Ex Parte KIM

Board of Patent Appeals and Interferences

Feb 10, 2003

08885996 (B.P.A.I. Feb. 10, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SUNG-JAE KIM
____________
Appeal No. 2001-2579
Application No. 08/885,996
____________
HEARD: Jan. 14, 2003
____________
Before THOMAS, BARRY, and LEVY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-9. The appellant appeals therefrom under
35 U.S.C. § 134(a). We affirm-in-part.
BACKGROUND
The invention at issue on appeal relates to print drivers. When a printer is
connected to a computer, the computer includes device-specific software called a "print
driver." The print driver converts data constituting a document file into a printer control
language suitable for the printer and transmits the converted print data thereto.
Appeal No. 2001-2579 Page 2
Application No. 08/885,996
1The "maintenance difficulties" are unspecified.
The printer includes a memory and a central processing unit ("CPU") for
processing and printing the data. More specifically, the CPU features forms for storing
the data in the memory, viz., a byte form, a word form, a long word form. For forms of
two-byte data, "there are a high order type and a low order type." (Spec. at 2.)
Because the print driver depends on the characteristics of the printer's CPU, explains
the appellant, a different print driver must be used for each model of printer. (Id. at 3.)
"This imposes burden[s] on both the user and the manufacturer. That is, the user must
install the print driver with respect to each printer model and the printer manufacturer
has maintenance difficulties."1 (Id.)
In contrast, the appellant asserts that his invention enables a single print driver in
a computer to support more than one model of printer. (Id. at 9.) More specifically, the
print driver confirms the form of a printer's CPU, generates print data corresponding to
the form, and transmits the print data to the printer. (Id. at 4.) Accordingly, concludes
the appellant, a user of his invention need not install a different print driver for each
model of printer, "and the printer manufacturer simplifies maintenance." (Id. at 9.)
Appeal No. 2001-2579 Page 3
Application No. 08/885,996
A further understanding of the invention can be achieved by reading the following
claims.
1. A method of processing print data of a printing system having a
host and a printer which are connected to each other by a bidirectional
communication interface, said method comprising the steps of:
storing a single print driver in said host;
confirming a data processing form of said printer;
generating print data corresponding to the confirmed data
processing form of said printer; and
transmitting said print data to said printer by means of said single
print driver of said host.
3. A method of processing print data as set forth in claim 2, said
data processing form comprising one of a byte form, a word form, and a
long word form, and if said data processing form comprises said word
form, then said data processing form comprises one of a high order type
and a low order type.
Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 103(a) as obvious over U.S.
Patent No. 5,228,118 (“Sasaki”) and U.S. Patent No. 5,625,757 (“Kageyama”). Claim 3
stands rejected under § 103(a) as obvious over Sasaki, Kageyama, and the appellant‘s
admitted prior art (“AAPA”). Claims 5 and 6 stand rejected under § 103(a) as obvious
over Sasaki, Kageyama, and U.S. Patent No. 5,633,992 (“Gyllenskog"). Claims 7-9
stand rejected under § 103(a) as obvious over Sasaki, Kageyama, Gyllenskog, and
AAPA.
Appeal No. 2001-2579 Page 4
Application No. 08/885,996
OPINION
Our opinion addresses the following groups of claims:
• claims 1 and 2
• claim 3
• claims 4-9.
Claims 1 and 2
At the outset, we recall that claims that are not argued separately stand or fall
together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed. Cir. 1983)
(citing In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)). When the
patentability of a dependent claim is not argued separately, in particular, the claim
stands or falls with the claim from which it depends. In re King, 801 F.2d 1324, 1325,
231 USPQ 136, 137 (Fed. Cir. 1986) (citing In re Sernaker, 702 F.2d 989, 991, 217
USPQ 1, 3 (Fed. Cir. 1983); In re Burckel, 592 F.2d 1175, 1178-79, 201 USPQ 67, 70
(CCPA 1979)).
Here, the appellant stipulates, "[c]aim 2 stands or falls with claim 1" (Appeal Br.
at 5.) Therefore, claim 2 stands or falls with representative claim 1.
With this representation in mind, rather than reiterate the positions of the
examiner or the appellant in toto, we address the three points of contention
therebetween. First, the examiner asserts, "Sasaki suggest a single print driver which is
Appeal No. 2001-2579 Page 5
Application No. 08/885,996
stored in the hard disk (col. 7, lines 59-64)." (Examiner's Answer at 8.) The appellant
argues, "if Sasaki suggests a single print driver, then it is not understood why
Kageyama is applied to the rejection." (Reply Br. at 6.)
