Ex Parte Boldon

Patent Trial and Appeal Board

Mar 27, 2017

10342560 (P.T.A.B. Mar. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/342,560 01/15/2003 John Leland Boldon 82094474 1059
22879
HP Tnr
7590 03/29/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
GENACK, MATTHEW W
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
03/29/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
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y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LELAND BOLDON
Appeal 2015-002314
Application 10/342,560
Technology Center 2600
Before KRISTEN L. DROESCH, JASON V. MORGAN, and
MICHAEL R. ZECHER, Administrative Patent Judges.
ZECHER, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 12—21 and 28—39. App. Br. 3.1 Claims 1—11 and 22—27
were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6.
We reverse.
1 All references to the Appeal Brief refer to the Appeal Brief filed on June
10, 2014.
Appeal 2015-002314
Application 10/342,560
The Invention
Appellant invented a method, non-transitory computer-readable
medium, and apparatus that facilitates printing from a telephone. Spec. 1:23.
According to Appellant, a telephone (e.g., mobile telephone) establishes
communication with an imaging device (e.g., printer, photocopier facsimile
device, etc.) in order to provide specifications regarding the telephone to the
imaging device. Id. at 16:5—13. The imaging device uses these
specifications to generate an interface that it communicates to the telephone,
which, in turn, uses the interface to identify or select documents to be
printed at the imaging device. Id. at 16:14—17:1.
Related Appeal
We previously decided an appeal in the present application on July 20,
2011. See Ex parte Boldon, No. 2009-007 111, available at https ://e-
foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2009007 111 -07-
18-2011-1 (BPAI2011) (affirming-in-part the Examiner’s anticipation
rejection, and entering a new ground of rejection).
Illustrative Claim
Claims 12, 17, 28, 32, 33, and 37—39 are independent. Claims 13—16
directly depend from independent claim 12; claims 18—21 directly depend
from independent claim 17; claims 29—31 directly depend from independent
claim 28; and claims 34—36 directly depend from independent claim 33.
Independent claim 12 is illustrative of the claims at issue and is reproduced
below:
12. A method for facilitating printing from a telephone
comprising:
receiving telephone specifications at a printing device
relating to the capabilities of the telephone to receive a program
executable to display a printing device-specific user-interface to
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Application 10/342,560
the telephone, wherein the printing device-specific user-
interface includes printing selections that correspond to a
number of capabilities of the printing device;
exporting, from a printing device, the program executable
to display the printing device-specific user-interface to be
displayed on the telephone based on the received telephone
specifications;
receiving with the printing device printing selections
entered by a user on the telephone using the exported user-
interface displayed on the telephone; and
printing with the printing device in accordance with the
printing selections.
App. Br. 20 (Claims App’x).
Prior Art Relied Upon
Yajima US 2002/0016833 A1 published Feb. 7, 2002
(filed Aug. 1, 2001)
Aidinejad US 2004/0085573 A1 published May 6, 2004
(filed Oct. 31,2002)
Rejection on Appeal
Claims 12—21 and 28—39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Aidinejad and Yajima.
Final Act. 2—9.2
Examiner’s Findings and Conclusions
The Examiner finds that Aidinejad teaches all the limitations recited
in independent claims 12, 17, 28, 32, 33, and 37—39, except receiving
telephone specifications at a printing device relating to the capabilities of the
telephone to receive a printing device-specific user interface, whereby said
interface is to be displayed on the telephone based on the received telephone
specification. Final Act. 3—8 (citing Aidinejad 40-42, 47 49, 52—55,
2 All references to the Final Action refer to the Final Rejection mailed on
February 12, 2014.
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Application 10/342,560
Figs. 3, 4a—e). The Examiner turns to Yajima as teaching this limitation. Id.
at 3, 5—7 (citing Yajima 59, 60, Figs. 1, 12). The Examiner also provides
reasoning as to why one of ordinary skill in the art would have been
prompted to combine or modify the teachings of Aidinejad and Yajima. Id.
at 4, 6, 8 (citing Yajima 17).
Appellant’s Contentions
Appellant contends that Aidinejad’s disclosure of a user making
selections on a user interface of a phone that communicates with a mobile
printing accessory does not teach a program executable that creates a device­
specific user interface, as required by independent claims 12, 17, 28, 32, 33,
and 37—39. App. Br. 14—15. According to Appellant, Aidinejad does not
teach this particular feature required by independent claims 12, 17, 28, 32,
33, and 37—39 because it never uses a program executable to reflect the
printing capabilities of the phone. Id. at 15. Appellant further contends that
Yajima fails to cure this deficiency in Aidinejad. Id. at 15. Appellant argues
that Yajima’s disclosure of a phone that allows a user to select certain print
jobs available at a printer does not teach a program executable that displays
a device-specific user interface on a phone, as required by independent
claims 12, 17, 28, 32, 33, and 37—39. Id. at 16. According to Appellant,
Yajima does not teach this particular feature required by independent claims
12, 17, 28, 32, 33, and 37—39 because it never uses a program that displays a
device-specific user interface to reflect the printing capabilities of the phone.
