Ex Parte Boyes et al

Patent Trial and Appeal Board

Oct 31, 2013

11229343 (P.T.A.B. Oct. 31, 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.
11/229,343 09/16/2005 J. Wesley Boyes JR. BLD9-2005-0032-US1 8730
50441 7590 11/01/2013
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
DICKERSON, CHAD S
ART UNIT PAPER NUMBER
2672
MAIL DATE DELIVERY MODE
11/01/2013 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
____________

Ex parte J. WESLEY BOYES JR., ALLAN A. HREN, ELKE M. JONES,
KENT S. NORGREN, BRIAN C. PENDLETON,
KENNETH S. SHOULDICE, LARRY D. TEKLITS, RONALD EARL
VAN BUSKIRK II, and ROSE E. VISOSKI
____________

Appeal 2011-012725
Application 11/229,343
Technology Center 2600
____________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims directed to
a method, system, and computer program controlling a print engine for
printing N-UP print jobs. The Patent Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify InfoPrint Solutions Company LLC as the Real Party in
Interest (App. Br. 3).
Appeal 2011-012725
Application 11/229,343

2
STATEMENT OF THE CASE
The Specification discloses “methods and systems for N-UP print
imaging dynamically controlled by a printer so as to permit dynamic
changes in printing parameters during printing of a print job . . . independent
of the host systems that supply print jobs.” (Spec. 1, ll. 5-9.)
Claims 1-26, 28, and 30-35 are on appeal, and can be found in the
Claims Appendix (App. Br. 15-26). Claim 1 is illustrative of the claims on
appeal, and reads as follows:
1. A method operable within a printer controller associated
with at least one print engine for printing N-UP print jobs, the
method comprising:
receiving, by operation of the printer controller, a print
job;
rasterizing, by operation of the printer controller, the
received print job to generate a rasterized print job wherein the
rasterized print job comprises one or more logical pages;
initiating, by operation of the printer controller, printing
of the rasterized print job as an N-UP print job wherein the
initiated printing includes positioning the one or more logical
pages on physical sheet images according to an initial set of
printing parameters associated with the rasterized print job
wherein the set of printing parameters includes information
relating to positioning of the one or more logical pages on
physical sheet images;
changing, by operation of the printer controller, at least
one of the printing parameters associated with the rasterized
print job during printing of the rasterized print job wherein the
changed printing parameters include changes to the
information relating to positioning; and
continuing, by operation of the printer controller, to print
the rasterized print job wherein the continued printing includes
positioning unprinted logical pages on physical sheet images
according to the changed set of printing parameters.
Appeal 2011-012725
Application 11/229,343

3
The Examiner has rejected the claims as follows:2
I. claims 1, 2, 8-10, 15, 17, 18, 24-26, and 28 are unpatentable
under 35 U.S.C. § 103(a) over Zuber3 in view of Hisatake;4
II. claims 3, 14, and 19 are unpatentable under 35 U.S.C. § 103(a)
over Zuber and Hisatake in view of Grace;5
III. claims 4-7, 11-13, 16, 22, and 23 are unpatentable under 35
U.S.C. §103(a) over Zuber and Hisatake in view of Mori;6
IV. claims 30-35 are unpatentable under 35 U.S.C. § 103(a) over
Zuber in view of Pavlovic7 and Brindle.8

I-III. The Issue: Obviousness over Zuber and Hisatake
The Examiner takes the position that Zuber teaches all aspects of
claim 1 but “fails to specifically teach wherein the set of printing parameters
includes information relating to positioning of the one or more logical pages
on physical sheet images; and wherein the changed printing parameters
include changes to the information relating to the positioning.” (Ans. 7.)
The Examiner finds that “Hisatake ‘040 discloses wherein the set of printing
parameters includes information relating to positioning of the one or more
logical pages on physical sheet images. . . . [T]he Hisatake reference is able
to change the N-up amount of a job during printing, the paper size and the
number of copies.” (Id.) The Examiner concludes that:

