10086746 (B.P.A.I. May. 10, 2010)

Ex Parte Parry

Board of Patent Appeals and InterferencesMay 10, 2010

10086746 (B.P.A.I. May. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TRAVIS J. PARRY ____________ Appeal 2009-005033 Application 10/086,746 Technology Center 2100 ____________ Decided: May 10, 2010 ____________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and JAMES R. HUGHES, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant(s) seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 5, 8-12, 15-17, 20, 21, and 24-34. Claims 2-4, 6, 7, 13, 14, 18, 19, 22, and 23 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We Affirm. Appeal No. 2009-005033 Application 10/086,746 2 BACKGROUND Appellant’s invention is directed to providing security to printers and, more specifically, to filtering programs for preventing files with certain characteristics from being printed. (Spec. 2, Para. [0001]). Claim 1 is illustrative: 1. A printer, comprising: a processor; a printing component in communication with said processor; and a filtering program stored in a memory device or firmware of said printer and associated with said processor so as to evaluate a file received at said printer and control printing of said file by said printing component based on at least one prespecified characteristic from a packet including said file, wherein if said at least one prespecified characteristic is an undesirable characteristic processing of said file by aid printer is terminated and printing of said file by said printer is prevented, and wherein if said at least one prespecified characteristic is a desirable characteristic, processing of said file by said printer proceeds and printing of said file by said printer is conducted. The Examiner relies on the following prior art references as evidence of unpatentability: Kawamura US 5,731,882 Mar. 24, 1998 Rourke US 5,077,795 Dec. 31, 1991 Docter US 6,330,610 B1 Dec. 11, 2001 Appeal No. 2009-005033 Application 10/086,746 3 Appellant appeals the following rejections: 1. The Examiner rejected claims 1, 5, 8-12, 15-17, 20, 21, 26-28, and 30- 34 under 35 U.S.C. § 103(a) as unpatentable over the combination of Rourke and Docter. 2. The Examiner rejected claims 24, 25, and 29 under 35 U.S.C. § 103(a) as unpatentable over the combination of Rourke, Docter and Kawamura. GROUPING OF CLAIMS Based on Appellant’s arguments in the Brief, we will decide the appeal on the basis of claim 1.1 See 37 C.F.R. § 41.37(c)(1)(vii). APPELLANT’S CONTENTIONS Appellant does not contest the Examiner's finding (Ans. 3) that Rourke teaches or suggests a processor and printer. (See App. Br. 5-6). However, Appellant contends that the cited references, most notably Docter, fail to teach or suggest: “evaluating a file at a printer and controlling printing of the file by the printer based on a prespecified characteristic from a packet including the file, wherein processing of the file by the printer is terminated and/or printing of the file by the printer is prevented if the prespecified characteristic is an undesirable characteristic, and wherein processing of the file by the printer proceeds and/or printing of the file by the printer is conducted if the prespecified characteristic is a desirable characteristic.” (App. Br. 7)(Underline in original). 1 This decision considers only those arguments actually made. Arguments that Appellant could have made but chose not to make in the Brief are waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal No. 2009-005033 Application 10/086,746 4 ISSUE Based upon our review of the administrative record, we have determined that the following issue is dispositive in this appeal: Under §103, did the Examiner err in determining that the cited references taught or would have suggested evaluating a file, and based on a prespecified characteristic, either processing the printing of the file, or terminating processing and preventing printing of the file? FINDINGS OF FACT We adopt the Examiner’s findings. (Ans. 8-9, Final Office Act. 4-5). We add the following additional factual findings: 1. Docter teaches that computing devices include desktop or laptop computers, PDA’s, or devices containing embedded controllers or embedded processors. (Col. 3, ll. 24-30). 2. Docter teaches that the filtering system can be used with any type of data (e.g., text, graphics, or executable instructions) and with data received from any data source or sources. (Col. 3, ll. 33-40). 3. Docter teaches that in certain situations, filtered data 22 is a null set of data if filter 20 removes (i.e., filters out) all of the incoming data. In other situations, all incoming data may pass through filter 20 such that filtered data 22 contains all incoming data. (Col. 3, l. 65 – Col. 4, l. 2). 