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 1-20 of U.S. Patent No. 6,738,155
`
`(“the ’155 patent”) (Ex. 1201). 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 Appendix B, where CTP
`
`Innovations LLC (“CTP”) is identified as plaintiff, CTP has
`
`asserted infringement of the ‘155 patent and U.S. Patent No.
`
`6,611,349 (“the ‘349 patent”) against the named defendants. The
`
`‘155 and ‘349 patents disclose the same subject matter but claim
`
`different subject matter. A second petition for inter partes
`
`review of the ‘349 patent (claims 1-14) has been filed by
`
`petitioner.
`
`C. Counsel
`
`Lead Counsel: John M. Adams (Registration No. 26,697)
`
`Back-up Counsel: Lawrence G. Zurawsky (Registration No. 22,776)
`
`
`
`
`
`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 1-20 of U.S. Patent No. 6,738,155
`
`(“the ’155 patent”) (Ex. 1201). 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 Appendix B, where CTP
`
`Innovations LLC (“CTP”) is identified as plaintiff, CTP has
`
`asserted infringement of the ‘155 patent and U.S. Patent No.
`
`6,611,349 (“the ‘349 patent”) against the named defendants. The
`
`‘155 and ‘349 patents disclose the same subject matter but claim
`
`different subject matter. A second petition for inter partes
`
`review of the ‘349 patent (claims 1-14) has been filed by
`
`petitioner.
`
`C. Counsel
`
`Lead Counsel: John M. Adams (Registration No. 26,697)
`
`Back-up Counsel: Lawrence G. Zurawsky (Registration No. 22,776)
`
`
`
`
`
`D. 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 1-20 of the ‘155 patent (Ex. 1201),
`
`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. 7,242,487 (“Lucivero et al.;” Ex. 1205)
`
`which issued on July 10, 2007 and is prior art under 35
`
`U.S.C. § 102(e).
`
`
`
`2
`
`
`
`2. European Patent Application No. EP0878303 (“Benson et al.;
`
`Ex. 1206) which was published on November 18, 1998 and is
`
`prior art under 35 U.S.C. § 102(e).
`
`3. U.S. Patent No. 5,634,091 (“Sands et al.”; Ex. 1207) which
`
`issued on May 27, 1997 and is prior art under 35 U.S.C. §
`
`102(b).
`
`4. U.S. Patent No. 6,643,909 (“Holub; Ex. 1210) which issued
`
`on March 28, 2000 and is prior art under 35 U.S.C. §
`
`102(b).
`
`5. European Patent Application No. EP0920667 (“Dorfman et
`
`al.”; Ex. 1211) which was published on June 9, 1999 and is
`
`prior art under 35 U.S.C. § 102(e).
`
`6. U.S. Patent No. 6,646,818 (“Benson; Ex. 1212) which issued
`
`on April 4, 2000 and is prior art under 35 U.S.C. § 102(b).
`
`
`
`
`
`None of the above patent publications were applied by the
`
`Examiner during prosecution of the ‘155 patent.
`
`
`
`B. Prior Art Non-Patent Documents
`
`Petitioner relies upon the following non-patent documents:
`
`
`1. Adams II et al., “Computer-to-Plate” Automating the
`Printing Industry”, GAFT, 1996 (Ex. 1214)
`
`
`2. Aldus Corporation, “OPI Open Prepress Interface
`Specification 1.3”, 1993 (Ex. 1213)
`
`
`
`
`
`
`3
`
`
`
`3. Andersson et al., PDF Printing and Publishing,
`Micro Publishing Press 1997 (Ex. 1204)
`
`
`4. Zilles, “Using PDF for Digital Data Exchange”, TAGA
`Proceedings, Technical Association of the Graphic
`Arts, 1997 (Ex. 1209)
`
`
`
`None of the above non-patent documents were applied by the
`
`Examiner during prosecution of the ‘155 patent.
`
`1. Grounds of Challenge
`
`Petitioner requests cancellation of claims 1-20, 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
`
`obviousness and held “The combination of familiar elements
`
`
`
`4
`
`
`
`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
`
`
`
`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 claim 1 recites 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.” ‘155 patent,
`
`col. 2: 55-58; Ex. 1201.
`
`B. The term “communication network”
`
`Independent claims 1, 10, and 16 recites 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.
`
`‘155 patent, col. 4: 59-61, col. 5: 9-13; Ex. 1201.
