Ex Parte 6684789 et al

Patent Trial and Appeal Board

Dec 19, 2013

95001398 (P.T.A.B. Dec. 19, 2013)

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.
95/001,398 07/16/2010 6684789 P-74637-US 5488
49443 7590 12/20/2013
Pearl Cohen Zedek Latzer, LLP
1500 Broadway
12th Floor
New York, NY 10036
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/20/2013 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
________________

SAMSUNG ELECTRONICS CORP. LTD.
Requester and Respondent

v.

CCP SYSTEMS AG
Patent Owner and Appellant
________________

Appeal 2013-009045
Reexamination Control 95/001,398
Patent 6,684,789 B2
Technology Center 3900
________________

Before HOWARD B. BLANKENSHIP, STANLEY M. WEINBERG, and
STACEY G. WHITE, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
A. Introduction
This is an appeal from the Examiner’s decision in an inter partes
reexamination of U.S. Patent 6,684,789 B2 (“the ’789 Patent”), owned by
CCP Systems AG (“Appellant”). This reexamination proceeding arose from
a third party request filed by Samsung Electronics Corp. (“Requester”).
After an Action Closing Prosecution (“ACP”), the Examiner issued a Right
of Appeal Notice (“RAN”). The RAN lists claims 1-64, 66-72, and 74-82 as
finally rejected. Claims 1-53 are original patent claims. Claims 54-64, 66-
72, and 74-82 are proposed new claims. Proposed claims 65 and 73 have
been canceled. RAN 2. Patent Owner invokes our review of rejected claims
under 35 U.S.C. § 134(b) (2002). An oral hearing was held October 9, 2013.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315 (2002).
We AFFIRM-IN-PART.
B. Related Proceedings
Appellant has informed us that there are no related appeals or
interferences before the Board. App. Br. 2. Appellant has also informed us
that CCP Systems AG v. Samsung Electronics Corp., Ltd. Samsung
Electronics America, Inc., Samsung Networks, Inc. and IBM Corp., 2:09-cv-
04254 (D. N.J.) is related to this reexamination proceeding. Id. 65. The
patent portion of that litigation has been stayed. Id.
C. The Invention
The ’789 Patent is directed to apparatuses and methods to transform a
digital print data stream. ’789 Patent 1:6-7, Abstract. In the prior art print
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systems, an application controls a print driver that converts print data into a
format (page description language or “PDL”) suitable for the printer. Id.
1:9-16, 2:52-61. The invention of the ’789 Patent sets out to handle more
complex page description language at a higher level of abstraction by
parsing an input print data stream for graphically representable objects,
storing and transforming these objects, and outputting an output print data
stream. Id. 2:62-3:20.
Claim 1 is illustrative of the appealed subject matter and is reproduced
below:
1. A method for the transformation of digital print data streams,
in which
(i) an input print data stream (2) is read in,
(ii) this is analyzed by means of a parser (4) for
graphically representable objects (5) and is split up
into these graphically representable objects (5),
and
(iii) the graphically representable objects (5) are stored
in a memory (6) in an object-oriented format, and
(iv) the graphically representable objects (5) stored in
the memory (6) in an object-oriented format are
transformed into a format for the control of an
output device (9), preferably a printer, and
(v) the objects thus transformed are combined into an
output print data stream (10) and are output,
characterized in that graphically representable objects
(5, 5a) are stored in the memory (6) in an object-
oriented format, to which at least one stored script
is assigned, which is executed in the cases defined
in the script.
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D. The Prior Art
Pelletier (“Interleaf Patent”) U.S. 5,579,519 Nov. 26, 1996
Berchtold (“’705 Patent”) U.S. 6,678,705 B1 Jan. 13, 2004
AS/400 Guide to Advanced Function Presentation and Print Services
Facility, Fourth Edition, IBM Printing Systems, January 1999 (“IBM”).
English, Paul M. et al, Interleaf Active Documents, 7(2) Electronic
Publishing, 75-87, June 1994 (“Interleaf”).
Lieberman, Henry, “Integrating user interface agents with conventional
applications,” Knowledge-Based Systems 11 (1998), pp 15-23
(“Lieberman”).
E. The Rejections
1. Claims 59-64, 66, and 67 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. ACP 23-24; RAN 2-6, 44.
2. Claims 64, 66, 67, 72, 74, and 75 stand rejected under 35
U.S.C. § 314(a) as enlarging the scope of the patent being reexamined. ACP
24-26; RAN 6, 44.
3. Claims 1-5, 17, 20-26, 38-41, 54, 56, 59, 61-62, 68, 70, 71, 76-
78, and 80-82 stand rejected under 35 U.S.C. § 102(b) as anticipated by
IBM. ACP 26-32.
4. Claims 1-7, 11-12, 17, 20-28, 32, 33, 38-44, 48, 49, 54, 56, 59,
61, 62, 68, 70, 71, and 76-82 stand rejected under 35 U.S.C. § 103(a) as
obvious over IBM and Interleaf. Id. 33-38.
5. Claims 1-14, 16-18, 20-35, 37-51, 53, 54, 56, 57, 59-62, 64, 66,
68-72, 74, and 76-82 stand rejected under 35 U.S.C. § 103(a) as obvious
over IBM, Interleaf, and Interleaf Patent. Id. 39-49.
6. Claims 15, 19, 36, and 52 stand rejected under 35 U.S.C.
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§ 103(a) as obvious over IBM, Interleaf, Interleaf Patent, and Lieberman.
1

