Ex Parte Ganesan et al

Patent Trial and Appeal Board

Feb 13, 2017

13445479 (P.T.A.B. Feb. 13, 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.
13/445,479 04/12/2012 Kumaravel Ganesan 82961942 7724
22879
HP Tnr
7590 02/15/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
SHAH, BHARATKUMAR S
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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 KUMARAVEL GANESAN and
DEEP ARK RAMACHANDRAN1
Appeal 2016-004958
Application 13/445,479
Technology Center 2600
Before BRADLEY W. BAUMEISTER, AMBER L. HAGY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—20, all pending claims of the application. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. Appeal Br. 2.
Appeal 2016-004958
Application 13/445,479
STATEMENT OF THE CASE
According to Appellants, the application relates to providing a
dynamic content model, which includes a set of screens that can be defined
by a content provider, for display on cloud-based printing systems.
Spec. 112.2 Claims 1, 9, and 14 are independent. Claims 1 and 14 are
illustrative and are reproduced below with disputed limitations italicized:
1. A method for using a content model for a printer
interface, the method comprising:
with a physical computing system, executing a
navigational application for a printer interface of a printer
connected to said physical computing system through a
network,
with said physical computing system, using a content
model for said navigational application, said content model
defining attributes and a category for a screen;
with said physical computing system, receiving content
associated with said category;
and
with said physical computing system, providing to said
printer said screen and said content in a format that is
executable by said printer.
14. A printing system comprising:
at least one processor;
firmware for executing a specific type of executable code
to operate a user interface display panel; and
2 Throughout this Decision, we refer to: (1) Appellants’ Specification filed
April 12, 2012 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed
April 9, 2015; (3) the Appeal Brief (“Appeal Br.”) filed August 31, 2015;
(4) the Examiner’s Answer (“Ans.”) mailed February 5, 2016; and (5) the
Reply Brief (“Reply Br.”) filed April 4, 2016.
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Application 13/445,479
a memory communicatively coupled to the at least one
processor, the memory comprising computer executable code
that, when executed by the at least one processor, causes the at
least one processor to:
receive a set of executable code for said firmware from a
cloud computing system, the executable code to:
display a screen derived from a content model created by
said cloud computing system, said screen being displayed by a
navigational application running on said cloud computing
system, said content model defining a number of attributes and
a number of categories for a screen, wherein a design of said
content model is based on a content provider's input associated
with said attributes and said categories; and
display content associated with said category, the content
being provided by said content provider.
Appeal Br. 26—29 (Claims App’x).
REFERENCES
The art relied upon by the Examiner in rejecting the claims:
McCuen et al. (“McCuen”) US 2011/0032562 A1 Feb. 10, 2011
Nuggehalli et al. US 2011/0188063 Al Aug. 4, 2011
(“Nuggehalli”)
REJECTIONS
Claims 9 and 14 stand rejected under 35U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.3 Final
Act. 12-13.
3 The Examiner indicates only claims 9 and 14 are rejected under 35 U.S.C.
§ 112, first paragraph. Final Act. 12—13. Because dependent claims 10-13
and 15—20 variously include the limitations of rejected independent claims 9
and 14, we conclude these claims should have also been indicated as
rejected. In the event of further prosecution, the Examiner should consider
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Application 13/445,479
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Nuggehalli and McCuen. Final Act. 14—21.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. We have not considered other possible issues
that have not been raised by Appellants and which, therefore, are not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUES
1. Does the Examiner err in rejecting claims 9 and 14 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement?
2. Does the Examiner err in finding the combination of Nuggehalli
and McCuen teaches or suggests “with a physical computing system,
executing a navigational application for a printer interface of a printer
connected to said physical computing system through a network,” as recited
in claim 1?
CONTENTIONS AND ANALYSIS
35 U.S.C. § 112: Claims 9 and 14
Issue 1
We sustain the Examiner’s decision to reject claims 9 and 14 under
§112, first paragraph, as failing to comply with the written description
requirement by impermissibly adding new matter to the original disclosure.
whether to additionally reject dependent claims 10-13 and 15—20 under 35
U.S.C. § 112, first paragraph.
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To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that the patentee possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the description
requirement under § 112 does not demand any particular form of disclosure,
a description that merely renders the invention obvious does not satisfy the
requirement. Id. at 1352.
A written-description question often arises when an applicant, after
filing a patent application, subsequently adds “new matter” to the claims not
present in the original application. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1560 (Fed. Cir. 1991). When an applicant amends a claim to
introduce new elements or limitations or adds claims during prosecution, for
example, the newly claimed subject matter must find written description
support in the original specification. Id.; see also TurboCare Div. of Demag
Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed.
Cir. 2001). Without written description support, claims containing new
matter are properly rejected under 35 U.S.C. § 112. Ariad at 1348. This
required compliance with 35 U.S.C. § 112 ensures that the applicant fully
possessed the entire scope of the claim as of the original filing date.
TurboCare, 264 F.3d at 1118. While there is no in haec verba requirement,
newly added claim limitations must be supported in the specification
through express, implicit, or inherent disclosure. Ariad at 1352.
Appellants do not dispute that the disputed limitation was newly
added by amendment during prosecution. See Amendment filed January 15,
2015.
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Application 13/445,479
The Examiner finds the Specification fails to provide support for “a
content model created by said cloud computing system,” as added by
