Ex Parte Neville et al

Board of Patent Appeals and Interferences

Dec 2, 2010

10648414 (B.P.A.I. Dec. 2, 2010)

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.
10/648,414 08/26/2003 Russell S. Neville 1776-0035 4003
76360 7590 12/03/2010
MAGINOT, MOORE & BECK LLP
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
POLLACK, MELVIN H
ART UNIT PAPER NUMBER
2469
MAIL DATE DELIVERY MODE
12/03/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RUSSELL S. NEVILLE and DAVID I. BERNKLAU HALVOR
____________

Appeal 2009-007345
Application 10/648,414
Technology Center 2400
____________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007345
Application 10/648,414

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-22. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We Affirm.
BACKGROUND
Appellants’ invention is directed to diagnostics and troubleshooting
for computer peripheral devices, such as printers, in an environment where
at least part of the diagnostic tool may be remotely located. (Spec. 1, 4-7).
Claim 1 is illustrative:
1. A method for performing diagnostics on a computer
peripheral device, said method comprising:
coupling a computer executing a web browser to a
backend server via a communication link;
constructing and sending a peripheral device HTTP
message to said web browser from a web server executing in a
peripheral device coupled to the computer, the peripheral
device HTTP message comprising peripheral device
functionality information;
forwarding said peripheral device HTTP message from
said web server to said backend server;
constructing and transmitting from said backend server to
said peripheral device one of a directive web page requesting
more information from the peripheral device and a human
readable web page that contains diagnostic results;
automatically responding to a directive web page
received at the web server with another peripheral device HTTP
message comprising functionality information; and
Appeal 2009-007345
Application 10/648,414

3
iteratively communicating between said backend server
and said peripheral device until said human readable web page
is constructed by said backend server.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Webb US 5,727,135 Mar. 10, 1998
Wolff US 6,209,048 B1 Mar. 27, 2001
Skaanning US 6,879,973 B2 Apr. 12, 2007
Asauchi US 7,013,410 B2 Mar. 14, 2006
Lozano US 7,168,003 B2 Jan. 23, 2007

Appellants appeal the following rejections:
1. Claims 1-3, 5-9, 12-14, and 16-20 under 35 U.S.C. § 103(a) as
unpatentable over Asauchi, Skaanning, and Wolff.
2. Claims 4 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Asauchi, Skaanning, Wolff, and Webb.
3. Claims 10, 11, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Asauchi, Skaanning, Wolff, and Lozano.

Grouping of Claims
Based upon Appellants’ arguments, we select claim 1 as
representative of claims 1-3, 5-9, 12-14, and 16-20. We select claim 4 as
representative of claims 4 and 15 (Supp. App. Br. 7). We also select claim
11 as representative of claims 11 and 22 (Supp. App. Br. 8). See 37 C.F.R.
§ 41.37(c)(1)(vii). We address claims 10 and 21 separately.

Appeal 2009-007345
Application 10/648,414

4
ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Under § 103, did the Examiner err in combining the cited
references?
2. Under § 103, did the Examiner err in determining that the cited
combination of references would have taught or suggested communicating
between a backend server and a web server in a peripheral through a
browser executing in a computer coupled to the peripheral? (Representative
claim 1).
3. Under § 103, did the Examiner err in determining that the cited
combination of references would have taught or suggested forwarding a
peripheral device HTTP message from a web server to a backend server?
(Representative claim 1).
4. Under § 103, did the Examiner err in determining that the cited
combination of references would have taught or suggested a web server
executing in a peripheral device? (Representative claim 1).
5. Under § 103, did the Examiner err in determining that the cited
combination of references would have taught or suggested peripheral device
functionality information with a PostScript function interface in response to
a call from a web server? (Representative claim 4).
6. Under § 103, did the Examiner err in determining that the cited
combination of references would have taught or suggested that peripheral
device functionality information in the peripheral device HTTP message
would have included data in XML format? (Representative claim 11).

