12625971 (P.T.A.B. Jul. 18, 2017)

Ex Parte Nara

Patent Trial and Appeal BoardJul 18, 2017

12625971 (P.T.A.B. Jul. 18, 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. 12/625,971 11/25/2009 Noriaki Nara Q116121 1276 23373 7590 07/20/2017 SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON, DC 20037 EXAMINER WALLACE, JOHN R ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 07/20/2017 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NORIAKINARA1 Appeal 2016-008016 Application 12/625,971 Technology Center 2600 Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1, 4, 8, 11, and 15, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We have reviewed Appellant’s arguments in the Appeal Brief and Reply Brief, and the Examiner’s response to Appellant’s arguments. We are persuaded by Appellant’s contention that the Examiner erred in rejecting independent claims 1, 8, and 15 under 35 U.S.C. § 103(a) because Allam2 1 Appellant identifies FUJI XEROX CO., LTD as the real party in interest. App. Br. 2. 2 Allam et al. (US 2004/0139400 Al; published July 15, 2004) (“Allam”). Appeal 2016-008016 Application 12/625,971 does not teach or suggest “wherein a density of the extracted character is maintained,” as recited in claims 1, 8, and 15.3 App. Br. 9; Reply Br. 7. The Examiner finds Allam teaches that, although the particular zone of a page, which could be three lines of text, is highlighted, the areas outside of the zone may be lightly grayed out. Ans. 7—8 (citing Allam || 167, 168). The Examiner also finds, consistent with the Specification’s disclosure that “lightening involves lowering the density of an image,” “[gjraying out characters constitutes a reduction of the density of those characters (less black color).” Ans. 8 (citing Spec. 6). The Examiner further finds that “highlighting is typically a modification that occurs in the vicinity of the character,” and “Allam makes no suggestion of any alteration to the density of the characters in the highlighted zone.” Ans. 8—9. Although we agree with the Examiner that Allam teaches a reduction of the density of the characters in the non-highlighted area by greying out such area, we agree with Appellant’s argument that “[tjhere is simply no support in Allam that highlighting a zone does not impact the character density.” Reply Br. 7. The Examiner has failed to show that the density of the characters in the highlighted area of Allam is maintained. The Examiner cites to no authority or reference in support of the finding that highlighting is typically a modification that occurs in the vicinity of the character. See Ans. 8. Thus, we are persuaded by Appellant’s contention that the Examiner 3 Although Appellant makes other arguments in the Briefs, we need not address them because we find this issue is dispositive. 2 Appeal 2016-008016 Application 12/625,971 erred in finding “‘highlighting’ only affects the areas outside of the characters, but ‘graying out’ somehow does not.’” Reply Br. 7. Thus, we do not sustain the rejection of independent claims 1,8, and 15. For the same reasons, we do not sustain the rejection of dependent claims 4 and 11. DECISION We reverse the Examiner’s rejection of claims 1, 4, 8, 11, and 15. REVERSED 3