`
`
`
`
`
`6
`
`
`
`
`
`C. The term “central service facility”
`
`Independent claim 1 recites 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. ‘155 patent, col. 2: 58-60; Ex. 1201.
`
`D. The term “printing company facility”
`
`Independent claim 1 recites 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.” ‘155 patent, col. 2: 64-65; Ex. 1201.
`
`E. The term “communication routing device”
`
`Dependent claims 4 and 5 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.”
`
`‘155 patent, col. 4: 35-40; Ex. 1201.
`
`F. The term “plate-ready file”
`
`Independent claims 1, 10, and 16 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.” ‘155 patent, col. 2: 62-65;
`
`Ex. 1201. The proposed construction is “a file containing pages
`
`designed from images, texts, and data converted to a digital
`
`file for producing a printing plate.”
`
`VI. OVERVIEW OF THE ‘155 PATENT
`
`A. Brief Description
`
`The patent application for the ‘155 patent (Ex. 1201) was
`
`filed in the U.S. Patent and Trademark Office on July 30, 1999.
`
`The ‘155 patent describes a system and method for communicating
`
`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. ‘155 patent, col. 2: 29-39; Ex. 1201.
`
`
`
`The ‘155 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
`
`
`
`8
`
`
`
`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. 1201.
`
`B. Summary of the Prosecution History of the ‘155 Patent
`
`
`
`The patent application was filed on July 30, 1999. In a
`
`first Office Action dated January 29, 2003 (Ex. 1202) all claims
`
`1-20 were rejected under 35 USC 103(a) as unpatentable and
`
`anticipated by U.S. Patent No. 6,321,231 (Jebens), in view of
`
`U.S. Patent No. 6,247,011 (Jecha, et al).
`
`
`
`Original claim 4 was rejected under 35 USC 112, second
`
`paragraph, as being indefinite. Claim 4, line 2 recited a
`
`“printing customer facility”, for which there was an
`
`insufficient antecedent basis in the claim.
`
`
`
`Original claim 1 was an independent claim, and claims 2-9
`
`depended from claim 1. Original claim 10 was an independent
`
`claim, and claims 11-15 depended from claim 10. Original claim
`
`16 was an independent claim, and claims 17-20 depended from
`
`claim 16.
`
`
`
`9
`
`
`
`The Examiner also rejected all original claims 1-20 under
`
`35 USC 103(a) as being unpatentable over Jebens, et al (U.S.
`
`6,321,231) in view of Jecha, et al (U.S. 6,247,011).
`
`
`
`With respect to claim 1, the Examiner stated that Jebens
`
`discloses a printing and publishing system comprising an end
`
`user facility (14) coupled to a communication network (figure
`
`2); the end user facility page building operations including the
`
`construction of pages from images, text and data available via
`
`the network (which reads on the user preparing a document) (col
`
`2, lines 40-46); a printing facility coupled to the network (the
`
`printer in part 10 of figure 2), and a central service facility
`
`(10) coupled to the communication network (figure 2); the
`
`central service facility providing storage (col 9, lines 13-20),
`
`file processing (col 9, lines 46-60), remote access (to enable
`
`searching) (col 9, lines 30-36), and content management (col 9,
`
`line 30 to col 10, line 52); the content management including
`
`the capture and archival (col 9, lines 13-29), retrieval and
`
`reuse (col 12, lines 25-65) of electronic (digital) files
`
`containing text (col 12, lines 25-65); content management
`
`operations further including the organization and cataloging of
`
`file content (by file name)(col 9, lines 21-25) for browsing,
`
`searching and retrieving of files and data (col 12, lines 10-
`
`65).
`
`
`
`10
`
`
`
`
`
`The Examiner stated further that Jebens does not clearly
`
`disclose providing pre-press services which provide imposition
`
`operations including the setting of pages on a particular plate
`
`as well as positioning and orientation of pages on the plate.
`
`
`
`The Examiner concluded that it would have been obvious to
`
`have modified Jebens to provide pre-press services. Also it
`
`would have been obvious to have modified Jebens by the teaching
`
`of Jecha in order to give the user more control over how the
`
`final image is printed.
`
`
`
`Concerning dependent claims 2-9 the Examiner explained that
`
`all the elements defined in each claim are disclosed by Jebens.
`
`No allowable subject matter was identified.
