Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Dec 20, 2021

2021000187 (P.T.A.B. Dec. 20, 2021)

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.
16/098,101 10/31/2018 Jan Morovic 85024564 1818
22879 7590 12/20/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
WAIT, CHRISTOPHER
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
12/20/2021 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte JAN MOROVIC, HECTOR GOMEZ MINANO, and
PETER MOROVIC

Appeal 2021-000187
Application 16/098,101
Technology Center 2600

Before LARRY J. HUME, MATTHEW J. McNEILL, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 16–22. Appeal Br. 6. Claims
23 and 24 have also been rejected. Ans. 15. Claims 12–15 have been
cancelled. Appeal Br. (Claims App. i). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hewlett-
Packard Development Company, L.P. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claimed subject matter generally relates to printer calibration.
Spec. 1:5–7. Appellant’s claimed invention seeks improved calibration
performed on the basis of a controlled number of colors to be printed and
measured during calibration, wherein the colors may be chosen depending
on the application. Spec. 2:1–5.
Independent claim 1 is illustrative:
1. A method of a system comprising a hardware processor,
comprising:
receiving a plurality of sets of colorimetric values for different
colors obtained under respective different printing conditions,
wherein a first set of colorimetric values is obtained under a
first printing condition, and a second set of colorimetric values
is obtained under a second, different printing condition,
wherein a first colorimetric value of the first set and a
corresponding first colorimetric value of the second set are for a
first color, and a second colorimetric value of the first set and a
corresponding second colorimetric value of the second set are
for a second, different color;
selecting a subset of the different colors according to color
differences between corresponding colorimetric values of the
plurality of sets, the color differences comprising a first color
difference based on the first colorimetric values of the first and
second sets, and a second color difference based on the second
colorimetric values of the first and second sets;
causing printing, using a printer, of a color calibration pattern
comprising the subset of the different colors;
determining a set of colorimetric values from the plurality of
sets of colorimetric values based on a measurement of the
printed color calibration pattern; and
calibrating the printer using the printed color calibration pattern
and the determined set of colorimetric values.
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Claims App. i. Claims 11 and 23 recite, respectively, a device and a storage
medium having similar limitations; dependent claims 2–10, 16–22, and 24
incorporate the limitations of either claim 1, 11, or 23. Id. at i–vii.
REFERENCES
Name Reference Date
Klassen US 2007/0002344 A1 Jan. 4, 2007
Morovic et al. (“Morovic”) US 2016/0155032 A1 June 2, 2016
REJECTIONS
In the Answer, the Examiner states that claims 23 and 24 “are rejected
for the same reasons and rationale as provided above for claims 11 and 16
respectively.” Ans. 15. The Examiner states that Appellant was informed of
this rejection in the Advisory Action. Id. We take this statement into
account in identifying the rejections under appeal.
Claims 1–11 and 16–24 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
Claims 1–9, 11 and 23 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by, or in the alternative, obvious under 35 U.S.C. § 103 over
Klassen.
Claim 10 is rejected as obvious under 35 U.S.C. § 103 over Klassen in
view of Morovic.
OPINION
I. Written Description
With respect to claims 1–11 and 23, the Examiner points to terms
“subset of the different colors” and “second color difference” as being new
matter because they are not found in the Specification as filed. Final Act. 4.
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With respect to claims 16–22 and 24, the Examiner points to terms such as
“subset of the different colors,” “multiple sets of colorimetric values,”
“variances in color differences,” “second color difference,” as being new
matter because they are not found in the Specification as filed. Id. The
Examiner further states that because of those terms, it is “impossible for one
of ordinary skill in the art to reasonably ascertain” what is being claimed in
new claims 16–22 and 24, such that a meaningful examination may be
performed. Final Act. 4–5.
Appellant argues that the Examiner improperly requires that the
claims use the exact terms from the Specification, whereas claimed subject
matter need not be described using the same terms in the disclosure to satisfy
the description requirement. Appeal Br. 7. We address each limitation in
turn.
