IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`PRINTING INDUSTRIES OF AMERICA
`Petitioner
`
`v.
`
`CTP INNOVATIONS, LLC
`Patent Owner
`___________________________
`
`Case IPR2013-00474
`Patent 6,611,349
`___________________________
`
`CTP INNOVATIONS, LLC’S PRELIMINARY RESPONSE TO PETITION
`
`
`Filed on behalf of CTP Innovations, LLC
`
`By: W. Edward Ramage (Lead Counsel)
`Reg. No. 50,810
`Samuel F. Miller (Back-up Counsel)
`(pending pro hac vice admission)
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`Baker Donelson Center
`211 Commerce Street, Suite 800
`Nashville, Tennessee 37201
`Tel: (615) 726-5771
`Fax: (615) 744-5771
`Email: eramage@bakerdonelson.com
`smiller@bakerdonelson.com
`
`

`
`Case IPR2013-00474
`Patent 6,611,349
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. APPLICABLE LEGAL STANDARDS .......................................................... 2
`
`A.
`
`Institution of Inter Partes Review. ........................................................ 2
`
`B. Anticipation under § 102(b). ................................................................. 2
`
`C. Obviousness under § 103(a). ................................................................. 3
`
`III. ARGUMENT ................................................................................................... 5
`
`A.
`
`Petitioner Fails to Demonstrate a Reasonable Likelihood of
`Prevailing. .............................................................................................. 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`The Petition Cannot Assert That Claim 3 Of The ‘349
`Patent Is Indefinite. ..................................................................... 5
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claim 3 Of The ‘349 Patent Would Have Been
`Obvious. ...................................................................................... 5
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claim 6 Of The ‘349 Patent Would Have Been
`Obvious. ...................................................................................... 7
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claim 7 Of The ‘349 Patent Would Have Been
`Obvious. .................................................................................... 10
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claim 8 Of The ‘349 Patent Would Have Been
`Obvious. .................................................................................... 12
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claim 9 Of The ‘349 Patent Would Have Been
`Obvious. .................................................................................... 14
`
`The Petition Fails to Establish A Reasonable Likelihood
`That Claim 11 Of The ‘349 Patent Would Have Been
`Obvious. .................................................................................... 17
`
`
`
`(i)
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`Case IPR2013-00474
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`B.
`
`Petitioner Fails to Identify All Real Parties in Interest. ...................... 19
`
`IV. CONCLUSION .............................................................................................. 22
`
`
`
`(ii)
`
`
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`

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`Case IPR2013-00474
`Patent 6,611,349
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`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ...................................................................................... 3, 14, 17
`
`In re Arkley,
`455 F.2d 586 (C.C.P.A. 1972) .............................................................................. 3
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 4
`
`Inline Connection Corp. v. Earthlink, Inc.,
`684 F. Supp. 2d 496 (D. Del. 2010)...................................................................... 4
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Net MoneyIN, Inc. v. Verisign, Inc.,
`545 F.2d 1359 (Fed. Cir. 2008) ........................................................................ 2, 3
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ............................................................................ 4
`
`Oxford Gene Tech., Ltd. v. Mergen Ltd.,
`345 F. Supp. 2d 431 (D. Del. 2004)...................................................................... 4
`
`Perfect Web Technologies, Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) ............................................................................ 4
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................................................ 4
`
`Xerox Corp. v. 3Com Corp.,
`458 F.3d 1310 (Fed. Cir. 2006) ............................................................................ 2
`
`STATUTES
`
`35 U.S.C. § 102 .................................................................................................. 2, 3, 5
`
`35 U.S.C. § 103 .......................................................................................................... 3
`
`
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`(iii)
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`

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`Case IPR2013-00474
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`35 U.S.C. § 112 .......................................................................................................... 5
`
`35 U.S.C. § 311 .......................................................................................................... 5
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 ...................................................................................................... 2, 5
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100 ..................................................................................................... 2
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.8 ....................................................................................................... 19
`
`77 Fed. Reg. 48756, 48766 ........................................................................................ 2
`
`(iv)
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`
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`Case IPR2013-00474
`Patent 6,611,349
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`Patent Owner, CTP Innovations, LLC (“Patent Owner”), pursuant to 35
`
`U.S.C. § 313 and 37 C.F.R. § 42.107, submits its Preliminary Response to Printing
`
`Industries of America’s (“Petitioner”) Petition for Inter Partes Review of U.S.
`
`Patent No. 6,611,349 (“the ‘349 Patent”).