`
`
`
`With respect to claims 10, 12 and 14, the Examiner stated
`
`that Jebens differs from claims 10, 12 and 14 in that Jebens
`
`does not clearly disclose generating a (PDF) file from the data
`
`and generating a plate ready file from the PDF file. However,
`
`the Examiner stated that Jecha discloses generating a (PDF) file
`
`from image data (col 4, lines 30-61) and generating a plate
`
`ready file which reads on a pre-press file from the PDF file
`
`(col 4, lines 54-61), and transmitting the data to a printer
`
`(col 4, lines 62-64), wherein the PDF file may be converted to
`
`Postscript (col 4, lines 54-61). Therefore, it would have been
`
`obvious to modify Jebens by the teaching of Jecha in order to
`
`
`
`11
`
`
`
`convert the data to a format which would be more easily
`
`processed by the printer.
`
`
`
`With respect to claims 16, 18 and 19, the Examiner stated
`
`that Jebens differs from claims 16, 18 and 19 in that Jebens
`
`does not clearly disclose generating a PDF file from the data
`
`and generating a plate-ready file from the PDF file. However,
`
`Jecha discloses generating a PDF file from image data (col 4,
`
`lines 30-61) and generating a plate-ready file (which reads on a
`
`prepress file) from the PDF file (col 4, lines 54-61), and
`
`transmitting the data to a printer (col 4, lines 62-64), wherein
`
`the PDF file may be converted to Postscript (col 4, lines 54-
`
`61).
`
`The Examiner concluded that it would have been obvious to
`
`have modified Jebens to generate a PDF file from the data and
`
`generate a plate-ready file from the PDF file. Further it would
`
`have been obvious to have modified Jebens by the teaching of
`
`Jecha in order to convert the data to a format which would be
`
`more easily processed by the printer.
`
`
`
`Regarding claim 4, the Examiner rejected that claim under
`
`35 USC 103(a) as unpatentable over Jebens in view of Jecha as
`
`applied to original independent claim 1, and further in view of
`
`Fujisawa, et al (U.S. No. 6,384,932).
`
`
`
`In response to the first Office action, Applicants filed an
`
`Amendment on May 14, 2003. Applicants submitted the claims as
`
`
`
`12
`
`
`
`originally filed, with the exception of changing one word in
`
`claim 4 by substituting the word “company” for the previously
`
`used word, “customer”. Therefore, Applicants argued that the
`
`rejection of claim 4 under 35 USC § 112, second paragraph, was
`
`overcome.
`
`
`
`With respect to all of the remaining claims originally
`
`filed, Applicants traversed the rejection under 35 USC § 103(a)
`
`as unpatentable over Jebens in view of Jecha.
`
`
`
`With respect to claim 1 Applicants argued that nothing in
`
`Jecha, suggests or teaches “imposition operations including the
`
`setting of pages on a particular plate as well as positioning
`
`orientation of pages on said plate” as recited in claim 1.
`
`
`
`Applicants also argued that imposition is not the same as
`
`prepress and noted that Fujisawa teaches that the “prepress
`
`process” and “imposition” are separate from each other, stating
`
`further that Fujisawa Figure 1 shows a rasterized file as a
`
`result of prepress operations. After prepress, the rasterized
`
`file is used in impositioning operations and setting of pages on
`
`a plate. Applicants submitted further that neither Jebens nor
`
`Jecha disclose, suggest or teach anything about imposition
`
`operations in setting of pages on a plate.
`
`With respect to claim 10 Applicants stated that claim 10
`
`recites generating a portable document format PDF file from the
`
`design page layout and generating a plate-ready file from said
`
`
`
`13
`
`
`
`PDF file. Applicants argued that Jebens does not clearly
`
`disclose those elements and that Jecha discloses use of a
`
`translation program to translate documents into a file format
`
`suitable for prepress such as Postscript and that other formats
`
`suitable for prepress include HTML, PDF, and Postscript Extreme.
`
`Applicant stated that there is no teaching in Jecha of
`
`generating a portable document format PDF file from the design
`
`page layout and generating a plate-ready file from PDF file.
`
`
`
`With respect to claim 16 Applicants noted that claim 16
`
`recites the elements of providing PDF file to said remote client
`
`and providing a plate-ready file to a remote printer. Applicants
`
`argued that neither Jebens nor Jecha disclose either of those
`
`limitations.
