Ex Parte BurlesonDownload PDFBoard of Patent Appeals and InterferencesMay 20, 201010640756 (B.P.A.I. May. 20, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte WINSLOW S. BURLESON ____________________ Appeal 2009-004100 Application 10/640,7561 Technology Center 2100 ____________________ Decided: May 21, 2010 ____________________ Before JAY P. LUCAS, ST. JOHN COURTENAY III, and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed August 14, 2003. The real party in interest is International Business Machines Corp. (App. Br. 2.) Appeal 2009-004100 Application 10/640,756 2 STATEMENT OF THE CASE The Appellant appeals from the Examiner’s rejection of claims 8-12, 19, 21-23, 30, and 32-36 under authority of 35 U.S.C. § 134(a). Claims 1-7, 13-18, 24-29, and 31 have been canceled. The Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. Appellant’s Invention Appellant invented a print system and method for printing multiple linked pages in a networked computer system. The print system includes a graphical user interface (GUI) including a print command button, a page controller that automatically opens sub-pages linked to a primary page, and a print controller that automatically prints the primary page and linked sub- pages on activation of the print command button. (Spec. 3, ll. 3-9; 4, ll. 1- 10; 10, l. 17 to ll, l. 23.)2 Representative Claim Independent claim 8 further illustrates the invention. It reads as follows: 8. A system for printing multiple pages found in a network comprising: a graphic user interface having a menu bar including a print command button; 2 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”) filed October 18, 2007. We also refer to the Examiner’s Answer (“Ans.”) mailed January 10, 2008. Appeal 2009-004100 Application 10/640,756 3 a page controller adapted to automatically open sub- pages linked to by a primary page; and a print controller adapted to automatically print said primary page and said sub-pages based on a single activation of said print command button. Reference The Examiner relies on the following reference as evidence of unpatentability: Narayanaswami GB 2 332 543 A Jun. 23, 1999 Rejection on Appeal The Examiner rejects claims 8-12, 19, 21-23, 30, and 32-36 under 35 U.S.C. § 102(b) as being anticipated by Narayanaswami. ISSUE Based on our review of the administrative record, Appellant’s contentions, and the findings and conclusions of the Examiner, the pivotal issue before us is as follows. Does the Examiner err in finding the Narayanaswami reference discloses automatically printing a primary page and linked sub-pages on a single activation of a print command button? (Claim 8 (Br. 25).) FINDINGS OF FACT (FF) Narayanaswami Reference 1. Narayanaswami describes a graphical user interface (screen display (301)), including a print selections button (311) that initiates a “batch selecting and printing process” (p. 7, l. 16; Fig. 3) of a webpage and Appeal 2009-004100 Application 10/640,756 4 pages hyperlinked to the webpage. (p. 6, l. 16 to p. 7, l. 31.) Selecting (activating) the print selections button displays the print selections screen (window) (403) where a user to makes numerous choices (selections) regarding the web page and hyperlinked web pages that are to be printed. (p. 7, l. 33 to 9, l. 27; Figs. 4-5.) For example, Narayanaswami describes: A method and implementing computer system . . . in which a network user may invoke a print selection mode to quickly identify and queue-up web pages for printing in one continuous batch process. The print selection methodology displays a plurality of selections from which a user may select for the requested print operation. In one example, a user is able to select from a listing of only the hyperlinks available on a target page for subsequent print selection. The user is able to quickly identify and save a list of the selected pages and hyperlinked pages, down to a designated hyperlink depth level, for printing with selected print parameters, and then initiate an asynchronous printing process once for all of the selected pages. (Abstract.) ANALYSIS Appellant contends that: Narayanaswami does not automatically print a primary page and subpages based on a single activation of the “print selections button” (which the Office Action asserts teaches the “print command button” of the claimed invention). Instead, after activating the “print selections button”, a user in Narayanaswami is required to make a selection among several print