Ex Parte Conlon

Patent Trial and Appeal Board

Mar 14, 2016

12636274 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/636,274 12/11/2009
75931 7590
Basch & Nickerson LLP
1751 Penfield Road
Penfield, NY 14526
03/16/2016
FIRST NAMED INVENTOR
Paul Roberts Conlon
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2008 l 762Q-US-CIP 1011
EXAMINER
PRINGLE-PARKER, JASON A
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
usptomail@bnpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ROBERTS CONLON
Appeal2014-001979
Application 12/636,274 1
Technology Center 2600
Before THU A. DANG, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to processing rasterized or non-rasterized data
for rendering by a printer. Abstract. Claim 1 is exemplary of the matter on
appeal:
1 According to Appellant, the real party in interest is Xerox Corporation.
App. Br. 2.
Appeal2014-001979
Application 12/636,274
A method of controlling operations of a printing device,
compnsmg:
receiving a non-rasterized page description language data
and a source transformation matrix representing source
transformation operations, the source transformation operations
being a source rotation transformation operation, a source
scaling transformation operation, and a source translation
transformation operation;
rasterizing the non-rasterized page description language
data;
generating, from the source transformation matrix, a
rotation dependent scaling transformation matrix and a rotation
dependent translation transformation matrix;
determining an order of transformation operations to be
performed upon the rasterized data;
creating a target transformation matrix by matrix
multiplying the rotation dependent scaling transformation
matrix, the rotation dependent translation transformation
matrix, and the source rotation transformation operation in a
matrix order corresponding to the determined order of
transformation operations to be performed upon the rasterized
data;
decomposing the corresponding transformation matrix
into a rotation transformation operation matrix, a first scaling
transformation operation matrix, and a translation
transformation operation matrix;
decomposing the first scaling transformation operation
matrix into a shear transformation operation matrix and a
second scaling transformation operation matrix;
generating a discrete rotation transformation operation
value from the rotation transformation operation matrix;
generating a discrete scaling transformation operation
value from the second scaling transformation operation matrix;
generating a discrete translation transformation operation
value from the translation transformation operation matrix;
generating a discrete shear transformation operation
value from the shear transformation operation matrix; and
2
Appeal2014-001979
Application 12/636,274
controlling operations of the printing device based upon
the generated discrete transformation operation values.
App. Br. 239--240 (Claims Appendix).
THE REJECTIONS
Claims 1-20 of the subject application on appeal 12/636, 274 ("J")
stand provisionally rejected for obviousness-type double patenting over
copending patent application numbers: 12/338,300 ("A," now abandoned);
12/338 318 ("B")· 12/338 260 ("C")· 12/339 148 ("D "now issued as Patent
' ' ' ' ' '
No. 8,754,909); 12/636,361 ("E"); 12/636,348 ("F"); 12/636,331 ("G");
12/636,297 ("H"); 12/636,287 ("I"); 12/636,266 ("K"); and 12/636,311
("L"). Final Act. 2--4; App. Br. 10.
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Warmus et al. (hereinafter "Warmus") (US 2001 /0051964
Al, published Dec. 13, 2001) in view of Hemingway (US 6,166,741, issued
Dec. 26, 2000). Final Act. 12-32.
ANALYSIS
The double patenting rejection
Appellant argues the Examiner does not present a prima facie case of
obviousness double patenting and provides inadequate findings of fact to
support the rejection as required under Graham v. John Deere Co., 383 U.S.
1 (1966), and MPEP § 804. App. Br. 10-166; Reply Br. 13-27. As
discussed below, we are persuaded by Appellant's arguments.
According to Appellant:
MPEP §804 states that the analysis employed in an
obviousness-type double patenting determination parallels the
guidelines for a 35 U.S.C. § 103 rejection. Moreover, MPEP
§804 states that the factual inquiries set forth in Graham v. John
3
Appeal2014-001979
Application 12/636,274
Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), for determining
obviousness under 35 U.S.C. § 103, are employed when making
an obvious-type double patenting analysis.
