Ex Parte Howard

Board of Patent Appeals and Interferences

Sep 23, 2009

10213171 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS W. HOWARD
____________

Appeal 2008-003729
Application 10/213,171
Technology Center 3600
____________

Decided: September 23, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2008-003729
Application 10/213,171
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STATEMENT OF THE CASE
Dennis W. Howard (Appellant) seeks our review under 35 U.S.C. §
134 of the final rejection of claims 1-49. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention is a system and method that uses a driver-server
interface to add user specific data to a print job that was created by a print
driver of a document processing apparatus. Specification [0014]. The user
specific data includes identification of the user, account information or
billing information. Id.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-readable medium having computer
executable instructions which, when executed on a
processor, direct a computer to perform a method
comprising:
receiving user-specific data corresponding to
billing information for a user;
receiving a print job containing print data
from a printer driver application to be output at a
peripheral device;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 18, 2006) and Reply Brief (“Reply Br.,” filed Oct. 24, 2007),
and the Examiner’s Answer (“Answer,” mailed Aug. 29, 2007)
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modifying the print job to add the user
specific data; and
addressing the modified print job to a
network resource for:
processing the user-specific data to assess
the user with charges; and
storage of the print data in an output queue
to be output at the peripheral device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Aikens
Reddy
Fuller
US 6,216,113 B1
US 2002/0113993 A1
US 2002/0174264 A1
Apr. 10, 2001
Aug. 22, 2002
Nov. 21, 2002
The following rejections are before us for review:
1. Claims 1-45 and 47-49 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Aikens and Reddy.
2. Claim 46 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Aikens, Reddy, and Fuller.

ISSUE
The issue is whether the Appellant has shown that the Examiner erred
in rejecting claims 1-45 and 47-49 under 35 U.S.C. §103(a) as being
unpatentable over Aikens and Reddy.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
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supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 1 recites “modifying.”
2. The Specification does not contain an express definition of
“modifying.”
3. A definition of “modify” is “to make minor changes in.” (See
Merriam-Webster’s Collegiate Dictionary 748 (10th Ed. 1993,)
(Entry for “modify”).
The scope and content of the prior art
Aikens
4. Aikens describes a billing system for printing machines. Col. 1, ll.
4-6.
5. Aikens’ Figure 4 depicts an interface for “characterizing a job
requirement to be sent over a network.” Col. 4, ll. 54-57. See also
col. 2, ll. 1-3.
6. Aikens’ interface of Figure 4 includes spaces to enter an access
code and an account number and buttons, including “print & save”
and print folder as “single jobs” or “separate jobs.” See col. 4, l.
66 – col. 5, l. 3 and Fig. 4.
Reddy
7. The Examiner cites Reddy to teach transmitting user data and print
data in a transmission addressed to an address of a print queue to
be output at the peripheral device. Answer 6.
Fuller
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8. The Examiner cites Fuller to teach installation software for the
driver-server interface application in the client memory. Answer
26.
Any differences between the claimed subject matter and the prior art
9. Aikens is silent as to how or when the job is created.
10. Aikens is silent as to whether or not the access code or the account
number is used to modify a job.
The level of skill in the art
11. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of routing an output job to a
peripheral device. We will therefore consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”)
(Quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
12. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
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should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a definition
for claim terms, but otherwise apply a broad interpretation. As
this court has discussed, this methodology produces claims with
only justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571
(Fed. Cir. 1984). Further, as applicants may amend claims to
narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).

Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
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between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-45 and 47-49 under §103(a) as being unpatentable
over Aikens and Reddy.
Claim 1-2
The Appellant argues that Examiner has failed to establish a prima
facie showing that Aikens and Reddy teach the claimed steps of 1) receiving
a print job containing print data from a printer driver application to be ouput
at a peripheral device and 2) modifying the print job to add the user specific
data. App. Br. 12-13 and Reply Br. 2-4. The Appellant argues that while
Aikens’ Figure 4, cited by the Examiner, teaches a user interface for
initiating or creating a print job and that a user can supply an access code
and an account number through the interface, Aikens does not describe
modifying a print job and is silent as to whether the access code and account
number are add to the print job in order to reach the decoder. App. Br. 10.
The Appellant further contends that Aikens does not even describe receiving
a print job from a printer driver application to be output at a peripheral
device. Id.
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The Examiner responds by continuing to assert that Aikens teaches
the receiving step and the modifying step at least in column 4, lines 54-65
and Figure 4. Answer 28. The Examiner further asserts that Aikens’ Figure
4 discloses a modified print job as it includes both user-specific and print job
data, and entering an access code and account number as described in
column 4, lines 66-67 and column 5, line 3. Id. Answer 28-29.
We agree with the Appellant that Aikens does not teach the steps of
receiving a print job and modifying the print job as recited in claim 1. First,
we note that the Specification does not contain an express definition of
“modify” (FF 2) and therefore, give the term the broadest reasonable
construction consistent with the Specification. We construe “modify” to
mean “to make minor changes in.” FF 3. We agree with the Appellant that
in order to be changed, the print job must already exist. See App. Br. 12.
While Aikens does describe “characterizing” a job requirement “to be sent
over a network to a printer” (FF 5), Aikens is silent as to how or when the
job is created. FF 9. Further, while Figure 4 and the corresponding
description in column 4, line 54 – column 5, line 8, does describe an
interface used to “characterize” the job and includes a space for an access
code or the account number (FF 6), Aikens is silent as to whether or not the
access code or the account number is added to an already created job. FF
10.
Further, in determining the scope and content of the prior art, we
consider not only whether the elements are found expressly in the prior art
reference, but also whether the elements are found inherently therein.
To establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the
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thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
omitted) (internal quotation marks omitted). However, we find that Aikens
does not inherently describe a step of modifying a print job to include the
user specific data. Aikens does not provide enough description of use of the
user interface in Figure 4, the access code and the accounting code to make
clear that this step is described in the reference. FF 9-10. We note that the
Appellant argue that the user interface of Figure 4 could be initialing a print
job. App. Br. 12. We find that Aikens does not teach, as asserted by the
Examiner, the steps of receiving a print job and modifying the print job as
recited in claim 1.
Further, we note that the Examiner has not asserted that the limitations
are within the common knowledge of the art or that Reddy teaches these
limitations. Accordingly, we find that the Appellant has shown that the
Examiner has failed to establish a prima facie showing that claim 1 and
claim 2, dependent thereon, are unpatentable under 35 U.S.C. 103(a) over
Aikens and Reddy.

Claims 3-7
Claim 3 recites a computer-readable medium having instructions that
cause a computer to 1) execute a printer driver application to form a print
job containing print data to be output at a peripheral device and 2) modifying
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the print job to add the user data. The Appellant traverses the rejection of
claim 3 for the same reasons as argued against the rejection of claim 1. App.
Br. 13-15 and Reply Br. 4-5. The Examiner responds by again repeating
that Aikens teaches these limitations and citing to Figure 4 and col. 4, lines
54-column 5, line 3. Answer 30-32. Accordingly, because we found the
Appellant’s argument persuasive as to the rejection of claim 1, we find them
equally unpersuasive as to error in the rejection of claim 3. We find that the
Appellant has shown that the Examiner erred in rejecting claim 3 and claims
4-7, dependent thereon, under 35 U.S.C. §103(a) as unpatentable over
Aikens and Reddy.

Claims 8-11
Claim 8 recites a computer-readable medium having instructions that
cause a computer to 1) execute a printer driver application, invoked by
execution of a document processing application processing a document that
contains information, to form a print job containing print data from the
information in the document to be printed at the printer and 2) modifying the
print job to add the user data. The Appellant traverses the rejection of claim
8 for the same reasons as argued against the rejection of claim 1. App. Br.
15-16 and Reply Br. 5-6. The Examiner responds by again repeating that
Aikens teaches these limitations and citing to Figure 4 and col. 4, lines 54-
column 5, line 3. Answer 32-35. Accordingly, because we found the
Appellant’s argument persuasive as to the rejection of claim 1, we find them
equally unpersuasive as to error in the rejection of claim 8. We find that the
Appellant has shown that the Examiner erred in rejecting claim 8 and claims
9-11, dependent thereon, under 35 U.S.C. §103(a) as unpatentable over
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Aikens and Reddy.

