Ex Parte Aidinejad

Board of Patent Appeals and Interferences

Nov 18, 2009

10286135 (B.P.A.I. Nov. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MOHAMMAD REZA AIDINEJAD
____________

Appeal 2009-004725
Application 10/286,135
Technology Center 2600
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Decided: November 18, 2009
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Before JOHN C. MARTIN, KARL D. EASTHOM, CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals1 under 35 U.S.C. § 134(a) from the rejections of
claims 1-33 and 45-54,2 the only claims pending (App. Br. 4). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant invented a printing accessory 110 with a printer driver that
transforms printing instructions from a mobile device 100 into a print job
format that a printer 120 recognizes to create a hard copy. (Spec. ¶¶ 0004,
0005, 0022, 0026-29; Fig.1.)
Exemplary claims 1 and 21 follow:
1. A printing accessory comprising:
a first, wireless interface for communicating with a mobile client
device;
a second interface for communicating with a printer;
a processor for controlling said first and second interfaces; and
a printer driver stored in memory for execution by said processor,
wherein said printer driver is configured to receive document data from an
application running on a mobile client device and format said document data
for use by said printer;
wherein said printing accessory is configured to receive said
document data from a mobile client device through said first interface and,

1 This opinion refers to Appellant’s Brief (filed Jan. 31, 2008) [hereinafter
App. Br.] and Reply Brief (mailed July 29, 2008) [hereinafter Reply Br.],
and the Examiner’s Answer (mailed May 30, 2008) [hereinafter Ans.].
2 In response to Appellant’s Brief, the Examiner withdrew the rejection of
claims 30-33 under 35 USC § 112, first paragraph (Ans. 21-22), the sole
ground of rejection of those claims. The appeal is therefore dismissed with
respect to those claims.
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using said printer driver, convert the data into a print job which print
job is output through said second interface.
21. A method of generating a hardcopy of data stored on a mobile
client device, said method comprising:
operating a user interface of a printing accessory to initiate and
control said generating of said hardcopy;
transmitting data wirelessly from said mobile client device to said
printing accessory;
and
generating a print job based on said data from said mobile client
device with said printing accessory.
The Examiner relies on the following prior art references:3
Farrell US 6,233,414 B1 May 15, 2001
Imbrie US 2002/0169002 A1 Nov. 14, 2002
Bondy US 2002/0191219 A1 Dec. 19, 2002
Leiman US 2004/0027611 A1 Feb. 12, 2004
Minear US 6,947,772 B2 Sept. 20, 2005
The Examiner rejected:
claims 1, 10-14, 16, and 18-20 as anticipated under 35 U.S.C. § 102(e)
based on Imbrie;
claims 2-9, 15, 17, and 21-29 as obvious under 35 U.S.C. § 103(a)
based on Imbrie and Bondy;
claim 45 as obvious under 35 U.S.C. § 103(a) based on Imbrie,
Bondy, and Minear;

