Ex Parte Sojian et al

Board of Patent Appeals and Interferences

Jul 17, 2012

10777347 (B.P.A.I. Jul. 17, 2012)

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.
10/777,347 02/12/2004 Lena Sojian SLA1473 5085
7590 07/18/2012
Gerald W. Maliszewski
P.O. Box 270829
San Diego, CA 92198-2829
EXAMINER
DULANEY, BENJAMIN O
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
07/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LENA SOJIAN and GUY EDEN
____________

Appeal 2009-015224
Application 10/777,347
Technology Center 2600
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and
ANDREW CALDWELL, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015224
Application 10/777,347

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5, 7-21, and 23-31. Claims 6 and 22 have been
cancelled. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Invention
Appellants’ invention relates to a process and system for using a
multifunctional peripheral device to merge a text message overlay into an
independent document. See generally Spec. 1:6-9. Claim 1 is reproduced
below with the key disputed limitations emphasized:
1. In a multifunctional peripheral (MFP), a text overlaying method
comprising:
in a copier pipeline, accepting a document;
converting the document to rasterized data;
generating a first image;
in a print pipeline, accepting an electronically formatted text
overlay message;
converting the overlay message to a Page Description Language
(PDL) file;
processing the PDL file as a print job; and,
generating a second image as rasterized data;
merging the first image with the second image; and,
creating a merged document.
The Examiner relies on the following as evidence of unpatentability:
Tanaka US 5,959,743 Sept. 28, 1999
Parnian US 6,538,623 B1 Mar. 25, 2003
Pentecost US 6,919,967 B1 July 19, 2005
(filed Nov. 18, 1999)
Miura US 7,126,704 B2 Oct. 24, 2006
(effectively filed Jan.
28, 2000)

Appeal 2009-015224
Application 10/777,347

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THE REJECTIONS
1. The Examiner rejected claims 1-5, 7-12, 15, 17-21, 23-27, and 301
under 35 U.S.C. § 103(a) as unpatentable over Pentecost and Tanaka.
Ans. 3-7.
2. The Examiner rejected claims 13 and 28 under 35 U.S.C. § 103(a)
as unpatentable over Pentecost, Tanaka, and Miura. Ans. 7-9.
3. The Examiner rejected claims 14, 16, 29, and 31 under 35 U.S.C.
§ 103(a) as unpatentable over Pentecost, Tanaka, and Parnian. Ans. 9-10.

THE OBVIOUSNESS REJECTION OVER PENTECOST AND TANAKA
Regarding representative claim 1, Appellants argue Pentecost fails to
describe a process for merging two jobs, images, or documents that are
originally received as and processed by different pipelines or sources (i.e.,
the copier and print pipelines). Br. 9, 12. Appellants also contend that
Tanaka discloses a copier pipeline but not a print pipeline as part of the
merging process. Br. 10, 12. Appellants further assert that there is no
suggestion to combine Pentecost’s Data Merge Unit (DMU) with a copier
pipeline, because the DMU only reconstructs a single image’s static and
variable components and doesn’t have the ability to add new data to the first
image. Br. 13. In Appellants’ view, the Examiner has not shown that, based
on Tanaka’s teachings or well-known principles, an ordinarily skilled artisan
would have modified Pentecost to use a print pipeline for merging a text
message with a document created by a copier/scanner. Br. 13-14.