Id. at 16—17.
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Application 10/342,560
II. ISSUE
The dispositive issue before us is whether the Examiner erred in
determining that the combined teachings of Aidinejad and Yajima account
for “a program executable to display . . ., wherein the printing device­
specific user-interface includes printing selections that correspond to a
number of capabilities of the printing device [and]. . . exporting, from a
printing device, the program executable . . . device-specific user interface
. . . based on the received telephone specifications,” as recited in
independent claim 12, and similarly recited in independent claims 17, 28, 32,
33, and 37-39?
III. ANALYSIS
Claims 12, 17, 28, 32, 33, and 37—39
We discern error in the Examiner’s obviousness rejection of
independent claim 12, which recites, amongst other things, “a program
executable” based on “telephone specifications.” We also discern error in
the Examiner’s obviousness rejection of independent claims 17, 28, 32, 33,
and 37—39, each of which recites a similar limitation.
The Examiner takes the position that Aidinejad’s mobile printing
accessory 110 that provides an interface to mobile client device 100 capable
of displaying various options relating to the functionality of printer 120,
such as color printing, two-sided printing, portrait printing, landscape
printing, the number of pages printed per sheet, etc., teaches the claimed
“program executable.” Final Act. 2—3 (citing Aidinejad ^fl[ 53, 54, Fig. 4d).
In the Answer, the Examiner finds that Figure 4d of Aidinejad illustrates
mobile printing accessary 110 that amounts to a program that executes on a
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wireless phone. Ans. 9—10.3 According to the Examiner, the interface
illustrated in Figure 4d depends on the knowledge of the functionality of
printer 120 being controlled by the wireless phone (i.e., mobile client device
100) on which said interface is displayed. Id. at 10. For instance, the
Examiner finds that, if printer 120 was incapable of color printing or two-
sided printing, then those respective options would not appear in the
interface displayed on the wireless phone. Id.
The Examiner’s obviousness rejection is predicated on the notion that
Aidinejad’s mobile printing accessory 110 teaches a program that executes
on a wireless phone and, therefore, accounts for the claimed “program
executable.” See Ans. 9—10. We do not agree with the Examiner in this
regard. Figures 1 and 2 of Aidinejad clearly illustrates that mobile printing
accessory 110 is a physical device located between mobile client device 100
and printer 120. Indeed, Aidinejad discloses that mobile printing accessory
110 is designed specifically to provide an interface between mobile client
device 100 and printer 120, and, preferably, is a small, lightweight, and
portable device. Aidinejad 157. Aidinejad further explains that mobile
printing accessory 110 is limited in functionality and is not intended to
provide the functionality of a general purpose computer. Id. 1 58. Given the
aforementioned description of Aidinejad’s mobile printing accessory 110,
we fail to see how this physical device could quality as a program that
executes on a wireless phone, as asserted by the Examiner.
To the extent the Examiner is arguing that the interface provided by
mobile printing accessory 110 to mobile client device 100 amounts to a
program that executes on a wireless phone, we are unable to discern how
3 All references to the Examiner’s Answer refer to the Answer entered on
October 29, 2014.
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this particular interface is based on the specifications of the mobile client
device 100, as required by independent claims 12, 17, 28, 32, 33, and 37—39.
In other words, although Aidinejad discloses that a wireless phone is capable
of displaying the interface provided by mobile printing accessory 110
(e.g., interface illustrated in Figure 4d) (see Aidinejad 1 54), the Examiner
does not direct us to, nor can we find, a disclosure in Aidinejad that explains
adequately how mobile printing accessory 110 generates this interface based
on phone specifications it received from the wireless phone.
We recognize that the Examiner relies on Yajima’s disclosure of
portable phone 1 transmitting information to printer 3 to teach the claimed
“telephone specifications.” See Final Act. 3. Yajima, however, only
discloses transmitting “identification data” specific to portable phone 1 to
printer 3. Yajima | 59. The Examiner does not explain how Yajima’s
“identification data” specific to portable phone 1 amounts to phone
specifications that enable printer 3 to ascertain the interface capabilities of
the phone. Without such an explanation, we are not persuaded that Yajima’s
“identification data” transmitted between portable phone 1 and printer 3
necessarily qualifies as the claimed “telephone specifications.” It follows
that the Examiner has erred in determining that the combination of Aidinejad
and Yajima renders independent claims 12, 17, 28, 32, 33, and 37—39
unpatentable.
Claims IS—16, 18—21, 29—31, and 34—36
The Examiner has erred in rejecting dependent claims 13—16, 18—21,
29-31, and 34—36 for the same reason set forth above in our discussion of
independent claims 12, 17, 28, and 33, because each of these dependent
claims include the same program executable limitation as their underlying
base claim.
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IV. CONCLUSION OF LAW
The Examiner has erred in rejecting claims 12—21 and 28—39 as being
unpatentable under § 103(a).
V. DECISION
We reverse the Examiner’s decision to reject claims 12—21 and 28—39.
REVERSED
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