Ex Parte Boldon

Board of Patent Appeals and Interferences

Jul 18, 2011

10342560 (B.P.A.I. Jul. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN LELAND BOLDON
____________
Appeal 2009-007111
Application 10/342,5601
Technology Center 2600
____________

Before KRISTEN L. DROESCH, JASON V. MORGAN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on January 15, 2003. The real party in interest is Hewlett-Packard
Development Co., L.P. (App. Br. 2.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1, 2, 4-8, 10-25, and 28-39. (App. Br.
2.) Claims 3, 9, 26, and 27 have been cancelled. (Id.) We have jurisdiction
under 35 U.S.C. § 6(b) (2008).
We affirm-in-part and enter a new ground of rejection.
Appellant’s Invention
Appellant invented a method, computer-readable medium, and
apparatus for printing from a telephone. (Spec. 1, l. 23.)
Illustrative Claims
Independent claims 1, 6, and 12 further illustrate the invention as
follows:
1. A method for facilitating printing from a
telephone, comprising:
receiving with the telephone selection of data stored on
the telephone to be printed;
initiating with the telephone a data call with a printing
device so as to establish a connection with the printing device
by dialing a telephone number of the printing device; and
facilitating transmission of the selected data from the
telephone to the printing device for printing.

6. A method for facilitating printing from a
telephone, comprising:
receiving with a printing device print data transmitted
from the telephone;
receiving printing selections entered by a user using a
control panel display of the printing device; and
facilitating printing of the received print data on the
printing device in accordance with the received printing
selections.

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12. A method for facilitating printing from a
telephone, comprising:
exporting from a printing device a printing device
specific interface to the telephone;
receiving with the printing device printing selections
entered by a user using the exported interface; and
facilitating printing with the printing device in
accordance with the printing selections.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Ohmura US 2001/0055983 A1 Dec. 27, 2001

Rejection on Appeal
The Examiner rejects claims 1, 2, 4-8, 10-25, and 28-39 under 35
U.S.C. § 102(b) as being anticipated by Ohmura.
Appellant’s Contentions
1. Appellant contends that Ohmura’s disclosure of a first
telephone calling a second telephone, which happens to be connected to a
printer, does not describe “initiating with the telephone a data call with a
printing device…by dialing a telephone number of the printing device,” as
recited in independent claim 1. (App. Br. 11-12; Reply Br. 3-4.) Appellant
also argues that Ohmura’s second telephone and printer are separate and
independent devices. (App. Br. 12-13; Reply Br. 2-3, 5.)
2. Appellant contends that since Ohmura discloses that the printer
does not have a display or control part, Ohmura does not describe “receiving
printing selections entered by a user using a control panel display of the
printing device,” as recited in independent claim 6. (App. Br. 13-14; Reply
Br. 6.)
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3. Appellant contends that although Ohmura discloses using a
print menu on the second telephone, Ohmura does not disclose that the print
menu was exported from a “printing device,” as recited in independent claim
12. (Id. at 16-17.) Appellant also argues that Ohmura’s disclosure of both
data pertaining to the aspect ratio of an image and the resolution of the
image does not describe “a printing device specific interface,” as claimed.
(Reply Br. 8-9.) Therefore, Appellant argues that Ohmura does not describe
“exporting from a printing device a printing device specific interface to the
telephone,” as claimed. (App. Br. 16-17; Reply Br. 8-9.)
Examiner’s Findings and Conclusions
1. The Examiner finds that Ohmura’s second telephone and
portable printer constitute a single printing device. (Ans. 6-7.) Therefore,
the Examiner finds that since Ohmura discloses that the first telephone dials
the number of the second telephone, which is part of the printing device,
Ohmura describes “initiating with the telephone a data call with a printing
device…by dialing a telephone number of the printing device,” as recited in
independent claim 1. (Id. at 7.)
2. The Examiner finds that since Ohmura discloses that a user can
input printing selections into the control panel of the second telephone,
which is part of the printing device, Ohmura describes “receiving printing
selections entered by a user using a control panel display of the printing
device,” as recited in independent claim 6. (Id. at 10-11.)
3. The Examiner finds that Ohmura discloses sending image data
from the portable printer to the second telephone such that the second
telephone may use its’ display to present images to a user. (Id. 11-12.)
Therefore, the Examiner finds that Ohmura describes “exporting from a
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printing device a printing device specific interface to the telephone,” as
recited in independent claim 12. (Id.)

