Ex Parte Price et al

Patent Trial and Appeal Board

Nov 21, 2014

12231123 (P.T.A.B. Nov. 21, 2014)

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.
12/231,123 08/28/2008 Stephen Goddard Price 8185P051 1981
76073 7590 11/21/2014
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
BECKLEY, JONATHAN R
ART UNIT PAPER NUMBER
2672
MAIL DATE DELIVERY MODE
11/21/2014 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 STEPHEN GODDARD PRICE, GUY L. JOHNSTON,
EDWARD CHATCAVAGE, RONALD D. PARRISH,
REINHARD HEINRICH HOHENSEE, ARTHUR R. ROBERTS,
and NENAD RIJAVEC1
__________

Appeal 2012-006045
Application 12/231,123
Technology Center 2600
__________

Before DONALD E. ADAMS, ULRIKE W. JENKS 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
rejections of claims 1–20 as unpatentable. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the Real Party in Interest is InfoPrint Solutions
Company LLC. (App. Br. 3.)
Appeal 2012-006045
Application 12/231,123

2
STATEMENT OF THE CASE
Appellants’ invention relates to a method for efficiently printing
PostScript (PS) and Portable Document Format (PDF) files. (Spec. ¶¶ 3, 15)
On appeal are claims 1–20 as set forth in the Amendment After Final
Action dated June 6, 2011.2 Representative independent claim 1 reads as
follows:
A method comprising:
receiving a page description language (PDL) file at a
processing unit;
removing one or more images from the PDL file;
replacing each of the one or more images with an
associated reference;
storing each of the one or more images; and
printing the PDL file by retrieving each image from
storage upon encountering the associated reference
during printing of the PDL file.

The following ground of rejection is before us for review:
Claims 1–20 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Boliek.3

2 On June 6, 2011, Appellants submitted an Amendment After Final Action
involving claims 1–10, 12, and 17, which was entered pursuant to the
Examiner’s initials dated June 17, 2011. Although none of the June 6, 2011
amendments are reflected in Appellants’ Claim Appendix, claim 1 is
correctly set forth at page 7 of the Appeal Brief. The provenance of the
version of claim 13 set forth on page 7 of the Appeal Brief is unclear and we
look instead to the June 6, 2011 amendment for the language of this claim.
3 Boliek et al., US 2008/0144076 Al, published June 19, 2008.
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FINDINGS OF FACT
We have reviewed Appellants contentions that the Examiner erred in
rejecting claims 1–20 under 35 U.S.C. §102(e) as unpatentable over Boliek.
We disagree with Appellants’ conclusions and adopt as our own the factual
findings and analysis set forth in the Examiner’s Answer. For emphasis, we
highlight and address the following facts:
FF1. PostScript and PDF files are page description languages (PDLs)
typically processed by a printer that includes a PS/PDF raster image
processor (RIP) to convert the files to a printable bit map. (Spec. ¶ 3;
claims 1 and 2; Boliek ¶ 39.) These files are typically large and printing
them is resource-intensive. (Spec. ¶ 4.) High resolution PostScript
images, for example, may appear multiple times in a print job and must
be processed each time they occur. (Id.)
FF2. Paragraph 6 of the Specification discloses a method for optimizing the
printing of PDL files comprising:
[R]eceiving a print file, removing images from the print file,
replacing each image with a reference to the image, storing
each image removed from the print file; and printing the print
file. Each image is retrieved from storage to be printed upon
encountering a reference to the image during printing of the
print file.
FF3. Boliek discloses a document serving system for network printers,
Multi-Function Peripherals (MFPs), and server integrated MFP (SI-
MFP), particularly SI-MFPs with printing functions. (Boliek abstract,
¶¶ 2–5, 31, 34.)
FF4. With reference to the flow diagram shown in Figures 6–8, Boliek
states that “print interaction module 512 is responsive to commands from
the client device 106, and directly or indirectly adapts the file sent for
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printing according to the capabilities of the printer . . . to which the file
is being sent.” (Id. ¶ 67.) The print interaction module effectuates
various kinds of printing. In one case, the print interaction module
directs “SI-MFP 102 [to use] the high resolution version, if appropriate,
for printing.” (Id.) Alternatively, the SI-MFP print interaction module
may also direct printing on “a non-SI-MFP target printing device that
gets data directly (unmoderated) from the SI-MFP 102.” (Id.) “In this
case, the print interaction module 512 of the SI-MFP 102 discerns the
target printer’s capability . . . and makes and sends a file of the right
format and resolution for the target printing device.” (Id.) “Thus, the
print interaction module 512 automatically adapts the resolution of image
sent to the resolution of the receiving device, thereby not wasting
network bandwidth to transmit files that are not fully utilized by the
target device.” (Id.)
FF5. In one embodiment, illustrated in Boliek Figure 1, the system receives
and stores original images or files, and generates from them an
Independently Usable Image (IUI) file that is smaller in size, lower in
resolution and includes references to the original file. (Boliek ¶¶ 33–34.)
“The IUI file is then sent by the SI-MFP 102 to other devices 106a-c for
display of the file. Upon request or need, the original file can be
provided, but network traffic is reduced by primarily using the IUI file
for most operations.” (Id. ¶ 34.)