`
`I. INTRODUCTION
`
`
`
`Petitioner asserts in its Petition that the ‘349 Patent should be invalidated on
`
`the basis of anticipation and obviousness. Patent Owner intends to vigorously
`
`contest Petitioner’s assertions if the Board initiates an Inter Partes Review.
`
`However, for purposes of its preliminary response, Patent Owner submits that there
`
`are claims and grounds for which Petitioner has so clearly failed to carry its burden
`
`under the “reasonable likelihood” standard that the Board should not initiate an
`
`Inter Partes Review as to those claims and grounds.
`
`In addition, Petitioner is required to identify all real parties in interest to the
`
`Petition. Petitioner, who has nearly 10,000 members, has repeatedly made public
`
`statements in which it announces that it filed the Petition on behalf of all of its
`
`members. However, Petitioner has only identified 8 of its members as real parties
`
`in interest in the Petition. Patent Owner submits that the Board should require
`
`Petitioner to amend its Petition to list all members of its organization as required
`
`or, in the alternative, should dismiss the Petition in its entirety.
`
`
`
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`1
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`II. APPLICABLE LEGAL STANDARDS
`
`A.
`
`Institution of Inter Partes Review.
`
`
`
`In instituting an Inter Partes Review, the petitioner must show that there is a
`
`“reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a). In conducting its
`
`review, the Board should interpret claims using the broadest reasonable
`
`interpretation as understood by one of ordinary skill in the art and consistent with
`
`the disclosure. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766
`
`(Aug. 14, 2012); 37 C.F.R. § 42.100(b). There is a heavy presumption that a claim
`
`term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`B. Anticipation under § 102(b).
`
`
`
`Invalidity under Section 102 requires a showing that a single reference
`
`teaches every limitation of the claim. “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.” M.P.E.P. § 2131 (citing Verdegaal Bros.
`
`v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987)). The prior art
`
`reference must not only disclose all claim elements within the document’s “four
`
`corners,” Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1321 (Fed. Cir. 2006), it also
`
`must disclose those elements “arranged as in the claim.” Net MoneyIN, Inc. v.
`
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`Verisign, Inc., 545 F.2d 1359, 1369 (Fed. Cir. 2008). That is, the elements must be
`
`“arranged or combined in the same way as in the claim. “ Id. at 1370. Even slight
`
`differences between the prior art reference and the claim in question preclude a
`
`finding of anticipation. Id. at 1371. “[R]ejections under 35 U.S.C. Section 102 are
`
`proper only when the claimed subject matter is identically disclosed or described in
`
`the prior art.” In re Arkley, 455 F.2d 586, 587 (C.C.P.A. 1972). See also M.P.E.P.
`
`§ 2131.
`
`C. Obviousness under § 103(a).
`
`
`
`A patent is invalid under Section 103(a) if the “differences between the
`
`subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art.” 35 U.S.C. § 103(a). An obviousness
`
`inquiry requires considering the following four Graham factors: (1) the scope and
`
`content of the prior art; (2) the differences between the prior art and the claimed
`
`invention; (3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). See also KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007) (stating that the four Graham
`
`factors continue to define the controlling inquiry). The relevant inquiry is whether
`
`the petition has set forth “some articulated reasoning with some rational
`
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`underpinning to support the legal conclusion of obviousness. ” KSR Int’l Co., 550
`
`U.S. at 418.
`
`
`
`Determining the differences between the prior art and the claimed invention
`
`requires an element-by-element comparison of the claim elements with regard to
`
`the prior art. See, e.g., Oxford Gene Tech., Ltd. v. Mergen Ltd., 345 F. Supp. 2d
`
`431, 437 (D. Del. 2004); Inline Connection Corp. v. Earthlink, Inc., 684 F. Supp.
`
`2d 496, 523 (D. Del. 2010).
`
`
`
`The obviousness analysis also must present evidence of a motivation to
`
`combine or modify the prior art to arrive at the invention as claimed. See, e.g.,
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011); Ortho-
`
`McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364-65 (Fed. Cir.
`
`2008); In re Kahn, 441 F.3d 977, 986-88 (Fed. Cir. 2006). There must be “some
`
`rationale, articulation, or reasoned basis to explain why the conclusion of
`
`obviousness is correct.” In re Kahn, 441 F.3d at 986-88. The requirement
`
`“remains the primary guarantor against a non-statutory hindsight analysis.” Ortho-
`
`McNeil, 520 F.3d at 1364-65. It is well-established that rejections on obviousness
`
`grounds cannot be sustained by “mere conclusory statements.” KSR Int’l Co., 550
`
`U.S. at 418; see also Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d
`
`1324, 1330 (Fed. Cir. 2009); M.P.E.P. §§ 2141, 2142, 2143.
