David C. Robinson et al.

Patent Trials and Appeals Board

Jan 8, 2020

13892693 - (D) (P.T.A.B. Jan. 8, 2020)

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.
13/892,693 05/13/2013 David C. Robinson 20121185USNP-
XER2983US01
4647
62095 7590 01/08/2020
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
HUNTSINGER, PETER K
ART UNIT PAPER NUMBER
2615
MAIL DATE DELIVERY MODE
01/08/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID C. ROBINSON, and KATHERINE LOJ
____________

Appeal 2018-009245
Application 13/892,693
Technology Center 2600
____________

Before KALYAN K. DESHPANDE, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7, 9, and 11–16, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Xerox Corporation as the real party in interest. Appeal
Br. 1.

Appeal 2018-009245
Application 13/892,693

2
STATEMENT OF THE CASE
Introduction
The present invention relates to “a splitter operation performed on a
PDF/VT [portable document format/variable data and transactional] file at
the client device for rendering output at a printer device. More specifically,
the splitter operation divides a catalog tree into multiple branches. The
printer device uses relevant tree portions when processing corresponding
chunks.” Spec. ¶ 1. In particular,
[o]ne embodiment of the present disclosure relates to a method
for outputting a print job. The method includes accessing a file
representing a previously created document at a client
computer. The method includes accessing a catalog tree
residing in the document and including metadata corresponding
with a job ticket embedded in the file for rendering the
document. The method includes splitting pages in the document
into multiple chunks using a splitter located in the client
computer. The method includes splitting by the splitter the
catalog tree into a set of branches each corresponding with one
of the chunks of the finished document. The method includes
embedding corresponding branch information into the each
chunk. The method includes streaming the chunks as a package
to a digital front end (DFE) of an output device.

Spec. ¶ 10. Claim 1 is exemplary:

1. A method for outputting a print job, the method
comprising:
accessing at a client computer a first file representing a
previously created document;
accessing a catalog tree residing in the document and
including metadata attached to each page of the document, the
metadata corresponding with a job ticket embedded in the first
file for advising a printer device how to apply the metadata for
rendering the document;
Appeal 2018-009245
Application 13/892,693

3
dividing pages in the document into multiple chunks by
splitting the pages in alternating fashion at a fixed distance,
wherein the dividing is performed according to a predetermined
chunk size parameter using a splitter located in the client
computer;
trimming the catalog tree into portions each including
only information that is required for a resident page within a
chunk;
generating a branch for each chunk, the branch
containing the trimmed portions of the catalog tree
corresponding to resident pages within the chunks;
adding set boundary information at nodes of the
branches, wherein each node defines a finishing level and the
set boundary information is operative to be used by an
associated raster image processor to generate commands for the
chunk, and
embedding the corresponding branch information into the
each chunk;
generating a second file including the chunks; and,
streaming the second file as a package to a digital front
end (DFE) of an output device.

References and Rejections2
Claims
Rejected
35 U.S.C. § References
1–6 103

Mori (US 2011/0170132 A1; July 14, 2011), Boeck
(US 2012/0186475 A1; July 26, 2012)
7, 9, 13–16 103 Mori, Boeck, AAPA (Background section of the
Specification), Smith (US 2008/0309962 A1; Dec.
18, 2008)
11–12 103 Mori, Boeck, AAPA, Smith, Klassen
(US 2011/0122433 A1; May 26, 2011)

2 Throughout this opinion, we refer to the (1) Final Office Action dated Feb.
07, 2018 (“Final Act.”); (2) Appeal Brief dated July 6, 2018 (“Appeal Br.”);
(3) Examiner’s Answer dated Aug. 29, 2018 (“Ans.”); and (4) Reply Brief
dated Sept. 27, 2018 (“Reply Br.”).
Appeal 2018-009245
Application 13/892,693

4

ANALYSIS
Obviousness
On this record, the Examiner did not err in rejecting claim 1. We
disagree with Appellant’s arguments, and adopt the Examiner’s findings and
conclusions in (i) the action from which this appeal is taken and (ii) the
Answer that are consistent with our analysis below.3
I
Appellant contends Mori does not teach “adding set boundary
information at nodes of the branches,” as recited in claim 1. See Appeal
Br. 7–11; Reply Br. 3–4. In particular, Appellant contends paragraph 21 of
the Specification defines “boundary information,” but the Examiner fails to
“interpret the claim limitation . . . in view of the definition assigned to it in
the specification.” Appeal Br. 10; see also Reply Br. 3. Appellant argues
“Mori does not teach or suggest the claimed ‘set boundary information’
because it does not divide a PDF in interleave fashion.” Appeal Br. 10.
Appellant contends the Examiner erred in finding Mori’s metadata teach
both the claimed “boundary information” and “branch.” Appeal Br. 10.
Appellant has not persuaded us of error.
First, it is well established that during examination, claims are given
their broadest reasonable interpretation consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art, but without importing limitations from the

3 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
Appeal 2018-009245
Application 13/892,693

