Ex Parte Carroll

Board of Patent Appeals and Interferences

May 30, 2012

10632133 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEREMY JOHN CARROLL
____________

Appeal 2009-011293
Application 10/632,133
Technology Center 2600
____________

Before SCOTT R. BOALICK, ERIC B. CHEN, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8 and 11-17. We have jurisdiction under 35 U.S.C. § 6. We
affirm-in-part. We affirm the rejections of claims 1-6, 8, and 11-16. We reverse
the rejections of claims 7 and 17.

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STATEMENT OF THE CASE
Appellant’s invention is a computer-based method and system for assigning
a print job in a printing system, based on calculating a cost of possible print job
assignments and selecting a preferred assignment based on the calculated cost.
Claim 1 is illustrative, with disputed limitations in italics:
1. A method of assigning a print job in a printing system, the printing system
comprising at least one printer and at least one computer connected to said
printer(s), wherein the or each printer has a plurality of different printing
configurations and the or each computer is capable of generating at least one print
job, said print job(s) having corresponding printing requirements, each printing
configuration being capable of satisfying one or more printing requirements, the
method comprising the steps of:

i) creating one or more print jobs;

ii) notionally assigning the or each print job created in step i) as a notional
print job assignment across one or more of the printers in such a way that the one
or more of the printers have printing configurations that are capable of satisfying
the printing requirements of a corresponding print job;

iii) calculating a cost for printing the or each print job according to said
notional print job assignment;

iv) repeating steps ii) and iii) at least once for a at least one different notional
print job assignment; and

v) selecting from the notional print job assignments according to the
calculated costs a preferred assignment of the or each print job.

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THE REJECTIONS
Claims 1-8 and 11-17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Owa.
ISSUE
The issue is whether the Examiner erred in finding that Appellant’s claimed
assignment of a print job based on a calculation of the cost of possible print job
assignments is obvious over Owa’s disclosure of calculating a “score” for each
printer to decide which of a plurality of printers is the optimum one to print all or
part of a print job.

CONTENTIONS
The Examiner finds that Owa compares print job requirements to printer
configurations and calculates a score, which is a value for each print job for each
particular printer. (Ans. 5). The Examiner further finds that Appellant’s
calculation of a cost for each print job assignment would have been obvious over
Owa, since calculating a cost is equivalent to calculating a score. Id.
Appellant agrees that Owa assigns points when analyzing which printer is
best suited to satisfy a user’s needs. (App. Br. 6). However, Appellant states that
“[t]he bottom line is that Owa can determine whether a printer can handle a print
job… [but] is silent on ‘calculating a cost for printing each print job according to
said notional print job assignment’ as required by claims 1 and 11.” (App. Br. 6-7
(emphasis in original)). Appellant further contends that “Owa is also silent with
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respect to ‘selecting from the notional print job assignments according to the
calculated costs a preferred assignment of the or each print job’, as claimed by
claims 1 and 11.” (App. Br. 6-7 (emphasis in original)).

