Ex Parte Kamath et al

Patent Trial and Appeal Board

Feb 17, 2017

12689254 (P.T.A.B. Feb. 17, 2017)

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.
12/689,254 01/19/2010 Harish B. Kamath 82258538 5454
22879
HP Tnr
7590 02/22/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
PACHOL, NICHOLAS C
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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
y vonne.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 VSS IYER
Appeal 2016-003015
Application 12/689,2541
Technology Center 2600
Before ST. JOHN COURTENAY III, JAMES W. DEJMEK, and
ALEX S. YAP, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—21, 27, and 28. Claims 22—26 have been withdrawn from
consideration. App. Br. 6. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. App. Br. 3.
Appeal 2016-003015
Application 12/689,254
STATEMENT OF THE CASE
Introduction
Appellants’ claimed invention is directed to installing a printer to a
cloud print server. Spec. 3. In a disclosed embodiment, the installation
process “includes identifying the user and printer, configuring print
parameters and other settings.” Spec. 3. Additionally, other embodiments
provide that ownership of the printer is established “[djuring the auto-setup
phase” or “after the printer is installed with the cloud server.” Spec. 5.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics'.
1. A method executed by a computer, comprising:
receiving, at a server over a network, a unique
identification from an unregistered and uninstalled printer to
install the printer with the server;
receiving, at the server from the unregistered and
uninstalled printer, an identity of an owner of the printer,
receiving, at the server from the unregistered and
uninstalled printer, printing properties of the printer; and
using the unique identification, the identity of the owner,
and the printing properties to register and install the printer with
the server, including authorizing the printer to print jobs received
from the owner, wherein the receiving the unique identification,
the identity, and the printing properties, and the using are each
performed before the owner connects to the server to print any
job to the printer.
The Examiner’s Rejections
1. Claims 1—9, 11, 14—21, 27, and 28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Matsushita et al. (US
2009/0059272 Al; Mar. 5, 2009) (“Matsushita”); Uchino (US 2004/0196491
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Application 12/689,254
Al; Oct. 7, 2004); and Fukuta (US 2008/0127307 Al; May 29, 2008). Final
Act. 3—20.
2. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsushita, Uchino, Fukuta, and Miyazawa (US
2007/0234043 Al; Oct. 4, 2007). Final Act. 20-21.
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsushita, Uchino, Fukuta, and Hosoda (US
2005/0088681 Al; Apr. 28, 2005). Final Act. 21-22.
4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsushita, Uchino, Fukuta, and Waters et al. (US
2009/0119256 Al; May 7, 2009) (“Waters”). Final Act. 22-23.
Issues on Appeal
1. Did the Examiner err in finding the combination of Matsushita,
Uchino, and Fukuta teaches or suggests “receiving, at the server from the
unregistered and uninstalled printer, an identity of an owner of the printer,”
as recited in claim 1 ?
2. Did the Examiner err in finding the combination of Matsushita,
Uchino, and Fukuta teaches or suggests “using the unique identification, the
identity of the owner, and the printing properties to register and install the
printer with the server,” as recited in claim 1?
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Application 12/689,254
ANALYSIS2
In rejecting claim 1 the Examiner finds, inter alia, Matsushita teaches
“receiving, at the server from the unregistered and uninstalled printer,
printing properties of the printer.” Final Act. 3 (citing Matsushita 135).
The Examiner also finds Uchino teaches device information—including
owner information—is used to register and install the printer. Final Act. 4
(citing Uchino 33, 39). Thus, the Examiner finds:
Matsushita describes in paragraph 34 that any number of features
can be used with respect to discovery, as well as installing and
registering, a printer. All of these features are aspects of the
printer. Uchino is used to show that one of those features could
be the owner information. The owner information is registered
with respect to the printer and the server can be made aware of
this information. This means that the server can locate the printer
with respect to the owner information and therefore the printer
would be installed and registered with respect to the owner
information).
Final Act. 5. However, the Examiner finds “Matsushita in view of Uchino
does not teach receiving, at the server from the unregistered and uninstalled
printer, an identity of an owner of the printer.” Final Act. 5. Instead, the
Examiner finds Fukuta teaches sending the identity of an owner of the MFP
(i.e., the printer) to a server where it is registered. Final Act. 5—6 (citing
Fukuta ^Hf 94, 111). The Examiner explains the owner ID of Fukuta
corresponds to an owner of a storage area (also referred to as a “box”) within
2 Throughout this Decision we have considered the Appeal Brief, filed
September 10, 2015 (“App. Br.”); the Reply Brief, filed January 20, 2016
(“Reply Br.”); the Examiner’s Answer, mailed on December 10, 2015
(“Ans.”); and the Final Office Action (“Final Act.”), mailed on June 23,
2015, from which this Appeal is taken.
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Application 12/689,254
the MFP and that the box can be the whole storage area or part of the storage
area. Final Act. 6.
