Ex Parte Simmonds et al

Patent Trial and Appeal Board

Jan 24, 2013

12407037 (P.T.A.B. Jan. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TREVOR SIMMONDS, GORDON REYNEN, and DAVID
EVANS
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Appeal 2011-000014
Application 12/407,037
Technology Center 2600
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Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and JAMES B.
ARPIN, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-9, 11-14, and 19-21, which are all of the pending
claims (App. Br. 2). Claims 10 and 15-18 have been canceled. An oral
hearing was conducted on this appeal on January 15, 2013. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed June 15, 2010), the Answer (mailed July
2, 2010), and the Reply Brief (filed Sept. 1, 2010). We have considered in
this decision only those arguments Appellants actually raised in the Briefs.
Any other arguments, which Appellants could have made, but chose not to
make, in the Briefs, are deemed to be waived. See 37 C.F.R.
§41.37(c)(1)(iv).

Appellants’ Invention
Appellants’ invention relates to a method for printing an electronic
image including a plurality of pixels onto a substrate using a
computer-assisted image processing system. Alpha channel information is
used in combination with substrate color information to calculate the
transparency level that needs to be applied to each pixel. See generally
Spec. ¶ 0014.
Claims 1 and 19 are illustrative of the invention and read as follows:
1. A method of printing an electronic image comprising a plurality of
pixels onto a substrate using a computer-assisted image processing system,
said method comprising using alpha channel information in combination
with substrate color information to calculate a transparency level that needs
to be applied to each pixel to produce an underbase that is printed on the
substrate, wherein the transparency level ranges from 0 percent to 100
percent.

19. A method of printing an image on a substrate, comprising:
using alpha channel information to calculate a transparency level for
producing an underbase that is printed on the substrate; and
printing the underbase that was calculated with the alpha channel
information on the substrate which is a different color than the substrate,
wherein:
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the color of the substrate forms a portion of the image to be printed,
and
the underbase is printed over and makes no part of the image to be
printed.

The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Barmettler US 6,738,071 B2 May 18, 2004
Ellis US 2007/0067928 A1 Mar. 29, 2007
Elwakil US 2007/0188535 A1 Aug. 16, 2007

Claims 1-6, 9, 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Barmettler in view of Ellis.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barmettler in view of Ellis and Elwakil.
Claims 12 and 19-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ellis in view of Barmettler.

ANALYSIS
Claims 1-6, 9, 11, 13, and 14
Appellants argue, with respect to the obviousness rejection of
independent claim 1, that the Examiner has not provided a proper basis for
the proposed combination of Barmettler and Ellis. Initially, Appellants
contend, and rely upon the 37 C.F.R. § 1.132 (Rule 132) Fresener
declaration for support, that the Examiner erred in relying upon the alpha
channel information teachings of Barmettler. According to Appellants, the
alpha channel information described by Barmettler is strictly for display
purposes, not for printing as claimed (App. Br. 7-13; Reply Br. 10-12). In
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Appellants’ view, therefore, the ordinarily skilled artisan would not have
contemplated combining Barmettler with the substrate printing teachings of
Ellis to arrive at the claimed invention (App. Br. 13).
Appellants’ arguments are not persuasive. We find that ample
evidence exists within the disclosure of Barmettler to support the
Examiner’s stated position (Ans. 3, 4, 19, and 20). As described by
Barmettler, alpha channel information along with background color
information contributes to the final image which is “displayed on the
monitor or printer.”1 (Barmettler, col. 3, l. 62 to col. 4, l. 15 (emphasis
added)). Barmettler further discloses (col. 3, ll. 3-4) that RGB information
read out of memory can be displayed or printed, while Figure 7, and the
accompanying description beginning at column 4, line 46, discloses a
“printer that uses the processes of the present invention.” (Emphasis added).
Further, we find that the Examiner has provided an articulated line of
reasoning with a rational underpinning to support the conclusion of
obviousness for the proposed combination of Barmettler and Ellis. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner
(Ans. 4 and 16) that, while Barmettler does not explicitly disclose that the
“background” upon which the final image, i.e., the underbase, is printed is a
substrate, an ordinarily skilled artisan would have recognized and
appreciated the obviousness of printing an underbase on a substrate in view
of the teachings of Ellis.
We are not persuaded by Appellants’ further contention that Ellis has
no teaching or suggestion of using alpha channel information to produce an

