I.
`
`MANDATORY NOTICES
`
`A. Real Party in Interest
`
`
`
`Printing Industries of America (“Petitioner”) is a real
`
`party-in-interest and submits this Petition for Inter Partes
`
`Review (“Petition”) of claims 1-14 of U.S. Patent No. 6,611,349
`
`(the “’349 patent”) (Ex. 1101). Additional real parties-in-
`
`interest herein are identified in Appendix A.
`
`
`B. Related Matters
`
`
`
`The litigation matters listed in Appendix B hereto would
`
`affect or could be affected by a decision in this proceeding.
`
`Petitioner is not a party to any of the lawsuits listed in
`
`Appendix A but has an interest in the outcome of the lawsuits.
`
`In all of the lawsuits listed in Exhibit B, where CTP
`
`Innovations LLC (“CTP”) is identified as plaintiff, CTP has
`
`asserted infringement of the ‘349 patent and U.S. Patent No.
`
`6,738,155 (“the ‘155 patent”) against the named defendants. The
`
`‘349 and ‘155 patents disclose the same subject matter but claim
`
`different subject matter. A second petition for inter partes
`
`review of the ‘155 patent (claims 1-20) is being filed by
`
`petitioner.
`
`Counsel
`
`Lead Counsel: John M. Adams (Registration No. 26,697)
`
`Back-up Counsel: Lawrence G. Zurawsky (Registration No. 22,776)
`
`
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`1
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`

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`C. Service Information
`
`Email: paip.law@verizon.net
`
`Post and hand delivery address: Price & Adams, P.C.,
`
`4135 Brownsville Road, P.O. Box 98127, Pittsburgh, PA 15227
`
`Telephone: 412-882-7170
`
`Facsimile: 412-884-6650
`
`
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`
`
`
`Petitioner certifies pursuant to Rule 42.104(a) that the
`
`patent for which review is sought is available for inter partes
`
`review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the patent claims
`
`on the grounds identified in this Petition.
`
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2),
`
`Petitioner challenges claims 1-14 of the ‘349 patent (Ex. 1101),
`
`and requests that each challenged claim be cancelled.
`
`A. Prior Art Patent Documents
`
`
`
`Petitioner relies upon the following patent documents:
`
`1. U.S. Patent No. 6,119,133 (“Nusbickel et al.;” Ex. 1103)
`
`which issued on September 12, 2000 and is prior art under
`
`35 U.S.C. § 102(e).
`
`
`
`2
`
`

`

`2. U.S. Patent No. 7,242,487 (“Lucivero et al.”; Ex. 1106)
`
`which issued on July 10, 2007 and is prior art under 35
`
`U.S.C. § 102(e).
`
`3. U.S. Patent No. 5,634,091 (“Sands et al.”; Ex. 1107) which
`
`issued on May 27, 1997 and is prior art under 35 U.S.C. §
`
`102(b).
`
`4. European Patent Application No. EP0878303 (“Benson et al.;
`
`Ex. 1108) which was published on November 18, 1998 and is
`
`prior art under 35 U.S.C. § 102(e).
`
`5. European Patent Application No. EP0920667 (“Dorfman et
`
`al.”; Ex. 1115) which was published on June 9, 1999 and is
`
`prior art under 35 U.S.C. § 102(e).
`
`
`
`Of the above listed patents, only Nusbickel et al. was cited
`
`and applied by the Examiner during prosecution of the ‘349 patent.
`
`Nusbickel et al. is presented here in a new light.
`
`
`
`1.
`
`B. Prior Art Non-Patent Documents
`
`Petitioner relies upon the following non-patent documents:
`
`The Seybold Report on Publishing Systems Vol. 27, No. 4,
`Oct. 27, 1997 (Ex. 1109)
`
`
`2. Adams II et al., “Computer-to-Plate” Automating the
`Printing Industry”, GAFT, 1996 (Ex. 1110)
`
`
`3. Aldus Corporation, “OPI Open Prepress Interface
`Specification 1.3”, 1993 (Ex. 1111)
`
`
`4. Andersson et al., PDF Printing and Publishing,
`Micro Publishing Press 1997 (Ex. 1112)
`
`
`
`
`
`3
`
`