ANALYSIS
Claims 1, 8, 11
Appellant’s argument that Owa’s point system only determines which
printer(s) can handle the job (App. Br. 7) is in contrast to Owa’s disclosure. Owa
discloses more than merely determining which printers can handle a job. While it
is true that Owa seeks to improve printing efficiency by relieving the user of the
burden of tracking printer capabilities and status when assigning a print job to a
printer, Owa also discloses improving printing efficiency by selecting an optimum
printer for each job and each page of a job. (¶¶ [0007-0009].) The Examiner notes
that paragraphs [0070-0071] of Owa discloses selecting an optimum printer from
eligible printers using scores which are adjusted based on such factors as the
location of the printer, the amount of paper and other factors which best satisfy the
preferences of the user. (Ans. 4). Owa discloses circumstances when two users
executing the same print job at different times will have the job assigned to
different printers based on the printer conditions at the time. (¶¶ [0070-0071].)
The Examiner also points out that paragraph [0073] Owa specifically discloses that
an optimum printer can even be assigned for each page of a document. (Ans. 10).
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Because Owa discloses evaluating the assignment of each print job to
determine the optimal assignment of the job among printers and the optimal
assignment of each page of each print job among printers, the Examiner did not err
in citing Owa as a reference disclosing selecting a preferred assignment of a print
job from notional assignments.
Turning to the issue of whether Appellant’s cost determination of notional
assignments is obvious over Owa’s scoring system, we note that Appellant defines
“cost” broadly, stating that cost “may be other than pure economic costs, dictated
by, for example, user requirements not readily rendered in financial terms.”
(Spec., p. 4, ll. 5-7; see also Ans. 9-10). Appellant cites the Specification at page
8, line 13 to page 14, line 26 as support for the claim limitation of “calculating a
cost for printing the or each print job according to said notional print job
assignment.” (App. Br. 3). These portions of the Specification describe
developing a Property Profile for non-configurable printer properties, e.g., black
and white laser printing capability v. ink-jet color printing capability (Spec., p. 9-
11), by setting property values, i.e., property X: pnameX; pvalueX. The cited
portion of the Specification also describes a Configurable Component Profile for
configurable features, e.g., paper size and quantity, using Configuration Settings,
i.e. configuration Y: pnameY (sic, cnameY); cvalueY (Spec., p. 9-11). The cited
portion of the Specification further discloses describing a Print Job in a similar
manner to generate a job ticket and arriving at sets called a Printer Profile 32 and
Print Job Requirements. (Spec., p. 14, ll. 1-8). These specific implementation
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features cited by Appellant are not recited in the claims. Moreover, the
Specification discloses that it may not always be necessary to represent each
feature or attribute in these sets. (Spec., p. 14, ll. 10-12). However, as noted by
Appellant, these portions of the Specification, which describe assigning vales to
printer and print job features, reflect Appellant’s broad interpretation of the
claimed feature of calculating a cost for printing a print job. (App. Br. 3).
The Examiner admits that Owa does not use the word “cost.” (Ans. 5, 9).
Instead of calculating a “cost” for each print job assignment, Owa discloses
determining whether to assign all or part of a print job to a printer based on a point
score calculated for each candidate printer for a pending print job or each page of a
print job. (Ans. 7-8, 10, 13).
Figure 6 of Owa shows a flow chart with printers initially being assigned
high or low scores based on whether basic information about the printer has
properties that satisfy requirement priorities. (Owa ¶ [0064].) The printer scores
are then adjusted up or down depending upon the attributes of a pending print job,
e.g., a job with a large numbers of pages raises the score for a high speed printer.
(Owa ¶ [0065]; see also Ans. 13.) An indication that a candidate printer cannot be
selected immediately because it is currently in use costs that printer points and
reduces its final score. (Owa ¶ [0066].) The printer with the highest final score is
selected as an optimum printer. (Owa ¶ [0067]; see Ans. 13.)
Owa’s calculation of a score and Appellant’s claimed calculation of a cost
arrive at the same result from different directions. Owa discloses reducing the
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score for a candidate printer in circumstances where Appellant would increase the
cost value. Assigning a print job based either on higher point scores or lower cost
assessments is equivalent, because each approach seeks to optimize the job
assignment among eligible printers. Because Appellant’s cost calculation method
is an obvious variation of the score calculation method disclosed in Owa, we
affirm the Examiner’s rejection of claims 1, 8, and 11 as being obvious over Owa.

Claims 2, 3, 12, 13
Appellant’s recitation in claims 2 and 12 that “said calculation of the cost
includes an assessment of the cost of any needed change from a pre-existing
configuration(s) to changed configuration(s)” emphasizes Appellant’s broad
definition of cost. As the Examiner points out (Ans. 11), Owa discloses comparing
the number of sheets of A4 paper needed for a particular job to the number of A4
sheets in a printer. Owa teaches that excluding a preferred printer with an
insufficient paper supply results in selecting a less preferred printer, e.g., one that
is currently occupied with a different print job. (Owa ¶[0069]). Owa does not
explicitly disclose adjusting the score of the excluded printer (such exclusion
effectively reduces its score to zero). However, under the broadest reasonable
interpretation of the claim language, by disclosing excluding a printer, Owa
discloses an “assessment of the cost of any needed changes from a pre-existing
configuration(s) to changed configuration(s).”
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Claims 3 and 13 further limit claims 2 and 12 and recite that where the
needed changes include manual reconfiguration of at least one printer, the
calculated cost includes an assessment of the cost of such manual configuration.
For the reasons just discussed, we agree with the Examiner that Owa’s discussion
of paper supply issues renders it obvious to include in the cost calculation an
“assessment” of the cost of manual reconfiguring.
Appellant has not demonstrated that the Examiner erred in rejecting claims
2, 3, 12, and 13 as being obvious over Owa, and we affirm this rejection.

