Ex Parte Mastie et al

Patent Trial and Appeal Board

Nov 9, 2016

12771005 (P.T.A.B. Nov. 9, 2016)

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.
8185P087 1774
EXAMINER
AUGUSTIN, MARCELLUS
ART UNIT PAPER NUMBER
2674
MAIL DATE DELIVERY MODE
12/771,005 04/30/2010
76073 7590 11/10/2016
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
Scott D. Mastie
11/10/2016 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 SCOTT D. MAS TIE and CRAIG D. BROSSMAN
Appeal 2014-006070
Application 12/771,005
Technology Center 2600
Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-006070
Application 12/771,005
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3—15, 17—25, and 27—35. We have jurisdiction under 35 U.S.C.
§ 6(b).
We Affirm.
Exemplary Claim
Claims 1 and 30 are illustrative:
1. A computer generated method comprising:
examining a print job data stream spooled in a spooled
print production file;
identifying one or more white space regions within
documents in the print production file;
quantifying each of the white space regions to establish
one or more characteristics of the content to be inserted into
each white space region; and
inserting content into each of the white space regions.
30. A computer system comprising:
a memory to store a printing software product;
a processor, coupled to the memory, to execute the
printing software product; and
a display device to display a graphical user interface
(GUI) upon the processor executing the printing product, the
GUI having menu options to enable identification of one or
more white space regions within documents in a print
production file and selection of content to be inserted in the
white space regions.
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Appeal 2014-006070
Application 12/771,005
The Examiner’s Rejection
Claims 1, 3—15, 17—25, and 27—35 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Isles (US 2008/0291486 Al, Nov. 27,
2008). Final Act. 3—16.
Appellant’s Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1 as
anticipated because Isles does not disclose “a process of quantifying
white space regions to establish one or more characteristics of content
to be inserted into each white space region” (hereinafter “the
quantifying limitation”), as recited in independent claim 1. Br. 7—10.
In particular, Appellants contend “Isles fails to disclose or suggest
establishing characteristics of content to be inserted into a white space
region.” Id. at 8—9.
2. Appellants contend that the Examiner erred in rejecting claim 30 as
anticipated because Isles does not disclose “a GUI having menu
options to enable identification of one or more white space regions
within documents in a print production file and selection of content to
be inserted in the white space regions” (hereinafter “the identification
limitation”). Br. 11.
ANALYSIS1
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
1 Appellants focus its contentions on claims 1 and 30, and advances no
separate, substantive arguments for the remaining rejected claims 3—15, 17—
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Appeal 2014-006070
Application 12/771,005
conclusions. We have reviewed the Examiner’s Final Rejection and
response to Appellants’ arguments (Final Act. 3—18; Ans. 16—20). We
concur with the findings made in the Examiner’s Final Rejection and the
Examiner’s conclusions made in the Answer. Id. We highlight and address
specific findings and arguments for emphasis as follows.
As to contention 1, we begin our analysis by first considering the
scope and meaning of the disputed quantifying limitation, which must be
given the broadest reasonable interpretation consistent with Appellants’
disclosure, as explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted
as broadly as their terms reasonably allow”). Our reviewing court further
states, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary
artisan after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (enbanc).
In particular, Appellants’ Specification states the following:
At processing block 220, the identified white spaces are
quantified. For instance, fixed white space regions are
quantified in terms of the size and type of (e.g., text or image)
content that may be placed within the white space. This
quantification may subsequently be codified and stored. In one
embodiment, a quantification value may be a number of
25, 27—29, and 31—35. Br. 12. Arguments not made are considered waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal 2014-006070
Application 12/771,005
characters of message text in a certain point size that would fit
in the white space region, while in other embodiments it may
include dimensions of an image that could fit within the region.
Spec. 127 (emphasis ours).
Although this disclosure is not limiting of the claimed invention, it
provides context for interpretation of the disputed quantifying limitation.
The Examiner has identified the relevant portions of Isles and has
provided sufficient explanation with corresponding citations to various parts
of the reference for disclosing the disputed quantifying limitation. Ans. 16—
19. In particular, the Examiner finds that paragraphs 85 and 94 of Isles
disclose the disputed quantifying limitation.
Based on our review of Isles flflf 85, 94; Ans. 16—19), we find that the
Examiner, giving the claim its broadest reasonable interpretation consistent
with the Specification, has properly found that the disputed quantifying
limitation is met by Isles.
As to contention 2, we agree with and adopt as our own the
Examiner’s findings that Isles’ disclosure meets the disputed identification
limitation of claim 30:
The computing devices include a display having a graphical
user interface (Fig. 2, [0084]—[0085] and [0094]) consistent
with Appellant’s disclosure of (Specification para. 0026 and
0027) where a user interact with the device comprising menu
options where a whitespace analysis module identifies white
spaces comprising margin spacing, character spacing, line
spacing, and whitespace amount; the analysis module 220
further includes identifying one or more white space regions
within documents in the print production file including
document characteristics comprising said whitespace of margin
spacing, character spacing, line spacing and the like where a
whitespace management feature 186 determine and establishes
the characteristics of the whitespace regions and the selected
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Appeal 2014-006070
Application 12/771,005
content area characteristics to be inserted in the whitespace
regions.
Ans. 19-20 (emphasis ours).
We observe that no Reply Brief is of record to rebut such findings
including the Examiner’s responses to Appellants’ arguments.
DECISION
The Examiner’s rejections of claims 1, 3—15, 17—25, and 27—35 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)(l)(iv).
AFFIRMED
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