Ex Parte Parry et al

Patent Trial and Appeal Board

May 18, 2016

10625241 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/625,241 07/22/2003
22879 7590 05/20/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Travis J. Parry
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.
82097213 8613
EXAMINER
MILIA, MARK R
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TRAVIS J. PARRY, BRETT GREEN, and
GREGORY E. PERKINS
Appeal2014-009481
Application 10/625,241 1
Technology Center 2600
Before JEAN R. HOMERE, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Hewlett Packard
Development Co. App. Br. 2. In an earlier appeal (2010-002851, decided
April 25, 2012), we affirmed the Examiner's rejections of claims 1-6, 27-
37, and 53-58. On July 20, 2012, we denied Appellants' request for
rehearing from the Decision.
Appeal2014-009481
Application 10/625,241
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 53---65. Claims 1-52 have been
canceled. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
Appellants' Invention
Appellants' invention is directed to a method and system for making
available to a client web content (102) stored on a memory module (110)
(e.g., flash drive) attached to a printing device consumable (120) (e.g., a
disposable toner cartridge), which is inserted in a printing device (130).
Spec. i-f 6, Fig. 1. In particular, when the consumable (120) is installed in the
printer (130), the web content (102) stored in the memory module (110) is
uploaded in the printer (130) such that a web server (135) embedded therein
can transmit a requested web content (102) to a client in response to a
request issued by the client. Id. i-fi-127-39, Fig. 3.
Illustrative Claim
Independent claim 53 further illustrates the invention as follows:
53. A method comprising:
receiving, in a printing device, a printing device consumable
that is storing web content on a memory module attached to the
printing device consumable;
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Application 10/625,241
uploading said web content from said memory module on said
printing device consumable to a memory in said printing device when
said consumable is installed in said printing device; and
with said printing device, receiving a request via a network to
which said printing device is connected for a web page about said
printing device to be transmitted via said network to a client issuing
said request; and,
in response to said request, transmitting said web page to said
client using an embedded web server that is embedded in said printing
device, said web page comprising said web content provided to said
printing device with said memory module attached to said
printing device consumable.
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Benjamin et al.
Phillips et al.
Richards et al.
Ohara
Ishizuka
us 6, 113,208
US 6,332,062 B 1
US 6,532,351 B2
US 2003/0187922 Al
US 2005/0240518 Al
Rejections on Appeal
Sept. 5, 2000
Dec. 18, 2001
Mar. 11, 2003
Oct. 2, 2003
Oct. 27, 2005
The Examiner rejects the claims on appeal as follows:
1. Claims 53, 59, and 63-65 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Benjamin and
Ohara.
2. Claims 54 and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Benjamin, Ohara, and Richards.
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Application 10/625,241
3. Claims 56-58 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Benjamin, Ohara, Richards, and
Ishizuka.
4. Claims 60 and 61 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Benjamin, Ohara, and Phillips.
5. Claim 62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Benjamin, Ohara, Phillips, and
Richards.
ANALYSIS
We consider Appellants' arguments seriatim as they are presented in
the Appeal Brief 10-19, and the Reply Brief 4--14.
Claims 53, 59, and 63-65
Appellants argue that the proposed combination of Benjamin and
Ohara does not teach or suggest web content that arrives on a consumable of
a printing device, and the web content is then output by the printing device
in a web page requested by a client, as required by claim 53. App. Br. 10-
14, Reply Br. 4--8. Appellants do not dispute the Examiner's finding that
Benjamin discloses a printer, upon inserting therein an ink cartridge with a
memory chip containing the URL to a manufacturer's website, the printer's
host processor can connect to the manufacturer's website in response to a
client request. Reply Br. 5. Appellants argue, however, because Benajmin's
URL is only used to access the manufacturer's webpage, and the URL is not
included in the webpage, it does not qualify as web content recited in the
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Application 10/625,241
claim. Id. Further, Appellants argue that Ohara does not cure the noted
deficiencies in Benjamin. According to Appellants, although Ohara teaches
a printer having stored in its ROM a web server program for accessing a
webpage, Ohara does not teach that the web content of a webpage was
delivered to the printer via an installed consumable. Id. at 7-8.
