Ex Parte Gnutzmann et al

Patent Trial and Appeal Board

Dec 5, 2017

13586043 (P.T.A.B. Dec. 5, 2017)

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.
13/586,043 08/15/2012 FRANK GNUTZMANN A-5357 6353
24131 7590 12/07/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
TARDIF, DAVID P
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
12/07/2017 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):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK GNUTZMANN and
PETER EDUARD WEINHOLZ
Appeal 2017-000013
Application 13/586,043
Technology Center 2800
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1—3 and 9-11 under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Yeakley (US 2007/0152058 Al, published July 5,
2007), and of claims 5—8 under pre-AIA 35 U.S.C. § 103(a) as obvious over
at least Yeakley.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 Heidelberger Druckmaschinen Aktiengesellschaft is stated to be the real
party in interest (Appeal Br. 2).
2 The Examiner applies case law precedent to the rejection of dependent
claims 5 and 6, and an additional reference to dependent claims 7 and 8
Appeal 2017-000013
Application 13/586,043
We affirm.
Claim 1 is illustrative of the claimed subject matter:
1. A method for imaging a substrate to produce an image
on a surface of the substrate and to produce at least one image
region containing a barcode, the method comprising the
following steps:
producing a file on a first computer in a page description
language, the file including a printing original for imaging the
substrate;
creating a first section, describing a first barcode, within
a first region of the file and making the first region
unambiguously identifiable by using identification elements of
the page description language;
creating at least one second section in the first region of
the file; and
storing meta-information relating to the description of the
barcode in the at least one second section;
storing the file on a storage medium or sending the file as
a data stream to a second computer, following production of the
file;
re-opening the file with the first or second computer;
identifying the first region of the file using the
identification elements;
accessing the first barcode and making changes to at least
one of individual parameters or contents of the first barcode;
producing a first region with changed content within the
file by using at least one of the changed parameters or contents;
and
on the basis of the file, imaging the substrate in an
imaging device and physically producing the barcode in the at
least one image region while taking at least one of the changed
parameters or changed content into account.
(Ans. 6—11; Final Action 6—10), however, Appellants rely solely upon the
arguments made for the rejection of claim 1 (e.g. Appeal Br. 14).
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Application 13/586,043
Appellants arguments solely focus on claim 1 (generally Appeal Br.;
Reply Br.); thus all the claims stand or fall with claim 1.
OPINION
We have reviewed Appellants’ arguments. However, we determine
that a preponderance of the evidence supports the Examiner’s finding that
the claimed subject matter of independent claim 1 is anticipated within the
meaning of § 102 in view of Yeakley. Accordingly, we will sustain the
Examiner’s rejection for essentially those reasons expressed in the Answer.
We add the following for emphasis.
Appellants’ main argument is that the Examiner is de facto taking an
unreasonably broad interpretation of the claim language “first section . . .
within a first region of the file” and “second section . . . within the first
region of the file” (App. Br. 5—8; generally Reply Br.). In construing
claims, “the PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id. As pointed out by the Examiner, it is reasonable
to view Yeakley’s PDF (with the barcode image data) and XML (which
stores the meta-information of the barcode) as “a file” in accordance with
claim 1 (Ans. 12). Notably, Appellants’ Specification describes that “the
meta-information can be stored in proprietary file formats and PDL
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Application 13/586,043
encoding is not necessary in this case” (Spec. 137; see also Spec. 135).
Thus, Appellants have not shown error in the Examiner’s determination that
the claim encompasses Yeakley’s “file” having a first section within a first
region of the file having PDF image data and a second section in the first
region (i.e., the XML section having meta-data) (e.g., Ans. 12).
Appellants also argue that Yeakley does not disclose updating the
barcode (Appeal Br. 8, 10 (arguing that the editing is of the XML file and
not the PDF file); Reply Br. 7—9). This argument is not persuasive of error,
as one of ordinary skill would have reasonably interpreted the claimed
“making changes to” the parameters or contents of the barcode as recited in
claim 1 to encompass the editing described in Yeakley as explained by the
Examiner (Ans. 13, 14, see also Ans. 4, 5).
Thus, a preponderance of the evidence supports the Examiner’s
position that one of ordinary skill would have reasonably inferred from
Yeakley’s disclosure a method as claimed, including having the recited first
and second sections and making changes to the barcode information and
printing the edited version (e.g., (e.g., Ans. 12—14)). In re Preda, 401 F.2d
825, 826 (CCPA 1968) (In determining whether a reference anticipates the
subject matter recited in a claim, “it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.”) Appellants
have not directed our attention to persuasive reasoning or evidence to
establish that the Examiner’s interpretation of Yeakley’s disclosure is
unreasonable.
The Examiner’s § 102 rejection of claims 1—10, 13, and 14 is
affirmed. Appellants have not presented any further arguments with respect
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Application 13/586,043
to the § 103 rejections of claims 5—8. Accordingly these rejections are also
affirmed.
ORDER
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)
AFFIRMED
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