Ex Parte Nakajima et al

Board of Patent Appeals and Interferences

May 21, 2007

09240695 (B.P.A.I. May. 21, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HISANORI NAKAJIMA, IAN CLARKE,
and MASAHIDRO HIDROSE
____________

Appeal 2007-0975
Application 09/240,695
Technology Center 2100
____________

Decided: May 21, 2007
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-17. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2007-0975
Application 09/240,695

A. INVENTION
The invention at issue on appeal previews data that are to be printed.
According to the Appellants, a host computer generally performs part of a
printing process. For example, the host computer converts data based on a
print request input from an application program ("AP") into print control
code readable by a printer, spools the print control code, and sends
"despooled," i.e., "inversely spooled," print control data to the printer.
(Amendment of June 3, 2002 at 2.) Because independent tasks write the
print control code into, and read the print code out of, a spool file, the
spooling minimizes a waiting period that would otherwise result from any
difference between the speed of sending the print control code to the printer
and the speed of printing. (Specification 1.)

The Appellants explain that added-value information, such as control
codes for printing a watermark or a stamp mark, are often added to a print
control code. A "watermark" is a character that is "overlappingly printed in
the background of printed characters or the like that are printed in
accordance with instructions of the AP, in a color or a display form which is
different from that of the printed characters." (Id.) "A 'stamp mark' is a
mark which is similar to a conventional stamp." (Id.) "In related arts," add
the Appellants, "once the AP gives a print request or the host computer adds
added-value information to the printing device, the user cannot check the
finished condition of the actual printing before printing is actually output
from the printing device." (Id. 1-2.)

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Application 09/240,695

In contrast, the Appellants' invention enables print data to be checked
visually and edited immediately before printing. (Amendment of June 3,
2002 at 1.) More specifically, a data converter 14 converts a spooled print
control code into data that are displayed to a user. If the user wishes to edit
the data, he designates a region to be edited and inputs a change. A data edit
controller 15 alters display data in accordance with the change. A data
inverse converter 16 converts the changed display data into the structure of
the original print control code and restores the converted data into a spool
file 13. A despooler 17 reads out the restored print control code, which is
transferred to a printer via a "transfer controlling means." (Specification 13.)

B. CLAIMS
Claims 1, 3, and 11, which further illustrate the invention, follow:
1. A method for previewing a print data, comprising the steps
of:

obtaining print data which can be printed by a printing
device, and spooling the print data into a predetermined
memory;

converting the spooled print data into display data of a
predetermined structure, and displaying the display data on a
displaying device;

editing the display data which is being displayed, on the
basis of an edit instruction data which is input at the display;
and

inversely converting the edited display data into a
structure of the spooled print data,
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Application 09/240,695

wherein, the display data contains template data that is
subjected to the editing, and at least a type and a position of the
template data are capable of being edited via the editing.

3. A method for previewing a print data, comprising the steps
of:

obtaining print data which can be printed by a printing
device, and spooling the print data into a predetermined
memory;

converting the spooled print data into display data of a
predetermined structure, and displaying the display data on a
displaying device;

editing the display data which is being displayed, on the
basis of an edit instruction data which is input at the display;

wherein, when the print data consists of actual print
information based on a print request and added-value
information which is posteriorly added, said step of editing the
display data uses only the added-value information which is
being displayed, as an edited object; and

inversely converting the edited display data into a
structure of the spooled print data,

wherein the added-value information includes at least
template data.

11. A computer-readable medium on which program codes are
recorded, wherefore said program codes are read and executed
by a computer device, being connected to a printing device,
having input means for a data entry and a displaying device,
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Application 09/240,695

with causing said computer device to perform the following
processes:

(1) a spool process of spooling print data which can be
printed by said printing device;

(2) a data conversion process of converting the spooled
print data into display data of a predetermined structure,

(3) a display control process of displaying the converted
display data on said displaying device;

(4) a data edition process of editing the display data
which is being displayed, on the basis of edited data which is
input at the display of said displaying device, through said input
means;

wherein said data edit process is a process of detecting an
object added to the print data and editing contents of the object
on the basis of an instruction; and

(5) data inverse conversion process for inversely
converting the edited display data into a structure of the spooled
print data.

