Ex Parte LI et al

Patent Trial and Appeal Board

Jul 29, 2014

12151803 (P.T.A.B. Jul. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/151,803 05/08/2008 Hong Li 8185P032 3064
76073 7590 07/30/2014
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
ZIMMERMAN, MARK K
ART UNIT PAPER NUMBER
2673
MAIL DATE DELIVERY MODE
07/30/2014 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 HONG LI, EDWARD F. CHATCAVAGE,
JEAN M. ASCHENBRENNER, LARRY D. TEKLITS, AND
LARRY M. ERNST1
________________

Appeal 2012-004739
Application 12/151,803
Technology Center 2600
________________

Before DONALD E. ADAMS, LORA M. GREEN, and
ROBERT A. POLLOCK, Administrative Patent Judges.

POLLOCK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

1 Appellants identify InfoPrint Solutions Company LLC, of Boulder
Colorado as the real party in interest. (App. 3.)
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STATEMENT OF THE CASE
According to the Specification, the invention relates to “K-only
(gray/black) object rendering in a high-speed color controller of a printing
system.” (Spec. 2: ¶0001.) “K-only ink is associated with the CMYK
subtractive color model used in color printing. CMYK stands for Cyan,
Magenta, Yellow, and Key. The Key stands for black.” (Id. at ¶ 0002.)
“CMYK utilizes mixtures of the cyan, magenta, and yellow colors and
techniques such as halftoning to create a full spectrum of colors for color
printing.” (Id.)
[A] a process (or rich) gray/black may be produced in the
CMYK model by adding K ink along with some mixture of
each of the subtractive primary inks. However, this mixing of
cyan, magenta, and yellow primary colors is typically
unsatisfactory for darker tones because it often results in a
muddy dark brown color that does not appear quite black.

(Id. at ¶0004.)
The Specification further states that “[i]n color printing, it is often
desirable to print black text and barcodes using K-only gray/black ink and/or
toner (hereinafter “ink”) in lieu of the process or rich gray/black ink.” (Id. at
¶0002.) “K-only gray/black is defined by using only the black (K) in the
CMYK model, with no cyan, magenta, or yellow colors.” (Id. at ¶0003.)
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As set forth in representative claims 1 and 10, below, the invention
enforces K-only printing of text and barcodes in a color printing system,
thereby rendering such objects in K-only black ink.
1. A method for providing computer services, comprising:
setting a flag to indicate selection of a K-only text and barcode print
preference from a user of a print system;
receiving one or more objects to be printed by the print system, the
one or more objects including at least one of a text object and a
barcode object;
determining whether an input color space for the at least one text
object and barcode object should be converted to K-only black
ink; and
rendering the at least one of the text object and the barcode object as
K-only black ink if the input color space is determined to be
converted to K-only black ink.2

10. A printing system comprising:
a print server to process a print job data stream by
receiving a command indicating a K-only text and barcode print
preference and
identifying one or more objects in the print job including at
least one of a text object and a barcode object; and
a control unit communicably coupled to the print server to:
set a flag to indicate the selection of the K-only text and
barcode print preference;
determine whether an input color space for the at least one text
object and barcode object should be converted to K-only
black ink; and
render the at least one of the text object and the barcode object
as K-only black ink if the input color space is determined
to be converted to K-only black ink.

2 Claims 1, 10, and 17 are the only independent claims on appeal. Although
claim 17 is drawn to “[A]n article of manufacture comprising a machine-
readable medium,” it otherwise recites the same limitations as claim 1.
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The following grounds of rejection are before us for review:
Claims 1, 2, 9-11 and 17 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Narendranath3 in view of Katayama.4
Claims 3-5, 12, 13, 18 and 19 stand rejected under 35 U.S.C. 103(a)
as unpatentable over Narendranath in view of Katayama and Huttenlocher.5
Claims 6-8, 14-16 and 20 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Narendranath in view of Katayama and well-known prior
art.6

ANALYSIS
Claims 1, 2, 9-11 and 17
The Examiner rejects claims 1, 2, 9-11 and 17 under 35 U.S.C §103(a)
as obvious over the combination of Narendranath and Katayama. (Ans. 5),
As Appellants only address claims 10 and 11 separately (App. Br. 13), we
focus our initial analysis on claim 1, and claims 2, 9, and 17 stand or fall
with that claim. 37 C.F.R. § 41.37(c)(1)(vii). We adopt as our own the
findings set forth in the Examiner’s Answer with respect to claims 1, 2, 9-11

