Ex Parte Gelphman

Patent Trial and Appeal Board

Dec 19, 2016

12722445 (P.T.A.B. Dec. 19, 2016)

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.
12/722,445 03/11/2010 David Gelphman 772.157US1 3134
45833 7590 12/21/2016
smwfPtMan t ttndrf.ro & wofssnfr/appt f EXAMINER
PO BOX 2938 MCLEAN, NEIL R
SUITE 300
MINNEAPOLIS, MN 55402 ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
uspto@slwip.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID GELPHMAN
Appeal 2015-008097
Application 12/722,4451
Technology Center 2600
Before MARC S. HOFF, ELENI MANTIS MERCADER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-21, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Apple Inc. App. Br. 2.
Appeal 2015-008097
Application 12/722,445
STATEMENT OF THE CASE
Introduction
Appellant’s application relates to defining the orientation in which a
document is printed from the orientation of the device on which the
document is displayed. Abstract. Claim 1 is illustrative of the subject
matter on appeal and reads as follows:
1. A method for defining the orientation in which a
document is printed, comprising:
determining the current orientation of an electronic
device;
displaying a document in the determined current
orientation;
receiving an instruction to print the document;
setting a page orientation printer setting of the document
to match the current orientation of the electronic device;
defining a representation of the document in a page
description language, wherein the page orientation printer
setting of the document in the representation corresponds to the
determined current orientation; and
transmitting the defined representation to a printer system
to print the document with the page orientation printer setting.
The Examiner’s Rejections
Claims 1-9, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sakamoto et al. (US 5,329,289; July 12, 1994), Neuhard
et al. (US 6,335,795 Bl; Jan. 1, 2002), and Takekawa et al. (US
2009/0164894 Al; June 25, 2009). Ans. 2.
Claims 10, 11, and 13-17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sakamoto and Takekawa. Ans. 2.
2
Appeal 2015-008097
Application 12/722,445
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sakamoto, Takekawa, and Chapman (US 7,466,442 B2; Dec. 16,
2008). Ans. 2.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sakamoto, Takekawa, and Neuhard. Ans. 2.
ANALYSIS
We have reviewed the Examiner’s rejections in consideration of
Appellant’s contentions and the evidence of record. Appellant persuades us
that the Examiner fails to establish the claims are unpatentable.
Appellant argues the Examiner erred in rejecting claim 1 because
Takekawa fails to teach or suggest “setting a page orientation printer setting
of the document to match the current orientation of the electronic device.”
App. Br. 12-14.
The Examiner finds Takekawa teaches a user can have something on a
display in a certain orientation and, prior to printing, make print settings
relating to how they want the output to look such that it looks like the
display of the device. Ans. 5. The Examiner finds this teaching satisfies the
“setting a page orientation printer setting” limitation. Id.
Appellant argues Takekawa teaches methods of accepting touch-based
input to generate print settings, which might include page orientations, but
fails to teach using device orientation for print settings. App. Br. 13 (citing
Takekawa, Figs. 3, 4, 11, 15; H 13, 19). Appellant further argues Takekawa
merely teaches a user may change print settings, but does not specify how
the user may choose those print settings or that a user would match the page
orientation to the display orientation. Reply Br. 3.
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Appeal 2015-008097
Application 12/722,445
Appellant has persuaded us of Examiner error. Takekawa teaches a
user changing printer settings, but does not teach a device that matches the
page orientation setting to the determined current orientation. Takekawa
also does not teach a user matching the page orientation setting to the
determined current orientation. Accordingly, we agree with Appellant that
Takekawa does not teach or suggest the “setting a page orientation printer
setting” limitation. Because we are persuaded of error with regard to the
identified issue, which is dispositive of the rejection of claim 1 over
Sakamoto, Neuhard, and Takekawa, we do not reach the additional issues
raised by Appellant’s arguments.
For these reasons, we do not sustain the rejection of claim 1. We also
do not sustain the rejections of independent claims 10, 17, and 20, which
recite similar limitations, or dependent claims 2-9, 11-16, 18, 19, and 21.
DECISION
We reverse the decision of the Examiner to reject claims 1-21.
REVERSED
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