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). Here, claim 1 specifies in pertinent part the following limitations: "storing a
single print driver in said host. . . ." Accordingly, the limitations require storing a print
driver in a computer hosting a printer.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. The question of obviousness is
"based on underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)).
Here, Sasaki discloses a "printing system consist[ing] of a printing device in the
form of a laser printer LP capable of performing printing job [sic] according to print data,
Appeal No. 2001-2579 Page 6
Application No. 08/885,996
[and] a data processing device in the form of a personal computer PC which provides
the laser printer LP with the print data. . . ." Col. 5, ll. 9-14. The PC includes "a hard
disk drive (HDD) 44. . . ." Col. 6, ll. 43-44. Although the PC can store multiple disk
drivers on its HDD, we find that it may also store one disk driver thereon. Specifically,
"[i]f the hard disk stores only one print driver, . . . the control flow goes to step S20 in
which this single print driver is read out from the hard disk and stored in the RAM 50. . .
." Col. 7, ll. 59-63 (emphases added). Using the stored print driver, "the personal
computer PC sends to the laser printer LP via the selected print driver, a batch of print
data representative of the desired printing job to be performed by the laser printer LP."
Col. 8, ll. 11-16. Because Sasaki discloses storing a print driver in a host computer, the
teachings of Kageyama are merely cumulative regarding the limitation.
Second, the examiner asserts, "[a]pplicant does not specify what a data
processing form is, recited in claim 1, and Sasaki is cited to teach confirmation of a data
processing form (e.g., a different language form) of a printer (col. 7, lines 34-49 taught
by Sasaki)." (Examiner's Answer at 8.) The appellant argues, "[n]either the definition of
Postscript nor PCL is equivalent to the data processing form defined in the
specification, i.e., a byte form, a word form or long word form." (Reply Br. at 9.)
Appeal No. 2001-2579 Page 7
Application No. 08/885,996
"[T]he Board must give claims their broadest reasonable construction. . . ." In re
Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir. 2000). "Moreover,
limitations are not to be read into the claims from the specification." In re Van Geuns,
988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)).
Here, claim 1 specifies in pertinent part "confirming a data processing form of
said printer. . . ." Despite the appellant's argument, the data processing form of the
claim is not limited to a byte form, a word form, or a long word form. Had the appellant
intended to limit the scope of the claim so, he could have recited expressly these
specific forms as he did in claims 3 and 7. The appellant chose not to do so, seeking a
broader claim. We will not read the omitted limitations into claim 1 to narrow it. If the
appellant chooses to have these limitations included, he can amend the claim "during
the examination of [their] patent application. . . ." In re Prater, 415 F.2d 1393, 1404-05,
162 USPQ 541, 550-551 (CCPA 1969).
In addition, the doctrine of claim differentiation supports an interpretation of "a
data processing form of said printer" that is not limited to the specification's byte form,
word form, or long word form. "This doctrine, which is ultimately based on the common
sense notion that different words or phrases used in separate claims are presumed to
Appeal No. 2001-2579 Page 8
Application No. 08/885,996
indicate that the claims have different meanings and scope," Karlin Tech., Inc. v.
Surgical Dynamics, Inc., 177 F.3d 968, 971, 50 USPQ2d 1465, 1468 (Fed. Cir. 1999)
(citing Comark Comms. Inc. v. Harris Corp., 156 F.3d 1182, 1187, 48 USPQ2d 1001,
1005 (Fed. Cir. 1998)), "normally means that limitations stated in dependent claims are
not to be read into the independent claim from which they depend." Id. at 972, 50
USPQ2d at 1468 (citing Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277, 35
USPQ2d 1035, 1041 (Fed. Cir. 1995)).
Here, claim 3 depends from (via claim 2), and further, limits claim 1. More
specifically, the dependent claim recites that "said data processing form comprising one
of a byte form, a word form, and a long word form. . . ." Because these specific data
processing form are stated in claim 3, these are not to be read into claim 1, from which
claim 3 depends. Giving claim 1 its broadest, reasonable construction, therefore, the
limitations merely require confirming a form of a printer's data processing.
Turning to Sasaki, we find that the reference's PC confirms its printer's form of
language. Specifically, the PC sends "an inquiry signal . . . to the laser printer LP, to
ask the printer LP to send back the interpreter-identification data which represent the
types of the language interpreters available on the printer LP. . . ." Col. 7, ll. 20-23.
When the PC "has received the interpreter-identification data from the laser printer LP,
Appeal No. 2001-2579 Page 9
Application No. 08/885,996
step S13 is followed by step S16 to find out the print driver or drivers in the hard disk,
which is/are compatible with or applicable to the language interpreter or interpreters
represented by the received interpreter-identification data." Id. at ll. 44-50.