3 Narendranath et al., US 5,751,434, issued May 12, 1998.
4 Katayama et al., US 6,236,752 B1, issued May 22, 2001.
5 Huttenlocher et al., US 5,884,014, issued March 16, 1999.
6 The Examiner takes official notice that an Intelligent Printer Data Stream
(IPDS) is old, well-known, and expected in the art. (Ans. 11.) Appellants
do not dispute that finding.
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and 17. For emphasis, we highlight and address the following limitations
contested by Appellants.
Setting a Flag to Indicate Selection of a K-only Text and
Barcode Print Preference
Setting a Flag

The Examiner finds that column 8, lines 13-19 of Narendranath
discloses the selection of K-only text regions, where the setting of a flag to
indicate that selection is inherent. (Ans. 5.) The cited passage states:
With continued reference to FIG. 3, aspects of
“Clip Modes” of the present invention may be
selectively or collectively activated. Text only printing
may be initiated by the selection of “Print Text” button
150, such that only text areas 112, 114, 118 and 124 are
rendered in a output document, with the other areas not
being imaged (that is, remaining blank).

(Narendranath 8:13-19.) The Examiner clarifies that: “In order for there to
be a selection, setting some form of flag is inherent. Otherwise, there is
nothing within the digital system to delineate which particular mode has
been selected.” (Ans. 13.)
Appellants contend that the combination of Narendranath and
Katayama does not disclose or suggest a process of “setting a flag to indicate
selection of a K-only text and barcode print preference from a user of a print
system” as set forth in independent claims 1, 10, and 17. (App. Br. 7.) In
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particular, Appellants assert that Narendranath at column 8, lines 13-19 does
not suggest setting a flag. (App. Br. 10.)
We find the Examiner’s explanation that in order for there to be a
selection, the setting of some form of flag is inherent in the printing process
taught by Narendranath to be logical. Appellants provide no substantive
argument, nor do they point to any evidence of record, explaining why the
cited passage does not inherently teach or suggest setting a flag. We thus
agree with the Examiner’s finding that Narendranath inherently teaches the
limitation of “setting a flag” as required by independent claim1.
Indicating a Selection of a K-only Text and
Barcode Print Preference

The Examiner further finds that Narendranath discloses that the text
regions are printed only with black ink (K-only text). (Ans. 5, 13.)
Narendranath discloses:
When “Print With Reduced Black Only” button 158 is
pressed, the portions of draft document 105 (as selected
according the [“]Clip Mode”) are printed in black only,
with a 75% maximum for the use of black in otherwise
solid black areas. In this manner, solid black text areas
112, 114, 118. and 124 as well as solid black graphic (or
text) areas 110, 116, and 120 appear as 75% density
gray areas. In this “Print With Reduced Black Only”
embodiment, when the “Print Text” button 150 and
“Print Photos” button 154 are selected, photo area 112
and graphic areas 110, 116, 120 and 122 will appear
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only as the black (undercolor removal) density of these
document areas. This mode may be particularly useful
in that only the black separation is printed, lowering
toner usage, raster image processing time, and in the
case of a multi-pass color printer or copier such as
shown in FIG. 6, print/copy output time. The “Print
With Reduced Black Only” mode can be used when the
user is only concerned with the text draft portions of the
draft document 105 image, or with only relative
placement of the color portions (such as graphic and
photo) aspects of the draft document.

(8:41-61.)
Appellants contend that Narendranath fails to suggest selection of a
K-only text and barcode print preference. (App. Br. 10.) Appellants assert
that, to the contrary, column 8, lines 41-54 of the reference teaches away
from this limitation because it discloses a 75% maximum for the use of
black in otherwise solid black areas such that “solid black text areas appear
as 75% density gray areas.” (Id. at 11.) Appellants also contend that
75% black by definition cannot be construed to be
equivalent to K-only (e.g., 100% K) since the black
color is achieved by a combination of black (e.g., K≤
75%) and CMY (e.g., ≥ 25%). Thus, 75% maximum
black is NOT K only black.

(Id. (emphasis in original); see also, Reply Br. 2-3.)
Mere attorney argument, however, cannot take the place of evidence
lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997). Appellants point to no disclosure in Narendranath, and
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provide no reasoning, nor point to any evidence of record, to demonstrate
that Narendranath’s use of 75% maximum black incorporates 25% of other
colors.
We agree with the Examiner’s finding that Narendranath uses black
ink for printing, albeit at 75% maximum, but does not use any other color.
We also agree with the Examiner’s finding that, although the claims require
the use of K-only black ink alone, they “do[] not require full-on 100%
saturated black.” (Ans. 13.)
The Examiner also finds that Katayama separately discloses printing
barcodes strictly using the black ink cartridge, i.e., with K-only ink. (Ans.
14.) In particular, Katayama recites that
when an image including a barcode is printed,
information to be printed in black is reproduced by
driving the yellow, magenta, and cyan heads if it
corresponds to a portion other than the barcode, and
only the barcode is printed using the black head, thus
reducing the use ratio of the black head.