II. ISSUES
1. Has Appellant shown that the Examiner erred in finding that
Ohmura anticipates independent claim 1? In particular, the issue turns on
whether Ohmura describes “initiating with the telephone a data call with a
printing device…by dialing a telephone number of the printing device,” as
recited in independent claim 1.
2. Has Appellant shown that the Examiner erred in finding that
Ohmura anticipates independent claim 6? In particular, the issue turns on
whether Ohmura describes “receiving printing selections entered by a user
using a control panel display of the printing device,” as recited in
independent claim 6.
3. Has Appellant shown that the Examiner erred in finding that
Ohmura anticipates independent claim 12? In particular, the issue turns on
whether Ohmura describes “exporting from a printing device a printing
device specific interface to the telephone,” as recited in independent claim
12.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Appellant’s Specification
FF 1. Appellant’s Specification states that:

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[i]n the context of this document, a “computer-readable
medium” can be any means that can store, communicate,
propagate, or transport the program for use by or in connection
with the instruction execution system, apparatus, or device.
The computer-readable medium can be, for example, an
electronic, magnetic, optical, electromagnetic, infrared, or
semiconductor system, apparatus, device, or propagation
medium.

(Spec. 8, l. 20-id. at 9, l. 3.) (Emphasis added.)
Ohmura
FF 2. Ohmura’s figure 1 depicts transmitting either image data
captured by a digital camera (10) or, image or character data stored in a
server (12), to a cellular phone (14) via wire or wireless. (¶ [0049].)
Ohmura discloses that the cellular phone (14) communicates with a cellular
phone (100) through public lines (16), and transmits the image or character
data to the cellular phone (100). (Id.) Further, Ohmura discloses that the
cellular phone (100) may be connected to a portable printer (200) via a
communication cable (18), a wireless communication protocol (i.e.,
Bluetooth), or they may be directly connected to each other. (¶ [0051].)
Additionally, Ohmura discloses transmitting the image or character data
from the cellular phone (100) to the portable printer (200) according to the
operation of the cellular phone (100). (¶ [0054].) Ohmura discloses that the
portable printer (200) prints the images or characters on instant print film
(232). (Id.)
FF 3. Ohmura’s figures 3-7 depict a direct connection between the
cellular phone (100) and the portable printer (200). (¶ [0061].) Ohmura
discloses that a user can hold both the cellular phone (100) and portable
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printer (200) with one hand and operate the cellular phone (100) with the
other hand. (Id.)
FF 4. Ohmura’s figure 23 depicts the operation of the cellular phone
(100) at the printing stage. (¶ [0120].) In particular, Ohmura disclose that a
user chooses to print an image by pushing a menu button on the cellular
phone (100). (¶ [0121].) Before the print menu is chosen or just before
printing, Ohmura discloses connecting the portable printer (200) to the
cellular phone (100). (Id.) After the print menu is chosen, Ohmura
discloses that the liquid crystal display (“LCD”) (103) of the cellular phone
(100) displays an image-selection screen, thereby allowing a user to select
an image on the screen. (¶ [0122]; see also fig. 2.)

IV. ANALYSIS
Claim 1
Independent claim 1 recites, inter alia, “initiating with the telephone a
data call with a printing device…by dialing a telephone number of the
printing device.”
First, we consider the scope and meaning of the term “a printing
device,” which must be given the broadest reasonable interpretation
consistent with Appellant’s disclosure. As explained in In re Morris,
127 F.3d 1048 (Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
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Id. at 1054. See also Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that
“claims must be interpreted as broadly as their terms reasonably allow.”).
Appellant’s Specification states that:
[a]s illustrated in FIG. 1, the imagining device 104 may
comprise a printer. More generally, the imaging device 104
comprises substantially any device that is capable of receiving
data and generating a hardcopy output pertaining to the
received data. Accordingly, the imaging device could
alternatively comprise, for example, a photocopier, a
multifunction peripheral (MFP) device, an all-in-one device, a
facsimile device, etc.