`
`
`
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`4
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`III. ARGUMENT
`
`A.
`
`Petitioner Fails to Demonstrate a Reasonable Likelihood of Prevailing.
`
`To have the Board institute an Inter Partes Review, a petitioner must show
`
`that there is a “reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The
`
`Petitioner has failed to meet this standard with regard to its assertions on both
`
`anticipation and obviousness grounds.
`
`1.
`
`The Petition Cannot Assert That Claim 3 Of The ‘349 Patent Is
`Indefinite.
`
`
`
`The Petition asserts that Claim 3 is unpatentable under 35 U.S.C. § 112,
`
`second paragraph on the ground of indefiniteness. This ground is not within the
`
`scope of the Inter Partes Review process, which is limited only to grounds that
`
`could be raised under Section 102 or 103, and only on the basis of prior art
`
`consisting of patents or printed publications. 35 U.S.C. § 311(b). Accordingly, the
`
`Board must deny this proposed ground of invalidity.
`
`2.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claim 3 Of The ‘349 Patent Would Have Been Obvious.
`
`
`
`The Petition asserts that Claim 3 is invalid for obviousness based on
`
`Lucivero (Petition Ex. 1006) in view of Nusbickel, et al. (Ex. 1003) and Sands, et
`
`al. (Ex. 1007). The Petition fails to make a prima facie case of obviousness for
`
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`two reasons. First, Lucivero, Nusbickel and Sands fail, either separately or
`
`together, to disclose or teach several of the elements in claim 3.
`
`
`
`For example, the Petition cites Nusbickel and Lucivero (no citation was
`
`made to Sands) as disclosing 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.” However, Nusbickel does not
`
`disclose such an end user facility at all; instead, it disclose a data processing
`
`system for hosting Web page, and discusses a Yellow Page directory listing service
`
`search screen rendered on a Web browser. See col. 3: 50-60; col 4: 16-45; Figs. 1,
`
`2. Nusbickel further does not mention “the design and construction of pages from
`
`images, text, and data available via said communication network.” Lucivero does
`
`disclose a “front-end” that a front-end user (e.g., graphics art designer) uses to
`
`create, edit or otherwise prepare image data for printing. Raster image processors
`
`(RIPS) receive image data from the front-end, typically in the form of a page
`
`description language, for printing. See col. 2: 33, 53-64; col. 5: 11-17, 41-60; col.
`
`6: 26-37; col. 7: 54-57, col. 8: 1-2; Fig. 1. However, Lucivero does not disclose
`
`providing page building operations with the design and construction of pages from
`
`image, text, and data available via a communication network. Lucivero only
`
`discloses sending the image data (in the form of a page description language) from
`
`
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`the “front-end” to the RIPS over a network serial data transfer interface. See col.
`
`7: 54-57, col. 8: 1-2.
`
`
`
`The second reason the Petition fails is that it does not present evidence or
`
`articulate any basis why Claim 3 would have been obvious. The Petition simply
`
`states that it would be obvious to combine these references “because each of the
`
`prior art references are directed to computer-to-plate technology and digitized
`
`printing.” Petition at 34. “[R]ejections based on obviousness cannot be sustained
`
`by mere conclusory statements; instead, there must be some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness.”
`
`KSR Int’l Co., 550 U.S. at 418. At best, the Petitioner’s rationale for the
`
`combination is that the three prior art references are analogous art; however, the
`
`fact that prior art references are analogous art does not suffice as an articulated
`
`reason with a rational underpinning to combine.
`
`
`
`
`
`Accordingly, the Petition fails to make a prima facie case of obviousness,
`
`and the Board should deny the Petition’s proposed ground of obviousness of Claim
`
`6 based on Lucivero, Sands, Andersson, and Dorfman.
`
`3.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claim 6 Of The ‘349 Patent Would Have Been Obvious.
`
`
`
`The Petition asserts that Claim 6 is invalid for obviousness based on several
`
`references as applied to Claim 4, in further view of Lucivero, et al. (Petition Ex.
`
`
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`1006), Sands, et al. (Ex. 1007), Andersson, et al. (Ex. 1012), and Dorfman, et al.
