Ex Parte Clough et al

Board of Patent Appeals and Interferences

Sep 2, 2008

10004173 (B.P.A.I. Sep. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JAMES CLOUGH and DARREL CHERRY
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Appeal 2008-2548
Application 10/004,173
Technology Center 2600
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Decided: September 2, 2008
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and JOHN A. JEFFERY, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the final
rejection of claims 1 through 18.
We affirm the Examiner’s rejections of these claims.

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Application 10/004,173

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INVENTION
The invention is directed towards a system for authenticating printer
users. The system makes use of a print server which downloads printer
drivers to the user’s computers. The print server also provides an
authentication code to the user’s computer and checks the print jobs to verify
that the authentication code is attached to the print job. See page 1 of
Appellants’ Specification. Claim 1 is representative of the invention and
reproduced below:
1. A print server, for processing a print job sent by a
workstation, the print server comprising:
a printer set-up module to provide a print driver for installation
on the workstation; and
an authentication module to supply an authentication code to
the workstation, and to review the print job sent by the workstation to
determine validity of a copy of the authentication code attached to the
print job.

REFERENCES
DeBry US 6,385,728 B1 May 7, 2002
(filed Nov. 26, 1997)
Barnard US 2003/0005097 A1 Jan. 2, 2003
(filed Jun. 28, 2001)

REJECTION AT ISSUE
Claims 1 through 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barnard and DeBry. The Examiner’s rejection is on pages
3 through 8 of the Answer.
Throughout the opinion, we make reference to the Brief (received
January 22, 2007), Reply Brief (received August 15, 2007) and the Answer
(mailed June 15, 2007) for the respective details thereof.
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ISSUES
Appellants argue on pages 7 and 8 of the Brief that the Examiner’s
rejection of claims 1 through 5 is in error. Appellants assert that the
Examiner’s rejection is in error as the combination of Barnard and DeBry
does not teach or suggest “an authentication module to supply an
authentication code to the workstation, and to review the print job sent by
the workstation to determine validity of a copy of the authentication code
attached to the print job” as recited in claim 1. On pages 8 and 9 of the
Brief, Appellants present similar arguments directed to claims 6 through 9.
On pages 10 and 11 of the Brief, Appellants present similar arguments
directed to claims 10 through 12. On pages 11 and 12 of the Brief,
Appellants present similar arguments directed to claims 13 through 17. On
page 13 of the Brief, Appellants present similar arguments directed to claim
18.
Thus, for each of the independent claims, and their dependent claims,
Appellants’ contentions present us with the issue of whether the Examiner
erred in finding that the combination Barnard and DeBry teaches a print
server with an authentication module which supplies an authentication code
to a workstation and that the module reviews a print job from the
workstation to determine the validity of a copy of the authentication code
attached to the print job as claimed.

FINDINGS OF FACT
1. Barnard teaches a print queue manager for a network. Abstract.
2. One of the functions of Barnard’s print queue manager is to provide
and install printer drivers on workstations connected to the network.
Para. 0064.
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3. DeBry teaches a system for a guaranteeing authorization for a printer
to retrieve a file from a file server. The system allows the user of a
terminal to request that a document located at a document source be
printed by a print server. The user’s terminal does not actually load
the document, but obtains a “will–call” certificate from the document
source. The user then sends the will-call certificate to a secure print
server. The print server presents the will-call certificate to the print
server which provides the document to the printer. Thus, the
document is transmitted from the source to the printer without being
loaded on the user’s terminal. Abstract, col. 5, l. 50- col. 6, ll. 28
4. DeBry also teaches that the print request can be used to control access
to the printer server. In one embodiment, the user sends a public key
to the print server which the print server validates via a certificate
authority. Col. 9, ll. 15-22.
5. Once the user’s public key is known the print server sends to the user
a random message. The user encrypts this random message using the
private key and sends it back to the printer. The printer uses the
user’s private key to decode the random message to see if it matches
the random message sent, and, if it does, the user is authenticated.
DeBry, col. 9, ll. 23-27.

ANALYSIS
Initially, we note that Appellants’ Brief separately addresses each
independent claim and groups the dependent claims with the respective
independent claim. As such, we select independent claims 1, 6, 10, 13, and
18 to be representative claims of each group.
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Claims 1 through 5.
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that the combination Barnard and DeBry teach a print server with
an authentication module which supplies an authentication code to a
workstation and that the module reviews a print job from the workstation to
determine the validity of a copy of the authentication code attached to the
print job. Claim 1 recites that the print sever includes a module which
supplies an authentication code to a work station and also reviews the print
job to determine the validity of a copy of the authentication code.
The Examiner, in rejecting claim 1, refers to DeBry’s teachings in
column 9 of authenticating the printer and also to DeBry’s teachings of the
will-call certificate to meet this claim. Ans, 4, 8. Appellants argue on pages
2 and 3 of the Reply Brief, the will-call certificate is not provided to the
user’s workstation by the print server and, as such, is not the same as the
claimed authentication code. We concur with Appellants’ argument, and
find that the will-call certificate is generated by the document source which
is separate from the print server. Fact 3. However, we find that DeBry
teaches that the print server provides a random number to the user which is
then returned to the print server. This number is used to authenticate the
user. Fact 5. Since this number is provided to the printer as part of a user
requesting an access to print a document, it is considered to be part of a print
job. Thus, we consider DeBry’s random number, which is sent from the
print server to the terminal and is sent by the terminal to the print server in
conjunction with a print request, to meet the claimed authentication code.
Accordingly, Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 1 through 5.
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Claims 6 through 17
Appellants’ arguments directed to claims 6 through 9, 10 through 12
and 13 through 17 present the same issue as discussed with respect to claim
1. Claims 6, 10 and 13 are slightly different from claim 1. These
independent claims each recite downloading an authentication code from a
print server, sending a print job to the print server containing the
authentication code and verifying the validity of the authentication code. As
discussed above with respect to claim 1, we find that the random message
generated by the print server in DeBry’s system is used in this manner.
Thus, Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of the three groups of claims: (1) Group 1, claims 6
through 9; (2) Group 2, claims 10 through 12; and (3) Group 3, claims 13
through 17.

Claim 18
Appellants’ arguments directed to claim 18 present the same issue as
discussed with respect to claim 1. Claim 18 is similar to claim 1 in that it
recites a module in a print server for supplying an authentication code and
the module reviews the print job request to determine the validity of the
authentication code attached to the print job. As discussed above with
respect to claim 1, we find that the random message generated by the print
server in DeBry’s system is used in this manner. Thus, Appellants’
arguments have not persuaded us of error in the Examiner’s rejection of
claim 18.

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Application 10/004,173

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ORDER
The decision of the Examiner is affirmed.
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

KIS

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