Ex Parte Giannetti et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10842557 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FABIO GIANNETI and ROGER BRIAN GIMSON
___________

Appeal 2009-004229
Application 10/842,557
Technology Center 2100
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Decided: April 28, 2010
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 34-49. Claims 1-33 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
INVENTION
The invention on appeal relates generally to rendering a document
having a variable copy hole. (Spec. 1).

ILLUSTRATIVE CLAIM
34. A computerized method of generating an output document for
rasterizing into a bitmap, comprising the steps of:
designating, in a source document, a copy hole for accommodation of
variable content;
rendering variable content intended to be located in the copy hole;
establishing, in accordance with predefined rules, whether the
rendered variable content fits in the copy hole; and
if not, adjusting a characteristic of the variable content and re-
rendering the adjusted content.

PRIOR ART
The Examiner relies upon the following references as evidence:
Mohr US 6,826,727 B1 Nov. 30, 2004
Warmus US 6,844,940 B2 Jan. 18, 2005

THE REJECTIONS
1. The Examiner rejected claims 34, 35, 37, 38, 42, 43, 45, and 46
under 35 U.S.C. § 102(e) as anticipated by Warmus.
2. The Examiner rejected claims 36 and 44 under 35 U.S.C.
§103(a) as unpatentable over Warmus.
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3. The Examiner rejected claims 39-41 and 47-49 under
35 U.S.C. §103(a) as unpatentable over Warmus and Mohr.

GROUPING OF CLAIMS
Based on Appellants’ arguments in the Briefs, we will decide the
appeal on the basis of claims 34, 35, and 39.1 See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

Issue 1: Under § 102, did the Examiner err by finding that Warmus
discloses or describes “establishing, in accordance with predefined rules,
whether the rendered variable content fits the copy hole?” (Claim 34).

Issue 2: Under § 102, did the Examiner err by finding that Warmus
discloses or describes that the “adjusted characteristic” of the variable
content “is selected from a group comprising: font size, margin size, line
spacing, text line height, text block spacing, [and] text line width?” (Claim
35).

1 This decision considers only those arguments actually made. Arguments
that Appellants could have made but chose not to make in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Issue 3: Under § 103, did the Examiner err by finding that the cited
references would have taught or suggested “specifying a plurality of margins
for the content within the copy hole; in the event that the content does not fit
in accordance with a predefined rule using the first-specified margins, using
a further specified margin?” (Claim 39).

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted).

Anticipation under § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(citations omitted).
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Obviousness under §103
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by the record:

Appellants’ Specification
1. Appellants’ Specification describes copy holes as “windows into
which text is placed.” (Spec. 1, ll. 16-17).

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The Warmus Reference
2. Warmus discloses that the user is prompted to enter an indication of
whether the image object is to be displayed in one of several display
formats. If the image is to be displayed in other than the original size
thereof, a block 162 sets a subname defined for the image to “fit,”
indicating that the image is to scaled to fit the box. (Col. 12, ll. 8-13).

3. Warmus discloses inserting variable text into a text box. Once all of
the variable text data have been inserted into the text box, a block 286
recomposes all text in the text box so that the text obtains a neat
finished appearance. The recomposition process is responsive to the
user commands as applied to the template file page, such as left, right
center, or full justification, hyphenation and the like. (Col. 17, ll.
33-41).

The Mohr Reference
4. Mohr discloses that each shape has margin attributes including: a left
margin attribute 227, a top margin attribute 228, a right margin
attribute 229, and a bottom margin attribute 230. These define the
minimum distance between the boundary of the shape and the allowed
position for any included child shape or text elements whose positions
are not fixed relative to their parent shape. (Col. 17, ll. 56-62; Fig. 9).
Each shape element has four bumper attributes: a left bumper attribute
232, a top bumper attribute 233, a right bumper attribute 234, and a
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bottom bumper attribute 235. These define an external margin around
the shape element upon which other shapes are often not allowed to
overlap. (Col. 17, ll. 63-67; Fig. 9).