MPEP §804 states that the factual inqmnes are (A)
determine the scope and content of a patent claim relative to a
claim in the application at issue; (B) determine the differences
between the scope and content of the patent claim as
determined in (A) and the claim in the application at issue; (C)
determine the level of ordinary skill in the pertinent art; and (D)
evaluate any objective indicia of non-obviousness.
Lastly, MPEP § 804 states that any obviousness-type
double patenting rejection should make clear (A) the
differences between the inventions defined by the conflicting
claims; and (B) the reasons why a person of ordinary skill in the
art would conclude that the invention defined in the claim at
issue would have been an obvious variation of the invention
defined in a claim in the patent.
App. Br. 10.
The record before us includes the following:
1. Final Action. The Examiner provides a chart ("chart")
setting forth relationships among claim 1 of the identified
copending applications (designated A-L, with J being the
current application on appeal). Final Act. 2--4. According
to the Examiner, the chart shows "claim 1 of all applications
relate[ s] to the use of non-rasterized page description
language data and a transformation matrix which is
decomposed into at least rotation, scaling and translation and
generating from that discrete transformation operation
values." Id. at 3.
4
Appeal2014-001979
Application 12/636,274
2. i\ .. ppeal Brief. Appellant argues the chart (Final Act. 2--4) is
inadequate basis for obvious double patenting and provides
claim charts showing independent claims of the current
application on appeal (J) as compared to the eleven
copending applications (A-I, K, and L) identified as the
basis for the double patenting rejection, along with
commentary. App. Br. 11-166. The provided claim charts
constitute: 12/338,300 (A) (App. Br. 11-23); 12/338,260 (C)
(App. Br. 24--44); 12/338,311 (L) (App. Br. 44--56);
12/339,148 (D) (App. Br. 56-74); 12/338,318 (B) (App. Br.
74--90); 12/636,266 (K) (App. Br. 90-104); 12/636,287 (I)
(App. Br. 104--115); 12/636,297 (H) (App. Br.115-129);
12/636,331 (G) (App. Br. 129-142); 12/636,348 (F) (App.
Br. 143-152); and 12/636,361 (E) (App. Br. 152-165).
3. Answer. The Examiner provides "a more detailed mapping
[("mapping")] of all the limitations for claim 1 for each of
the [eight ]2 applications" along with commentary on the
mapping for seven copending applications. Ans. 24--29.
Specifically, the Examiner provides Table 1 which maps
claim 1 along with Table 2 which identifies the claim
language of the eight copending applications. 3 Id. 27-29.
The Examiner provides commentary for seven identified
copending applications and identifies differences from the
2 Seven copending applications E, F, G, H, I, K, and Lare discussed in the
commentary; four copending applications A, B, C, and D are not discussed
in the commentary. Ans. 26-29.
3 Table 1 and 2 are attached as Exhibit 1.
5
Appeal2014-001979
Application 12/636,274
application on appeal 12/636,274 (J). Id. 24--26. The
commentary includes a finding that "the variations are
obvious since even with the minor variations in matrix
manipulation, it results in the same outcome with the same
decomposition and generation of values." Id. at 26.
4. Reply Brief. Appellant argues the Examiner's mapping and
commentary are inadequate basis for the double patenting
rejection, and the Examiner does not address copending
application numbers: 12/338,300 (A); 12/338,318 (B);
12/338,260 (C); and 12/339,148 (D). Reply Br. 2-13.
We are persuaded the Examiner's chart (Final Act. 2--4) is inadequate
basis for obviousness, because, while it may show a relationship among the
copending applications, it provides no discussion of the required inquiry for
obviousness and no discussion of claims for any of the identified copending
applications. See App. Br. 10-11; Graham v. John Deere Co., 383 U.S. 1,
17 (1966); MPEP § 804; see also KSR Int 'l. Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007).
Regarding the mapping and commentary provided in the Answer,
because we agree with Appellant that the Final Action chart (Final Act. 2--4)
is inadequate basis for obviousness for any of the identified copending
applications, and the Examiner presents no additional basis in the Answer
for the four copending applications A-D4, we do not sustain the rejection of
copending applications B-D. Reply Br. 4.