Id. 50-51.
7. Claims 1, 2, 4-7, 11, 12, 22-23, 25-28, 32, 33, 38, 39, 41-44, 48,
and 49 stand rejected under 35 U.S.C. § 102(b) as anticipated by Interleaf.
Id. 51-56.
8. Claims 1, 2, 4-14, 16-18, 22, 23, 25-35, 37-39, 41-51, 53, 54,
57, 59, 61, 68, 70, and 76-82 stand rejected under 35 U.S.C. § 103(a) as
obvious over Interleaf and Interleaf Patent. Id. 57-66.
9. Claims 15, 19, 36, 52, and 58 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Interleaf, Interleaf Patent, and Lieberman. Id. 66-
67.
10. Claims 1-54, 56-60, 62, 64, 66, 68-71, 76, 77, and 80-82 stand
rejected under 35 U.S.C. § 103(a) as obvious over Interleaf Patent and IBM.
Id. 67-72.
11. Claim 55 stands rejected under 35 U.S.C. § 103(a) as obvious
over Interleaf, Interleaf Patent, and ’705 Patent. Id. 72-74.
12. Claims 55 and 75 stand rejected under 35 U.S.C. § 103(a) as
obvious over IBM, Interleaf, Interleaf Patent, and ’705 Patent. Id. 75-77;
RAN 32-33.
13. Claims 55, 63, and 67 stand rejected under 35 U.S.C. § 103(a)
as obvious over Interleaf Patent, IBM, and ’705 Patent. Id. 77-79