1. Claims 1–11 and 23
Appellant points to numerous specific portions of the Specification to
show written description support for a “subset of the different colors,”
including:
The executable instructions . . . select a number S of device
colors, S being a number which a user may set. This number S
may be low to provide a fast calibration, or higher to provide a
more accurate calibration. The S device colors are selected
according to the color differences between corresponding
colorimetric values of the plurality of sets.
Id. (citing Spec. 3:30–34).
We are persuaded by Appellant that the term “subset of the different
colors” is adequately described. The Examiner has not provided reasoning
other than lack of the exact phrasing in the Specification. However,
Appellant has pointed to description of the use of a number S of different
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colors, where S is less than all device colors; i.e., a subset of different colors.
Accordingly, we do not agree that the claim term “subset of the different
colors” lacks sufficient written description under § 112(a).
With respect to “second color difference,” Appellant points to
description of “computing the color difference between each colorimetric
value [of each set] with the corresponding colorimetric values [of other
sets].” Appeal Br. 8. Lacking any specific reasoning from the Examiner to
the contrary, we are persuaded that this description fairly supports a “second
color difference.” Accordingly, we are persuaded that the Examiner errs in
rejecting claims 1–11 and 23 for lack of written description.
2. Claims 16–22 and 24
For claims 16–22 and 24, the Examiner points to the additional terms
of “multiple sets of colorimetric values” and “variances in color
differences.” Final Act. 4. The Examiner further points to “selecting the
first color and not selecting the second color based on the comparing,” as
lacking written description because it is a negative limitation newly added.
Ans. 18.
With respect to “multiple sets of colorimetric values,” Appellant
points to description of a plurality of sets of colorimetric values. Appeal
Br. 9 (citing Spec. 2:25–32, 3:17–21). Appellant argues that this provides
clear support for the claimed phrase. Id. Because the Examiner has not
provided reasoning other than lack of the exact phrasing in the Specification,
and Appellant has pointed to description that would support the claimed
phrase, we do not agree that the claim term “multiple sets of colorimetric
values” lacks sufficient written description under § 112(a).
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With respect to “variances in color differences,” Appellant points to
description of the standard deviation between colorimetric values. Id. at 9–
10 (citing Spec. 4:20–24 (“The statistical parameter may be the standard
deviation which will be computed, for each device color, between all the
colorimetric values which correspond to this device color”)). Appellant
argues that the described standard deviation would be recognized by one
having ordinary skill in the art as a variance, and therefore, the
Specification’s description of a standard deviation between colorimetric
values provides support for the claimed “variances in color differences.” Id.
The Examiner finds the cited language to discuss a deviation
computed for each color, whereas the claim requires color differences
between corresponding colorimetric values. Ans. 18. Appellant addresses
this finding by pointing out that the previously cited description states that
the standard deviation is taken of “colorimetric values,” thus meeting the
language of the claim. Reply Br. 7.
We find Appellant’s argument persuasive to show support for the
claimed phrase. Thus, we do not agree that the claim term “variances in
color differences” lacks written description support.
With respect to “selecting the first color and not selecting the second
color based on the comparing,” Appellant points to description of selecting
two colors from among three color choices. Reply Br. 8 (citing Spec. 9:19–
23). Because the Examiner has not provided reasoning other than lack of the
exact phrasing in the Specification and the use of a negative limitation, and
Appellant has pointed to description that would support the claimed phrase,
we do not agree that the claim term “selecting the first color and not
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selecting the second color based on the comparing” lacks sufficient written
description under § 112(a).
Consequently, we reverse the Examiner’s written description rejection
of claims 1–11 and 16–24.
II. Anticipation/Obviousness
Claim(s) 1–9, 11, and 23 is/are rejected as anticipated under 35 U.S.C.
102(a)(1) by, or as obvious under 35 U.S.C. 103 over, Klassen. Final Act. 6;
Ans. 15.
