Ex Parte Liccini et al

Patent Trial and Appeal Board

Mar 24, 2015

11328885 (P.T.A.B. Mar. 24, 2015)

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.
11/328,885 01/09/2006 Roman D. Liccini 056-0164 6005
70537 7590 03/24/2015
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
EXAMINER
RILEY, MARCUS T
ART UNIT PAPER NUMBER
2671
MAIL DATE DELIVERY MODE
03/24/2015 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 ROMAN D. LICCINI, NISHAN D. HOSSEPIAN,
JOHN M. GIL-GOMEZ, and WILLIAM S. JACOBS
1

__________

Appeal 2012-009210
Application 11/328,885
Technology Center 2600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

HARLOW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
and method for generating personalized scented documents. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
According to Appellants, the Real Party in Interest is Xerox Corporation
(App. Br. 1).
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STATEMENT OF THE CASE
Currently, printing systems capable of generating scented documents
“are being used to support long run fixed documents with a constant
repeated scent” (Spec. ¶ 3). According to the Specification, the use of
unvaried scents in traditional systems “fail[s] to exploit the full potential of
scented documents” (id.). “Suitably employed, varying the scent could
constitute an important additional differentiating vector for variable content
personalized documents.” (Id.)
The Specification teaches a method and corresponding apparatus for
customizing a printed document with a personalized scent. The
Specification provides:
Using customer data, an entity can apply personalized scents to
printed content as well as including personal data in that
content. . . . In embodiments, the [user interface] would allow
the user to select whether a scent or scents is added to the
printed output. The finishing device would then apply scents to
the printed output, with variable customer data determining the
specific scents to be applied.
(Id. ¶ 4.)
Claims 1 and 4–22 are on appeal. Claim 1 is illustrative and reads as
follows (emphasis added):
1. A printing method for personalizing documents
using a single printing apparatus, the method comprising:
receiving information related to a document to be printed,
the document being an advertisement and containing at least
one of images and text;
automatically selecting a scent from a plurality of scents
available from a finishing system to apply to the document
based at least in part upon the information related to the
document and based at least in part on variable information
related to an intended recipient, the information related to the
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document being information related to the content of the
document and the variable information being at least one of an
intended recipient’s age, address, gender, prior purchases, and
customer-rated items;
printing the document;
automatically determining one or more locations on the
document to apply the scent, wherein the location is determined
by automatically analyzing at least one of images and text
contained in the document; and
applying the selected scent to the determined one or more
locations on the document.

Claim 14, the only other independent claim on appeal, is directed to a
device for carrying out the process defined by claim 1.

Claims 1 and 4–22 stand rejected for obviousness based on Rochford,
2

Pelletier,
3
and Redd.
4

DISCUSSION
Issue
The Examiner has rejected claims 1 and 4–22 under 35 U.S.C.
§ 103(a) as obvious based on Rochford, Pelletier, and Redd. Two
independent claims are on appeal, claims 1 and 14; however, Appellants
argue all claims together (App. Br. 5–9). Therefore, we confine our
discussion to representative claim 1. Claims 4–22 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii); see also In re McDaniel, 293 F.3d 1379, 1384
(Fed. Cir. 2002).

2
Rochford et al., US 5,995,770, issued Nov. 30, 1999 (hereinafter
“Rochford”).
3
Pelletier, US 7,587,331 B2, issued Sept. 8, 2009.
4
Redd et al., US 6,943,866 B2, issued Sept. 13, 2005 (hereinafter “Redd”).
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The Examiner finds that Rochford discloses every aspect of claim 1,
with three exceptions. First, the Examiner finds that although Rochford
discloses “selecting a scent from a plurality of scents,” it does not teach
doing so “automatically” (Ans. 5). The Examiner finds, however, that
Pelletier teaches this aspect, and that it would have been obvious to combine
Rochford with Pelletier because both relate to printer systems, and “it is
easier to perform an automatic selection” than a manual one (Ans. 5–6).
The Examiner further finds that Rochford as modified “does not
expressly disclose” either “the document being an advertisement and
containing at least one of images and text” or making a selection “based at
least in part on variable information related to an intended recipient, the
information related to the document being information related to the content
of the document and the variable information being at least one of an
intended recipient’s age, address, gender, prior purchases, and customer-
rated items” (Ans. 6). Nevertheless, the Examiner finds that Redd discloses
these aspects (id.). The Examiner also finds that Rochford and Redd relate
to the same field of endeavor, printing systems, and that a person of ordinary
skill in the field at the time of invention would have been motivated to
combine them (Ans. 6–7).
Appellants proffer two challenges to the Examiner’s rejection. First,
Appellants argue that none of Rochford, Pelletier, or Redd discloses the
limitation of claim 1 requiring
[A]utomatically selecting a scent from a plurality of scents
available from a finishing system to apply to the document
based at least in part upon the information related to the
document and based at least in part on variable information
related to an intended recipient, the information related to the
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document being information related to the content of the
document and the variable information being at least one of an
intended recipient’s age, address, gender, prior purchases, and
customer-rated items

