Ex Parte North

Board of Patent Appeals and Interferences

Jul 29, 2008

10131880 (B.P.A.I. Jul. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANNAH CATHARINE NORTH
____________

Appeal 2008-1836
Application 10/131,880
Technology Center 2600
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Decided: July 29, 2008
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2008-1836
Application 10/131,880

STATEMENT OF THE CASE
Appellant invented a method, computer, computer-readable medium,
and a printer capable of selectively printing in color or monochrome. The
method, computer, computer-readable medium, and printer include the steps
of or structure for receiving a request to print a color document in color.
The color document is analyzed to determine if it meets a “color mode
override” (CMO) criteria, such as analyzing whether the document is an
email, a text file, or a draft. If the document meets a CMO criteria, the
printer will print the color document in monochrome. This method,
computer, computer-readable medium, and printer prevent color printing in
certain situations to reduce operating costs.1 Claim 1 is illustrative:
1. In a computer, a method of using a remote printer capable of
selectively printing a document in a color mode or in a monochrome
mode, the method comprising:

(a) receiving a request to print a color document in color;

(b) determining whether the color document meets pre-determined
criteria; and

(c) if the color document is determined to meet the pre-determined
criteria, then responding to the request by directing the printer to print
the color document in the monochrome mode.

The Examiner relies on the following prior art reference to show
unpatentability:
Watanabe US 2002/0122215 A1 Sep. 5, 2002
(filed Feb. 13, 2002)

1 See generally Spec. 4:5-7:23.
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The Examiner’s rejection is as follows:
Claims 1-26 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Watanabe.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs2 and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments, which Appellant could have made but did not make
in the Briefs, have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellant argues the claims as follows: (1) claims 1-14; (2) claims 15
and 16; (3) claims 17-24; and (4) claims 25 and 26 (App. Br. 5-11). Each
group will be separately addressed.

OPINION
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

2 We refer to the Appeal Brief filed January 9, 2007, and the Reply Brief
filed July 11, 2007, throughout this opinion.
3 We refer to the most recent Examiner’s Answer mailed July 7, 2007,
throughout this opinion.
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Application 10/131,880

Claims 1-14
Regarding representative independent claim 1,4 the Examiner’s
rejection finds that Watanabe discloses a method with every claimed feature
(Ans. 3). Appellant argues that Watanabe does not disclose printing the
image attached to the email. Specifically, Appellant argues the printing of
the email at steps S506 and S507 of Watanabe happens only if the user
selects PRINT and does not print the attachment. As such, Appellant asserts
the discussion of the attached image in Watanabe is not relevant because the
description does not relate to printing the email. Furthermore, Appellant
contends that even assuming the print request extends to the attachment to
the email, Watanabe does not teach the steps of receiving and responding as
recited in claim 1 (App. Br. 5-6; Reply Br. 2).
At the outset, we note that claim 1 recites “responding to the request
by directing the printer to print the color document in the monochrome
mode.” This limitation falls short of actively reciting the step of printing the
color document. Claim 1 does recite the step of “receiving a request to print
a color document in color.” Watanabe discloses in Figure 12 the steps of
preparing an attached image of an email for printing in either color or
monochrome (Watanabe, ¶¶ 94-102; Fig. 12). We find no other explanation
for preparing the image attached to the email in Watanabe for color or
monochrome printing unless there was some form of a request to print the