`

`5. The Seybold Report on Publishing Systems, Vo. 26,
`No. 20, July 21, 1997 (Ex. 1113)
`
`
`6. Zilles, “Using PDF for Digital Data Exchange”, TAGA
`Proceedings, Technical Association of the Graphic
`Arts, 1997 (Ex. 1114)
`
`
`
`None of the above non-patent documents were applied by the
`
`Examiner during prosecution of the ‘349 patent.
`
`
`
`1. Grounds of Challenge
`
`Petitioner requests cancellation of claims 1-14, the
`
`challenged claims, as unpatentable under 35 U.S.C. §§ 102 and
`
`103. This petition submits grounds showing that there is a
`
`reasonable likelihood that Petitioner will prevail with respect
`
`to at least one of the challenged claims and that each
`
`challenged claim is not patentable. See 35 U.S.C. § 314(a).
`
`IV. LEGAL PRINCIPLES
`
`The challenged claims are anticipated and/or obvious under
`
`35 U.S.C. §§ 102 and 103, respectively. “To anticipate a claim,
`
`a prior art reference must disclose every limitation of the
`
`claimed invention, either explicitly or inherently.”
`
`See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
`
`1997).
`
`Even if the certain claims are not anticipated under 35
`
`U.S.C. § 102, the claims are invalid if they would have been
`
`obvious. In KSR, the Supreme Court addressed the issue of
`
`
`
`4
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`

`

`obviousness and held “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)
`
`Based on the prior art described in this petition, it is
`
`clear that the challenged claims are either anticipated or at
`
`least are merely a predictable combination of old elements that
`
`are used according to their established functions.
`
`V. CLAIM CONSTRUCTION
`
`A claim subject to inter partes review is given its
`
`“broadest reasonable construction in light of the specification
`
`in which it appears.” 37 C.F.R. §42.100(b). The broadest
`
`reasonable construction is the broadest reasonable
`
`interpretation of the claim language. See In Re Yamamoto, 740
`
`F.2d 1569, 1572 (Fed. Cir. 2004). Any claim term which lacks a
`
`definition in the specification is given the ordinary and
`
`customary meaning the term would have to a person skilled in the
`
`art. Such terms have been held to require no construction.
`
`Biotech Biologische Naturverpackungen GmbH & Co. KG v. Biocorp,
`
`Inc. 249 F.3d. 1341, 1349 (Fed. Cir. 2001).
`
`Solely for purposes of this proceeding, the following
`
`discussion proposes constructions of certain claim terms and
`
`identifies support for these constructions. Any claim terms not
`
`included in the following discussion are to be given their
`
`
`
`5
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`

`

`broadest reasonable interpretation in light of the specification
`
`as commonly understood by those of ordinary skill in the art.
`
`Moreover, should the Patent Owner contend that the claims
`
`have a construction different from their broadest reasonable
`
`construction in order to avoid the prior art, the appropriate
`
`course is for the Patent Owner to seek to amend the claims to
`
`expressly correspond to its contentions in this proceeding. See
`
`77 Fed. Reg. 48764 col. 2, ll. 53-61 (Aug. 14, 2012).
`
`A. The term “end user facility”
`
`Independent claims 1, 2, and 3 recite the term “end user
`
`facility”. Patent Owner has acted as its own lexicographer and
`
`has defined “end user facility” as providing “page building
`
`operations allowing the design and construction of pages from
`
`images, text, and data available via a communication network.”
`
`‘349 patent, col. 2: 55-58; Ex. 1101.
`
`B. The term “communication network”
`
`Independent claims 1-4, and 10 and dependent claim 12
`
`recite the term “communication network”. Patent owner has acted
`
`as its own lexicographer and has defined “communication network”
`
`as both a private network 160 (ATM network) and a public network
`
`190 (the Internet) of subscribers and non-scribers to a printing
`
`and publishing system connected to central service facility 105.
`
`‘349 patent, col. 4: 59-61, col. 5: 9-13; Ex. 1101.
`
`
`
`
`
`
`
`6
`
`