Claims 12-15
Claim 12 recites a computer-readable medium having instructions that
cause a computer to 1) after a request to print at a printer received by a
printer driver application executed by the processor, the printer driver
application being invoked by the processor executing a document processing
application processing a document that contains information, wherein the
information in the document is processed by the execution of the printer
driver application to form a print job containing print data to be printed at
the printer and 2) modifying the print job to add the user data. The
Appellant traverses the rejection of claim 12 for the same reasons as argued
against the rejection of claim 1. App. Br. 16-17 and Reply Br. 5-6. The
Examiner responds by again repeating that Aikens teaches these limitations
and citing to Figure 4 and col. 4, lines 54-column 5, line 3. Answer 35-37.
Accordingly, because we found the Appellant’s argument persuasive
as to the rejection of claim 1, we find them equally unpersuasive as to error
in the rejection of claim 12. We find that the Appellant has shown that the
Examiner erred in rejecting claim 12 and claims 13-15, dependent thereon,
under 35 U.S.C. §103(a) as unpatentable over Aikens and Reddy.

Claim 16-20
Claim 16 recites a computer-readable medium having instructions that
cause a computer to 1) execute a printer drive application to create print data
in a print job, the print data being designated to be printed at a printer,
wherein the print data is formed from a document containing information
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and 2) executing a driver-server interface application to modify the print job
to add user data. The Appellant traverses the rejection of claim 16 for the
same reasons as argued against the rejection of claim 1. App. Br. 17-20 and
Reply Br. 5-6. The Examiner responds by again repeating that Aikens
teaches these limitations and citing to Figure 4 and col. 4, lines 54-column 5,
line 3. Answer 38-40. Accordingly, because we found the Appellant’s
argument persuasive as to the rejection of claim 1, we find them equally
unpersuasive as to error in the rejection of claim 16. We find that the
Appellant has shown that the Examiner erred in rejecting claim 16 and
claims 17-20, dependent thereon, under 35 U.S.C. §103(a) as unpatentable
over Aikens and Reddy.

Claim 21-24
Claim 21 recites a client device including 1) a printer driver means for
forming a print job containing print data to be printed at a printer and 2)
means for modifying the print job to include the user data. We note that the
printer driver means and the means for modifying correspond to the printer
drivers 244 and driver-server interface applications 246 running on
processor 202 of the client workstation. See Specification [0037]. The
Appellant traverses the rejection of claim 21 for the same reasons as argued
against the rejection of claim 1. App. Br. 21 and Reply Br. 5-6. The
Examiner responds by again repeating that Aikens teaches these limitations
and citing to Figure 4 and col. 4, lines 54-column 5, line 3. Answer 40-42.
Accordingly, because we found the Appellant’s argument persuasive as to
the rejection of claim 1, we find them equally unpersuasive as to error in the
rejection of claim 21. We find that the Appellant has shown that the
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Examiner erred in rejecting claim 21 and claims 22-24, dependent thereon,
under 35 U.S.C. §103(a) as unpatentable over Aikens and Reddy.

Claim 25-27
Claim 25 recites a client device including 1) printer driver means for
creating print data in a first print job, the print data being designated to be
printed at a printer, wherein the print data is formed from a document
containing information and 2) driver-server interface means for modifying
the print job to add user data. We note that the printer driver means and the
means for modifying correspond to the printer drivers 244 and driver-server
interface applications 246 running on processor 202 of the client
workstation. See Specification [0037]. The Appellant traverses the rejection
of claim 25 for the same reasons as argued against the rejection of claim 1.
App. Br. 21-22 and Reply Br. 5-6. The Examiner responds by again
repeating that Aikens teaches these limitations and citing to Figure 4 and col.
4, lines 54-column 5, line 3. Answer 43-45. Accordingly, because we found
the Appellant’s argument persuasive as to the rejection of claim 1, we find
them equally unpersuasive as to error in the rejection of claim 25. We find
that the Appellant has shown that the Examiner erred in rejecting claim 25
and claims 26 and 27, dependent thereon, under 35 U.S.C. §103(a) as
unpatentable over Aikens and Reddy.

