Ex Parte Dominguez et al

Patent Trial and Appeal Board

May 31, 2016

12836642 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/836,642 07/15/2010
22879 7590 06/02/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Pablo Dominguez
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.
82263587 2641
EXAMINER
LAM, ANDREW H
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PABLO DOMINGUEZ, LUIS ALBERTO HERNANDO,
and SEBASTIA CORTES
Appeal2014-007937
Application 12/836,642
Technology Center 2600
Before JOHN A. EV ANS, MELISSA A. RAAP ALA, and JOYCE CRAIG,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20. App. Br. 12-14. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 The Appeal Brief identifies Hewlett-Packard Development Company, LP,
as the real party in interest. App. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed February 3, 2014, "App. Br."), the Reply
Appeal2014-007937
Application 12/836,642
STATEMENT OF THE CASE
The claims relate to feature enablement within a printer. See Abstract.
Claims 1, 12, and 20 are independent. An understanding of the
invention can be derived from a reading of exemplary Claim 1, which is
reproduced below with disputed limitations italicized and some formatting
added:
1. A non-transitory computer readable medium storing
computer executable instructions that when executed implement
a method to control a first feature, the method comprising:
validating an apparatus that removably connects to a first
printer, the validating including comparing first data stored
within the apparatus to second data stored within the first
printer;
enabling the first feature within the first printer utilizing
third data stored within the apparatus; and
restricting the apparatus such that, with the apparatus
disconnected from the first printer, the apparatus is no longer
operable to enable the first feature within a second printer.
Brief (filed July 8, 2014, Reply Br."), the Examiner's Answer (mailed May
9, 2014, "Ans."), the Final Action (mailed September 3, 2013, "Final Act."),
and the Specification (filed July 15, 2010, "Spec.") for their respective
details.
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Appeal2014-007937
Application 12/836,642
References and Rejections
The Examiner relies upon the prior art as follows:
Rick US 2002/0087870 Al July 4, 2002
Oleinik US 2003/0142335 Al July 31, 2003
Boldon US 2004/0120001 Al June 24, 2004
Matsui US 2008/0181650 Al July 31, 2008
Minagawa S 2008/0235512 Al Sep.25,2008
The claims stand rejected as follows:
1. Claims 1-5, 10-14, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Matsui and Rick. Final Act. 2-5.
2. Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsui, Rick, and Boldon. Final Act. 6.
3. Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsui, Rick, and Oleinik. Final Act. 6-7.
4. Claims 8, 9, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsui, Rick, and Minagawa. Final Act. 7.
ANALYSIS
We have reviewed the rejections of Claims 1-20 in light of
Appellants' arguments that the Examiner has erred. We agree with
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Appeal2014-007937
Application 12/836,642
Appellants' conclusions. We consider Appellants' arguments seriatim, as
they are presented in the Appeal Brief, pages 8-15.
Appellants argue Claims 1-5, 10-14, and 18-20 as a group and
specifically argue Claim 1. App. Br. 8.
Appellants argue that independent Claims 1, 12, and 20 relate to an
apparatus that enables a feature within a first printer and contain recitations
that restrict the claimed apparatus such that upon disconnection from the
first printer the apparatus is not able to enable the feature in a second printer.
App. Br. 9. Appellants read Matsui as teaching a printer having a
management table stored in internal memory. Appellants read Matsui as
further teaching an external USB memory that when connected to the printed
causes information to be read and collated with the management table
information to allow an authentication check. Id. The Examiner finds (Final
Act. 3), and Appellants agree (App. Br. 10), that iviatsui fails to teach
restricting the USB memory when it is disconnected from the printer.
Appellants argue that Rick does not supply the missing teaching
because Rick teaches a dongle that can be used to enable a program to run
on a second computer. Id.
The Examiner finds Rick teaches a dongle (restriction engine) is
connected to a second PC. When the correct PC identifier is not stored on
the dongle, a control program will branch to abort, preventing installation of
a program on the second PC. Ans. 3 (citing Rick, Fig. 4). The Examiner
finds the claimed limitation is taught because Rick teaches the dongle would
allow installation of the program on a first PC but not a second PC. Id.
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Appeal2014-007937
Application 12/836,642
Appellants contend that Rick explicitly teaches "the dongle can be
used to enable the program for running on another computer." App. Br. 10
(citing Rick, if 24 ); Reply Br. 3.
Independent Claim 1 recites, inter alia, "restricting the apparatus such
that, with the apparatus disconnected from the first printer, the apparatus is
no longer operable to enable the first feature within a second printer."
Independent Claims 12 and 20 recite commensurate limitations. In contrast,
Rick describes that, when the dongle is connected to a first computer and
contains a correct PC identifier, the PC identifier in the dongle is erased and
the key is copied to the dongle. Rick, iii! 23-24. Rick then teaches "[ s ]ince
the key is again on the dongle, the dongle can be used to enable the program
for running on another computer. This ensures that the program can always
run on only one computer at a given time." Id. at f 24.
We find that Rick does not teach the claimed limitation. \Vhere the
claimed apparatus is disconnected from the first printer, the claimed
apparatus is prevented from enabling the first feature on a second printer. In
contrast, the combination of Matsui and Rick teaches a dongle may enable a
feature on any number of printers, but only a single printer may be enabled
at any one time. In view of the foregoing, we decline to sustain the
rejections of independent Claims 1, 12, and 20, nor of Claims 2-11 and 13-
19 dependent therefrom.
DECISION
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Appeal2014-007937
Application 12/836,642
The rejections of Claims 1-20 under 35 U.S.C. § 103 is REVERSED.
REVERSED
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