`

`
`
`C. The term “central service facility”
`
`Independent claims 1-3 recite the term “central service
`
`facility”. Patent Owner has acted as its own lexicographer and
`
`has defined “central service facility” as providing “storage,
`
`file processing, remote access, and content management
`
`operations. ‘349 patent, col. 2: 58-60; Ex. 1101.
`
`D. The term “printing company facility”
`
`Independent claims 1-3 recite the term “printing company
`
`facility”. The Patent Owner has acted as its own lexicographer
`
`and has defined “printing company facility” as providing
`
`“printing operations for producing a printing plate from said
`
`plate-ready file.” ‘349 patent, col. 2: 64-65; Ex. 1101.
`
`E. The term “communication routing device”
`
`Independent claims 1 and 3 recite the term “communication
`
`routing device”. Patent Owner has acted as its own
`
`lexicographer and has defined “communication routing device” as
`
`“routers and switches... included at central service facility
`
`105, end user facility 300, and printing company facility 400.”
`
`‘349 patent, col. 4: 35-40; Ex. 1101.
`
`F. The term “plate-ready file”
`
`Independent claims 1-4 and 10 recite the term “plate-ready
`
`file”. The Patent Owner has defined “plate-ready file” as
`
`having “a file format capable of high resolution and is ready
`
`
`
`7
`
`

`

`for creation of a printing plate.” ‘349 patent, col. 2: 62-65;
`
`Ex. 1101. The proposed construction is “a file containing pages
`
`designed from images, texts, and data converted to a digital
`
`file for producing a printing plate.”
`
`G. The term “thin Postscript file”
`
`Independent claim 4 defines the step of “creating a thin
`
`Postscript file from the page layout designed by the remote
`
`user. The proposed construction is a digital file containing
`
`low resolution images, graphics, texts, and art. ‘349 patent,
`
`col. 13: 18-21; col. 2: 55-58; Ex. 1101.
`
`H. The term “fat Postscript file”
`
`Independent claim 4 recites the step of “parsing said thin
`
`Postscript file to extract data associated with low resolution
`
`images and replace with high resolution data, thereby forming a
`
`fat Postscript file,” and “creating a portable document format
`
`(PDF) file from said fat Postscript file,”. The proposed
`
`construction is a digital file containing high resolution
`
`images, graphics, texts, and art. ‘349 patent, col. 13: 24-26;
`
`col. 2: 55-58; Ex. 1101.
`
`VI. OVERVIEW OF THE ‘349 PATENT
`
`A. Brief Description
`
`The patent application for the ‘349 patent (Ex. 1101) was
`
`filed in the U.S. Patent and Trademark Office on July 30, 1999.
`
`The ‘349 patent describes a system and method for communicating
`
`
`
`8
`
`

`

`and managing printing and publishing services. The components
`
`of the system provide for remote printing and publishing
`
`services in real time where system components are installed at
`
`an end user facility, a printing company facility, and a central
`
`service facility. The components include hardware, firmware,
`
`and software components which enable the exchange, management
`
`and adaptation of data for the printing and publishing services
`
`provided. ‘349 patent, col. 2: 29-39; Ex. 1101.
`
`
`
`The ‘349 patent identifies one embodiment of a printing and
`
`publishing system that generates a printing plate-ready file
`
`from data provided remotely in real time using a communication
`
`network. The printing and publishing system includes a central
`
`service facility and an end user facility and/or a printing
`
`company facility. The end user facility provides page building
`
`operations. The central service facility provides storage, file
`
`processing, remote access, and content management operations.
`
`File processing operations include generating a plate-ready file
`
`from pages designed at the user facility. The plate-ready file
`
`has a file format capable of high resolution and is ready for
`
`creation of a printing plate. The printing company facility
`
`provides printing operations for producing a printing plate from
`
`the plate-ready file. Id. at col. 2: 50-65; Ex. 1101.
`
`B. Summary of the Prosecution History of the ‘349 Patent
`
`
`
`9
`
`

