Ex Parte Lay et al

Board of Patent Appeals and Interferences

Aug 12, 2010

10400971 (B.P.A.I. Aug. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte D. TRAVIS LAY, CURTIS REESE,
and PAT DOWDELL
_____________

Appeal 2009-003007
Application 10/400,971
Technology Center 2600

____________

Before MARC S. HOFF, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-003007
Application 10/400,971

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
Appellants’ claimed invention is directed to an automatic cancellation
of a print job after errors have occurred by generating a cancel control signal
36 causing image process 28 to suspend any further generation of image
output 30. Alternatively, the cancel control signal 36 may be directed to
image module 24 requesting the suspension of any further image data 26
from being passed and therefore processed by imaging process 28. See
Spec. ¶¶ [0001], [0012]; and Fig. 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for terminating a corrupted print job, comprising:
monitoring image data of a print job received at an imaging device for
at least one corrupt print job characteristic; and
canceling a remainder of said print job in said imaging device when
said at least one corrupt print job characteristic is detected, including
suspending all processing of said remainder of said print job.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Motoyama US 5,550,164 Aug. 27, 1996
Sorens US 6,317,848 B1 Nov. 13, 2001
Reda US 6,678,067 B1 Jan. 13, 2004
Barry US 6,707,563 B1 Mar. 16, 2004
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Nishikawa US 2005/0052662 A1 Mar. 10, 2005
Mori US 7,046,385 B2 May 16, 2006
The following rejections are before us for review:
1. The Examiner rejected claims 21-24 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. The Examiner rejected claims 1, 11, and 18 under 35 U.S.C.
§ 102(e) as being anticipated by Barry.
3. The Examiner rejected claims 2, 7-10, 16, 17, and 19-24 under 35
U.S.C. § 103(a) as being unpatentable over Barry in view of Sorens.
4. The Examiner rejected claims 3 and 12 under 35 U.S.C. § 103(a)
as being unpatentable over Barry in view of Nishikawa or Motoyama.
5. The Examiner rejected claims 6 and 15 under 35 U.S.C. § 103(a)
as being unpatentable over Barry in view of Mori.
4. The Examiner rejected claims 4, 5, 13, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Barry in view of Reda.

ISSUES
The pivotal issues are:
(1). whether claims 21-24 comply with the written description
requirement; and
(2). whether Barry teaches “canceling a remainder of said print job in
said imaging device” as recited in representative claim 1.

PRINCIPLES OF LAW
During ex parte prosecution, claims must be interpreted as broadly as
their terms reasonably allow since Applicants have the power during the
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administrative process to amend the claims to avoid the prior art. In re Zletz,
893 F.2d 319, 322 (Fed. Cir. 1989).
Claim terms are presumed to have their customary and ordinary
meaning unless there is an express intention to impart the novel meaning of
the claim terms. Sunrace Roots Enterprise Co., Ltd. v. SRAM Corp., 336
F.3d 1298, 1302 (Fed. Cir. 2003).
Although claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).

ANALYSIS
Rejection of claims 21-24 under 35 U.S.C. § 112, first paragraph.
Do claims 21-24 comply with the written description requirement?
Appellants argue that paragraph 12 of the Specification, contrary to the
Examiner’s assertions (Ans. 13-14), provides written support for claims 21-24
added limitations of “suspending generation of image output for said print job
and suspending receiving of said image data of said print job” (Reply Br. 3).2
We agree with Appellants.
Appellants’ Specification recites the following:
[0012] As illustrated in Fig. 1, auto print job cancellation
monitor 34, in response to the detection of corrupted image data

2 Note that this argument while not raised on Appeal, Appellants relied on
the Examiner’s statement that this ground of rejection was overcome.
However, in the Answer the Examiner clarified that claims 21-24 were still
finally rejected under 35 U.S.C. § 112, first paragraph. Accordingly, we do
not consider Appellants response as waived because it was an argument
raised only in the Reply Brief but rather an argument that was necessitated
by the Examiner’s explanation and clarification in the Answer.

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26, generates a cancel control signal 36 causing image process
28 to suspend any further generation of image output 30.
Alternatively, the cancel control signal 36 may be directed to
imaging module 24 requesting the suspension of any further
image data 26 from being passed and therefore processed by
imaging process 28.

(Spec. para. 12, emphasis added).

Accordingly, we are persuaded by Appellants that the Specification
provides adequate written support for suspending generation of an image
output and reception of the image data of the print job.
Accordingly, we will reverse the Examiner’s rejection of claims 21-24
for failure to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
Rejection of claims 1, 11, and 18 under 35 U.S.C. § 102(e)
Does Barry teach “canceling a remainder of said print job in said
imaging device” as recited in representative claim 1?
Appellants argue that rerouting or re-queuing the remaining of the
print job stack to a different printer when an error exists does not constitute
cancelling the remainder of the print operation or suspending of all
processing of the remainder of the print operation (App. Br. 7). Claim 1
recites “canceling a remainder of said print job in said imaging device when
said at least one corrupt print job characteristic is detected, including
suspending all processing of said remainder of said print job” (emphasis
added). Barry teaches upon detection of an error condition “re-routing the
remainder of the at least a portion of the associated defined portion of the
print job not processed by the one print engine . . . to a second print engine”
(emphasis added) (col. 38, ll. 15-18). We agree with the Examiner (Ans. 16-
17) that in the absence of a special definition, “re-routing” of the print job
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“not processed by the one print engine” is tantamount, under the broadest
reasonable interpretation of the phrase, to “cancelling the remainder of said
print job in said imaging device.” That is, re-routing necessarily entails that
the print job will not be processed (i.e., will be cancelled) by the first print
engine. See Zletz, 893 F.2d at 322; and Sunrace Roots Enterprise, 336 F.3d
at 1302.
Furthermore, the claim is silent about suspending all processing of the
remainder of said print job to other imaging devices. While we interpret
claims in light of the specification, limitations from the specification are not
read into the claims (i.e., suspension of the print job to all imaging devices).
See Van Geuns, 988 F.2d at 1184.
Accordingly, we will affirm the Examiner’s rejection of representative
claim 1 under 35 U.S.C. § 102(e) and for similar reasons the rejections of
claims 11 and 18.
Rejection of claims 2-10, 12-17, and 19-24 under 35 U.S.C. § 103(a)
We will also affirm the Examiner’s rejection of claims 2-10, 12-17,
and 19-24 under 35 U.S.C. § 103(a) for reasons similar to those stated supra
as Appellants have not advanced any other arguments with respect to these
claims.

CONCLUSIONS
(1). Claims 21-24 comply with the written description requirement;
and
(2). Barry teaches “canceling a remainder of said print job in said
imaging device.”

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ORDER
The decision of the Examiner to reject claims 21-24 under 35 U.S.C.
§ 112, first paragraph is reversed.
The decision of the Examiner to reject claims 1, 11, and 18 under 35
U.S.C. § 102(e) and the decision of the Examiner to reject claims 2-10, 12-
17, and 19-24 under 35 U.S.C. § 103(a) is affirmed.
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).

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AFFIRMED-IN-PART

ELD

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