(App. Br. 5–9). Second, Appellants argue that Rochford does not teach
“automatically determining one or more locations on the document to apply
the scent, wherein the location is determined by automatically analyzing at
least one of images and text contained in the document” (App. Br. 7–8).
The issues presented are whether a preponderance of the evidence
supports the Examiner’s conclusion that the combination of Rochford,
Pelletier, and Redd renders obvious the “automatically selecting a scent” and
“automatically determining one or more locations” aspects of claim 1.
Findings of Fact
FF 1. Rochford discloses that “the scent can be based on a
roll/scent/title (step 102b) which can automatically associate a scent with a
selected title. At this point, a specific scent has been chosen which is to be
associated with a specific captured image on a frame of the photosensitive
film.” (Rochford 4:35–40, Fig. 2; Ans. 5.) “For example, if the individual
picks the title ‘Christmas’, a scent such as pine could be automatically
associated with the title and, therefore, during a printing of the image, the
title and scent could be applied to the print in a manner which will be
described later” (Rochford 4:18–22; App. Br. 7; see also Rochford 4:56–61).
FF 2. Rochford discloses
[A] scanner 27, such as a digital film scanner, scans the
photosensitive film for information indicative of a frame of the
photosensitive film that includes an image which is to be
associated with a scent, and information on the particular scent
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which is to be delivered onto a print of the image which
corresponds to the frame. . . . As shown in FIG. 3A,
printer/paper processor 29 is operationally associated with a
scent delivery device 31. Scent delivery device 31 receives the
frame and scent information from scanner 27 and applies the
selected scent to the specific photographic print during a print
finishing operation.
(Rochford 5:41–54, Fig. 3A; Ans. 5.) Rochford further teaches that the
scanner
[C]an read the scent selection which is stored on the
photosensitive film. . . . Thereafter, the processed film is
printed (step 106) and exposed photographic paper based on the
processed film is processed (step 107). At this point, the
scanner instructs a scent delivery device to apply the selected
scent to the print that includes the captured image during a print
finishing operation (step 108).
(Rochford 5:9–20, Fig. 2; Ans. 5, 13.)
FF 3. Rochford discloses that “[a]t a reading station . . . the
information can be scanned and automatically entered into scent delivery
device 31. After receiving the scent information, scent delivery device 31
applies the selected scent to the appropriate cut print (step 209).” (Rochford
7:15–23, Fig. 5; Ans. 5.)
FF 4. Pelletier discloses at Figure 4 (not shown) “a flowchart of an
embodiment of the present invention showing the main steps of the method
for establishing a user profile and predicting some preferred perfumes”
(Pelletier 5:10–13, Fig. 4; Ans. 5, 13). Figure 4 shows that “[t]he first step
(block 31) consists in selecting q perfumes NPh (h comprised between 1 and
q) to be rated by the user” and depicts that first step as being “automatically
performed by the system” (Pelletier 5:13–19, Fig. 4; Ans. 5, 13–15).