`

`In the first Office action (Ex. 1102) dated January 29,
`
`2003 issued by the Examiner, original independent claim 1 and
`
`dependent claims 3 and 7 were rejected as being anticipated
`
`under 35 U.S.C. §102(e) by U.S. Patent No. 6,119,133 (Nusbickel
`
`et al.) (Ex. 1103). Original dependent claims 5, 8, and 9 were
`
`rejected under 35 U.S.C. §103(a) as being unpatentable for
`
`obviousness over Nusbickel et al. in view of the Well Known
`
`Prior Art 2144.03 (Official Notice). Office action dated Jan.
`
`29, 2003 at 4, 5; Ex. 1102. Original dependent claims 2, 4, and
`
`6 were objected to as being dependent upon a rejected claim but
`
`were indicated as being allowable if rewritten in independent
`
`form.
`
`
`
`The Examiner indicated that original claims 10-20 (issued
`
`claims 4-14) were allowed. Original claim 10 was an independent
`
`claim, and claims 11-14 depended from claim 10.
`
`
`
`Of the five method steps recited in original claim 10
`
`(issued claim 4), the Examiner indicated that claim 10 is
`
`allowed for the reason that the prior art does not teach or
`
`suggest in claimed combination the steps of “...parsing said
`
`thin Postscript file to extract data associated with low
`
`resolution images and replace with high resolution data...,
`
`creating a portable document format file from the fat Postscript
`
`file and converting said PDF file to a file in plate-ready
`
`format.” Id at 5; Ex. 1102. However, each primary prior art
`
`
`
`10
`
`

`

`presented below shows that the above-identified method steps
`
`recited in claim 10 as being patentable were known in the art
`
`for generating a plate-ready file prior to 1999.
`
`
`
`Original claims 11-15 (issued claims 5-9) depended from
`
`claim 10. The Examiner did not indicate that any of the method
`
`steps recited in claims 11-15 were patentable over the prior
`
`art. The sole basis for patentability of claims 11-15 was that
`
`they depended from allowed claim 10. Therefore, the method
`
`steps defined by dependent claims 11-15 are not given any
`
`patentable weight. Patentability of claim 10 was based on the
`
`recited combination of the “parsing”, “creating”, and
`
`“converting” method steps. However, as demonstrated by the
`
`prior art presented below the method steps defined by originally
`
`claims 11-15 were known in methods of generating a plate-ready
`
`file by 1999.
`
`
`
`Original claims 16-20 (issued claims 10-14) were also
`
`allowed in which claim 16 (issued claim 10) was an independent
`
`claim. Claims 17-19 depended from claim 16. Claim 20 depended
`
`from claim 19 which in turn depended from claim 16.
`
`
`
`Claim 16 was allowed for the reason that the prior art does
`
`not teach or suggest in claimed combination the method steps:
`
`
`
`...generating low resolution files
`
`corresponding to high resolution files,
`
`providing said low resolution files to a
`
`
`
`11
`
`

`

`remote client for the designing of a page
`
`layout via communication network...
`
`generating a plate-ready file from the page
`
`layout designed by said remote client.
`
`Id. at 5, 6; Ex. 1102
`
`
`
`As demonstrated by the prior art presented below, the above
`
`method steps recited in claim 16 (issued claim 10) are regarded
`
`as being the basis for patentability of claim 16 and were known
`
`in methods for generating a plate-ready file prior to 1999.
`
`
`
`None of the method steps recited in dependent claims 17-20
`
`(issued claims 11-14) were identified by the Examiner as
`
`defining patentable subject matter over the prior art.
`
`Therefore, the method steps defined by dependent claims 17-20
`
`are not given any patentable weight. Furthermore, the prior art
`
`presented below discloses the method steps recited in dependent
`
`claims 17-20.
`
`
`
`In response to the Office action of January 29, 2003
`
`Applicants filed an Amendment dated April 29, 2003 (Ex. 1104) in
`
`which pending claims 1, 3, 5, and 7-9 were canceled without
`
`prejudice. Pending claims 2, 4, and 6 were amended in
`
`independent form. Pending claims 10-20 did not require any
`
`amendments because they were allowed.
`
`
`
`Even though claims 1, 3, and 7 were canceled, Applicants
`
`traversed the rejection based on anticipation by Nusbickel et
`
`
`
`12
`
`

