Ex Parte Adams et al

Board of Patent Appeals and Interferences

Feb 12, 2009

11169063 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN PAUL ADAMS,
MICHAEL JOSEPH DATTILO, and
BRENT ALLEN SCHANDING
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Appeal 2008-5978
Application 11/169,063
Technology Center 1700
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Decided:1 February 12, 2009
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5978
Application 11/169,063

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-15, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for generating a perforation clip
region comprising first displaying on a screen a perforation pattern, and then
displaying at least one image at least partially within the perforation pattern.
Claim 1 is illustrative:
1. A method for generating a perforation clip region, comprising:

defining a shape of a desired perforation pattern on a display screen,
said perforation pattern defining perforation locations for a perforation
operation yet to be performed;

after displaying said perforation pattern, then inserting at least one
image onto said display screen with at least a portion of said at least one
image being positioned within said perforation pattern; and

previewing a combined image of said perforation pattern and said at
least one image.

The References
Kanai 5,692,438 Dec. 2, 1997
MacDonald 6,594,026 B2 Jul. 15, 2003
Baron 2003/0206211 A1 Nov. 6, 2003

The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
8, 10-12, 14 and 15 over MacDonald; claim 9 over MacDonald in view of
Baron; and claim 13 over MacDonald in view of Kanai.
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Appeal 2008-5978
Application 11/169,063

OPINION
The Examiner’s rejections are affirmed as to claims 1-4 and 6-15, and
reversed as to claim 5.
Rejection of claims 1-8, 10-12,
14 and 15 over MacDonald
The Appellants provide a substantive argument for the separate
patentability only of claim 5 (Br. 14-16). The Appellants state that claim 15
is patentable in its own right, but the Appellants rely upon the same
argument set forth with respect to claim 1 from which claim 15 depends
(Br. 16-18). We therefore limit our discussion to claim 5 and one claim in
the remaining group, i.e., claim 1, which is the sole independent claim.
Claims 2-4, 6-8, 10-12, 14 and 15 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 1
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that MacDonald would have rendered prima facie obvious, to
one of ordinary skill in the art, displaying a perforation pattern on a display
screen and then inserting at least one image onto the display screen with at
least a portion of the at least one image being positioned within the
perforation pattern?
Findings of Fact
MacDonald discloses “a printer incorporating a controllable
perforator, the perforator being controlled by software preferably provided
as a subset of or supplemental to software operated on a pre-existing
personal computer used to control the printing functions of the printer”
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Appeal 2008-5978
Application 11/169,063

(col. 2, ll. 41-45). “[T]ypically the user will first define the textual and
graphical material to be printed, and will then simply locate the respective
position at which perforation is desired with respect to this material by
indicating a location on the display using the mouse or the like” (col. 12,
ll. 20-24).
Analysis
The Appellants argue that MacDonald’s steps are in the reverse order
of the Appellants’ steps, i.e., MacDonald displays the image and then
displays the perforation pattern (Br. 12-14; Reply Br. 5-7). The Appellants
argue that the Appellants’ order of steps has the advantage of permitting the
user to position the image, in whole or in part, within the predefined
perforation pattern (Br. 12-13; Reply Br. 6).
MacDonald’s discloses that defining the image and then the
perforation pattern is the typical order (col. 12, ll. 20-24), but MacDonald
does not limit the method to that order. Hence, one of ordinary skill in the
art, through no more than ordinary creativity, would have carried out
MacDonald’s method using either order. See KSR Int’l. Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007) (In making an obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”). One of ordinary skill in the art
would have appreciated that defining the perforation pattern first would have
the advantage, as pointed out by the Appellants (Br. 12-13; Reply Br. 6), of
not requiring adjustment of the perforation pattern, but would have the
disadvantage of requiring adjustment of the image such that the desired
portion thereof fits within the perforation pattern. Likewise, one of ordinary
skill in the art would have appreciated that defining the image first would
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Appeal 2008-5978
Application 11/169,063

have the benefit of not requiring adjustment of the image, but would have
the disadvantage of requiring adjustment of the perforation pattern such that
it encompasses the desired portion of the image. One of ordinary skill in the
art would have chosen the order of steps based upon which advantage was
desired.
MacDonald discloses that the actual printing and perforating steps can
be performed in either order or simultaneously (col. 12, ll. 44-46), and
MacDonald exemplifies that invitations can be perforated and then printed
within the perforation outline (col. 7, ll. 13-16). It appears that if anything,
these disclosures would have tended to lead one of ordinary skill in the art to
consider the steps of displaying the perforation pattern and the image
likewise to be performable in either order.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that MacDonald would have rendered prima facie obvious, to
one of ordinary skill in the art, displaying a perforation pattern on a display
screen and then inserting at least one image onto the display screen with at
least a portion of the at least one image being positioned within the
perforation pattern.
Claim 5
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that MacDonald would have rendered prima facie obvious, to
one of ordinary skill in the art, manually tracing a perforation pattern around
a preexisting image that is different from the at least one image recited in
claim 1?
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Application 11/169,063

