Mikel John. Stanich et al.

Patent Trials and Appeals Board

Nov 1, 2019

14498681 - (D) (P.T.A.B. Nov. 1, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/498,681 09/26/2014 Mikel John Stanich 9503P026 1846
76073 7590 11/01/2019
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
WALLACE, JOHN R
ART UNIT PAPER NUMBER
2615
NOTIFICATION DATE DELIVERY MODE
11/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
mark.watson@jwmhlaw.com
paralegals@jwmhlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKEL JOHN STANICH, KARTHEEK CHANDU,
and LARRY M. ERNST
____________

Appeal 2018-008017
Application 14/498,681
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.

RAEVSKY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18, all the pending claims in this
case. See Appeal Br. i–iv. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Ricoh
Company, Ltd. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s invention generally relates to printer technology, namely
a low overhead near unity scaling technique for printing. See Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A printer, comprising:
an image processor to:
determine a number of pixels by which to scale an image
along an axis of said image, wherein, said scaling of said image
is less than 10% of said image along said axis;
identify locations in the image along said axis equal to
said number of pixels by which to scale said image along said
axis of said image, said identifying including determining
regions of lesser activity;
remove a first region having a first width of more than
one pixel from the image along said axis at each of said
locations;
insert a second region having a second width of more
than one pixel into the image along said axis at each of said
locations, wherein, an accumulated difference between pixels in
the first pixel width and the second pixel width for said
locations accounts for said number of pixels by which to scale
said image; and
transmit the image to be printed.

REJECTIONS
The Examiner made the following rejections:
Claims 1–18 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception. Final Act. 4.
Claims 1–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Bernal (US 2010/0086207 A1, Apr. 8, 2010), Applicant’s
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Admitted Prior Art (“AAPA”)2, and Baeumler (US 2011/0102851 A1, May
5, 2011). Id. at 8.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejections under 35 U.S.C. § 101
I. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described
in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed
to.” See id. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)

2 The Examiner cites paragraphs 8–11 of the Specification as the AAPA.
Final Act. 3, 9; Ans. 15.
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(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
The U.S. Patent and Trademark Office (“PTO”) recently published
revised guidance on the application of § 101. See USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
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2019) (“Guidance”). Under the Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice,
or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional activity” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

II. Step 2A, Prong One (Judicial Exception)
The Examiner determines that claim 13 is directed to the abstract idea
of “scaling a picture,” which the Examiner concludes is directed to a
mathematical algorithm. Final Act. 5.

3 Appellant argues claims 1–18 as a group. See Appeal Br. 9. We select
independent claim 1 as representative of claims 1–18. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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The Specification describes an improvement to “printer technology,”
related to “an ink-jet printer . . . account[ing] for changes in paper size in
response to the wetting of the paper by the ink.” Spec. ¶¶ 2–3. Prior art
efforts to scale an image to account for paper size changes “attempt[ed] to
account for every pixel,” which “is generally too numerically intensive.” Id.
¶ 7. The Specification’s improved approach chooses “multi-pixel width
columns” for modification instead of “one dimensional ‘slices’ of pixel
width columns.” Id. ¶ 23.
The Examiner finds that the claimed “identifying” step “relates to a
purely mathematical algorithm in order to identify ‘regions of lesser
activity’—a concept the instant specification admits as mathematical at
paragraph [0064].” Ans. 11–12. The portion of paragraph 64 quoted by the
Examiner states, “[t]he above described gradient algorithm is just one of
many possible mathematical approaches for indicating to what degree there
is change occurring at a specific pixel location within an image.” Id. at 12
(quoting Spec. ¶ 64). The Examiner similarly finds the “removing” and
“inserting” steps involve mathematical algorithms. Id.
However, because claim 1 may use mathematical relationships is
insufficient to determine the claim “falls within the subject matter groupings
of abstract ideas enumerated” in the Guidance. Guidance, 84 Fed. Reg.
at 54. Although some of the limitations may be based on mathematical
concepts, we note that the specific mathematical concepts are not recited in
the claim. For example, the “gradient algorithm” identified by the Examiner
in paragraph [64] of the Specification is not explicitly illustrated in claim 1.
See Ans. 11–12. Therefore, under the Guidance, the claims do not recite a
mathematical concept. See, e.g., Subject Matter Eligibility Examples:
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Abstract Ideas, at 7 (Jan. 7, 2019) (discussing Example 38 and noting that
“[t]he claim does not recite a mathematical relationship, formula, or
calculation. While some of the limitations may be based on mathematical
concepts, the mathematical concepts are not recited in the claims.”).
Nor has the Examiner demonstrated that the claim recites organizing
human activities or mental processes. Based on the record before us, we are
persuaded the Examiner erred at Step 2A, Prong 1 in determining that the
claims recite an abstract idea.
Accordingly, we reverse the Examiner’s rejection of claims 1–18
under 35 U.S.C. § 101.

