Ex Parte Green

Board of Patent Appeals and Interferences

Jun 27, 2007

09950253 (B.P.A.I. Jun. 27, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRETT GREEN
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Appeal 2007-1245
Application 09/950,253
Technology Center 2100
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Decided: June 27, 2007
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Before JOSEPH F. RUGGIERO, ANITA PELLMAN GROSS, and JOHN
A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Appeal 2007-1245
Application 09/950,253

STATEMENT OF THE CASE
Appellant invented a method and system for photocopying documents
under control of a user browser. In particular, the photocopying device
comprises an embedded server that is connected to a network. The browser
can be used to initiate photocopying and adjust various settings of the
photocopying device. A photocopy of the document is then generated in
accordance with the user’s selections.1
Claim 1 is illustrative:
1. A method for photocopying a document, comprising:

receiving a request from a user browser to photocopy a document with
a photocopying device;

uploading content to the user browser;

receiving photocopying selections made with the user browser; and

generating at least one photocopy of the document with the
photocopying device in accordance with the user selections.

The Examiner relies on the following prior art reference to show
unpatentability:
Kuwata US 2003/0072031 A1 Apr. 17, 2003
(filed Mar. 25, 2002)2

1 See generally Specification 3:11-20 and 5:1–6:14.
2 Although the filing date of this published application is after the filing date
of the present application (Sept. 10, 2001), the published application
nonetheless claims the benefit of Provisional Application No. 60/278,180,
filed Mar. 23, 2001 – a date prior to the present application’s filing date.
Although Appellant argues that “much of the content” of Kuwata’s
published application does not appear in the corresponding provisional
application (Br. 6-7), the Examiner nonetheless relies on specific findings in
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Appellant’s admitted prior art on Page 1 of the specification (“APA”).

1. Claims 12, 13, and 15 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Kuwata.
2. Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kuwata in view of APA.
3. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kuwata.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

Kuwata’s provisional application as support for the corresponding findings
from the published application (Answer 9-20).

We recognize that Kuwata’s published application constitutes prior art only
for subject matter properly supported by the provisional application in
accordance with 35 U.S.C. § 112, first paragraph. See MPEP § 2136.03(III);
see also MPEP § 706.02(V)(D). Nevertheless, we rely exclusively on
Kuwata’s provisional application in this opinion – a document whose
qualification as prior art is undisputed.

In any event, to the extent that certain content of Kuwata’s published
application may differ from the corresponding provisional application, such
perceived differences are simply not germane to our findings regarding the
disclosure of Kuwata – findings based solely on the provisional application.
We therefore express no opinion regarding any apparent differences between
Kuwata’s published and provisional applications.
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OPINION
The Anticipation Rejection
We now consider the Examiner’s rejection of claims 12, 13, and 15
under 35 U.S.C. § 102(e) as being anticipated by Kuwata. Anticipation is
established only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore
and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,
313 (Fed. Cir. 1983).
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of Kuwata (Answer 4-5, 9-11). Regarding
independent claim 12, Appellant argues that Kuwata does not teach a
“photocopying device” comprising “photocopying hardware” and “an
embedded server” as claimed. Appellant contends that Kuwata’s server
merely copies files stored on the server. Appellant adds that Kuwata does
not disclose logic for generating at least one control screen that can be
uploaded to a user browser as claimed, but rather merely enables
management of electronic image files with the server (Br. 11).
The Examiner responds that Kuwata discloses a server accessible via
the internet that functions as a document scanner (i.e., a photocopying
device comprising photocopying hardware). The Examiner adds that this
“photocopying device” comprises an “embedded server” since the device (1)
scans and copies documents, and (2) can be accessed through a network to
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perform user functions. According to the Examiner, since the user can
control the photocopying device via a browser by sending print jobs to the
server, the reference fully meets the limitation calling for “logic for
generating at least one control screen that can be uploaded to a browser”
(Answer 10-11).
We will sustain the Examiner’s anticipation rejection of independent
claim 12. At the outset, we note that the scope and breadth of the limitation
“photocopying hardware” as claimed does not preclude a system which
utilizes conventional digital technology to make duplicate copies of scanned
paper documents, such as a scanner and printer coupled to a computer.3
With this interpretation, we turn to Kuwata. Kuwata discloses a
network-based electronic document organizing system, known as “Proof
Buddy,” that enables a client to perform a number of functions with respect
to electronic documents using a browser. Not only can the user send print
jobs to the server through the browser, the user can also view, edit, and copy
electronic documents stored on a server with the browser. The server can
also function as a document scanner (Kuwata Specification 2, “FIELD OF
THE INVENTION” section; 4, second full paragraph; Fig. 3). To this end,
users can manage images of pages from separate documents with a web
browser, split or merge the files to a new document, and configure the
document for printing, faxing, or emailing. Moreover, the system integrates
the scanning function to allow the user to combine print job and scan job
documents (Kuwata Specification 9, ¶¶ 2-4). Once users scan hardcopy