1 Appellant does not separately challenge the rejections directed to dependent
claims 15, 19, 36, 52, and 58. App. Br. 5 n 5. Thus, we will not specifically
address these claims outside of our conclusion.
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F. Issues Presented
The briefing in response to the Examiner’s RAN presents us with the
following issues:
1. Did the Examiner err in finding indefinite a printer “adapted to
transform the graphically representable objects into a format for the control
of an output device, to combine the objects into an output print data stream,
and to output said combined output print data stream” as recited in claims 59
and 64?
2. Did the Examiner err in concluding that claims 64 and 72
enlarge the scope of the claims of the ’789 Patent?
3. Did the Examiner err in finding IBM to disclose (a) analyzing
an input print data stream by a parser and (b) assigning a script to an object?
4. Did the Examiner err in finding Interleaf to disclose
transforming, reading, and parsing a print data stream?
5. Did the Examiner err in finding the cited references to teach a
data stream “formatted in page description language” as recited by claim 76?
6. Did the Examiner err in finding the cited references to teach a
“parser [that] is a syntax analyzer” as recited by claim 77?
7. Did the Examiner err in finding the cited references to teach a
printer?
8. Did the Examiner err in combining IBM, Interleaf, and Interleaf
Patent?
9. Did the Examiner err in combining IBM, Interleaf, Interleaf
Patent, and ’705 Patent?
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10. Did the Examiner err in finding no nexus between the ’789
Patent and Appellant’s evidence of commercial success?
II. ANALYSIS
A. Are Claims 59 and 64 Indefinite?
The Examiner rejected claims 59 and 64 as indefinite because the
Specification did not teach a printer adapted to output a print data stream.
ACP 24; RAN 5-6. Appellant argues that support for the claimed printer is
found in Figure 1 of the ’789 Patent that shows device 3 outputting a print
data stream to printer 9. ’789 Patent 8:57-9:12, Fig. 1. Device 3 is “a
computer such as a PC or else an intelligent output device such as an
intelligent printer – which operates in accordance with the method according
to the present invention.” Id. 8:59-61. Requester avers the Specification
does not describe an embodiment where a printer outputs a print data stream
to printer 9. Resp. Br. 3. We disagree. The Specification describes device 3
as either a computer or an intelligent printer in the same passage where it
describes device 3 as outputting a print data stream to a device that is
“preferably a printer 9.” ’789 Patent 8:59-9:34. Thus, we find that Figure 1
and its supporting text describe an inventive printer that outputs a print data
stream. Therefore, we do not sustain the Examiner’s rejection under 35
U.S.C. § 112, second paragraph of claims 59 and 64 and their dependent
claims 60-63, and 66-67.
B. Do Claims 64 and 72 Enlarge the Scope of the ’789 Patent Claims?
The Examiner rejected claims 64 and 72 under 35 U.S.C. § 314(a),
which provides that “the patent owner shall be permitted to propose … a
new claim or claims, except that no proposed … new claim enlarging the
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scope of the claims of the patent shall be permitted.” 35 U.S.C. § 314(a)
(2002). Claims 64 and 72 are directed to “a printing system” that includes a
printer or print server. The Examiner found the new claims improper
because there are no original claims directed to “a printing system.” RAN 6.
Appellant argues that original claim 1 includes every limitation found in
claims 64 and 72. App. Br. 12. In addition, original claim 17 recites “a
system” with a data processing unit programmed to perform the method of
claim 1 and original claims 20 and 21 further recite a printer or print server
that has a system “as claimed in claim 17.” Id.; ’789 Patent 10:57-62, 11:13-
18.
In a reexamination, “[a] new claim enlarges if it includes within its
scope any subject matter that would not have infringed the original patent.”
Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 692 (Fed. Cir. 1997)
(citing Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1580 (Fed.Cir.1995)).
Requester argues that an accused system performing any of claim 1’s steps
using logic hardware as opposed to a preprogrammed data processing unit
would not fall within the purview of the original claims, but potentially
would be captured by new claims 64 and 72. Resp. Br. 4. Appellant avers
that the new claims recite a data processing unit and thus, the data
processing unit is required to perform all data processing steps. Rebuttal Br.
6.
We agree with Requester. The newly added claims are broader in that
a device “adapted to” perform certain steps encompasses more than the
originally claimed “data processing unit [that] is programmed” to perform
certain steps. The original claims require that the data processing unit
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specifically be programmed to carry out the claimed method. Claims 64 and
72, however, have no such requirement. Under the new claims, an accused
device with a data processing unit that is not programmed to perform all of
the claimed steps could still infringe so long as something else in the device
is “adapted to” perform the missing step. Thus, we sustain the Examiner’s
rejection under 35 U.S.C. § 314(a) of claims 64 and 72 and their dependent
claims 66, 67, 74, and 75.
C. Does IBM Disclose Analyzing an Input Print Data Stream by a Parser
and Assigning a Script to an Object?
Appellant argues the Examiner erred in determining that the IBM
reference anticipates the claims of the ’789 Patent. App. Br. 12-13.
Appellant asserts that IBM does not disclose an embodiment that both parses
an input stream and assigns a script to objects parsed from that input stream
as is required by independent claims 1, 22, 38, 54, and 68. Id. 13-14.
According to Appellant, IBM discloses two embodiments. Id. 13. In
the first embodiment, an application program describes the formatting of the
document to be printed (“program-described”). Id. (citing IBM 25). In the
second embodiment, an application outputs raw data with the formatting to
be “externally-described” by a data description specification (“DDS”). Id.
Appellant argues that the Examiner found DDS to disclose the claimed
script, but that DDS is never applied to “program-described” output. Thus,
the Examiner improperly relied on parsing found in the “program-described”
embodiment and a script found in the “externally-described” embodiment.
Requester asserts that Appellant is taking a narrow view of IBM’s
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disclosures and that the “program-described” and “externally-described”
functionalities are not mutually exclusive. Resp. Br. 5.
IBM describes “DDS as an enabler for document and reports … [that]
provides the application programmer with the capability to produce very
customized output,” but notes that “there are environments where this tight
integration is less desirable … [because] it can make the task of coding
application logic and output logic more complex because the logic is
intertwined.” IBM 193. IBM then describes “[n]ew output formatting
objects …, page definitions and form definitions” that “provide a means to
separate page formatting from the application program.” Id.
The Examiner points to IBM’s discussion of splitting output into
