Ex Parte 6247011 et al

Board of Patent Appeals and Interferences

Jul 16, 2012

90009295 (B.P.A.I. Jul. 16, 2012)

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.
90/009,315 02/11/2009 6247011 1117-0010001 1771
37420 7590 07/17/2012
VISTA PRINT USA, INC.
ATTN: PATENT COUNSEL
95 HAYDEN AVENUE
LEXINGTON, MA 02421
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/17/2012 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
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.
90/009,295 11/14/2008 6247011 DN 5317
37420 7590 07/17/2012
VISTA PRINT USA, INC.
ATTN: PATENT COUNSEL
95 HAYDEN AVENUE
LEXINGTON, MA 02421
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VISTAPRINT TECHNOLOGIES LIMITED,
Appellant

____________

Appeal 2012-002898
Reexamination Controls 90/009,295 & 90/009,315
Patent 6,247,011 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, ROBERT A. CLARKE, and
JOSIAH C. COCKS, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Patent owner appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-6 and 10-29. Claims 7-9 are cancelled. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306. This case is related to
Appeal 2012-002897 (Reexamination Controls 90/009,296 and 90/009,313).
We heard oral arguments at an oral hearing held on July 11, 2012.1

1 As discussed with Appellant’s representative during the oral hearing, no
transcript of the proceeding will be issued.
Appeal 2012-002898
Reexamination Controls 90/009,295 & 90/009,315
Patent 6,247,011 B1

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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on November 14, 2008 (Control No. 90/009,295) and a request for ex parte
reexamination filed February 11, 2009 (Control No. 90/009,315), both of
United States Patent 6,247,011 B1 (the ‘011Patent) issued to Steven T. Jecha
and Winfield A. Mitchell on June 12, 2001. The USPTO granted and
subsequently merged the two requests (See Decision Merging Proceedings,
September 16, 2009). Presently, claims 1-6 and 10-29 stand rejected.
Patentee’s invention relates to a computerized prepress system (Spec,
col. 1, ll. 54-55). Claim 1 reads as follows:
1. A computerized prepress method comprising:
storing on a server computer a computerized prepress
software system, wherein the prepress software system includes
one or more document authoring tools and at least one prepress
translation component, further wherein at least some of the
authoring tools are downloadable to a client computer to be
used to author an electronic document and the translation
component is used to produce a prepress format file from an
authored electronic document;
wherein at least one downloaded authoring tool is a
program that executes in the web browser and has one or more
functions that can be used to create an electronic document,
display the electronic document in WYSIWYG form to the
user, and allow a user to select and edit at least one element of
the electronic document while at least a portion of the electronic
document is simultaneously displayed;
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Patent 6,247,011 B1

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the software system further configured to provide that the
authoring tools create an electronic document using the client
computer and that the client computer transfers the electronic
document to the server computer in a form allowing the
translation component executing on the server computer to
create a prepress format file so that when the prepress format
file is used to produce a document the document is consistent
with the WYSIWYG form displayed to the user on the client
computer, and so that the user need only be concerned with
authoring the electronic document and not with the creating a
prepress format file, and further so that the authored electronic
document can be automatically processed by the server
computer into a prepress format file;
wherein the client computer is one of a plurality of client
computers each including a web browser capable of interacting
with at least one Internet web site addressed by a uniform
resource locator (URL) and the server computer is one of at
least one server computers connected to the plurality of client
computers over the Internet;
sending log-on information regarding a user from a client
computer to the server computer over the Internet, wherein the
user has profile data maintained by the server computer, and
authenticating the user at the server computer;
downloading one or more of the authoring tools from the
server computer to the client computer;
the user using at least one downloaded authoring tool at
the client computer to create an electronic document;
sending the electronic document from the client computer
to the server computer;
saving the electronic document in an internal format at
the server computer; and
using the translation component, translating the
electronic document from the internal format to a different
suitable prepress format file usable to produce a corresponding
document on a printing device.
Appeal 2012-002898
Reexamination Controls 90/009,295 & 90/009,315
Patent 6,247,011 B1

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(App. Br. 15-16, Claims Appendix).

The Examiner cites the following references:

Furman US 5,483,653 Jan. 9, 1996
Farros US 5,930,810 Jul. 27, 1999

Corel Corporation, “Corel Office for Java Whitepaper,” Jan. 13, 1997
(“Corel Whitepaper”).

Corel Corporation, “Corel Office for Java Frequently Asked Questions,”
Jan. 13, 1997 (“Corel FAQ”).

The Examiner rejects claims 1-3, 5, 6, 10-15, 17, and 19-29 under 35
U.S.C. § 103(a) as unpatentable over Corel Whitepaper and Furman; claims
4 and 18 under 35 U.S.C. § 103(a) as unpatentable over Corel Whitepaper,
Furman, and Farros; and claim 16 under 35 U.S.C. § 103(a) as unpatentable
over Corel Whitepaper, Furman, and Corel FAQ.
ISSUE
Did the Examiner err in rejecting claims 1-6 and 10-29?

