec. 3-5. Claim 30 is representative of the invention and is reproduced below: 30. A method of generating a document comprising the steps of: assembling a set of base content items and a design for the document; applying, to the document design and the content items, rules for rendering the document thereby to generate an initial rendered document; establishing the existence of a void space on the initial rendered document; selecting at least a further content item for insertion into the void space; and applying to the further content item, the rendering rules thereby to generate a subsequent rendered document, wherein the further content item inserted into the subsequent rendered document is capable of matching a style of one of the base content items; wherein the rendering rules match the further content item to the existing base content of the document; wherein the rendering rules select said further content item according to an information content of said base content items; and wherein the subsequent rendered document is digitally printed. REFERENCES Markowitz US 6,311,185 B1 Oct. 30, 2001 Currans EP 1 186 992 A2 Mar. 13, 2002 Appeal 2010-005982 Application 10/836,337 3 Dean US 2004/0059708 A1 Mar. 25, 2004 (filed Dec. 6, 2002) REJECTIONS AT ISSUE Claims 2-6, 8, 9, 11, 12, 17, 26, and 29-37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Currans and Dean. Ans. 3-16. Claims 14, 19, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Currans, Dean, and Appellant’s Admitted Prior Art (AAPA). Ans. 17-18. Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Currans, Dean, and Markowitz. Ans. 19-20. ISSUES2 Did the Examiner err in finding that the combination of Currans and Dean teaches or suggests the limitation of claim 30 reciting “wherein the further content item inserted into the subsequent rendered document is capable of matching a style of one of the base content items”? ANALYSIS Independent claim 30 recites “wherein the further content item inserted into the subsequent rendered document is capable of matching a style of one of the base content items.” Independent claims 31-33 contain the same limitation. Claims 2-6, 8, 9, 11, 12, 14, 17, 19, 20, 26, 27, 29, and 34-37 depend upon one of the independent claims. The Examiner rejects the disputed portion of the claim using Currans and a broad interpretation of the 2 Appellant makes additional arguments with respect to claims 2-6, 8, 9, 11, 12, 14, 17, 19, 20, 26, 27, 29, and 34-37. App. Br. 14-18. We will not address the additional arguments as this issue is dispositive of the appeal. Appeal 2010-005982 Application 10/836,337 4 word “style” to mean “size.” Ans. 22-23. Appellant argues that the Examiner’s interpretation is inconsistent with the plain meaning of the term and one of ordinary skill would not have interpreted the term as such. App. Br. 13; Reply Br. 2. However, we do not find these arguments to be persuasive as the Examiner has correctly indicated that the Specification does not preclude such an interpretation. Ans. 22-23. Thus, we agree with the Examiner’s interpretation of the term. However, while Currans indicates that the size of the windows are changed to fit into a particular void, the Examiner has not shown and we do not find that Currans teaches matching the size of one of the base content items, as argued by Appellant. App. Br. 13; Reply Br. 2. Even so, we have reviewed the rest of the Currans reference and we find that Currans teaches information content files that use either True-Type, Open Type, or Post Script fonts, which we find may be reasonably interpreted as interpreted as “styles.” ¶ [0033]. Additionally, Currans teaches that the advertising image can also use True-Type text. ¶ [0036]. Thus, Currans teaches a further content item (the advertising) inserted into the subsequent rendered document that is “capable,” i.e., Currans contemplates, even if it does not require, matching a style of one of the base content items (the initial information content). We designate our analysis to be a new ground of rejection under 35 U.S.C. § 103(a) over the combination of Currans and Dean. In light of the new ground of rejection of the independent claims, we exercise our discretion to not address the rejections of the dependent claims over the prior art. In re Steele, 305 F.2d 859, 862 (CCPA 1962). Appeal 2010-005982 Application 10/836,337 5 Pursuant to 37 C.F.R. § 41.50(b), we additionally enter a new ground of rejection of claims 26-29, 33, and 37 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Independent claim 33 recites “computer readable medium” that includes code. Upon reviewing Appellant’s Specification for context, we do not find any explanation for what constitutes the claimed “computer- readable media.” Therefore, because Appellant’s Specification is silent in this regard and the claim does not preclude the computer program product from being embodied in a carrier wave, and giving claim 33 the broadest reasonable construction, we find that claim 33 encompasses the computer readable medium being embodied on a carrier wave. A signal (i.e., a computer readable medium embodied in a carrier wave) does not fit within at least one of the four statutory subject matter categories under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), and Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Since claim 33, as we have construed it above, encompasses a propagating, transitory signal, we find claim 33 is directed to non-statutory subject matter. Dependent claims 26, 27, 29, and 37 also are directed toward non-statutory subject matter for the same reasons discussed supra. CONCLUSION The Examiner erred in finding that the combination of Currans and Dean teaches or suggests wherein the further content item inserted into the subsequent rendered document is capable of matching a style of one of the base content items. Appeal 2010-005982 Application 10/836,337 6 SUMMARY The Examiner’s decision to reject claims 2-6, 8, 9, 11, 12, 14, 17, 19, 20, 26, 27, and 29-37 is reversed. We enter new grounds of rejection for claims 30-33 under 35 U.S.C. § 103(a) and claims 26, 27, 29, 33, and 37 under 35 U.S.C. § 101. TIME PERIOD This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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). REVERSED 37 C.F.R. § 41.50(b) rwk