Ex Parte Kamath et al

Patent Trial and Appeal Board

Feb 24, 2016

12776372 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121776,372 05/08/2010
22879 7590 02/26/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Harish B. Karnath
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82258592 2190
EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
02/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARISH B. KAMATH, HEAN KOON KOAY,
and PAIK. ATUL
Appeal2014-003360
Application 12/776,372
Technology Center 2600
Before ST. JOHN COURTENAY III, MELISSA A HAAPALA, and
MONICA S.ULLAGADDI, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-10, and 12-21. Claim 11 has been previously canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-003360
Application 12/776,372
INVENTION
Appellants' invention is directed to systems, methods, and apparatus
that monitor and manage a cloud printing device over the internet through a
firewall. Spec. 3:3--4. Claim 1 is exemplary of the subject matter on appeal:
1. A method executed by a computer in a network,
compnsmg:
receiving, at the computer and over the network, a request
to manage a parameter of a printing device registered with the
network and located behind a firewall that blocks the request;
and
executing the request to manage the parameter with an
agent authorized to communicate through the firewall and with
the computer and the printing device.
REJECTIONS ON APPEAL
Claims 1, 3, 4, 6, 7, 8, 10, 13, 15, 17, 20, and 21 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Lodwick (US 6,978,299 Bl;
issued Dec. 20, 2005).
Claims 2, 5, 9, and 14 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over the combination of Lodwick and Ahmed (US
2007/0050373 Al; published Mar. 1, 2007).
Claims 12, 16, 18, and 19 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over the combination of Lodwick and Shima (US
8,045,485 B2; issued Oct. 25, 2011 ).
ISSUES
Appellants' contentions present us with the following dispositive
issues:
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Appeal2014-003360
Application 12/776,372
A) Did the Examiner err in finding Lodwick discloses "an agent
outside the firewall authorized to communicate with the computer, and
authorized to communicate through the firewall with the printing device"
(hereinafter the "agent" limitation), as recited in independent claim 1?
B) Did the Examiner err in finding Lodwick discloses "transmitting
performed in response to the electronic device logging into the network"
(hereinafter the "transmitting" limitation), as recited in independent claim 8?
ANALYSIS
We have reviewed the Examiner's rejections in consideration of
Appellants' contentions. Appellants have persuaded us the Examiner has
failed to establish that the claims are unpatentable over the cited prior art.
Issue A: Independent Claims 1 and 13 rejected under §102
The Examiner finds Lodwick discloses an agent program (print driver
14) on a computer that can communicate through a firewall to a spooling
server that is also a computer. Ans. 4 (citing Lodwick 7:65----67, 8: 1-'2; Fig.
1 ). The Examiner further finds Lodwick shows a print request (request to
manage a parameter of a printing device) that is routed through the firewall
to the destination printer. Ans. 5 (citing Lodwick 3: 5 8----63; Fig. 1 ). Thus, the
Examiner finds Lodwick discloses the "agent" limitation recited in claim 1.
Ans. 5.
Appellants contend Lodwick does not disclose the recited agent of
claim 1 because none of the components in Lodwick disclose an agent
outside the firewall that is authorized to communicate with the computer and
authorized to communicate through the firewall with the printing device.
App. Br. 9-11. In particular, Appellants argue the printer driver 14 (equated
by the Examiner to the agent program) is only configured to communicate
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Application 12/776,372
with the spooling server and not the destination printer. Reply Br. 5.
Appellants further argue the destination printer prohibits communications
with unsecured devices, including the print driver, because Lodwick
describes the printer 120 is not passively accepting connections from the
outside, but rather printer polling device 100 is initiating connections to a
specific, trusted location, the spooling server 50. Reply Br. 6 (citing
Lodwick 6:42--46).
We agree with Appellants that the cited sections of Lodwick do not
disclose the printer driver 14 is authorized to communicate with printing
device 120, but only describe printer driver 14 communicating with spooling
server 50 ("computer"), which is outside the firewall 70 behind which
printer polling device 100 and destination printer 120 reside. See Lodwick
Fig. 1; 3:54---63; see also Lodwick 6:45--47. Therefore, Appellants persuade
us that the Examiner has not established Lodwick expressly or inherently
discloses the execution step performed by the "agent'; in the manner recited
in claim 1 under § 102. Independent claim 13 recites similar contested
limitations in commensurate form. Accordingly, we reverse the anticipation
rejection of independent claim 1, and the anticipation rejection of associated
dependent claims 3, 4, 6, 7, and 21. Likewise, we reverse the anticipation
rejection of independent claim 13, and the anticipation rejection of
associated dependent claims 15, 17, and 20.
Issue B: Independent Claim 8 rejected under §102
The Examiner finds Lodwick describes the process of authentication
of a user using a PIN before accessing content over a network and thus
discloses the "transmitting" limitation recited in claim 8. Ans. 9 (citing
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Appeal2014-003360
Application 12/776,372
Lodwick 9:42-56). Appellants argue the cited section does not describe that
any status information about the printer is transferred in response to the
client 12 (electronic) device performing the authentication using a PIN.
App Br. 11-13; see also Reply Br. 8. We have reviewed the cited section
and absent further explanation by the Examiner, we agree with Appellants.
See Lodwick 9:42-56. Therefore, Appellants persuade us the Examiner has
not established Lodwick expressly or inherently discloses the "transmitting"
step or act recited in independent claim 8. Accordingly, we reverse the
anticipation rejection of independent claim 8, and the anticipation rejection
of associated dependent claim 10.
Remaining Dependent Claims rejected under§ 103
Regarding the remaining dependent claims rejected under § 103,
because the Examiner has not shown the cited secondary references teach or
suggest the aforementioned deficiencies regarding the anticipation rejection
of independent claims 1, 8, and 13 over Lodwick, we also reverse the § 103
rejections of the remaining dependent claims.
DECISION
We reverse the Examiner's decision to reject claims 1-10 and 12-21.
REVERSED
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