Ex Parte Haines

Board of Patent Appeals and Interferences

Mar 17, 2008

09976715 (B.P.A.I. Mar. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT E. HAINES
____________

Appeal 2007-2392
Application 09/976,715
Technology Center 2100
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Decided: March 17, 2008
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Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
MARC S. HOFF, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-34, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm, and enter a new ground of rejection in accordance with 37
C.F.R. § 41.50(b).
Appeal 2007-2392
Application 09/976,715

The invention relates to printers and other hard copy output engines,
and to management of their consumable supplies. (Spec. 1.) A device
discovery plug in is downloaded over a network, for collecting data
describing peripheral devices related to a vendor associated with the device
discovery plug in. (Spec. 2.) Claim 1 is illustrative.
1. A method of device discovery comprising:

downloading a device discovery plug in via a network using a
network browser;

activating the device discovery plug in to discover peripheral devices
on the network with the device discovery plug in; and

transmitting data describing peripheral devices discovered by the
device discovery plug in.

The Examiner relies on the following references as evidence of
unpatentability.
Sharpe Jr. US 5,960,214 Sep. 28, 1999
Baker US 6,405,204 B1 Jun. 11, 2002
Garland US 6,674,764 B1 Jan. 6, 2004
Butt US 6,754,829 B1 Jun. 22, 2004
Zintel US 6,779,004 B1 Aug. 17, 2004
Pang US 6,804,718 B1 Oct. 12, 2004
www.webopedia.com/TERM/n/network.htm. Last modified date:
September 1, 1996.

Claims 1, 3, 4, 7, 8, 10, 11, 14, 15, 17, 20, 21, 23, 24, 27, 28, 30, and
31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zintel
and Butt.
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Claims 2, 9, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zintel, Butt, and Pang.
Claims 5, 6, 12, 13, 16, 19, 25, 26, and 32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Zintel, Butt, and Sharpe.
Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zintel, Butt, Sharpe, and Baker.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zintel, Butt, and Garland.

The standing rejections
I. Zintel
Zintel describes the Universal Plug and Play (UPnP) device control
protocol. UPnP is an open network architecture designed to enable simple,
ad hoc communication among distributed devices and services from many
vendors. Zintel col. 4, ll. 44-65. UPnP uses a simple network device
discovery protocol (SSDP) that operates in a multicast or server-based mode.
Col. 10, ll. 20-42.
SSDP is a protocol that enables devices to learn of the existence of
potential peer devices and the required information (an IP address) needed to
establish connections with the devices. An SSDP search returns a Uniform
Resource Locator (URL), which can be used to make a connection to the
discovered device. SSDP specifies, as previously noted, a default, automatic
multicast operating mode, but also a server mode for registration and query.
Zintel col. 12, ll. 47-64.
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Application 09/976,715

In Zintel’s model, User Control Points have a user interface for
accessing one or more Controlled Devices on the network. Zintel col. 13, ll.
56-60. Using the server mode for registration and query, a Discovery Client
module in a User Control Point can initiate discovery of Controlled Devices.
A Discovery Server on the Controlled Device responds to discovery
requests. Col. 13, l. 65 - col. 14, l. 8; col. 11, ll. 5-20; col. 19, ll. 5-10; Figs.
1, 2 and 6 (Discovery Server on Device 202 returning Description URL).
Devices may be discovered on a local network, on a wide area
network, or potentially anywhere on the Internet. Zintel col. 46, ll. 33-56.
The discovery procedure provides an Extensible Markup Language (XML)
format device description, which is downloaded to clients to allow activation
of device functionality from the client. Col. 47, ll. 16-21; col. 48, ll. 17-41.

II. Butt
Butt describes downloading a plug-in via a network using a network
browser. Col. 8, l. 59 - col. 9, l. 6.

III. Representative claims
We will consider the limitations of separate claims to the extent the
claims are separately argued in the Appeal Brief. See 37 C.F.R. §
41.37(c)(1)(vii).

III.A. Claim 1
The Examiner rejects instant claim 1 as obvious over the combination
of Zintel and Butt. The Examiner finds that Zintel teaches the claimed
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Application 09/976,715

subject matter, but does not describe downloading a plug in via a network
using a browser. According to the Examiner, it would have been obvious to
use a browser to download a device discovery plug in, as taught by Butt, to
obtain a device discovery module because it would enable a user to find the
specific software that is needed. (Ans. 4-5.)
Appellant argues that “Zintel’s system has nothing to do with
‘discovering’ devices.” (App. Br. 11.) We disagree. See part I, above.
Appellant also argues that Zintel “teaches away” from downloading
software from a network. (App. Br. 12.) We disagree. Zintel describes
downloading software from a network (e.g., col. 51, ll. 29-31). Moreover,
the reference teaches that a discovery module 954 (Fig. 26) may be
associated with a browser on a network. Zintel col. 50, ll. 10-35.
We have considered all of Appellant’s arguments but are not
persuaded of error in the rejection of claim 1. We sustain the rejection.