2 The rejection of claims 17-25 under 35 U.S.C. § 101 is withdrawn (Ans. 4).
3 Peter A. Zuber, US 7,027,187 B1, issued Apr. 11, 2006.
4 Masayuki Hisatake, 5,669,040, issued Sep. 16, 1997.
5 Robert E. Grace et al., US 7,162,172 B2, issued Jan. 9, 2007.
6 Yasuo Mori et al., US 2002/0069228 A1, issued Jun. 6, 2002.
7 Dragana Pavlovic et al., 5,715,379, issued Feb. 3, 1998.
8 Edward E. Brindle et al., 5,493,635, issued Feb. 20, 1996.
Appeal 2011-012725
Application 11/229,343

4
[I]n view of Hisatake ‘040, it would have been obvious to one
of ordinary skill at the time the invention was made to have the
features of wherein the set of printing parameters include
information relating to positioning of the one or more logical
pages on physical sheet images; and wherein the changed
printing parameters include changes to the information relating
to the positioning, incorporated in the device of Zuber ‘187, in
order to alter job processing content such as the N-UP position
of documents during the printing process.
(Id. at 8.)
Has the Examiner provided sufficient factual findings and sound
reasons to support a determination that persons of ordinary skill in the art
would have been prompted to combine the teaching of the prior art to arrive
at the claimed invention?

Findings of Fact
FF 1. Zuber disclosed a graphical user interface (GUI) printer
controller that allows an operator to make adjustments in the output while
the print job is in progress (Zuber col. 4, ll. 6-28; Ans. 5, 55). The run time
calibration display window is shown in Fig. 47, and is reproduced below:
App
App

(Zub
(Zub

eal 2011-0
lication 11
er, Fig. 47
Within d
902 hav
several
control
included
correctio
individu
six para
correctio
er, col. 46
FF 2. Fi
12725
/229,343
; Ans. 6.)
isplay win
ing a brigh
color con
910, yello
within
ns” butto
al adjustm
meters hav
ns panel 9
, ll. 51-60.
gure 8 of H
Fig. 47 de
dow 900
tness cont
trols, nam
w' control
the corre
n 916. T
ents withi
ing the s
02 of the
)
isatake, d
5
picts the G
there is sh
rol 904, a
ely, cyan
912 and
ctions pan
he correct
n a specif
lide contr
display wi
epicted be
UI that p
own a co
contrast c
control
black con
el 902
ions pane
ied range
ols illustra
ndow 900
low, show

rovides:
rrections p
ontrol 906
908, mag
trol 914.
is a “com
l 902 en
to each o
ted within
.
s a job co
anel
and
enta
Also
mit
ables
f the
the
nsole:
App
App

(His
(His

eal 2011-0
lication 11
atake, Fig.
[T]he op
on the j
part with
informin
setup co
display
displaye
sheets o
100% eq
atake, col.
FF 3. F
To alter
reverse-d
ALTERA
the job o
terminat
FINISHE
contents
of any jo
12725
/229,343
8; Ans. 8.
erator sel
ob listing
a finger.
g the oper
ntents of
section U
d on wind
f an origin
ual magni
12, ll. 55-
urther in r
the job p
isplays a
TION ke
n the job
ion of th
D key U
of the job
bs contain
) Fig. 8 sh
ects one o
section U
Then, the
ator that t
the job a
2 (pop-up
ow L2 is
al docume
fication.”
64.)
eference to
rocessing
desired job
y U12a, th
setting an
e altering
21, whe
is comple
ing the jo
6
ows a GU
f the jobs
11 by pre
selected
he job is s
re display
window)
a job for
nt to an A
Figure 8,
content,
as descri
en makes
d display
operatio
reby the
ted. At thi
b being pr
I were:
in the job
ssing the
job is rev
elected, a
ed on a j
. In this e
copying “
4-size rec
Hisatake
the operat
bed above
necessary
section U
n, selects
alteration
s time, the
ocessed (i
list displ
correspon
erse-displa
nd the det
ob setting
xample, j
five times
ording she
provides:
or selects
, then sele
alteration
2 and afte
a SETT
of the
setup con
n FIGS. 7

ayed
ding
yed,
ailed
and
ob-2
two
et in
and
cts a
s for
r the
ING
setup
tents
and
Appeal 2011-012725
Application 11/229,343