ANALYSIS
ISSUE 1
We decide the question of whether the Examiner erred in finding that
Warmus discloses or describes “establishing, in accordance with predefined
rules, whether the rendered variable content fits the copy hole.”
At the outset, we broadly but reasonably construe the claimed “copy
hole” in a manner consistent with the plain description set forth in the
background section of Appellants’ Specification. More specifically, the
Specification broadly describes a copy hole as a window “into which text is
placed.” (FF 1).
We further note, with regards to the “establishing” step of claim 34
that the language of the claim does not substantially limit how the
“establishing” takes place (i.e., “predefined rules” are not defined in the
claim) or, what entity (including a user) performs the establishing step.
Further, although the preamble of claim 34 recites a computerized method, a
computer is not positively recited in the body of the claim. Cf. When
limitations in the body of the claim rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of
the claimed invention. See Electro Sci. Indus. v. Dynamic Details, Inc., 307
F.3d 1343, 1348 (Fed. Cir. 2002); Rapoport v. Dement, 254 F.3d 1053, 1059
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(Fed. Cir. 2001); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1306 (Fed. Cir. 1999). In light of the above construction, we find that the
weight of the evidence before us supports the Examiner’s position.
Appellants argue that the “box” referred to by Warmus is not a copy
hole, but instead is an area defined by the user. (App. Br. 6). Thus,
according to Appellants, Warmus merely indicates that the user can choose
to manually change the image size. We disagree. As noted above,
Appellants have broadly described a “copy hole” as a “window” in which
text is placed. (FF 1). We further find that Warmus discloses that the image
is scaled to fit the box. (FF 2). It is our view that the broad language of
claim 34 does not preclude a box which is sized by the user as disclosed in
Warmus.
Appellants further argue that Warmus does not teach establishing
whether variable content fits the hole, because the box is set to be the size of
the content. (App. Br. 6). We do not find this argument persuasive because,
as noted above, the broad language of claim 34 does not limit who or what
performs the establishing step. Thus, Warmus’ disclosure that the user
changes the size of the box and the image is scaled to fit within the box (FF
2) is not precluded by the breadth of the instant claim language.
Based on the record before us, we find the Examiner did not err in
rejecting claim 34 as anticipated by Warmus. Accordingly, we affirm the
Examiner’s rejection of representative claim 34. Claim 42 falls therewith.2

2 Appellants appear to separately argue claims 36-38, 40, 41, 44-46,
48, and 49. (App. Br. 7-10). While Appellants recite the language of several
exemplary dependent claims (Id.), we note that a statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii).
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ISSUE 2
We decide the question whether the Examiner erred by finding that
Warmus discloses or describes that the “adjusted characteristic” of the
variable content “is selected from a group comprising: font size, margin size,
line spacing, text line height, text block spacing, [and] text line width,” as
recited in representative claim 35.
Appellants argue that although Warmus mentions variable content, it
is not directed to the problem of variable content of changing physical
dimensions. (App. Br. 7). Appellants further argue that the attributes of
justification and hyphenation are not attributes to be adjusted to fit the
content of the copy hole. (Reply Br. 3). We disagree.
As noted above, we find that once the variable text data is inserted
into the text box, a block 286 recomposes (adjusts) all text in the text box so
that the text obtains a neat finished appearance. (FF 3). Thus, we find
Warmus at least adjusts a text line width characteristic of the variable
content (text).
Based on the record before us, we find the Examiner did not err in
rejecting representative claim 35. Accordingly, we affirm the Examiner’s
§102 rejection of claim 35, and claim 43 which falls therewith.

ISSUE 3
We decide the question of whether the Examiner erred in finding that
the cited references would have taught or suggested “specifying a plurality
of margins for the content within the copy hole; in the event that the content
does not fit in accordance with a predefined rule using the first-specified
margins, using a further specified margin,” as recited in claim 39.
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Appellants contend that Mohr does not teach making a decision about
whether content fits, and adjusting the margins if there is no fit. (App. Br.
9). Appellants further contend that while Mohr discloses that margins exist,
Mohr does not teach a person of skill in the art to do anything with those
margins. (Id.). According to Appellants, the Examiner has not established a
prima facie case of obviousness. (Reply Br. 4).
However, we note that the Examiner has proffered a set of findings
regarding how the combination of references teaches or suggests the
limitations of claim 39. (Ans. 13-14). We agree with the Examiner’s
position.
Namely, we find that Mohr teaches two sets of boundaries (margins
and bumpers) that surround a shape, which in our view, suggests two sets of
margins. (FF 4). We find Mohr’s teaching when combined with the
teachings of Warmus (adjusting the content to fit a box) suggests specifying
a plurality of margins, moving the boundaries of a margin(s) in order to
accommodate the content in the copy hole.
Based on the record before us, we find the Examiner did not err in
rejecting representative claim 39. Accordingly, we affirm the Examiner’s
§ 103 rejection of claim 39, and claim 47 which falls therewith.

CONCLUSIONS
Based on the findings of facts and analysis above:
The Examiner did not err by finding that Warmus discloses or
describes “establishing, in accordance with predefined rules, whether the
rendered variable content fits the copy hole.” (Claim 34).
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The Examiner did not err by finding that Warmus discloses or
describes that the “adjusted characteristic” of the variable content “is
selected from a group comprising: font size, margin size, line spacing, text
line height, text block spacing, [and] text line width.” (Claim 35).
The Examiner did not err by finding that the cited references teaches
or suggests “specifying a plurality of margins for the content within the copy
hole; in the event that the content does not fit in accordance with a
predefined rule using the first-specified margins, using a further specified
margin.” (Claim 39).

ORDER
We affirm the Examiner’s rejection of claims 34, 35, 37, 38, 42, 43,
45, and 46 under 35 U.S.C. § 102(e).
We affirm the Examiner’s rejections of claims 36, 39-41, 44, and 47-
49 under 35 U.S.C. §103(a).
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).

AFFIRMED

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