Ex Parte Nakaoka et al

Board of Patent Appeals and Interferences

May 28, 2010

09958885 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte YASUSHI NAKAOKA, MASSAKI HANAOKA, MASANORI
MUKAIYAMA, and TOSHIHARU KATADA
_____________

Appeal 2009-011717
Application 09/958,885
Technology Center 2400
______________

Decided: June 2, 2010
_______________

Before ROBERT E. NAPPI, JOHN C. MARTIN, and MARC S. HOFF,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5, 9, 13, 17, and 18, which are all of the pending
claims.1
Oral argument was heard on May 11, 2010.2
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

A. Appellants’ invention
Appellants’ invention is a print portal system that intermediates
between multiple content provider servers and multiple printing apparatuses
connected to a network. Specification 5:6-10.
Appellants’ Figure 72 is reproduced below.

1 Claims 6-8, 10-12, and 14-16 were canceled by a May 11, 2007,
“Amendment After Notice of Appeal.” See August 13, 2007, Advisory
Action.
2 “[A]rguments not presented in the brief or reply brief and made for the
first time at the oral hearing are not normally entitled to consideration.”
MPEP § 1205.02 (8th ed., rev. 7, July 2008) (citing In re Chiddix,
209 USPQ 78 (Comm’r Pat. 1980)).
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Figure 72 shows functional blocks for attaining maintenance and
management functionality in Appellants’ invention (id. at 90:19-20). Print
portal 100 collects information on the working state of each printing station
(id. at 90:15-16). Printer PRT includes an MIB (Management Information
Base) for “storing the status of the printer PRT and report[ing] the remaining
quantity of the toner and the loss of the photosensitive drum in response to
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an external inquiry” (id. at 90:27-29). A printer maintenance unit 184 in
print portal 100 regularly checks the working status of each printer, such as
by communicating with the MIB in the printer (id. at 91:1-4). Print portal
100 also maintains a print record 152A for each printer (id. at 90:23-26). In
the case where the printer PRT is used exclusively for printing via the print
portal, the remaining quantities of the expendables can be estimated from
print record 152A (id. at 91:5-7). The maintenance information, which
includes instructions to add toner or paper and to replace the photosensitive
drum, is preferably given to the printing station or to the printing service
provider that owns the printer (id. at 91:16-20).

B. The claims
The independent claims before us are claims 1, 9, 13, 17, and 18.
Claim 1, which is representative, reads as follows:
1. A print portal server that intermediates between
multiple content provider servers and multiple printing
apparatuses to execute a printing operation in response to an
instruction from a client connected to a network, the print portal
server comprising:
a storage module that stores therein a specific address of
contact, which is assigned to each of the printing apparatuses
and receives a notification relating to maintenance and
management;
an estimation module that estimates necessity of
maintenance of the each printing apparatus with regard to a
predetermined maintenance-management item; and
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a communication module that, when a certain printing
apparatus is estimated to have necessity for maintenance,
communicates with the specific address of contact assigned to
the certain printing apparatus to send a notification relating to
maintenance of the certain printing apparatus via the network.
Claims App. (Br.3 A-1).

C. The references
The Examiner relies on the following references:
Boockholdt et al. (“Boockholdt”) US 5,794,094 Aug. 11, 1998
Carcerano et al. (“Carcerano”) US 6,308,205 B1 Oct. 23, 2001

D. The rejection
Claims 1-5, 9, 13, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
for obviousness over Carcerano in view of Boockholdt. Final Action 3,
para. 4.

THE ISSUES
The dispositive issue raised by Appellants’ arguments4 is whether
Carcerano and Boockholdt disclose or suggest a print portal server having a
communications module that, when a printer is estimated to require

3 “Amended Brief on Appeal,” received May 16, 2008.
4 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“If an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”). Designated
as precedential at http://www.uspto.gov/ip/boards/bpai/decisions/prec/
(Continued on next page.)
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maintenance, sends a notification to that effect to a specific address of
contact for the printer.