Appeal 2009-007345
Application 10/648,414

5
FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We add the following factual findings:
1. Appellants acknowledge that Skaanning discloses a system in
which a customer uses a web browser executing in a computer. (App. Br. 9).
2. Appellants acknowledge that Skaanning teaches a person can
use a web browser to relay the content of messages received at the web
browser, but not that the web browser alone relays the received messages.
(Supp. App. Br. 4 and 7).
3. Appellants acknowledge that Wolff discloses a peripheral that
is provided with a web server. (Supp. App. Br. 5).
4. Appellants acknowledge that Webb discloses a printer driver
that may be implemented in PostScript. (Supp. App. Br. 7).
5. Appellants acknowledge that Lozano discloses printer driver
data is provided in an XML format from a printer vendor’s database to a
program executing on a client computer. (Supp. App. Br. 8).
Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
Issue 1
We decide the question of whether the Examiner erred in combining
the cited references. Regarding claim 1, Appellants contend that the
Examiner’s use of Wolff is the result of using Appellants’ Specification as a
blueprint, which is impermissible. (App. Br. 11).
Appeal 2009-007345
Application 10/648,414

6
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly indicated that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results,”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
At the outset, we observe the striking similarity between Wolff’s
Figure 2 (depicting a peripheral 200 that includes a web server 202,
connected over a network to a user web browser 204) and Appellants’
Figure 1 which depicts the claimed peripheral device (printer as shown in
Fig. 1) containing a web server connected over a network to a personal
computer with a web browser that accepts user input. The Examiner relies
on Wolff as teaching or suggesting the use of the HTTP protocol where the
responder program is a web server. (Ans. 4-5). We also note the striking
similarity between Asauchi’s Figure 1 (depicting a computer 90 having a
browser 10, a printer 20, and a support system server SV) and Figure 1 of
Appellants’ invention on appeal.
Given the these teachings, we are of the view that Appellants’
purported improvement over the prior art represents no more than the
predictable use of prior art elements according to their established functions,
and thus would have been obvious to one of ordinary skill in the art. See
KSR, 550 U.S. at 417 (“[W]hen a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” (citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976))).
Appeal 2009-007345
Application 10/648,414

7
Moreover, we are not persuaded that combining the respective
familiar elements (e.g., peripheral device or printer, computer, browser, and
servers) of the cited references in the manner proffered by the Examiner
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” at the time of Appellants’ invention (see Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418)). Therefore, we find the Examiner’s proffered combination of
familiar prior art elements according to their established functions would
have conveyed a reasonable expectation of success to a person of ordinary
skill having common sense at the time of the invention.
Lastly, we note that Appellants have not rebutted the Examiner’s legal
conclusion of obviousness by showing that the claimed combination of
familiar elements produces any new function. Appellants have not provided
any factual evidence of secondary considerations, such as unexpected or
unpredictable results, commercial success, or long felt but unmet need.
Thus, when we take account of the inferences and creative steps that a
person of ordinary skill in the art would have employed, we find the
Examiner has articulated an adequate reasoning with a rational underpinning
that reasonably supports the legal conclusion of obviousness. Thus, we are in
accord with the Examiner that an artisan would have found it obvious to
apply Wolff’s web server peripheral to Asauchi and Skaanning. (Ans. 4-5).
Therefore, we find Appellants’ arguments unavailing regarding the
combinability of the cited references for essentially the same reasons
proffered by the Examiner in the Answer, and for the reasons discussed
above. Accordingly, we find the Examiner did not err by improperly
combining the Asauchi, Skaanning, and Wolff references under § 103.
Appeal 2009-007345
Application 10/648,414