3 The effective filing dates of these references are not at issue and hence not
listed.
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claims 46-48 as obvious under 35 U.S.C. § 103(a) based on Imbrie,
Bondy, and Leiman; and
claims 49-54 as obvious under 35 U.S.C. § 103(a) based on Imbrie,
Bondy, Leiman, and Farrell.
ISSUES
Anticipation
Claims 1, 10-14, 16, and 18-20
Appellant contends (App. Br. 12-17) that Imbrie does not disclose a
printer accessory that includes a printer driver as required by claim 1 or a
printer accessory that includes a plurality of different types of wireless
transceivers as required by independent claim 10. Appellant does not
present arguments for the remaining claims rejected as anticipated by
Imbrie. Therefore, claim 10 is selected to represent claims 11-14, 16, and
18-20 (since these claims depend from claim 10). See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant’s arguments raise the following issues:
Did Appellant show that the Examiner erred in finding that Imbrie
discloses a printer accessory with a printer driver, as claim 1 requires?
Did Appellant show that the Examiner erred in finding that Imbrie
discloses a printer accessory having a plurality of different types of wireless
transceivers, as claim 10 requires?
Obviousness
Claims 2-9, 15, 17 and 21-29
Appellant’s arguments (App. Br. 17-19) primarily focus on claim 21.
Appellant contends (id. at 18) that Imbrie and Bondy collectively fail to
teach or suggest “operating a user interface of a printing accessory to initiate
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and control said generating of said hardcopy.” Appellant’s arguments
present the following issue:
Did Appellant show that the Examiner erred in finding that Imbrie and
Bondy collectively teach or suggest “operating a user interface of a printing
accessory to initiate and control said generating of said hardcopy” (based on
“data stored on a mobile client device”), as recited in claim 21?
Claims 45-54
Appellant’s contentions (App. Br. 20-24) against the rejections of
these claims primarily focus on a user interface of a printer accessory as
discussed below.
FINDINGS OF FACT (FF)
Appellant’s Disclosure
1. Appellant describes the disclosed invention as follows:
The printing accessory (110) receives the data from the
mobile client device (100). This data may include one or more
documents or files, e-mails, e-mail attachments, data structures
or the like. The printing accessory (110) may be equipped to
receive data in any conceivable form or format. The printing
accessory (110) then provides the functionality to format the
received data, preferably under the control of a user through a
user interface, into a print job that can be transmitted to a
printer.
(Spec. ¶ 0027 (emphasis added).)
The printing accessory “processor (114) runs a printer driver (115)
that processes and formats data received from a client device (100) into a
print job.” (Spec. ¶ 0036 (emphasis added).)
Most personal computers including [sic] programming
that will be referred to generally as a “printer driver.” A
printer driver is a piece of software or firmware that receives
data or a document to be printed from an application running on
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the computer. The printer driver formats the data for use by a
corresponding printer, i.e., creates a print job, and then
transmits the print job to the printer. Using the print job, the
printer can produce a hardcopy of the underling data or
document.
(Spec. ¶ 0005 (emphasis added).)
Imbrie
2. Imbrie discloses (Figs.1 & 3; ¶¶ 0034-36) an intermediate device
50 (of a printing assembly 40 which “includes . . . one or more printers 70,
and a validation device 80” (¶ 0034)) containing a data parser in which print
data from a wireless submitting device 20 is “simultaneously decompressed,
decrypted and converted to the attached printer’s 70 data protocol format
(e.g. PCL5, PostScript, ProPrinter, PPDS, UTF-8 and the like).” (¶ 0064
(emphasis added).)
3. Imbrie discloses “an IR/RF transmitter/receiver associated with the
submitting device and an IR/RF transmitter/receiver associated with the
peripheral device.” (¶ 0066 (Claim 4).) The “IR/RF receiver/transmitter 58 .
. . allows the intermediate device 50 to transmit and receive data via an RF
and/or IR transmission.” (¶ 0043 (emphasis added).) The intermediate
device can also transmit via a hardwire connection. (Id.)
The various methods of communication include “Bluetooth; IEEE-
802.11B (WiFi); . . . USB; . . . IEEE-1284 (Parallel); and RS-232 (Serial) or
the like.” (¶ 0036.)
Using the system, . . . the user seeking to print a data file
from a wireless device such as a laptop computer, Palm
organizer, Pocket PC, other PDA, cellular phone, digital
camera, 2 way text pager, digital camera wristwatch or the like,
can approach any wireless-enabled printer and print e-mail,
web pages, digital photos, maps and/or full documents. . . .
[T]he user need not make decisions regarding the drivers,
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network privileges and/or printer capabilities. It is
contemplated that the system can be used as a value-added
service or as a new source of revenue at such places as print
shops, photo stores, copy shops, book stores, airports, hotels,
libraries and coffee shops.
(¶ 0008 (emphasis added).)
4. Imbrie’s mobile submitting device 20 prompts a user to provide a
user ID, printer selection, desired printing features, print job information,
and user validation information using the mobile submitting device display
28. (¶¶ 0024, 0038, 0051-53, 0055; Fig.2.)
5. To authorize/validate payment for printing, in conjunction with the
