Ex Parte Bell et alDownload PDFPatent Trial and Appeal BoardAug 11, 201613228873 (P.T.A.B. Aug. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/228,873 09/09/2011 70537 7590 08/12/2016 Prass LLP 2661 Riva Road Building 1000, Suite 1044 Annapolis, MD 21401 FIRST NAMED INVENTOR LynnM.BELL UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 056-0410 8408 EXAMINER SHAH, BHARA TKUMAR S ART UNIT PAPER NUMBER 2677 MAILDATE DELIVERY MODE 08/12/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LYNN M. BELL, MATTHEW 0. SCRAFFORD, and JASON C. TSONGAS 1 Appeal2015-003414 Application 13/228,873 Technology Center 2600 Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-3, 7-10 and 14--19. Claims 4--6, 11-13, and 20 have been cancelled. Br. 3. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b ). We reverse. 1 Appellants identify Xerox Corporation as the real party in interest. Br. 3. Appeal2015-003414 Application 13/228,873 STATEMENT OF THE CASE Introduction Appellants' invention is directed to user-selectable fonts to facilitate printing. Spec. i-f 1. According to the Specification, upon determining that a printing device is unable to process a print task without performing a font substitution, a message including a set of selectable options is sent to a user requesting at least one preferred font. Spec. i-fi-1 14, 18. In a disclosed embodiment, the set of selectable options "would include ... the ability to upload the [at least one preferred] font to the system via email." Spec. i-f 48. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized: 1. A print system comprising: a print management device configured to perform a print management service at a server to evaluate a print file corresponding to a print task and to acquire additional information such that, if it is determined that a printing device to which the print task is directed is unable to process the print task without performing a font substitution, the print management device enables the additional information to be acquired, thereby enabling the printing device, by using the additional information to process the print task, the print management device comprising a processor and a memory coupled to the processor, wherein the memory comprises program instructions executable by the processor to: evaluate the print file to determine if font substitution is needed to process the print task at the printing device; IF it is determined that font substitution is needed, then acquiring font substitution by: preparing a message comprising a set of selectable options to facilitate the user selectable font substitution to enable the printing device to perform the print task and wherein the set of selectable options comprise a link to an uploader module configured to facilitate the upload of at least one substitute font, upload the font via email, a link pointing to a font file to substitute the at least one font, an 2 Appeal2015-003414 Application 13/228,873 option to select an equivalent font that could be use[ d] as a substitute for the at least one font, and one or more selectable control, sending to a user the prepared message with the selectable options to provide the print management device with the requested additional information to enable the printing device to perform the print task; delaying processing of the print task until receiving an indication from the user of a selected option from the set of selectable options to facilitate the user-selectable font substitution; IF the user chooses to substitute the at least one font by using one of the set of selectable options, THEN processing the print task with the substitute for the at least one font; IF the user chooses the one or more selectable control, THEN canceling the print task. The Examiner's Rejection Claims 1-3, 7-10 and 14--19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bamford et al. (US 5,506,940; Apr. 9, 1996) ("Bamford") and Johnson et al. (US 2002/0136578 Al; Sept. 26, 2002) ("Johnson"). Final Act. 6-11. Issue on Appeal2 Did the Examiner err in finding the combination of Bamford and Johnson teaches or suggests preparing a message comprising a link configured to "upload the font via email," if it is determined that font substitution is needed, as recited in claim 1? 2 We only address this issue, which is dispositive. We do not address additional, non-dispositive issues raised by Appellants' arguments. 3 Appeal2015-003414 Application 13/228,873 ANALYSIS3 As set forth in claim 1, if it is determined that font substitution is needed, a message comprising a set of selectable options is prepared. The set of selectable options comprises: a link to an uploader module configured to facilitate the upload of at least one substitute font, upload the font via email, a link pointing to a font file to substitute the at least one font, an option to select an equivalent font that could be use[ d] as a substitute font for the at least one font, and one or more selectable control. (Emphasis added.) The Examiner relies on Johnson to teach or suggest, inter alia, the preparation of a message comprising a set of selectable options including uploading the font via email. Final Act. 8 (citing Johnson ii 19, Fig. 2). Appellants contend the proposed combination of Bamford and Johnson fails to teach or suggest the various recited actions, including "upload[ing]." Br. 17. Johnson is generally directed to an "Internet print device font distribution method and web site." Johnson, Abstract. As part of printer configuration, or upon a determination that a print job uses an unavailable font, the user may be connected to a web site to allow for the uploading or purchase of the desired, or an equivalent font. Johnson ii 16. Johnson also discloses that recommended fonts may be displayed to the user. Johnson ii 19. "A visitor [(i.e., user)] is allowed to select only compatible fonts. The 3 Throughout this Decision, we have considered the Appeal Brief, filed September 10, 2014 ("Br."); the Examiner's Answer, mailed on November 24, 2014 ("Ans."); and the Final Office Action ("Final Act."), mailed on March 10, 2014, from which this Appeal is taken. 4 Appeal2015-003414 Application 13/228,873 visitor selects fonts 30 for transfer. The web site then authorizes transfer 31 of a selected one or multiple ones of visitor selected fonts." Johnson i-f 20. However, the Examiner has not sufficiently explained how, as one of the selectable options, the upload of a selected or desired font is done via email, as claimed. For the reasons discussed supra, and on the record before us, we are constrained to reverse the Examiner's rejection of independent claim 1. For similar reasons, we do not sustain the Examiner's rejection of independent claims 8 and 15, which recite similar limitations. Additionally, we do not sustain the Examiner's rejection of dependent claims 2, 3, 7, 9, 10, 14, and 16-19. DECISION We reverse the Examiner's decision to reject claims 1-3, 7-10 and 14--19. REVERSED 5 Copy with citationCopy as parenthetical citation