“print fields” as disclosing the claimed parser. ACP 27 (citing IBM 194).
That portion of IBM describes using a page definition so that “[i]nput print
lines are read in, optionally parsed into individual fields, and place[d] on the
page.” IBM 194. However, “page definition is an alternative to DDS for
formatting data on a page independent of the application program.” IBM 37.
Thus, Appellant argues that page definitions and DDS are distinct alternative
embodiments. Requester asserts that DDS scripts may be applied to the
parsed data through the application of an overlay as shown in Figure 116 of
IBM. Resp. Br. 5 (annotated Fig. 116). This, however, is not supported by
the reference. IBM describes using form definitions in conjunction with
page definitions to supply and place an overlay on the page. IBM 195, 214.
We have not been directed to persuasive evidence that DDS is ever applied
to data that has been parsed with a page definition. Thus, we do not sustain
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the Examiner’s rejection under 35 U.S.C. § 102 of claims 1-5, 17, 20-26, 38-
41, 54, 56, 59, 61, 62, 68, 70, 71, 76-78, and 80-82 as anticipated by IBM.
D. Does Interleaf Disclose Transforming, Reading, and Parsing a Print
Data Stream?
Appellant asserts that the Examiner erred in concluding that Interleaf
anticipates the claims of the ’789 Patent. Specifically, Appellant argues that
Interleaf does not disclose transforming, reading, or parsing a print data
stream as required by independent claims 1, 22, 38, 54, and 68. App. Br. 24.
Interleaf is “[a] commercial structured document processing system”
for “the design, implementation, and delivery of active documents.”
Interleaf 75. Interleaf’s documents include component objects that contain
content and document formatting. Id. 76. One of Interleaf’s purported
advantages is its ability to use external publishing functionality including
document printing. Id. 82. In Interleaf, “active objects within the document
file stream become activated … when the document is opened
programmatically or by the user for viewing, editing, or printing.” Id. 84.
Appellant argues that Interleaf does not disclose a print data stream.
App. Br. 24. The Examiner construed “digital print data stream” to include
on “a ‘digital’ ‘data stream’ where the stream may be sourced from a
‘document’ and may or may not be output to a ‘printer.’” ACP 148. The
Specification does not define this term and we see no error in the Examiner’s
reasonable construction. Pursuant to this construction, the Examiner found
that Interleaf’s “document file stream” discloses the claimed “digital print
data stream.” Id. The Examiner found that Interleaf’s document file stream,
which is sourced from an Interleaf document, may be printed and that it is
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parsed for active objects. Id. 51. Dr. David Birnbaum testified on behalf of
Appellant that Interleaf’s file stream is merely what is read in when an
Interleaf document is opened and that while Interleaf conceivably may
create a print data stream no such print data stream is discussed in the
reference. Birnbaum Decl. ¶¶ 100-03. According to Dr. Birnbarum, a print
data stream would not exist until after a user clicks a print icon. Id. ¶ 102.
We are not persuaded by Dr. Birnbaum’s testimony because it fails to
provide convincing evidence that an Interleaf document file stream becomes
a distinct print data stream once a user presses a print button. We agree with
the Examiner’s reasonable findings and we concur that Interleaf’s
“document file stream” falls within the broadest reasonable interpretation of
the claimed “print data stream.”
The remaining question is whether Interleaf discloses reading,
parsing, and transforming a print data stream. As to the transforming step,
the Examiner points to Interleaf’s discussion of changing a document’s style
in the middle of a text stream, changing objects in the stream, and
programmatically applying different graphics properties such as changes to
color, size, or position of an object. ACP 52 (citing Interleaf 76, 81-84).
Appellant argues that these disclosures refer to editing or creating a
document and not printing the document. App. Br. 25. We disagree with
Appellant. As noted above, the print data stream as broadly construed
includes Interleaf’s document file stream. Thus, we agree with the
Examiner’s finding that Interleaf discloses transforming a print data stream.
As to the “reading in” step, the Examiner found this to be disclosed by
Interleaf’s discussion of opening a document for viewing, editing, or
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printing. ACP 51-52. Appellant argues that this is akin to opening a
document in Word and is completely unrelated to the claimed reading in of a
print data stream. App. Br. 26. Here again, Appellant’s view of a print data
stream is too narrow. We agree with the Examiner’s finding that Interleaf’s
discussion of opening a document discloses the claimed “reading in” of a
print data stream.
Finally, as to the parsing step the Examiner looks to Interleaf’s
discussion of a Lisp interpreter that analyzes the data stream by means of a
parser. ACP 52. Appellant argues that the Lisp interpreter only interprets
Lisp scripts and “it is incapable of interpreting print data streams.” App. Br.
27; Birnbaum Decl. ¶ 105. The Examiner, however, points out that Interleaf
discloses binding the Lisp code and the underlying document data into a
single document file stream. ACP 52; see also Interleaf 77 (“Lisp scripts
can be attached to any Interleaf object, stored within or external to a
document.”). As such, the Lisp interpreter operates on the Interleaf
document file stream. Thus, we are persuaded that Interleaf discloses
parsing of a print data stream. Therefore, we a sustain the Examiner’s
rejection under 35 U.S.C. § 102 of claims 1, 2, 4-7, 11, 12, 22, 23, 25-28,
32-33, 38-39, 41-44, 48, and 49 as anticipated by Interleaf.
E. Do the Cited References Teach a Data Stream “Formatted in Page
Description Language”?
Claim 76 depends from claim 1 and further limits the input data
stream by requiring it to be “formatted in a page description language.” The
Examiner found this limitation to be taught by IBM’s disclosure of
Postscript files and also by the disclosure of Interleaf frames found in both
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Interleaf and Interleaf Patent. ACP 31, 64. Appellant disagrees with both
findings. App. Br. 20, 27.
As to the IBM reference, Appellant argues that the Examiner did not
examine this limitation in the broader context of the claim. App. Br. 20. In
particular, claim 1 requires that an input data stream be assigned a script.
The Examiner’s rejection would apply DDS to the Postscript file, however,
“a Postscript file would already be formatted and not require or allow a DDS
file to format it.” Id. (citing IBM 25). IBM states that “document data
streams, such as Postscript … can be converted to AFP and then stored or
printed from the AS/400.” IBM 8. In addition, IBM teaches that an AFP
file can contain DDS keywords and that AFP functions include printing
graphical information from DDS. Resp. Br. 9; IBM 26. Thus, Requester
argues that IBM teaches applying DDS to a Postscript file. Resp. Br. 9. We
agree with Requester and find that the Examiner did not err in finding that
one of ordinary skill in the art would read the IBM reference to teach the
limitations of claim 76.