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FF6. Boliek Figure 9 is reproduced below.

Boliek Figure 9 illustrates IUI File 902 comprising low resolution file
906 and a skeleton file 908. (Id. ¶ 77.) “A ‘skeleton file’ is a document
file that has no code stream at all, just references to other files and code
streams.” (Id.) As shown in Figure 9, skeleton file 908 includes a
pointer (914) to the original, high quality, high resolution image file 904.
(Id.) Thus, “[t]he low resolution file 906 can be displayed or printed”
and, “if the original high quality, high resolution image file 904 is needed
for display or printing at other devices, it can easily be identified and
retrieved.” (Id.) In either case, “the IUI file 902 can be converted to the
user desired format at the server 102 or ‘just in time’ as the client 106
[sic, requires].” (Id. ¶ 76.)
FF7. Referring to the disclosure in paragraphs 77 and 78 of the reference,
Boliek states that, “[t]hose skilled [in] the art will recognize that PDF and
JPM files have been used only by way of example, and that any number
of other types of file formats may be used for the low-resolution file 906,
the high-quality high-resolution image file 904, the skeleton file 908, and
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the IUI file 902.” (Id. ¶ 79.) Boliek further discloses that the source of a
printed document “is often a page description language such as Postscript
or PDF or MSXPS.” (Id. ¶ 88.)
ANALYSIS
Appellants contend that claims 1–20 were improperly rejected
because Boliek fails to disclose “printing the PDL file by retrieving each
image from storage upon encountering the associated reference during
printing of the PDL file,” as set forth in independent claim 1, and similar
language in independent claims 13 and 17.4 In particular, Appellants argue
that Boliek fails to disclose (1) a process of “printing a PDL file,” or “a
printing process in which an image is retrieved upon encountering an
associated reference to the image in a PDL file.” (App. Br. 9–10.) We do
not find Appellants’ arguments persuasive.
As an initial matter, PostScript and PDF files are PDL files. (FF1.)
Because Boliek’s system encompasses the printing of PostScript and PDF
images (FF7), we agree with the Examiner’s finding that “Boliek teaches
printing a PDL.” (Ans. 13.)
We also agree with the Examiner’s finding that Boliek teaches a
process of retrieving each of one or more images from storage upon
encountering an associated reference during printing of the PDL file. (Ans.
14.) As set forth by the Examiner,
Boliek teaches the process of issuing a print request
using the IUI file, and when encountering the skeleton of the

4 Appellants provide no separate arguments with respect to dependent claims
2–12, 14–16, and 18–20 (see App. Br. 11), and they stand or fall with claims
1, 13, and 17. 37 C.F.R. § 41.37 (c) (1).
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print job the original images are retrieved in order to print the
original high resolution images. The skeleton file is a
reference using pointers to other files and code streams,
which are a representation of the complete document. (¶
0076-78) Boliek teaches in the instance of a print instruction,
the primary image is determined corresponding to the IUI
file. In doing so, the identified primary image file is then
retrieved and printed by the device. Therefore, the IUI file is
used to retrieve, based on the skeleton file using reference
pointers, the original file for printing (¶ 0093).
(Id. at 14–15; see also FF2–6.)
Restating their argument, Appellants further contend that “Boliek does
not disclose encountering a skeleton file during printing of a low
resolution file, and replacing the skeleton file with an original high
resolution image file.” (Reply Br. 3.) Again, we do not find this argument
persuasive. Claim 1 requires “printing the PDL file by retrieving each image
from storage upon encountering the associated reference during printing of
the PDL file.” As set forth in FF6–7, Boliek’s skeleton file 908 is not
“replac[ed] . . . with an original high resolution image file,” as Appellants
argue, but includes pointer 914, which directs the identification and retrieval
of an original high quality, high resolution PDL image file for printing, as
required by the claim language. (Id.)
SUMMARY
We affirm the rejection of claims 1–20 under 35 U.S.C. § 102(e) as
unpatentable over Boliek.

Appeal 2012-006045
Application 12/231,123

8
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

cdc