Ex Parte Biundo

Board of Patent Appeals and Interferences

Apr 7, 2009

10341014 (B.P.A.I. Apr. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARC C. BIUNDO
____________

Appeal 2009-0794
Application 10/341,014
Technology Center 2600
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Decided1: April 7, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and THOMAS S.
HAHN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0794
Application 10/341,014

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-3, 5-9, 12-14, and 16-23. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant invented a system that configures cellular phones to print to
particular printers. As a cellular phone enters specific networks where
printers reside, a message containing information is sent to the phone
allowing the phone to be configured to print to particular printers.2 Claim 1
is illustrative:
1. A cellular phone comprising:

a transceiver to receive a message that includes printer configuration
information of a printer including an electronic printer address;

a memory to store the printer configuration information; and

a processor coupled to the memory to configure the cellular phone for
printing to the printer at the electronic printer address, based on the printer
configuration information stored in the memory.

The Examiner relies on the following prior art references to show
unpatentability:
Imbrie US 2002/0169002 A1 Nov. 14, 2002
Pineau US 2002/0184307 A1 Dec. 5, 2002
Watanabe US 6,987,580 B2 Jan. 17, 2006
(filed Apr. 19, 2001)

2 See generally Abstract; Spec. 3:5-13.
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3
The Examiner rejected claims 1-3, 5-9, 12-14, and 16-23 under 35
U.S.C. § 103(a) as unpatentable over Imbrie and Watanabe (Ans. 3-8).3
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer4 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE OBVIOUSNESS REJECTION OVER IMBRIE AND WATANABE
Claims 1, 2, 5-7, 19, 20, and 22

3 Although the Examiner presents a separate obviousness rejection statement
for claims 3, 9, 12-14, 16-18, and 21 over Imbrie, Watanabe, and Pineau
(Ans. 9-11), these claims are the same claims that were rejected under the
rejection based on Imbrie and Watanabe. Compare Ans. 3 with Ans. 9.
Nevertheless, we deem this error harmless since the Examiner indicates that
prior art previously made of record is applied in support of the rejection
based on Official Notice (Ans. 9)—prior art that we presume is the Pineau
reference. We therefore presume that the additional reference to Pineau was
cited merely as evidence to support a challenged finding of Official Notice
in connection with the rejection based on Imbrie and Watanabe. As such,
the Examiner’s reliance on Pineau applies to the rejection of claim 3 based
on Imbrie and Watanabe (along with a finding of Official Notice).
Therefore, only that rejection is before us.
4 Throughout this opinion, we refer to (1) the Appeal Brief filed July 2,
2007; (2) the Examiner’s Answer mailed Oct. 18, 2007; and (3) the Reply
Brief filed Dec. 14, 2007.
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4
Regarding representative claim 1,5 the Examiner finds that Imbrie
teaches a cellular phone (i.e., “submitting device” 20) with all of the claimed
subject matter except for an electronic printer address. The Examiner,
however, relies on Watanabe for this teaching in concluding the claim would
have been obvious (Ans. 3-5).
Appellant argues the cited prior art does not teach or suggest a cellular
phone that receives an electronic printer address. According to Appellant,
Watanabe does not send the electronic printer address to the cellular phone,
but rather the print queue manager (1) receives the print destination from the
user of the phone; (2) relates this destination to a corresponding stored
electronic printer address; and (3) instructs printer output at the printer
corresponding to the address (App. Br. 11). Appellant adds that while
Imbrie’s “specialized printer driver” identifies the location, identification,
and capabilities of each printer within communication range, none of these
identified attributes constitute an electronic printer address (Reply Br. 3).
The Examiner, however, maintains that the RF receiver/transmitter of
Imbrie’s “submitting device” 20 (which is said to correspond to the recited