ID prompt noted above, a user swipes a credit card in a magnetic card reader
(¶ 0059) (validation device 80 attached to the intermediate device 50) of the
printing assembly 40 (see Fig. 1). The user also may be required to enter a
password into a keypad or keyboard integrated with validation device 80 (¶
0061). “It is also appreciated that payment may be made at the submitting
device.” Id. The mobile submitting device then transmits the data to be
printed (from its spooler (¶ 0062)) to the intermediate printing accessory
device. (¶¶ 0034, 0056-62; Figs. 1, 7.)
PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A determination of
obviousness can be based on a showing that “there was an apparent reason to
combine the known elements in the fashion claimed . . . .” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Appellant has the burden on appeal
to show reversible error by the Examiner in maintaining the rejection. See
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board,
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an applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (citation omitted).
“[W]hen . . . the prior art . . . is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR, 550 U.S. at 416 (citation omitted).
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” Id. at
417 (citation omitted). “‘Our suggestion test is in actuality quite flexible and
not only permits, but requires, consideration of common knowledge and
common sense.’” Id. at 421 (citation omitted).
ANALYSIS
Anticipation
Claim 1
Appellant’s argument (App. Br. 12-15) that Imbrie’s intermediate
printing accessory 50 does not contain a printer driver because Imbrie’s
mobile submitting device 20 contains a printer driver, is unconvincing.
According to Appellant’s Specification (FF 1), a printer driver merely
constitutes firmware or software that formats data so that a printer can
recognize the formatted data to create a hard copy.
As the Examiner explained (Ans. 22-23), Imbrie’s intermediate
printing accessory 50 (specifically, a data parser therein (Fig.3)) creates a
printer specific format - thereby constituting a printer driver in light of the
implied definition in Appellant’s Specification (FF 1). Imbrie’s printer
accessory formatting step, like Appellant’s printer accessory formatting step,
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is necessary so that any selected printer can recognize print data from the
printing accessory and create a hard copy. (Compare FF 2 with FF 1
(showing similarities).)
Appellant’s focus (App. Br. 14; Reply Br. 2-4) on the separate printer
driver in Imbrie’s mobile submitting device 20, which initially converts print
data to a universal format recognized by the printing accessory 50 prior to
the final formatting step by the printing accessory 50, does not address the
Examiner’s reasoning and does not demonstrate error. Claim 1 does not
preclude a separate universal printer driver in the mobile client device.
Claims 10-14, 16, and 18-20
Appellant’s argument (App. Br. 15-17) with respect to claim 10 that
Imbrie only discloses an infrared (IR) or a radio-frequency (RF) based
transmission, but not both, in the same intermediate device is unconvincing.
As the Examiner found, Imbrie discloses “RF and/or IR transmission.”
(Ans. 24; accord FF 3.) Appellant does not address this finding.
Appellant’s related argument (App. Br. 16) that Imbrie’s disclosure of
print request transmissions from a wide variety of transmitter types only
indicates that each intermediate device can receive only one such type of
transmission is also unconvincing. Imbrie discloses (FF 3) multiple
transmission formats from a myriad of device types including “a laptop
computer, Palm organizer, . . . cellular phone, . . . or the like” to “any
wireless-enabled printer . . . . as a new source of revenue at such places as . .
. airports, hotels, libraries and coffee shops.” This disclosure, like the “RF
and/or IR transmission” disclosure, evidences multiple transceiver types for
each intermediate device 50, as the Examiner found (Ans. 23-24). (Imbrie’s
reference to a wireless-enabled printer (FF 3) refers to the printing accessory
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50 and printer 70 (see FF 2).) Therefore, Appellant’s arguments fail to
demonstrate error with respect to claims 10-14, 16, and 18-20.
Obviousness
Claims 21-26 and 29
Appellant’s contention (App. Br. 18) with respect to claim 21 that
Imbrie and Bondy do not collectively teach or suggest “operating a user
interface of a printing accessory to initiate and control said generating of
said hardcopy” is unconvincing. Imbrie’s payment authorization/validation
technique (FF 5) satisfies this limitation as explained below.
In Imbrie (FF 5), as part of this payment authorization/validation
process, the mobile device prompts the user to enter a user ID and in
conjunction, the user swipes a credit card in a magnetic reader and/or enters
a password into a keypad or keyboard attached to the printing accessory.
This action, required as an initial control mechanism to ensure payment
before Imbrie’s mobile device downloads the hardcopy data to be printed
(FF 5), constitutes “operating a user interface of a printing accessory to
initiate and control generating of said hard copy,” as claim 21 requires.
Accordingly, Appellant’s arguments fail to demonstrate error in the rejection
of independent claim 21 and dependent claims 22-26 and 29 falling
therewith.4
Claims 2-9, 15, 17, 27, and 28
Appellant (App. Br. 20) recites the claim 15 limitation, “a user
interface incorporated into a printing accessory for controlling said printing