ANALYSIS
Carcerano’s invention addresses the problem that in conventional
systems, each network administrator uses a program that directly interacts
with each network device. Carcerano, col. 1, ll. 38-40. In a printer context
example, each administrator's printer manager sends configuration queries or
commands to printers on the network, which can result in excessive network
traffic (col. 1, ll. 40-44). Carcerano’s solution is a system that allows a
remote network user to view and update the configuration of network
devices by using a web browser on the user’s workstation (col. 1, ll. 60-63).

index.jsp.
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Figure 5 is a block diagram of Carcerano’s browser-based network
management system (col. 3, ll. 42-44). Managed network device 111, which
includes network interface device 50, is attached to network 1 (col. 8, ll. 63-
66). Network management system 109 repeatedly polls each of the network
devices over network 1 for configuration information (col. 10, ll. 65-67).
The results of the device discovery and polling operations are stored in
database 105 so that the data in database 105 continuously reflects the
current status and configuration of supported devices on network 1 (col. 11,
ll. 33-36). We understand the Examiner to be reading the recited “print
portal server” and its recited modules on Carcerano’s network management
system 109, which includes network management server 104, which in turn
includes database 105.
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Figure 6 of Carcerano is reproduced in part below.

Figure 6 is a representational view of HTML code generated
according to the invention, shown in the way that a browser would display
such code to a user on the user’s workstation (col. 11, ll. 64-67). The list of
devices depicted in Figure 6 includes a printers section 123 and a scanners
section 124 (col. 12, ll. 12-13). Displayed for each type of device is device
location 125, device model 126, and device status 127 (col. 12, ll. 19-20).
Figure 7 is reproduced in part below.
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Figure 7 is a representational view of a browser interface displaying
detailed information about a particular device (i.e., a printer) on the network
(col. 12, ll. 62-64). Region 126 of the display gives the “Location” of the
printer as “dvt lab,” identifies the “Contact Person” as “my person,” and
includes (empty) display areas for showing the Contact Person’s “Phone”
number and “E-Mail” address.
Appellants’ argument that “[n]owhere does Carcerano disclose a
storage module that stores a specific address of contact” (Br. 15) is
unpersuasive. Database 105 stores the e-mail address of the “Contact
Person” (Fig. 7), which can accurately be characterized as “a specific
address of contact, which is assigned to each of the printing apparatuses,” as
required by claim 1.
We also disagree with Appellants’ assertion that “the configuration of
the devices of Carcerano only relates to the device status, device and service
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information, device features, etc. [and thus] does not relate to maintenance
of the printing apparatuses.” (Br. 15.) The “Device Status” region 125
indicates, inter alia, that “Cassette 1” is “1/3 Full” and that “Cassette 2” is
“Empty.” The claimed “notification relating to maintenance of the certain
printing apparatus” is broad enough to read on providing an indication of the
amount of paper in a printer cassette. See Specification 91, ll. 14-16 (“The
maintenance information includes pieces of information to instruct
supplement of the toner and paper and replacement of the photosensitive
drum.”) (emphasis added). Carcerano does not provide any details regarding
how the paper levels are detected. We assume that they are detected at the
printer and then communicated to network management system 109 (Fig. 5),
where they are stored in database 105 for subsequent retrieval by and display
on a user’s browser. For this reason, we also disagree with Appellants’
assertion that “Carcerano . . . does not disclose sending a notification
relating to maintenance of the certain printing apparatus” (Br. 15-16).
Furthermore, because network management system 109 responds to the
paper-level information received from the printer by causing workstation 70
to display that paper-level information to the user, we also disagree with
Appellants’ assertion that “the management system of Carcerano does not
generate a response based on the information obtained directly from the
network device” (Br. 16).
However, we agree with Appellants that “[n]owhere does Carcerano
disclose sending a notification to the specific address of contact” (Br. 16).
As noted by Appellants, although database 105 in network management
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system 109 can store the e-mail address of the contact person for a printer,
Carcerano does not disclose sending any type of notification from network
management system 109 to that e-mail address (Reply Br. 3). For the
following reasons, we also agree with Appellants that this deficiency in
Carcerano has not been shown to be remedied by Boockholdt, on which the
Examiner primarily relies for a teaching of the recited “estimation module.”
Final Action 4.5
Boockholdt’s invention enhances the detection of the toner level in a
printer. Boockholdt, col. 1, ll. 5-8.
Figure 1 is reproduced below.