1. Contested claim language
Appellant first argues that Klassen neither discloses nor makes
obvious the claim limitation:
selecting a subset of the different colors according to color
differences between corresponding colorimetric values of the
plurality of sets of colorimetric values for different colors
obtained under respective different printing conditions, the color
differences comprising a first color difference based on the first
colorimetric values of the first and second sets, and a second
color difference based on the second colorimetric values of the
first and second sets.
together with the claim limitation:
wherein a first set of colorimetric values is obtained under a first
printing condition, and a second set of colorimetric values is
obtained under a second, different printing condition, wherein a
first colorimetric value of the first set and a corresponding first
colorimetric value of the second set are for a first color, and a
second colorimetric value of the first set and a corresponding
second colorimetric value of the second set are for a second,
different color.
Appeal Br. 11.
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2. Examiner’s Findings
For the “selecting” limitation, the Examiner points to Klassen’s
description of iterative printer calibration, in which “a subset of the colors
are printed and measured at each iteration.” Final Act. 7 (citing Klassen
¶ 116). The Examiner further points to Klassen’s description that “the
frequency with which a given color is revisited on subsequent iterations is
revisited in proportion to the variance experienced in the history of
measurements of that color.” Final Act. 7 (citing Klassen ¶ 116, Fig. 4, step
404). The Examiner finds Klassen’s description of “patches . . . generated
having sizes based on . . . variances” to teach “sets” of colorimetric values
when measured at each iteration. Ans. 20 (citing Klassen ¶ 100). The
Examiner further explains that the multiple color test patches that are printed
for each iteration correspond to one of the claimed plurality of sets, with the
totality of iterations providing the claimed plurality of sets. Ans. 22 (citing
Klassen Fig. 3, ¶¶ 94, 96. Further, Klassen measures the average color
values of the test patches. Final Act. 7. The Examiner further finds each
iteration of the printer calibration to constitute a “different printing
condition,” because “it is in the nature of color printers to vary, and that is
why they are constantly and iteratively being measured.” Ans. 20–21.
3. Appellant’s argument
Appellant argues that Klassen does not describe or teach selecting a
subset of different colors based on color differences between two sets
obtained under different printing conditions. Appeal Br. 12. Appellant
argues that Klassen does not describe two sets from which color differences
are obtained and used to select a subset for a further printing test, because
Klassen teaches selecting a subset of different colors based on a history of
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measurements. Id. at 12–14; Reply Br. 11–12, 14. Appellant further argues
that Klassen’s selecting is not based on differences between corresponding
colorimetric values, but instead, on the “variance” found in a history of
measurements. Appeal Br. 12–14; Reply Br. 12–14.
4. Analysis
a. Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). As described in detail below, we do not agree
with the Examiner that every element of claim 1 is found in Klassen.
The Examiner interprets Klassen’s description of revisiting a given
color in subsequent iterations of printer tests to be a selection of different
colors because not all colors are revisited. Final Act. 7. The Examiner
interprets Klassen’s subsequent iterations of printer tests to be different
printing conditions because each instance of printing would naturally vary
from a prior instance. Ans. 20–21. The Examiner interprets Klassen as
teaching that the selection is due to color differences between colorimetric
values of a plurality of sets because Klassen describes, “the frequency with
which a given color is revisited is in proportion to the variance experienced
in the history of measurements in that color.” Final Act. 7 (citing Klassen
¶ 116).
However, Klassen describes “variance” as σ2, where σ is the
distribution of N measurements of data. Klassen ¶ 96. Klassen’s variance,
as the square of a distribution of N measurements of color data, does not
fairly describe simple differences between colorimetric values as claimed.
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Additionally, the frequency of revisiting a given color, which the Examiner
relates to the manner of selecting a subset of colors, is stated in Klassen to
be “in proportion to the variance,” not equal to the variance. Klassen ¶ 116.