options. (Br. 12-13.) The Examiner finds that Narayanaswami discloses each feature of Appellant’s independent claim 8 and maintains that the claim is properly rejected. (Ans. 3-4, 6-8; Final Office Action, mailed June 6, 2007, pp. 2-3.) Appeal 2009-004100 Application 10/640,756 5 Specifically, the Examiner cites Narayanaswami’s print selections button (311) shown in Figure 3 as disclosing automatic printing a primary page and linked sub-pages on a single activation of a print command button – “based on a single point- and-click of said print selection button, batch selecting of original page and all hyperlinked pages to the original page are selected and printed by the batch selecting and printing process” (Ans. 7). (Ans. 4, 6-7.) Accordingly, we decide the question of whether the Examiner erred in finding the Narayanaswami reference discloses automatically printing a primary page and linked sub-pages on a single activation of a print command button. After reviewing the record on appeal, we agree with Appellant, and we find the Examiner has not made a prima facie anticipation rejection based on the cited portions of the Narayanaswami reference. Specifically, we find that the Examiner’s own contradictory description of Narayanaswami precludes a prima facie anticipation rejection. The Examiner finds that “based on a single point- and-click of said print selection button [print selections button (311)], batch selecting of original page and all hyperlinked pages to the original page are selected and printed by the batch selecting and printing process.” (Ans. 7.) But, the Examiner also finds that “Narayanaswami describes several options for selecting and printing a page and sub-pages. For example, the user will be able to select a desire page and any level of sub-pages to view and print.” (Ans. 7; see also Final Office Action at 2-3.) We broadly but reasonably construe “automatically” to mean without user interaction. Upon reviewing the cited portions of the Narayanaswami reference, we agree with Appellant that a single “click” (activation) of Appeal 2009-004100 Application 10/640,756 6 Narayanaswami’s “print selections” button (311) does not automatically print a primary page and linked sub-pages. (FF 1.) As explained by the Examiner, a user is presented with sub menus and additional selection choices involving user interaction after the selection of print selections button (311). Due to the Examiner’s contradictory analysis of the Narayanaswami reference, we cannot affirm the Examiner’s anticipation rejection of Appellant’s claim 8. Each of Appellant’s independent claims 19 and 30 recite limitations of commensurate scope. Dependent claims 9-12, 21-23, and 32-36 stand or fall with their respective base claims. Accordingly, we reverse the Examiner’s anticipation rejection of claims 8-12, 19, 21-23, 30, and 32-36. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) Pursuant to our authority under 37 C.F.R. § 41.50(b) (2008), we are entering the following new ground of rejection. We reject claims 8-12, 19, 21-23, 30, and 32-36 under 35 U.S.C. § 102(b) as being anticipated by Narayanaswami. ADDITIONAL FINDINGS OF FACT (FF) Narayanaswami Reference 2. Narayanaswami describes the selection of the menu item “Execute Print Selections” (in “Global Selections” menu (417)) for printing a selected web page or selected portions of a web page, and selected pages hyperlinked to the webpage or selected portions of the web page. (p. 7, l. 33 Appeal 2009-004100 Application 10/640,756 7 to 9, l. 5; p. 9, l. 29 to 10, l. 28; Figs. 4, 6, 7.) After a user makes the desired selections, Narayanaswami describes automatically printing the webpage and pages hyperlinked to the webpage by selecting (“clicking” or activating) the “Execute Print Selections” button: After a user has completed the selection process and wishes to proceed with the print job, the user will click on the “Execute Print Selections” button on the global menu 417, and the program will integrate the selections and instructions and initiate a continuous and asynchronous printing operation to print in one sequence all of the selected documents in the format chosen. (p. 8, l. 45 to 9, l. 5; Fig. 4.) a determination is made as to whether “Execute Print Selections” 719 from the global selections menu has been made. If “Execute Print Selections” has been clicked on, the program will [go] to “Get Current and Saved Selected Documents” 735 and proceed to asynchronously print the selected