5
specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted); SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The Specification states:
The set-boundary indicators indicate a boundary for each set of
pages that are grouped together for a finishing operation. A set-
boundary indicator can include the beginning page of a
partitioned set and/or document (hereinafter referred to as
“begin-set indicator”). The set boundary indicator can
additionally include a last page of the partitioned set (“end-set
indicator”).
Spec. ¶ 21.
Contrary to Appellant’s arguments, the above paragraph does not
define the term “boundary information.” In fact, that term does not even
appear in the above paragraph. As a result, we agree with the Examiner that
Appellant has not shown the Specification specifically defines the term
“boundary information.” See Ans. 2–3.
Second, Appellant’s argument that “Mori does not teach or suggest
the claimed ‘set boundary information’ because it does not divide a PDF in
interleave fashion” (Appeal Br. 10) is unsubstantiated and speculative, as
Appellant has not persuasively explained why Mori must “divide a PDF in
interleave fashion” (Appeal Br. 10) in order to teach the claimed “set
boundary information.”
Third, in response to Appellant’s arguments, the Examiner further
explains why Mori teaches both the claimed “branch” and “boundary
information,” and why Mori teaches “adding set boundary information at
nodes of the branches,” as recited in claim 1:
Mori ‘132 discloses that the metadata shown in FIGS.
9B, 9C and 9D has pages associated with the attributes of the
“Record” (page 6, paragraph 61). The listing of pages can be
Appeal 2018-009245
Application 13/892,693

6
considered as boundary information because they indicate the
bounds of the attributes.
. . . .
Mori ‘132 discloses that the metadata shown in FIG. 9A
is divided as the print job is divided into groups (page 7,
paragraph 66). The entire collection of metadata in the divided
print job is saved with the new print job and can be considered
a branch. The metadata shown in FIGS. 9B, 9C and 9D has
pages associated with the attributes of the “Record” (page 6,
paragraph 61). Generation of data involves creation of data, and
because the original print job is split into multiple new print
jobs, data that is carried over to the new pages can be
considered as being added to the new job. Therefore, the
generated metadata in the new print job can be considered as
added.
Ans. 3–4.
Appellant fails to persuasively respond to such findings and,
therefore, fails to show Examiner error. See In re Baxter Travenol Labs.,
952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or
this Board] to examine the claims in greater detail than argued by an
appellant, looking for [patentable] distinctions over the prior art.”). In
particular, Appellant’s conclusory assertion that “the Examiner is drawing a
broad conclusion” (Reply Br. 4) does not explain why and how the
Examiner erred. Appellant also argues:
The claimed invention would not work on Mori. In other
words, boundary information would not work on Mori. Take
Mori FIG. 7, for example, a complete document having 9 pages
includes metadata that instructs on some pages to be printed on
plain paper and other pages to be printed on heavy paper. The
pages that share the same finishing operation are grouped
together to form a print job in FIG. 7B. FIG. 7B shows that
pages 1, 2, 3, 7, 8, and 9 are all printed on plain paper. This is a
noncontiguous group, so boundary information (page 1 and
page 9) would not instruct on or guarantee any conformity on
Appeal 2018-009245
Application 13/892,693

7
pages 2-8. As evidenced in the illustrated example of Mori,
there is gap in the group because pages 4-6 are assigned to a
different finishing operation. In the claimed invention, the
boundary information would designate pages 1 and 9 for the
group, and this information would further instruct on a group of
contiguous pages (for example 1, 3, 5, 7, and 9; or 1, 5, 9) that
starts at page 1 and page 9. Therefore, Mori does not provide
the outcome that is claimed.

Reply Br. 4.
The above arguments are unpersuasive, because they are not directed
to the Examiner’s specific findings: the Examiner finds in Mori, the claimed
boundary information is “[t]he listing of pages” (Ans. 3)–not merely the
beginning and ending page numbers, as Appellant argues (Reply Br. 4).
II
Appellant contends “Mori does not disclose the elements of
(1) trimming the catalog tree; (2) generating a branch for each chunk . . . ;
and (4) embedding the branch information into the chunk.” Appeal Br. 7.4
In particular, Appellant argues:
During prosecution, Appellant pointed out that the
Examiner cited to the same broad paragraph for limitations (2)
[and] (4), above (See, Response dated April 17, 2018). it is
clear that the exact text of the cited section(s) do not expressly
disclose any one of the limitations [(1), (2), and (4)]. Appellant
also submits that one of ordinary skill in the art would not
conclude that the cited sections inherently suggest that any
specific operations are being performed–on a catalog tree–when
dividing a print job. Appellant submits that the Examiner has
failed to provide pin point citations to Mori. Because the

4 Appellant refers to the limitation “adding set boundary information at
nodes of the branches” as element (3). Appeal Br. 7. We have already
discussed that limitation in Section I above.
Appeal 2018-009245
Application 13/892,693

8
Examiner has failed to provide a pin point citation for each
limitation, Appellant submits that the Examiner is not able to
fill the missing limitations using Mori.