Rejections under 35 U.S.C. § 103
Appellant contends Bernal, AAPA, and Baumler each fail to teach or
suggest claim 1’s “remove a first region having a first width of more than
one pixel from the image along said axis at each of said locations” and
“insert a second region having a second width of more than one pixel into
the image along said axis at each of said locations.” Appeal Br. 13–15;
Reply Br. 4–5. Appellant argues, “none of the references disclose or suggest
both removing a first region in an image and inserting a second region in
the image along the same axis to achieve a scaling.” Appeal Br. 14
(emphasis omitted). Specifically, Appellant contends that in Bernal, a “seam
is replicated if the digital image is being enlarged in size or deleted if the
digital image is being reduced in size.” Id.
The Examiner finds, “Bernal discloses . . . adding and removal of
pixel seams through an iterative process.” Final Act. 9 (citing Bernal, Fig. 4
¶¶ 27, 36, 37); Ans. 14 (citing same). The Examiner further finds, “[s]uch
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an iterative process illustrated in Figure 4 constitutes the claimed process
involving both the addition and removal of pixels.” Id. (emphasis omitted).
On Reply, Appellant contends that Bernal “explicitly discloses that a
selected seam is replicated if a digital image is being enlarged in size or
deleted if the digital image is being reduced in size.” Reply Br. 4 (citing
Bernal ¶ 5 (“[t]he selected seam is then replicated if the digital image is
being enlarged in size or deleted if the digital image is being reduced in
size.” (emphasis added))). In other words, although the Examiner is correct
that Figure 4 shows adding and deleting (i.e., “add/delete seam”), Bernal
only adds seams within one image or deletes seams from another image, and
does not both remove and insert on the same image, as required by the
claim.
However, the Examiner also relies on AAPA as teaching or
suggesting the same claim limitations. Final Act. 9. Appellant
acknowledges this (“the Examiner maintains that Bernal and AAPA both
disclose such a feature” (Appeal Br. 14)) but fails to make any argument that
AAPA does not disclose these limitations. Instead, Appellant’s arguments
for this limitation only refer to Bernal. E.g., Appeal Br. 12–15. As
arguments not made are waived, we are constrained on this record to uphold
the Examiner’s cumulative findings with respect to Bernal and AAPA. See
Frye, 94 USPQ2d at 1075 (The Board “reviews . . . rejection[s] for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon,” and treats arguments not made as waived.).
Appellant also contends that “even if Bernal could somehow be
construed as disclosing replications and deletions in the same iterative
process, there is no disclosure or suggestion that the subsequent
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replications/deletions occur along the same axis.” Appeal Br. 15. We agree
because, as Appellant persuades us that Bernal does not teach or suggest
both “remove” and “insert” within the same image, Appellant persuades us
that Bernal necessarily does not teach both removing and inserting “along
the same axis.”
Regardless, the Examiner again finds that not only Bernal but also
AAPA cumulatively discloses “along the same axis.” Final Act. 9 (citing
AAPA ¶¶ 8–11); Ans. 15 (citing same). Appellant fails to rebut this finding
in the Appeal Brief. See Appeal Br. 15 (arguing over Bernal but not
AAPA). On Reply, Appellant argues that AAPA does not disclose “along
the same axis,” characterizing the Answer as providing a “new construction
of the AAPA.” Reply Br. 6. But the Answer does not make new findings
with respect to AAPA; it cites the same paragraphs of AAPA as the Final
Action. See Final Act. 9 (citing AAPA ¶¶ 8–11); Ans. 15 (citing same).
Accordingly, Appellant’s Reply argument is untimely. See Ex parte
Nakashima, No. 2009-001280, 2010 WL 191183, at *3–*6 (BPAI 2010)
(explaining that arguments and evidence not timely presented in the
principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief).
We, therefore, sustain the Examiner’s obviousness rejection of
claim 1. Appellant’s arguments regarding the rejection of independent
claims 7 and 13 rely on the same arguments as for claim 1, and Appellant
does not argue separate patentability for the dependent claims. See Appeal
Br. 15. We, therefore, also sustain the Examiner’s obviousness rejection of
claims 2–18. See 37 C.F.R. § 41.37(c)(1)(iv).
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed
1–18 101 1–18
1–18 103 Bernal, AAPA,
Baeumler
1–18
Overall
Outcome
1–18
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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) (2013).

AFFIRMED