(Katayama col. 5, l. 64 to col. 6, l. 2).
The Examiner’s finding is well taken. Appellants do not attempt to
distinguish Katayama with any degree of specificity.
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In view of the above, we agree with the Examiner’s conclusion that
the combination of Narendranath teaches Katayama the selection of a K-
only text and barcode print preference from a user of a print system.
Determining Whether an Input Color Space for the At Least
One Text Object and Barcode Object should be Converted to K-
Only Black
The Examiner finds that column 8, lines 41-54 of Narendranath
discloses a process of determining whether an input color space for the at
least one text object and barcode object should be converted to K-only black
ink. (App. Br. 11.) Appellants contend that Narendranath fails to satisfy
that element because the black density in Narendranath is obtained through
under color removal, “a process of eliminating amounts of C, M, and Y that
would have added to a dark neutral (black) and replacing them with black
ink during a color separation process.” (Id. at 12.) The Examiner finds that
undercolor removal “is used to convert an input CMY color space, which
fully defines the color to be printed, into an output CMYK color space so
that the black (K) ink usage is maximized.” (Ans. 14.)
We adopt the Examiner’s well-reasoned finding that, although this
may not be precisely the type of conversion contemplated by Appellants’
disclosure, the cited passage from Narendranath falls within the meaning of
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the claim as written. (Ans. 14.) Appellants have neither convinced us that
their interpretation of undercover removal differs in substance from the
Examiner’s, nor provided reasoning or pointed to evidence of record,
demonstrating that “under cover removal” is not encompassed by the
limitation of claim 1 of ‘determining whether an input color space for the at
least one text object and barcode object should be converted to K-only black
ink.”
In light of the above, we agree with the Examiner that the
combination of Narendranath and Katayama teach determining whether an
input color space for the at least one text object and barcode object should be
converted to K-only black ink.
Print Server

Appellants argue as to claims 10 and 11 that neither Narendranath nor
Katayama disclose or suggest a print server. (App. Br. 13.) And with
respect to Narendranath, Appellants contend, that “a PC running a UI
cannot be reasonably construed as a print server defined in applicants’
specification.” (App. Br. 13. (emphasis in original).) Appellants do not,
however, point to any definition of print server in the Specification or
provide other evidence supporting that construction. The Examiner finds
that Narendranath discloses a printing system comprising a print server to
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process a print job data stream by receiving a command indicating a K-only
text and barcode print preference. (Ans. 5.) The Examiner clarifies that
Narendranath teaches a PC running a UI (User Interface) in order to send the
print job to the printer, and thus “performs the functions of a print server and
can be reasonably construed as a print server.” (Ans. 15 (citing, inter alia,
Narendranath; Fig. 6.)
Narendranath describes Figure 6 as a showing “an exemplary color
xerographic printing/copying machine and networked PC,” (Narendranath
col. 2, ll. 54-56) including “[a]n ESS (electronic subsystem) or image
processing station (both referred to as IPS)” (id. at ll. 62-64), a “network of
one or more personal computers (PC) …. interfacing/in communication with
[the] IPS” (id. at col. 3, ll. 1-3), and a “user interface (UI), . . . also in
communication with IPS.” (Id. at col. 3, ll. 3-5.) Given that a printer server7
may be defined as “[a] computer and/or program providing LAN (Local
Area Network) users with access to a centralized printer”) (Newton’s
Telecom Dictionary, 947 (27th ed. 2013)), we find the Examiner’s
construction reasonable. We thus agree with the Examiner that the

7 We draw no distinction between the terms “print server” and “printer
server.”
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combination of Narendranath and Katayama teaches the limitation of a print
server.
Claims 3-8, 12-16 and 18-20

Appellants do not present any substantive arguments directed to the
rejection of either claims 3-5, 12, 13, 18 and 19 or claims 6-8, 14-16 and 20,
but instead, rely on the arguments made with respect to claim 1. Thus, for
the reasons set for above, we affirm the Examiner’s rejection of claims 6-8,
14-16 and 20. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
The rejections of claims 1-20 under 35 U.S.C. § 103(a) are affirmed.

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

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