`
`
`
`On July 23, 2003, the Examiner issued a second non-final
`
`Office action, again rejecting independent claims 1, 10, and 16
`
`under 35 USC 103(a) as unpatentable over Jebens (U.S. 6,321,231)
`
`in view of Fujisawa (U.S. 6,384,932).
`
`
`
`With respect to claim 1, the Examiner repeated the prior
`
`rejection over Jebens, noting that Jebens differs from claim 1
`
`in that, although Jebens discloses converting the data to an
`
`Open Prepress Interface file, Jebens does not clearly disclose
`
`providing prepress services which provide imposition operations.
`
`
`
`With respect to the modification of Jebens by Fujisawa in
`
`the rejection of claim 1, the Examiner found that it would have
`
`
`
`14
`
`
`
`been obvious to have modified Jebens to provide prepress and
`
`imposition services in the printing system of Jebens. Further it
`
`would have been obvious to have modified Jebens by the teaching
`
`of Fujisawa in order to achieve labor savings in the plate
`
`making or printing process as well as to include the printing
`
`accuracy as disclosed by Fujisawa in the abstract.
`
`
`
`With respect to independent claim 10, the Examiner found
`
`that Jebens discloses storing files containing information
`
`relating to images, text and data on a computer server and
`
`providing the files to a remote client for designing of a page
`
`layout. The Examiner stated that Jebens differs from claim 10,
`
`in that Jebens does not clearly disclose generating a PDF file
`
`from the data and generating a plate ready file from the PDF
`
`file.
`
`
`
`Therefore, the Examiner concluded that it would have been
`
`obvious to have modified Jebens to generate a PDF file from the
`
`data and generate a plate ready file from the PDF file. Further,
`
`it would have been obvious to have modified Jebens by the
`
`teaching of Fujisawa in order to convert the data to a format
`
`which would be more easily processed by the printer.
`
`
`
`With respect to independent claim 16, the Examiner argued
`
`that Jebens discloses storing high resolution files on the
`
`computer; generating low resolution files corresponding to high
`
`resolution files, and providing the low resolution files to a
`
`
`
`15
`
`
`
`remote client for the designing of a page layout (col 5, lines
`
`11-22).
`
`
`
`The Examiner found that Jebens differs from claim 16 in
`
`that Jebens does not clearly disclose generating a PDF file from
`
`the data and generating a plate ready file from the PDF file.
`
`The Examiner then concluded it would have been obvious to modify
`
`Jebens to generate a PDF file from the data to generate a plate
`
`ready file from the PDF file. Also, it would have been obvious
`
`to modify Jebens by the teaching of Fujisawa in order to convert
`
`the data to a format which would be more easily processed by the
`
`printer.
`
`
`
`In response to the second non-final action, Applicants
`
`traversed the rejection of all claims 1-20 for the same reasons
`
`given in the final Office action. Applicants repeated the
`
`argument that “There is absolutely no disclosure, suggestion or
`
`teaching in Fujisawa where this ‘page description langue’ is
`
`used to generate a plate-ready file.” No amendments were made
`
`to the claims to overcome the cited prior art rejection.
`
`
`
`On December 18, 2003 the Examiner issued a final rejection.
`
`(Ex. 1202). The Examiner found that Applicants’ arguments were
`
`not persuasive. The Examiner repeated the grounds for rejection
`
`for all claims 1-20 and made the action final.
`
`
`
`16
`
`
`
`
`
`On July 4, 2004, Applicants filed an Amendment under 37 CFR
`
`§1.116 (Ex. 1203) responsive to the final action (Ex. 1202).
`
`Claim 1 was amended by adding the limitations:
`
`
`
`
`
`“and the generation of a portable document format
`
`(PDF) file; and generating a plate-ready file from said PDF
`
`file.” Dependent claims 2-9 were not amended. No amendments
`
`were made to the remaining claims 10—20.
`
`Regarding the claim amendments, Applicants stated that the
`
`limitations added to claim 1 were previously included in
`
`independent claims 10 and 16. Applicants argued that there is no
`
`suggestion or teaching in Fujisawa of performing the operation
`
`of “generation of a portable document format (PDF) file” or
`
`“generating a plate-ready file from said PDF file”.
`
`Applicants further argued that there is absolutely no
`
`disclosure, suggestion or teaching in Fujisawa where this “page
`
`description language file” is used to generate a plate-ready
`
`file nor is there any disclosure whatsoever of a PDF file.
