Ex Parte Burleson

Board of Patent Appeals and Interferences

May 20, 2010

10640756 (B.P.A.I. May. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WINSLOW S. BURLESON
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Appeal 2009-004100
Application 10/640,7561
Technology Center 2100
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Decided: May 21, 2010
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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.)
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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.
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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
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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.)
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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
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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
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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
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“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-
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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).

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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)

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