Ex Parte Dumitrescu et al

Patent Trial and Appeal Board

Feb 11, 2016

13036379 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/036,379 02/28/2011
50447 7590 02/16/2016
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
FIRST NAMED INVENTOR
Tiberiu Dumitrescu
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.
4-033_FN201101563 4812
EXAMINER
CATO,MIYAJ
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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@dbflaw.com
PTOL-90A (Rev. 04/07)
UNITEn STATES PATENT ANn TRA.nEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIBERIU DUMITRESCU and MICHAEL RAINES
Appeal2014-004687
Application 13/036,379
Technology Center 2600
Before HUNG H. BUI, ADAM J. PYONIN, and NABEEL U. KHAN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
The claims are directed to "filtering print shop services that are
available to a customer based on rules for the customer." Abstract. Claims
1, 7, and 13 are independent. Claim 1 is reproduced below for reference:
Appeal2014-004687
Application 13/036,379
1. A system comprising:
a control system operable to identify services that are
available from a print shop architecture, and to filter the available
services based on rules for a customer to identify a subset
of the available services; and
a graphical user interface operable to display the subset of
the available services to the customer as options for the customer
to select for a print job, and to receive a selection from the
customer of at least one of the options from the subset of the
available services,
wherein the control system is further operable to generate
a job ticket for the print job based on the selection by the
customer, and to transmit the job ticket to the print shop
architecture.
References and Rejections
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sekine (US 2009/0282412 Al; Nov. 12, 2009) and Barrott
(US 2003/0212611 Al; Nov. 13, 2003). Final Act. 4.
ISSUES
Appellants' arguments present us with the following issues:
A. Did the Examiner err in rejecting the claims, because the cited
references do not teach or suggest filtering services available from
a print shop? See Br. 7.
B. Did the Examiner err in rejecting the claims, because Barrott is
non-analogous art? See Br. 8.
ANALYSIS
Appellants do not separately argue claims 1-18. See Br. 10. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). We have
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reviewed the Examiner's rejection in light of Appellants' arguments. We
agree with the Examiner's findings and conclusions and adopt them as our
own (see Final Act. 2-8; Ans. 2--4); we add the following primarily for
emphasis.
A. Filtering the Services Available from a Print Shop
Appellants argue the Examiner erred in rejecting claim 1, because
Sekine in view of Barrott does not teach or suggest filtering print shop
services as claimed. See Br. 7-8. In particular, Appellants contend "Barrott
does not discuss filtering funeral services based on rules for the customer.
Instead, Barrott discusses a guided tour through all the available services,
which the user can eventually end up with the desired services." Br. 7.
Appellants do not persuade us the Examiner erred in finding Barrott
teaches or suggests filtering services, as claimed. We find Barrott' s filtered
list of products and services, which a user may cancel or revise, is tantamount
to the "subset of the available services" as recited in claim 1. See Barrott i-f
13. We also agree with the Examiner that the recited "rules for a customer"
encompasses Barrott' s "family advisor system," because the system uses
questions with "set choices" to determine a filtered list of available services.
See Barrott i-f 41; Final Act. 5; see also Spec. i-f 19 ("The logical relationships
of print shop activities are hereinafter referred to as 'print shop rules' or
'rules."'). Thus, although Barrott does not disclose identical terminology as
recited by claim 1, we find Barrott teaches or suggests a system operable to
"filter the available services based on rules for a customer to identify a subset
of the available services," as claimed. See Final Act. 5.
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Further, we are not persuaded by Appellants' arguments that the
Examiner erred in finding one of skill in the art would filter print shop services
by modifying the print shop services control system of Sekine with the
services filtering system of Barrott. See Final Act. 5; Ans. 3--4; Sekine i-fi-150-
51. Rather, the Examiner's findings are reasonable and are supported by
evidence because such combination of familiar elements does no more than
yield predictable results. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
B. Non-Analogous Art
Appellants contend "the problem faced by the inventors is how to help
print shop[ s] avoid confusion in view of the wide variety of print shop
services that are available." Br. 8. Appellants argue that, therefore, Barrott
is not analogous art to the claimed invention, as "Barrott would not logically
commend itself to the inventors attention in considering the problem of how
to reduce customer confusion when generating jobs for a print shop[,]
because generating a print job based on funeral services is not possible." Id.
at 9.
"The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection." In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). "A
reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor's endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
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attention in considering his problem." Jn re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).
The Examiner finds Barrott is reasonably pertinent because "the
particular problem with which the applicant [is] concerned" is the same as
for Barrott, which is to "limit options (products and services) that can be
selected by a user on a user interface based on availability of the options."
Ans. 3. We agree, and find Barrott's teaching of a "graphical user interface
to help a user view, choose and sort through available services" would
logically have commended itself to an inventor's attention in creating the
filtering services system of the present application. See Final Act. 3; Barrott
Fig. 4. Therefore, one of ordinary skill would recognize the usefulness of
Barrott's teachings to filter the printing services shown by Sekine. See Final
Act. 5.
Appellants do not persuade us the Examiner erred in citing to Sekine
and Barrott, or that the Examiner's combination of Sekine and Barrott was
"uniquely challenging or difficult for one of ordinary skill in the art." See
Final Act. 5---6; Ans. 4; see also Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we sustain the
Examiner's rejection of claim 1.
DECISION
We affirm the rejection of claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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