Third, the examiner asserts, "Sasaki teaches . . . generating print data
corresponding to the confirmed data processing form of the printer (Col. 6, lines 50-53).
. . ." (Examiner's Answer at 2-3.) The appellant argues, "Sasaki's language
interpreters do not generate print data corresponding to a confirmed data processing
form of the printer, but instead interpret commands from the computer to the printer to
tell the printer how to format (font size, graphics, compression of data sent to the
printer, color, etc.) the document being printed." (Reply Br. at 9.)
Claim 1 specifies in pertinent part the following limitations: "generating print data
corresponding to the confirmed data processing form of said printer. . . ." Giving the
representative claim its broadest, reasonable construction, the limitations require
generating print data corresponding to the printer's form of data processing.
Turning to Sasaki, we find that the reference's PC, after confirming its printer's
form of language (as explained regarding the second point of contention), generates
print data corresponding to the form. Specifically, after storing the aforementioned print
Appeal No. 2001-2579 Page 10
Application No. 08/885,996
driver in its RAM, the PC uses the print driver "for preparing print data by conversion in
a language that can be interpreted by the . . . the laser printer LP. . . ." Col. 6, ll. 51-53.
Therefore, we affirm the rejection of claim 1 and of claim 2, which falls therewith.
Claim 3
Rather than reiterate the positions of the examiner or the appellant in toto, we
address the main point of contention therebetween. The examiner asserts, "[i]t would
have been obvious . . ., in view of Applicant's admitted prior art, to have modified the
printing system of the combination of Sasaki and Kageyama et al. for the data
processing form comprising one of a byte form, a word form, and a long word form, and
if the data processing form comprises the word form (two bytes), then the data
processing form comprises one of a high order type and a low order type. . . ."
(Examiner's Answer at 4.) "[A]dmit[ting] that byte forms, word forms and long word
forms of data processing in a printer are well known," (Reply Br. at 11), the appellant
argues, "the applied art fails to teach confirming a data processing form, wherein said
data processing form comprising one of a byte form, a word form, and a long word
form, and if said data processing form comprises said word form, then said data
processing form comprises one of a high order type and a low order type. . . ." (Id.)
Appeal No. 2001-2579 Page 11
Application No. 08/885,996
Claim 3 specifies in pertinent part the following limitations: "said data processing
form comprising one of a byte form, a word form, and a long word form, and if said data
processing form comprises said word form, then said data processing form comprises
one of a high order type and a low order type." Giving the claim its broadest,
reasonable construction, the limitations require confirming whether the printer uses a
byte form, a word form, or a long word form and, if the form comprises the word form,
then confirming whether the form comprises a high order type or a low order type.
"'The use of patents as references is not limited to what the patentees describe
as their own inventions or to the problems with which they are concerned. They are
part of the literature of the art, relevant for all they contain.'" In re Heck
699 F2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Accordingly, “[a]ll
of the disclosures in a reference must be evaluated for what they fairly teach one of
ordinary skill in the art.” In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966)).
Here, although the aforementioned embodiment of Sasaki is concerned
specifically with confirming that a print driver used by the reference's PC is compatible
with a language interpreter used by its printer, Sasaki more generally teaches the
Appeal No. 2001-2579 Page 12
Application No. 08/885,996
2"The [a]ppellant does not argue the fact that above listed various data
processing forms are well known in the art. . . ." (Reply Br. at 11.)
desirability of confirming the operating characteristics of a printer to ensure compatibility
between the printer and a hosting computer. Toward that more general teaching, we
find that the reference invites modifications to it embodiments. Specifically, "the
invention may be embodied with various changes, modifications and improvements,
which may occur to those skilled in the art. . . ." Col. 11, ll. 39-41.
For its part, AAPA discloses that CPUs in printers use different forms for storing
data, viz., a byte form, a word form, a long word form. (Spec. at 2.) For forms of two-
byte data, a high order type and a low order type are known. (Id.)2 AAPA also teaches
that a host computer "should transmit the print data to the printer according to the
characteristic of the CPU of each printer model." (Id.) Because Sasaki teaches the
desirability of confirming the operating characteristics of a printer to ensure compatibility
between the printer and a hosting computer, and AAPA teaches that CPUs in printers
use the aforementioned forms for storing data, we find that the combined teachings of
the references would have suggested confirming whether a printer uses a byte form, a
word form, or a long word form and, if the form comprises the word form, then whether
the form comprises a high order type or a low order type, to ensure compatibility
between the printer and a host computer such that the computer can transmit print data
Appeal No. 2001-2579 Page 13
Application No. 08/885,996
to the printer according to the characteristic of the printer's CPU. Therefore, we affirm
the rejection of claim 3.