3 See, e.g., Photocopying, at http://en.wikipedia.org/wiki/Photocopying (last
visited June 13, 2007) (“Low-end [photo]copiers…use digital technology,
but they tend to consist of a standard PC scanner coupled to an inkjet or low-
end laser printer….”).
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documents into the system repository, users can then manage or edit the
scanned files using a web browser (Kuwata Specification 12-13, “From the
Scanner” section).
We find Kuwata’s network-based document management and printing
system reasonably comprises a “photocopying device” as claimed giving the
term its broadest reasonable interpretation. Specifically, nothing in the
claim precludes the “photocopying hardware” to include the combination of
the scanner, server, and printer in Kuwata – components that collectively
enable the user to create any number of copies of scanned paper documents.
Although Appellant acknowledges that Kuwata discloses a
photocopier, Appellant’s argument that Kuwata’s server is not a
“photocopying device” (Reply Br. 6) is simply not commensurate with the
scope of the limitation. In our view, Kuwata’s scanner, server, and printer
collectively function as a “photocopying device.” We further note that the
computer that functions as Kuwata’s server inherently comprises a memory
with an “embedded server” – software that enables the computer to function
as a server.
The server also inherently contains a “copy control module” that
interfaces with the user’s browser. Such copy control functionality enables
the user to utilize the browser to control the process of printing documents
stored on the server. To print a document, the user accesses the System
Explorer. A printer properties form is then shown in the user’s browser that
enables the user to configure printing by selecting desired settings (Kuwata
Specification 29, “Printing” section). This system-specific form that is
displayed in the user’s browser reasonably constitutes a control screen that is
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generated, at least in part, by data uploaded to the user’s browser from the
server.
Although Appellant acknowledges that Kuwata’s server can generate
screens that can be uploaded to the user’s browser, Appellant nevertheless
argues that the reference does not teach that Kuwata’s photocopier performs
this function (Reply Br. 6). But as we indicated previously, Kuwata’s
“photocopier” includes the server with the scanner and printer coupled
thereto.
Regarding claim 15, we find that Kuwata amply discloses a
multifunction peripheral as claimed. Specifically, we note that the
Copier/Scanner/Fax/Printer shown in Fig. 3 certainly performs multiple
functions as its label suggests – namely copying, scanning, faxing, and
printing.
For at least these reasons, we will sustain the Examiner’s rejection of
claims 12 and 15. Since Appellant has not separately argued the
patentability of dependent claim 13, it falls with independent claim 12. See
In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987);
see also 37 C.F.R. § 41.37(c)(1)(vii).

