Ex parte Reilly

Board of Patent Appeals and Interferences

Dec 31, 2001

08470970 (B.P.A.I. Dec. 31, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL E. REILLY
_____________
Appeal No. 1999-0006
Application No. 08/470,970
______________
ON BRIEF
_______________
Before BARRETT, RUGGIERO, and LEVY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-9 and 11-40, which are all of the claims pending
in the present application. Claim 10 has been canceled. An
amendment filed September 23, 1997 after final rejection was
approved for entry by the Examiner.
The claimed invention relates to a centralized print
queue for a network printer system. Print job requests,
Appeal No. 1999-0006
Application No. 08/470,970
2
without a transmission of print job data which remains at a
host computer, are submitted by the host computer and stored
as print job information in the centralized print queue. When
the printer becomes available, the print job information in
the print queue permits the host computer with the actual
print job data to be accessed for transmission of the print
data to the printer, thereby reducing the amount of network
traffic.
Claim 1 is illustrative of the invention and reads as
follows:
1. A network printing system comprising:
(a) a plurality of host computers connected to a
network; and
(b) a printer connected to the network for receiving
and printing print jobs in response to print requests
from said host computers, wherein said printer includes a
localized print queue for storing print job information
for each of said host computers attempting to gain print
access to said printer, and wherein each of said host
computers communicates with said printer using an
application-layer uniform interface protocol.
The Examiner relies on the following prior art:
DeHart et al. (DeHart) 5,517,636 May 14, 1996
(filed Oct. 13,
1994)
Davidson, Jr. et al. (Davidson) 5,550,957 Aug. 27, 1996
(filed Dec. 07,
Appeal No. 1999-0006
Application No. 08/470,970
The Appeal Brief was filed January 23, 1998 (Paper No. 14). In1
response to the Examiner’s Answer dated March 3, 1998 (Paper No. 15), a Reply
Brief was filed May 4, 1998 (Paper No. 16) which was acknowledged and entered
by the Examiner as indicated in the communication dated May 8, 1998 (Paper No.
17).
3
1994)
Patel et al. (Patel) 5,566,278 Oct. 15, 1996
(filed Aug. 24,
1993)
Claims 1-9 and 11-40 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the Examiner offers
Davidson in view of DeHart with respect to claims 1-5, 7-9,
11-14, 16-19, 21-28, 30-37, 39, and 40, and adds Patel to the
basic combination with respect to claims 6, 15, 20, 29, and
38.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the1
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, and the
evidence of obviousness relied upon by the Examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision,
Appeal No. 1999-0006
Application No. 08/470,970
4
Appellant’s arguments set forth in the Briefs along with the
Examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the
Appeal No. 1999-0006
Application No. 08/470,970
5
particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as recited
in claims 1-9 and 11-40. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1073-74, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion, or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
Appeal No. 1999-0006
Application No. 08/470,970
6
in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the appealed independent claims 1, 7, 9,
25, and 32, the Examiner proposes to modify the network
printing system disclosure of Davidson. According to the
Examiner (Answer, page 3, which refers to the final Office
action mailed June 23, 1997, Paper No. 7), Davidson discloses
Appeal No. 1999-0006
Application No. 08/470,970
7
the claimed invention except for the use of an application-
layer uniform interface protocol to provide communication
between a host computer and a network printer. To address
this deficiency, the Examiner turns to DeHart which, as
interpreted by the Examiner, discloses “ . . . computer
programming to allow application-layer communications in a
computer environment independent of the system on which the
program is running . . . ” (final Office action, page 3). In
the Examiner’s view, the skilled artisan would have been
motivated and found it obvious to include a uniform interface
protocol as taught by DeHart in the system of Davidson “ . . .
in order to provide a uniform protocol for interfacing between
computers using network service protocols/ports and a
printer.” (Id.)
Appeal No. 1999-0006
Application No. 08/470,970
8
In response, Appellant’s arguments, aside from a general
assertion at page 12 of the Brief, do not attack the
combinability of Davidson and DeHart but, rather, focus on the
alleged lack of disclosure in Davidson of key features of the
appealed claims. Appellant initially contends (Brief, page
11) that the Examiner has misinterpreted the disclosure of
Davidson as providing a description of the claimed feature of
storing “print job information” in a localized print queue, a
feature which is present in all of the independent claims. In
making this assertion, Appellant refers to a specific
definition of the terminology “printer job information”
appearing at page 4, lines 11-23 of the specification, which
draws a distinction with actual print job data.
After careful review of the Davidson reference in light
of the arguments of record, we are in agreement with
Appellant’s position as stated in the Briefs. While the
Examiner is correct that claims are to be given their broadest
possible interpretation, any such interpretation must be
consistent with the specification. In the present factual
situation, Appellant’s specification (page 4, lines 11-23;
page 16, lines
Appeal No. 1999-0006
Application No. 08/470,970
9
3-6) provides a clear disclosure of the meaning of the
terminology “printer job information,” i.e., descriptive
properties related to the print job such as job name,
estimated print time, number of pages, etc., as opposed to the
actual print job data itself. An inventor’s definition and
explanation of the meaning of a term, as evidenced by the
specification, controls the interpretation of that claim term,
as opposed, for example, to dictionary definitions. Serrano
v. Telular Corp., 111 F.3d 1578, 1581, 42 USPQ2d 1538, 1541
(Fed. Cir. 1997).
In contrast to the language of the appealed claims, our
interpretation of the disclosure of Davidson coincides with
that of Appellant, i.e., only the transmittal of printer
status information from a printer to a host computer is
described. We find no basis for the Examiner’s conclusion
that “print job information,” as opposed to actual print job
data, is stored in a printer queue in Davidson, at least not
according to the definition provided by Appellant in the
specification.
We are further in agreement with Appellant that no basis
exists for the Examiner’s conclusion that Davidson provides
Appeal No. 1999-0006
Application No. 08/470,970
10
for a printer-initiated connection or job-execution connection
on printer availability, as required by independent claims 7,
25, and 32. In our view, as also asserted by Appellants
(Reply Brief, pages 5 and 6), the mere existence of two-way
Appeal No. 1999-0006
Application No. 08/470,970
11
communication capability, relied on by the Examiner, between a
host computer and printer in Davidson is not sufficient to
establish a teaching of a printer-initiated connection under
the specific conditions set forth in the appealed claims.
With respect to the DeHart and Patel references relied on
by the Examiner as providing a teaching of the use of an
application layer interface and print job characteristic data,
respectively, we find nothing in either of these disclosures
that would overcome the innate deficiencies of Davidson
discussed supra.
Appeal No. 1999-0006
Application No. 08/470,970
12
In view of the above discussion, it is our view that,
since all of the limitations of the appealed claims are not
taught or suggested by the prior art, the Examiner has not
established a prima facie case of obviousness. Accordingly,
the 35 U.S.C.
§ 103 rejection of independent claims 1, 7, 9, 25, and 32, as
well as claims 2-6, 8, 11-24, 26-31, and 33-40 dependent
thereon, cannot be sustained. Therefore, the decision of the
Examiner rejecting claims 1-9 and 11-40 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
JFR:hh
Appeal No. 1999-0006
Application No. 08/470,970
13
BURNS, DOANE, SWECKER & MATHIS
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404