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FF 5. Pelletier discloses,
Alternatively, the ratings can be automatically estimated
on the basis of previous acquisitions of the user. For example,
studying the more frequent perfumes acquired by a given user,
it may be reasonably supposed that these perfumes have to be
given the best notes. On the contrary, a perfume acquired only
once by the user and no more for a long time can be assumed to
be disliked.
(Pelletier, 5:35–41.)
FF 6. Redd discloses
An example of a destination identifier print 900 (which is
printed from a destination identifier image that is created and
inserted into a sub-batch) is shown in FIG. 7. A destination
identifier image from which the destination identifier print 900
can be printed can include data for generating one or more of
the following: a message 902 (e.g., a user-specified message or
advertisement), thumbnail index 903 including thumbnail
images 509, 511, 513, and 516-518 of the images included in
the sub-batch, reordering information 908, bar code 910
(encoding, for example, shipping or billing information . . . and
an address field 906 displaying the recipient's address.
(Redd, 17:10–22, Fig. 7; Ans. 6.)
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
Rochford discloses selecting a scent from a plurality of scents
available from a finishing system to apply to a document based at least in
part upon information related to the document, the information related to the
document being information related to the content of the document (FF1–
FF3). Rochford additionally discloses automatically determining one or
more locations on the document to apply the scent, wherein the location is
determined by automatically analyzing at least one of images and text
contained in the document (FF2–3).
Pelletier discloses that the scent to apply to the document is selected
automatically (FF4, FF5), and based at least in part on variable information
related to an intended recipient, such as information related to the intended
recipient’s prior purchases (FF5). Redd further discloses generating an
image based on, among other things, variable information related to an
intended recipient; specifically, the intended recipient’s address (FF6). Redd
discloses the document being an advertisement and containing at least one of
images and text (FF6).
Appellants contend that the cited combination does not disclose the
“automatically selecting a scent” aspect of claim 1 because Pelletier
“discloses delivering perfume samples to a user and the user makes manual
inputs as to preferences of one of the scents over the other” (App. Br. 6).
Appellants further assert that the automatically selected scent must be a
“single scent,” that a “plurality of perfumes for a user to select” is not the
same as selecting a scent “to apply to the document,” and that “select[ing] a
scent based on user input” is not the same as “select[ing] a scent based on
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information related to the document and on variable information related to
an intended recipient” (App. Br. 6–8). Appellants state that Redd does not
cure these alleged deficiencies, but offer no supporting analysis (App. Br. 7).
Appellants’ arguments are unpersuasive. Pelletier explicitly teaches a
system for automatically selecting a scent without user input. Figure 4 of
Pelletier depicts at box 31 the automatic selection of a scent by the system
prior to any user input (FF4). Furthermore, Pelletier discloses employing a
user’s purchase history to automatically estimate the user’s preferences, and
then automatically selecting scents based on that estimate (FF5).
Appellants’ remaining arguments regarding the “automatically
selecting a scent” aspect of claim 1 are likewise unavailing. Appellants’
bald assertion that “a scent” means “a single scent” violates the basic precept
of claim construction that “an indefinite article ‘a’ or ‘an’ in patent parlance
carries the meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223
F.3d 1351, 1356 (Fed. Cir. 2000). There is no support in the Specification
for deviating from this rule. Indeed, the Specification contemplates one or
more scents throughout. (See, e.g., Spec. ¶ 4 (“The finishing device would
then apply scents to the printed output”).) Accordingly, the broadest
reasonable interpretation of “a scent” is “one or more scents.” See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Moreover,
even if Appellants’ proposed interpretation of “a scent” were correct, the
automatic selection of multiple scents disclosed in Pelletier would render
obvious the automatic selection of a single scent (FF4, FF5).
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Appellants’ assertion that Pelletier’s disclosure of a “plurality of
perfumes for a user to select” cannot satisfy the requirement for selecting a
scent “to apply to the document,” (App. Br. 6) is unpersuasive because it is
improperly directed Pelletier in isolation, even though the Examiner finds
that the combination of Rochford, Pelletier, and Redd renders obvious the
“automatically selecting a scent” aspect of claim 1. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Appellants’ contention that Rochford does not disclose
“select[ing] a scent based on information related to the document and on
variable information related to an intended recipient” because a user must
input the text that is automatically associated with a scent (App. Br. 7–8), is