5 Appellant argues (1) claims 1, 14, 19, and 22 together as a first group
(App. Br. 10-13); (2) claims 8, 18, and 23 together as a second group (App.
Br. 13-14); and (3) claims 3, 9, 14, 18, and 21 together as a third group
(App. Br. 14-16). Moreover, claims 2, 5-7, 12, 13, 16, 17, and 20 are not
separately argued with particularity apart from their dependence on
previously-argued claims. See App. Br. 16. Accordingly, we group claims
1, 2, 5-7, 19, 20, and 22 together and select claim 1 as representative of this
group. See 37 C.F.R. § 41.37(c)(1)(vii). We also group claims 8 and 23
together as a second group and select claim 8 as representative of that group.
Lastly, since claims 3, 9, 12-14, 16-18, and 21 recite commensurate
limitations with respect to the short message service limitation, we group
these claims together and select claim 3 as representative.
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cellular phone) receives the specialized printer driver which includes an
electronic printer address (Ans. 12-13). The Examiner adds that Watanabe’s
cellular phone transmits printing documents via a network, and the printer
manager “facilitates” the printer’s address for printing (Ans. 13).
Appellant also argues that there is no motivation to combine Imbrie
and Watanabe as the Examiner proposes since, among other things, Imbrie
teaches away from requiring the cellular phone to receive an electronic
printer address. According to Appellant, Imbrie’s “submitting device” sends
data to an intermediate device 50 for processing which is, in turn, sent to the
printer 70. This connectivity between the intermediate device and the
printer, Appellant contends, would purportedly obviate any motivation to
send an electronic printer address to the submitting device (App. Br. 12).

Claims 8 and 23
Regarding representative claim 8, Appellant argues that Imbrie and
Watanabe do not locate a cell phone. According to Appellant, Watanabe
does not determine the geographic location of the phone, but rather the user
merely selects a printer from a list of available printers irrespective of where
the user is located (App. Br. 13). Appellant further argues that while
Imbrie’s submitting device may identify the location of printing assemblies,
Imbrie does not locate the phone. Appellant adds that there is no motivation
to combine the references to locate a cellular phone as claimed (App. Br. 13-
14).
The Examiner, however, notes that since Imbrie determines (1) the
location of the printer’s access point, and (2) that the cellular phone is within
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range of transmission of that access point, then the cellular phone is located
(Ans. 14).

Claims 3, 9, 12-14, 16-18, and 21
Regarding representative claim 3, Appellant argues that the cited prior
art does not teach or suggest receiving printer configuration information in
the form of a short messaging service (SMS) as claimed. The Examiner,
however, takes official notice that SMS messaging is well known in the art
and cites a prior art reference that was previously made of record (Pineau) as
evidence of such a fact (Ans. 9, 15).
The issues before us, then, are as follows:

ISSUES
(1) Has Appellant shown that the Examiner erred in finding that
Imbrie and Watanabe collectively teach or suggest a cellular phone that
receives an electronic printer address in rejecting claim 1 under § 103?
(2) Has Appellant shown that the Examiner erred in finding that
Imbrie and Watanabe collectively teach or suggest a network configured to
locate a cellular phone configurable to print to a printer in rejecting claim 8
under § 103?
(3) Has Appellant shown that the Examiner erred in finding that the
cited prior art along with conventional knowledge in the art renders obvious
receiving printer configuration using SMS in rejecting claim 3 under § 103?
(4) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Imbrie
1. Imbrie discloses a system for printing data from a “submitting
device” 20 (e.g., a cellular telephone) at a selected printing assembly 40,
where each printing assembly includes an “intermediate device” 50 and one
or more printers 70 (Imbrie, Abstract; ¶¶ 0034, 0036; Fig. 1).
2. Initially, a specialized print driver is loaded into the submitting
device by (1) downloading the software from a server via the Internet, or (2)
transmitting the software to the submitting device via an IR or RF
transmission from the printing assembly 40 (Imbrie, ¶ 0045).
3. The specialized printer driver negotiates or determines the location,
identification, and capabilities of each printer 70 that is within IR/RF
transmission range of the submitting device, and will make this information
available to the user (Imbrie, ¶ 0045).
4. The submitting device includes (1) a memory portion 24 for
storing the print driver; (2) a processor 22 for processing data within the
memory portion and a spooler; and (3) an IR/RF receiver/transmitter 34 that
enables RF and/or IR data transmission and reception (Imbrie, ¶¶ 0037,
0039; Fig. 2).
5. After initializing the print driver, a list of available printing
assemblies 40 is generated based on which printing assemblies are within
physical range. The print driver then sequentially queries each listed
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printing assembly, and a print query reply is transmitted to the submitting
device (Imbrie, ¶¶ 0047-49; Fig. 4 (Steps 140, 150, and 230)).
6. The print query reply includes information regarding the printer’s
availability, properties, and location (Imbrie, ¶ 0049).
7. Once all of the printing assemblies within range have been queried,
the print driver updates the Printer Properties section of the Print dialog and
a list of the available printing assemblies is displayed (Imbrie, ¶ 0051; Fig. 5
(Steps 270-280)).
8. Information displayed for each listed printer includes the location
of the printing assembly and the attached printer’s options and features
(Imbrie, ¶ 0051).