Appellants argue the Examiner erred in finding Fukuta teaches or
suggests “receiving, at the server from the unregistered and uninstalled
printer, an identity of an owner of the printer,” as recited in claim 1. App.
Br. 8—10; Reply Br. 2—3. In particular, Appellants assert Fukuta teaches an
owner of one of a plurality of “boxes” or storage areas of the hard drive of a
multifunction peripheral (MFP), but that such an owner is limited to
ownership of the box and not of the entire MFP. Additionally, Appellants
assert they acted as their own lexicographer and defined in the Specification
an owner as “a person who has not only printing rights but also
administrative rights.” Reply Br. 3 (citing Spec. 5).
“In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.”).
Absent an express intent to impart a novel meaning to a claim term, the
words take on the ordinary and customary meanings attributed to them by
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Application 12/689,254
those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003).
Here, contrary to Appellants’ assertion, the Specification merely
provides an example of an owner—“for example, a person who has not only
printing rights but also administrative rights.” Spec. 5 (emphasis added).
Further, we note the Specification includes a section entitled “Definitions,”
wherein various terms are defined. Spec. 12—14. However, a definition for
the term “owner” is not provided. See Spec. 12—14. Thus, absent a
sufficiently clear definition for the term “owner” in the Specification, we
find no error with the Examiner giving the term a broad but reasonable
interpretation, consistent with the Specification.
Fukuta teaches the MFP comprises a hard disk drive (HDD) which
further includes an image storage area. Fukuta 179. Further, Fukuta
teaches the image storage area includes a “box area” comprising “a plurality
of storage areas” and can be allocated to individual users. Fukuta Tflf 92, 94.
The Examiner acknowledges “[although Fukuta does make mention to
having multiple boxes, there is a case where there could be only one box
assigned at a time. If there is only one box, then this is the owner of the
MFP, as they own the storage of the MFP itself.” Ans. 27.
Absent an identification within Fukuta for a teaching of a storage area
having only one box assigned at a time, thereby making the assigned owner
of the box equivalent to an owner of the MFP, we find the Examiner’s
finding is not supported by the evidence of record. Accordingly, we
disagree that Fukuta teaches sending an identity of an owner of the printer,
as recited in claim 1.
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Application 12/689,254
Thus, to the extent the Examiner’s rejection of claim 1 relies on
Fukuta teaching sending an identity of an owner of the printer, we are
persuaded the Examiner erred. On this record, we are constrained to reverse
the Examiner’s rejection of claim 1 and, for similar reasons, the rejection of
independent claims 8 and 14, which recite similar limitations. Further, we
reverse the Examiner’s rejections of claims 2—7, 9-13, 15—21, 27, and 28,
which depend therefrom.
NEW GROUND OF REJECTION
We enter new grounds of rejection pursuant to our authority under 37
C.F.R. § 41.50(b). We reject independent claim 1 under 35 U.S.C. § 103(a)
as being unpatentable over Matsushita et al. (US 2009/0059272 Al; Mar. 5,
2009) (“Matsushita”); Uchino (US 2004/0196491 Al; Oct. 7, 2004); and
Fukuta (US 2008/0127307 Al; May 29, 2008).
We agree with, and adopt the Examiner’s findings regarding the
teachings of Matsushita and Uchino. See Final Act. 3—5. Contrary to the
Examiner’s findings, however, we find the combined teachings of
Matsushita and Uchino also teach or suggest “receiving, at the server from
the unregistered and uninstalled printer, an identity of an owner of the
printer,” as recited in claim 1.
As the Examiner explains, “Matsushita describes in paragraph 34 that
any number of features can be used with respect to discovery, as well as
installing and registering, a printer. All of these features are aspects of the
printer. Uchino is used to show that one of those features could be the
owner information.” Final Act. 5.
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Application 12/689,254
Figure 1 of Uchino is also illustrative and is reproduced below:
PRINT-JOB RECORD
P:-int_.job ■»------—
Print.„Job_2
| PRINTER RECORD
j (Registered Printing Devices)
ACCESS-JD RECORD i
Access JO _1 <........... ................ [■
Access JD.2 ■*.......*-*j
* ;
.......p* PrintingDavirePI ■*“
—___ Printsng..Oevioe_2 4-
Printing_D®vjc8„5
/ / Printing_Davise_4
A* Pr:nting_jl®vice_n •*-
Access
23 31—'
l..
21
I :5----
------ —33 f------ -—■ T......... ‘i
—1 U I ....................
d DAT* 4--^-»S NETWORK SERVER k-
STORE j
A
3f -A--
.. INTERNET ^
I
PRSNTER DATA BLOCKS j
-►PD Data 1 i
-►PD_Data,2
-►PD Data 3
--►PD Data 4
29'-'
O Data n
-17 19-
USER RECORD
(Registered Users)
Pri nii ng_d ev ice_l
i Prinii!igud9vice_2
Priniir!g_device_3
*
! :
Prin Si ng_d eviC3_p
f
Re mots
■nputing
vice
-►' -V . —>
\
V /
Fig, 1
-4 i
I Computing
] Device
12-
Remote
Printing
Device
3rd Remote
Computing
Device
14-
Lncnl
Printing
Device
—.......
