Ex Parte Green

Board of Patent Appeals and Interferences

Oct 25, 2011

09950253 (B.P.A.I. Oct. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRETT GREEN
____________

Appeal 2010-002449
Application 09/950,253
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and THU A. DANG,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
This application returns to us after another panel of this Board1
affirmed the Examiner’s rejection of then-pending claims 1-15. Ex parte
Green, No. 2007-1245, 2007 WL 1849548 (BPAI 2007) (non-precedential).
Prosecution was reopened after that decision, and Appellant now appeals
under 35 U.S.C. § 134(a) from the Examiner’s subsequent rejection of

1 The panel for this appeal is the same as the earlier appeal except that Judge
Dang replaces then-Judge Gross.
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claims 1-5 and 12-15. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse and enter a new ground of rejection under 37 C.F.R § 41.50(b).

STATEMENT OF THE CASE
Appellant’s invention photocopies documents via an independent
photocopier with an embedded server connected to a network. A user
browser can initiate photocopying according to user selections. See
generally Spec. 3-6; Figs. 1, 3. Claim 1 is illustrative with key disputed
limitations emphasized:
1. A method for photocopying a document, comprising:
receiving via a network with an independent photocopier that does not
include a separate server computer a request from a user browser to
photocopy a document, wherein the independent photocopier is directly
connected to the network without a host computer;
uploading content to the user browser from an embedded web server
stored within memory contained within the independent photocopier;
receiving with the independent photocopier photocopying selections
made with the user browser; and
generating at least one photocopy of the document with the
independent photocopier in accordance with the user selections.

The Examiner relies on the following as evidence of unpatentability:
Kuwata US 2003/0072031 A1 Apr. 17, 2003
(filed Mar. 25, 2002)2

2 Although this published application’s filing date is after that of the present
application (September 10, 2001), the published application nonetheless
claims the benefit of Provisional Application No. 60/278,180, filed March
23, 2001 which is before the present application’s filing date. While the
Examiner’s rejections cite passages from the published application (Ans. 4-
8), the Examiner nonetheless relies on specific findings in Kuwata’s
provisional application to support corresponding findings from the published
application. Ans. 9-12.

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Appellant’s admitted prior art on Page 1 of the Specification (“APA”).

THE REJECTIONS
1. The Examiner rejected claims 12, 13, and 15 under 35 U.S.C. § 102(e)
as anticipated by Kuwata. Ans. 4-5.3
2. The Examiner rejected claims 1-5 under 35 U.S.C. § 103(a) as
unpatentable over Kuwata and APA. Ans. 5-8.
3. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Kuwata. Ans. 7-8.

THE ANTICIPATION REJECTION
The Examiner finds that Kuwata discloses every recited feature of
independent claim 12 including an independent photocopier with (1) an
embedded server to upload a control screen to a user browser and (2) a
network device, both within a single housing as claimed. Ans. 4-5, 9-11.
Appellant disagrees with these findings, arguing that scanning or
copying is performed at or near Kuwata’s server—not by the server: a point

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 In re Giacomini, 612
F.3d 1380, 1383-85 (Fed. Cir. 2010); see also Ex parte Yamaguchi, 88
USPQ2d 1606, 1609 (BPAI 2008) (precedential); MPEP §§ 2136.03(III),
706.02(VI)(D). Nevertheless, as in the earlier decision, we rely exclusively
on Kuwata’s provisional application (“Kuwata ’180”) in this opinion—a
document whose qualification as prior art is undisputed. Accord App. Br. 6
(indicating that the Brief’s discussion focuses on Kawamura’s provisional
application).
3 Throughout this opinion, we refer to (1) the Appeal Brief filed July 9,
2009; (2) the Examiner’s Answer mailed September 29, 2009; and (3) the
Reply Brief filed October 22, 2009.
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that is said to be evidenced by Kuwata’s coupling a server to a separate
photocopier. App. Br. 8-12; Reply Br. 3-7. Appellant emphasizes that this
coupling was recognized in the earlier Board decision which referred to
these coupled components collectively as a “photocopying device.” Id.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 12 by finding
that Kuwata discloses an independent photocopier that does not include a
separate server computer, the photocopier comprising (1) an embedded
server configured to upload a control screen to a user browser via a network
and (2) a network device that can directly communicate over the network to
facilitate the upload, where both devices are contained in a single housing of
the photocopier?

FINDINGS OF FACT (FF)
1. Kuwata’s network-based electronic document organizing system
(“Proof Buddy”) enables a client to perform various electronic document
functions using a browser. To this end, “Proof Buddy” allows managing
post-ripped images on a server (the “GL-1010”) to view, edit, merge, and
store pages from separate documents using a web browser. Using the
browser, not only can the user send print jobs to the server but also view,
edit, and copy electronic documents stored on the server. The server can
also function as a document scanner. Kuwata ‘180, at 2 (“FIELD OF THE
INVENTION” section); 4, ¶ 2 (“BRIEF SUMMARY OF THE
INVENTION” section); 9, ¶ 1 (“Functional Description – Overview”
section); Fig. 3.
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2. “The documents are also available for printing from the GL-1010
front panel.” Kuwata ‘180, at 9, ¶ 2.
3. “The server which may be operated by a user utilizing the user
interface on the front panel may scan or copy documents at the server.”
Kuwata ‘180, at 10, ¶ 1; Fig. 1.
3. “The client may print or fax documents from the server through the
browser.” Kuwata ‘180, at 4, ¶ 1.
4. To print a “Proof Buddy” document, the user (1) selects printer
settings on the System Explorer, and (2) clicks “OK” to send the document
to the printer. Kuwata ‘180, at 29-30 (“Printing”).
5. Kuwata 180’s Figure 3 labels a server and
“Copier/Scanner/Fax/Printer” collectively as “SC-3 Controller” as shown in
the enlarged detail view below:

“SC-3 Controller” in Kuwata ‘180’s Figure 3

6. Kuwata ‘180’s Figure 5 shows two servers, “SC-3 Controller
‘Server 1’ (Proof Buddy Server)” and (2) “SC-3 Controller ‘Server 2,’” as
shown below:
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“SC-3 Controller” Servers in Kuwata ‘180’s Figure 5

ANALYSIS
Based on the record before us, we find error in the Examiner’s
anticipation rejection of independent claim 12. Despite the Examiner’s
contention to the contrary (Ans. 9-10), we agree with Appellant (Reply Br.
3-4) that the term “independent photocopier that does not include a separate
server computer” recited in the preamble has patentable weight since it does
not merely label the photocopier or recite its intended purpose. Instead, the
claim recites an essential structural characteristic when the claim is
considered as a whole, namely a photocopier with self-contained server and
network-communication capabilities that precludes the need for a separate
server computer for those functions. This recited “independence” therefore
gives the preambular “independent photocopier” limitation life, meaning,
and vitality considering claim 12 as a whole, and must be given patentable
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weight. See Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 808 (Fed. Cir. 2002) (citations omitted).
Although the Examiner alternatively gives patentable weight to this
limitation (Ans. 10), we likewise find problematic the Examiner’s
anticipation position based on this alternative interpretation. While
Appellant admits that Kuwata couples a photocopier to a server (App. Br.
10), we cannot say—nor has the Examiner shown—that this photocopier
necessarily contains an embedded server and network device within its
housing as claimed. Despite Kuwata’s performing photocopy functions (i.e.,
document scanning, copying, and printing) at or near the server, they are not
necessarily performed by the server.
Although Kuwata is not a model of clarity on this point, Kuwata
nonetheless shows a copier/scanner/fax/printer device that is separate from
the server in Figure 1. FF 5. While documents can be (1) scanned or copied
and made available for printing at the server (FF 2-3) and (2) printed from
the server (FF 2), that does not mean that the server actually prints—a
crucial photocopy function. Rather, as noted in the earlier decision,4 it is the
server, scanner, and printer that collectively perform the photocopying
function—a function that is not necessarily performed within a single
housing as claimed. That Kuwata (1) shows a server separate from the
copier/scanner/fax/printer device in Figure 3 (FF 5), and (2) indicates that
documents are sent to a printer (FF 4) only bolsters this conclusion.

4 See Green, 2007 WL 1849548, at *3 (“Kuwata’s scanner, server, and
printer collectively function as a ‘photocopying device.’”); see also id.
(“Kuwata’s ‘photocopier’ includes the server with the scanner and printer
coupled thereto.”).
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We are therefore persuaded that the Examiner erred in rejecting
independent claim 12 and dependent claims 13 and 15 for similar reasons.

THE OBVIOUSNESS REJECTIONS
Since the Examiner’s obviousness rejections are based on the flawed
premise that Kuwata’s photocopier inherently has an embedded server (Ans.
5-8, 12-13), we reverse the Examiner’s obviousness rejections of claims 1-5
and 14 for similar reasons.

NEW GROUND OF REJECTION
Under 37 C.F.R. § 41.50(b), we enter the following new ground of
rejection.
Claims 12-15 are rejected under 35 U.S.C. § 103(a) over Kuwata.
Although Kuwata uses separate devices for server and photocopy functions
as noted previously, integrating these functions within a unitary, independent
photocopier would have been obvious to, among other things, simplify the
system and reduce parts. Not only does Kuwata suggest as much by
denoting the servers in Figure 5 using the same graphical symbol as that
used for a photocopier in Figure 3 (compare FF 6 with FF 5), integrating
photocopying and server functions predictably uses prior art elements
according to their established functions. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). Nor has Appellant shown that this integration or
otherwise adapting a photocopier for network communication via an
embedded server would have been uniquely challenging or otherwise
beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (concluding that
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updating electro-mechanical learning toy using modern electronic
components to gain the commonly-understood benefits of such adaptation,
such as decreased size, simplified operation, and reduced cost, would have
been obvious). Accordingly, claim 12 would have been obvious to
ordinarily skilled artisans. Dependent claims 13-15 would have also been
obvious for similar reasons and those noted by the Examiner. Ans. 5.

Claims 1-5 are rejected under 35 U.S.C. § 103(a) over Kuwata ‘180
and APA. For similar reasons, and for those indicated by the Examiner
regarding APA (Ans. 6), we likewise conclude that claim 1 would have been
obvious. Dependent claims 2-5 would have also been obvious for similar
reasons and those noted by the Examiner. Ans. 6-7.

CONCLUSION
The Examiner erred in rejecting (1) claims 12, 13, and 15 under § 102
and (2) claims 1-5 and 14 under § 103. We enter a new ground of rejection
for these claims under § 103.

ORDER
The Examiner’s decision rejecting claims 1-5 and 12-15 is reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) that provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .

(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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).

REVERSED – 37 C.F.R. § 41.50(b)

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