`

`al. by arguing in the Remarks of the Amendment that Nusbickel et
`
`al. does not disclose “producing a printing plate from said
`
`plate-ready file”. Further, Nusbickel et al. describes
`
`publishing to web pages and there is no discussion or suggestion
`
`to the use of printing plates. All of the discussion in
`
`Nusbickel et al. relates to electronic publishing where use of
`
`printing plates is avoided. To expedite prosecution and have
`
`the allowed claims issue, Applicants canceled claims 1, 3, and 7
`
`without prejudice. Id. at 4; Ex. 1104.
`
`
`
`In canceling original claim 1 as being anticipated by
`
`Nusbickel et al., Applicants conceded that Nusbickel et al.
`
`disclosed all of the claim 1 elements of “an end user facility
`
`coupled to a communication network, ...” “a central service
`
`facility coupled to said communication network, ...” and “a
`
`printing company facility coupled to said communication network,
`
`...”.
`
`Notwithstanding Applicants’ argument transversing the
`
`Nusbickel et al. rejection, Applicants admit in the
`
`specification of the ‘349 patent that it is known in the art to
`
`produce a printing plate from a plate-ready file. ‘349 patent,
`
`col. 1: 36-40, 47-51; Ex. 1101.
`
`Nusbickel et al. is being used in this petition to show
`
`that the above elements recited in issued claims 1, 2, and 3 of
`
`the ‘349 patent application were known prior to 1999.
`
`
`
`13
`
`

`

`Furthermore as demonstrated by the prior art presented below,
`
`the limitation of “producing a printing plate from said plate-
`
`ready file” was known prior to 1999.
`
`In response to the rejection of pending claims 5, 8, and 9
`
`as being obvious over Nusbickel et al. in view of the Well Known
`
`Prior Art 2144.03 (Official notice), Applicants canceled claims
`
`5, 8 and 9 without prejudice and requested withdrawal of the
`
`rejection. However, Applicants traversed the rejection of
`
`claims 5, 8, and 9 by again arguing that Nusbickel et al. does
`
`not teach producing plates from plate-ready files, as required
`
`by claims 5, 8, and 9. Nevertheless, to expedite prosecution
`
`and have the allowed claims issue, Applicants canceled claims 5,
`
`8, and 9. Amendment dated April 29, 2003; p 8-9; Ex. 1104.
`
`
`
`For the reasons given above this argument is inconsistent
`
`with Applicants’ admission in the specification that this
`
`limitation is found in the prior art. ‘349 patent, col. 1: 36-
`
`40; 47-51; Ex. 1101.
`
`In response to the Examiner’s objection to pending claims
`
`2, 4, and 6, Applicants amended pending claims 2, 4, and 6 in
`
`independent form to include all the limitations of original
`
`claim 1. Id. at 3, 4; Ex. 1104.
`
`
`
`In response to Applicants’ amendment, the Examiner issued a
`
`Notice of Allowability (Ex. 1105) dated May 19, 2003. Claims 2,
`
`4, and 6, as amended, and originally filed claims 10-20 were
`
`
`
`14
`
`

`

`allowed. Notice of Allowability at 2; Ex. 1105. Pending claim
`
`2 was amended to include all the limitations recited in original
`
`claim 1 which limitations were identified by the examiner as
`
`being disclosed in Nusbickel et al. The Examiner indicated that
`
`claim 2 is allowed for the reason that the prior art does not
`
`teach or suggest the following limitation:
`
`
`
`wherein the end user facility further
`
`comprises a communication routing device
`
`coupling the end user facility to the
`
`communication network, a computer which
`
`performs page building operations, and a
`
`proofer which provides printed samples of
`
`pages.
`
`Id. at 2; Ex. 1105.
`
`
`
`None of the prior art references, with the exception of
`
`Nusbickel et al., discussed in this petition were before the
`
`Examiner during the prosecution of the ‘349 patent application.
`
`However, the prior art presented below discloses the very
`
`limitation that was the basis for patentability of pending claim
`
`2 (issued claim 1).
`
`
`
`Pending claim 4 originally depended from claim 1 and was
`
`also amended in independent form to include the limitations of
`
`claim 1 that were conceded by Applicants as being known before
`
`1999. The Examiner indicated that claim 4 was allowed for the
`
`
`
`15
`
`

`

`reason that the prior art does not teach or suggest in claim
`
`combination the limitation “... wherein said file processing
`
`further comprises performing open prepress interface
`
`operations.” Id. at 2; Ex. 1105.
`
`
`
`This limitation was the sole basis for patentability of
`
`claim 4 (issued claim 2). The remaining limitations recited in
`
`claim 4 were acknowledged as being disclosed by the prior art.
`
`However, the prior art presented below shows the very limitation
`
`that was found to be the basis for patentability of claim 4.
`
`
`
`Original dependent claim 6 (issued claim 3) was also
`
`amended in independent form to include the limitations of claim
`
`1 that were found to be within the prior art. The Examiner
`
`indicated that claim 6 is allowed for the reason the prior art
`
`does not teach or suggest in claimed combination the following
`
`limitation:
`
`
`
`“... wherein the printing customer
`
`facility further comprises a communication
`
`routing device coupling the printing company
`
`facility to the communication network, a
`
`computer which performs imposition
`
`operations, and a platesetter which exposes
`
`a printing plate.”
`
`Id. at 2; Ex. 1105.
`
`
`
`16
`
`