7
8, Job 1 displayed on window Ll) can be changed. In this case,
the operator presses the parts in the job setting and display
section U2 for changing the magnification, paper size, etc.,
according to the change contents. To simplify control, the setup
contents of the job being processed may be inhibited from
being altered.
(Hisatake, col. 13, ll. 1-14 (emphasis added); Ans. 8.)
FF 4. The Specification provides that a “logical page” is a ripped
print job comprising one or more rasterized images (Spec. 2: ll. 11-12).
FF 5. According to the Specification “[m]ultiple logical pages may be
applied to opposing sides of the printable medium (often referred to as
duplex or two-sided printing) and/or multiple logical pages may be applied
to the same side of the printable medium (often referred to as N-UP
printing).” (Spec. 2: ll. 26-28.)

Principle of Law
“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted).

Analysis
The first three obviousness rejections (I.-III.), are premised, in whole
or in part, on the teachings of Zuber and Hisatake, so we will discuss them
together.
Appellants contend that:
The method [of claim 1] also includes changing at least one of
Appeal 2011-012725
Application 11/229,343

8
the position related printing parameters during printing of the
rasterized print job and thus printing the rasterized print job
with the changed parameter. Again, all of this takes place at the
printer controller and nothing in the prior art or the cited
references relates to changing the positions of already rasterized
logical pages of N-UP print jobs at the printer controller.
(App. Br. 9.) Appellants contend that “Zuber is not even related to N-UP
print processing. Rather, Zuber is related to the parallel processing of a print
job based on the number of copies of that print job to be printed.” (Id.
at 10.)
We are not persuaded. “[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). The
Examiner finds that “[t]he claim language does not limit itself to only a
plurality of logical pages, and this is why this reference is still relevant to the
rejection. In addition, it is well known that the “N” in N-UP can be 1 or
more pages per sheet.” (Ans. 54-55.) We agree with the Examiner’s
position that “one or more logical pages” as recited in claim 1 can include a
single page, specifically, when N equals one.
According to the Examiner, Zuber disclosed marking engines that
generates a RIPed image for distribution to the printers (Zuber, col. 3, 37-39;
Ans. 54). Changes to the rasterized image may be made during the printing
process and “the system may apply the changes to the unprinted pages of the
print job” (Ans. 55; FF 1). As acknowledged by the Examiner, the GUI
display provides individual adjustments for six parameters (FF 1), but “does
not disclose the feature of changing the positioning of logical pages, or
rasterized images, during the printing phase of the invention” (Ans. 55). The
Examiner finds, and Appellants do not dispute, that changes to the print job
Appeal 2011-012725
Application 11/229,343

9
disclosed in Zuber are changes directed toward post-rasterization activities
(Ans. 55; see also App. Br. 11).
According to Appellants “Hisatake is explicitly directed to processing
pre-rasterized print jobs, not the post rasterized logical pages of the
Appellant's claims.” (Id. at 11.)
We are not persuaded by Appellants contention that Hisatake is
limited to manipulating pre-rasterized print jobs. The Examiner finds that:
[T]he Hisatake reference manipulates the image data after
printing [commences] in two manners. The first manner alters
the image data in a “Stop and Alteration” manner. This is when
the user stops the job and then alters the contents. Also, the
system discloses the “Continuation and Alteration” manner that
alters image data during processing of the print data. Both
examples show that the alteration of the image data occur after
printing and the later example shows an instance of changing
the image data during the output processing of the image data.
(Ans. 57.) We agree with the Examiner’s position that Hisatake “deals with
bitmap data. It is well known in the art to have the terms raster graphics and
bitmap interchangeable.” (Ans. 56.) Each page description language has
proper code and “[t]he code data development section 21 converts the print
data described in code into bitmap image data” (Hisatake col. 8, l. 67 to col.
9, l. 2; Ans. 57; see also FF 4). Furthermore, “[t]he image data processing
section 17 may perform edge smoothing processing for the bit map image
data as required” (Hisatake col. 9, ll. 9-11; Ans. 57). We find that the
Examiner has provided adequate evidence and sound reasoning to conclude
that Hisatake teaches rasterized image processing at the printer controller
because the manipulations occur during the printing output (Ans. 57; FFs 2-
5.)
Appeal 2011-012725
Application 11/229,343