`
`(Ex. 1015). The Petition asserts that this prior art discloses the additional claim
`
`element in Claim 6 of the step of converting a file in plate-ready format into a
`
`virtual proofing software proofing file.
`
`
`
`The Petition fails to make a prima facie case of obviousness for two reasons.
`
`First, none of the cited prior art discloses the additional claim elements in Claim 6.
`
`Lucivero discloses using raster bit map image data comprising halftone or
`
`otherwise screened images for transfer onto a printing plate, col. 8: 42-54, and
`
`outputting raster data directly to a digital proofer, col. 13: 37-39, but does not
`
`mention converting a file in plate-ready format into a virtual proofing software
`
`proofing file. Sands generally refers to customers proofing individual pages prior
`
`to printing, col. 1: 33-35, but does not mention converting a file in plate-ready
`
`format into a virtual proofing software proofing file.
`
`
`
`Andersson at pages 161-63 describes viewing a PDF file on a screen prior to
`
`sending the PDF file to a reproduction company, but this relates to an earlier step
`
`in the claimed process of the ‘349 Patent. The method of claim 6 includes creating
`
`a PDF file (from claim 4), converting the PDF file to a file in plate-ready format
`
`(from claim 4), and then converting the file in plate-ready format to a virtual
`
`proofing software proofing file (from claim 6). Andersson thus does not disclose
`
`
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`converting a PDF file to a plate-ready format file, and then converting the plate-
`
`ready format file to a virtual proofing software proofing file.
`
`
`
`Finally, Dorfman at pages 3-4 also suffers from a similar defect, as it
`
`discloses viewing a PDF file during a document creation process. Dorfman does
`
`not disclose converting the PDF file to a plate-ready format file, and then
`
`converting the plate-ready format file to a virtual proofing software proofing file.
`
`
`
`The second reason the Petition fails is that it does not present evidence or
`
`articulate any basis why Claim 6 would have been obvious.1 The Petition merely
`
`states that the claim is obvious. Petition at 50-51. “[R]ejections based on
`
`obviousness cannot be sustained by mere conclusory statements; instead, there
`
`must be some articulated reasoning with some rational underpinning to support the
`
`legal conclusion of obviousness.” KSR Int’l Co., 550 U.S. at 418. The mere
`
`statement that the claimed invention is obvious or within the capabilities of one of
`
`ordinary skill in the art is not sufficient by itself to establish prima facie
`
`obviousness. M.P.E.P. § 2143.01(IV).
`
`
`1 Patent Owner notes that this same failure to present some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness is a
`
`defect present in all of the Petition’s proposed obviousness rejections.
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`
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`Accordingly, the Petition fails to make a prima facie case of obviousness,
`
`and the Board should deny the Petition’s proposed ground of obviousness of Claim
`
`6 based on Lucivero, Sands, Andersson, and Dorfman.
`
`4.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claim 7 Of The ‘349 Patent Would Have Been Obvious.
`
`
`
`The Petition asserts that Claim 7 is invalid for obviousness based on several
`
`references as applied to Claim 4, in further view of Lucivero, et al. (Petition Ex.
`
`1006), Sands, et al. (Ex. 1007), and Andersson, et al. (Ex. 1012). The Petition
`
`asserts that this prior art discloses the additional claim elements in Claim 7 of the
`
`step of remotely providing access to imaging files for searching and retrieving
`
`images used in the design of a page layout by a remote user, comprising “dragging
`
`and dropping elements selected from a database of said imaging files.”
`
`
`
`The Petition fails to make a prima facie case of obviousness for two reasons.
`
`First, the cited prior art does not disclose the step of remotely providing access to
`
`imaging files for searching and retrieving images used in the design of a page
`
`layout by a remote user comprising dragging and dropping elements selected from
`
`a database of said imaging files. Lucivero discloses a job list (shown in Figure 29),
`
`where the user can modify the order in which columns are displayed in the job list
`
`by dragging and dropping the columns. Col. 19: 22-25. Table 6 describes the
`
`types of items in the job list, which relate to printing jobs, and clearly are not
`
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`imaging files. Nor does a job relate to remotely providing access to images used
`
`for a design of a page layout by a remote user. Sands discusses a check-in module
`
`enabling an operator to move received files from a customer receive queue into a
`
`customer/product/title directory to make the files available for the remaining
`
`modules. Col. 8: 45-55. Sands does not discuss dragging and dropping imaging
`
`files, or doing so remotely; it is clear that the check-in module operation is being
`
`done at the operator’s system after the files in question have already been
`
`transferred and received. Id. And finally, Andersson describes a user dragging the
`
`thumbnail view of an entire page in a PDF file within that program, so that pages
`
`can be moved within the PDF document or from one PDF document to another.