As to Interleaf and Interleaf Patent, Appellant argues that the
Examiner erred because “Interleaf frames are merely the manner in which
objects are depicted on a screen; they have nothing to do with printing, and
certainly do not constitute an input print data stream.” App. Br. 27. As
previously discussed, print data streams encompass the Interleaf’s document
file stream. Supra pp. 11-12. Frames are a component of that document file
stream. Interleaf 76. Thus, the Examiner did not err in finding the Interleaf
references to teach the limitations of claim 76.
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F. Do the Cited References Teach a “Parser [That] Is a Syntax
Analyzer”?
Claim 77 depends from claim 76 and further requires the parser to be
a syntax analyzer. The Examiner found this limitation to be taught by
IBM’s disclosure of assigning a DDS script to an object and by the Lisp
interpreter disclosed in the Interleaf references. ACP 31, 64. As to the IBM
reference, Appellant argues that DDS is not applied to a Postscript file.
App. Br. 20. We disagree for reasons discussed above. Supra p. 12. As to
the Interleaf references, the Appellant argues that the Lisp interpreter
analyzes the Lisp scripts and not the input data stream. We disagree for
reasons previously discussed. Supra p. 13. Thus, the Examiner did not err
in finding that IBM and the Interleaf references teach the limitations of
claim 77.
G. Do the Cited References Teach a Printer?
Claims 20, 59, and 64 each are directed to a printer. These claims
stand rejected over IBM’s teachings as combined with the teachings of
Interleaf and/or Interleaf Patent. Appellant argues that neither IBM nor the
Interleaf references teach a printer. App. Br. 21-22, 28. Appellant contends
that the AS/400 described in the IBM reference is not a printer; instead it
merely communicates with printers. App. Br. 21. Further, Appellant
maintains that being attached to a printer via a cable or network does not
make as the AS/400 a printer nor does it include a printer. Id. 22. Requester
argues that the claims do not require a single chassis and thus, IBM’s
disclosure of an AS/400 connected to a printer teaches the recited printers.
Resp. Br. 9 (citing RAN 11). Appellant responds that even under the
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broadest reasonable interpretation a printer must be a single device and not a
distributed system. Rebuttal Br. 17; see also App. Br. 22 n. 14. We
disagree. Appellant has not directed us to persuasive evidence in the
Specification that would limit the recited printer to a single chassis. Thus,
we see no error in the Examiner’s finding that IBM teaches a printer.
Claim 59, which is directed to a printer, stands rejected as obvious
over the Interleaf references. The Examiner found that “the Interleaf patent
is directed towards ‘a Document Processing System for creating, editing,
printing and presenting active electronic documents.’ Thus, the ‘system’ of
the Interleaf patent is for ‘printing,’ and can therefore be considered a
‘printer.’” RAN 10. Appellant argues that this is insufficient to render
obvious the claimed printer. App. Br. 28. We agree. The Examiner has not
provided sufficient evidence that one of ordinary skill in the art would learn
the claimed printer from the Interleaf references. Those references merely
state that Interleaf is “for printing” without any disclosure as to a printer.
Thus, the Examiner erred in rejecting claim 59 under 35 U.S.C. § 103 over
Interleaf and Interleaf Patent.
H. Did The Examiner Err in Combining IBM, Interleaf, and Interleaf
Patent?
Appellant argues that the Examiner erred in combining the teachings
of IBM, Interleaf, and Interleaf Patent. App. Br. 29-34. Appellant asserts
that “the Examiner defined the field of the invention broadly, inconsistently,
and artificially, and then tried to shoehorn the prior art into it.” Id. 31.
According to Appellant the Examiner found that the ’789 Patent’s field of
art to be “object-oriented document publishing systems with scripting
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functionality.” Id. (citing ACP 33). This, however, misstates the
Examiner’s finding. The Examiner was discussing the analogous nature of
IBM and the Interleaf references. ACP 33, 69. According to the Examiner,
it would have been obvious to modify IBM with the teaching of Interleaf as
related to assigning a script to be executed. Id. 33, 69-70. The Examiner
further found that “Interleaf suggests the combination because it is explicitly
designed to leverage outside printing and publishing functionality.” Id. 34.
Appellant also contends that the Examiner was incorrect in finding
that “documents produced by IBM are the same type of documents that the
Interleaf Patent’s EDPS processes and prints.” App. Br. 32 (citing ACP 70).
Appellant states, without citation to the reference, that Interleaf’s active
documents must be converted to inactive documents before they may be
printed. Id. 32. Requester argues that this is contrary to the record because
in Interleaf, “active objects within the document file stream become
activated … when the document is opened programmatically or by the user
for viewing, editing, or printing.” Resp. Br. 12 (quoting Interleaf 84).
The Examiner found that the combination of IBM’s printing process
and Interleaf Patent’s print-scripting was a combination of well-known
techniques to yield predictable results. ACP 69; see also ACP 34-35
(making same argument in regards to the combination of Interleaf and IBM).
Our reviewing court has reaffirmed that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Leapfrog Enter., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR Int'l v.
Teleflex Inc., 550 U.S. 398, 416 (2007)). We find the Examiner’s reasoning
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to be rational and well supported by the factual record. Accordingly, we
find Appellant’s arguments unpersuasive that the cited references have been
improperly combined by the Examiner.
I. Does the ’705 Patent Teach Receiving Email Via a Script ?
Claims 55, 63, 67, and 75 each recite a device adapted or programmed
“to send and receive e-mails in the cases defined in the script.” The
Examiner cites the ’705 Patent as teaching receiving email messages via a
script. RAN 32. Appellant argues that this limitation is not taught by the
’705 reference. App. Br. 40-41. Requester asserts that the ’705 Patent
shows that the disputed limitation was known in the art. Resp. Br. 14. We
agree with Appellant. The ’705 Patent does not teach receiving an email via
script; instead the cited portions of the ’705 Patent describe a user emailing a
document to a server and the server running scripts to parse the message and
store the contents of the email to media. Id. 3:17-22, 40-50. Thus, this
reference does not teach “receiv[ing] e-mails in the cases defined in the
script” as recited by claims 55, 63, 67, and 75. Therefore, we do not sustain
the Examiner’s rejections of claims 55, 63, 67, and 75 under 35 U.S.C.
§ 103.
J. Is There a Nexus Between the ’789 Patent and Appellant’s Evidence
of Commercial Success?
Appellant argues that its evidence of commercial success outweighs
any prima facie case of obviousness. App. Br. 35-36. The Examiner
disagreed and found there to be no nexus between Appellant’s evidence and
the ’789 Patent. RAN 20.
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Reexamination Control 95/001,398
Patent 6,684,789 B2