4 Appellant argues claims 1-14 together (App. Br. 5, 6, 8 and 9). Apart from
merely asserting that certain limitations in claim 7 are not found in
Watanabe (App. Br. 6), Appellant has not separately argued its patentability.
Also, other than referencing the discussion of claim 1, claims 12-14 have not
been separately argued with any particularity (App. Br. 8-9). Accordingly,
we select claim 1 as representative of this claim grouping. See 37 C.F.R. §
41.37(c)(1)(vii).
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image. Put another way, but for the receipt of the email, Watanabe’s system
would not initiate the steps to prepare the attached image for printing. We,
therefore, find that the initiation of the email reception processing in Figure
12 of Watanabe at steps S1201-1203 or receipt of the email with an attached
color image fully meets the recited “receiving a request to print a color
document” step of claim 1.
Watanabe also discloses in Figure 12 at step S1204 determining
whether an image (e.g., a color document) is attached to the received email.
Determining whether the email has a specific attachment or image also
includes determining whether a color document meets predetermined
criteria. Watanabe next shows in Figure 12 that the process includes
responding to the request to print a color document by executing procedures
(S1208) and eventually directing the printer to print the color document
(S407, S506, and S507) in monochrome (Watanabe, ¶¶ 94-101 and 112-115;
Figs. 4A, 5, and 12). While Watanabe discloses other steps occurring
between receiving the request to print and the response to the request by
directing the printer to print, claim 1 includes an open-ended transitional
phrase “comprising” and does not exclude additional and unrecited method
steps. Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1375 (Fed. Cir. 2004).
Watanabe therefore meets the step of “if the color document is determined to
meet the pre-determined criteria, then responding to the request by directing
the printer to print the color document in the monochrome mode.”
Lastly, Appellant argues that Watanabe does not disclose “a remote
printer” as recited in claim 1. In Appellant’s view, the printer is a part of the
facsimile machine and, therefore, cannot be remote from the computer (App.
Br. 6). While Watanabe discloses in Figure 1 a multi-purpose facsimile
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machine with a color printer, Watanabe also explicitly states the system can
be a plurality of devices (Watanabe, ¶ 212). This disclosure teaches the
option of the multi-purpose device being a system of separate devices
remote from each other. Thus, despite Appellant’s view that this disclosure
“falls far short of the clarity and detail required to establish that a computer
remote from the printer perform the acts of receiving, determining, and
responding recited in Claim 1” (Reply Br. 1), Watanabe discloses the
“remote printer” limitation of claim 1.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s anticipation rejection of representative claim 1 based on
Watanabe. Accordingly, we will sustain the Examiner’s rejection of claim
1, as well as claims 2-14 which fall with claim 1.

Claims 15 and 16
Representative independent claim 155 recites a computer readable
medium that executes the steps of: (1) receiving a request to print a color
document in color and (2) if the document meets a pre-determined criteria,
then responding to the request by prompting the user to verify that he or she
wishes to print the document in color. The Examiner finds that Watanabe
discloses the limitations of claim 15 (Ans. 6-7). Appellant argues that
Watanabe does not disclose that the user is prompted to set the soft switch or
prompted to verify the user wishes to print the document in color (App. Br.
9).

5 Appellant argues claims 15 and 16 together (App. Br. 9). Accordingly, we
select claim 15 as representative of this claim grouping. See 37 C.F.R. §
41.37(c)(1)(vii).
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As discussed previously, Watanabe discloses the step of receiving a
request to print a document in color, and we, hereby, incorporate the
previous discussion of claim 1 regarding this limitation by reference.
Additionally, Watanabe discloses in Figure 5 at step S503 that if a function
other than perusal has been designated the process includes a transitional
step to a submenu. Further, as a result of the transition to the submenu, the
user is then prompted at S506 to select a function, including a PRINT
option, which is executed at S507 (Watanabe, ¶¶ 113-115, Fig. 5). This
prompt to print at S506 is a verification that the user wishes to print the
document. If the user selected to print the document in color at the email
reception processing stage in Figure 12, it also follows that the prompt at
later steps S503 and S506 includes confirming or verifying that the user
wishes to print the document in color.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s anticipation rejection of representative claim 15 based on
Watanabe. Accordingly, we will sustain the Examiner’s rejection of claim
15, as well as claim 16 which falls with claim 15.