Watanabe
9. Watanabe discloses a document transmission apparatus 100
including a print document manager 303 that stores a document to be printed
associated with an email address of a user of a cellular phone 107. When the
document is stored, a print notification message is emailed to the user
indicating that the document to be printed is present. After the user
instructs the system via the cellular phone to print the document, the
document is transmitted to a destination for printing in accordance with that
instruction (Watanabe, Abstract; col. 4, ll. 37-65; col. 5, ll. 62-65; Figs. 1, 3).
10. The document transmission apparatus 100 has a printer manager
310 that includes a print destination management table 701 which stores,
among other things, (1) the name of a print destination (e.g., a convenience
store name); (2) type of printer installed at that destination; (3) a printer
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address; (4) printer driver name corresponding to the printer, etc.
(Watanabe, col. 7, ll. 4-15; Figs. 3, 7).
11. After notifying the user of the existence of a print document, the
user can display a print destination designation screen on the cellular phone
listing print destinations stored in the print destination management table
701 (e.g., “Osaka st. store,” “Nagoya st. store,” “Tokyo st. store”)
(Watanabe, col. 9, ll. 60-62; col. 10, ll. 29-35; Fig. 12).

Pineau
12. Pineau teaches transmitting messages from a remote server 50 to
selected addresses via electronic mail, an SMS message, or any other form
of electronic message (Pineau, ¶ 0041).
13. After a new image is transmitted to the remote server 50, the
server transmits to the wireless phone 200 either (1) an acknowledgment
message indicating successful transmission, or (2) an error message
indicating unsuccessful transmission via electronic mail, SMS service
message, or any other form of electronic message (Pineau, ¶ 0045; Figs. 8,
9a, 9b).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
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Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 550
U.S. 398, 127 S. Ct. 1727 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
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Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
An Examiner's use of Official Notice unsupported by documentary
evidence should only be taken when the facts so noticed are “capable of such
instant and unquestionable demonstration as to defy dispute.” See In re
Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (citations omitted). Moreover, if
the Examiner's assertion of Official Notice is adequately traversed, the
Examiner must provide documentary evidence in the next Office Action to
maintain the rejection. Manual of Patent Examining Procedure §
2144.03(C), Rev. 6, Sept. 2007(“MPEP”).

