Ex Parte Chakra et al

Patent Trial and Appeal Board

Jul 8, 2016

13169998 (P.T.A.B. Jul. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/169,998 06/27/2011
46321 7590 07112/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
AlChakra
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920110021US1 (275) 2920
EXAMINER
WALLACE, JOHN R
ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
07/12/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL CHAKRA, LIAM HARPUR,
MARK KELLY, and JOHN RICE
Appeal2014-003025
Application 13/169,998
Technology Center 2600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
LINZY T. McCARTNEY, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing ("Request") under 37 C.F.R.
§ 41.52(a)(l) for reconsideration of our Decision on Appeal, mailed March
17, 2016 ("Decision"). The Decision affirmed the Examiner's rejection A of
claims 1---6 and 13-18 under 35 U.S.C. § 101, as being directed to non-
statutory subject matter, and rejections Band C under§ 103(a) of claims
1-18. In the Request, Appellants do not further contest the rejection under
§ 101. Instead, Appellants focus on the § 103 rejection of claim 1.
We have reconsidered our Decision, in light of Appellants' arguments
in the Request, and are not persuaded that we misapprehended or overlooked
any points in rendering our Decision. We decline to change or modify our
prior Decision for the reasons discussed infra.
Appeal2014-003025
Application 13/169,998
In the Request ( 6-7), Appellants refer to the Appeal Brief and
contend, inter alia:
In particular, at page 12 of the Appeal Brief and again at
page 8 of the Reply Brief, Appellants noted that a teaching had
been claimed of determining whether or not printing the subject
print job on behalf of the end user encroaches within a threshold
value of the remaining allocation of printing resources
established for the end user. Paragraph [0011] of Bartley does
not pertain to a threshold value of a remaining allocation of
printing resources of a printer if a print job is sent to the printer.
Instead, paragraph [0011] of Bartley suggests an action if the
financial resources of an end user are depleted beyond a
threshold level irrespective of the resources of the printer.
Examiner had not sought to combine this teaching of paragraph
[0011] with any other teaching of any other reference and relied
solely upon paragraph [0011] and paragraph [0044] of Bartley
neither of which consider the resources of the printer itself.
Yet, the totality (the "whole") of Appellants' claim
language requires an inspection of the resources of the printer to
which a print job is sent for printing by an end user and the
limitation of the print job when it is determined both that the
print job is non-work related and also that the printing of the print
job on behalf of the end user encroaches within the threshold
value of the remaining allocation of printing resources of the
printer that had been established for the end user. The base
teaching in paragraphs [0011] and [0044], as argued by
Appellants in the Appeal Brief and the Reply Brief, only account
for a restriction of printing if the financial resources of the end
user him or herself are lacking without regard for the resources
of the printer.
(Request 6-7, italics and bold added for emphasis).
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Appeal2014-003025
Application 13/169,998
ANALYSIS
At the outset, we find Appellants present a new argument premised on
a claim interpretation that "the remaining allocation of printing resources
established by the end user" (claim 1) precludes a reading on the purported
"financial resources of an end user." (Request 6, i-f 1 ). We particularly note
both the principal Brief and the Reply Brief are silent regarding any mention
of ''financial resources of an end user." (Id., emphasis added). Thus, we
find the new argument advanced for the first time in the Request is untimely
under our procedural rule. See 37 C.F.R. § 41.52(a)(l).
To the extent our reviewing court may not agree a new argument has
been presented, we note Appellants' Specification (i-f 18) expressly describes
a non-limiting example of "lacking a sufficient allocation of printer
resources" (emphasis added), in specific terms of "an allocation of a specific
dollar value of printing":
The program code further can be enabled to determine from a
data store of workgroup printer resources whether or not an
end user submitting the print job is within a threshold value of
lacking a sufficient allocation of printer resources, such as an
allocation of a specific dollar value of printing, or a specific
number of pages, to process the print job.
(Spec i-f 18, italics and bold added for emphasis). 1
1 We note the scope of the claims on appeal, at a minimum, at least covers
the corresponding supporting embodiment( s) described in the Specification.
We emphasize, however, that under a broad but reasonable interpretation of
the claims in light of the Specification, the scope of the claims is not limited
to the preferred embodiments described in the Specification: "[A]lthough
the specification often describes very specific embodiments of the invention,
we have repeatedly warned against confining the claims to those
embodiments .... [C]laims may embrace 'different subject matter than is
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Appeal2014-003025
Application 13/169,998
Turning to the evidence (Bartley iii! 11 and 44), as relied on by the
Examiner (Final Act. 9), we observe paragraph 11 of Bartley describes, in
pertinent part:
In accordance with an aspect of this invention, the system
is provided with a network transaction station for controlling a
copier, a printer, a fax machine, or another automated service
providing machine so that the latter dispenses a product (e.g.,
copies, printed paper, or a fax connection) and correspondingly
effects transfer of payment for this from a customer account to a
copier or printer account. . . . The controller circuit provides
