Ex Parte Liccini et al

Patent Trial and Appeal Board

Apr 9, 2013

11082421 (P.T.A.B. Apr. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROMAN LICCINI, WILLIAM SAMUEL JACOBS,
and JOHN GIL-GOMEZ
____________

Appeal 2010-011615
Application 11/082,421
Technology Center 2600
____________

Before KRISTEN L. DROESCH, HUNG H. BUI, and MIRIAM L. QUINN,
Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.
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STATEMENT OF THE CASE
The subject matter on appeal involves a printing system. Spec.
¶ [0020].1 According to the Specification, the printing system “has the
ability to collate non-printing inserts into a print job.” Spec. ¶ [0001].
Details of the appealed subject matter are recited in illustrative independent
claim 1, reproduced below from the Claims Appendix of the Appeal Brief:2
1. A method comprising:
storing at least one type of printing media in each of a
plurality of storage units of a printing system;
storing, in a memory device connected to a controller, non-
printing media route information associated with one or more
corresponding storage units when printing media that should
avoid a marking system of said printing system is loaded into
said one or more corresponding storage units; and
preventing, using said controller, printing instructions from
being executed that direct said printing media into said marking
system from one or more of said storage units with which said
non-printing media route information is associated.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at pages 3 to 12 of the Answer:3
Clark US 5,710,968 Jan. 20, 1998
Asai US 2002/0051666 A1 May 2, 2002

