Ex Parte Saur

Patent Trial and Appeal Board

Aug 20, 2013

11609636 (P.T.A.B. Aug. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DREW D. SAUR1
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Appeal 2011-005273
Application 11/609,636
Technology Center 2100
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Before TONI R. SCHEINER, ERIC GRIMES, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to a
method of specifying folds for an automated print job, which have been
rejected for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Xerox Corporation
(Appeal Br. 2).
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STATEMENT OF THE CASE
The Specification states that specifying how a document should be
folded is problematic, especially when documents are remotely submitted to
a printing/copying/finishing device (Spec. 1-2, ¶¶ 2-3). The Specification
discloses a method that “communicates a fold that a human or machine can
interpret unambiguously” (id. at 3, ¶ 9) by “acquir[ing] user inputs to
identify an outside page designation of the folded piece, to identify a
direction of a first fold, and to identify a type of fold” (id. at 4, ¶ 10) as well
as “acquir[ing] user input to identify an outside portion designation of the
outside page” (id. at 4, ¶ 11).
“The ‘outside page designation’ has the user identify which side of the
sheet of media contains markings that will appear on the exterior of the
folded piece (after the sheet of media is folded into the folded piece)” (id. at
4, ¶ 10). The “direction of a first fold” refers to whether the fold is
perpendicular to the longer or shorter end of the media (id.). The type of
fold can be selected from various standard folding patterns (id. at 11-17).
“The ‘outside portion’ is that portion of the outside page that will appear on
the outside of the folded piece” (id. at 4, ¶ 11).
Claims 1-3, 5-9, 11-14, and 16-20 are on appeal. Claim 1 is
illustrative and reads as follows:
1. A computer-implemented method comprising:
using a computer, receiving a user request through a graphic user
interface for a document job, wherein said document job comprises printing
characteristics for making markings on a sheet of media and an indication to
perform a fold operation for folding said sheet of media into a folded piece;
using said computer, acquiring user input to identify an outside page
designation of said folded piece;
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using said computer, acquiring user input to identify a direction of a
first fold;
using said computer, acquiring user input to identify a type of fold;
using said computer, after identifying said type of fold, acquiring user
input to identify a portion designation of said outside page that will appear
on an outside of said folded piece; and
using said computer, folding said sheet of media into said folded piece
using only said outside page designation, said direction of said first fold,
said type of fold, and said portion designation.

The Examiner has rejected claims 1-3, 5-9, and 16-20 under 35 U.S.C.
§ 103(a) as obvious based on Keane2 and Masaki3 (Answer 3). The
Examiner has also rejected claims 11-14 under 35 U.S.C. § 103(a) as
obvious based on Keane, Masaki, and Ferlitsch4 (Answer 12). The same
issue is dispositive for both rejections.
The Examiner finds that Keane discloses a method that includes all of
the steps of “acquiring user input” recited in claim 1 (Answer 4-5) but does
not teach claim 1’s final step (id. at 5). The Examiner finds that Masaki
discloses this step (id.) and concludes that it would have been obvious to
combine it with the steps taught by Keane “to correctly fold the sheet of
media into a folded piece, using the automating fold[ing] device as taught by
Mazaki [sic] ” (id. at 6).
Appellant argues that Keane describes “facilities provided to assist a
user in determining their location within a document during editing, the so-
called ‘edit location indic[a]tor’” and that “navigation rather than folding
parameters are being discussed” (Appeal Br. 15). Appellant argues that

2 Keane et al., US 2004/0177325 A1, issued Sept. 9, 2004.
3 Masaki, US 2003/0227652 A1, issued Dec. 11, 2003.
4 Ferlitsch et al., US 2005/0283735 A1, issued Dec. 22, 2005.
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Keane describes a document template with folds predetermined by the
printing service provider and “the user cannot enter information in any of
Keane’s described operations to specify a different outside page
designation” (id. at 16). That is, Keane describes “the use of conventional
templates to efficiently convey information albeit by sacrificing user
flexibility” (id. at 18).
We agree with Appellant that Keane does not describe “acquiring user
input” for the parameters recited in claim 1. Keane discloses “a document
editing indicator system, program and method that provides a visual product
edit location indication to the user involved in designing an electronic
document” (Keane 2, ¶ 14). Keane discusses its invention in the context of
designing a brochure (id. at 3, ¶ 29), beginning with a “three-panel brochure
template” (id. at 3, ¶ 30).
The template includes dashed lines “displayed to the user during the
editing process to indicate to the user where the three-panel brochure will be
folded during post-printing processing” (id.). The distances from the left
side of the document to the fold lines are “stored values predetermined by
the printing service provider designer of the downloaded three-panel
brochure template and are based on the post-printing folding operations to be
performed on the printed document” (id. at 4, ¶ 37). The finished design can
then be uploaded to a server for printing and post-print processing (id. at 2,
¶ 25).
Thus, Keane describes a system for designing the content of a
document that is intended to be presented in a particular folded
configuration. Keane does not, however, describe any means for allowing
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the user to select or change the specific folds that will be applied to the
document. Those parameters are predetermined by the designer of the
template that the user downloads and modifies for content. Although Keane
mentions other potential folding patterns — horizontal instead of vertical
folds, or both horizontal and vertical folding (id. at 6, ¶¶ 56-57) — those are
presented as alternative templates to be used in designing document content.
Keane does not describe any means for specifying a particular way of
folding a preexisting document.
Keane therefore does not describe “acquiring user input” regarding
outside page designation, direction of a first fold, type of fold, or outside
portion designation, as required by claim 1. The Examiner relies on Masaki
only to teach the “folding” limitation of claim 1, not the limitations that
require “acquiring user input.”
The other independent claims rejected on this basis are claims 6, 16,
and 20. Claim 6 defines a method that requires the user to specify the same
parameters as recited in claim 1 (Appeal Br. 35 (Claims Appendix)). Claims
16 and 20 are directed to a computer program product and computer
readable storage medium, respectively, that cause a computer to acquire the
same inputs are recited in claim 1 (id. at 39, 41).
The Examiner rejected claims 11-14 as obvious based on Keane,
Masaki, and Ferlitsch (Answer 12). The Examiner relies on the same
findings discussed above (id. at 12-14) and finds that Ferlitsch discloses
providing multiple choice questions using a computer (id. at 14), as recited
in claim 11, and concludes that it would have been obvious to modify Keane
“to provide the options for folding through multiple choice questions” (id.).
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However, as discussed above, Keane does not provide any means for
the user to specify folding parameters, because those parameters are preset
by the designer of the template that is downloaded and modified for content
by the user of Keane’s system. The deficiencies of Keane therefore require
reversal of all of the claims on appeal.
SUMMARY
We reverse both of the rejections on appeal.

REVERSED

cdc