1 While claims 12, 15, 23, 27, and 30 are not included in the heading of the
rejection (Ans. 3), they are each discussed within the rejection’s body (see
Ans. 5-7).
Appeal 2009-015224
Application 10/777,347

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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Pentecost and Tanaka collectively would have taught or
suggested: (a) accepting a document in a copier pipeline; (b) accepting an
electronically formatted text overlay message in a print pipeline; and (c)
merging a first image with a second image?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the evidence in the record before us, we find no error in the
Examiner’s rejection of claim 1 which calls for, in pertinent part, accepting a
document in a copier pipeline and accepting an electronically formatted text
overlay message in a print pipeline. Appellants argue that Pentecost fails to
recite the merging limitation as recited, but rather teaches dissembling static
text or images and variable data from a document, downloading data as
separate entities, and then recombining the job into a single entity using a
DMU. Br. 7-9. We disagree for the following reasons.
In particular, we fail to see how Pentecost’s discussion of separating
different data from a document and then recombining data cannot teach or
suggest merging a first image and second image as recited. Notably, Figure
2 of the Specification shows the text message is dissembled from a
document (e.g., copy with text message), downloaded to a separate print
pipeline, and then recombined with another image into a single entity (e.g.,
image = image1 + image2). See Figure 2 of the Specification. Also, as
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Application 10/777,347

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broadly as recited, claim 1 recites generating a first image and a second
image as rasterized data, but does not require that these images relate to the
accepted document or text overlay message. Thus, the recited merging step
of the first image with the second image does not require that these images
relate to a document.
As the Examiner explains (Ans. 11), Pentecost discloses a peripheral,
such as a printer, facsimile, copier, or MFP that receives static page layout
and variable print data, converts this information into optimized static page
layout objects and optimized variable print data, and stores the objects and
variable data in separate buffers. Col. 5, l. 61 – col. 6, l. 6; col. 6, ll. 50-54,
60-67; col. 7, ll. 46-57; col. 8, ll. 27-37; Fig. 1. The Examiner specifically
finds (see Ans. 11) that Pentecost teaches two distinct buffers (e.g., 56, 58)
or pipelines in memory 44 storing the optimized static page layout and the
optimized variable print data, and this information is later passed to the
DMU to merge information. Col. 6, ll. 52-54; col. 8, ll. 38-60. Appellants
contend that this memory cannot be a pipeline. Br. 10. However, because
one technical definition of “pipe” is “[a] portion of memory that can be used
by one process to pass information along to another,”2 we find that these
buffers in Pentecost’s memory are reasonably construed as separate
pipelines.
Pentecost further discusses a Multipath Data Processing Pipeline
(MDPP) 48 merging the optimized static page layout objects and the
optimized variable print data by rasterizing each to form an “image” as
broadly as recited, transmitting the data information to the DMU 50, and
appropriately merging the rasterized data pixels to form a rasterized image.