`

`However, as demonstrated by the prior art presented below
`
`the above limitation that served as the sole basis for
`
`patentability of claim 6 was known in printing and publishing
`
`systems which generate a printing plate-ready file prior to
`
`1999.
`
`The prosecution history of the application for the ‘349
`
`patent indicates that Nusbickel et al. discloses all the
`
`elements recited in issued claims 1-3, except for the elements
`
`defined in original claims 2, 4, and 6 considered to be
`
`patentable. The elements defined in original claims 2, 4, and 6
`
`became the basis for allowance of issued claims 1-3. However,
`
`the prior art presented below shows that the material
`
`limitations of claims 1-3 were known before 1999.
`
`VII. THE CHALLENGED CLAIMS ARE NOT PATENTABLE
`
`
`
`The challenged claims recite features long known by
`
`clinicians who use printing and publishing systems to generate a
`
`printing plate-ready file. The structure and method steps
`
`defined in the challenged claims all have known functions that
`
`perform in expected ways. Based on the prior art described
`
`below, the claim limitations perform functions with predictable
`
`results. There is no unexpected result on which to base the
`
`patentability of the claims.
`
`
`
`17
`
`

`

`
`
`Pursuant to Rule 42.104(b)(4)-(5) the specific grounds
`
`identified below show in detail the prior art disclosures that
`
`render the challenged claims anticipated and obvious.
`
`A. Independent Claim 1 is Not Patentable
`
`1. Claim 1 is Anticipated by Lucivero et al. under 35 U.S.C.
`§102(e).
`
`Lucivero et al. (Ex. 1106) relates to an imagesetting and
`
`electronic prepress system. The system includes inputting,
`
`tracking, processing, queuing, storing, editing and printing of
`
`raster or bit map data, and a method for providing a nearly
`
`continuous output of raster images to a plurality of output
`
`devices, such as, imagesetters, platemakers, on-press imagers,
`
`digital proofers, digital color printers and the like. Lucivero
`
`et al. col. 1: 16-25; Ex. 1106.
`
`The prepress system operates within a standard network
`
`environment. For example, the system includes RIPs configured to
`
`output compressed raster data over a standard network interface.
`
`Id. at col. 5: 41-45; Ex. 1106. Jobs may also be exported via a
`
`modem connection to a remote PrintDrive system using the TCP/IP
`
`protocol. Id. at col. 24: 52-57; Ex. 1106.
`
`As shown in Figure 2 of Lucivero et al. a prepress system
`
`includes a plurality of RIPs 34 connected to network 35. The
`
`network 35 may further include one or more front-ends 40, one or
`
`more print driver 41, one or more servers 42 for storing image and
`
`
`
`18
`
`

`

`other data files, a proofer 43 or other output device 44 and
`
`another computer system 45 which may be used for system
`
`administration. The network connected components listed above and
`
`other network connected components may be local or remote to the
`
`print drivers 41. The print drivers 41 may also be local or remote
`
`with respect to each other. Id. at col. 8: 29-40; Ex. 1106.
`
`An output device is selected from the group consisting of a
`
`printer, an imagesetter, a platemaker, a digital proofer, a storage
`
`device and a raster image processor. Id. at col. 7: 60-63; col. 8:
`
`30-35; Ex. 1106.
`
`Figures 32-33 of Lucivero et al. illustrate how detailed
`
`information about the content of the job, including page,
`
`separation, and a thumbnail sketch of the job is provided. The
`
`first time that a thumbnail is requested, the PrintDrive server
`
`compiles a low resolution representation of high Resolution data
`
`stored for each separation. Id. at col. 21: 53-63; Ex. 1106.
`
`Lucivero et al. discloses a print drive and system operating
`
`within a standard network environment. At least one computer
`
`terminal or front-end 6 is used for creating, editing or otherwise
`
`preparing image data for printing by an imagesetter or platesetter
`
`for eventual image reproduction by a printing press using a
`
`printing plate. Id. at col. 7: 56-67, col. 8: 1-2; Ex. 1106.
`
`Thus as illustrated below, Lucivero et al. anticipates claim
`
`1 because it discloses all of the claim limitations.
`
`
`
`19
`
`