Claim 28-32
Claim 28 recites a computer readable medium having instructions that
cause a computer to 1) receive a print job that has been modified so that it
includes user data and print data to be printed at a printer: wherein the print
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data was formed by execution of a print driver application invoked by the
execution of a document processing application processing a document
including information , the information in the document was processed by
the execution of the printer drive application to form the print data. The
Appellant traverses the rejection of claim 28 for the same reasons as argued
against the rejection of claim 1. App. Br. 22-23 and Reply Br. 5-6. The
Examiner responds by again repeating that Aikens teaches these limitations
and citing to Figure 4 and col. 4, lines 54-column 5, line 3. Answer 45-38.
Accordingly, because we found the Appellant’s argument persuasive as to
the rejection of claim 1, we find them equally unpersuasive as to error in the
rejection of claim 28. We find that the Appellant has shown that the
Examiner erred in rejecting claim 28 and claims 29-32, dependent thereon,
under 35 U.S.C. §103(a) as unpatentable over Aikens and Reddy.

Claim 33-38
Claim 33 recites a computer readable medium having instructions that
cause a computer to process a plurality of print jobs in a print queue that
having the user data, including performing a billing function using the user
data. The Appellant traverses the rejection of claim 33 for the same reasons
as argued against the rejection of claim 1. App. Br. 23-24 and Reply Br. 5-
6. The Examiner again repeats the same response as the response to
Appellant’s argument with respect to claim 1. Answer 48-50. We note that
unlike the previous claims, claim 33 does not require modifying the print job
to include the user data but does require a print job having the user data and
using that user data in a billing function. For the same reason as discusses
with respect to claim 1, we find that the Appellant has shown that the
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Examiner erred in rejecting claim 33 and claims 34-38, dependent thereon,
under 35 U.S.C. §103(a) as unpatentable over Aikens and Reddy.

Claim 39-44
Claim 39 recites a print server including “means for quantifying use
of the printer by the user corresponding to the respective print data of each
said print job in the print queue and performing a billing function using the
user data and the quantified use with respect to that print job.” Claim 39
further recites that the print job in the print queue includes the user data.
Appellant traverses the rejection of claim 33 for the same reasons as argued
against the rejection of claim 1. App. Br. 24-25 and Reply Br. 5-6. The
Examiner again repeats the same response as the response to Appellant’s
argument with respect to claim 1. Answer 50-53. We note that unlike the
previous claims, claim 33 does not require modifying the print job to include
the user data but does require a means for quantifying use of the printer by
using the user data, which is recites as being included in the print job. We
note that the means for quantifying corresponds to the print server in the
Specification. See Specification [0037]. For the same reason as discusses
with respect to claim 1, we find that the Appellant has shown that the
Examiner erred in rejecting claim 33 and claims 34-38, dependent thereon,
under 35 U.S.C. §103(a) as unpatentable over Aikens and Reddy.

Claim 45 and 47-49
Claim 45 recites a system including a client processor that executes a
print driver application to create a print job from the information in the
documents and executes a driver-server interface application to modify the
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print job to add user data. The Appellant traverses the rejection of claim 45
for the same reasons as argued against the rejection of claim 1. App. Br. 25-
27 and Reply Br. 5-6. The Examiner responds by again repeating that
Aikens teaches these limitations and citing to Figure 4 and col. 4, lines 54-
column 5, line 3. Answer 53-55. Accordingly, because we found the
Appellant’s argument persuasive as to the rejection of claim 1, we find them
equally unpersuasive as to error in the rejection of claim 45. We find that
the Appellant has shown that the Examiner erred in rejecting claim 45 and
claims 47-49, dependent thereon, under 35 U.S.C. §103(a) as unpatentable
over Aikens and Reddy.

The rejection of claim 46 under §103(a) as being unpatentable over Aikens,
Reddy, and Fuller.
This rejection is directed to a claim dependent on claim 45, whose
rejection we have reversed above. We note that the Examiner did not cite
Fuller to teach the limitations at issue with regards to claim 1 and 45. FF 8.
For the same reasons, we will not sustain the rejection of claim 46 over the
cited prior art. We find that the Appellant has shown that the Examiner
erred in rejecting claim 46 over 35 U.S.C. §103(a) as unpatentable over
Aikens, Reddy and Fuller.

CONCLUSIONS
We conclude that the Appellant has shown that the Examiner erred in
rejecting:
claims 1-45, and 47-49 under 35 U.S.C. §103(a) as unpatentable over
Aikens and Reddy; and
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claim 46 under 35 U.S.C. §103(a) as unpatentable over Aikens, Reddy,
and Fuller.

DECISION
The decision of the Examiner to reject claims 1-49 is reversed.

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) (2007).

REVERSED

mev

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