The Obviousness Rejections
We now consider the Examiner’s rejection of claims 1-11 under 35
U.S.C. § 103(a) as unpatentable over Kuwata in view of APA. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the Examiner must make the factual determinations set forth in
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Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).
Furthermore, “‘there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’ . . . .
[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding independent claim 1, the Examiner's rejection essentially
finds that Kuwata teaches every claimed feature except for using the browser
to photocopy a document. The Examiner cites APA as teaching that it is
known in the art to access and use a photocopier from a host computing
device. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Kuwata to use
the browser to photocopy a document to allow remote users to photocopy
documents (Answer 5-6, 12-13).
Appellant argues that Kuwata does not teach a photocopying device
that receives a request or photocopying selections from a user browser as
claimed. Although Appellant acknowledges that Kuwata’s server could
receive such a request, the photocopier does not receive this request (Br. 13-
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14; Reply Br. 7). Appellant also contends that Kuwata does not control
photocopying via a browser. In this regard, Appellant emphasizes that
printing is significantly different than photocopying: unlike photocopying,
print jobs are handled by a print server (Reply Br. 7). The Examiner
disagrees and refers to various passages within Kuwata that are said to
disclose the disputed limitations (Answer 12-13).
We will sustain the Examiner’s rejection of independent claim 1. As
we indicated with respect to claim 12, we find Kuwata’s scanner, server, and
printer collectively constitute a “photocopying device” giving the term its
broadest reasonable interpretation. As such, the “photocopying device”
receives a request from the user’s browser to photocopy a document as
claimed. That is, a paper document can be scanned into Kuwata’s system
and stored on the server. When the user prints the stored image of this paper
document, the user sends a request to print the document from the browser
to the server. Since a duplicate copy of the paper document is printed, it is
effectively “photocopied” giving the term its broadest reasonable
interpretation.
Appellant’s argument regarding the distinction between copying and
photocopying is simply not commensurate with the scope and breadth of the
limitation. As we indicated previously, “photocopying” reasonably includes
digital technologies that duplicate documents by scanning and printing the
documents.4 In any event, Appellant has offered no evidence on this record
to establish any substantive distinction between copying a document
digitally using a scanner and printer and “photocopying” such a document.

4 See p. 5, supra, of this opinion.
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In addition, “photocopying selections” are made with the user’s
browser as claimed. In this regard, the user makes such selections via the
“printer properties form” displayed in the browser that enables the user to
configure printing by selecting desired settings (Kuwata Specification 29).
Regarding claim 4, these selections are ultimately delivered to the
“photocopying device” under our interpretation noted previously.
Regarding claims 6-8 and 9-11, Appellant essentially reiterates the
arguments pertaining to Kuwata’s failure to disclose a photocopying device
that receives requests from a user browser, controlling photocopying with a
browser (claims 6 and 9), and the photocopying device comprising an
embedded server (claims 7 and 10) (Br. 15-17; Reply Br. 8-9). For the
reasons previously discussed, however, we find these arguments
unpersuasive and the limitations fully met by Kuwata.
For the foregoing reasons, we find that Kuwata satisfies all limitations
of claims 1, 3, 4, 6, 7, 9, and 10 with APA being merely cumulative to the
teachings of Kuwata. We sustain the Examiner’s obviousness rejection
based on the teachings of Kuwata alone since we may rely on fewer
references than the Examiner in affirming a multiple-reference rejection
under 35 U.S.C. § 103. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-
67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 444
n.2 (CCPA 1966).
Since Appellant has not separately argued the patentability of claims
2, 5, 8, and 11, these claims fall with independent claims 1, 6, and 9. See In
re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987);
see also 37 C.F.R. § 41.37(c)(1)(vii).
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We now consider the Examiner’s rejection of claim 14 under 35
U.S.C. § 103(a) as unpatentable over Kuwata. The Examiner argues that
Kuwata discloses all limitations except for transmitting a confirmation
notice to the browser once a photocopy has been generated. To cure this
deficiency, the Examiner notes that transmitting confirmation notices to
browsers upon completion of specific tasks is well known in the art and cites
Page 4, ¶ 63 of Kuwata as an example of such confirmation notices (Answer
7-8). Appellant reiterates the previous arguments regarding the lack of a
photocopying device, but adds that Kuwata fails to teach a confirmation
notice once a photocopy has been generated by the photocopying device as
claimed (Br. 17-18).
We will sustain the Examiner’s obviousness rejection of claim 14. At
the outset, we reiterate that Kuwata’s scanner, server, and printer
collectively function as a “photocopying device.” In our view, transmitting
confirmation notices to the user’s browser upon completing a print job (i.e.,
generating a photocopy) to inform the user of the status of the job would
have been well within the level of the skilled artisan, particularly since
printing in Kuwata can occur remote from the user (i.e., over a network). As
is well known in the art, such notifications are routinely used to inform users
that a print job is complete and therefore ready to retrieve from the printer.
Although we find the Examiner’s reliance on the confirmation prompt
when deleting a folder in Kuwata problematic for supporting the Examiner’s
position, we nevertheless conclude that transmitting confirmation notices
upon completing a print job would have been well within the level of skilled
artisans for the foregoing reasons. The Examiner’s rejection of claim 14 is
therefore sustained.
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DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-15 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

eld

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