Ex Parte Williams

Patent Trial and Appeal Board

Oct 25, 2017

12925945 (P.T.A.B. Oct. 25, 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.
12/925,945 11/01/2010 Leon Calvin Williams 110656-8505.US01 9203
22862 7590 10/27/2017
FNN PATFNT TtROTTP
EXAMINER
c/o Perkins Coie LLP BEUTEL, WILLIAM A
P.O. Box 1247
Seattle, WA 98111-1247 ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEON CALVIN WILLIAMS
Appeal 2015-007328
Application 12/925,9451
Technology Center 2600
Before MAHSHID D. SAADAT, DAVID M. KOHUT, and
KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decisions rejecting claims 1—8 and 10—14. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Electronics for Imaging, Inc. as the real party in
interest. App. Br. 3.
Appeal 2015-007328
Application 12/925,945
STATEMENT OF THE CASE
The present application describes 3D modeling of a proposed large
format print with a realistic environment, perspective, animation and
lighting. Spec. 1003.
Claim 1 is independent and reproduced below with disputed
limitations emphasized and bracketed material added:
1. A method for previsualizing large format
print jobs in context, comprising operations of:
receiving, by a computer, a print job source
image;
receiving, by the computer, at least one 3D
environment that includes a virtual representation of
a display site derived from an image of the display
site,
wherein the display site is a real world
site for displaying a printed image of the print
job source image',
enabling, by the computer, a user to
iteratively edit the print job source image,
wherein the user is able to view, while
a virtual representation of the printed image
is being displayed at the virtual
representation of the display site, a 2D
visualization of a particular perspective of the
virtual representation of the printed image,
the particular perspective being one of a
plurality of perspectives of the virtual
representation of the printed image that can
be viewed by use of the computer[;]
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Appeal 2015-007328
Application 12/925,945
displaying, by the computer, the 2D
visualization of the particular perspective of the
virtual representation of the printed image; and
editing, by the computer, the print job source
image.
Claim 14 depends from claim 1. We observe Appellant has
erroneously enumerated two different claims as “13” in the claims appendix
accompanying the Appeal Brief. For clarity of the record, we refer to the
claim reproduced below as “claim 14.”
14. The invention of Claim 1, where:
editing the print job source image includes
iteratively editing the print job source image to
create an edited print job source image and
reintegrating the edited print job source image into
the display site by adjusting a camera angle and a
lighting scheme within the 3D environment to
simulate a spectral response of ambient light
reflected on a particular material with a particular
ink and placed at a particular perspective with a
particular lighting to reveal flaws in the edited print
job source image.
The Rejections
Claim 14 stands rejected under 35 U.S.C. § 112 as indefinite.2
Claims 1, 2, 4, and 12 stand rejected under 35 U.S.C. § 103(a) over
Sato (US 2007/0240042 Al; Oct. 11, 2007) and Goldwater
(US 2011/0075200 Al; Mar. 31, 2011).
Claim 3 stands rejected under 35 U.S.C. § 103(a) over Sato,
Goldwater, and Endo (US 2003/0107569 Al; June 12, 2003).
2 The Examiner has withdrawn rejections of claims 1—8 and 10—13 as
indefinite. Ans. 23.
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Appeal 2015-007328
Application 12/925,945
Claim 5 stands rejected under 35 U.S.C. § 103(a) over Sato,
Goldwater, Takahashi et al. (US 2006/0055956 Al; Mar. 16, 2006) and
Martucci (US 6,263,119 Bl; July 17, 2001).
Claim 6 stands rejected under 35 U.S.C. § 103(a) over Sato,
Goldwater, and Kwok (US 2008/0055306 Al; Mar. 6, 2008).
Claims 7, 8, 10, 13 and 14 stand rejected under 35 U.S.C. § 103(a)
over Sato, Goldwater, Kwok, and Hobbs (US 2004/0010756 Al; Jan. 15,
2004).
Claim 11 stands rejected under 35 U.S.C. § 103(a) over Sato,
Goldwater, Kwok, Hobbs and Spooner (US 7,542,034 B2; June 2, 2009).
ANALYSIS
Indefiniteness
Appellant does not challenge the Examiner’s indefmiteness rejection
of claim 14, but instead represents that “Appellant wishes to cancel claim 14
in an amendment to be entered at a later time.” Reply Br. 2.3 Because
Appellant does not demonstrate Examiner error in the rejection, we
summarily affirm the Examiner’s rejection of claim 14 as indefinite. See 37
C.F.R. § 41.37(c)(l)(iv) (2015) (Arguments not made are considered
waived.).
Obviousness
The Examiner finds Sato teaches or suggests the claimed “receiving,
by the computer, at least one 3D environment that includes a virtual