III.B. Claim 30
Claim 30 recites that the transmitting data describing the peripheral
devices comprises transmitting the data to a vendor website. The claim does
not specify what the vendor may be “vending.” We sustain the rejection
over Zintel and Butts at least because, as previously noted, the device
discovery process described by Zintel may be implemented anywhere on a
wide area network or over the Internet. Zintel col. 46, ll. 33-56.

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III.C. Claim 5
Appellant argues that the combination of Zintel, Butt, and Sharpe does
not teach activating a device discovery plug in or collecting data from an
embedded web server contained in the discovered peripheral devices. (App.
Br. 16-17.)
Claim 5, however, recites that the device discovery plug in is
activated to collect data chosen from a group that includes “model and serial
number information.” Zintel teaches (col. 8, ll. 54-65) that the information
returned from a device may include a Device Friendly Name (human
readable string) that contains manufacturer and model information, which at
least suggests “model and serial number information.”
Moreover, the “model and serial number information” (and the
“included options”), as claimed, represent nonfunctional descriptive
material. The data is merely collected; the data does not functionally change
the system that implements the method steps of base claim 1. The content of
the nonfunctional descriptive material carries no weight in the analysis of
patentability over the prior art. Cf. In re Lowry, 32 F.3d 1579, 1583 (Fed.
Cir. 1994) (“Lowry does not claim merely the information content of a
memory. . . . [N]or does he seek to patent the content of information
resident in a database.”). See also Ex parte Nehls (BPAI Jan. 28, 2008),
available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf; Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
Procedure § 2106.01 (8th ed., Rev. 6, Sept. 2007).
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We sustain the rejection of claim 5.

III.D. Claim 29
Appellant submits that the combination of Zintel, Butt, and Garland
does not teach or suggest activating a device discovery plug in to poll
peripheral devices. (App. Br. 17-18.)
As previously discussed, Zintel describes the Simple Service
Discovery Protocol (SSDP), which uses either a multicast mode or a type of
polling in which a control device searches for devices on the network that
can be controlled. Zintel col. 11, ll. 14 - 20; col. 12, ll. 56-64; col. 13, l. 65 -
col. 14, l. 8. The information returned from a found device necessarily
includes the network address of the device. Zintel col. 12, ll. 47-55.
We are thus not persuaded that the references fail to teach or suggest
activating a device discovery plug in to poll peripheral devices. We sustain
the rejection of claim 29.

III.E. Claims 33, 34
Appellant submits that the combination of Zintel, Butt, Sharpe, and
Baker fails to teach or suggest identifying “a purchase authorizer” or “a
maintainer” for “each group” as recited in claims 33 or 34. (App. Br. 18.)
Intervening claim 6, which depends from claim 1, recites “further
comprising organizing collected data into suitable groups.” Claims 33 and
34 are drawn to, at best, manipulating a mere arrangement of data that does
not functionally change the system that implements the method. The data is
nonfunctional descriptive material, not entitled to weight in the patentability
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analysis. The actual requirements of claims 33 and 34 are taught at least by
Zintel, which describes discriminating data elements from other data
elements (e.g., col. 47, ll. 16-21).
We sustain the rejection of claims 33 and 34.

IV. Remainder of claims
We sustain the rejections applied against the remainder of the claims,
being not persuaded of error in the rejection of any claim.

V. New ground of rejection
We reject claims 21-27 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The claims are drawn to a “computer instruction signal embodied in a
carrier wave carrying instructions . . . .” A carrier wave or signal is not
statutory subject matter because it does not fall within any of the four
categories of statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007).

CONCLUSION
The rejection of claims 1-34 under 35 U.S.C. § 103(a) is affirmed.
A new rejection of claims 21-27 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter is set forth herein. With respect to
the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides that “Appellant
may file a single request for rehearing within two months of the date of the
original decision of the Board.”
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In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. 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 rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
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Application 09/976,715

final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED -- 37 C.F.R § 41.50(b)

pgc

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