Analysis
The Appellants argue that MacDonald does not disclose, teach or
suggest a preexisting image that is traced around to define a perforation and
is different from the at least one image (Br. 15; Reply Br. 8).
The Examiner argues that
MacDonald teaches the structure capable of performing the
method for generating a perforation clip region in Fig. 1,
wherein the user has the option of manually tracing the said
perforation pattern around a second pre-existing image that is
stored on the user’s computer, the second image maybe [sic]
a graphical image, Col. 12 lines 10-14, which could be
different than the at least one image being text inputted by
the user, Col. 12 lines 21-25

(Ans. 5).
The Examiner’s argument regarding MacDonald’s disclosed structure
is not well taken because what the Examiner must establish is that
MacDonald would have rendered prima facie obvious, to one of ordinary
skill in the art, the Appellants’ claimed method, not merely a structure
capable of carrying out that method.
Furthermore, neither MacDonald’s Figure 1, which is a block diagram
of a printer/perforator unit, nor the portions of MacDonald’s text relied upon
by the Examiner disclose tracing around an image that is different from an
image positioned at least partially within a perforation pattern. Column 12
lines 10-14, relied upon by the Examiner, discloses that a user can input
perforation commands in addition to previously-input textual and graphic
material. Column 12, lines 21-25, relied upon by the Examiner, discloses
that the user typically will define textual or graphical material to be printed
and then will indicate the location of the perforation pattern on the display.
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Appeal 2008-5978
Application 11/169,063

Conclusion of Law
The Appellants have shown reversible error in the Examiner’s
determination that MacDonald would have rendered prima facie obvious, to
one of ordinary skill in the art, manually tracing a perforation pattern around
a preexisting image that is different from the at least one image recited in
claim 1.
Rejection of claim 9 over MacDonald in view of Baron
The Appellants point out that Baron discloses displaying a graphical
representation and then adding score indicia (¶ 0025), and the Appellants
argue that “Claim 9 is patentable due to its dependence from claim 1, since
Baron does not overcome the deficiencies of MacDonald as applied to
claim 1” (Br. 19).
As discussed above regarding the rejection of claim 1, those
deficiencies do not exist. Hence, we are not persuaded of reversible error in
the rejection of claim 9.
Rejection of claim 13 over
MacDonald in view of Kanai
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that MacDonald and Kanai would have rendered prima facie
obvious, to one of ordinary skill in the art, previewing a combined
perforation pattern and image on a hardcopy printout?
Analysis
The Appellants argue that MacDonald only discloses generating a
preview on a computer, i.e., a soft copy, not previewing a hardcopy (Br. 23).
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Application 11/169,063

MacDonald discloses that when the user is satisfied with the relative
locations of the perforations and textual or graphical material on the display,
the user may provide a print command prior to the computer issuing
perforator control commands (col. 12, ll. 36-44). That disclosure appears to
be a disclosure of previewing the image and perforation pattern on a
hardcopy before perforation is performed. That disclosure at least would
have led one of ordinary skill in the art, through no more than ordinary
creativity, to preview a hardcopy to get a better idea of what the perforated
hardcopy will look like. See KSR, 127 S. Ct. at 1741.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that MacDonald and Kanai would have rendered prima facie
obvious, to one of ordinary skill in the art, previewing a combined
perforation pattern and image on a hardcopy printout.2
DECISION/ORDER
The rejection under 35 U.S.C. § 103 of claims 1-8, 10-12, 14 and 15
over MacDonald is affirmed as to claims 1-4, 6-8, 10-12, 14 and 15, and is
reversed as to claim 5. The rejections under 35 U.S.C. § 103 of claim 9 over
MacDonald in view of Baron, and claim 13 over MacDonald in view of
Kanai are affirmed.
It is ordered that the Examiner’s decision is affirmed-in-part.

2 A discussion of Kanai is not necessary to our decision.
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Appeal 2008-5978
Application 11/169,063

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-IN-PART

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LEXMARK INTERNATIONAL, INC.
INTELLECTUAL PROPERTY LAW DEPARTMENT
740 WEST NEW CIRCLE ROAD
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LEXINGTON, KY 40550-0999

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