8
With respect to the remaining two rejections under §103, our
reasoning discussed supra is similarly applicable.

Issue 2
We decide the question of whether the cited combination of references
would have taught or suggested communicating between a backend server
and a web server in a peripheral through a browser executing in a computer
coupled to the peripheral, within the meaning of representative claim 1.
(Supp. App. Br. 3).
Based upon our review of the record, we agree with the Examiner’s
findings with respect to the aforementioned limitation. (Ans. 7-8). In
particular, we find unpersuasive Appellants’ singular attack on the cited
references (Supp. App. Br. 3-5). See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). In addition, as admitted by Appellants, Skaanning
teaches a person can use a web browser to relay the content of messages
received at the web browser. (FF 1; see also Ans. 4).
However, Appellants also contend that Asauchi and Skaanning do not
teach or suggest sending a peripheral device HTTP message to the web
browser and to the backend server. (Supp. App. Br. 4-5). We note that the
Examiner relies on Wolff as teaching HTTP messages. (Ans. 8). We find
decision block 311 (Fig. 3B and col. 5, ll. 5-25) of Wolff clearly evidences
the notoriously well known use of the Hypertext Transfer Protocol (HTTP)
on the World Wide Web in association with a web browser. Wolff also
expressly teaches accessing a peripheral through a web browser. (Col. 8,
l. 11). The Examiner relies on Asauchi’s user support server system SV as
teaching or suggesting the claimed backend server. (Ans. 5; see also
Appeal 2009-007345
Application 10/648,414

9
Asauchi, Figs. 1-3, col. 5, ll. 4-21). The Examiner’s rejection is based on the
collective teachings of the cited references. Therefore, we find unavailing
Appellants’ arguments attacking Asauchi and Skaanning in isolation.
On this record, we find no reversible error in the Examiner’s
determination that the combination of the cited references would have taught
or suggested communicating between a backend server and a web server in a
peripheral through a browser executing in a computer coupled to the
peripheral, within the meaning of Appellants’ representative claim 1.

Issue 3
We decide the question of whether the cited combination of references
would have taught or suggested forwarding a peripheral device HTTP
message from a web server to a backend server. (Representative claim 1).
Appellants contend that Skaanning does not teach forwarding the
received message, only the content of the message. (Supp. App. Br. 4-5).
However, Appellants acknowledge that Skaanning teaches a person can use
a web browser to relay the content of messages received at the web browser,
but not that the web browser alone relays the received messages. (FF 2).
We conclude that Appellants’ representative claim 1 does not specify
or otherwise limit what entity (e.g., machine or person or both) performs the
step of forwarding.
Moreover, broadly providing an automatic way to replace a manual
activity, which accomplished the same result, is not sufficient to distinguish
over the prior art. In re Venner, 262 F.2d 91, 95 (CCPA 1958); Leapfrog
Enter., Inc., 485 F.3d at 1161. An improved product in the art is obvious if
Appeal 2009-007345
Application 10/648,414

10
that “product [is] not [one] of innovation but of ordinary skill and common
sense.” KSR, 550 U.S. at 421.
For these reasons, we find no reversible error regarding the
Examiner’s determination that the cited combination of references would
have taught or suggested forwarding a peripheral device HTTP message
from a web server to a backend server, within the meaning of representative
claim 1. (See Ans. 4, 9-10).

Issue 4
We decide the question of whether the cited combination of references
would have taught or suggested a web server executing in a peripheral
device. (Representative claim 1).
Appellants contend that although Wolff discloses a peripheral is
provided with a web server (FF 3), Wolff nevertheless teaches away from
the present invention because the combination would result in the web server
of the peripheral being coupled to the Internet for direct communication with
the backend server to enable the backend server to control the peripheral
remotely and iteratively obtain the necessary data for diagnosing the
peripheral. Thus, Appellants aver that the web server browser and its
operation would be superfluous and removed from the web system
altogether. (Supp. App. Br. 6).
Based upon our review of the record, we do not agree that Wolff
teaches away from Appellants’ claimed invention.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
Appeal 2009-007345
Application 10/648,414

11
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citation and internal quotation marks omitted). See also In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely
disclosing more than one alternative does not teach away from any of these
alternatives if the disclosure does not criticize, discredit, or otherwise
discourage the alternatives).
This reasoning is applicable here. Moreover, as pointed out by the
Examiner (Ans. 11-12), the test for obviousness is not whether the features
of a reference may be bodily incorporated into the structure of another
reference, but rather what the combined teachings of those references would
have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413,
425 (CCPA 1981). For at least these reasons, we find Appellants’ teaching
away argument unpersuasive.