16-
Figure 1 of Uchino illustrates a block diagram of an internet printing system.
Uchino 119. As shown in Figure 1, and as described in, inter alia,
paragraph 33 of Uchino, a Printer Record (21) is associated with each
printer, “which may include such data as each printer’s model type, printer
driver, physical address location, registered owner, user permissions TCP/IP
network (IP) address, etc.” Uchino 133 (emphasis added). As illustrated,
Network Server (15) is in bidirectional communication with Printer Record
(21) and User Record (19).
Uchino additionally describes (166): “A user having owner-level
access permission is not only free to submit a print-job to the printing
device, but may also grant print access permission to other users that do not
yet have print access permission. Additionally, an owner-level user may
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Application 12/689,254
remove print access permission from a user-level owner.” See also Uchino
67—71 regarding “super-owner” status, particularly paragraph 71: “In a
preferred embodiment, the registered user that registers a new printing
device is automatically assigned super-owner status for that newly
registered printing device(Emphasis added).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413,
425, (CCPA 1981). Here, we find it would have been obvious to an
ordinarily-skilled artisan to send the information associated with a printer,
including registered owner information, as taught by Uchino, as part of the
printer discovery process as taught by Matsushita, which may include
printer-specific parameters. See Matsushita 134. Further, as the Examiner
explains, a person of ordinary skill in the art would have been motivated to
combine the teachings of Matsushita and Uchino “for the purpose of
allowing for certain users to gain access to a printer across a firewall.” Final
Act. 5 (citing Uchino 19).
To the extent Appellants assert the combination of Matsushita,
Uchino, and Fukuta fails to teach or suggest the server receives an identity
of an owner of the printer when the printer is unregistered and uninstalled
(see App. Br. 12), we do not agree. As Appellants concede, in discussing
Fukuta sending owner information (i.e., the identity of an owner), “[t]he first
time an owner identity for a box is received by the policy server 101, the
MFP 104 is unregistered.” App. Br. 12. Appellants’ arguments that
subsequent requests from the MFP to the policy server for policy
information relevant to other boxes in the MFP occur after the printer has
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Application 12/689,254
been registered are unpersuasive at least because they are not commensurate
with the scope of claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability).
Accordingly, for the reasons discussed supra, we find the combination
of Matsushita, Uchino, and Fukuta teaches or suggests, inter alia,
“receiving, at the server from the unregistered and uninstalled printer, an
identity of an owner of the printer,” as recited in claim 1.
For similar reasons, we find the combination of Matsushita, Uchino,
and Fukuta teaches or suggests “using the unique identification, the identity
of the owner, and the printing properties to register and install the printer
with the server.” As the Examiner explains, Matsushita teaches a discovery
process for a printer to register and install the printer with a server. Ans. 27
(citing Matsushita 34, 40-44). The discovery, registration, and
installation may use a unique identification such as an address and model
name of the device. Ans. 27. Further, the Examiner finds, and we agree,
Uchino teaches a device (i.e., printer) can be identified by the “address,
model, and the owner name.” Ans. 27 (citing Uchino 133). Thus, the
Examiner finds, and we agree, Matsushita describes the printer is registered
and installed with the print server based on identification information, which
Uchino teaches could further include the identity of the registered owner of
the printer. Ans. 27. We find the cited combination would have merely
resulted in the “predictable use of prior art elements according to their
established functions.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
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Application 12/689,254
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a new rejection regarding
independent claim 1 under 37 C.F.R. § 41.50(b). However, we have not
reviewed the remaining claims to the extent necessary to determine whether
these claims are unpatentable over Matsushita, Uchino, Fukuta, or other
prior art. We leave it to the Examiner to ascertain the appropriateness of any
further rejections based on these or other references. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See MPEP § 1213.02.
DECISION
We reverse the Examiner’s decision to reject claims 1—21, 27, and 28.
We newly reject claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Matsushita, Uchino, and Fukuta.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
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Application 12/689,254
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.3
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
3 Regarding option 1 (“Reopen prosecution”), and particularly regarding the
requirement to submit an amendment and/or new evidence, please note
MPEP § 1214.01(1): “If the appellant submits an argument without either an
appropriate amendment or new evidence as to any of the claims rejected by
the Board, it will be treated as a request for rehearing under 37 C.F.R.
41.50(b)(2).” If for any reason Appellants desire to reopen prosecution
before the Examiner without submitting an amendment and/or new evidence,
a Request for Continued Examination (RCE) that complies with 37 C.F.R.
§114 will remove the application from the jurisdiction of the Board under 37
C.F.R. §41.35 and will reopen prosecution before the Examiner.
12