2 MICROSOFT® COMPUTER DICTIONARY 405 (5th ed. 2002).
Appeal 2009-015224
Application 10/777,347

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Col. 2, ll. 48-52; col. 4, ll. 10-14; col. 8, ll. 38-64; Fig. 1. Pentecost thus
teaches accepting data in either a copier or printer pipeline, as well as using
a MFP having a multipath pipeline. See id. For example, Figures 2 and 3
show merged images that includes rasterized static objects (e.g., 68, 70, 72)
and rasterized variable data (e.g., 74, 76). Col. 9, ll. 9-34; Figs. 2-3. The
above teachings also suggest to an ordinary skilled artisan that using a MFP
device to merge data images from multiple paths (e.g., MDDP 48 is called a
Multipath Data Processing Pipeline) and pipelines (e.g., portions of
memory) is known.
Yet, while acknowledging that the Pentecost teaches a MFP device
and the buffers can be either copier or printer pipelines, the Examiner finds
that Pentecost does not teach one buffer can be a printer pipeline while the
other buffer can be a copier pipeline as recited. See Ans. 4, 11. The
Examiner relies on Tanaka to cure the allegedly missing limitation of
accepting a document in a copier pipeline. See id. Specifically, Tanaka
teaches image overlaying data from a scanner unit can be stored in memory
42 and hard disk drive (HDD) 95. Col. 6, ll. 16-17; col. 7, ll. 7-13; Fig. 9.
Tanaka further teaches combining or overlaying image data from an
inputting means source with image data stored in memory (e.g., 42) and
obtained from a scanner (e.g., a different source than where the overlaying
image data is obtained) for quickly outputting images and without requiring
much memory. See Abstract (citing at Ans. 4).
Similarly, Pentecost teaches and suggests static data (e.g., 66, 70, 72)
stored in a pipeline (e.g., buffer in memory) is merged with variable data
obtained from a multipath pipeline and separately stored in a different
pipeline (e.g., another buffer in memory) from the static data. See col. 2,
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ll. 48-52; col. 4, ll. 10-14; col. 9, ll. 9-34; Figs. 2-3. Thus, as the Examiner
finds (Ans. 4, 11-12), when combining Tanaka’s teaching with Pentecost’s
existing dual pipelines, the resulting system further illustrates that static and
variable data can come from various sources, paths, or pipelines. That is,
Tanaka’s use of a copier pipeline for accepting a document and obtaining
image data for overlaying with another input source’s data teaches or
suggests replacing one of the buffers in Pentecost’s system with a copier
pipeline which contains data originating from a device, such as a scanner,
for quickly outputting images and without requiring much memory.
Also, the resulting combined system yields both a print pipeline for
accepting variable data or text overlay message and a copier pipeline for
accepting the static layout object data. Such a modification is tantamount to
the predictable use of prior art elements according to their established
functions and a simple substitution of one known element for another to
obtain predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416-18 (2007). We therefore find that the Examiner’s reason to combine the
teachings of these references is supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion and is not solely based on rationale (G) (i.e., some teaching,
suggestion, or motivation in the prior art) listed in the Appeal Brief as
Appellants assert. See Br. 11 (listing exemplary rationales to support a
conclusion of obviousness). Additionally, even if the Examiner’s reasoning
is based on rationale (G), the combination, as demonstrated above, has a
reasonable expectation of success in the claimed invention, despite
Appellants’ assertions to the contrary. See Br. 15.
Appeal 2009-015224
Application 10/777,347

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Lastly, Appellants present several arguments that are either not
commensurate in scope with claim 1 or inconsistent with the Examiner’s
proposed combination. For example, and as the Examiner states (Ans. 12),
claim 1 does not recite merging an original document with another document
(Br. 9), but rather accepting a document in a copier pipeline, accepting a text
overlay message in a printer pipeline, and merging a first image with a
second image as rasterized data. Moreover, the Examiner relies on
Pentecost – not Tanaka (see Br. 12) – to teach converting a text message into
a PDL, as recited in claim 1. As another example, claim 1 does not recite
merging a text message with a document (Br. 13-14), but rather merging
first and second images.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-5, 7-12, 15, 17-21,
23-27, and 30 not separately argued with particularity (Br. 15-16).

THE REMAINING OBVIOUSNESS REJECTIONS
For each of the remaining rejections, Appellants refer to the previous
arguments of claims 1 and 17. Br. 16-18. The issues before us are then the
same as those in connection with claim 1, and we refer Appellants to the
previous discussion. We are not persuaded by Appellants’ argument for the
reasons disclosed above with regard to Pentecost and Tanaka and need not
address whether Miura or Parnian cures any purported deficiency. This
argument also fails to persuasively rebut the Examiner’s prima facie case of
obviousness – a position we find reasonable. For the foregoing reasons,
Appellants have not persuaded us of error in the rejections of claims 13, 14,
16, 28, 29, and 31.
Appeal 2009-015224
Application 10/777,347

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DECISION
The Examiner’s decision rejecting claims 1-5, 7-21, and 23-31 is
affirmed.
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

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Notice of References Cited

Application/Control No.

10/777,347
Applicant(s)/Patent Under
Reexamination
Lena Sojian et al.
Examiner

Benjamin Dulaney
Art Unit

2600

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U.S. PATENT DOCUMENTS

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NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

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MICROSOFT® COMPUTER DICTIONARY 405 (5th ed. 2002).

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U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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