5 The Examiner also characterizes Boockholdt as “teach[ing] network
communication in which the devices are connected via a network (fig 1).”
(Answer 7.)
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Figure 1 is a high-level schematic block diagram of a network
operating environment having a printer employing Boockholdt’s invention
(col. 3, ll. 31-34). Laser printer 10 is shown in a multiple-user configuration
wherein several computers 12, 14 and 16 are connected with printer 10 via
an array of connections in the form of a network bus 18 of a computer
network environment 20 (col. 3, ll. 59-62).
Figure 3 is reproduced below.

Figure 3 is a block diagram showing the experiential database and
pixel counting features employed according to one aspect of Boockholdt’s
invention (col. 3, ll. 38-40). Printer 10 includes an artificial intelligence
model 50 that combines information about characterized print jobs and/or
users in order to make accurate estimates of toner level to predict the toner
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level needed to carry out any remaining and/or future print jobs (col. 6, ll.
17-21). Boockholdt explains that “the remaining available pages capable of
being printed on the printer by the toner cartridge can be displayed to users,
either on the printer, or at a user’s computer display terminal” (col. 7, ll. 22-
25). Display of the “remaining available pages” information at the user’s
terminal implies that that information is received over the network (18 in
Fig. 1) from the printer, where it is calculated. Consequently, we disagree
with Appellants’ assertion that “[n]owhere does Boockholdt disclose
exchanging toner level information via a network” (Br. 16).
The Examiner concluded that it would have been obvious to
incorporate the teachings of Boockholdt into Carcerano in order to “better
predict the level of a[v]ailable toner and the available printing life respectively
(col 1, lines 50-60)” (Final Action 4). We understand the Examiner’s
position to be that it would have been obvious to add Boockholdt’s
estimation feature to Carcerano’s printer 111. Appellants’ argument that
“based on the teachings of Carcerano and Boockholdt, one of ordinary skill
in the art would not have been motivated to combine Carcerano and
Boockholdt” (Br. 18) is unconvincing because Appellants have not
explained why it would not have been obvious to add Boockholdt’s toner
estimation feature to Carcerano’s printers for the reason proposed by the
Examiner. However, we agree with Appellants that the combination of
reference teachings proposed by the Examiner has not been shown to satisfy
all of the limitations of claim 1. In response to Appellants’ argument that
the references fail to disclose or suggest that Carcerano’s network
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management system 109 (corresponding to the recited print portal server)
can include a communications module that, when a printer is estimated to
require maintenance, sends a notification to that effect to a specific address
of contact for the printer (Br. 15-18), the Examiner explained that
what is taught by Carcerano is a similar system in which the
network devices interact with the management system, which in
turn handles all communication with the users. Thus the network
devices are not overburdened by having to communicate with
many different users (see col 2, lines 30-33). The device status,
configuration, and other information can be viewed, updated, and
edited via transactions to information in the database (abstract).
Carcerano also teaches the location of the device as well as the
location of the primary contact for the device (see Figs 6 and 7,
col 12, lines 13-27).
(Answer 6.) This explanation is not responsive to Appellants’ argument.
The Examiner has not even asserted that, let alone explained why, it would
have been obvious to have Carcerano’s network management system 109
send an estimate of the number of pages remaining for the present toner
cartridge to a specific contact address assigned to the printer (e.g., the e-mail
address of the contact person for the printer). We are therefore reversing the
rejection of claim 1 for lack of “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (internal quotation marks
omitted).
For the same reason, we are reversing the rejection of claims 2-5,
which depend on claim 1, and the rejection of independent claims 9, 13, 17,
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and 18, which include limitations like the claim 1 limitation discussed
above.
DECISION
The rejection of claims 1-5, 9, 13, 17, and 18 under 35 U.S.C.
§ 103(a) for obviousness over Carcerano in view of Boockholdt is reversed.

REVERSED

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