Ex Parte Lee

Board of Patent Appeals and Interferences

Jan 30, 2003

08856183 (B.P.A.I. Jan. 30, 2003)

1 Application for patent filed May 14, 1997, which claims priority
benefit under 35 U.S.C. from provisional Application 60/017,398, filed May 14,
1996.
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for publication and is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KANGHOON LEE
____________
Appeal No. 2001-2106
Application No. 08/856,1831
____________
HEARD: JANUARY 7, 2003
____________
Before HAIRSTON, DIXON, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1 and 2. Claims 3-20 are withdrawn from
consideration as drawn to a non-elected invention.
We reverse.
BACKGROUND
Appellant’s invention is directed to a computer program for
controlling a printer using Java language to interpret page-
layout requests. The printer receives Java print requests via a
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server which converts the received print request from a Java
request to a printer request for that specific printer
(specification, page 7). Thus, according to Appellant, Java as
an object oriented and architecture neutral language achieves
improved distribution, language interpretation, security and
compact image description in the claimed printer driver.
Representative independent claim 1 is reproduced below:
1. A computer program product, comprising:
a computer storage medium and a computer program code
mechanism embedded in the computer storage medium for
causing a printer to control rasterization of an image, the
computer program code mechanism comprising:
a first computer code device configured to receive a
print request as a series of method invocations using
commands in a Java object oriented language syntax;
a second computer code device configured to rasterize
the print request into an image; and
a third computer code device configured to output the
image on a recording medium.
The Examiner relies on the following references in rejecting
the claims:
Tom Bertram et al. (Bertram), “Print Rasterization Moves
Hostward With Support From SCSI,” Computer Technology Review, No.
6, Los Angeles, CA (US), 12 (1992) May, pp. 104-107.
“Java Language Specification (JLS),” Sun Microsystems, Inc.,
1995.
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Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bertram in view of JLS.
Rather than reiterate the viewpoints of the Examiner and
Appellant regarding the above-noted rejection, we make reference
to the answer (Paper No. 26, mailed February 13, 2001) for the
Examiner’s reasoning and to the appeal brief (Paper No. 25, filed
December 6, 2000) and the reply brief (Paper No. 27, filed April
13, 2001) for Appellant’s arguments thereagainst.
OPINION
At the outset, we note that Appellant states that claims 1
and 2 stand or fall together (brief, page 3). Accordingly, we
will consider the claims as one group and will limit our
consideration to independent claim 1 as the representative claim
of the group.
The Examiner asserts that Bertram teaches the claimed
computer storage medium and code mechanism for causing the
operation of a print rasterization and outputting an image except
for using commands in a JAVA object oriented language syntax
(answer, pages 3 & 4). The Examiner, however, relies on JLS for
disclosing the use of commands in JAVA object oriented language
and concludes that JAVA syntax is compatible with other
applications and may be used in Bertram’s printer in order to
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take advantage of the versatility and improved program execution
of Java independent of the operating system (answer, pages 4 &
5).
Appellant argues that, contrary to the Examiner’s
interpretation of the reference, the compatibility described in
JLS is a backward compatibility of each new version of Java with
the existing Java applications (brief, page 5). Additionally,
Appellant points to the listing of HTML, PDF and Postscript on
page 1 of JLS and argues that such “languages” are formats in
which the Java language specifications may be downloaded, not
languages in other systems that are compatible with Java (brief,
pages 4 & 5 and reply brief, pages 1 & 2). Appellant further
questions the reason for the combination of Bertram and JLS and
argues that the motivation to include Java language in such
printers should be ruled out because Bertram provides a complete
system at a time prior to development of Java language (brief,
page 6).
In response to Appellant’s arguments, the Examiner points to
page 1 of JLS listing HTML, PDF and Postscript for download
formats for concluding that a system using HTML, PDF and
Postscript is compatible with Java since Java accepts such
programs (answer, page 6). The Examiner further argues that
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Bertram is indeed compatible with Java language since page 4 of
JLS also indicates that Java may be implemented with existing
applications such as PDF (answer, page 6). Finally, the Examiner
relies on the first page of JLS to assert that indication of
HTML, PDF and Postscript suggests that a system that uses such
“languages” is allowed to use Java (answer, page 7).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). To reach a conclusion of
obviousness under § 103, the examiner must produce a factual
basis supported by teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). The Examiner must not only
identify the elements in the prior art, but also show “some
objective teaching in the prior art or that knowledge generally
available to one of ordinary skill in the art would lead the
individual to combine the relevant teachings of the references.”
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988).
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A review of the applied prior art confirms that Bertram
relates to the use of SCSI bus interface and driver to connect
laser printers to computers and move the image rasterization from
the printer side to the host computer (page 106, lefthand
column). According to Bertram, using SCSI removes the need for a
specific printer language and insures faster data transfer and
screen images that are more consistent with the printed images
(page 107, lefthand column). However, as contended by the
Examiner, Bertram includes nothing related to the claimed print
requests received as a series of method invocations using
commands in a Java object oriented language syntax.
JLS, on the other hand, identifies Java as a general-purpose
object-oriented programming language and discloses the
specification of the syntax and semantics of Java language (page
4). More specifically, JLS describes the evolution of Java as
completely compatible with existing applications wherein Java
compilers and systems are capable of supporting the several
different versions of Java simultaneously and with complete
compatibility (id.). Furthermore, to provide various choices for
downloading the language specification, JLS lists HTML, PDF and
Postscript as the available download formats on page 1.
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We disagree with the Examiner that the listing of HTML, PDF
and Postscript download formats is an indication of compatibility
of systems using such formats with Java. There is, in fact,
nothing in JLS that directs us to conclude that the systems using
such formats are compatible with Java, nor any disclosure related
to Java being implemented with existing non-Java applications.
In our view, the Examiner’s conclusion that Bertram’s printer may
be used with Java format because HTML, PDF and Postscript
download formats correspond both to the languages that are
compatible with the printer of Bertram and existing Java systems,
is unsupported by the prior art. As discussed above, Bertram
does not recognize the benefits of using Java language in a
printer driver and implements the conventional method of sending
the rasterized and bit mapped images to a printer using the
memory and processing resources of the host. On the other hand,
JLS makes no reference to compatibility of Java language with
systems that recognize HTML, PDF and Postscript formats.
In view of our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness with
respect to claim 1 because the necessary teachings and
suggestions to arrive at the claimed printer driver that receives
“a printer request as a series of method invocations using
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commands in a Java object oriented language syntax” are not
shown. Here, the Examiner’s assertion that the combination of
Bertram and JLS would have suggested the claimed subject matter
could not stand as neither evidence in the prior art nor
knowledge relied on by one of ordinary skill in the art supports
such conclusion. Accordingly, we do not sustain the 35 U.S.C.
§ 103 rejection of independent claim 1, nor of claim 2 dependent
thereon.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1 and 2 under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2001-2106
Application No. 08/856,183
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