4. Docter teaches controlling transfer of information from one device to another. In particular, Docter teaches that data filter code filters received data based on a particular filter criteria. (Col. 10, ll. 30-34). Appeal No. 2009-005033 Application 10/086,746 5 ANALYSIS Based upon our review of the record, we find unconvincing Appellant’s argument that the Examiner’s proffered combination of Rourke and Docter does not teach or suggest: “evaluating a file at a printer and controlling printing of the file by the printer based on a prespecified characteristic from a packet including the file, wherein processing of the file by the printer is terminated and/or printing of the file by the printer is prevented if the prespecified characteristic is an undesirable characteristic, and wherein processing of the file by the printer proceeds and/or printing of the file by the printer is conducted if the prespecified characteristic is a desirable characteristic.” (App. Br. 7, ¶1). More specifically, we find that a broad but reasonable interpretation of claim 1 reads on the printer of Rourke, as modified by the filtering system of Docter, as proffered by the Examiner. (Ans. 8-9). In broadly but reasonably construing the scope of claim 1 in light of the Specification (including the claims), we particularly note that Appellant’s dependent claims 9 and 10 both broadly include a “file type” and a “user identifier” as elements that can each be both an “undesirable characteristic” and a “desirable characteristic.” We observe that Appellant’s arguments (App. Br. 8-10) fail to proffer any specific definition or meaning for these subjective terms regarding representative claim 1. Thus, we conclude that it is unclear to what extent, if any, the terms “undesirable characteristic” and “desirable characteristic” limit the metes and bounds of claim 1 in any meaningful way. Appeal No. 2009-005033 Application 10/086,746 6 Given this record, we adopt the Examiner’s finding that the filtering system of Docter suggests filtering data based upon “any number of filtering parameters or attributes.” (Ans. 5). Thus, it is our view that Docter teaches or suggests evaluating a file based on prespecified characteristics (parameters or attributes). (Id.). We further find that Docter teaches controlling the transfer of information of different types, from one device to another. (FF 1, 2, and 4). In particular, Docter teaches that data filter code filters received data based on a particular filter criteria. (FF 4). Thus, it is our view that the aforementioned teachings strongly suggest terminating (which in itself implies that the processing has started) processing of the claimed file. (Claim 1). This, coupled with the knowledge that a printer will not print a file if the data within the file is determined to be “null” (see FF 3), in our view strongly suggests the contested claim limitations. (Representative claim 1). We further agree with and adopt the Examiner’s rationale that it would have been obvious to one of ordinary skill in the art that a filtering system can either enable or disable functionality, and in the present case the enabled or disabled functionality is printing the file or terminating the process of printing the file, based upon the aforementioned findings. (Ans. 9). Thus, we find Appellant’s representative claim 1 represents, on this record, 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 Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly, it is our view that any purported differences between the prior art and the disputed limitations are insignificant enough so as to render Appellant’s claimed invention obvious over the cited references. Appeal No. 2009-005033 Application 10/086,746 7 Based on the record before us, we find the Examiner did not err in rejecting representative claim 1. Accordingly, we affirm the Examiner’s §103 rejection of representative claim 1. Claims 5, 8-12, 15-17, 20, 21, and 24-34 fall therewith.2 ORDER We affirm the Examiner’s § 103 rejections of claims 1, 5, 8-12, 15-17, 20, 21, and 24-34. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1) (2009). AFFIRMED pgc HEWLETT-PACKARD COMPANY Intellectual Property Administration 3404 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528 2 Regarding Rejection 2, Appellant argues that the third reference Kawamura fails to cure the deficiencies of Rourke and Docter. (App. Br. 9-10). Accordingly, this rejection falls with Rejection 1, for the same reasons discussed supra.