Ex Parte Giannetti

Patent Trial and Appeal Board

Nov 28, 2012

10836337 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte FABIO GIANNETTI
_____________

Appeal 2010-005982
Application 10/836,337
Technology Center 2100
______________

Before DAVID M. KOHUT, BRYAN F. MOORE, and
JOHN G. NEW, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 2-6, 8, 9, 11, 12, 14, 17, 19, 20, 26, 27, and 29-37.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims and enter a new
ground of rejection.

1 Claims 1, 7, 10, 13, 15, 16, 18, 21-25, and 28 were previously cancelled.
Appeal 2010-005982
Application 10/836,337

2
INVENTION
The invention is directed to a method, computer readable medium,
and digital printing press for rendering a document, determining void spaces
on the document, and filling the void spaces prior to a subsequent rendering
of the document. Spec. 3-5. Claim 30 is representative of the invention and
is reproduced below:
30. A method of generating a document comprising the steps
of:
assembling a set of base content items and a design for the
document;
applying, to the document design and the content items,
rules for rendering the document thereby to generate an initial
rendered document;
establishing the existence of a void space on the initial
rendered document;
selecting at least a further content item for insertion into the
void space; and
applying to the further content item, the rendering rules
thereby to generate a subsequent rendered document, wherein
the further content item inserted into the subsequent rendered
document is capable of matching a style of one of the base
content items;
wherein the rendering rules match the further content item
to the existing base content of the document;
wherein the rendering rules select said further content item
according to an information content of said base content items;
and
wherein the subsequent rendered document is digitally
printed.

REFERENCES
Markowitz US 6,311,185 B1 Oct. 30, 2001

Currans EP 1 186 992 A2 Mar. 13, 2002

Appeal 2010-005982
Application 10/836,337

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Dean US 2004/0059708 A1 Mar. 25, 2004
(filed Dec. 6, 2002)

REJECTIONS AT ISSUE
Claims 2-6, 8, 9, 11, 12, 17, 26, and 29-37 are rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Currans
and Dean. Ans. 3-16.
Claims 14, 19, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Currans, Dean, and Appellant’s
Admitted Prior Art (AAPA). Ans. 17-18.
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Currans, Dean, and Markowitz. Ans. 19-20.
ISSUES2
Did the Examiner err in finding that the combination of Currans and
Dean teaches or suggests the limitation of claim 30 reciting “wherein the
further content item inserted into the subsequent rendered document is
capable of matching a style of one of the base content items”?
ANALYSIS
Independent claim 30 recites “wherein the further content item
inserted into the subsequent rendered document is capable of matching a
style of one of the base content items.” Independent claims 31-33 contain
the same limitation. Claims 2-6, 8, 9, 11, 12, 14, 17, 19, 20, 26, 27, 29, and
34-37 depend upon one of the independent claims. The Examiner rejects the
disputed portion of the claim using Currans and a broad interpretation of the

2 Appellant makes additional arguments with respect to claims 2-6, 8, 9, 11,
12, 14, 17, 19, 20, 26, 27, 29, and 34-37. App. Br. 14-18. We will not
address the additional arguments as this issue is dispositive of the appeal.
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Application 10/836,337

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word “style” to mean “size.” Ans. 22-23. Appellant argues that the
Examiner’s interpretation is inconsistent with the plain meaning of the term
and one of ordinary skill would not have interpreted the term as such. App.
Br. 13; Reply Br. 2. However, we do not find these arguments to be
persuasive as the Examiner has correctly indicated that the Specification
does not preclude such an interpretation. Ans. 22-23. Thus, we agree with
the Examiner’s interpretation of the term.
However, while Currans indicates that the size of the windows are
changed to fit into a particular void, the Examiner has not shown and we do
not find that Currans teaches matching the size of one of the base content
items, as argued by Appellant. App. Br. 13; Reply Br. 2. Even so, we have
reviewed the rest of the Currans reference and we find that Currans teaches
information content files that use either True-Type, Open Type, or Post
Script fonts, which we find may be reasonably interpreted as interpreted as
“styles.” ¶ [0033]. Additionally, Currans teaches that the advertising image
can also use True-Type text. ¶ [0036]. Thus, Currans teaches a further
content item (the advertising) inserted into the subsequent rendered
document that is “capable,” i.e., Currans contemplates, even if it does not
require, matching a style of one of the base content items (the initial
information content). We designate our analysis to be a new ground of
rejection under 35 U.S.C. § 103(a) over the combination of Currans and
Dean.
In light of the new ground of rejection of the independent claims, we
exercise our discretion to not address the rejections of the dependent claims
over the prior art. In re Steele, 305 F.2d 859, 862 (CCPA 1962).
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Application 10/836,337

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Pursuant to 37 C.F.R. § 41.50(b), we additionally enter a new ground
of rejection of claims 26-29, 33, and 37 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Independent claim 33 recites “computer readable medium” that
includes code. Upon reviewing Appellant’s Specification for context, we do
not find any explanation for what constitutes the claimed “computer-
readable media.” Therefore, because Appellant’s Specification is silent in
this regard and the claim does not preclude the computer program product
from being embodied in a carrier wave, and giving claim 33 the broadest
reasonable construction, we find that claim 33 encompasses the computer
readable medium being embodied on a carrier wave. A signal (i.e., a
computer readable medium embodied in a carrier wave) does not fit within
at least one of the four statutory subject matter categories under 35 U.S.C.
§ 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), and Subject
Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office
212 (Feb. 23, 2010). Since claim 33, as we have construed it above,
encompasses a propagating, transitory signal, we find claim 33 is directed to
non-statutory subject matter. Dependent claims 26, 27, 29, and 37 also are
directed toward non-statutory subject matter for the same reasons discussed
supra.
CONCLUSION
The Examiner erred in finding that the combination of Currans and
Dean teaches or suggests wherein the further content item inserted into the
subsequent rendered document is capable of matching a style of one of the
base content items.
Appeal 2010-005982
Application 10/836,337

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SUMMARY
The Examiner’s decision to reject claims 2-6, 8, 9, 11, 12, 14, 17, 19,
20, 26, 27, and 29-37 is reversed.
We enter new grounds of rejection for claims 30-33 under 35 U.S.C.
§ 103(a) and claims 26, 27, 29, 33, and 37 under 35 U.S.C. § 101.
TIME PERIOD
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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).
REVERSED
37 C.F.R. § 41.50(b)

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