`
`
`
`Applicants reported at length from the publication by Adobe
`
`Systems Incorporated, entitled The Adobe® PostScript® Printing
`
`Primer, dated March 8, 1997 and from a second publication by
`
`Adobe Systems Incorporated, entitled PDF for Prepress Work and
`
`Document Delivery Paper, dated November, 1997. Referring to
`
`those publications, Applicants stated that a portable document
`
`format (PDF) file is not plate-ready. The PDF file is output
`
`
`
`17
`
`
`
`back into the PostScript language stream at print time. PDF
`
`files are converted to a Postscript format for purposes of plate
`
`output. PDF is considered a Postscript 3 format. Conventional
`
`hardware and software infrastructure is unavailable to accept
`
`PDF, but rather accepts Postscript level 2. Thus, PDF must be
`
`converted from Postscript 3 to Postscript level 2.
`
`
`
`Regarding claims 10-15 Applicants argued that neither
`
`Jebens nor Fujisawa discloses, suggest or teaches “generating a
`
`portable document format (PDF) file from the design page layout”
`
`or “generating a plate-ready file from said PDF file”.
`
`
`
`Regarding claims 16-20 Applicants argued that neither
`
`Jebens nor Fujisawa discloses, suggests or teaches “generating
`
`portable document format (PDF) file from the page layout
`
`designed by said remote client”.
`
`In response to Applicants’ 116 Amendment the Examiner
`
`issued a Notice of Allowance for all claims 1-20, as amended.
`
`
`
`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
`
`
`
`18
`
`
`
`results. There is no unexpected result on which to base the
`
`patentability of the claims.
`
`
`
`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 Andersson et al. under 35
`U.S.C. §102(b).
`
`Andersson et al. (Ex. 1204) is directed to digital printing
`
`and specifically portable document format (PDF) printing and
`
`publishing. With regard to networked digital workflows,
`
`Andersson et al. discloses that the focus is on processing
`
`reengineering to achieve rapid response, short cycle time,
`
`quality failsafeing, on-line customer service, low transaction
`
`costs, low materials usage, minimum inventory costs, and minimum
`
`distribution costs. Networked digital workflows introduce new
`
`forms of printing and publishing by conducting all business over
`
`internets/intranets, establishing print networks for distributed
`
`printing, and publishing and document management services.
`
`Andersson et al., p 179; Ex. 1204.
`
`The schematics on pages 172 and 173 of Andersson et al.
`
`illustrate examples of printing and publishing systems that
`
`utilize well-known prepress programs for creating page-layouts
`
`with text, illustration and images. It is disclosed that in the
`
`
`
`19
`
`
`
`traditional workflow the reproduction company sends FPO images
`
`to client. The client uses the layout applications of their
`
`choice. When it is time to send the work back to the
`
`reproduction company a PDF file is generated. Id. at p 172-173;
`
`Ex. 1204.
`
`Insofar as content management, Andersson et al. discloses
`
`that the emerging digital infrastructure will propel inter-
`
`business communication, workflow and content management to new
`
`levels of performance, flexibility and service. Id. at p 178;
`
`Ex. 1204.
`
`Distributed workflows are coordinated through network
`
`communications to common (synchronized) databases containing
`
`evolving content and product information, workflow schedule and
`
`current job status, business relationship and financial data,
`
`and management information. Id. at p 181; Ex. 1204.
`
`Andersson et al. further discloses that networked digital
`
`content management involves file formats, standard page
`
`description language, and digital archives with dedicated
`
`librarian applications to index, search and retrieve data.
`
`Andersson et al. acknowledges the metaphors that are used to
`
`describe printing and publishing workflows that include “the
`
`market of one”, “just in time printing and publishing”, “mass
`
`customization of media”, “on-demand”, and “1-to-1
`
`communications”. Id. at p 179; Ex. 1204.
`
`
`
`20
`
`
`
`Regarding an end-user facility, Andersson et al. discloses
`
`that Postscript Level 3-Adobe provided an advanced level of
`
`functionality in Adobe Postscript Level 3 to accommodate the new
`
`digital document creation process. Users are able to access
`
`content for use in digital documents from varying sources
`
`including electric mail, Web pages, Intranets, on-line services,
`
`content providers, and digital cameras. Document composition
`
`now includes not only text, but also complex graphics, clip art,
`
`corporate logos, internet content, multiple fonts, scanned
`
`images, and color. Id. at p 12; Ex. 1204.