4 A is now abandoned. Accordingly, the rejection over A is moot.
6
Appeal2014-001979
Application 12/636,274
\Ve no\v address the double patenting rejections of current application
J ('274) over copending applications E, F, G, H, I, K, and L. Ans. 24--29;
Reply Br. 2-13. We are persuaded by Appellant's argument that the
mapping and commentary does not address claims 2-20 and, therefore, we
do not sustain the double patenting rejection for these claims. Reply Br. 4,
7.
We follow the order set forth by the Examiner and Appellant: K
('266); F ('348); I ('287); L ('311 ); H ('297); G ('331 ); and E ('361 ).
Regarding copending application K ('266), the Examiner finds it
includes all the limitations of the current application J ('274) and it would
have been obvious to exclude four limitations (Bl, D, El, and HI) from
copending application K, because limitation A includes a transformation
matrix representing the transformation operations which are later described
in other limitations (I-N), order (D) is an inherent property of the system,
and two other limitations (E 1 and H 1) are only manipulations of the
operations already performed and both applications perform the same
decomposition and generation, so there is the same end result. Ans. 24--25.
Appellant argues the claim 1 limitations of current application J to be
excluded are directed to "generating transformation matrices from the source
matrix and then creating a new matrix" and the Examiner provides
inadequate basis for why application K's source transformation matrix
renders obvious the creation of the new matrix. Reply Br. 7. Regarding
"performing the same decomposition," Appellant argues and demonstrates
the same decomposition process can provide a different result. Id. at 8. We
are persuaded by Appellant's arguments and, therefore, we do not sustain the
rejection over copending application K ('266).
7
Appeal2014-001979
Application 12/636,274
Regarding copending application F ('348), the Examiner finds the
difference is "controlling operations of the printing device [OJ" and
"performing transformation operations upon the rasterized data [O']," where
both are the final step in the method and involve operations. Ans. 25.
According to the Examiner, in the preamble of both applications, the method
is for "controlling operations of a printing device" and "[b ]ased upon the
language, it being the final step, and the preamble, it is clear that
'performing transformation operations with the rasterized data' relates to
transformation for printing like the 12/636,274 [J] application does." Ans.
25.
Appellant argues, and we agree, the Examiner errs in finding
"controlling operations of a printing device is the same as performing
transformation operations upon rasterized data." Reply Br. 8-9 (citing Spec.
i-fi-1272, 196). According to Appellant:
These are two distinct operations - one is directed to
controlling the mechanics of a printing device and the other is
the electronic manipulation of electronic data.
The Examiner has failed to demonstrate how these two
distinct operations are obvious variants of each other.
Thus, contrary to the Examiner's assertion, controlling
operations of a printing device is NOT the same as performing
transformation operations upon rasterized data.
Reply Br. 9.
Regarding copending application I ('287), the Examiner finds it
"differs in only that E 1 vs E2 + F, where E 1 generates a rotation matrix and
a translation matrix, and E2 + F generates a rotation matrix and translation
matrix,just with an extra step." Ans. 25 (emphasis added).
8
Appeal2014-001979
Application I2/636,274
1A:\.ppellant argues the Examiner errs in finding "generating, from the
source transformation matrix, a rotation dependent scaling transformation
matrix and a rotation dependent translation transformation matrix" is the
obvious equivalent to "generating, from the source transformation matrix, a
rotation transformation matrix and a scaling transformation matrix based
upon a rotation scaling order of the determined order of transformation
operations and generating a translation transformation matrix from the
generated rotation and scaling transformation matrices." Reply Br. 9.
According to Appellant, "[i]n one instance, the decomposition is based
solely upon a rotation value, and in the other instance the decomposition is
based solely upon a rotation matrix and a scaling matrix generated based
upon a rotation scaling order of the determined order of transformation
operations" and "one decomposition process is based upon a single value
and the other is based upon matrices and an order." Id. at IO.
We are not persuaded by Appellant's characterization of "solely" as
the claim does not recite this term, however, we are persuaded by
Appellant's argument that the Examiner presents insufficient basis why 'just
with an extra step" is obvious. Id. at IO. Therefore, we do not sustain the
rejection over I ('287).