Claims 4, 14
Claims 4 and 14 further limit claims 3 and 13, respectively, and recite
presenting to the user instructions for manually reconfiguring a printer. Presenting
reconfiguration instructions to the user is non-functional descriptive material and
does not add patentable weight to the claimed method of assigning a print job to a
printer or calculating the cost for printing a print job according to a notional
assignment. As noted above with respect to claims 3 and 13, Owa conducts an
“assessment” of the cost of manual reconfiguration when it excludes a printer from
the list of eligible printers. Paragraph [0062] of Owa discloses displaying a
message when none of the printers can be selected. Owa also discloses providing a
GUI interface to inform the user of which of the printers connected to the network
are printing the document. (Owa ¶ [0068].) Thus, Owa discloses presenting
appropriate messages to a user of such a system. The particular message presented
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does not add patentable weight to the claim. In addition, substituting the specific
messages disclosed in Owa with instructions for manually reconfiguring a printer
is an obvious expedient yielding a predictable result and does not contribute any
patentable subject matter to the claims. See KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 416-418 (2007). Appellant has not demonstrated that the Examiner erred
in rejecting claims 4 and 14 as obvious over Owa, and we affirm this rejection.

Claims 5, 6, 15, 16
Claims 5 and 15 depend from claims 1 and 12 respectively, and recite the
further limitation that a given print job is assigned to more than one printer and that
the system presents to the user instructions for locating, assembling, collating,
binding or otherwise combining material from the printers. Claims 6 and 16 also
depend from claims 1 and 12 respectively, and recite splitting a print job according
to the print job requirements. Owa discloses selecting more than one printer for a
print job depending upon the requirements of the job. (¶¶ [0073-0077]; see Ans.
10, 12.) Thus, Owa discloses splitting a print job according to the print job
requirements as broadly recited in claims 6 and 16, as well as assigning a print job
to more than one printer as recited in claims 5 and 15.
Turning to the further limitations of claims 5 and 15, Owa also discloses
displaying to the user information identifying the printers at which a document is
being printed (Owa ¶ [0068]), and displaying to the user summary information for
the optimum printer selected for a page (Owa ¶¶ [0109-0110]; see also, Fig. 12(b),
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showing a display identifying the pages to be printed by specific printers). Thus,
Owa discloses presenting appropriate messages to a system user. The display of
specific messages concerning assembling, collating and binding a document does
not contribute patentable weight to the claims.
Appellant has not demonstrated that the Examiner erred in rejecting claims
5, 6, 15, and 16 over Owa, and we affirm this rejection.

Claims 7 and 17
Claims 7 and 17 depend from claims 1 and 11 respectively, and limit the
calculated cost to an economic cost. Owa’s scoring system makes no reference to
economic cost and we agree with Appellant that Owa does not suggest such a
calculation. Therefore, we conclude that the Examiner erred in extending the
teaching of Owa to the limitation in claims 7 and 17 that the calculated cost is an
economic cost. We reverse the rejection of claims 7 and 17.

CONCLUSION
Appellant has not demonstrated that the Examiner erred in finding that
claims 1-6, 8, and 11-16 are obvious over Owa. Appellant has demonstrated that
the Examiner erred in extending the teaching of Owa to reject claims 7 and 17.

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ORDER
The Examiner’s decision to reject claims 1-6, 8, and 11-16 is affirmed. The
Examiner’s decision to reject claims 7 and 17 is reversed.
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

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