Ex Parte Kruse

Board of Patent Appeals and Interferences

Mar 24, 2009

09929430 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICIA S. KRUSE
____________

Appeal 2009-0964
Application 09/929,430
Technology Center 2600
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Decided:1 March 24, 2009
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Before MAHSHID D. SAADAT, CARLA M. KRIVAK, and ELENI
MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 09/929,430

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DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-32, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant’s invention relates to a method for organizing and
automating a presentation printing process by defining a presentation print
job profile wherein a user adds a plurality of files to a presentation print job
profile, specifying packaging and printing characteristics with respect to
individual ones of the files. Responsive to a single print request, each of the
files in the presentation profile is printed based on the specified packaging
and printing characteristics (Spec. 3:1-8).
Independent claim 1 is representative and reads as follows:
1. A method comprising:

adding a plurality of files to a presentation profile;

specifying a set of individual printing characteristics with
respect to each of the files;

specifying a set of individual packaging characteristics with
respect to each of the files; and

responsive to a single print request, printing a presentation
package including each of the files in the presentation profile based on
the individual packaging characteristics and individual printing
characteristics corresponding to each of the files.

The Examiner relies on the following prior art in rejecting the claims:
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Hicks US 5,481,353 Jan. 2, 1996
Salgado US 5,579,087 Nov. 26, 1996
Kanerva US 6,026,416 Feb. 15, 2000

Claims 1, 4, 6-9, 12, 14-17, 20, 22-25, 28, and 30-32 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Salgado.
Claims 2, 10, 18, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Salgado and Kanevra.
Claims 3, 5, 11, 13, 19, 21, 27, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Salgado and Hicks.2
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Jun. 25, 2007; Reply Br. filed Dec. 21, 2007) and the
Answer (mailed Oct. 31, 2007) for the respective positions of Appellant and
the Examiner.

ISSUE
Appellant argues (App. Br. 20) that Salgado in column 5, lines 40-54
specifies print job parameters for the entire print job and does not specify
parameters for each individual segment. Appellant asserts (Reply Br. 3) that
while Salgado selects printing characteristics (e.g., paper type, print quality)
on a segment-by-segment basis, packaging characteristics (e.g., quantity) are
selected on a global basis.
The issue specifically turns on whether Salgado anticipates
Appellant’s claimed invention by disclosing printing a presentation package
that is based on the individual packaging characteristics and individual

2 In the Examiner’s Answer, the 35 U.S.C. § 101 rejection of claims 1-32
was withdrawn by the Examiner. (See Ans. 3).
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printing characteristics corresponding to each of the files in response to a
single print request, as recited in claim 1.

FINDINGS OF FACT
1. Salgado relates to constructing a multi-segment print job by
entering a start build print job function at the network interface, identifying
each segment of the print job including segment location, specifying print
job characteristics such as quantity and quality for each segment, entering an
end build print job function at the network interface, and identifying a
printing device on the network whereby each segment of the print job is
accessed and distributed to the printing device in order to complete the
multi-segment print job. (Abstract; col. 2, ll. 50-60).
2. The multi-segment print job corresponding to a multi-sectioned
document in Salgado is assembled by an operator at any user interface on the
network from multiple local and remote sources by entering a start build
print job function at the network interface, identifying each segment of the
print job including segment location, specifying print job characteristics
such as paper stock and quality for each segment, and entering an end build
print job function at the network interface. (Col. 5, ll. 31-50).
3. Salgado then identifies and selects a printing device on the
network and provides features relating to the entire document, such as
quantity, in order that each segment of the print job is accessed and
distributed to the printing device to complete the multi-segment print job.
Emphasis added. (Col. 5, ll. 50-54).
4. Salgado discloses that the operator determines and selects the
particular printing device or facsimile device appropriate to accomplish the
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job requirement, wherein the operator can select more than one document
destination. (Col. 6, ll. 54-67).
5. As shown in Figure 7, Salgado discloses a flow chart for
processing a number of segments to complete a printing job where at step
272 the destination of the selected segments is identified and at step 274 the
job parameters or attributes to complete the job are selected. (Col. 7, ll. 22-
44).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). See also In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999) (quoting Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 781 (Fed. Cir. 1985)).

ANALYSIS
We disagree with the Examiner’s argument (Ans. 9) that because a
print job can potentially be sent to and printed by a different printer, each job
on a different printer carries with it an associated packaging characteristic.
We observe that the Examiner takes the position that different segments that
may be retrieved from different storage locations necessarily have different
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packaging characteristics (id.). While different printers may be designated
as destinations to complete the print job (FF 4), the Examiner has not
identified any teaching in Salgado to show that individual packaging
characteristics are used for each segment. The Examiner relies on column 7,
lines 11-53 to further assert (Ans. 9) that each segment has its individual
packaging characteristics as the segments are sent to a number of different
printing devices.
As argued by Appellant (Reply Br. 3), even if different segments of
the print job were to be performed by different devices, individual packaging
characteristics would not have been inherently required for each segment. In
fact, Salgado, while identifying different printing devices on a network
where different segment are to be printed, merely specifies printing
characteristics for each segment (FF 1 and 2). However, when it is time to
specify the packaging characteristics, Salgado discloses doing so for the
entire document, instead of separately for each segment (FF 3).
To the extent that the operator may select more than one printer as the
document destination (FF 4), Salgado does not specifically disclose that
different packaging characteristics are also specified for each destination. In
that regard, we also disagree with the Examiner’s reasoning (Ans. 9) that
each segment in the collection of separate segments that form a complete
job, as disclosed in column 7, lines 11-53, has its own printing and
packaging characteristics. In fact, the portion of Salgado relied on by the
Examiner discloses that while different segments are assembled to form a
job, it is the collection of the selected segments that is sent to the destination
with the specified printing and packaging characteristics (FF 5). The
characteristics specified in step 274 of Figure 7 are selected after the
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segments are put together and therefore relate to the collection of segments
and not to each individual segment, as recited in claim 1.

CONCLUSION
On the record before us, we find that the Examiner fails to make a
prima facie case that Salgado anticipates claim 1 by disclosing printing a
presentation package that is based on the individual packaging
characteristics and individual printing characteristics corresponding to each
of the files in response to a single print request. Therefore, in view of our
analysis above, the 35 U.S.C. § 102 rejection of claim 1 or other independent
claims 9, 17, and 25 that include similar limitations, as well as claims 4, 6-8,
12, 14-16, 20, 22-24, 28, and 30-32 dependent thereon, as anticipated by
Salgado cannot be sustained. Additionally, we do not sustain the 35 U.S.C.
§ 103 rejection of claims 2, 10, 18, and 26 over Salgado and Kanevra, nor of
claims 3, 5, 11, 13, 19, 21, 27, and 29 over Salgado and Hicks since the
Examiner has not identified any teachings in the secondary references
related to the individual packaging characteristics and individual printing
characteristics corresponding to each of the files to overcome the
deficiencies of Salgado discussed above.

ORDER
The decision of the Examiner rejecting claims 1-32 is reversed.

REVERSED

Appeal 2009-0964
Application 09/929,430

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