Ex Parte Ferlitsch

Board of Patent Appeals and Interferences

Jul 29, 2009

11125524 (B.P.A.I. Jul. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANDREW R. FERLITSCH
____________

Appeal 2009-002275
Application 11/125,524
Technology Center 2600
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Decided:1July 29, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002275
Application 11/125,524

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1-25. See App. Br. 5. We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We reverse.

STATEMENT OF THE CASE
Appellant invented a method for providing load balancing for
imaging jobs wherein the request for the jobs is in a format
incompatible with the imaging device.2
1. In a job rendering system, a method for providing load
balance rendering, the method comprising:
receiving a request at an imaging device of the job
rendering system to render an imaging job, wherein the
request is in a native format and wherein the native
format is not compatible with the imaging device;
identifying one or more job rendering requirements
of the imaging job;
broadcasting the job rendering requirements from
the imaging device to one or more imaging servers;
receiving one or more responses from the imaging
servers identifying an ability to process at least a part of
the imaging job;
selecting from the responses one or more of the
imaging servers for use in processing at least a part of the
imaging job;
using the one or more selected imaging servers to
process the imaging job; and rendering the imaging job.

2 See generally App. Br. 7-9 and Spec. 5-6.
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The Rejections
The Examiner relies upon the following prior art references as
evidence of unpatentability:
Lobiondo US 5,287,194 Feb. 15, 1994
White US 2002/0063887 A1 May 30, 2002

Claims 1-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lobiondo and White (Ans. 3-6).
Rather than repeat the arguments of the Appellant or the Examiner,
we refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).

Claim 1
Appellant argues that Lobiondo fails to disclose an imaging job
request in a native format that is incompatible with the imaging device (App.
Br. 14). It is the Examiner’s position that the claim language fails to define
what constitutes a native format and therefore the claim limitation reads on
the Lobiondo reference. See Ans. 7.

ISSUE
Has Appellant shown that the Examiner erred in finding that the
combination of Lobiondo and White discloses a method for providing load
balancing for imaging jobs wherein the request for the jobs is in a format
incompatible with the imaging device?
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Specification
1. A print job is sent in a native format to a print server where the print job
is converted to a print format and then sent to the printer. The native format
could be one of several supported file formats (e.g., MS-Office, PDF,
HTML, and JPEG) (Spec. 3).

Lobiondo
2. Lobiondo discloses that a scheduler sends confirmation back to the
requestor that the job will be either (1) printed at one or several locations;
(2) printed at a location at a later time or (3) cannot be printed. If the job
cannot be printed, the requestor has the option to either modify the entered
criteria which will allow the job to be completed or to cancel the job (col. 6,
ll. 29-39).

3. Figure 4 of Lobiondo is reproduced below:
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Figure 4 discloses a flow chart for a preferred printshop scheduler
distribution system which automatically schedules print jobs at local or
remote locations.

4. Lobiondo discloses an automatic print job distribution system wherein
the scheduler checks for available printers to complete the requested job and
allocates portions of the job according to the printers available. Upon
indication that there are no available printers; the scheduler informs the
requestor that the job cannot be completed on time (col. 6, ll. 50-68; col. 7,
ll. 1-7).

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
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interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (internal citations omitted).
Office personnel must rely on Appellant's disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.”’ In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002)(emphasis in original) (citations and quotations omitted).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). If the Examiner's burden
is met, the burden then shifts to the Appellants to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Appellant argues that Lobiondo is silent in regards to having a native
format that is incompatible with any device and that silence also includes
Lobiondo’s printshop scheduler (App. Br. 14). The Examiner equates
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Lobiondo’s printshop scheduler to the imaging device in claim 1 (Ans. 7).
The Examiner argues that Lobiondo discloses that the printshop scheduler is
unable to distribute jobs when a job criterion is not met by any of the
printers connected to the scheduler. See Ans. 7. It is the Examiner’s position
that this job criterion is an example of a native format that is incompatible
with the printers and therefore the incompatible native format limitation in
claim 1 reads upon the Lobiondo reference. See Ans. 7. We do not agree
with the Examiner’s interpretation of Lobiondo.
"The Patent and Trademark Office ("PTO") determines the scope of
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction 'in light of the
specification as it would be interpreted by one of ordinary skill in the art.'"
Phillips, 415 F.3d at 1316 (quoting Am. Acad., 367 F.3d at 1364).
Appellant’s Specification provides various types of file formats considered
to be native file formats (FF 1). Claim 1 requires that an imaging job is still
rendered regardless of the fact that the request for the imaging job is in a
native format incompatible with the imaging device. Lobiondo is only
concerned with scheduling multiple print jobs on a network and does not
address incompatible formats (FF 2-4). Lobiondo discloses that when a
print job is unable to be printed, it compensates by allocating portions of the
print job to other locations (FF 2-4). Lobiondo also discloses the capability
to notify the requestor that the job cannot be completed (FF 4).
Therefore, Lobiondo’s inability to distribute jobs when a job criterion
is not met is inconsistent with the Specification and fails to address the
incompatible native format limitation of claim 1.
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White fails to address the deficiencies of the Lobiondo’s reference.
Therefore for these reasons as well as the reasons we stated previously, we
conclude that Lobiondo and White do not obviate claim 1.
Independent claims 12 and 20 have similar limitations pertaining to
the incompatible format stated in claim 1 therefore we will not sustain the
Examiner’s obviousness rejection of claims 2-25 for similar reasons.
CONCLUSION
Appellant has shown that the Examiner erred in finding that the
combination of Lobiondo and White discloses a method for providing load
balancing for imaging jobs wherein the request for the jobs was in a format
incompatible with the imaging device.
ORDER
We will not sustain the Examiner’s rejection of claims 1-25.

REVERSED

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