Appeal Br. 8.
Appellant has not persuaded us of error. It is well settled that:
[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.

In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and
quotation marks omitted). Specifically, the Jung Court finds:
the examiner’s discussion of the theory of invalidity
(anticipation), the prior art basis for the rejection (Kalnitsky),
and the identification of where each limitation of the rejected
claims is shown in the prior art reference by specific column
and line number was more than sufficient to meet this burden.

Jung, 637 F.3d at 1363 (emphasis added).
Here, the Examiner’s rejection clearly satisfies the requirement of
35 U.S.C. § 132 to establish a prima facie case of unpatentability. The
rejection identifies: the theory of unpatentability (obviousness); the prior art
basis for the rejection (Mori and Boeck); where each limitation of claim 1 is
shown in the references by page and paragraph numbers, plus additional
explanation on how the prior art features teach the disputed claim
limitations. See Final Act. 4–7; Ans. 2–4. In short, similar to the Examiner
Appeal 2018-009245
Application 13/892,693

9
in Jung, the Examiner has done “more than sufficient to meet this burden [of
establishing the prima facie case].” The burden then shifts to Appellant to
rebut the Examiner’s case.
In order to rebut a prima facie case of unpatentability, Appellant must
distinctly and specifically point out the supposed Examiner errors, and the
specific distinctions believed to render the claims patentable over the applied
reference. See 37 C.F.R. § 1.111(b).
Appellant has not carried the burden. Appellant’s general arguments
that “exact text of the cited section(s) do not expressly disclose any one of
the limitations” and “one of ordinary skill in the art would not conclude that
the cited sections inherently suggest that any specific operations are being
performed--on a catalog tree--when dividing a print job” (Appeal Br. 8) are
insufficient to show Examiner error. See 37 C.F.R. § 1.111(b); 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding 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”); see also In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether
a reference teaches a claim limitation “is not an ‘ipsissimis verbis’ test”).
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 1.
Regarding independent claim 7, Appellant advance similar arguments
discussed above. See Appeal Br. 12–14. Such arguments are unpersuasive
for the reasons discussed above. Appellant also contends “the claimed ‘set-
Appeal 2018-009245
Application 13/892,693

10
boundary indicator’ is an additional piece of information that is not inherent
in the applied reference.” Appeal Br. 14. Appellant’s argument is not
commensurate with the scope of the claim, as claim 7 does not recite a “set-
boundary indicator.” In any event, such a general argument is unpersuasive
of error. See 37 C.F.R. § 41.37(c)(1)(iv); Lovin, 652 F.3d at 1357.
Therefore, we sustain the Examiner’s rejection of independent claim 7.
We also sustain the Examiner’s rejection of corresponding dependent
claims 2, 3, 5, 6, 9, and 11–13, 15, and 16, as Appellant does not advance
separate substantive arguments about those claims. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Separately Argued Dependent Claims
Regarding dependent claim 4, we have reviewed the Examiner’s
rejection in light of Appellant’s contentions and the evidence of record. We
concur with Appellant’s contentions that the Examiner has not adequately
explained why Mori and Boeck collectively teach “the second file includes
. . . at least one set-boundary indicator indicating a boundary for each set of
pages that are grouped together for a finishing operation,” as recited in claim
4. See Appeal Br. 11.
The Examiner cites Mori’s paragraph 61, and finds “[t]he metadata
has pages associated with the attributes of the ‘Record’” (Final Act. 8)
(original emphasis omitted), but does not adequately explain why the cited
paragraph teaches the disputed limitation.5 In response to Appellant’s
arguments, the Examiner further finds “[b]y the metadata listing each page

5 We have reviewed the cited Mori’s paragraph 61 and absent further
Examiner explanation, that paragraph does not teaches the disputed
limitation.
Appeal 2018-009245
Application 13/892,693

11
number of the record, one page number will inherently indicate the
beginning and/or last page of the partitioned set” (Ans. 4–5), but still does
not adequately explained why the cited paragraph teaches “the second file
includes . . . at least one set-boundary indicator indicating a boundary for
each set of pages that are grouped together for a finishing operation,” as
required by claim 4.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of dependent claim 4.
For similar reasons, we are constrained by the record to reverse the
Examiner’s rejection of dependent claim 14.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–3, 5–7, 9, and
11–13, 15, and 16 under 35 U.S.C. § 103.
We reverse the Examiner’s decision rejecting claims 4 and 14 under
35 U.S.C. § 103.
In summary:

Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–6 103 Mori, Boeck 1–3, 5, 6 4
7, 9, 13–16 103 Mori, Boeck,
AAPA, Smith
7, 9, 13, 15, 16 14
11–12 103 Mori, Boeck,
AAPA, Smith,
Klassen
11–12
Overall
Outcome
1–3, 5– 7, 9,
11–13, 15, 16
4, 14
Appeal 2018-009245
Application 13/892,693

12
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). See 37
C.F.R. § 41.50(f).
AFFIRMED IN PART