Ex Parte GILG

Patent Trial and Appeal Board

Nov 15, 2016

13192079 (P.T.A.B. Nov. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/192,079 07/27/2011
22879 7590 11/17/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
THOMAS J. GILG
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.
82693734 5329
EXAMINER
PHAM, THIERRY L
ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
11/17/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. GILG
Appeal2015-003162
Application 13/192,079
Technology Center 2600
Before CAROLYN D. THOMAS, JON M. JURGOV AN, and
SHARON PENICK, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-7 and 14--22, all the pending claims
in the present application. Claims 8-13 are canceled. See Claims Appendix.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
The present invention relates generally to printing encrypted print
content. See Abstract.
Appeal2015-003162
Application 13/192,079
Claim l is illustrative:
1. A method comprising:
receiving, by a print order manager including a
processor, unencrypted metadata associated with encrypted
print content, wherein the unencrypted metadata is extracted
from a print document, and the encrypted print content is
produced by encrypting the print document;
identifying, by the print order manager, a printer system
from among plural printer systems to which the encrypted print
content is to be routed, wherein the identifying is based on the
unencrypted metadata extracted from the print document; and
causing, by the print order manager, the encrypted print
content to be sent to the identified printer system for decryption
of the encrypted print content and printing of the decrypted
print content.
Appellant appeals the following rejections:
RI. Claims 1, 2, 5, 14, 15, 17, and 19-22 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Barnett (US 2009/0063860 Al,
Mar. 5, 2009) and Oh (US 2006/0290981 Al, Dec. 28, 2006);
R2. Claims 3, 4, 7, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Barnett, Oh, and Yacoub (US 6,452,692 B 1, Sept.
17, 2002); and
R3. Claims 6 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barnett, Oh, and Nuggehalli (US 2011/0188063 Al, Aug.
4, 2011).
ANALYSIS
Claims 1-7, 14-19, and 21
Issue 1: Did the Examiner err in finding that Barnett and Oh
collectively teach or suggest identifying a printer system to which the
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Application 13/192,079
encrypted print content is to be routed, wherein the identifying is based on
the unencrypted metadata extracted from the print document, as set forth in
claim 1?
Appellant contends "there is no teaching or hint in Barnett that
unencrypted metadata associated with encrypted print content is extracted
from a print document" (App. Br. 5). Appellant further contends that "Oh
provides no teaching that any of the foregoing metadata can be used for
'identifying ... a printer system from among plural printer systems to which
the encrypted print content is to be routed"' (id. at 6) and "the 'locality
information' of Oh also cannot be the metadata of claim 1" (id.).
The Examiner finds Barnett "discloses metadata (e.g. either encrypted
or unencrypted) that contains plurality of attribute information relating to the
print job( s) including wherein print jobs to be printed [sic] (e.g. destinations,
par. 38 ... )"(Ans. 5) and that Oh "also discloses metadata (encrypted or
unencrypted) ... including ... where the print will be printed" (id.). We
agree with the Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
Specifically, Barnett discloses "[ u ]nencrypted or encrypted metadata
corresponding to the encrypted print data may be generated prior to the
encrypted of the print job .... Such metadata may include ... destinations"
(i-f 38). Similarly, Oh discloses that "[t]he metadata extractor 1010 extracts
metadata contained in a received printing data file from the printing data
file" (i-f 123). In other words, the Examiner finds, and we agree, that the
combined teachings of Barnett and Oh teach and/or suggest metadata
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identifying a printer system to which the encrypted print content is to be
routed, i.e., destination, and the unencrypted metadata being extracted from
the print document.
Even if we assume arguendo (without deciding) that there is no hint in
Barnett that unencrypted metadata is extracted from a print document, or
that Oh provides no teaching that any of the foregoing metadata can be used
for identifying a printer system to which the encrypted print content is to be
routed (as proffered by Appellant, see App. Br. 5-6), the Examiner has
found that Oh teaches extracting metadata from a print document (see Oh
i-f 123) and that Barnett teaches metadata identifying routing information,
i.e., a destination (see Barnett i-f 38). Appellant fails to rebut these specific
findings.
As such, Appellant's arguments do not take into account what the
Examiner has found the collective teachings of the prior art would have
suggested to one of ordinary skill in the art and is therefore ineffective to
rebut the Examiner's prima facie case of obviousness. As our reviewing
Court states:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). This
reasoning is applicable here.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellant's arguments regarding the Examiner's rejection of independent
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Application 13/192,079
claim 14 rely on the same arguments as for claim 1, and Appellant does not
argue separate patentability for the dependent claims (with the exception of
claims 20 and 22). We, therefore, also sustain the Examiner's rejection of
claims 2-7, 14--19, and 21.
Claims 20 and 22
Issue 2: Did the Examiner err in finding that the cited art, particularly
Barnett, teaches/ suggests an encrypted print document that also includes an
encrypted version of the unencrypted metadata, as set forth in claim 20?
Appellant contends that "Barnett contemplates either providing the
encrypted metadata or unencrypted metadata" rather than providing both the
unencrypted and the encrypted metadata (App. Br. 8) (see also Reply Br. 4--
6).
In response, the Examiner finds that "[b ]oth Barnett and Oh teach
methods/steps that allow the metadata to be encrypted and/or unencrypted"
(Ans. 6), and that "it would have been obvious to anyone ordinary to decide
which version is appropriate" (id.). However, even if Barnett and Oh
teaches having encrypted and/ or unencrypted metadata and the Examiner is
correct in interpreting this as "anyone ordinary [can] decide which version is
appropriate" (id.), we find that the aforementioned teachings do not teach or
suggest including both an encrypted and unencrypted version of the
unencrypted metadata in the print document, as required by claim 20.
For example, Barnett merely discloses "[u]nencrypted or encrypted
metadata corresponding to the encrypted print data may be generated ....
The metadata may be appended or prepended to the encrypted print job" (see
i-f 38) (emphasis added). However, we find that Barnett, which the Examiner
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relies upon, falls short of suggesting that the metadata appended to the print
job includes both an unencrypted and encrypted version of the unencrypted
metadata.
In view of the above discussion, we are of the opinion that the
proposed combination of references, particularly Barnett, does not support
the obviousness rejection. We, accordingly, do not sustain the rejection of
dependent claim 20, or the rejection of claim 22 for similar reasons.
DECISION
We affirm the Examiner's§ 103(a) rejections of claims 1-7, 14--19,
and 21.
We reverse the Examiner's§ 103(a) rejection of claims 20 and 22.
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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