19
Appellant provides declarations from its CEO, Roland Widuch, and
Director of Business Development, Christoph Picht. Widuch testifies that
IBM took an exclusive license to Appellant’s JScribe® software. Widuch
Decl. ¶ 7. The term “JScribe” is listed on the face of the ’789 Patent. ’789
Patent 5:56-59 (“systems operating by the method according to the invention
are also designated JScribe (registered trademark) systems and, accordingly,
the method according to the invention is also designated JScribe.”); see also
6:38-41, 6:66-67, 7:57-59, 8:26-34. Picht testifies that JScribe® embodies
at least claims 1-15 of the ’789 Patent. Picht Decl. ¶¶ 11, 15. Widuch
further testifies that IBM provided a sublicense to Konica-Minolta Business
Solutions, Inc. Widuch Decl. ¶ 8. In addition, Widuch states that Requester
took a sublicense and agreed to pay IBM a lump sum and a running royalty
for each device that includes JScribe® technology. Id. ¶ 10. IBM and
Requester issued a joint press release announcing the launch of printers and
multifunction products using JScribe®. Id. ¶ 11. Requester issued a press
release and a white paper discussing its use of JScribe®. Id.¶¶ 15-16.
Requester argues that Appellant’s evidence lacks the required nexus.
Resp. Br. 13. Requester asserts that the licenses in question do not
specifically mention the ’789 Patent. Id. In addition, the licenses were for
the source code of JScribe® and source code provides a value and a
commercial benefit in itself. Id. Further, Requester avers that the Picht
declaration is conclusory. Id. We agree with Requester. Picht’s declaration
is conclusory in that it merely repeats the limitations of the claim without
providing further analysis as to JScribe’s® functionality. In addition, none
of the licenses relied upon by Appellant are of record and the testimony
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Reexamination Control 95/001,398
Patent 6,684,789 B2