Claims 1-3, 5-9, 12-14, and 16-20
For the reasons discussed above regarding Issues 1-4, we find no
reversible error regarding the Examiner’s obviousness rejection of
representative claim 1. Therefore, we sustain the Examiner’s rejection of
claim 1 and claims 2-3, 5-9, 12-14, and 16-20 which fall therewith. See
37 C.F.R. § 41.37(c)(1)(vii).

Issue 5 – claims 4 and 15
We decide the question of whether the cited combination of references
would have taught or suggested peripheral device functionality information
with a PostScript function interface in response to a call from a web server,
as recited in representative claim 4.
Appeal 2009-007345
Application 10/648,414

12
Appellants contend that “Webb only discloses a printer driver 55 that
may be implemented in PostScript.” (FF 4; Supp. App. Br. 7). Appellants
also contend that Webb discloses a print driver that does not respond to a
call from a web server executing in a peripheral. (Id. at 7-8).
However, we observe that the Examiner relies upon Webb for
teaching obtaining functionality information from a printer. (Ans. 6). While
Appellants aver that “the tool bar interface [of Webb] is not a web server”
(Supp. App. Br. 7), we note that Wolff’s Fig. 2 clearly teaches a web server
202 depicted inside a peripheral 200. Appellants again attack the references
in isolation, when the Examiner’s legal conclusion of obviousness is based
on the collective teachings of the cited references. (Supp. App. Br. 7-8).
Moreover, we are of the view that the Examiner’s proffered references
are a combination of familiar elements (i.e., a PostScript print driver where
printer configuration data is delivered to a printer interface) that would have
taught or at least suggested the disputed limitation of claim 4. On this
record, we find no reversible error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness. Therefore,
we affirm the Examiner’s § 103 rejection of claim 4 and claim 15 which
falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Issue 6 – claims 11 and 22
We decide the question of whether the cited combination of references
would have taught or suggested that peripheral device functionality
information in the peripheral device HTTP message would have included
data in XML format, within the meaning of representative claim 11.
Appeal 2009-007345
Application 10/648,414

13
Appellants aver that the portion of Lozano relied on by the Examiner
does not disclose communication from a peripheral, but rather to a client
program executing on a client computer coupled to a peripheral. (Supp. App.
Br. 8). Appellants restate their argument that the Examiner has relied on
impermissible hindsight in formulating the rejection. (Supp. App. Br. 9).
We find Appellants are again attacking the references in isolation,
when the Examiner’s legal conclusion of obviousness is based on the
collective teachings of the cited references. (See Ans. 15-16). We find that
Lozano clearly evidences the notoriously well known use of XML in the
context of the printer art. (Col. 10, ll. 60-62). We find Appellants’
arguments regarding hindsight unpersuasive for the reasons discussed supra.
On this record, we find no reversible error regarding the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness, as
articulated on pages 15 and 16 of the Answer. Accordingly, we affirm the
Examiner’s § 103 rejection of claim 11 and claim 22 which falls therewith.
See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 10 and 21
Because Appellants present no separate arguments for claims 10 and
21 (rejected by the Examiner as unpatentable over Asauchi, Skaanning,
Wolff, and Lozano), we deem these arguments waived. See 37 C.F.R.
§ 41.37(c)(1)(vii). Accordingly, we affirm the Examiner’s § 103 rejection of
claims 10 and 21.

Appeal 2009-007345
Application 10/648,414

14
DECISION
We affirm the Examiner’s § 103 rejections of claims 1-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

msc

MAGINOT, MOORE & BECK LLP
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS IN 46204