`

`Claim
`
`Lucivero et al. (Ex. 1106)
`
`1. A printing and publishing system
`which generates a printing plate-
`ready file from data provided
`remotely in real time using a
`communication
`network,
`the
`printing and publishing system
`comprising:
`
`
`
`an end user facility coupled to
`a communication network, the
`end user facility providing
`page building operations, the
`page
`building
`operations
`including
`the
`design
`and
`construction of pages from
`images,
`text,
`and
`data
`available
`via
`said
`communication network;
`
`
`
`a central service facility
`coupled to said communication
`network, the central service
`facility providing storage,
`file processing, remote access,
`and
`content
`management
`operations;
`
`
`
`Lucivero et al. col. 1: 16-25;
`col. 5: 41-45; col. 6: 1-13, 26-
`37; col. 24: 52-57; col. 8: 28-
`40; col. 13: 19-24.
`
`Lucivero et al. col. 2: 33, 53-64;
`col. 5: 11-17, 41-45, 50-60; col.
`6: 26-37; col. 7: 54-67; col. 8: 1-
`2; Fig. 1.
`
`Lucivero et al. col. 2: 65-67; col.
`3: 1-9; Fig. 1; col. 7: 54-67; col.
`8: 23-39 55-67, Fig. 2; col. 7: 54-
`67; col. 9: 1-29; Fig. 3.
`
`Lucivero et al. col. 4: 31-45; col.
`7: 58-67; col. 8: 1-21; col. 8: 41-
`54; col. 4: 32-45.
`
`Lucivero et al. col. 21: 53-63; col.
`7: 58-63; col. 8: 43-49.
`
`the file processing operations
`including generating a plate-
`ready file from pages designed
`at said end user facility,
`
`said plate-ready file having a
`file format capable of high
`resolution
`and
`ready
`for
`creation of a printing plate;
`
`a printing company facility
`coupled to said communication
`network, the printing company
`facility providing printing
`operations,
`the
`printing
`operations including producing
`
`Lucivero et al. col. 1: 8-15; col.
`8: 41-54; col. 9: 5-11; 29-59; col.
`7: 58-63; col. 8: 43-49.
`
`
`
`20
`
`

`

`a printing plate from said
`plate-ready file;
`
`and wherein the end user
`facility further comprises a
`communication routing device
`coupling the end user facility
`to the communication network, a
`computer which performs page
`building operations, and a
`proofer which provides printed
`samples of pages.
`
`
`Lucivero et al. col. 5: 11-17; col.
`7: 63-67; col. 8: 1-2; 55-59; 60-
`67; col. 9: 1-4; col. 8: 49-54; col.
`11: 60-64; col. 13: 38-44.
`
`
`2. Claim 1 is obvious over Nusbickel et al. in view of
`Lucivero et al. under 35 U.S.C. §103(a).
`
`Regarding claim 1, Nusbickel et al. was relied upon by the
`
`
`
`Examiner in the rejection of the claim during the prosecution of
`
`the application for the ‘349 patent for the disclosure of all the
`
`limitations of claim 1, except for the limitation:
`
`“wherein the end user facility further
`
`comprises a communication writing device coupling
`
`the end user facility to the communication network,
`
`a computer which performs page building operations,
`
`and a proofer which provides printed samples of
`
`pages.”
`
`
`
`This was the sole limitation in issued claim 1 not found by
`
`the Examiner in Nusbickel et al. and became the basis for allowance
`
`of claim 1. The patents and prior art publications cited in this
`
`petition disclose the subject matter that meet the limitations of
`
`
`
`21
`
`

