Ex Parte Otey et al

Patent Trials and Appeals Board

Aug 19, 2016

12915343 - (D) (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/915,343 10/29/2010
50441 7590 08/23/2016
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
FIRST NAMED INVENTOR
Ned Otey
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BLD9-2010-0027-US1 7447
EXAMINER
CHEN, HUO LONG
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
08/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@dbflaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NED OTEY and ADAM A. SWARTZ
Appeal2015-005326
Application 12/915,343
Technology Center 2600
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
NATHAN A. ENGELS, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-18, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Introduction
The present invention relates to printing systems. See generally Spec.
1. Claim 1 is exemplary:
1. An Automated Document Factory (ADP) system comprising:
a datacenter operable to receive a print work summary from a
client indicating print jobs scheduled for submission to the ADP
system, and to receive print jobs from the client; and
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Application 12/915,343
a tracking system including a memory, the tracking system
operable to determine differences between the print jobs received
from the client and the print jobs scheduled for submission as
indicated in the print work summary, to generate in the memory a
tracking report indicating the differences, and to provide notification
to the client when the tracking report indicates that a difference exists
between the print jobs received from the client and the print jobs
indicated in the print work summary.
References and Rejections
Claims 1-2, 7-8, and 13-14 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Tashiro (US Pub. 2007/0124421Al; May 31, 2007).
Claims 3-6, 9-12, and 15-18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tashiro and Fanberg (US 6,236, 993 Bl; May 22,
2001).
ANALYSIS
Anticipation
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
conclusion that the Examiner erred in finding Tashiro discloses "a datacenter
operable to receive a print work summary from a client indicating print jobs
scheduled for submission to the ADP [Automated Document Factory]
system," as recited in independent claim 1. 1 See App. Br. 7-8; Reply Br. 2-
3.
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
2
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Application 12/915,343
The Examiner finds with respect to Tashiro:
[The] Examiner views the selected documents that are to
be transmitted as print jobs scheduled for submission to the
ADP system (print work summary) because the documents are
selected to be transmitted to destinations which could be a
facsimile machine (Fig. I, item 161) which prints the received
fax data, and thus the selected documents are scheduled for
submission when the transmission button 937 is selected.
Ans. 5 (original emphases omitted); see also Final Act. 3, 5---6.
It is well established that "[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., Inc.
v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
omitted). Inherency can only be established when "prior art necessarily
functions in accordance with, or includes, the claimed limitations." In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
omitted).
We agree with Appellants the Examiner improperly maps the claimed
ADP system to two entirely different portions of the Tashiro disclosure for
the rejection. See Reply Br. 2-3. Specifically, the Examiner first maps the
claimed ADP system to Tashiro's data communication apparatus (Final Act.
5), and the claimed datacenter to Tashiro's controller device of Figure 3
(Ans. 4). See Reply Br. 2-3; Tashiro, Figs. 1-3, i-fi-19, 13-15. Under the first
mapping, the Examiner finds Tashiro teaches the claimed ADP system
comprises the claimed datacenter, as required by the claim. See Final Act. 5;
Ans. 4; Tashiro, Figs. 1-3, i-fi-19, 13-15. However, in order to satisfy the
claim requirement "a print work ... indicating print jobs scheduled for
submission to the ADP system," the Examiner changes the first mapping,
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Application 12/915,343
and maps the same claimed ADP system to Tashiro's facsimile machine-a
device separate and different from Tashiro's data communication apparatus.
See Ans. 4--5; Reply Br. 2-3; Tashiro, Fig. 1. Therefore, the Examiner has
not shown Tashiro expressly or inherently discloses the disputed claim
limitation, when the claimed ADP system is consistently mapped to
Tashiro's disclosure. 2
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner's rejection of claim 1, and corresponding
dependent claim 2. 3
Independent claims 7 and 13 recite claim limitations that are
substantively the same as the disputed limitation of claim 1. Therefore, for
similar reasons, we do not sustain the Examiner's rejection of independent
claims 7 and 13, and corresponding dependent claims 8 and 14.
Obviousness
The Examiner cites an additional reference for the obviousness
rejection of dependent claims 3---6, 9-12, and 15-18. The Examiner relies on
Tashiro in the same manner discussed above in the context of claim 1, and
2 We agree with Appellants that the Examiner's mere assertion that Tashiro
could "receive a print work summary from a client indicating print jobs
scheduled for submission to the ADP system" is insufficient for the
anticipation rejection. See Reply Br. 3.
3 If prosecution reopens, it is up to the Examiner to determine whether the
claims are obvious over the teachings of Tashiro alone, or Tashiro and
another reference.
4
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Application 12/915,343
does not rely on the additional reference in any manner that remedies the
deficiencies of the underlying anticipation rejection. See Final Act. 8-12.
Accordingly, we reverse the Examiner's obviousness rejection of
claims 3---6, 9-12, and 15-18.
DECISION
We reverse the Examiner's decision rejecting claims 1-18.
REVERSED
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