C. REJECTION
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as obvious over
U.S. Patent No. 5,671,345 ("Lhotak") and Japanese Patent Application
No. 09-198217 ("Tokiwa").

II. ARGUMENTS NOT CONSIDERED
"[I]t is inappropriate for appellants to discuss in their reply brief
matters not raised in . . . the principal brief[ ]. Reply briefs are to be used to
reply to matter[s] raised in the brief of the appellee." Kaufman Company,
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Inc. v. Lantech, Inc., 807 F.2d 970, 973 n., 1 USPQ2d 1202, 1204 n. (Fed.
Cir. 1986). "Considering an argument advanced for the first time in a reply
brief . . . is not only unfair to an appellee . . . but also entails the risk of an
improvident or ill-advised opinion on the legal issues tendered." McBride v.
Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986)
(internal citations omitted).

Here, the Appellants' Reply Brief presents new arguments regarding
the Examiner's reason "to include the feature of Tokiwa in Lhotak. . . ."
(Reply Br. 4.) Because the Examiner explained the reason for such
inclusion in her Final Rejection (p. 4), the Appellants could have made the
arguments concerning the reason in their original brief. They chose not to
do so.

The term "Reply Brief" is exactly that, a brief in reply to new
rejections or new arguments set forth in an Examiner’s Answer. The
Appellants may not present their arguments in a piecemeal fashion, holding
back arguments until an examiner answers their original brief. Of course,
the Appellants may present new arguments directly to the Examiner for
consideration as part of a continuing application.

III. CLAIMS 1, 2, 7-12, AND 17
Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween. The Examiner admits, "Lhotak does not specifically
teach . . . the display data contains template data that is subjected to the
editing, and at least a type and a position of the template are capable of
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being edited via the editing." (Answer 6.) He alleges, however, "Tokiwa
teaches . . . the display data contains template data (PDL interpreter 14) that
is subjected to the editing, and at least a type and a position of the template
are capable of being edited via the editing (the data form . . . are converted
from the PDL form; ¶0026)." (Id.) The Appellants argue that "the PDL
interpreter 14 of Tokiwa resides in the printer 10 and is a device that
transforms data formats. Thus, the PDL interpreter 14 is not contained in the
RGB data and therefore fails to teach or suggest the claimed template data."
(Reply Br. 5.) Therefore, the issue is whether Tokiwa teaches the capability
to edit the type and position of displayed data.

A. CLAIM CONSTRUCTION
Our analysis begins with construing the claim limitations at issue.
"The Patent and Trademark Office (PTO) must consider all claim limitations
when determining patentability of an invention over the prior art." In re
Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994) (citing
In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir.
1983)).

Here, independent claims 1, 7, 10, and 17 recite in pertinent part the
following limitations: "the display data contains template data that is
subjected to the editing, and at least a type and a position of the template
data are capable of being edited via the editing." Considering all the
limitations, the independent claims require the capability to edit the type and
position of displayed data.

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B. OBVIOUSNESS ANALYSIS
"Having determined what subject matter is being claimed, the next
inquiry is whether the subject matter would have been obvious." Ex Parte
Massingill, No. 2003-0506, 2004 WL 1646421, at *3 (B.P.A.I 2004).
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citing In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)).
"'A prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).

Here, in Tokiwa, "[p]rinted data described in page description
languages (PDL) are stored in a printed data storage 18 via a PDL
interpreter 14 and a device color space conversion part 16." (Tokiwa
Translation 1.1) The paragraph of Tokiwa cited by the Examiner discloses
that data to be printed "are at first sent to the PDL interpreter 14, and the
data form thereof are converted from the PDL form into a data form
particular to the present device." (Id. 4.) Agreeing with the Appellants that

1 We refer to the page numbers of the "partial translation[ ]" submitted by
the Appellants. (Information Disclosure Statement of Nov. 10, 2004 at 2.)

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"the PDL interpreter 14 is a device that transforms data formats," (Reply Br.
5), we are uncertain how the Examiner equates the device to displayed data.
We are likewise unpersuaded that the conversion of data, which is to be
printed, from the PDL format into a device-specific format constitutes the
editing of the type and position of displayed data.

