Ex Parte LEVINE et al

Patent Trial and Appeal Board

Oct 9, 2015

12062603 (P.T.A.B. Oct. 9, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/062,603 04/04/2008 Jonathan David LEVINE 056-0036 1621
70537 7590 10/09/2015
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
EXAMINER
LEE, TOMMY D
ART UNIT PAPER NUMBER
2677
MAIL DATE DELIVERY MODE
10/09/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN DAVID LEVINE and MICHAEL J. EVAN
___________

Appeal 2013-008106
Application 12/062,603
Technology Center 2600
____________

Before DANIEL N. FISHMAN, LINZY T. McCARTNEY, and
CARL L. SILVERMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 5–8, 12–15, 19, and 20, all remaining claims of the application.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Opinion, we refer to the Appeal Brief (“App. Br.,” filed December
31, 2012), the Reply Brief (“Reply Br.,” filed June 11, 2013), the
Examiner’s Answer (“Ans.,” mailed April 12, 2013), the Final Office Action
(“Final Act.,” mailed July 16, 2012), and the original Specification (“Spec.,”
filed April 4, 2008).
Appeal 2013-008106
Application 12/062,603

2

STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to print job management. See, generally,
Spec. Title, ¶ 1.
Independent claim 1, reproduced below, is illustrative:
1. A method for managing print jobs for a printer,
comprising:
receiving image data for printing a print job, the print job
having more than one document and the image data being
received only one time for each print job;
prompting a user to enter a print job ticket, wherein the
print job ticket indicates the number of pages for at least one of
each document and each sub-print job in the print job and is
created by a print job management device that communicates
with the printer;
receiving a signal to print the print job, wherein each of
the more than one document is a separate sub-print job and the
signal indicates that at least one sub-print job is to be printed in
a different quantity than other sub-print jobs in the print job;
printing the print job according to the received signal.

THE REJECTION
Claims 1, 5–8, 12–15, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kim (US 6,320,678 B1; Nov. 20, 2001) and
Kloosterman (US 2003/0189724 A1; Oct. 9. 2003). Final Act. 4–8.

ISSUE
Appellants’ arguments raise the following issue: Has the Examiner
erred by finding the combination of Kim and Kloosterman teaches or
suggests all the features of independent claim 1?

Appeal 2013-008106
Application 12/062,603

3

ANALYSIS
Only those arguments actually made by Appellants in the Briefs are
considered in this Decision. Arguments that Appellants did not make in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2012).
We are not persuaded by Appellants’ arguments that the Examiner has
erred. App. Br. 4–6; Reply Br. 3–5. We agree with, and adopt as our own,
the Examiner’s findings and reasons as set forth in the Examiner’s rejections
(Final Act. 2–8). We highlight specific arguments and findings for emphasis
as follows.
Appellants argue Kim discloses querying a user for a number of
copies for each page of a single document whereas, by contrast, claim 1
recites specifying a number of copies for a document of multiple documents
that comprise a print job. App. Br. 4–5. We are not persuaded by
Appellants’ argument. The Examiner finds, although Kim expressly teaches
specifying the number of copies for a page of a document, specifying a
number of copies for a document as recited in claim 1 is an obvious
“extension of Kim’s teaching, wherein separate documents (as opposed to
separate pages) may be printed in different quantities.” Final Act. 6. The
Examiner further finds Kloosterman paragraph 52 also discloses a “print job
containing sub-print jobs to be printed in different quantities.” Id. Thus, we
agree with the Examiner that both Kim and Kloosterman teach or suggest
specifying a number of copies for a document of multiple documents of a
print job as recite in claim 1.
Appellants further argue Kloosterman “only teaches the use of a job
ticket” and fails to disclose or suggest “‘prompting a user to enter a print job
ticket, wherein the print job ticket indicates the number of pages for at least
Appeal 2013-008106
Application 12/062,603

4

one of each document and each sub-print job in the print job and is created
by a print job management device that communicates with the printer.’”
App. Br. 5. We are not persuaded the Examiner erred. Merely reciting the
language of the claims and asserting the cited prior art does not teach the
claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(1)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
The Examiner specifically finds Kloosterman discloses these features in
paragraphs 30, 52, and 131 (Final Act. 7) and Appellants’ arguments fail to
rebut these findings with any persuasive evidence.
Appellants’ Reply Brief essentially repeats the arguments presented in
the Appeal Brief. See Reply Br. 3–5. Thus, in view of the above discussion,
we are not persuaded the Examiner erred by finding the combination of Kim
and Kloosterman teaches or suggests all the features of independent claim 1.
Appellants argue the rejection of claims 5–8, 12–15, 19, and 20 together
with claim 1 (App. Br. 5) and, thus, we are unpersuaded the Examiner erred
in rejecting claims 5–8, 12–15, 19, and 20 for the same reasons as claim 1.

Appeal 2013-008106
Application 12/062,603

5

DECISION
For the above reasons, the Examiner’s decision rejecting claims 1, 5–
8, 12–15, 19, and 20 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).

AFFIRMED

dw