10
Appellants specifically direct our attention to two sections of Hisatake
(col. 7, ll. 32-42 and column 12, lines 11-20) as allegedly showing that
formatting the print job occurs outside the printer controller prior to printing
that print job and that this image server is not a printer controller (App.
Br. 10).
We have carefully reviewed the cited sections of Hisatake, however,
we find no evidence in these paragraphs to indicate that the job console does
not control the printer function of the composite machine as indicate by the
Examiner (Ans. 55-56). As acknowledged by the Examiner, the composite
machine of Hisatake has many functions such as “a copy function job, a
print function job, a scan and filing function job, FAX
transmission/reception function job, etc., for example, as input/output
processing functions” (Hisatake col. 5, ll. 54-57; Ans. 56). We agree with
the Examiner’s position that “[s]ince the composite machine prints data with
a printing device and is controlled by a control section, or controller, that
[sic] Examiner considers the image I/O server as a copier, or printing device
with a printer controller.” (Ans. 56.) Accordingly, we are not persuaded by
Appellants contention that Hisatake fails to provide a printer controller for
formatting print jobs.
Appellants err in attacking the references individually, as the rejection
is based on a combination of references. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). The references cannot be read in
isolation, but for what they teach in combination with the prior art as a
whole. See id. The Examiner found that Zuber disclosed a printer controller
that is able to print N-Up print jobs where N equals one, in other words the
reference prints single logical pages and allows for changes in the print
Appeal 2011-012725
Application 11/229,343

11
quality during the printing process (FF 1). As explained by the Examiner
Hisatake also manipulates image data after printing commences (Ans. 57).
“Thus, with the N-UP feature of the job able to be manipulated as a feature
of job modification during processing and processing bitmapped data al
within the Hisatake reference the Examiner believes that the Hisatake
reference performs the feature of the claims and cures any deficiencies of
Zuber.” (Id. at. 58.) We agree with the Examiner conclusion that Hisatake
provides the feature of positioning unprinted logical pages (FF 2) and that
the combination with Zuber provides all the limitations of claim 1.
In summary, the Examiner has provided an adequate basis for
concluding that a method meeting all the limitations of claim 1 would have
been obvious based on Zuber and Hisatake. Appellants acknowledged that
claim 1 is representative of the N-Up formatting (App. Br. 9), claims 2-26
and 28 have not been argued separately and are affirmed for the same
reasons as claim 1. 37 C.F.R. § 41.37 (c)(1)(vii).

IV. The Issue: Obviousness over Zuber, Pavlovic, and Brindle
With respect to claim 30, the Examiner takes the position that Zuber
teaches all aspects of the claim, but “fails to specifically teach formatting the
first and second rasterized print jobs to print as a single N-UP print job; and
printing the N-UP print job.” (Ans. 46.) According to the Examiner,
“Pavlovic discloses combining files of different PDL types into a single
document and formatting the files as a single output document.” (Id.) While
“Brindle specifically states combining different heterogeneous image
processing jobs into a single job for output.” (Id. at 47.)
Appeal 2011-012725
Application 11/229,343

