Ex Parte Patton et al

Board of Patent Appeals and Interferences

Jan 26, 2011

10454112 (B.P.A.I. Jan. 26, 2011)

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

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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.
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Application 10/454,112

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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.)
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Application 10/454,112

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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
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Application 10/454,112

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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.
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Application 10/454,112

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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.
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Application 10/454,112

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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