Regarding copending application L ('3 I I), the Examiner finds it
differs in the same manner as I ('287) discussed above and in addition to HI
vs H2, where both HI and H2 create a target transformation matrix by
matrix multiplying scaling and translation and rotation matrices. Ans. 25.
The Examiner also finds it also differs in 0 vs O' described above regarding F
('348). Id.
9
Appeal2014-001979
Application 12/636,274
i\~ppellant presents similar argument as those discussed above for I
('287) and F ('348) and for the same reasons we do not sustain the rejection
over L ('311). Reply Br. 10-12.
Regarding copending application H ('297), the Examiner finds it
differs in B2 vs B 1 where B 1 and B2 both merely define the source
transformation matrix of A. Ans. 26. The Examiner further finds it differs
in El vs E3, and G. Id. According to the Examiner, "Both El and E3
generate from the source transformation matrix, a rotation matrix and
translation matrix to be decomposed. G merely provides more intermediate
manipulation of the matrix." The Examiner concludes, "It is obvious since
despite the variations in matrix manipulation, it results in the same outcome
with the same decomposition and generation of values." Id.
Appellant presents arguments similar to those presented regarding I
('287) and, therefore, for the same reasons, we do not sustain the rejection
over H ('297).
Regarding copending application G ('331 ), the Examiner finds it
differs in "B2 vs B 1, 0 vs O' and G as described above." Ans. 26. Appellant
presents arguments similar to those presented regarding F ('348) and,
therefore, for the same reasons, we do not sustain the rejection over G
('331). ReplyBr. 12-13.
Regarding copending application E ('361), the Examiner finds it
differs in the same manner as H ('266), where the only difference is 0 vs O',
described above. Ans. 26. We are persuaded by Appellant's arguments
regarding H ('266) and F ('348) discussed above and therefore, for the same
reasons, we do not sustain the rejection over E ('361 ).
10
Appeal2014-001979
Application 12/636,274
In vie\'l/ of the above, 'l.fe do not sustain the provisional double
patenting rejection over copending applications B-I, K, and L.
The 35 USC§ 103(a) rejection
Appellant argues Warmus and Hemingway do not teach limitations
recited in independent claims 1, 5, 9, 13, and 17. App. Br. 166-237. For
example, Appellant argues Warmus does not teach the claim 1 limitation
"determining an order of transformation operations to be performed upon the
rasterized data." App. Br. 167. According to Appellant, while the Examiner
relies on Warmus for this limitation (Final Act. 13-14), the cited portions of
Warmus disclose changing the orientation (portrait to landscape or landscape
to portrait). App. Br. 167 (citing Warmus i-fi-1383, 389, 405). Therefore,
Appellant argues Warmus fails to disclose or suggest "the determination of
an order of transformation operations to be performed upon the rasterized
data because the determination is of the orientation of the output device, not
the order of the transformation operations to be performed upon the
rasterized data." App. Br. 167; see also Reply Br. 13-15.
The Examiner finds Warmus teaches the disputed limitation. Final
Act. 13-14 (citing Warmus i-fi-1383, 389, 405). The Examiner addresses the
claim terms "determining" and "order" and finds Warmus teaches both
terms. Ans. 30-32. Regarding the term "order" the Examiner finds "order"
is taught by Warmus, and if not taught, it is inherent and even if not taught
and not inherent, no specific order is specifically claimed. Ans. 30-32
(citing Warmus Fig 27, 26A, 26B, i1402).
Appellant argues the Examiner's Answer is not relevant to
Appellant's arguments. Reply Br. 13-15. According to Appellant:
11
Appeal2014-001979
Application 12/636,274
\X/armus et al. is void of any teaching or suggestion of
such an active process which determines the order of the
transformation operations to be performed upon the rasterized
data.
It is further noted that the transformation operations
performed by Warmus et al. are performed, during the
rasterization process, on non-rasterized data.
For example, Warmus et al., in paragraphs [0244]
through [0248], teaches that the Current Transformation Matrix
is used in converting the PostScript® file to rasterized data.