Absent a teaching or suggestion of the capability to edit the type and
position of displayed data, we are unpersuaded of a prima facie case of
obviousness. Therefore, we reverse the rejection of claims 1, 7, 10, and 17
and of claims 2, 8, 9, and 12, which depend therefrom.

IV. CLAIMS 3-6 AND 13-16
The Examiner alleges, "Tokiwa teaches wherein, when the print data
consists of actual print information based on a print request and added-value
information which is posteriorly added, the step of editing the display data
uses only the added-value information which is being displayed, as an
edition object (¶ 0030)." (Answer 7-8.) The "Appellants submit that
claims 3 and 13 are patentable for at least analogous reasons as set forth
above for claim 1." (Appeal Br. 14.) Therefore, the issue is whether Tokiwa
teaches editing only displayed added-value information that were added to
data for which printing was requested, the addition occurring after the
request for printing.

A. CLAIM CONSTRUCTION
Independent claims 3 and 13 recite in pertinent part the following
limitations: "when the print data consists of actual print information based
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on a print request and added-value information which is posteriorly added,
said step of editing the display data uses only the added-value information
which is being displayed, as an edited object. . . ." Considering all the
limitations, the independent claims require editing only displayed added-
value information that were added to data for which printing was requested,
the addition occurring after the request for printing.

B. OBVIOUSNESS ANALYSIS
"A rejection based on section 103 clearly must rest on a factual basis. .
. ." In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
"The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis." Id.

Here, the paragraph of Tokiwa cited by the Examiner describes
"various kinds of functions," (Tokiwa Translation 5), of a "color correction
part 22." (Id.) The Examiner, however, has not explained what in the
paragraph, if anything, constitutes added-value information. We will not
resort to speculation, unfounded assumptions, or hindsight reconstruction to
supply the explanation.

Absent a teaching or suggestion of editing only displayed added-value
information that were added to data for which printing was requested, the
addition occurring after the request for printing, we are unpersuaded of a
prima facie case of obviousness. Therefore, we reverse the rejection of
claims 3 and 13 and of claims 4-6 and 14-16, which depend therefrom.
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V. CLAIM 11
The Examiner makes the following allegations.
Tokiwa's teaching " when S108 detects that the content of color
correction is input, S109 changes the color as designated for
the printed data of the object of color correction . . . the color
correcting functions for converting from RGB to R 'G 'B,' and a
basis model shown in (A) which does not carry out the
substantial color correction is changed [b]y interlocking the
user's input" [see Tokiwa, ¶0038] meets "detecting an object
added to the print data" as claimed by Appellant.
(Answer 13.) The Appellants argue that "the only 'detection' performed in
Tokiwa is the detection that a color correction was input in step S108. Such
input is the initial instruction or request to correct the color." (Appeal Br.
15.) Therefore, the issue is whether Tokiwa teaches detecting an object
added to the print data and editing contents of the object based on an
instruction.

A. CLAIM CONSTRUCTION
Claim 11 recites in pertinent part the following limitations: "wherein
said data edit process is a process of detecting an object added to the print
data and editing contents of the object on the basis of an instruction. . . ."
Considering all the limitations, the claim requires detecting an object added
to the print data and editing contents of the object based on an instruction.

B. OBVIOUSNESS ANALYSIS
Here, the paragraph of Tokiwa cited by the Examiner describes "the
operations of the color correction part. . . ." (Tokiwa Translation 14.) More
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specifically, "when S108 detects that the content of color correction is input,
S109 changes the color as designated for the printed data of the object of
color correction selected similarly. . . ." (Id. 10.) Although the operation
includes detecting, it is not detect an object added to the print data. To the
contrary, we agree with the Appellants that it merely detects "that a color
correction was input. . . ." (Appeal Br. 15.)

Absent a teaching or suggestion of detecting an object added to the
print data and editing contents of the object based on an instruction, we are
unpersuaded of a prima facie case of obviousness. Therefore, we reverse the
rejection of claim 11.

VI. CONCLUSION
For the aforementioned reasons, the rejection of claims 1-17 under
§ 103(a) is reversed.

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REVERSED

eld

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