4 Aside from the issue presented with respect to claims 27-28 as discussed
below, claim 21 is selected as representative of claims 22-29 dependent
therefrom. See 37 C.F.R. § 41.37(c) (1) (vii).
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accessory,” and contends that the Imbrie and Bondy combined fail to teach
the user interface. Appellant also relies on “reasons given above” (App. Br.
20) in apparent reference to arguments directed to claim 21. As discussed
supra, Imbrie teaches the user interface.
As the Examiner also found, Bondy teaches the user interface (Ans.
13 (citing Bondy at ¶ 0017 which discloses “a user interface” on a printer
server 20 (i.e., a printer accessory)). Assuming for the sake of argument that
claim 15 requires more user interface control than Imbrie teaches under the
discussion supra with respect to claim 21, Bondy merely adds the
unremarkable teaching that printing accessories have control user interfaces.
“Common knowledge and common sense,” KSR, 550 US at 421, suggests
that most electronic devices, small and large, require interactive control
interfaces. Appellant’s arguments (App. Br. 18-19) (pertaining to claim 21)
directed to allegedly disparate sizes between Bondy’s server (printing
accessory) and Imbrie’s printing accessory do not undermine this common
knowledge about user interfaces.
Appellant also repeats the limitations of claims 4 and 27, and argues
that “the combination . . . fails to teach or suggest this subject matter” (App.
Br. 20). These mere denials with respect to claims 4 and 27 fail to rebut the
Examiner’s specific findings (Ans. 11, 16). Claim 28 falls with claim 27
from which it depends since Appellant presents no separate argument for
this claim.
Thus, Appellant’s arguments fail to meet the burden required on
appeal to demonstrate Examiner error in the rejection of claims 4, 15, 27,
and 28. See In re Kahn, 441 F.3d at 985-86; 37 C.F.R. § 41.37(c) (1) (vii).
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Appellant presents no arguments for the remaining claims rejected
based on Imbrie and Bondy. Therefore, claims 2-3 and 5-9 fall with claim 1
from which they ultimately depend, while claim 17 falls with claim 10 from
which it depends. See In re Nielson, 816 F.2d 1567, 1569, 1572 (Fed. Cir.
1987) (dependent claims, not argued separately, fall with the independent
claim, even though the dependent claims were rejected based on additional
(or different) references).
Claim 45
Appellant’s argument (App. Br. 21) that Minear does not suggest
“prompting a user to download data from said mobile client device to a
printing accessory” “with said user interface [of the printing accessory],” as
claim 45 recites, is also unconvincing. Imbrie’s mobile device display
prompts a user to download data such as user ID data, printer and printer
feature selection, print job, and other information (FF 4). In conjunction
with the user ID prompt, Imbrie discloses using the mobile device or a
printing accessory interface to enter more payment authorization data (FF 5).
As Imbrie teaches optional use of either display for certain
interactions, displaying the same or related prompting information on
Imbrie’s adjacent printing accessory display would have been an obvious re-
arrangement of locating the prompt displays. “[W]hen a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (citation
omitted). Therefore, Appellant’s arguments fail to demonstrate error.
Alternatively, in as much as Imbrie’s printing accessory operates at an
airport to generate revenue (FF 3), “common knowledge and common
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sense,” KSR, 550 U.S. at 421, suggests that Imbrie’s printing accessory
would convey simple data downloading instructions to a user walking by
(with a mobile device that may not be powered on) to encourage the user to
pay for a print job.
Thus, the Examiner’s findings are cumulative (Ans. 29) (stating that
Minear teaches sending prompts to a user display so that a user will
correspond by providing information, and Bondy teaches a user interface
display on a printing accessory “for facilitating user interactions.”). (See
also the discussions supra with respect to Bondy, incorporated herein).
Accordingly, Appellant’s arguments fail to demonstrate error in the rejection
of claim 45.
Claims 46-48
Appellant’s arguments (App. Br. 22-23) focus on claim 46; therefore,
claim 46 is selected to represent these claims. See 37 C.F.R.
§ 41.37(c)(1)(vii). Appellant contends (App. Br. 22) that the Examiner erred
in finding that Leiman discloses “displaying a listing of files that have been
downloaded to a printing accessory” because this “misrepresent[s] . . . what
Leiman actually teaches.” In particular, Appellant (id.) characterizes the
Examiner’s rejection as “misread[ing] the teachings of Leiman with respect
to a source computer [printer client device] as being relevant to the claimed
printing accessory.”
To the contrary, Appellant mischaracterizes the Examiner’s rejection.
The Examiner relies on Leiman’s print server user interface (not the source
computer user interface) as the printing accessory user interface satisfying
the claim. See Ans. 30-31 (stating Leiman “discloses a user interface at the
server,” citing Leiman “Fig 5 (52, 130)”) (Figure 5 depicts server 52 and
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GUI (graphical user interface) 130). Therefore, Appellant’s arguments fail
to demonstrate Examiner error in the rejection of claims 46-48.
Claims 49-54
Appellant’s arguments (App. Br. 23-24) focus on claim 49.
Therefore, claim 49 is selected to represent claims 49-54. See 37 C.F.R.
§ 41.37(c)(1)(vii). Appellant argues (App. Br. 23) that Farrell merely
teaches “known” “user interfaces for setting printing parameters” and does
not teach these user interfaces on a printing accessory.
As the Examiner reasoned (Ans. 20, 32), Bondy and Leiman each
disclose a user interface for a server (i.e., a printing accessory). As
Appellant acknowledges, Farrell teaches “known” “user interfaces for
setting printing parameters.” As such, Appellant’s arguments amount to a
separate attack on Farrell, fail to address the combination, and thereby fail to
demonstrate error.5 “[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(citation omitted). Therefore, Appellant has not shown Examiner error in
the rejection of claims 49-54.
Finally, Appellant argues (Reply Br. 13) that the “disclosed and
claimed ‘printing accessory’ . . . is distinct from a printer, a computer, or a
server.” However, Appellant does not explain how the claimed “printing