Consequently, Klassen’s iterative calibration does not fairly describe that a
subset of colors is selected based on “the claimed color differences
comprising a first and a second color difference based on respective and
second colorimetric values of the first and second sets,” as recited in claim 1.
Further, Klassen’s historical measurements do not describe two sets of
data, but instead N sets of data. Claim 1 requires that the subset of colors to
be printed for testing is selected according to color differences from values
of two sets. For anticipation, it is not enough that the measurements of
Klassen could be practiced such that N could be two; anticipation requires
some description in Klassen, either explicit or inherent, of N being two. The
Examiner has not pointed to any such description in Klassen, either explicit
or inherent. Nor does the Examiner find that Klassen’s use of a standard
deviation of a distribution of N data points necessarily requires computing a
difference between any two data points to disclose the claimed differences in
colorimetric values between two sets of data. Thus, the Examiner has not
shown that all elements of claim 1 are disclosed in Klassen.
In the Answer, the Examiner points to discussion in the prior art that
calibration is performed in an iterative manner such that parameters can be
changed according to the measurements in order to make corrections.
Ans. 19, 21 (citing US 2016/0078324 to Am). “To serve as an anticipation
when the reference is silent about the asserted inherent characteristic, such
gap in the reference may be filled with recourse to extrinsic evidence [to
show that] the missing descriptive matter is necessarily present in the thing
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described in the reference, and that it would be so recognized by persons of
ordinary skill.” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264,
1268 (Fed. Cir. 1991). However, the Examiner’s discussion does not
provide the description lacking in Klassen; i.e., selecting a subset of
different colors based upon color differences based on colorimetric values of
first and second sets. Consequently, the Examiner’s recourse to knowledge
in the prior art is insufficient to demonstrate that Klassen inherently
describes the claim features not explicitly described.
For the foregoing reasons, we determine that the Examiner has not
shown Klassen anticipates claim 1. Because the Examiner relies on the
same reasoning for the anticipation rejections of claims 2–9 and 11, we
further determine that the Examiner has not shown Klassen anticipates
claims 2–9 and 11. Accordingly, we do not sustain the Examiner’s
anticipation rejection of claims 1–9 and 11.
b. Obviousness
Although the Examiner relies upon obviousness as an alternative to
anticipation, the Examiner nowhere provides any reasoning as to how
Klassen would make obvious the claimed invention if Klassen does not
anticipate the claimed invention. Critically, the Examiner does not explain
how Klassen’s historical variance σ2 would make obvious color differences
based on colorimetric values of first and second sets in the claimed manner.
With respect to the obviousness of using two sets of data (as claimed)
in view of Klassen’s teaching of N sets of data, we note that Klassen states
“it is better to average more data points where the data is noisier,” and that
“the underlying objective is to calculate more data for test patches where
noise is present,” which indicates the use of more, not fewer, sets of data.
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Klassen ¶ 96. In the absence of any reasoning to support the Examiner’s
obviousness contention, and Klassen’s indication that using fewer data
points is not the “better” option, we do not sustain the obviousness rejection
of claim 1, or of claims 2–9 and 11 rejected on the same grounds. Nor do
we sustain the obviousness rejection of claim 10, rejected additionally over
Morovic, because the combination of Morovic and Klassen still lacks the
teaching found missing in the rejection over Klassen.
CONCLUSIONS
For the above-described reasons, we reverse: the Examiner’s written
description rejection of claims 1–11 and 16–24; the Examiner’s anticipation
rejection of claims 1–9, 11, and 23; and the Examiner’s obviousness
rejection of claims 1–11 and 23.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–11, 16–
24
112(a) Written Description 1–11,
16–24
1–9, 11,
23
102(a)(1) Klassen 1–9, 11,
23
1–9, 11,
23
103 Klassen 1–9, 11,
23
10 103 Klassen, Morovic 10
Overall
Outcome
1–11,
16–24
REVERSED