means to track the balance on said customer account in said
central computer; by communication with the copier or other
machine determines the price of a product selected by the
customer; and then authorizes the transaction, permitting the
machine to provide the requested product when the customer
balance is greater than the price of the selected product. The
delivery of this product would be denied if the account balance
is too low.
(Bartley if 11, emphasis added).
Given this evidence, which associates the ability to print with the
customer balance, we are not persuaded the Examiner erred. Appellants
have not provided a definition in the Specification of "printer resources" that
precludes the Examiner's broader reading (see Final Act. 9, citing Bartley
(ififl l, 44): "Interpretation: The card has a balance. If the balance is too low,
the printing will be denied.").
Further, we note dependent claim 5 further limits the scope of
independent claim 1: "wherein the remaining allocation is a remaining
illustrated in the specific embodiments in the specification."' Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (internal
citations omitted).
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Appeal2014-003025
Application 13/169,998
dollar value of printing." (Claim 5, emphasis added). Our reviewing court
guides: "[ w ]hen different words or phrases are used in separate claims, a
difference in meaning is presumed." Nystrom v. TREX Co., Inc., 424 F.3d
1136, 1143 (Fed. Cir. 2005). Under the doctrine of claim differentiation,
"the presence of a dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not present in the
independent claim." Phillips, 415 F.3d at 1315 (Fed. Cir. 2005). This
presumption is "especially strong when the limitation in dispute is the only
meaningful difference between an independent and dependent claim, and
one party is urging that the limitation in the dependent claim should be read
into the independent claim." SunRace Roots Enterprise Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
This reasoning is applicable here. Because dependent claim 5
("wherein the remaining allocation is a remaining dollar value of printing")
further limits the "a remaining allocation of printing resources established
for the end user" (recited in claim 1 ), there is a strong presumption under the
doctrine of claim differentiation that the "remaining allocation of printing
resources" recited in claim 1 is not limited to "a remaining dollar value of
printing" as recited in dependent claim 5. Thus, we find Appellants
Request ( 6-7) adopts an impermissibly narrow construction of claim 1 by
equating the "remaining allocation of printer resources" broadly recited in
claim 1 with "a remaining dollar value of printing," as recited in dependent
claim 5.
Therefore, we find the Examiner's claim interpretation is reasonable
in concluding the scope of the recited "remaining allocation of printing
resources established for the end user" (claim 1 ), broadly but reasonably
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Appeal2014-003025
Application 13/169,998
covers the customer balance intended to be used for printing, so long as the
customer balance is not too low (i.e., "encroaches within a threshold" -
claim 1 ), as described in Bartley (i-f 11 ).
We also find Bartley's customer balance intended to be used for
printing (i-fl l) is "an allocation of a specific dollar value of printing" (Spec.
i-f 18), in accord with the support found for the claimed "remaining allocation
of printer resources" (claim 1 ), as described in Appellants' Specification
(i-f 18). See n.1. supra. Therefore, on this record, we are not persuaded the
Examiner's claim interpretation is overly broad, unreasonable, or
inconsistent with the Specification. 2
Moreover, in the principal Brief (14), Appellants admit "in Bartley the
account balance and the cost of the copy job are both determined."
But upon review of paragraphs [0011] and [0044] of Bartley, it
is clear Bartley teaches that a job will copy (or print) if a
customer's account balance is greater or equal to the cost of the
job (print, copy), and the job will not copy (or print) ifthe level
of the funds needed to complete the job is too low. As such, in
Bartley the account balance and the cost of the copy job are
both determined.
(App. Br. 14, emphasis added).
We further note the Examiner relied on Dance (i-f 34) for teaching or
suggesting "categorizing the print job as work related or non-work related,"
as recited in claim 1. (Final. Act. 8). We emphasize the Examiner's
2 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Appeal2014-003025
Application 13/169,998
obviousness rejection of claim 1 is based on the combined teachings and
suggestions of Dance and Barley. 3
The Supreme Court guides the obviousness "analysis need not seek
out precise teachings directed to the specific matter of the challenged claim,
for a court can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). The operative question is "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 417.
Here, given the evidence relied on by the Examiner (e.g., Bartley i-f 11,
and Dance i-f34), we answer that question in the negative. Moreover, on this
record, we are not persuaded the Examiner's proffered combination of
Dance and Bartley would have been uniquely challenging or difficult for one
of ordinary skill in the art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
CONCLUSION
We have considered all of the arguments raised by Appellants in the
Request, but Appellants have not persuaded us that we misapprehended or
overlooked any points in rendering our Decision.
3 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Appeal2014-003025
Application 13/169,998
DECISION
We have granted Appellants' request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes therein.
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 also 37 C.F.R.
§ 41.52(b).
DENIED
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