Ex Parte Goyal et al

Patent Trial and Appeal Board

Feb 23, 2017

13455896 (P.T.A.B. Feb. 23, 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.
13/455,896 04/25/2012 Anurag Goyal 82962746 2506
22879
HP Tnr
7590 02/27/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
LELAND III, EDWIN S
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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 ANURAG GOYAL, RAJ ANAND, and
VENUGOPAL K. S.
Appeal 2016-006353
Application 13/455,8961
Technology Center 2600
Before CARLA M. KRIVAK, DEBRA K. STEPHENS, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 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 AFFIRM.
Technology
The application relates to “a print application creation button” in a
browser. Spec. Abstract.
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1 Appellants state the real party in interest is Hewlett-Packard Development
Company, LP, a wholly-owned affiliate of Hewlett-Packard Company with
general or managing partner of HPQ Holdings LLC. App. Br. 2.
Appeal 2016-006353
Application 13/455,896
1. A method of creating a print application by a single action
comprising:
appending a print application creation button to a
browser instance executed by a user device;
receiving a single action user input with the user device to
add content displayed in the browser instance as a print
application; and
creating the print application based on the content.
Rejections
Claims 1, 2, 4, 5, 9—11, 13, and 15—17 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Almen et al. (US 2010/0225955 Al; Sept. 9,
2010). Final Act. 6.
Claims 3, 6—8, 12, 14, and 17—20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Almen and various other
references. Final Act. 10—17.2
ISSUE
Did the Examiner err in finding Almen discloses “appending a print
application creation button to a browser instance”; “to add content displayed
in the browser instance as a print application”; and “creating the print
application based on the content,” as recited in claim 1 and commensurately
recited in independent claims 9 and 13?
ANALYSIS
Anticipation: Claims 1, 2, 4, 5, 9—11, 13, and 15—17
The Examiner finds the Specification “defines” the term “print
application”: “As used in the present specification and in the appended
2 The Examiner withdrew the rejections under 35 U.S.C. § 112 for lack of
written description (claims 9—12 and 17—19) and definiteness (claim 19).
Ans. 14; Final Act. 4—5.
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Appeal 2016-006353
Application 13/455,896
claims, the term ‘print application,’ ‘print app’ or similar language is meant
to be understood broadly as any application associated with the printing of
content available on a network.” Spec. 13, 1; Ans. 14—15. “Thus the
broadest reasonable interpretation of ‘print application’ may be any
application that is associated in any way with content on the network that is,
has been or will be printed.” Ans. 15. Based on this interpretation, “the
Examiner holds that the print widget button in Almen et al. creates and
executes a print application to print the content and send details of the
content to the server to create an online publisher report based on the content
in the web browser.” Id. at 16. “Any modification to an application based
on dynamic content in a web browser is creation of a new application.” Id.
Appellants contend “the print widget (210) of Almen does nothing
more than ‘create a print job,' essentially rendering the print widget (210) of
Almen to a print command button and nothing more” whereas “[t]he claimed
‘print application creation button’ of claim 1, in contrast, creates a print
application.” App. Br. 12 (emphasis added, quoting Almen 126).
Similarly, Appellants contend Almen’s “online publisher report,” which is
created when Almen’s print widget is activated, constitutes a report, not an
application. App. Br. 13. Thus, Appellants distinguish the claimed “print
application” from both a “print job” and a “report” of the printing.
However, Appellants have not adequately explained how a person of
ordinary skill in the art would have interpreted the word “application” in
light of the Specification. The phrase “print application” is defined
circularly as a type of application. Spec. 1 (“Print applications are
applications . . .”), 13 (“the term ‘print application’ ... is meant to be
understood broadly as any application . . .”). This fails to explain what the
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Application 13/455,896
term “application” means. Claim 1 recites receiving user input “to add
content displayed in the browser instance as a print application.” This
suggests that the content is a print application. Similarly, the Specification
states, “The print application creator (33) may be any combination of
hardware and software that combines the content data in a format such as,
for example, XML format, to form the print application (327, 329).” Spec.
146. This further suggests that an XML document combining content data
falls within the Specification’s broad use of the term “print application.”
Appellants have not adequately explained how Almen’s print job—which
combines all the content shown in a webpage—would not similarly fall
within the Specification’s broad use of “print application.” Merely asserting
a “job” is not an “application” is insufficient without explaining what an
“application” is or why a “job” is different. See In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009) (“the reference need not satisfy an ipsissimis
verbis test” for anticipation); see also In reLovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”); 37 C.F.R. § 41.37(c)(l)(iv).
For independent claim 9, Appellants also contend the Examiner relies
on “the print button widget application of Almen as teaching both the
claimed ‘native print application’ and the ‘print application creation button’”
and “it is improper for an Examiner to use a single structure/element in the
cited reference to disclose two separate claimed elements.” App. Br. 15.
However, the Examiner relies on Almen’s “print button widget application”
as teaching the claimed “native print application” (Ans. 4, emphasis added,
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Application 13/455,896
citing Almen 114) and Almen’s visually-displayed GUI button as teaching
the claimed “print application creation button.” Ans. 4—5 (citing Almen Fig.
1 item 110 and Fig. 3 item 210). Appellants have not addressed how this is
any different than the Specification’s disclosure of a GUI button 620 in
Figure 6 which when pressed activates an underlying application 235. Spec.
1135-37.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 9, and 13, and dependent claims 2, 4, 5, 10, 11, and 15—17, which
Appellants argue are patentable for similar reasons. See App. Br. 14—18; 37
C.F.R. § 41.37(c)(l)(iv).
Obviousness: Claims 3, 6—8, 12, 14, and 18—20
Claims 3, 6—8, 12, 14, and 18—20 depend from independent claims 1,
9, and 13. Appellants contend these dependent claims are patentable for the
same reasons as the independent claims, and that the additional prior art
references do not cure the deficiencies discussed above. App. Br. 18—21.
We are not persuaded for the reasons discussed above.
Accordingly, we sustain the Examiner’s rejection of dependent claims
3, 6—8, 12, 14, and 18—20 as obvious.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—20. No time for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 41.50(f).
AFFIRMED
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