`
`This is not remotely providing access to imaging files for searching and retrieving
`
`images with the remote user dragging and dropping elements selected from a
`
`database of said imaging files.
`
`
`
`Second, the Petition does not present evidence or articulate any basis why
`
`this claim would have been obvious. The Petition merely states that the claim is
`
`obvious. Petition at 50-51. “[R]ejections based on obviousness cannot be
`
`sustained by mere conclusory statements; instead, there must be some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.” KSR Int’l Co., 550 U.S. at 418.
`
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`
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`Accordingly, the Petition fails to make a prima facie case of obviousness,
`
`and the Board should deny the Petition’s proposed ground of obviousness of Claim
`
`7 based on Lucivero, Sands, and Andersson.
`
`5.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claim 8 Of The ‘349 Patent Would Have Been Obvious.
`
`
`
`The Petition asserts that Claim 8 is invalid for obviousness based on several
`
`references as applied to Claim 4, in further view of Lucivero, et al. (Petition Ex.
`
`1006), Sands, et al. (Ex. 1007), and Benson, et al. (Ex. 1008). The Petition asserts
`
`that this prior art discloses the additional claim elements in Claim 8 of the step of
`
`remotely providing access to imaging files for searching and retrieving images
`
`used in the design of a page layout by a remote user comprising using a web
`
`browser configured for communications over the Internet.
`
`
`
`The Petition fails to make a prima facie case of obviousness for two reasons.
`
`First, the cited prior art does not disclose the additional claim elements–namely,
`
`step of remotely providing access to imaging files for searching and retrieving
`
`images used in the design of a page layout by a remote user using a web browser
`
`configured for communications over the Internet. Lucivero discusses networked
`
`RIPs (raster image processors) with an input network interface module, but there is
`
`no discussion of an Internet web browser. Col. 8: 60-67; col. 9: 1-4. Similarly,
`
`Sands discusses a communication module accessed by a customer from a remote
`
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`site to transfer files, and a check-in module at the site to handle the transferred
`
`files, col. 8: 45-58, but these modules are clearly not an Internet web browser. And
`
`finally, the Benson document attached as Exhibit 1008 does not contain the
`
`material asserted by the Petition. Benson discloses a system for control of printing
`
`presses using a job-control computer and separate image-control computers
`
`physically associated with the presses. Thus, Benson does not disclose the step of
`
`remotely providing access to imaging files for searching and retrieving images
`
`used in the design of a page layout by a remote user using a web browser
`
`configured for communications over the Internet.
`
`
`
`The Petition makes the unsubstantiated assertion that it was “well known” in
`
`printing and publishing systems to use a web browser to access the Internet for
`
`searching and retrieving images in the design of a page layout by a remote user;
`
`however, as noted above, the cited prior art does not support this assertion. It is
`
`not appropriate to make such an assertion “where the facts asserted to be well
`
`known are not capable of instant and unquestionable demonstration as being well-
`
`known.” M.P.E.P. § 2144.03(A). “[A]ssertions of technical facts in the areas of
`
`esoteric technology or specific knowledge of the prior art must always be
`
`supported by citation to some reference work recognized as standard in the
`
`pertinent art.” Id.
`
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`
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`Second, the Petition does not present evidence or articulate any basis why
`
`this claim would have been obvious. KSR Int’l Co., 550 U.S. at 418. The Petition
`
`merely states that the claim is obvious as a combination of old elements according
`
`to known methods that yield predictable results. Petition at 52-53. The cited prior
`
`art does not disclose these elements, and thus the Petition has not demonstrated
`
`that they are, in fact, old elements. The mere statement that the claimed invention
`
`is obvious or within the capabilities of one of ordinary skill in the art is not
`
`sufficient by itself to establish prima facie obviousness. M.P.E.P. § 2143.01(IV).
`
` Further, there is no discussion of the clear differences between the cited prior art
`
`and the claimed elements, as required by KSR and Graham.
`
` Accordingly,
`
`the
`
`Petition fails to make a prima facie case of obviousness, and the Board should
`
`deny the Petition’s proposed ground of obviousness of Claim 8 based on Lucivero,
`
`Sands, and Benson.
`
`6.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claim 9 Of The ‘349 Patent Would Have Been Obvious.