Claims 4-9
Rather than reiterate the positions of the examiner or the appellant in toto, we
address two points of contention therebetween. First, the examiner alleges, "Sasaki
teaches . . . receiving the check data (i.e., inquiry signal) and storing the check data in a
memory (i.e., RAM 16 discussed in col. 5, line 48-50). . . ." (Examiner's Answer at 5.)
The appellant argues, "[t]here has been no prima facie showing that Sasaki's 'inquiry
signal' is data and there has been no showing that the 'inquiry signal' is stored in
Ram 16." (Reply Br. at 13.)
Claim 4 specifies in pertinent part the following limitations: "(a) transmitting form
values corresponding to data processing forms of said printer to said printer as check
data each time a print request occurs; (b) receiving said check data and storing said
check data in a memory in the printer. . . ."
"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d 1443,
Appeal No. 2001-2579 Page 14
Application No. 08/885,996
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would . . . have suggested the
claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, although Sasaki's PC sends "an inquiry signal . . . to the laser printer LP,
to ask the printer LP to send back the interpreter-identification data which represent the
types of the language interpreters available on the printer LP," col. 7, ll. 20-23, the
examiner fails to show that the signal constitutes the claimed "check data."
Furthermore, although the reference's "first RAM 16 has a suitable storage capacity for
storing the print data and other data received from the personal computer PC," col. 5,
ll. 48-50, the examiner fails to show that the inquiry signal is stored therein. He further
fails to allege, let alone show, that the addition of Kageyama, Gyllenskog, or AAPA
cures the aforementioned deficiency of Sasaki.
Second, admitting that "Sasaki does not mention . . . comparing a check data,
which is send to printer, with a checked data which is transmitted to a host from the
printer," (Examiner's Answer at 5), the examiner concludes, "Sasaki can compare a
check data from a host and a checked data from printer, because the process of data
Appeal No. 2001-2579 Page 15
Application No. 08/885,996
3The "certain purpose" is unspecified.
comparing is well known prior art for a certain purpose."3 (Id.) The appellant argues
that Sasaki does not "show that the 'interpreter-identification data' received from the
printer with the 'inquiry signal' transmitted to the printer, are compared. . . ." (Reply Br.
at 13.)
Claim 4 specifies in pertinent part the following limitations: "(a) transmitting form
values corresponding to data processing forms of said printer to said printer as check
data each time a print request occurs; (b) receiving said check data and storing said
check data in a memory in the printer. . . ."
"The mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984)). "[T]he factual inquiry whether to combine references must be
thorough and searching." McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52,
60 USPQ2d 1001, 1008 (Fed. Cir. 2001). This factual question cannot "be resolved on
subjective belief and unknown authority," In re Lee, 277 F.3d 1338, 1343-44, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002); "[i]t must be based on objective evidence of
Appeal No. 2001-2579 Page 16
Application No. 08/885,996
record." Id. at 1343, 61 USPQ2d at 1434. Although couched concerning combining
prior art references, we hold the same requirements apply to modifying such
references.

Here, although "the process of data comparing is well known prior art for a
certain purpose," (Examiner's Answer at 5), the examiner fails to allege, let alone show
objective evidence of, the desirability of substituting check data for Sasaki's inquiry
signal and then comparing the interpreter-identification data received from the
reference's printer with the check data substituted for Sasaki's inquiry signal.
Therefore, we reverse the rejection of claim 4 and of claims 5-9, which depend
therefrom.
CONCLUSION
In summary, the rejections of claims 1-3 under § 103(a) are affirmed. In
contrast, the rejections of claims 4-9 under § 103(a) are reversed. "Any arguments or
authorities not included in the brief will be refused consideration by the Board of Patent
Appeals and Interferences. . . ." 37 C.F.R. § 1.192(a)(2002). Accordingly, our
affirmance is based only on the arguments made in the brief(s). Any arguments or
authorities not included therein are neither before us nor at issue but are considered
Appeal No. 2001-2579 Page 17
Application No. 08/885,996
waived. No time for taking any action connected with this appeal may be extended
under 37 C.F.R. § 1.136(a).
Appeal No. 2001-2579 Page 18
Application No. 08/885,996
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2001-2579 Page 19
Application No. 08/885,996
ROBERT E BUSHNELL
1522 K STREET, NW
SUITE 300
WASHINGTON, DC 200051202