Ex Parte Galmes et al

Patent Trial and Appeal Board

Feb 28, 2017

13907313 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/907,313 05/31/2013 Jose M. Galmes 83256880 2232
22879
HP Tnr
7590 03/02/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
DEMETER, HILINA K
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEWLETT-PACKARD DEVELOPMENT COMPANY1
Appeal 2016-004636
Application 13/907,313
Technology Center 2600
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and
MELISSA. A. HAAPALA, Administrative Patent Judges.
HAAPALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Jose M. Galmes, Cesar Fernandez, Richard W. Riper, Carlos Millan-
Lorman, Bruce A. Stephens, and Jonathan Lee Brown are named inventors.
Appeal 2016-004636
Application 13/907,313
EXEMPLARY CLAIM
Claim 1 is exemplary of the subject matter on appeal:
1. A method for operating a printing system, comprising:
receiving, at a printing unit, a print job;
receiving, at the printing unit, a trigger generated by a
finishing unit; and
initiating the print job based on the generated trigger.
REJECTION ON APPEAL
Claims 1—20 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Maenishi (US 2013/0174703 Al; published July 11, 2013).
ISSUE
Appellant’s contentions present us with the following dispositive
issue: Did the Examiner err in finding Maenishi discloses a trigger
generated by a finishing unit; and initiating the print job based on the
generated trigger (“trigger” limitations), as set forth in independent claim 1?
ANALYSIS
The Examiner construes the recited “trigger” as “an ‘initiating
command.’” Ans. 3. The Examiner finds Maenishi discloses finishing
commands are generated by a user. Ans. 3 (citing Maenishi | 67). The
Examiner further finds Maenishi discloses when a user presses the start
button, image formation is performed by the image forming apparatus and
punching is performed by the finisher 500. Ans. 3 (citing Maenishi 173).
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Appeal 2016-004636
Application 13/907,313
Thus, the Examiner finds that Maenishi discloses the “trigger” limitations.
Ans. 3.
Appellant contends Maenishi does not disclose that a finishing unit
generates any trigger to the printing unit to initiate a print job. App. Br. 8.
Appellant argues the initiating command for printing in Maenishi is the press
of the start button, which initializes both image formation and punching, and
that Maenishi does not disclose its finisher generates any trigger to be used
for initiating printing. Reply Br. 3^4.
We are persuaded of error. The cited sections of Maenishi describe
post-processing modes of finisher 600 may be performed by an input
operation from the console unit 600 and that after the user sets various
operations, if the user presses the start button 602, image formation is
performed by the image forming apparatus 10 and punching is performed by
the finisher 500. Maenishi || 67, 73. Although we agree with the
Examiner’s reasonable construction of “trigger” as “an initiating command,”
the Examiner has not established Maenishi discloses “an initiating
command” (trigger) generated by a finishing unit or initiating a print job
based on such a trigger.
For the reasons stated above, Appellant persuades us the Examiner
has not established Maenishi discloses the “trigger” limitations recited in
claim 1. Accordingly, we do not sustain the 35 U.S.C § 102(a) rejection of:
(1) claim 1; (2) independent claims 14 and 18, which contain limitations
substantially similar to the “trigger” limitations; and (3) the remaining
claims, which depend from one of claims 1,14, and 18.
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Appeal 2016-004636
Application 13/907,313
DECISION
We reverse the Examiner’s decision to reject claims 1—20.
REVERSED
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