Ex Parte Patton et alDownload PDFBoard of Patent Appeals and InterferencesJan 26, 201110454112 (B.P.A.I. Jan. 26, 2011) Copy Citation 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. 10/454,112 06/03/2003 Ronnie Neil Patton SLA1352 2578 7590 01/26/2011 Gerald W. Maliszewski P.O. Box 270829 San Diego, CA 92198-2829 EXAMINER KASSA, HILINA S ART UNIT PAPER NUMBER 2625 MAIL DATE DELIVERY MODE 01/26/2011 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 RONNIE NEIL PATTON and TANNA MARIE RICHARDSON ____________ Appeal 2009-007150 Application 10/454,112 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, MARC S. HOFF, and KARL D. EASTHOM, Administrative Patent Judges. EASTHOM, 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 2009-007150 Application 10/454,112 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 1, 2, 4-17, and 19-32. (App. Br. 3.)2 Claims 3 and 18 were cancelled. No other claims are pending. (Id.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Disclosed Invention3 The disclosed invention includes a method for delivering document print instructions to a printer. (Spec. 24, ll. 7-8.) In this method, a printer sends a device-specific job control form (i.e., a device-specific printer- controller form) to a user in response to a request from the user. (Spec. Fig. 2.) The device-specific printer-controller form is a “template containing device-specific parameters requested for job control.” (Spec. 11, ll. 11-13.) The user then changes the values of the parameters. (Spec. 11, ll. 14-16.) Next, the user sends by email the completed or populated printer-controller form and the document that the user wants to print to the printer. (Spec. 11, ll. 18-20.) Upon receipt of the email from the user, the printer prints each file according to the instructions in the completed printer-controller form. (Spec. 11, ll. 21-24.) Exemplary claim 1 follows: 1. In a system of network-connected devices, a method for delivering document print instructions to a printer, the method comprising: requesting a first printer-controller form; 2 Appellants’ Appeal Brief (filed September 23, 2008) (“App. Br.”) and Reply Brief (filed January 13, 2009) (“Reply Br.”), and the Examiner’s Answer (mailed December 19, 2008) (“Ans.”) are referenced here. 3 The ensuing description constitutes findings of fact. Appeal 2009-007150 Application 10/454,112 3 accepting a first email with an attached first printer-controller form, which is a template of first printer-specific document printing parameter fields associated exclusively with a network-connected first printer; populating printer-controller form parameters; attaching a document and the first printer-controller form to a second email; sending the second email, with attachments, to the first printer without the use of an intermediary program selected from a group consisting of a printer driver and a print spooler; and, printing the attached document at the first printer in response to the printer-controller form parameters. The Examiner relies on the following prior art references: Lester US 2003/0174357 Sept. 2003 Utsunomiya US 7,136,180 Nov. 2006 Sato US 7,268,907 Sept. 2007 The Examiner rejected claims 1, 2, 4, 5, 7-9, 11, 13, 15-17, 19, 22-24, 26, 28-29, 30, and 32 as anticipated under 35 U.S.C. § 102(e) based on Sato.4 The Examiner rejected claims 12, 20, and 27 as obvious under 35 U.S.C. § 103(a) based on Sato and Utsunomiya. The Examiner rejected claims 6, 10, 14, 21, 25, and 31 as obvious under 35 U.S.C. § 103(a) based on Sato, Utsunomiya and Lester. 4 The 35 U.S.C. § 102(e) rejection headings listed by the Examiner and Appellant conflict with the Examiner’s stated rejections of claims 13 and 27. (Compare Ans. 3 and App. Br. 7 with Ans. 7, 16.) Appeal 2009-007150 Application 10/454,112 4 ISSUE Appellants’ responses to the Examiner’s positions present the following issue: Did the Examiner err in finding that Sato discloses receiving and accepting a “printer-controller form, which is a template of first printer- specific document printing parameter fields associated exclusively with a network-connected first printer” and “populating printer-controller form parameters” as recited in independent claim 1, and as similarly recited in independent claims 15, 16 and 32? FINDINGS OF FACT (FF) Sato 1. Sato discloses a mailer that forms an email having a text box. (Col. 12; ll. 50-54; Fig. 3.) An “operator inputs control sentences for the printing and the paper ejecting process into the text box.” (Col. 13, ll. 6-9.) Figure 5 is a diagram showing a format of the control sequences which can be inputted by an operator. (Col. 2, ll. 57-58.) 