(Spec. 4, ll. 3-8.)

Upon reviewing Appellant’s Specification for context, we conclude
that the claimed term “a printing device” may be broadly, but reasonably
construed as any device that is capable of receiving data and generating a
hardcopy output pertaining to the received data, such as a MFP device or an
all-in-one device.
As detailed in the Findings of Fact section above, Ohmura discloses a
first cellular phone that communicates with a second cellular phone via
public lines in order to transmit image or character data. (FF 2.) Ohmura
discloses that the second cellular phone is directly connected to a portable
printer that prints the images or characters on instant print film. (Id.)
Ohmura also discloses that the direct connection between the second cellular
phone and portable printer is such that a prospective user can hold both
devices in one hand while operating the second cellular phone with the other
hand. (FF 3.)
We find that Ohmura’s disclosure of the first cellular phone initiating
communication with the second cellular phone via public lines amounts to
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using a first telephone to initiate a call by dialing the telephone number of a
second telephone. Moreover, consistent with our claim construction above,
we find that Ohmura’s second cellular phone and portable printer
configuration describes the claimed “printing device” because such a
configuration constitutes a single MFP device or all-in-one device that
receives image or character data and generates a hardcopy output of such
data (i.e., instant print film). Thus, we find that Ohmura describes “initiating
with the telephone a data call with a printing device…by dialing a telephone
number of the printing device,” as recited in independent claim 1. It follows
that Appellant has not shown that the Examiner erred in finding that Ohmura
anticipates independent claim 1.
Claims 2, 4, and 5
Since Appellant argues the rejection of claims 1, 2, 4, and 5 as a
single group (App. Br. 11-14), dependent claims 2, 4, and 5 fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 6
Independent claim 6 recites, inter alia, “receiving printing selections
entered by a user using a control panel display of the printing device.”
As detailed in the Findings of Fact section above, Ohmura discloses
displaying both a print menu and an image selection screen on the LCD of
the second cellular phone. (FF 4.) In particular, Ohmura discloses that a
user can print an image on the portable printer by pushing a menu button and
selecting the image on the LDC of the second cellular phone. (Id.)
Therefore, in light of our analysis supra, since a user is capable of making
printing selections on the LCD display of the second cellular phone and
portable printer configuration, we find that Ohmura describes “receiving
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printing selections entered by a user using a control panel display of the
printing device,” as recited in independent claim 6. It follows that Appellant
has not shown that the Examiner erred in finding that Ohmura anticipates
independent claim 6.
Claims 7, 8, 10, and 11
Since Appellant argues the rejection of claims 6-8, 10, and 11 as a
single group (App. Br. 14-15), dependent claims 7, 8, 10, and 11 fall with
independent claim 6. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 12
Independent claim 12 recites, inter alia, “exporting from a printing
device a printing device specific interface to the telephone.”
As discussed supra, Ohmura discloses that a user is capable of making
printing selections on the LDC display of the second cellular phone and
portable printer configuration. However, we agree with Appellant that
Ohmura does not describe exporting a printing device specific interface from
the printing device to the telephone, as claimed. (App. Br. 16-18; Reply Br.
7-9.) While Ohmura describes displaying a print menu and image selection
screen on the LCD of the second cellular telephone, Ohmura is silent in
regards to exporting either the print menu or image selection screen from the
second cellular phone and portable printer configuration to the first cellular
phone. Moreover, we agree with the Appellant that it is improper for the
Examiner to construe the second cellular phone and portable printer
configuration as the claimed “printing device” for the purposes of both
independent claims 1 and 6, and then construe each device as separate and
distinct devices for the purposes of this claim limitation. (Reply Br. 7-8.)
Therefore, we find that the Examiner improperly relied upon Ohmura to
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describe “exporting from a printing device a printing device specific
interface to the telephone,” as recited in independent claim 12. It follows
that Appellant has shown that the Examiner erred in finding that Ohmura
anticipates independent claim 12.
Claims 13-16
Since dependent claims 13-16 also incorporate the claim limitation
discussed supra, we find that Appellant has shown error in the Examiner's
rejection of these claims for the reasons set forth in our discussion of
independent claim 12.
Claim 17-21 and 28-39
Since independent claims 17, 28, 32, 33, and 37-39, and dependent
claims 18-21, 29-31, and 34-36, either recite a similar claim limitation to
independent claim 12, or incorporate such claim limitation by reference, we
find that Appellant has shown error in the Examiner's rejection of these
claims for the reasons set forth in our discussion of independent claim 12.
Claims 22-24
Appellant offers the same argument set forth in response to the
anticipation rejection of independent claim 1 to rebut the anticipation
rejection of independent claim 22 and dependent claims 23 and 24. (App.
Br. 19-20.) We have already addressed this argument in our discussion of
independent claim 1, and we found it unpersuasive. It follows that
Appellant has not shown that the Examiner erred in finding that Ohmura
anticipates independent claim 22 and dependent claims 23 and 24.
Claim 25
Appellant offers the same arguments set forth in response to the
anticipation rejection of independent claims 1 and 6 to rebut the anticipation
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rejection of independent claim 25. (App. Br. 20-21.) We have already
addressed these arguments in our discussion of independent claims 1 and 6,
and we found them unpersuasive. It follows that Appellant has not shown
that the Examiner erred in finding that Ohmura anticipates independent
claim 25.

V. NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
35 U.S.C. § 101 Rejection
Claim 22
Independent claim 22 recites, inter alia, “[a] printer manager stored
on a computer-readable medium, comprising: …”. (Emphasis added.)
As detailed in the Findings of Fact section above, Appellant’s
Specification indicates that a computer-readable medium may be any means
that can store, communicate, propagate, or transport a program, such as an
electronic, magnetic, optical, electromagnetic, or infrared propagation
medium. (FF 1.) We find that the claimed “computer-readable medium”
can be broadly, but reasonably construed to encompass a transitory,
propagating signal containing information. Further, since the claim is not
limited to a non-transitory, tangible medium within one of the four statutory
classes of 35 U.S.C. § 101,2 we find that independent claim 22 is directed to
non-statutory subject matter.

2 “The four categories [of § 101] together describe the exclusive reach of
patentable subject matter. If a claim covers material not found in any of the
four statutory categories, that claim falls outside the plainly expressed scope
of § 101 even if the subject matter is otherwise new and useful.” In re
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Claims 23-25, 28-31, and 33-36
For the same reasons as discussed supra, we find that independent
claims 25, 28, and 33, and dependent claims 23, 24, 29-31, and 34-36, are
also directed to non-statutory subject matter.

VI. CONCLUSIONS OF LAW
1. Appellant has not shown that the Examiner erred in rejecting
claims 1, 2, 4-8, 10, 11, and 22-25 as being anticipated under 35 U.S.C. §
102(b).
2. Appellant has shown that the Examiner erred in rejecting claims
12-21 and 28-39 as being anticipated under 35 U.S.C. § 102(b).
3. Claims 22-25, 28-31, and 33-36 are directed to non-statutory
subject matter under 35 U.S.C. § 101.

VII. DECISION
1. We affirm the Examiner’s decision to reject claims 1, 2, 4-8,
10, 11, and 22-25 as being anticipated under 35 U.S.C. § 102(b).
2. We reverse the Examiner’s decision to reject claims 12-21 and
28-39 as being anticipated under 35 U.S.C. § 102(b).

Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). “A transitory, propagating
signal . . . is not a ‘process, machine, manufacture, or composition of matter’
[under 35 U.S.C. § 101]” and, therefore, does not constitute patentable
subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007). Claims that are so broad that they read on nonstatutory as well as
statutory subject matter are unpatentable. Cf. In re Lintner, 458 F.2d 1013,
1015 (CCPA 1972) (citation omitted) (“Claims which are broad enough to
read on obvious subject matter are unpatentable even though they also read
on nonobvious subject matter.”).
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2. Pursuant to our authority under 37 C.F.R. § 41.50(b), we have
entered a new ground of rejection against claims 22-25, 28-31, and 33-36 as
being directed to non-statutory subject matter under 35 U.S.C. § 101.

37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .

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-IN-PART
37 C.F.R. § 41.50(b)

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