Claims 17-24
Representative independent claim 176 recites a method of receiving a
print job having the steps of directing the printer to print a document in
color, determining if a document described by the print job meets

6 Appellant argues claims 17-24 together (App. Br. 7-8). Apart from merely
asserting that certain limitations in claim 22 are not found in Watanabe,
Appellant does not separately argue its patentability. Accordingly, we select
claim 17 as representative of this claim grouping. See 37 C.F.R. §
41.37(c)(1)(vii).
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pre-determined criteria, and if the document is determined to meet the
criteria, then printing the document in monochrome. The Examiner finds
Watanabe discloses all the limitations found in claim 17 (Ans. 7). The
Appellant reiterates the argument that Watanabe does not teach printing the
image attached to the email (App. Br. 7-8). We refer to our previous
discussion of claim 1 regarding how Watanabe discloses receiving a print
job, including an image attached to an email, determining if the document
meets a predetermined criteria, and directing the printer to print the
document, including an image and, hereby, incorporate that discussion by
reference. Moreover, Watanabe discloses at step S507 actually printing the
document in monochrome if the document is determined to meet the criteria
(Watanabe, ¶ 115; Fig. 5). Additionally, as stated previously with respect to
claim 1, claim 17 similarly uses an open-ended phrase “comprising” and
does not exclude additional and unrecited steps to occur between the
receiving and printing steps.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s anticipation rejection of representative claim 17 based on
Watanabe. Accordingly, we will sustain the Examiner’s rejection of claim
17, as well as claims 18-24 which falls with claim 17.

Claims 25 and 26
Representative independent claim 257 recites a printer having an
apparatus capable of analyzing the print job to determine if the document is

7 Appellant argues claims 25 and 26 together (App. Br. 10-11).
Accordingly, we select claim 25 as representative of this claim grouping.
See 37 C.F.R. § 41.37(c)(1)(vii).
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likely an e-mail and a second apparatus capable of responding to the print
job by printing the document in monochrome if the document is determined
likely to be an e-mail. The Examiner finds that Watanabe discloses all the
limitations in claim 25 (Ans. 9). Appellant argues that Watanabe does not
disclose: (1) a printer with an apparatus capable of analyzing a print job to
determine if the document is likely an e-mail or (2) an apparatus capable of
responding to the print job by printing the document in monochrome if the
document is determined likely to be an e-mail (App. Br. 10-11).
Appellant contends that Watanabe does not disclose a printer with an
apparatus capable of analyzing a print job to determine if the document is
likely an email (App. Br. 10). As discussed with regard to claim 1, we find
that the initiation of the process in Figure 12 to format the image for printing
(S1201-1203) would not occur unless the apparatus received some form of a
request to print or a print job during email reception processing. As such
when the subsequent steps of Watanabe are performed in Figures 12, 4A and
5, the printer has received a print job. Additionally, Watanabe discloses in
Figure 1 that the multi-purpose facsimile receives various types of
documents, including faxes through a fax/modem 110 and scanned images
through a hand scanner 200. Watanabe, however, only performs the steps
shown in Figure 12 to emails (Watanabe, ¶¶ 94-102) and must, therefore,
include an apparatus capable of analyzing various print jobs to determine if
the document is likely an email, as opposed to a fax or scanned document, in
order to prepare an image for printing.
Appellant also challenges that Watanabe discloses an apparatus
capable of responding to the print job by printing the document in
monochrome if the document is determined likely to be an e-mail (App. Br.
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10-11). As discussed above with regards to claim 1, Watanabe discloses
steps S1207, S506 and S507 include an apparatus which responds to a print
job by printing the document in monochrome if the document is determined
to be an email with an attached image (Watanabe, ¶¶ 94-100 and 112-115;
Figs. 4A, 5 and 12). Furthermore, claim 25 includes the transitional
language “comprising” and does not exclude additional and unrecited steps
to occur between determination and response.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s anticipation rejection of representative claim 25 based on
Watanabe. Accordingly, we will sustain the Examiner’s rejection of claim
25, as well as claim 26 which falls with claim 25.
Finally, regarding claims 4, 9, 22, and 23, merely pointing out what a
claim recites is not considered an argument for separate patentability of the
claim (App. Br. 5 and 7). 37 C.F.R. § 41.37(c)(1)(vii). In any event, such
conclusory statements fall well short of rebutting the Examiner’s
anticipation rejection.

DECISION
The decision of the Examiner rejecting claims 1-26 is affirmed.
No 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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gvw

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