Therefore, Appellants submit that the proposed combination would
result, at best, in a printing device having a URL stored in a consumable
inserted therein to facilitate access to a webpage associated therewith and an
embedded server for serving up a webpage that provides status about the
consumable of the printer. App. Br. 12-13. These arguments are not
persuasive.
At the outset, we reiterate our position in our earlier Decision that the
URL stored in the ink cartridge memory inserted in the printer, as disclosed
in Benjamin, qualifies as web content that arrives on a consumable of the
printer, and that is then output by the printer in a web page requested by a
client. Dec. 6. 2 As previously stated, "the URL of a webpage qualifies as
content thereof because it is prominently displayed as part of the webpage."
Id. Therefore, because the URL disclosed in Benjamin arrives to the printer
via an installed consumable, and is also part of the manufacturer's webpage
transmitted to a client in response to the client request, Benjamin's
disclosure teaches or suggests the disputed limitations consistent with
Appellants' Specification describing web content to include any information
(e.g., link/URL) used as part of a web page. Spec. i-f 20.
2 See supra note 1.
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Application 10/625,241
Alternatively, to the extent that the URL disclosed in Benjamin is
insufficient to teach the claimed web content, we agree with the Examiner
that Appellants' arguments are tantamount to an attack against the references
individually, as opposed to the proposed combination thereof. Ans. 15. In
particular, we agree with the Examiner that Ohara's disclosure of a printer
having stored in its ROM an embedded web server program that makes a
local CPU provide to a client, upon request, a stored webpage containing
consumable information for the printer would complement the cited
Benjamin disclosure to teach the disputed limitations. Id. at 7, Ohara i-f 46.
One of ordinary skill in the art would have readily appreciated that only
routine skill would be required to modify Benjamin's teaching by storing in
the consumable memory the webpage associated with the link, as opposed to
the link itself because such a modification would have expedited the client's
access to the web content by eliminating the intermediate step of accessing
the webpage through a URL, thereby providing the client with direct access
to the web content. Accordingly, Appellants have not shown error in the
Examiner's rejection of claim 53 over the combination of Benjamin and
Ohara.
Regarding independent claims 59 and 65, Appellants reiterate
substantially the same arguments submitted for patentability of claim 53.
App. Br. 14--16. As discussed above, those arguments are not persuasive.
Accordingly, Appellants have similarly not shown error in the rejection of
claims 59 and 65.
Claims 60-63 (not argued separately) fall therewith. See 37 C.F.R.
§ 41.37(c)(l)(vii).
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Application 10/625,241
Regarding the rejection of claim 64, Appellants argue that the
combination of Benjamin and Ohara does not teach or suggest storing on the
memory module a web content interface for allowing access to web content
stored on the memory module. App. Br. 16-17, Reply Br. 11-12.
According to Appellants, although Benjamin discloses an interface for
accessing a URL stored on the ink cartridge memory, the disclosed interface
is not stored on the cartridge memory. Id. This argument is persuasive.
Although the Examiner correctly finds some kind of interface must be
provided to load to the printer the URL stored in the memory chip, the
Examiner has not shown that such interface necessarily resides on the
memory chip. Ans. 15. Appellants have therefore shown error in the
Examiner's rejection of claim 64 over the combination of Benjamin and
Ohara.
Claims 54-58
Regarding the rejection of claim 54, Appellants argue the combination
of Benjamin, Ohara, and Richards does teach or suggest storing purchaser-
specified web content on the memory module attached to a printing device
consumable. App. Br. 17-18, Reply Br. 12-13. In particular, Appellants
argue that Richards' disclosure of storing performance-related data or user
ID data on a memory module does not teach the disputed limitations. Id.
This argument is persuasive. Although Richards' disclosure of user ID data
helps identify the user, and the performance data helps identify the various
states of the printer consumable, the Examiner has not shown that the stored
data was in any way specified by the user. Ans. 9, 16. Accordingly,
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Appellants have shown error in the Examiner's rejection of claim 54, as well
as claims 55-58 depending therefrom.
DECISION
We affirm the Examiner's rejections of claims 53, 59---63, and 65.
However, we reverse the Examiner's rejections of claims 54--58, and 64.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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