representation of a display site derived from an image of the display site,
3 The Reply Brief lacks page numbers. We refer to the pages of the Reply
Brief as if sequentially numbered.
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Application 12/925,945
wherein the display site is a real world site for displaying a printed image of
the print job source image.” Final Act. 5—7. More specifically, Sato
describes scanning a physical sheet of paper in order to determine
characteristics of the paper onto which content will be printed. Soto 129.
The Examiner finds the paper onto which content will be printed meets the
claimed “display site . . . wherein the display site is a real world site for
displaying a printed image of the print job source image.” Ans. 25. The
Examiner elaborates that Soto’s “ink representing the image” placed on the
paper meets the claimed “printed image.” Id.
Appellant contends, inter alia, that the Examiner errs because under
the Examiner’s interpretation, the claimed “‘display site’ and the ‘printed
image’ of Sato are one and the same.” App. Br. 15.
We agree with Appellant. As an initial matter of claim construction,
we observe Appellant does not define in the Specification the terms “display
site” and “printed image.” We apply the broadest reasonable interpretation
of claim terms, consistent with the specification, as would be understood by
one of ordinary skill in the art. In re Am. Acad, of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (citations omitted). Where, as here, the
Specification does not explicitly define a term, the term should be given its
ordinary meaning. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Significantly, the broadest reasonable interpretation in light of the
specification of a claim term “is an interpretation that corresponds with what
and how the inventor describes his invention in the specification, i.e., an
interpretation that is ‘consistent with the specification.’” In re Smith Int’l.,
(2016-2303), slip. op. 13 (Fed. Cir. Sept. 26, 2017) (citing In re Morris, 111
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Application 12/925,945
F.3d 1048, 1054 (Fed. Cir. 1997); In re Suitco Surface, 603 F.3d 1255,
1259-60 (Fed. Cir. 2010)).
The Specification describes a need to “permit one to view the print job
in its intended context.” Spec. 1 6. This need, the Specification describes, is
related to a paradox that “print customers would like to view a completed
print job as applied in its intended context before actually committing to
printing[;] [hjowever, the only way to guarantee that a job will satisfy the
customer is to print the job, install it in its intended environment, and then
evaluate the print job in situ.” Id. 1 1007. The Specification seeks to resolve
this paradox by “visualizing the 3D environment” including the print job
inserted at a designated site within the environment. Id. 1 1008.
The Examiner’s reading of the disputed claim limitation unreasonably
conflates the claimed display site and printed image when read in the context
of the foregoing descriptions in the Specification. See In re Smith Int
2016-2303, 2016-2303 at *13. Although we do not read limitations from the
Specification into the claims, we interpret the claims in light of the
Specification to determine the broadest reasonable interpretation. Id.;
accord In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Under the
Examiner’s interpretation, one of ordinary skill in the art would need to
understand the term “printed image” to encompass the ink arranged on a
sheet of paper, but not the paper itself, because the paper is the “real world
site for displaying the printed image.” We determine such an interpretation
is beyond the ordinary meaning of the terms “display site” and “printed
image.” See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The Examiner
offers no explanation or evidence for why one of ordinary skill reasonably
would understand the claim language in this manner, and why such an
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Application 12/925,945
understanding would constitute the broadest reasonable interpretation of
these terms, particularly given the Specification’s descriptions to the
contrary. See Final Act. 6; Ans. 24—25; see also In re Smith Int’L, 2016-
2303 at *13.
Accordingly, we do not sustain the Examiner’s obviousness rejections
of independent claim 1 and its dependent claims 2—8 and 10-14.
DECISION
We affirm the Examiner’s decision rejecting claims 14 as indefinite
under 35 U.S.C § 112.
We reverse the Examiner’s decisions rejecting claims 1—8 and 10—14
for obviousness under 35 U.S.C. § 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)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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