1 References to Appellants’ Specification (“Spec.”) are directed to the
specification filed on March 17, 2009.
2 References to the Appeal Brief (“Br.”) are directed to the Appeal
Brief filed on August 7, 2009.
3 References to the Examiner’s Answer (“Ans.”) are directed to the
Answer mailed on May 27, 2010.
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The Examiner provides the following grounds of rejection, of which
Appellants seek review: Claims 1-28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Clark and further in view of Asai. Ans.
3-12.
ISSUES
a) Has the Examiner incorrectly determined that the combination of
Clark and Asai teaches the limitation of preventing “printing
instructions from being executed that direct said printing media
into said marking system from one or more of said storage units
with which said non-printing media route information” is
associated, as recited in independent claims 1 8, 15, and 22 (Br. 9-
12)?
b) Has the Examiner incorrectly determined that the combination of
Clark and Asai teaches “storing user interaction through a user
interface that is used as said printing media is loaded into said
storage units,” as recited in dependent claims 2 and 9, and a “user
interface” adapted to associate “said non-printing media route
information with one or more corresponding storage units as said
printing media is loaded into said storage units,” as recited in
dependent claims 16 and 23 (Br. 12-13)?
c) Has the Examiner incorrectly determined that the combination of
Clark and Asai teaches “said storage units with which said non-
printing media route information is associated,” as recited in
dependent claims 3, 10, 17, and 24 (Br. 13-14)?
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d) Has the Examiner incorrectly determined that the combination of
Clark and Asai teaches “printing instructions including printing
media route information,” as recited in dependent claims 5, 12, 19,
and 26 (Br. 14-15)?
e) Has the Examiner incorrectly determined that the combination of
Clark and Asai teaches indicating, through a user interface, “that
said printing instructions were not executed relating to an
inconsistency between said non-printing media route information
and said printing instructions,” as recited in dependent claims 7,
14, 21, and 28 (Br. 15-17)?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions. Further, we have reviewed the Examiner’s response to
Appellants’ arguments. We adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief. We concur with the conclusions
reached by the Examiner. We highlight the following arguments for
emphasis.
Independent Claims 1, 8, 15, and 22
Appellants contend that Asai does not teach the step of “preventing,
using said controller, printing instructions from being executed” because
Asai determines whether to exclude a sheet feeding port from the ports
selectable for sheet feeding independently of any printing instruction. Br.
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10-11. According to Appellants, the portions of Asai relied on by the
Examiner do not identify printing instructions and describe only that the user
sets the type for each feeding port such that Asai “removes/excludes sheet
feeding ports that are selectable for sheet feeding from consideration.” Br.
10-11.
We do not agree with Appellants’ contentions. Instead, we agree with
the Examiner’s finding that, giving the term the broadest reasonable
interpretation in light of the specification, “printing instructions” include
instructions pertaining to sheet feeding, such as “bin selections of Asai
shown in figures 5A-F.” Ans. 13. In particular, the Examiner correctly
finds that Asai teaches excluding a sheet feeding port from being selected as
a source of media on which to print, and that the selection, according to
paragraph 86 of Asai, occurs after an original has been sensed for copying.
Ans. 13. Consequently, a printing instruction to draw media from an
excluded port is prevented from occurring. Id. Therefore, we are not
persuaded that the Examiner erred in finding that Asai’s disclosure of
excluding a sheet feeding port from being selected meets the disputed
limitation of “preventing . . . printing instructions from being executed,” as
recited in independent claims 1 and 8, and similarly recited in independent
claims 15, and 22.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claims 1, 8, 15, and 22 as being unpatentable over Clark and
Asai.
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Dependent Claims 2, 9, 16, and 23
Appellants contend that Clark’s graphic user interface of controller
100 does not meet the limitation of “storing user interaction through a user
interface that is used as said printing media is loaded into said storage units,”
as recited in dependent claims 2 and 9, and commensurately recited in
claims 16 and 23. Br. 12-13. We disagree with Appellants’ contention.
The Examiner finds Clark teaches that the “controller gains
operational commands from a user interface that pertain to the ‘bypass loop
sheet insertion system’ (i.e., non-printing media route information).” Ans.
14. Clark teaches that a main sheet feeding tray stores blank or clean copy
sheets, while an auxiliary sheet feeding tray stores insert sheets. Clark, col.
10, ll. 49-55. Relying on Clark’s disclosure, the Examiner finds that Clark
“clearly stores the media tray information claimed” reasoning that Clark’s
controller would have that information to control the bypass. Ans. 14. The
Examiner’s findings are reasonable and remain unrebutted since Appellants
did not file a reply brief.
In addition to the Examiner’s findings above, we note that Clark
describes that prior to the production of a print set, a controller “is provided
with instructions regarding the precise sequence at which insert sheets are to
be introduced into the flow of copy sheets output from processing section 6.”
Clark, col. 10, ll. 62-65. Therefore, we agree with the Examiner’s finding
that Clark’s user interface receives commands regarding a print job that
involves insert sheets, and hence, involves the bypass loop. We, therefore,
find no error in the Examiner’s finding that Clark’s controller has “non-
printing media route information” in order to control the bypass loop, and
that such information (such as which media tray includes insert sheets and
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the sequence of the insertion) is stored from “user interaction through a user
interface” as claimed. Consequently, we need not address whether Asai also
teaches the disputed limitation. See Ans. 15 (Examiner stating alternative
finding of the disputed limitation in Asai).
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 2, 9, 16, and 23 as being unpatentable over Clark and Asai.
Dependent Claims 3, 10, 17, and 24
Appellants contend that neither Clark nor Asai discloses “said storage
units with which said non-printing media route information is associated,” as
recited in claims 3, 10, 17, and 24. Br. 13-14. Appellants’ contention,
however, merely re-states the Examiner’s position without substantive
argument and parrots the disputed claim limitation. See 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.”).
Therefore, we are not persuaded by Appellants’ contention. Instead,
we concur with the Examiner’s unrebutted and reasonable finding that “print
instructions of Asai are compared with feeder tray information, which in
view of Clark could refer to non-printing media.” Ans. 15. We also agree
with the Examiner’s finding that Clark stores the “non-printing media route
information,” as stated supra with respect to claims 2, 9, 16, and 23.
Therefore, we agree with the Examiner’s unrebutted and reasonable findings
and conclusion that Clark teaches “said storage units with which said non-
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printing media route information is associated,” as recited in claims 3, 10,
17, and 24.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 3, 10, 17, and 24 as being unpatentable over Clark and Asai.
Dependent Claims 5, 12, 19, and 26
Appellants contend that neither Clark nor Asai discloses the limitation
of “printing instruction including printing media route information,” as
recited in dependent claims 5, 12, 19, and 26. Br. 14-15. Specifically,
Appellants argue that nowhere in the passages the Examiner relies on, nor
anywhere in Clark or Asai is disclosed that printing instructions “indicate[]
whether said printing media will be directed to a marking system.” Br. 15.
We do not agree with Appellants’ contention, which lacks substantive
argument. We, instead, concur with the unrebutted and reasonable findings
and conclusions of the Examiner.
In particular, we note the Examiner’s finding that Clark, in column 10,
lines 36-49, teaches that sheets are inserted via the bypass loop at
“predetermined locations.” Ans. 15. That passage also teaches that the print
set, or document output by the copier, includes copy sheets, i.e., the sheets
with images transferred onto them by processing the input document. The
Examiner finds that insert sheets are not randomly placed (Ans. 15) and that
route information has been previously established. Therefore, we find no
error in the Examiner’s finding that Clark’s controller operates in
accordance with route information and meets the disputed claim limitation.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 5, 12, 19, and 26 as being unpatentable over Clark and Asai.
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Dependent Claims 7, 14, 21, and 28
Appellants contend that Asai does not disclose indicating, through a
user interface, “that said printing instructions were not executed relating to
an inconsistency between said non-printing media route information and said
printing instructions,” as recited in dependent claims 7, 14, 21, and 28. Br.
15-17. Specifically, Appellants argue that Asai “displays an error based on
determining that no sheet feeding port is selectable as a port for a sheet
feeding port,” and not based on an “inconsistency,” as required by the
claims. Br. 17 (emphasis omitted). We are unpersuaded by Appellants’
arguments.
As the Examiner notes, the rejection of these dependent claims is
established through the combination of Clark’s system (including the
controller, which determines when to bypass insert sheets from each of the
sheet trays) and Asai’s disclosure of preventing the printing instructions
from being executed. Ans. 16. Because Appellants’ arguments focus on
Asai’s disclosure individually, such arguments fail to address the rejection
established by the Examiner. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)).
Furthermore, we agree with the Examiner’s finding that Asai teaches
displaying a message that relates to the printing instructions because Asai’s
alert is based on whether sheet feeding ports should be excluded from
selection in a printing process. Ans. 16. The Examiner’s findings are thus
reasonable, i.e., that an inconsistency between Asai’s instruction to exclude
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a sheet feeding port and a sequence programmed in Clark’s controller,
would be indicated through an alert taught by Asai. As such, we find no
error in the Examiner’s determination that the combination of Asai and
Clark teaches the disputed limitation.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 7, 14, 21, and 28 as being unpatentable over Clark and Asai.
Remaining Dependent Claims: 4, 6, 11, 13, 18, 20, 25, and 27
With respect to the remaining dependent claims, Appellants did not
argue those separately, allowing them to rise or fall with the claims on which
they depend. Having sustained the rejection of independent claims 1, 8, 15,
and 22, we also sustain the Examiner’s rejection of dependent claims 4, 6,
11, 13, 18, 20, 25, and 27 for obviousness under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-28 under 35
U.S.C. § 103(a) as being unpatentable over Clark and Asai.
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

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