documents 737 with the selected parameters and instructions, and the program will end 739. (p. 10, ll. 22-27; Fig. 7.) Rejection of claims 8-12, 19, 21-23, 30, and 32-36 under 35 U.S.C. § 102(b) As discussed supra, we are unable to affirm the Examiner’s anticipation rejection of the claims based on the portions of the Narayanaswami reference cited by the Examiner, and due to the Examiner’s contradictory analysis of the reference. The Narayanaswami reference, however, discloses each feature of Appellant’s independent claim 8. Narayanaswami discloses printing multiple pages found in a network utilizing a graphical user interface (GUI) with a menu including an “Execute Print Selections” button. (FF 1, 2.) Narayanaswami discloses initiating a Appeal 2009-004100 Application 10/640,756 8 “batch selecting and printing process” (FF 1) of a webpage and pages hyperlinked to the webpage by a single “click” of the “Execute Print Selections” button (FF 2) – which we broadly but reasonably construe as “a page controller [capable of] automatically open[ing] sub-pages linked to [ ] a primary page[,] and a print controller [capable of] automatically print[ing] [the] primary page and [the] sub-pages based on a single activation of [the] print command button” as recited in Appellant’s claim 8. Thus, we find that the Narayanaswami reference discloses each feature of Appellant’s independent claim 8, including automatically printing a primary page and linked sub-pages on a single activation of a print command button. Therefore, we reject Appellant’s independent claim 8 as anticipated by the Narayanaswami reference. Each of Appellant’s independent claims 19 and 30 recite limitations commensurate in scope to those of claim 8. Therefore, we reject Appellant’s independent claims 19 and 30 as anticipated by the Narayanaswami reference. We adopt the Examiner’s findings (Ans. 3-9; Final Office Action at 2- 6) with respect to Appellant’s dependent claims 9-12, 21-23, and 32-34, and we find that the Narayanaswami reference discloses each feature of Appellant’s dependent claims 9-12, 21-23, and 32-34. With respect to dependent claims 35 and 36, we adopt the Examiner’s findings, and we find that Narayanaswami discloses storing in a file a list of the pages selected to be printed, and a “Print ‘All But’ Selections” button (415) that prints all hyperlinks on a page except user selected hyperlinks. (Ans. 6, 8; Narayanaswami, p. 7, l. 33 to 9. l. 5; p. 9, l. 30 to 10, l. 27.) Appellant’s claims 35 and 36 recite “preventing printing of duplicate sub- Appeal 2009-004100 Application 10/640,756 9 pages” by “storing a list of all pages that have been printed in a file [, and] preventing automatic printing of a sub-page if [the] sub-page appears in [the] file” – which we broadly but reasonably construe to mean preventing printing of duplicate pages (sub-pages) by storing printed pages to a file and not printing pages that appear in the file, i.e., by an undisclosed method of comparing links or page names. Narayanaswami describes a user selecting links not to be printed – which we find is equivalent to comparing links or page names – and storing the selections for printing by the automatic print method previously discussed, supra. Therefore, we also reject Appellant’s dependent claims 35 and 36 as anticipated by the Narayanaswami reference. Thus, we find that the Narayanaswami reference anticipates each of Appellants claims 8-12, 19, 21-23, 30, and 32-36. Accordingly, we reject claims 8-12, 19, 21-23, 30, and 32-36 under 35 U.S.C. § 102(b). CONCLUSIONS OF LAW 1. Appellant has shown that the Examiner erred in rejecting claims 8-12, 19, 21-23, 30, and 32-36 under 35 U.S.C. § 102(b). 2. We have entered a new ground of rejection against claims 8-12, 19, 21-23, 30, and 32-36 under 35 U.S.C. § 102(b). DECISION We reverse the Examiner’s rejection of claims 8-12, 19, 21-23, 30, and 32-36 under 35 U.S.C. § 102(b). We also enter a new ground of rejection for claims 8-12, 19, 21-23, 30, and 32-36 under 35 U.S.C. § 102(b). Appeal 2009-004100 Application 10/640,756 10 This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal 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 § 41.52 by the Board upon the same record . . . . 37 C.F.R. § 41.50(b). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. § 41.50(b) rwk McGinn Intellectual Property Law Group, PLLC 8321 Old Courthouse Road Suite 200 Vienna, VA 22182-3817 Copy with citationCopy as parenthetical citation