PRINCIPLE OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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Patent 6,247,011 B1

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subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
Appellant argues that it would not have been obvious to one of
ordinary skill in the art to have combined the Furman reference with Corel
Whitepaper (see, e.g., App. Br. 5). We disagree with Appellant.
As the Examiner points out, Corel Whitepaper discloses a system of
network printing of documents including downloading application
functionality for document creation from a server to a client,2 editing a
document at the client, uploading the data/document to the server,3 and
printing the document via the server.4 Like Corel Whitepaper, Furman also
discloses a system of network printing of documents in which the document
to be printed is received and printed in a “first format.”5 Furman also
discloses that if the document received to be printed is in one format but

2 Corel Whitepaper discloses that “Corel Office for Java is network-centric .
. . applications . . . reside on the server and are seamlessly downloaded to the
client as required” (p. ABC0038788).
3 Corel Whitepaper discloses that a user “can edit a [document] and then
return it to the network server . . .” (p. ABC0038788, pagination refers to
bates numbers found in the version on file with this Office rather than
original page numbers).
4 Corel Whitepaper discloses that the “server side . . . takes care of . . .
printing . . .” (p. ABC0038790).
5 Furman discloses “a known simplified network printing arrangement . . .
using a first format to represent jobs . . . which network operating system
also uses the first format” (col. 9, ll. 27-33).
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printing is to be accomplished in a second (different) format,6 the system
translates the document from the first format to the second format for
printing.7
Hence, one of ordinary skill in the art would have understood that
files to be printed are edited by a user (or client) and uploaded to a server
computer system for processing for printing (Corel Whitepaper and/or
Furman). One of ordinary skill in the art would also have understood that in
the event that the file for printing was in a first format that was different
from a second format for printing, it was known to translate the file from the
first format to the second format during processing of the file for printing
(Furman). Such a combination of references (Corel Whitepaper and
Furman) would have entailed no more than combining known
methodologies performing their known functions (i.e., uploading a file to a
server for printing and translating the file (as disclosed by Furman) if the file
as received is in a format unsuitable for printing) to achieve a predictable
result (i.e., printing a document that a user desires to be printed). We agree
with the Examiner that such a combination would have been obvious to one
of ordinary skill in the art. “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield

6 Furman discloses an embodiment in which “the client 14 uses a second
format, which differs from the first format, and the workstation is coupled
with the printer by way of a print server . . .” (col. 9, ll. 36-38).
7 Furman discloses “translation of the job file 60 from a first [format] . . .
into a second [format]” (col. 8, ll. 43-44) for printing of the job file.
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predictable results.” KSR Int’l Co., 550 U.S. at 416.
Appellant argues that “Corel Whitepaper . . . lacked print capability
altogether” (App. Br. 8) so, according to Appellant, one of ordinary skill in
the art would not have combined Corel Whitepaper (a reference that
presumably lacked print capability) with Furman (a reference the included
print capability). We are not persuaded by Appellant’s argument at least
because, contrary to Appellant’s assertion, Corel Whitepaper discloses print
capability (i.e., “important features including . . . printing” (p.
ABC0038790)).
Appellant also argues that Furman only discloses “translating a print
job from one PDL format to a different PDL format” (App. Br. 8) and
therefore “cannot print the Java-coded document described in the Corel
Whitepaper” (App. Br. 8). However, “the test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference.... Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In
the present case, as described above, both Corel Whitepaper and Furman
disclose a system in which a file in one format is uploaded to a server and
printed in the same format while Furman further discloses that if the file is to
be printed using a second and different format from the first format that
translation of the file may be performed. Given Furman’s explicit teaching
that translation of a file from one format to another format for printing was
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known and practiced in the art, it would have been obvious to one of
ordinary skill in the art to have done so in the event that such translation was
needed.
Appellant also argues that Corel Whitepaper fails to disclose “a
‘prepress software system’” or creating “documents in a prepress format”
(App. Br. 9) because, according to Appellant, Corel Whitepaper fails to
disclose “such pre-printing processing tasks as high resolution layout, image
preparation, trapping, and color separation” (App. Br. 10, citing Declaration
Under Rule 1.132 of Kevin P. Keane, dated December 16, 2009). We note,
however, that Appellant has not indicated that the Specification indicates
that “prepress” requires any specific function much less “high resolution
layout, image preparation, trapping, and color separation.” Rather, the
Specification states that “prepress involves the preparation of all the
electronic files that will be utilized to create a publication printed with paper
and ink” (col. 1, ll. 16-18). Since Appellant has not sufficiently
demonstrated that Corel Whitepaper fails to disclose preparation of files to
be utilized to create printed materials such as embedding a spreadsheet into a
word processor file for printing (Ans. 5) (i.e., “prepress” processes,
according to the Specification), we are not persuaded by Appellant’s
argument that Corel Whitepaper fails to disclose a “prepress software
system.” Even assuming that a “prepress software system” or creating
“documents in a prepress format” require translation of a created file into a
second file that is printed, as argued by Appellant, Furman provides a
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Patent 6,247,011 B1

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teaching to process a first created file into a second format for printing as
discussed above. Thus, even if we were to accept the narrower construction
argued by Appellant, we are not persuaded that Corel Whitepaper and
Furman fail to adequately teach a “prepress software system.”
Claims 14, 21, and 27 recite similar features and Appellant does not
provide additional arguments in support of those claims or of claims 2-6, 10-
13, 15-20, 22-26, 28, or 29. Appellant also does not provide additional
arguments with respect to Farros or Corel FAQ.

CONCLUSION
We conclude that the Examiner did not err in rejecting claims 1-3, 5,
6, 10-15, 17, and 19-29 as obvious over Corel Whitepaper and Furman;
claims 4 and 18 as obvious over Corel Whitepaper, Furman and Farros; and
claim 16 as obvious over Corel Whitepaper, Furman and Corel FAQ.

DECISION
The decision of the Examiner to reject claims 1-6 and 10-29 is
affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

Appeal 2012-002898
Reexamination Controls 90/009,295 & 90/009,315
Patent 6,247,011 B1

10
AFFIRMED

ack

cc:

Patent Owner:

VISTA PRINT USA, INC.
ATTN: PATENT COUNSEL
95 HAYDEN AVENUE
LEXINGTON, MA 02421

Third Party Requestor

KENT J. SIEFFERT
SHUMAKER & SIEFFERT, P.A.
1625 RADIO DRIVE
SUITE 300
WOODBURY, MN 55125