1 The Examiner’s stated position interprets the “final image” to be printed in
Barmettler as corresponding to the claimed “underbase.” (Ans. 3).
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underbase and, therefore, does not overcome this alleged deficiency of
Barmettler. (App. Br. 13-16; Reply Br. 7-12.) As pointed out by the
Examiner (Ans. 23); however, it is Barmettler, not Ellis, which is relied
upon for a teaching of using alpha channel information to produce a printed
underbase. Similarly, while Appellants contend (Reply Br. 8-10) that
Barmettler does not disclose using substrate color information to calculate a
transparency level since Barmettler does not disclose a substrate, the
Examiner relies upon Ellis, not Barmettler, for a substrate teaching.
Further, as we noted above, Appellants’ arguments challenging the
Examiner’s proposed combination of Barmettler and Ellis rely heavily upon
the expert testimony presented in the Fresener declaration. As summarized
by Appellants (App. Br. 12; Reply Br. 11), Mr. Fresener concludes that any
transparency information that uses alpha channel information in Barmettler
would be flattened during the printing process and, therefore, Barmettler’s
alpha channel information is used strictly for display purposes, not for
printing (see Fresener Decl. ¶¶ 20-21).
We agree with the Examiner’s ultimate conclusion, however, that the
evidence presented in the Fresener declaration is not persuasive when
balanced against the explicit and unambiguous disclosure in Barmettler that
alpha channel and background information contribute to the final image, i.e.,
the underbase, which is printed (col. 3, l. 62 to col. 4, l. 15).2

2 The Examiner’s comments in the Answer suggest the untimeliness of the
filing of the Fresener declaration (Ans. 17-18). As noted by Appellants,
however, evidence presented in the Advisory action (mailed May 3, 2010)
indicates that the Examiner has entered the Fresener declaration into the
record and has in fact considered the merits of the declaration.
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We further recognize that Appellants, for the first time in the Reply
Brief, has presented arguments contending that the Examiner erred in
equating the “final image” in Barmettler with the claimed “underbase.”
According to Appellants, the Examiner’s position is inconsistent with the
meaning provided to the term “underbase” in Appellants’ Specification, as
well as being inconsistent with the ordinary meaning of the term, i.e., an
underbase is applied prior to applying the final image which is printed on the
underbase (Reply Br. 3-8).3 Since this issue was raised for the first time on
appeal in the Reply Brief, it is, therefore, deemed to be waived. See Ex
parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”4)
(absent a showing of good cause, the Board is not required to address an
argument newly presented in the Reply Brief that could have been presented
in the principal Brief on Appeal).
For the above reasons, the Examiner’s § 103(a) rejection of
independent claim 1, as well as of dependent claims 2-6, 9, 11, 13, and 14
not separately argued by Appellants, is sustained.

Claims 7 and 8
We also sustain the Examiner’s obviousness rejection of dependent
claims 7 and 8, in which Elwakil is applied to the combination of Barmettler
and Ellis to teach or suggest the translucent/transparent substrate features of
the rejected claims. Appellants (App. Br. 16) rely upon arguments asserted

3 The Examiner has taken the position equating Barmettler’s “final image”
with the claimed “underbase” at least as far back as the Final Office action
(mailed Nov. 25, 2009).
4 Designated as “Informative Opinion” at
http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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against the rejection of independent claim 1, which arguments we find
unpersuasive as discussed supra.

Claims 12 and 19-21
We also sustain the Examiner’s obviousness rejection of independent
claim 19, and its dependent claims 12, 20, and 21, based on the combination
of Ellis and Barmettler. Independent claim 19 differs from previously
discussed independent claim 1 by including a recitation that the underbase is
printed over and “makes no part of the image to be printed.” In addressing
this claimed feature, the Examiner proposes the same Barmettler/Ellis
combination as applied against independent claim 1, but relies on Ellis as the
primary reference.
Appellants argue that, in contrast to the claimed invention, Ellis
discloses that the underbase forms part of the final printed image and cites
paragraphs 0013, 0014, and 0103 of Ellis in support (App. Br. 17-19). We
do not agree with Appellants. We find that the embodiment disclosed in
paragraph 0103 of Ellis, in particular, supports the Examiner’s determination
(Ans. 25) that the underbase is printed over by a color and forms no part of
the printed image. As described by Ellis, the white ink underbase is printed
onto the substrate, and the final image is printed “at least” over the
underprint portion of the substrate (¶ 0103, ll. 1-4). While paragraph 0014
of Ellis suggests an embodiment in which the white underlayer “may
extend” beyond the dimensions of the printed image, this does not contradict
the explicit teachings of the embodiment of paragraph 0103, which discloses
the complete overprinting of the underbase.
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Appellants’ arguments with respect to Barmettler, including a reliance
on the Fresener declaration, reiterate those asserted against the rejection of
claim 1 (App. Br. 19-24; Reply Br. 10-12). As previously discussed, we
find these arguments unpersuasive.

CONCLUSION OF LAW
We conclude that the Examiner did not err in rejecting claims 1-9, 11-
14, and 19-21 under § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1-9, 11-14, and
19-21 under § 103(a).
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)(2010).

AFFIRMED

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