`
`
`
`The Petition asserts that Claim 9 is invalid for obviousness based on several
`
`references as applied to Claim 4, in further view of Lucivero, et al. (Petition Ex.
`
`1006), Sands, et al. (Ex. 1007), and Benson, et al. (Ex. 1008). The Petition asserts
`
`that this prior art discloses the additional claim elements in Claim 9 of the step of
`
`remotely providing access to imaging files for searching and retrieving images
`
`
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`used in the design of a page layout by a remote user comprising “using a web a
`
`private network configured for dedicated communications.” The Petition states
`
`that the discussion regarding the obviousness of Claim 8 is applicable to Claim 9.
`
`Petition at 53.
`
`
`
`The Petition fails to make a prima facie case of obviousness for two reasons.
`
`First, the cited prior art does not disclose the step of remotely providing access to
`
`imaging files for searching and retrieving images used in the design of a page
`
`layout by a remote user using a private network configured for communications
`
`over the Internet. Lucivero discusses using a front-end to prepare image data for
`
`printing, and then sending the image data from the front-end to networked RIPS
`
`(raster image processors) over a network serial data transfer interface, but Lucivero
`
`does not disclose a remote user searching and retrieving images remotely for use in
`
`the design of a page layout (assuming the design of a page layout takes place at the
`
`“front-end”). Col. 7: 54-66; col. 8: 60-67; col. 9: 1-4. Similarly, Sands discusses a
`
`communication module accessed by a customer from a remote site to transfer files
`
`(page files, stringout files, and job specification files), and a check-in module at the
`
`site to handle the transferred files, col. 8: 45-58, but does not disclose searching
`
`and retrieving image files remotely for use in the design of a page layout. And
`
`finally, as noted above, the Benson document attached as Exhibit 1008 does not
`
`contain the material asserted by Petitioner. Benson discloses a system for control
`
`
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`Patent 6,611,349
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`of printing presses using a job-control computer and separate image-control
`
`computers physically associated with the presses. Thus, Benson does not disclose
`
`the step of remotely providing access to imaging files for searching and retrieving
`
`images used in the design of a page layout by a remote user using a private
`
`network configured for dedicated communications.
`
`
`
`The Petition makes the unsubstantiated assertion that it was “well known” in
`
`printing and publishing systems to use a web browser to access the Internet for
`
`searching and retrieving images in the design of a page layout by a remote user;
`
`however, as noted above, the cited prior art does not support this assertion. It is
`
`not appropriate to make such an assertion “where the facts asserted to be well
`
`known are not capable of instant and unquestionable demonstration as being well-
`
`known.” M.P.E.P. § 2144.03(A). “[A]ssertions of technical facts in the areas of
`
`esoteric technology or specific knowledge of the prior art must always be
`
`supported by citation to some reference work recognized as standard in the
`
`pertinent art.” Id.
`
`
`
`Second, the Petition does not present evidence or articulate any basis why
`
`this claim would have been obvious. KSR Int’l Co., 550 U.S. at 418. The Petition
`
`merely states that the claim is obvious as a combination of old elements according
`
`to known methods that yield predictable results. Petition at 54. The cited prior art
`
`does not disclose these elements, and thus the Petition has not demonstrated that
`
`
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`they are, in fact, old elements. The mere statement that the claimed invention is
`
`obvious or within the capabilities of one of ordinary skill in the art is not sufficient
`
`by itself to establish prima facie obviousness. M.P.E.P. § 2143.01(IV). Further,
`
`there is no discussion of the clear differences between the cited prior art and the
`
`claimed elements, as required by KSR and Graham.
`
`
`
`Accordingly, the Petition fails to make a prima facie case of obviousness,
`
`and the Board should deny the Petition’s proposed ground of obviousness of Claim
`
`9 based on Lucivero, Sands, and Benson.
`
`7.
`
`The Petition Fails to Establish A Reasonable Likelihood That
`Claim 11 Of The ‘349 Patent Would Have Been Obvious.
`
`
`
`The Petition asserts that Claim11 is invalid for obviousness based on several
`
`references as applied to Claim 10, in further view of Lucivero, et al. (Petition Ex.
`
`1006), and Andersson (Ex. 1012). 2 The Petition asserts that this prior art discloses
`
`the additional claim element in Claim 11 of the low resolution files being stored in
`
`a storage device at a central service facility.
`
`
`
`The Petition fails to make a prima facie case of obviousness for two reasons.
`
`First, the cited prior art does not disclose the low resol