Ex Parte Liccini et al

Patent Trial and Appeal Board

Jul 3, 2013

11078085 (P.T.A.B. Jul. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROMAN D. LICCINI and NISHAN D. HOSSEPIAN
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Appeal 2011-000045
Application 11/078,085
Technology Center 2600
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Before ERIC B. CHEN, JUSTIN BUSCH, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1–5, 7–11, 13–19, 21–26, and 28. Claims 6, 12, 20, 27 and 29-32
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
Appellants’ disclosure relates to registration of two-sided printing
(Spec. ¶1).
Claim 1 is illustrative and is reproduced below with the disputed
limitation emphasized:
1. A printing system comprising:
an input adapted to receive unrasterized printing data to
be printed on both sides of a printing medium;
a processor adapted to arrange said unrasterized printing
data to be printed on both sides of said printing medium; and
a graphic user interface adapted to display an image,
wherein said processor is further adapted to overlay a
first page of said unrasterized printing data on a next
consecutive page of said unrasterized printing data in said
image, such that said first page and said next consecutive page
are simultaneously displayed in said image as a one sided
document image using different colors for said first page and
said next consecutive page,
wherein said processor is further adapted to move a
position of one individual item, relative to other items of said
first page, and relative to said next consecutive page in said
image,
wherein at least one of said first page and said next
consecutive page comprise color unrasterized printing data, and
wherein said graphic user interface is adapted to display said
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first page and said next consecutive page using a different color
palette,
wherein said color palette comprises tints between white
and a user-specified preview color.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Farrell
Stodersching
Atkins
US 5,666,208
US 2004/0150853 A1
US 2006/0103891 A1
Sep. 9, 1997
Aug. 5, 2004
May 18, 2006
Niida US 7,161,619 B1 Jan. 9, 2007

Rejections
The Examiner made the following rejections:
Claims 1–4, 7–10, 13–18, 21–25, and 28 stand rejected under 35
U.S.C § 103(a) as unpatentable over Farrell, Atkins, and Niida (Ans. 3–10).
Claims 5, 11, 19, and 26 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Farrell, Atkins, Niida, and Stodersching (Ans. 10–12).

ANALYSIS
Independent claims 1, 8, 15, and 22
Appellants’ contentions present us with the issue of whether the
Examiner erred in finding the independent claims unpatentable over Farrell,
Atkins, and Niida.
Appellants specifically contend that the Examiner erred by relying on
Niida for the limitation “wherein said color palette comprises tints between
white and a user-specified preview color,” as recited in each of the
independent claims (App. Br. 17–20). In arguing that “[n]owhere is there
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any teaching or suggestion that Niida’s color/tint adjustment is to be used for
displaying a next consecutive page in an image with a first page” (App. Br.
19 ( emphasis in original)), Appellants attack Niida individually when the
Examiner has, in fact, relied on a combination of references. The
Examiner’s application of Niida is narrower than the argument suggests, and
relies on the combination of (1) Farrell’s teaching of displaying a next
consecutive page in an image with a first page, with (2) Niida’s teaching of a
tint color palette (Ans. 5, 12–13). The proper test is what the combined
teachings of the references would have suggested to the hypothetical person
of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants’ further contention that “[n]owhere in Niida is there any
disclosure of ‘a color palette comprises tints between white and a user-
specified preview color’” (App. Br. 19 (emphasis in original)) does not
meaningfully address the Examiner’s finding that “white is inherently
included whenever a tint is involved” (Ans. 5). Although Appellants’
contention implies disagreement with the Examiner’s finding, they provide
insufficient evidence or reasoning that the Examiner’s inherency finding is
incorrect. Instead, we agree with the Examiner’s finding that in Niida:
If an initial tint color is specified/manually adjusted by [the]
user all the way toward green and previewed on the screen 2973
so that green is considered a user-specified preview color, then
any tint color result[ing] from further adjustment towards [the]
purple side is certainly between white … and the user-specified
preview color green.
(Ans. 5).
We accordingly disagree with Appellants’ argument that the Examiner
has erred and sustain the rejections of claims 1, 8, 15, and 22 under 35
U.S.C. § 103(a).
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Dependent claims 2–5, 7, 9–11, 13, 14, 16–19, 21, 23–26, and 28
Although Appellants group the various dependent claims and assert
that “[e]ach sub-grouping … stands alone and does not stand or fall with
their associated independent claims” (App. Br. 20), we do not consider their
individual assertions to be arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim”); In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”) In each
instance, Appellants merely identify a limitation and nakedly state their
disagreement with the Examiner’s finding, without providing any reasoning
for us to consider.
We accordingly sustain the Examiner’s rejections of the dependent
claims under 35 U.S.C. § 103(a).

CONCLUSION
On the record before us, we conclude the following:
(1) The Examiner did not err in rejecting claims 1–4, 7–10, 13–18,
21–25, and 28 under 35 U.S.C. § 103(a) as unpatentable over Farrell, Atkins,
and Niida.
(2) The Examiner did not err in rejecting claims 5, 11, 19, and 26 as
under 35 U.S.C. § 103(a) as unpatentable over Farrell, Atkins, Niida, and
Stodersching.
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DECISION
The Examiner’s decision rejecting claims 1–5, 7–11, 13–19, 21–26,
and 28 is affirmed.
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).

AFFIRMED

ELD