In other words, Warmus et al. does not teach a need to
determine the order of transformation operations to be
performed upon the rasterized data because the transformation
operations are performed upon non-rasterized data to create
rasterized data.
With respect to paragraphs [0383] through [0389],
W armus et al. teaches that the translating and rotating
operations are performed on a PostScript® file (nonrasterized
data), not on rasterized data.
Again, W armus et al. does not teach a need to determine
the order of transformation operations to be performed upon the
rasterized data because the transformation operations are
performed upon non-rasterized data to create rasterized data.
Reply Br. 15.
We are persuaded by Appellant's arguments because the disputed
limitation recites "determining an order of transformation operations to be
peiformed upon the rasterized data" (emphasis added) and the Examiner
does not show where Warmus teaches or suggests "to be performed upon the
rasterized data."
In view of the above, we do not sustain the rejection of claim 1.
Independent claims 5, 9, 13, and 17 recite substantially the same limitation,
and, therefore, we do not sustain the rejection of these claims. Claims 2--4,
12
Appeal2014-001979
Application 12/636,274
6-8, 10-12, 14--16, and 18-20 are dependent claims and, therefore, \Ve also
do not sustain the rejection of these claims. Cf In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.").
DECISION
We reverse the Examiner's decision provisionally rejecting claims 1-
20 for obviousness-type double patenting.
We reverse the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 103(a).
REVERSED
Exhibit 1
Table I-Claim 1 Mapping (Ans. 27).
13

Appeal2014-001979
Application 12/636,274
""""""r""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""""I
j O ~ dt't£ff~t~i:n~·ng an otd~~r· c)f b .. ~tns:fonli.f3ti~)fl np;t::O·t-";~tk)ri~~ to he!~ pE:~r-forn-=1.~1ti up:on thr~
! j fii~tNii~d dtKH"n:> trnmforfl"rntim1 matrii>'., tlon tk'PE:,ndent $t<1litw; ' ' l:;~ ,.,... ,_
! ! ti"iin«fonnc~Hng tran~format~on rnau·ii.: and;~ t:rnmlatim~ tranMorrrn~lion rnatrhi: irnsed on
L. ........ J.~ . .P.!:~.~~~~.!~~'..'.:~.1t!.~:~1 .. '.!}~!.~!:~~.:~~::~~5'.!L ............................................................................................................................................. .
i F l gim~irat!flR il>.E ... cs,:
t"""""'l"''."""""""""""""""""""""""""''."""''."""""''."""""""""""""""""''."""""""""""""""""""""""""""""""""""""""""""""""'"
i G l cletNmlning a rot:ill':ion va~ue lrnm t:tw~ rotation l:nm~;frnw1,ation t~Mtrix,
! i rrnating an order depern:!ent rotation dependent scaHrig trnnsforrn~t~on matf"i~
! i and an order dep-endent rotation dependent tram!aikm transformation :rnat6x.:
I··········+··································'············································································································································································· ! Hl i creat!ng: a target transformation rnstrlx hy rnatri~ multipb/ing the rntatlon
i l dependent 5.caHng l:ran5fmmatlon matrix; !he rotation dependen! transl a hon
I ,,,ii trarnJorrnatfon matri:<, and the somce rntatfon trnnsforrnafo::m operation i11 a matrb( order
: conespor·~d:ng to the determined ix to be performed
! ! tipon thf.' rn~aerirnd ,·-·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·.·
i H2 l cr~ating ~ target transftHriMtion matrix by matrix rnliltiplving the generated
! i t{)tation trfon-n~tion opernt!on mat6x;
f'i"""Tg;,~~;,~,;;~~~'g';"ci~';Z~';t:;"~'Ziff~ti'i';;,~;'.(~~,;:;~:;i'i;;;~,~;;;;~:;'ii~;;~,:;;i~;;;'i~,~~~;"t:i~;";;~~;;;,J"""""""""""""""""""""""·
I i ~taling trM1sfonmifa'li1 opH;3tkm ~1Hrtri:>:; .
t"""""+--------------------------------------------------------'.""""""""""""'."""""""""""""""""""""""""""'.""""""'."""""""""""""""""""""""""""""
i M l g!'~rn=~r