`
`Andersson et al. discloses that a distiller is set up on a
`
`dedicated network computer where a number of users can drop
`
`postscript files into a watched folder. When the distiller
`
`encounters a postscript file in the folder, it creates a PDF and
`
`places the file in an “out” folder where the network users can
`
`then move or use the files. Id. at p 113, Ex. 1204.
`
`Regarding imposition operations provided by a printing
`
`company, Andersson et al. discloses that form file and page-
`
`leveling position and rotation with recto and verso page
`
`controls provide accurate placement of impositions forms for
`
`plate-ready film or press-ready plates. One area in the
`
`prepress industry that has developed rapidly in the past couple
`
`of years is electronic imposition. Due to the prevalence of
`
`large format imagesetters and platesetters, many users are
`
`
`
`21
`
`
`
`turning to imposition programs for workflow automation. Id. at
`
`p 35; Ex. 1204.
`
`Andersson et al. further discloses that some of the current
`
`imposition processes that are being implemented include standard
`
`and custom imposition layouts for sheet or web printing, form,
`
`file and page-level positioning and rotation, with verso/retro
`
`page controls, enhanced shingling, and bottling controls, on-
`
`screen preview of press sheets with all marks and pages in place
`
`and proportion. Id. at p 35; Ex. 1204.
`
`Further, Andersson et al. discloses that a server may be
`
`added to the output function to store RIPed files for later
`
`printout of the entire file of one or more of the color
`
`separations. This may be called a print server or a print
`
`spooler. The print server functions as a print spooler/server
`
`to hold files for later printout or archiving. Id. at p 63; Ex.
`
`1204.
`
`Further, Andersson et al. discloses that once the document
`
`is in Acrobat 3.0 PDF form it is free to be anything it needs to
`
`be, such as paper, film, plate, proof, WWW, viewable file, data,
`
`document or image archive and more. Automated workflow tools
`
`open the PDF, save the pictures in a new form, and redistill the
`
`document for another purpose. In one example, pictures can be
`
`saved into an image database for access by clients as they bill
`
`documents for different publishing streams. With a totally
`
`
`
`22
`
`
`
`digital publication you can go directly to plate or digital
`
`press. In this manner files are moved through various
`
`operations on their way to uniform and predictable output. Id.
`
`at p 43; Ex. 1204.
`
`Regarding a central service facility, Andersson et al.
`
`discloses that a server is a computer positioned in the network
`
`that has a large amount of disk storage that has shared software
`
`and information. A single server may store shared files and
`
`software and link to printers or other output devices and may
`
`also link to tape drives, storage media, modems and RIPs. Id.
`
`at p 51; Ex. 1204.
`
`It is further disclosed that the server operates to shift
`
`the processing burden from individual workstations to a central
`
`server for more efficient printing and job handling. The server
`
`is simply a central (network) function that can run background
`
`tasks like automatic dropping or rastersizing a file for output
`
`to a printer, imagesetter, platemaker or whatever. Id. at p 65;
`
`Ex. 1204.
`
`Regarding content management operations Andersson et al.
`
`discloses Adobe’s Networks system for improving the ease of use
`
`of printer management. A printer with network’s functionality
`
`includes a printer-based Web page, Web-based printer management,
`
`printing directly from the printer’s Web, support for all
`
`
`
`23
`
`
`
`industry standard remote management technologies. Id. at p 13;
`
`Ex. 1204.
`
`Further regarding networked digital workflows, Andersson et
`
`al. discloses that prepress, printing and post-press functions
`
`will become increasingly automated processes across networks.
`
`One of the hallmarks of networked digital workflows will be
`
`color-managed digital printing, proofing and remote proofing.
`
`Prep will move from files, imagesetters and platesetters towards
`
`databases, variable and custom data merge, and computer-to-film,
`
`computer-to-plate, and computer-to-press. Id. at p 181; Ex.
`
`1204.
`
`Andersson et al. further explains that networked digital
`
`content management involves file formats, standard page
`
`description languages, and digital archives with dedicated
`
`librarian applications to index, search and retrieve data.
`
`Networked digital business systems are fully integrated with
`
`work-in-process and content management. Id. at p 182; Ex. 1204.
`
`Also, Andersson et al. discloses that the management of the
`
`digital network provides access to entire electronic archives of
`
`information. The archives are filled with just about anything
`
`from pages to sound to video. With cross-platform
`
`interoperability and sufficient band width for video/audio
`
`transmission it is possible for an advertiser to b
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