11863732 (P.T.A.B. Sep. 14, 2017)

Ex Parte Freiman et al

Patent Trial and Appeal BoardSep 14, 2017

11863732 (P.T.A.B. Sep. 14, 2017)

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. 11/863,732 09/28/2007 Daniel J. Freiman 10379-24US 2215 570 7590 09/18/2017 PANITCH SCHWARZE BELISARIO & NADEL LLP ONE COMMERCE SQUARE 2005 MARKET STREET, SUITE 2200 PHILADELPHIA, PA 19103 EXAMINER FABER, DAVID ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 09/18/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): u sptomail @ panitchlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL J. FREIMAN, JEREMY C. HERR, MARK A. WEISS, and CHRISTOPHER M. FREY Appeal 2015-004561 Application 11/863,732 Technology Center 2100 Before JOSEPH L. DIXON, GREGG I. ANDERSON, and GARTH D. BAER, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing under 37 C.F.R. § 41.52 of our Decision mailed June 9, 2017 (“Decision,” or “Dec.”), in which we affirmed the Examiner’s decision rejecting all pending claims (1—7 and 15—21). Appellants timely filed the Request for Rehearing (“Request” or “Req. Reh’g”) on July 10, 2017. ANALYSIS We are not persuaded that we misapprehended or overlooked any argument made by Appellants. Each of Appellants’ arguments is addressed below. Appeal 2015-004561 Application 11/863,732 1.1 2“Herr explicitly discloses that not all production specifications are used to modify the PDL image file.” Req. Reh’g 2—5. The Decision considered and rejected this argument. The relevant portion of the Decision is reproduced below: At the hearing, Appellants argued that production data for printing, as disclosed in Herr, does not end up in a content file. See generally Tr. 5:13—10:8. Appellants, through Mr. Weiss, contended that “[y]ou really don’t want that [production data or bindery data] in your content file because if you started to put your bindery marks in your content file they could accidentally get printed and sometimes you actually even see it.” Id. at 6:17—19. Dec. 6 (alteration in original). Appellants cite to disclosures from Herr in support of this argument. Req. Reh’g 4. We agreed with the Examiner (Final Action 9—10) that Herr discloses “bindery data is a type of production specification, which also ties directly to the disclosure of Herr’s step 60.” Dec. 7 (citing Herr, col. 10, 11. 1—3); see also Herr, col. 8,11. 10-61 (“One type of production specification is a bindery specification . . . .”). As we found, Herr discloses “production specifications may be electronically appended to the image display of the still image proxy.” Herr, col. 8,11. 10-14. Appellants do not show how we overlooked or misapprehended this argument. That Appellants disagree with our Decision is not a proper basis for rehearing. 2. “Herr explicitly discloses how bindery data is used, and that use is not for modifying the PDL image file.” Req. Reh’g 5—6. 1 Denominated as argument “2.” in the Request. 2 Appeal 2015-004561 Application 11/863,732 The Request quotes from Herr at page 5 including that “FIG. 18 shows one example of bindery data (bindery production specifications) being added to a still image proxy.” Herr, col. 10,11. 1—9. We are not persuaded that the Herr’s disclosure that “actual production data can include appropriate instructions to add the bindery data to the print job” (Herr, col. 10,11. 7—9) shows we misunderstood Appellants’ argument. Appellants do not show how we overlooked or misapprehended this argument. That Appellants disagree with our Decision is not a proper basis for rehearing. 3. “There is no source code in Herr that uses the bindery data to revise or rebuild the PDL image file.” Req. Reh’g 6. This argument goes beyond the burden on the Examiner to show that Herr discloses the revise or rebuild limitation. As discussed above, the Decision found that other parts of Herr disclose the limitation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (Court looks at the reference as a whole). Appellants do not show how we overlooked or misapprehended this argument. That Appellants disagree with our Decision is not a proper basis for rehearing. 5.2 “Appellant’s arguments are fully supported by intrinsic evidence.” Req. Reh’g 7. Appellants “traverse” the Decision’s determination that Appellants’ arguments improperly incorporated limitations from the specification of 2 Appellants’ argument no. 4 was a “Conclusion” summarizing arguments 1— 3. We need not respond to the Conclusion having already addressed arguments 1—3. 3 Appeal 2015-004561 Application 11/863,732 their application into the claim. Id. The argument made, which Mr. Weiss supported at the hearing, is “that bindery data does not end up in a content file (i.e., the modified PDL image).” Id. As the Examiner and the Decision found, the arguments are not supported by the claim language relating to the revise or rebuild limitation. As such, the arguments are an attempt to make the claims something they are not. Appellants do not show how we overlooked or misapprehended this argument. That Appellants disagree with our Decision is not a proper basis for rehearing. 6. “Appellant’s reliance on a text portion of Herr to support the argument that Herr does not disclose a claimed feature is not an improper incorporation of limitations from a specification into the claims.” Req. Reh’g 7—8. We disagree. Appellants argument amounts to an improper incorporation of limitations from the Specification into the claims. Appellants do not show how we overlooked or misapprehended this argument. That Appellants disagree with our Decision is not a proper basis for rehearing. DECISION We have granted Appellants’ Request to the extent that we have reconsidered our Decision affirming the Examiner’s decision rejecting all pending claims (1—7 and 15—21). We maintain our Decision as mailed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED 4