20
provided regarding these licenses fails to state that the ’789 Patent is
specifically mentioned in any of the agreements. Thus, we find that the
Examiner did not err in finding there to be a lack of nexus between
Appellant’s evidence of commercial success and the claims of the ’789
Patent.
III. CONCLUSION
To summarize, our decision is as follows.
 The Examiner’s rejection of claims 59-64, 66, and 67 under 35 U.S.C.
§ 112, second paragraph is reversed.
 The Examiner’s rejection of claims 64, 66, 67, 72, 74, and 75 under
35 U.S.C. § 314(a) is affirmed.
 The Examiner’s rejection of claims 1-5, 17, 20-26, 38-41, 54, 56, 59,
61-62, 68, 70, 71, 76-78, and 80-82 under 35 U.S.C. § 102(b) as
anticipated by IBM is reversed.
 The Examiner’s rejection of claims 1-7, 11-12, 17, 20-28, 32, 33, 38-
44, 48, 49, 54, 56, 59, 61, 62, 68, 70, 71, and 76-82 under 35 U.S.C.
§ 103(a) as obvious over IBM and Interleaf is affirmed.
 The Examiner’s rejection of claims 1-14, 16-18, 20-35, 37-51, 53, 54,
56, 57, 59-62, 64, 66, 68-72, 74, and 76-82 under 35 U.S.C. § 103(a)
as obvious over IBM, Interleaf, and Interleaf Patent is affirmed.
 The Examiner’s rejection of claims 15, 19, 36, and 52 under 35 U.S.C.
§ 103(a) as obvious over IBM, Interleaf, Interleaf Patent, and
Lieberman is affirmed.
Appeal 2013-009045
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Patent 6,684,789 B2