amendment to claim 14, because the Specification indicates that the content
supplier, rather than the cloud computing system, creates the content model.
Final Act. 12 (“cloud network is used for running the application but not
creating a content model which is supplied by a supplier.”)
In response, Appellants argue “a dynamic content model is created by
the physical computing system (122) of the cloud network (112) trough [sic]
input of data from a content provider such as a third party content provider
as evidenced by paragraph [0020] of Appellants’ [Specification.” Appeal
Br. 11.
Appellants fail to demonstrate that the Specification provides support
for the cloud computing system creating a content model. As an initial
matter, we note paragraph 20 cited by Appellants is completely silent
regarding creating a content model.
Appellants further argue that because the Specification describes
‘“physical computing system . . . sends information to the printer 114,’ . . .
[t]his information, although obtained from a content provider, is compiled or
formatted (i.e., ‘created’) by the physical computing system (122) of the
cloud network (112).” Appeal Br. 12 (citing Spec. 120).
We find this argument unpersuasive because Appellants fail to
establish that the physical computing system sending information to the
printer 114 provides support for the computing system creating a content
model. Appeal Br. 12. We also find unpersuasive Appellants’argument
that because the content model, although obtained from a content provider,
is compiled or formatted by the physical computing system (122) of the
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cloud network (112), Appellants’ Specification discloses that the computing
system (122) creates the content model. Id. Rather, we agree with the
Examiner that Appellants’ Specification discloses that the content provider
defines or creates the content model. See, e.g., Spec. Tflf 12, 13, 24—28.
Accordingly, Appellants fail to demonstrate support for the “a content
model created by said cloud computing system,” as recited in claim 14.
Appeal Br. 28 (emphasis added). We, therefore, find Appellants’
Specification fails to reasonably convey to those skilled in the art that the
inventor had possession of the subject matter at issue as of the filing date
and the rejection of claim 14 is sustained.
Appellants provide similar arguments for independent claim 9.
Appellants’ arguments also fail to demonstrate support for a “physical
computing system [that] create[s] a content model,” as recited in claim 9,
and so we also sustain the rejection of claim 9.
Accordingly, based on the record before us, we sustain the Examiner’s
rejection of claims 9 and 14 for failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 103: Claims 1-20
Issue 2
In rejecting claim 1, the Examiner finds the combination of
Nuggehalli and McCuen teach or suggest “with a physical computing
system, executing a navigational application for a printer interface of a
printer connected to said physical computing system through a network,” as
recited in independent claim 1. Final Act. 14.
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Specifically, the Examiner finds
Nuggehalli teaches . . . with a physical computing system (fig 1
item 106, para0021 ),[...] for a printer interface (figl item
114) of a printer connected to said physical computing system
through a network (figl item 104-network para0021);
But Nuggehalli fails to teach executing navigational
application with said navigational application said content
model defining attributes and a category for a screen, said
content model defining attributes and a category for a screen;
with providing to said printer said screen and said content in a
format that is executable by said printer.
However, Mark Mccuen et al (herein after Mccuen)
clearly teach the navigational application (Figl B item 101,
publishing module para 0064) with said navigational
application (Figl B item 101, publishing module para0064) said
content model defining attributes and a category for a screen
(Mccuen, fig4A-E, paraOlOl ); receiving content associated
with said category (Mccuen, fig4A-E, para 0101);
Final Act. 14.
Appellants argue the Examiner errs because the Examiner “attempts
to separate the recitation ‘executing a navigational application for a printer
interface of a printer’ from the remainder of claim 1.” Appeal Br. 14.
We find Appellants’ arguments persuasive because the Examiner fails
to provide an informative rejection. That is, we agree the Examiner parses
the claim limitation in a way that is inconsistent with Appellants’
Specification by indicating that McCuen teaches or suggests “executing a
navigational application” while relying on Nuggehalli to suggest “for a
printer interface of a printer connected to said physical computing system
through a network.”
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In interpreting claim 1, the second portion of the claim limitation
cannot be separated from the first because it modifies the first. For example,
as described in Appellants’ Specification, the “navigational application
manages what is displayed to a user on the user interface of that printer.”
Spec. 2. The navigational application, therefore, is executed for a printer
interface of a printer. By parsing the limitation this way, the limitation “for
a printer interface of a printer connected to said physical computing system
through a network” cannot be interpreted consistently with Appellants’
Specification because it modifies the “navigational application” of claim 1.
Consequently, by splitting the limitation as described, the Examiner’s
analysis is directed toward determining whether McCuen teaches or suggests
“executing a navigational application,” rather than “executing a navigational
application for a printer interface of a printer,” as claimed.
Accordingly, we find persuasive Appellants’ argument that “[t]he
publishing module 101 of McCuen is unrelated to an interface of a printer,”
and thus the Examiner fails to establish the cited combination teaches,
suggests, or renders obvious “with a physical computing system, executing a
navigational application for a printer interface of a printer,” as claimed.
Appeal Br. 14.
We therefore reverse the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 1. We also reverse the rejection of independent claims 9 and 14,
which recite commensurate limitations, and of dependent claims 2—8, 10-13,
and 15—20, which include the language of their respective independent
claims.
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DECISION
We reverse the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. § 103(a).
We affirm the Examiner’s decision rejecting claims 9 and 14 under
35 U.S.C. § 112, first paragraph.
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-IN-PART
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