ANALYSIS
Claims 1, 2, 5-7, 19, 20, and 22
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 which calls for, in pertinent
part, a cellular phone that receives an electronic printer address. Indeed,
Imbrie alone at least suggests this limitation. As indicated in the Findings
of Fact section above, a specialized print driver is wirelessly loaded into
Imbrie’s “submitting device” (i.e., the cellular phone (FF 1)) which
negotiates or determines the location, identification, and capabilities of each
printer that is within IR/RF transmission range of the phone and provides
this information to the user (FF 2 and 3; emphasis added). Although Imbrie
does not explicitly state that this received information constitutes an
electronic printer address, this information would at least suggest such an
address since it pertains to the particular location, identification, and
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capabilities of each individual printer within range of the phone (i.e., the
information can be associated with a particular printer within range). This
functionality at least suggests that the phone receives an electronic printer
address as claimed.
We reach the same conclusion with respect to the “print query reply”
that is transmitted to the phone after querying the printing assemblies—
information that includes each queried printer’s availability, properties, and
location (FF 5-8). Like the information in the specialized print driver, the
information derived from the print query reply provides location and
properties of a particular printer within range. See FF 6 and 8. As such, this
information would likewise suggest receiving an electronic printer address
associated with a particular printer.
Although we find the teachings of Watanabe merely cumulative to
those of Imbrie, we nonetheless find no error in the Examiner’s reliance on
Watanabe for teaching an electronic printer address. Watanabe’s document
transmission apparatus uses a print destination management table 701 which
stores, among other things, a printer address and the name of a print
destination (e.g., a convenience store name) (FF 10; emphasis added).
While Watanabe does not send the printer address itself to the user’s
phone after notifying the user of the existence of a print document, the user
can nonetheless display various print destinations stored in the print
destination management table 701 (e.g., “Osaka st. store,” “Nagoya st.
store,” “Tokyo st. store”) (FF 11). Notably, these same print destinations are
correlated to particular printer addresses in the print destination management
table. See FF 10. As such, we see no reason why the printer address could
not be sent to the user’s phone in addition to—or in lieu of—the name of the
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print destinations. Providing such address information to the user’s phone
would have been an obvious expedient, particularly since it is derived from
the same source as the print destination name information sent to the phone
(i.e., the print destination management table). See FF 10 and 11.
Moreover, we find ample reason on this record to combine Watanabe
with Imbrie. As we indicated previously, Imbrie all but explicitly states that
the phone receives an electronic printer address when within range of
particular printers. Receiving an electronic printer address, such as the
addresses stored in the print destination management table of Watanabe,
would only enhance the user’s identification and selection of a particular
printer within range. Appellant’s arguments pertaining to the connectivity
between the intermediate device and the printer as purportedly obviating any
motivation to send an electronic printer address to the submitting device
(App. Br. 12) are unavailing. These arguments are simply not germane to
the benefit that such electronic printer address information would provide to
the user, namely in connection with selecting a printing assembly by
identifying and associating particular printers and their capabilities. As
such, we find the Examiner’s reason to combine the teachings of these
references is supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 2, 5-7, 19, 20, and
22 which fall with claim 1.

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Claims 8 and 23
We will also sustain the Examiner’s obviousness rejection of
representative claim 8 which calls for, in pertinent part, a network
configured to locate a cellular phone configurable to print to a printer. As
we indicated previously, a specialized print driver is wirelessly loaded into
Imbrie’s cellular phone which negotiates or determines the location,
identification, and capabilities of each printer that is within IR/RF
transmission range of the phone and provides this information to the user
(FF 2 and 3).
This functionality of Imbrie is based, in part, on the cellular phone’s
relative location with respect to the printing assemblies (i.e., whether the
phone is within range of the printing assemblies). Although the phone is not
located with pinpoint accuracy, it is nonetheless “located” to the extent that
it is within a particular region that is within range of the printing assemblies
by virtue of the phone’s ability to communicate with the respective printing
assemblies. We see no error in the Examiner’s reliance on this teaching as
suggesting the locating limitation of claim 8.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 8. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 23 which falls with
claim 8.

Claims 3, 9, 12-14, 16-18, and 21
We will also sustain the Examiner’s rejection of representative claim
3 which calls for, in pertinent part, receiving printer configuration
information in the form of a SMS. As we indicated previously, the
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Examiner cited Pineau merely as evidence to support a challenged finding of
Official Notice that SMS messaging is well known in connection with the
rejection based on Imbrie and Watanabe. See n.3, supra, of this opinion.
Not only do we find no error in the Examiner’s taking of Official Notice that
SMS messaging is well known, we also find no error in the Examiner’s
reliance on Pineau as evidence of such a fact. Indeed, this practice is
consistent with established procedure that requires Examiners to produce
evidence to support assertions of Official Notice if challenged. See MPEP
§ 2144.03(C).
As the Examiner indicates, Pineau provides ample evidence that SMS
messaging is well known in the art (see FF 12-13), including
communications between a wireless phone and a server (FF 13). Based on
the record before us, we see no reason why SMS messaging could not have
been used to communicate the printer configuration information to the phone
in Imbrie. Using such a format for this communication is tantamount to the
predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, 127 S. Ct. at 1740.6
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 3. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 9, 12-14, 16-18,
and 21 which fall with claim 3.

6 Appellant’s arguments pertaining to another reference to Gomes (App. Br.
14-15; Reply Br. 7-8) are inapposite to the Examiner’s reliance on Pineau as
evidence to support the Examiner’s taking of Official Notice. Accordingly,
we need not address the merits of the Gomes reference.
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CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
1-3, 5-9, 12-14, and 16-23 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-3, 5-9, 12-14, and 16-23
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

gvw

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