2. The operator also designates files to attach to the email. (Col. 12, l. 60 to col. 13, l. 5.) The email with the attached files is then sent to a printer, which receives the email and prints the attached files in accordance with the control sentences provided by the operator. (Fig. 6.) PRINCIPLES OF LAW The Examiner bears an initial burden of factually supporting an articulated rejection. In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992). “It is axiomatic that anticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim.” In re King, 801 Appeal 2009-007150 Application 10/454,112 5 F.2d 1324, 1326 (Fed. Cir. 1986). On appeal, Appellants may rebut the Examiner’s findings and reasoning with opposing evidence or argument. ANALYSIS Appellants assert that Sato does not disclose receiving and accepting a “printer-controller form, which is a template of first printer-specific document printing parameter fields associated exclusively with a network- connected first printer” and “populating printer-controller form parameters” as recited in independent claim 1, and as similarly recited in independent claims 15, 16, and 32. (App. Br. 8-11.) The Examiner finds that Sato discloses the claimed “printer-controller form” as part of a mailer. (Ans. 4.) More particularly, the Examiner finds that “Sato discloses calling or creating a new email from the mail software i.e. considered as the template to enter and populate the email form.” (Ans. 23.) As explained by Appellants, however, the email created by the mailer is not the claimed “printer-controller form” because it is not “a template of first printer-specific document printing parameter fields associated exclusively with a network-connected first printer,” as required by claims 1, 15, 16, and 32. (App. Br. 9; Reply Br. 2; accord FF 1.) Rather, the mailer of Sato creates an email having, inter alia, a blank text box. (FF 1.) An operator inputs control sentences for printing the paper into the text box 309 based on certain formats allowed for all printers according to Figure 5. (See FF 1.) The Examiner fails to show how the blank text box created by the mailer in Sato can contain printer-specific printing parameter fields that are associated exclusively with a network-connected first printer. Appeal 2009-007150 Application 10/454,112 6 Contrary to the Examiner’s reliance on Figure 5 of Sato (Ans. 21-22), Sato’s email, which has a blank text box for subsequent entry by an operator of the commands listed in Figure 5, does not satisfy the printer-specific template required by independent claims 1, 16 and 32. (See App. Br. 10; Reply Br. 2; accord FF 1.) That is, for example, contrary to the Examiner’s rationale (Ans. 21-22), the fact that an operator can choose to enter a request for a watermark in a certain format into the blank text box of a previously sent, generic “first email,” does not render that email “a first email with an attached first printer-controller form, which is a template of first printer- specific document printing parameter fields associated exclusively with a network-connected first printer specific template,” as required by independent claim 1, and as similarly required in the other independent claims. On one hand, the Examiner indicates that this subsequent entry of the operator choices in Sato corresponds to the step of “populating printer- controller form parameters” in claim 1 according to the Examiner’s rejection. (Ans. 4.) On the other hand, the Examiner also indicates that an operator’s act of populating the form in Sato renders the form “a template of first printer-specific document printing parameter fields associated exclusively with a network-connected first printer specific template.” (See Ans. 22 (“the parameters inputted by user related to specific form”).) Contrary to this latter rationale, according to claim 1, the form must have printer-specific fields apart from the populated data in the form. Similar remarks apply to independent claims 15, 16, and 32. Appeal 2009-007150 Application 10/454,112 7 Therefore, we will not sustain Examiner’s anticipation rejection, based on Sato, of independent claims 1, 15, 16, and 32, and claims 2, 4, 5, 7- 9, 11, 17, 19, 22-24, 26-29, 30, and 32 dependent therefrom. We also will not sustain the obviousness rejections of claims 6, 10, 12, 14, 20, 21, 25, 27, and 31 based on the additional references of Utsunomiya and Lester, because the Examiner does not rely on these additional references to cure the above-noted deficiencies in Sato. CONCLUSION The Examiner erred in finding that Sato discloses receiving and accepting a “printer-controller form, which is a template of first printer- specific document printing parameter fields associated exclusively with a network-connected first printer” and “populating printer-controller form parameters” as recited in independent claim 1, and as similarly recited in independent claims 15, 16 and 32. DECISION We reverse the Examiner’s decision rejecting claims 1, 2, 4-16, 17, and 19-32. REVERSED KMF Gerald W. Maliszewski P.O. Box 270829 San Diego, CA 92198-2829 Copy with citationCopy as parenthetical citation