12
With respect to claim 34, the Examiner takes the position that Zuber
teaches all aspects of the claim, but “fails to specifically teach to format the
logical pages of the first and second rasterized print jobs into an N-UP
rasterized print job, wherein the N-UP sheet formatter further communicates
formatted N-UP sheets to the print engine as rasterized images.” (Ans. 51-
53.) According to the Examiner “in the system of Pavlovic, the first file and
the second file received can be reformatted and combined to generate a
single n-up job to be output. Once these files are combined and
decomposed, the system can send these jobs as one single output document
for printing to the printing engine” (Id. at 52.) The Examiner finds that
“Brindle specifically states combining different heterogeneous image
processing jobs into a single job for output” (id. at 53.) The Examiner
concludes that
it would have been obvious to one of ordinary skill at the time
the invention was made to have the features of to format the
logical pages of the first and second rasterized print jobs into an
N-UP rasterized print job, incorporated in the device of Zuber
‘187, as modified by the features of Pavlovic ‘379, in order to
combine heterogeneous jobs into a single document for output.
(Id.).
Has the Examiner provided sufficient factual findings and sound
reasons to support a determination that persons of ordinary skill in the art
would have been prompted to combine the teaching of the prior art to arrive
at the claimed invention?

Findings of Fact
FF 6. Pavlovic disclosed:
The Xerox “DocuTech”® network printing system includes
Appeal 2011-012725
Application 11/229,343

13
provision for combining multiple files together as a unique print
job, even if the different files are of different PDL file types or
TIFF image files. Separate files can be submitted to the
network server, and then submitted by the network server to
printer hardware as a single output document.
(Pavlovic, col. 2, ll. 46-52; Ans. 46.)
FF 7. Pavlovic provides:
A buffer retains discrete page image output by either of the first
decomposer and second decomposer. A buffer manager directs
. . . records the location of each page image in the buffer, A
marker requests a set of page images desired to be printed to be
read from the buffer to printing hardware.
(Pavlovic, col. 2, l. 64 to col 3, l. 4.)
FF 8. Pavlovic provides that:
It may also be desirable to provide separate decomposers of the
same type, such as PostScript, but which output bitmaps at
different resolutions, such as 300 spots per inch and 600 spots
per inch.
After a file from spool 106 is decomposed or interpreted
by one of the appropriate decomposers in decomposition
facility 110, the output is digital data which can be used to
operate, for example, a xerographic or ink-jet marking 55
engine in printer hardware 114.
(Pavlovic, col. 4, ll. 47-55.)
FF 9. Brindle disclosed:
Whether the translated data is in the form of a PDL, such as
Interpress, or substantially in binary form ready for direct
application to an IOT, the intended effect of the accumulation
of translated data in the memory is to create a single data set
without any apparent “seams: between one section and the next.
That is, the translated data should be in a form for sending to
the printer 50 or IOT 98 in such a way that the disparate origins
and original data formats of all of the sections are invisible.
One possible technique for creating such a continuous or
Appeal 2011-012725
Application 11/229,343

14
“seamless” output is to load the translated data from the first
section to an origin point within the memory, and then, in the
next cycle, to load the translated data from the second job
starting at a point immediately following the end of the
translated data for the first section. . . . At any rate, it is
desirable that the final translated data should be in a form
sendable to output hardware as one piece.
(Brindle, col. 8, ll. 26-48; Ans. 47.)

Analysis
Appellants contented that Pavlovic “merley suggests that a single
print job may be generated from multiple files each encoded in a different
page description language . . . But, there is only one print job that is
rasterized in the teachings of Pavlovic as compared to the multiple print jobs
rasterized and then formatted into a single N-UP print job as the Appellant
claims.” (App. Br. 11.)
We are not persuaded by Appellants contention that Pavlovic does not
disclose formatting a single print job from multiple rasterized images. The
decomposers of Pavlovic output the image data into bitmaps (FF 8). The
discrete image data is stored separately in a buffer and is accessed using a
marker, and this stored bitmap information can be read directly from the
buffer to the printing hardware (FF 7). Pavlovic provides that
[a] practical advantage of the present system is that the system
enables simultaneous decomposition of files of different PDLs
or formats, and enables these different-format files to be
combined in a single job. That is, the different decomposition
facilities 110a-d can be made to operate simultaneously, and
further in a manner in which one particular decomposition
facility need not wait for another to be completed before
submitting its decomposed data to spool 116.
Appeal 2011-012725
Application 11/229,343

