Ex Parte Hohensee et al

Patent Trial and Appeal Board

Jan 30, 2018

13845902 (P.T.A.B. Jan. 30, 2018)

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.
13/845,902 03/18/2013 Reinhard Heinrich Hohensee 9503P010 1097
76073 7590 01/30/2018
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
ZONG, HELEN
ART UNIT PAPER NUMBER
2673
MAIL DATE DELIVERY MODE
01/30/2018 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 REINHARD HEINRICH HOHENSEE
and
HARRY REESE LEWIS
____________________

Appeal 2017-007456
Application 13/845,9021
Technology Center 2600
____________________

Before JOSEPH L. DIXON, MARC S. HOFF, and JOHN D. HAMANN,
Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Ricoh Company, Ltd.
App. Br. 3.
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THE CLAIMED INVENTION
Appellants’ claimed invention “relates to the field of printing, and in
particular, to referencing secondary resources during print processing.”
Spec. ¶ 1. Claim 1 is illustrative of subject matter on appeal and is
reproduced below.
1. A method comprising:
receiving a print job data stream;
receiving a generic data object in the print job data
stream that is not native to a host page description language
(PDL); and
processing the non-native generic object by:
generating an object container in the host PDL;
enabling a non-native PDL to reference a non-native
external object; and
mapping the non-native PDL external object to a library
name familiar to the host PDL.

REJECTION ON APPEAL
The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hohensee (US 6,407,821 B1; issued
June 18, 2002) and Cairns (US 2009/0327873 A1; published Dec. 31, 2009).

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants. We disagree
with Appellants’ arguments and we incorporate herein and adopt as our own
the findings, conclusions, and reasons set forth by the Examiner in (1) the
April 13, 2015 Final Office Action (“Final Act.” 2–7), (2) the May 27, 2015
Advisory Action (“Adv. Act.” 2), and (3) the March 1, 2017 Examiner’s
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Answer (“Ans.” 2–9). We highlight and address, however, specific findings
and arguments below for emphasis.
(1) Reference a non-native external object
Appellants argue that the combination of Hohensee and Cairns fails to
teach or suggest “enabling a non-native PDL to reference a non-native
external object,” in accordance with independent claims 1, 10, and 19.
App. Br. 7–10; Reply Br. 2–3. More specifically, Appellants argue Cairns
instead teaches “that a non-native object may be fully edited by converting it
to one or more native objects,” which does not teach the disputed limitation,
nor suggest that “the edited non-native object references a non-native
external object.” App. Br. 9–10 (citing Cairns ¶¶ 12–13, 17). Appellants
further argue:
Cairns discloses editing, not processing non-native objects. As
a result, Cairns user editing of non-native PDLs cannot
reasonably be incorporated into Hohensee’s processing of
objects using a resource database since it would not be apparent
to one skilled in the art as to how the use of a page editor to edit
a non-native PDL to convert into a native PDL object, as
disclosed in Cairns, could be implemented within the context of
the object resource database disclosed in Hohensee.
Reply Br. 2–3.
The Examiner finds that the combination of Hohensee and Cairns
teaches or suggests the disputed limitation. Final Act. 3; Adv. Act. 2; Ans.
8. The Examiner finds Hohensee “teaches processing non-native PDL in a
print job data stream” by decomposing a non-native print object. See Adv.
Act. 2; Ans. 8 (citing Hohensee col. 3, ll. 20–25). As to Cairns, the
Examiner finds Cairns teaches or suggests processing (i.e., editing) non-
native PDL in a PDL file by referencing a non-native object. Ans. 8 (citing
Cairns Fig. 5); see also Final Act. 3 (citing Cairns Fig. 5, ¶ 16 (finding
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“Cairns teaches enabling a non-native PDL to reference a non-native
external object” by “mapping the non-native PDL external object to a library
name familiar to the host PDL”)). The Examiner finds these combined
teachings of the references teach or suggest the disputed limitation. Ans. 8
(finding Cairns’ “method for processing non-native object can be applied to
Hohensee by substituting decomposing [a] non-native object with
referencing to [an] external object”).
We agree with the Examiner’s findings that the combination teaches
or suggests the disputed limitation. Hohensee col. 3, ll. 20–25; Cairns Fig.
5, ¶¶ 9, 12, 17. For example, Hohensee teaches or suggests handling non-
native print objects (e.g., PDF print objects) by decomposing them and
placing resource information in a database while leaving the print data, or a
reference to the print data, in the page description data stream. Hohensee
col. 3, ll. 20–25. Cairns teaches or suggests, inter alia, the PDL referencing
an external non-native print object. See, e.g., Cairns Fig. 5. Hohensee and
Cairns’ combined teachings teach or suggest the disputed limitation. In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (finding the relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of the references).
We also are not persuaded by Appellants’ argument that Cairns’ user
editing of non-native PDLs cannot reasonably be incorporated into
Hohensee’s processing of objects. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007) (“[I]n many cases a person of ordinary skill will be able to
fit the teachings of multiple patents together like pieces of a puzzle.”); see
also id. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
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(2) Combining Hohensee and Cairns
Appellants argue the Examiner fails to provide proper motivation to
combine the relevant teachings of Hohensee and Cairns. See App. Br. 10–
11; Reply Br. 2–3. More specifically, Appellants argue “one skilled in the
art would not be motivated to combine [Cairns’] manual user editing system
with the AFP print processing system disclosed in Hohensee.” App. Br. 10–
11.
The Examiner finds the combination of Hohensee and Cairns are
properly combined. Ans. 8–9; Final Act. 3–4. More specifically, the
Examiner finds:
Hohensee . . . [teaches] processing data with non-native
object[s] in the PDL data stream. The same method of Cairns
for processing non-native object[s] can be applied to Hohensee
by substituting [the] resource database with referencing to [an]
external object . . ., in order to avoid conversion problem[s] . . .
. Thus, it would have been obvious to one having ordinary skill
in the art . . . to have combined the teachings of Hohensee and
Cairns, since doing so would have predictably and
advantageously [provided for a] robust edit of a page defined by
a first PDL format using a familiar page editor defined for
editing pages defined by a second PDL format.
Ans. 9 (citing Cairns ¶¶ 9, 12).
We find that the Examiner provides “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We disagree with Appellants that
the Examiner’s reasoning provides insufficient motivation to combine the
relevant teachings of Hohensee and Cairns. See Ans. 9; KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
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steps that a person of ordinary skill in the art would employ.”); see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account
not only specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom.”).

CONCLUSION
Based on our findings and reasoning above, we sustain the
Examiner’s § 103(a) rejection of claims 1–20.

DECISION
We affirm the Examiner’s decision rejecting claims 1–20.
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