Ex Parte Jessen et al

Patent Trial and Appeal Board

May 9, 2016

13013214 (P.T.A.B. May. 9, 2016)

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.
13/013,214 01/25/2011 Robert F. Jessen 8185P115 8342
76073 7590 05/10/2016
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
GUILLERMETY, FRED
ART UNIT PAPER NUMBER
OPQA
MAIL DATE DELIVERY MODE
05/10/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT F. JESSEN, PHILIP K. CIHIWSKY,
DEAN O. MILLER, and JEFFREY A. SIKKINK
____________

Appeal 2014-005921
Application 13/013,214
Technology Center 2600
____________

Before ALLEN R. MacDONALD, JOHNNY A. KUMAR,
TERRENCE W. McMILLIN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a printing system that manages the
generation of separator pages between print jobs so as to save on paper, and

1 According to Appellants, the real party in interest is InfoPrint Solutions
Company LLC (App. Br. 3).
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Application 13/013,214

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a print job manager that generates an index separator page having
information for each print job (Spec. 2–4). Claim 1 is illustrative of the
invention and reads as follows.
1. A printing system comprising:
a storage device; and
a print job manager to store received print jobs in the
storage device and to facilitate the printing of multiple selected
print jobs as a first batch of print jobs, the first batch of print
jobs including a first print job and a second print job; and
a page generator to generate an index separator page
including information for both the first print job and the second
print job.

The Examiner’s Rejections
Claims 1–3, 5, 7–10, 12, 14–16, 19, and 20 are rejected under
35 U.S.C. § 102(b) as being anticipated by Mitsui (US 2009/0244585 A1,
Oct. 1, 2009). Final Act. 2–6.
Claims 4, 13, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mitsui in view of Rocas (US 2009/0290186 A1, Nov. 26,
2009). Final Act. 6–7.
Claims 6, 11, and 18 are rejected under 35 U.S.C. § 102(b) as
anticipated by Mitsui or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Mitsui in view of Rocas. Final Act. 7–9.2
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:

2 Separate patentability is not argued for claims 2–20. Except for our
ultimate decision, these claims 2–20 are not discussed further herein.
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Mitsui does not disclose a process of generating an index
separator page including information for both a first print job and
a second print job. . . . [T]he Examiner asserts [that Mitsui
discloses] a job banner sheet [which] corresponds to the claimed
index separator page. . . . [However,] neither the document
banner sheet nor the job banner sheet disclosed in Mitsui
discloses including information for multiple print jobs.
App. Br. 9.
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
[A] feature of merely including a number of included documents
on a page is not equivalent to including information for a first
document and including information for a second document on
the page. Specifically, an indication of a number of documents
does not provide information regarding first and second
documents.
. . . [Therefore,] Mitsui does not disclose generating an
index separator page including information for both the first print
job and the second print job . . . .
Reply Br. 2.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred (App. Br. 9).
Regarding contention 1, we disagree with Appellants’ conclusions.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons set forth by
the Examiner in the Examiner’s Answer (Ans. 3–4) in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner.
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Regarding contention 2, in the absence of a showing of good cause by
Appellants, we decline to consider an argument raised for the first time in
the Reply Brief. This is because, as the Examiner has not been provided a
chance to respond, and in the absence of a showing of good cause by
Appellants, these arguments are deemed waived. See 37 C.F.R.
§ 41.41(b)(2); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010)
(explaining that arguments and evidence not timely presented in the
principal Brief, will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative) (“Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”). Appellants have provided no
such showing of good cause in the record before us.
In this case, even if we consider Appellants’ above contention 2, the
argument does not convince us the Examiner erred, because the Examiner
has found in the rejection of claim 7 that various information may be set for
a banner page (Final Act. 3; see Mitsui ¶¶ 71–76). In addition, Mitsui
explicitly discloses that information besides a number of documents is
included on a job banner sheet such as job ID, job name, machine name, and
user name information (see Mitsui ¶ 95).

DECISION
We affirm the decision of the Examiner to reject claims 1–20 under
35 U.S.C. §§ 102(b) and 103(a).
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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).

AFFIRMED