21
 The Examiner’s rejection of claims 1, 2, 4-7, 11, 12, 22-23, 25-28, 32,
33, 38, 39, 41-44, 48, and 49 under 35 U.S.C. § 102(b) as anticipated
by Interleaf is affirmed.
 The Examiner’s rejection of claims 1, 2, 4-14, 16-18, 22, 23, 25-35,
37-39, 41-51, 53, 54, 57, 61, 68, 70, and 76-82 under 35 U.S.C.
§ 103(a) as obvious over Interleaf and Interleaf Patent is affirmed.
 The Examiner’s rejection of claim 59 under 35 U.S.C. § 103(a) as
obvious over Interleaf and Interleaf Patent is reversed.
 The Examiner’s rejection of claims 15, 19, 36, 52, and 58 under 35
U.S.C. § 103(a) as obvious over Interleaf, Interleaf Patent, and
Lieberman is affirmed.
 The Examiner’s rejection of claims 1-54, 56-60, 62, 64, 66, 68-71, 76,
77, and 80-82 under 35 U.S.C. § 103(a) as obvious over Interleaf
Patent and IBM is affirmed.
 The Examiner’s rejection of claim 55 under 35 U.S.C. § 103(a) as
obvious over Interleaf, Interleaf Patent, and ’705 Patent is reversed.
 The Examiner’s rejection of claims 55 and 75 under 35 U.S.C.
§ 103(a) as obvious over IBM, Interleaf, Interleaf Patent, and ’705
Patent is reversed.
 The Examiner’s rejection of claims 55, 63, and 67 under 35 U.S.C.
§ 103(a) as obvious over Interleaf Patent, IBM, and ’705 Patent is
reversed.
Appeal 2013-009045
Reexamination Control 95/001,398
Patent 6,684,789 B2

22
IV. DECISION
The Examiner’s decision rejecting claims 1-54, 56-62, 64, 66-72, and
74-82 is affirmed. The Examiner’s decision rejecting claims 55 and 63 is
reversed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART

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