Ex Parte Hodsdon et al

Board of Patent Appeals and Interferences

Feb 13, 2009

10836604 (B.P.A.I. Feb. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY G. HODSDON,
THOMAS M. WIEN, DONALD E. BANKS,
DOUGLAS W. WILSON, RONALD UGOLICK,
and MICHAEL R. HAMEL
____________

Appeal 2008-4942
Application 10/836,604
Technology Center 1700
____________

Decided:1 February 13, 2009
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHUNG K. PAK, Administrative Patent Judges.

GARRIS, 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 2008-4942
Application 10/836,604

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 26-30. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

STATEMENT OF THE CASE
Appellants claim a system for printing a sign which comprises a
plurality of sheets and a computer configured to process a digital image into
a plurality of sub-images such that, when the plurality of sub-images are
printed on a respective plurality of sheets and these printed sheets are
arranged in a predetermined pattern, the sign is formed.
Further details regarding this claimed subject matter are set forth in
representative claim 26, the sole independent claim on appeal, which reads
as follows:
26. A system for printing a sign, the system comprising:

a plurality of sheets of printing stock each including:

a face sheet including:

a printing surface;

an adhesive surface; and

a face cut forming a margin and a face sub-sheet such
that at least a portion of the margin is separable from the face
sub-sheet; and

a backing sheet including a backing cut forming a border
and a backing sub-sheet such that at least a portion of the border
is separable from the backing sub-sheet so that at least a portion
of the adhesive surface of the face sheet is exposable;

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Appeal 2008-4942
Application 10/836,604

a computer configured to process a digital image into a plurality of
sub-images in which at least portions of two or more adjacent sub-images
overlap such that when the plurality of sub-images are printed on a
respective plurality of sheets of printing stock and when the face sub-sheets
from the respective plurality of sheets of printing stock are arranged in a
predetermined pattern, the sign is formed and includes a composite printed
image with no breaks in the composite printed image, corresponding to the
digital image; and

a printer in communication with the computer and configured to print
the plurality of sub-images on a respective plurality of sheets of printing
stock.

All appealed claims are rejected under 35 U.S.C. § 102(e) as being
anticipated by Wong (US 2005/0089663 A1) published Apr. 28, 2005.
ISSUE
The opposing positions of the Examiner and Appellants are focused
on the claim 26 limitation "a computer configured to process a digital image
into a plurality of sub-images . . . ."
We define the issue raised by these opposing positions as follows:
Have Appellants shown error in the Examiner's determination that the
claim 26 recitation "a computer configured to process a digital image into a
plurality of sub-images . . ." is merely a statement of intended use which
need not be given any patentable weight (Ans. ¶ bridging pages 3-4)?
FINDINGS OF FACT
Concerning the "computer" recitation of claim 26, Appellants'
Specification describes the computer with language closely corresponding to
that of claim 26, namely, "the computer 104 may be configured to process a
digital image 164 [sic, 162] into a plurality of digital sub-images 164 . . ."
(Spec. § [0089]; Drawing Fig. 20). Regarding a so-configured computer,
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Appeal 2008-4942
Application 10/836,604

Appellants disclose that a software program is loaded onto the computer and
describe how a software engine may process the digital image 162 (Spec. ¶¶
[0090]-[0094]).
Wong discloses a system for processing a label sheet assembly by
feeding it though a printer attached to a personal computer (¶ [0006]).
There is no dispute that the computer of Wong is not "configured to
process a digital image into a plurality of sub-images . . ." as recited in claim
26.
PRINCIPLES OF LAW
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
A general purpose computer becomes a special purpose computer
once it is programmed to perform particular functions pursuant to
instructions from program software. WMS Gaming, Inc. v. Int'l Game
Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999).
ANALYSIS
By its express language, claim 26 requires a computer which is
configured to perform the recited function including the function of
processing a digital signal into a plurality of sub-images. Therefore, we
agree with Appellants (App. Br. 4-5; Reply Br. 2-3) that claim 26 must be
interpreted as defining a so-configured computer and that the Examiner has
incorrectly interpreted the functional recitation of the claim 26 computer as
merely a statement of intended use. Such an interpretation is not reasonable
and consistent with Appellants' Specification.
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Appeal 2008-4942
Application 10/836,604

For this reason and because a general purpose computer cannot
perform particular functions unless it has been programmed to do so, the
computer of Wong cannot be considered to satisfy the computer function
required by claim 26.
CONCLUSIONS OF LAW
Appellants have shown error in the Examiner's determination that the
claim 26 recitation "a computer configured to process a digital image into a
plurality of sub-images . . ." is merely a statement of intended use which
need not be given any patentable weight.
Accordingly, we cannot sustain the Examiner's § 102 rejection of
claims 26-30 as being anticipated by Wong.
ORDER
The decision of the Examiner is reversed.
REVERSED

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