5 In response to Appellant’s arguments, the Examiner stated, inter alia (Ans.
32), that “Farell discloses a user interface allowing for the setting of printing
parameters . . . . It is clear that Bondy, Leiman and Farrell, each teach a user
interface for a server that allows for the setting of printer parameters.” The
use of the phrase “each teach,” while not precise, does not otherwise defeat
the Examiner’s thrust based on the combination.
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accessory” (in light of the disclosure) particularly distinguishes over any of
the prior art computers or servers as articulated by the Examiner. “The
problem in this case is that the appellants failed to make their intended
meaning explicitly clear.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). “It is the applicants’ burden to precisely define the invention, not the
PTO’s.” Id. (citation omitted).
CONCLUSION
Appellant did not show that the Examiner erred in finding that Imbrie
discloses a printer accessory with a printer driver as claim 1 requires and a
printer accessory having a plurality of different types of wireless
transceivers as claim 10 requires. Appellant did not show that the Examiner
erred in finding that Imbrie and Bondy collectively teach or suggest
“operating a user interface of a printing accessory to initiate and control said
generating of said hardcopy” (from “data stored on a mobile client device”)
as recited in claim 21. Appellant did not show error in the rejections of
claims 2-9, 11-20, 22-29, and 45-54.

DECISION
We affirm the Examiner's decision rejecting claims 1-29 and 45-54.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

KMF
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