likewise unavailing. See In re Keller, 642 F.2d at 426. Furthermore, we
find that Rochford’s disclosure of “automatically associat[ing] a scent with a
selected title” (Rochford 4:36–37; FF1), and upon instruction from a
scanner, automatically applying that scent to a print for which the title has
been selected (Rochford 5:15–19; FF2) satisfies the “select[ing] a scent
based on information related to the document” aspect of claim 1.
Similarly, Appellants’ unsupported conclusion that Redd does not
overcome the deficiencies of Rochford (App. Br. 7), absent any analysis of
the Examiner’s finding that Redd discloses selecting “based at least in part
on variable information related to an intended recipient . . . the variable
information being at least one of intended recipient’s . . . address” in Figure
7 and at column 17, lines 10–39, is insufficient to support reversal. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“the examiner bears the
initial burden, on review of the prior art or on any other ground, of
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presenting a prima facie case of unpatentability. If that burden is met, the
burden of coming forward with evidence or argument shifts to the
applicant.”).
We agree with the Examiner that the automatic selection of a scent
based at least in part on variable information related to an intended recipient
of Pelletier, combined with the method for selecting a scent to apply to a
document based at least in part on information related to the document of
Rochford, and the method for making a selection based at least in part on
variable information related to an intended recipient of Redd renders
obvious the “automatically selecting a scent” aspect of claim 1.
Appellants also argue that Rochford does not teach that the “locations
on the document to apply the scent are automatically determined by
automatically analyzing at least one of images and text contained in the
document” because a user manually selects the title for an image, “and the
scent is associated with the title based upon the title picked” (App. Br. 7).
This argument is not persuasive. Appellants do not dispute that
Rochford discloses automatically associating a scent with a title, and during
processing, automatically determining where to apply the scent by
automatically analyzing text contained in the document, i.e., the title (App.
Br. 7). Rather, Appellants contend that the initial manual selection of the
title negates the automatic character of the subsequent steps.
This argument, which is tantamount to an improper attempt to read
additional limitations into claim 1, finds no support in the claims or the
Specification. Claim 1 is silent as to how the “at least one of images and
text contained in the document” is created, e.g., manually or automatically,
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as well as to the particulars of how the automatic analysis of that text and/or
image is performed, e.g., whether there is a fixed relationship between a
particular scent and specific text. Furthermore, the Specification does not
contain, and Appellants do not identify, any support for importing such
additional limitations into the claims. See In re Prater, 415 F.2d 1393,
1404–05 (CCPA 1969). Indeed, a requirement that the text or images in a
document must not be generated by a user, or that there must not be a
predefined relationship between the text or images and a scent would be
nonsensical and could potentially render the invention inoperable.
Accordingly, the broadest reasonable interpretation of “automatically
determining one or more locations on the document to apply the scent,
wherein the location is determined by automatically analyzing at least one of
images and text contained in the document” does not exclude images or text
selected manually, or associated automatically with a scent.
Rochford teaches that “the scent can be based on a roll/scent/title (step
102b) which can automatically associate a scent with a selected title.”
(FF1.) “For example, if the individual picks the title ‘Christmas’, a scent
such as pine could be automatically associated with the title and, therefore,
during a printing of the image, the title and scent could be applied to the
print in a manner which will be described later” (FF1). Subsequently, “the
scanner instructs a scent delivery device to apply the selected scent to the
print that includes the captured image during a print finishing operation (step
108)” (FF2). Therefore, we agree with the Examiner that Rochford discloses
the “automatically determining one or more locations” aspect of claim 1.
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Conclusion of Law
A preponderance of the evidence supports the Examiner’s conclusion
that the “automatically selecting a scent” and “automatically determining
one or more locations” aspects of claim 1 would have been obvious based on
the combination of Rochford, Pelletier, and Redd.
Appellants do not separately argue the patentability of independent
claim 14, or dependent claims 4–13 and 15–22. (App. Br. 5–9.) Therefore,
these claims fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii); In re Kaslow,
707 F.2d 1366, 1376 (Fed. Cir. 1983).
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) based on
Rochford, Pelletier, and Redd. Claims 4-22 fall with claim 1.
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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