Ex Parte Thijssen et al

Patent Trial and Appeal Board

Dec 17, 2013

10654487 (P.T.A.B. Dec. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ABRAHAM THIJSSEN
and SANDER H. LOKERSE
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Appeal 2011-007560
Application 10/654,4871
Technology Center 2100
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Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is OCÉ-TECHNOLOGIES B.V.
Appeal 2011-007560
Application 10/654,487

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 1-21, all the claims pending in the application. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to physically managing data
that represents an image for eventual presentation to a user. See Abstract.
Claim 1 is illustrative:
1. A managing method for managing data that represents a
document for eventual presentation to a user, based on said data,
which comprises the steps of:
acquiring the data from an appropriate document source
in a source representation,
selectively converting the data in source representation to
data in destination representation, while selectively storing in a
database managed data in an intermediate representation,
first, assessing quantitative storage constraints associated
with storing the managed data,
second, assessing quantitative physical converting
constraints associated with converting the stored managed data from
the source representation to the presentation representation, and
executing the converting before said storing, and/or after
said storing, respectively, on a dynamic trade-off basis between said
first assessment and said second assessment, while further considering
one or more applicable source profiles and one or more applicable
destination profiles,
wherein the selectively converting step selectively
converts the data in the source representation to the data in the
destination representation based on an idiosyncratic destination profile
of a destination apparatus represented by the destination
representation automatically and without receiving a specification of a
conversion form of the data in the destination representation from a
user.
Appeal 2011-007560
Application 10/654,487

3
Appellants appeal the following rejection:

Claims 1-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chiba (U.S. 6,651,120 B2, Nov. 18, 2003), Takashi (JP
10-021796, Feb. 3, 1998), and Veilleux (U.S. Patent Pub. 2002/0161659 A1,
Oct. 31, 2002).

ANALYSIS
Our representative claim, claim 1, recites, inter alia, “selectively
storing in a database managed data in an intermediate representation”
(emphasis added). Independent claims 18 and 21 recite commensurate
limitations. Thus, the scope of each of the independent claims includes an
“intermediate representation.”

Issue: Did the Examiner err in finding that the cited combination of
references, particularly Chiba, teaches and/or suggests a source and
intermediate representation, as set forth in claim 1?

The Examiner found that the “source representation is interpreted as
the state the data is in prior to being read by the image reading device, data
prior to being scanned . . . intermediate representation is the state the data is
in after being processed by the image reading device, data after being
scanned” (Ans. 18-19).
Appellants contend that “Chiba does not disclose selectively storing
managed data information in a database in an intermediate representation”
(App. Br. 13). We agree with Appellants.
Appeal 2011-007560
Application 10/654,487

4
As noted above, the Examiner interprets the claimed “source”
representation as pre-scanned data and the claimed “intermediate”
representation as scanned data. We find the Examiner’s interpretation to be
flawed for the following reasons:
For starters, Appellants’ Specification suggests that an “intermediate
representation” is distinct from the original representation and is a
representation that has already been converted in some earlier steps (see
¶ [0032] and original claim 8). Also, claim 1 requires that the “source
representation” be acquired from an appropriate document source (see claim
1). With that in mind, we find that the Examiner has not established or
explained how “pre-scanned” data is acquired data, and as such cannot be
the claimed “source representation.” At best, we find that the claimed
“source representation” reads on Chiba’s scanned original data (see Spec. ¶
[0025]). Furthermore, the Examiner has not shown a data representation that
has gone through some earlier conversion steps (i.e., intermediate because it
has not yet reaching the destination representation). In fact, Chiba appears
to transfer and convert at the same time (see Abstract). As a result, we are
persuaded that the Examiner has erred in showing “selectively storing in a
database managed data in an intermediate representation,” as set forth in the
claimed invention.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting representative claim 1 and claims 2-21 for
similar reasons. Since we agree with at least one of the arguments advanced
by Appellants, we need not reach the merits of Appellants’ other arguments.
It follows that Appellants have shown that the Examiner erred in finding that
the combined cited art render claims 1-21 unpatentable.
Appeal 2011-007560
Application 10/654,487

5

DECISION
We reverse the Examiner’s § 103(a) rejection.

REVERSED

msc