15
(Pavlovic, col. 7, ll. 1-9.) In other words, Pavlovic disclosed that the
combination of the different file formats only occurs after the simultaneous
decomposition of the files into bitmap data. (Id., see also FF 8.) We agree
with the Examiner’s conclusion that:
it would have been obvious to one of ordinary skill at the time
the invention was made to have the features of formatting the
first and second rasterized prints to print as a single N-UP print
job and printing the N-UP print job, incorporated in the device
of Zuber ‘187, in order to combine multiple files of different
PDL types.
(Ans. 46.)
Appellants contend that “Brindle discloses combining image data of
different print jobs into a single print job. However, Brindle’s image data is
not the same as the logical pages of the Appellant’s claims because they are
not rasterized.” (App. Br. 12.) Appellants contend that:
Brindle, like Hisatake, discloses a print job that may be
conjoined with one or more other print jobs to print as a single
print job prior to rasterization. But, Brindle does not disclose
rasterized print jobs that may be conjoined. Brindle merely
discloses preparing image data of multiple print jobs into a
single print job that may be subsequently rasterized and printed.
(App. Br. 12.)
We are not persuaded by Appellants contention that Brindle does not
disclose joining of rasterized images. The Examiner finds that
The first section [of Brindle] discloses translating PDL into a
bit stream, or bitmap, in order for the IOT (image output
terminal) to output the job. The second section of Brindle
discloses the same information regarding the IOT receiving the
image data in binary form, or a map of bits, that are output by
the printer device. Both of these sections disclose rasterized
jobs that are output by the IOT since the process of translating
Appeal 2011-012725
Application 11/229,343

16
PDL data into bits or a bitmap is considered rasterization.
(Ans. 58.) “[I]f the final translated data is in binary form, the bits can by
[sic] sent more or less intact to a raster output scanner or ink-jet printer.”
(Brindle, col. 8, ll. 56-58; Ans. 58) As explained by the Examiner, Brindle
loads translated data, that can be in binary form ready for direct application
to the IOT, into memory and then provides the loading of a second page into
memory as well (Ans. 58-59; FF 9). The two pages can be merged into a
single document before they reach the output hardware (Ans. 59; FF 9). The
Examiner concludes:
it would have been obvious to one of ordinary skill at the time
the invention was made to have the features of formatting the
first and second rasterized print jobs to print as a single N-UP
print job, incorporated in the device of Zuber [’]187, as
modified by the features of Pavlovic [’]379, in order to combine
heterogeneous jobs into a single document that is output.
(Ans. 47.)
In summary, the Examiner has provided an adequate basis for
concluding that a method meeting all the limitations of claims 30 and 34
would have been obvious based on the combination of Zuber, Pavlovic, and
Brindle. Claims 31-33 and 35 have not been argued separately and are
affirmed for the same reasons as claims 30 and 34. 37 C.F.R. § 41.37
(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 1, 2, 8-10, 15, 17, 18, 24-26, and 28
under 35 U.S.C. § 103(a) over Zuber in view of Hisatake.
We affirm the rejection of claims 3, 14, and 19 under 35 U.S.C.
Appeal 2011-012725
Application 11/229,343

17
§ 103(a) over Zuber and Hisatake in view of Grace.
We affirm the rejection of claims 4-7, 11-13, 16, 22, and 23 under
35 U.S.C. §103(a) over Zuber and Hisatake in view of Mori.
We affirm the rejection of claims 30-35 under 35 U.S.C. § 103(a) over
Zuber in view of Pavlovic and Brindle.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

lp