`

`issued claim 1. Therefore, claim 1 is not patentable over the
`
`cited combination of Nusbickel et al. and Lucivero et al.
`
`
`
`Specifically, Lucivero et al. discloses the above critical
`
`claim limitations recited in original claim 2, as amended.
`
`Lucivero et al., col. 5; 11-17, 41-45, 50-60; col. 6: 26-37; Ex.
`
`1106.
`
`
`
`As set forth above, Lucivero et al. discloses the limitations
`
`of issued claim 1 which the Examiner identified as being the basis
`
`for patentability. Notice of Allowance dated May 19, 2003; Ex.
`
`1105. It would have been obvious to one of ordinary skill in the
`
`art to combine the end user facility disclosed in Lucivero et al.
`
`with the printing and publishing system disclosed in Nusbickel et
`
`al. at least because both of the patents disclose printing and
`
`publishing systems for generating a printing plate-ready file from
`
`data.
`
`
`
`As illustrated below, all of the limitations of claim 1 are
`
`obvious based on the combination of Nusbickel et al. in view of
`
`Lucivero et al.
`
`Claim
`
`Nusbickel et al. (Ex.1003) in view
`
`of Lucivero et al. (Ex.1006)
`
`1. A printing and publishing system
`which generates a printing plate-
`ready file from data provided
`remotely in real time using a
`communication
`network,
`the
`printing and publishing system
`comprising:
`
`Nusbickel et al., col. 2: 65-67;
`col. 3: 1-6
`
`Lucivero et al. col. 1: 16-25; col.
`5: 41-45; col. 6: 1-13, 26-37; col.
`24: 52-57; col. 8: 28-40; col. 13:
`19-24.
`
`
`
`22
`
`

`

`
`
`an end user facility coupled to a
`communication network, the end user
`facility providing page building
`operations, the page building
`operations including the design and
`construction of pages from images,
`text, and data available via said
`communication network;
`
`a central service facility
`coupled to said communication
`network, the central service
`facility providing storage,
`file processing, remote access,
`and
`content
`management
`operations;
`
`Nusbickel et al., col. 3: 50-60;
`col. 4: 16-46, Figs. 1, 2.
`
`
`Lucivero et al. col. 2: 33,53-64;
`col. 5: 11-17, 41-45, 50-60; col.
`6: 26-37; col. 7: 54-67; col. 8:
`1-2; Fig.1.
`
`Nusbickel et al., col. 3: 50-56;
`col.4: 7-16.
`
`
`Lucivero et al. col.2: 65-67;
`col. 3: 1-9; Fig.1; col. 7: 54-
`67; col. 8: 23-39; Fig. 2; col.
`7: 54-67; col. 9: 1-29; Fig. 3.
`
`
`
`the file processing operations
`including generating a plate-
`ready file from pages designed
`at said end user facility,
`
`
`Nusbickel et al., col. 5: 46-63,
`Fig. 5; col. 6: 34-44, Fig. 7.
`
`Lucivero et al. col. 4: 31-45; col.
`7: 58-67; col. 8: 1-21; col. 8: 41-
`54; col. 4: 32-45.
`
`Nusbickel et al., col.6: 44-62, Fig.
`8.
`
`Nusbickel et al., col. 6: 55-59.
`
`
`
`said plate-ready file having a
`file format capable of high
`resolution
`and
`ready
`for
`Lucivero et al. col. 21: 53-63; col.
`creation of a printing plate;
`7: 58-63; col. 8: 43-49.
`
`a printing company facility
`coupled to said communication
`network, the printing company
`facility providing printing
`operations,
`the
`printing
`operations including producing
`a printing plate from said
`plate-ready file;
`
`and wherein the end user
`facility further comprises a
`communication routing device
`coupling the end user facility
`to the communication network, a
`computer which performs page
`building operations, and a
`proofer which provides printed
`samples of pages.
`
`Lucivero et al. col. 1: 8-15; col.
`8: 41-54; col. 9: 5-11; 29-59, col.
`7: 58-63; col. 8: 43-49.
`
`Lucivero et al. col. 5: 11-17; col.
`7: 63-67; col. 8: 1-2; 55-59; 60-
`67; col. 9: 1-4; col. 8: 49-54; col.
`11: 60-64; col. 13: 38-44.
`
`
`
`23
`
`

`

`
`
`3. Claim 1 is Obvious over Nusbickel et al. in view of Sands
`et al. and Benson et al. under 35 U.S.C. §103(a).
`
`Sands et al. (Ex. 1107) discloses a digital page imaging (DPI)
`
`system for receiving customer transmitted technical document files
`
`produced on a desktop publishing package. The DPI system consists
`
`of a work station, modem and related telecommunication link, a
`
`photo typesetter and a software package for automatically imposing
`
`fl