Ex Parte Lee

Board of Patent Appeals and Interferences

Oct 29, 2002

08824344 (B.P.A.I. Oct. 29, 2002)

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not written for publication and is not binding precedent of the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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHANG-SUB LEE
__________
Appeal No. 2001-0596
Application 08/824,344
___________
HEARD: JUNE 13, 2002
___________
Before JERRY SMITH, DIXON and LEVY, Administrative Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-17, which constitute
all the claims in the application.
The disclosed invention pertains to a method and
apparatus for changing printer drivers in a computer-printer
system.
Appeal No. 2001-0596
Application 08/824,344
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Representative claim 1 is reproduced as follows:
1. A method for changing printer drivers in a computer-
printer system, comprising the steps of:
sending a print command to a printer to begin a print
operation;
periodically transmitting a response request signal to
said printer;
determining that an error has occurred when said printer
fails to respond to said response request signal;
checking whether said error corresponds to any one of a
plurality of specific error types stored in a memory of a
computer of said computer-printer system;
stopping said print operation when said step of checking
determines that said error does not correspond to any of said
specific error types stored in said memory;
changing from a printer driver initially set to control
said printer to a second printer driver stored in said memory
when said error corresponds to one of said specific error types
corresponding to an abnormal operation state of said initially
set printer driver; and
setting up said second printer driver to control said
printer and returning to said step of periodically transmitting
said response request signal to said printer.
The examiner relies on the following references:
Gase et al. (Gase) 5,580,177 Dec. 03, 1996
Kageyama et al. (Kageyama) 5,625,757 Apr. 29, 1997
(filed Dec. 21, 1994)
Claims 1-17 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Kageyama in view of
Gase.
Appeal No. 2001-0596
Application 08/824,344
3
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-17. Accordingly, we reverse.
Appellant has indicated that for purposes of this appeal
the claims will all stand or fall together as a single group
[brief, page 4]. Consistent with this indication appellant has
made no separate arguments with respect to any of the claims on
appeal. Accordingly, all the claims before us will stand or fall
Appeal No. 2001-0596
Application 08/824,344
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together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ
1, 3 (Fed. Cir. 1983). Therefore, we will consider the rejection
against independent claim 1 as representative of all the claims
on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Appeal No. 2001-0596
Application 08/824,344
5
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
With respect to representative claim 1, the examiner’s
rejection is set forth on pages 3-5 of the examiner’s answer.
Appellant argues that there is no teaching in Kageyama or Gase of
stopping said print operation when said step of checking
determines that said error does not correspond to any of said
specific error types stored in said memory. Specifically,
Appeal No. 2001-0596
Application 08/824,344
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appellant argues that there are no unknown specific error types
in Kageyama. Appellant also argues that there is no error
determined in Gase because Gase simply replaces a working printer
driver with a newer version of the driver [brief, pages 5-14].
The examiner responds that the apparatus of Kageyama stops the
printing operation when the printer fails to respond to the
response request signal. The examiner also notes that Gase
teaches the replacement of an initial printer driver with a
second printer driver due to an abnormal operational state of the
initial driver [answer, pages 9-13]. Appellant responds that
there is no provision in Kageyama corresponding to an abnormal
operational state of an initially set printer driver, and Gase
does not replace an initially set printer driver in response to
an abnormal condition. Appellant also responds that the commands
generated in Kageyama do not correspond to the errors detected in
the claimed invention [reply brief].
We agree with the position argued by appellant. In our
view, the examiner has not properly interpreted an error in view
of the language of the claim. More particularly, representative
claim 1 specifically defines an error “as occurring when said
Appeal No. 2001-0596
Application 08/824,344
7
printer fails to respond to said response request signal.” Thus,
when the term “said error” is used later in claim 1, it must be
an error that occurred when the printer failed to respond to a
response request signal. We agree with the examiner that
Kageyama does teach that his printer will shut down when the
printer fails to respond to a response request signal or receives
the wrong command when the communication preparation completion
command is expected [column 63, step (i)]. At all other times,
however, Kageyama only shuts down when a command is received
which cannot be classified. Thus, Kageyama also teaches that the
host computer will classify a command received from the printer
in response to a response request signal [id., step (l)].
Although this command forces shutdown if it cannot be classified,
such a command is not an error as defined in claim 1 because the
printer has, in fact, responded with a command and not with a
failure to respond as claimed. The same holds true for step (r)
in the apparatus of Kageyama.
Thus, every “error” in Kageyama, except for the
communication regarding preparation completion, results from a
command which cannot be classified rather than from a failure to
respond as claimed. There is no suggestion that an error
corresponding to an abnormal operational state of the initially
Appeal No. 2001-0596
Application 08/824,344
8
set printer driver would lead to a failure to respond to a
response request signal. Although the examiner relies on Gase as
teaching replacing the initially set printer driver, the
replacement in Gase is not based on an abnormal operational state
of the initially set driver, but instead, is based on a desire to
update an operational initial driver with a newer version of the
driver. This basis for replacing the initially set printer
driver could never appear in Kageyama as a failure to respond to
the response request signal. Since an error is specifically
defined in claim 1 as noted above, the command to replace the
driver in Gase could never meet the definition of an error as
defined in claim 1. Therefore, an “error” corresponding to an
abnormal operational state of the initially set printer driver
would not be an “error” as defined in claim 1.
Since we find that the examiner has not properly
interpreted an error as defined in claim 1, we also find that the
examiner has failed to establish a prima facie case of
obviousness. Therefore, we do not sustain the examiner’s
Appeal No. 2001-0596
Application 08/824,344
9
rejection of claims 1-17. Accordingly, the decision of the
examiner rejecting claims 1-17 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2001-0596
Application 08/824,344
10
ROBERT E. BUSHNELL
ATTORNEY-AT-LAW
1522 K STREET, N.W., STE 300
WASHINGTON, DC 20005
JS:caw