Ex Parte RobsonDownload PDFPatent Trial and Appeal BoardSep 16, 201311749822 (P.T.A.B. Sep. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THOMAS ROBSON ____________________ Appeal 2011-003213 Application 11/749,822 Technology Center 2100 ____________________ Before JEAN R. HOMERE, KALYAN K. DESHPANDE and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003213 Application 11/749,822 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1-4, 6-9, 11-14, and 16-20. Claims 5, 10, and 15 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to node processing of variable information print jobs. Claim 1, reproduced below, is representative of the claimed subject matter: 1 A method comprising: receiving user input; creating a fixed data file and a text string based on said user input; supplying said fixed data file and said text string to at least one node within a system comprising a plurality of nodes; and executing said text string at said node to add variable data to said fixed data and create a variable information print file, wherein said executing of said text string comprises retrieving said variable data from a database within said system; and wherein said node is exclusively dedicated to only performing variable information processing. REFERENCE In rejecting the claims on appeal, the Examiner relied upon the following prior art: Oppenlander U.S. 2006/0288269 A1 Dec. 21, 2006 Appeal 2011-003213 Application 11/749,822 3 REJECTION Claims 1-4, 6-9, 11-14, and 16-20 are rejected under 35 U.S.C. § 102(e) as being anticipated by Oppenlander. Ans. 4. APPELLANT’S CONTENTIONS Appellant contends that: 1. Oppenlander fails to disclose (i) user input; and (ii) that “[s]aid node is exclusively dedicated to only performing variable information processing,” as required by independent claims 1, 6, 11, 16, and 20. App. Br. 9-13. 2. Oppenlander’s “application programming interface does [not]1 imply action by a user but rather merely indicates programmatic access is available,” such that the limitations of claims 2, 7, 12, and 17 are not disclosed. App. Br. 13. 3. The Examiner’s failure to provide evidence that “[o]pen document format is just XML based documents . . . ” renders the rejection of claims 3, 8, 13, and 18 improper. App. Br. 14. 4. Oppenlander fails to disclose a text string comprising an extensible mark-up language (XML) file as recited by claims 4, 9, 14, and 19. App. Br. 14-15. 1 We presume that Appellant intended to contend that Oppenlander’s API does not disclose the indicated subject matter of user input and the omission of the word “not” was a clerical or typographical error. Appeal 2011-003213 Application 11/749,822 4 ISSUES ON APPEAL Based on Appellant’s arguments in the Appeal Brief (App. Br. 9-15), the issues presented on appeal are whether Oppenlander discloses the disputed claim limitations set forth above. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions as to all rejections. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following arguments for emphasis. Claims 1, 6, 11, 16, and 20 Appellant contends that “[t]here is no indication of any user input whether through the cited API or otherwise in Oppenlander.” App. Br. 10. Appellant argues that Oppenlander’s application programming interface (API) teaches only “an interface implemented by a software program to enable interaction with other software,” but fails to specifically disclose user input. App. Br. 9-10. We disagree. The Examiner finds that Oppenlander’s Fig. 2, element 202 and [0089] teaching that the API receives Form Types to be printed discloses the disputed limitation of receiving user input. Ans. 4. Appellant fails to address why, contrary to the Examiner’s findings, the disclosed Form Types is not Appeal 2011-003213 Application 11/749,822 5 equivalent to and therefore describe the disputed user input. Furthermore, Appellant’s Specification does not provide a definition of user input, only describing that “user input 100 comprises an inquiry to obtain the variable data from the database, such that when the method creates the text string in item 102, the text string includes the inquiry.” Spec. [0021]. While one embodiment includes a graphic user interface (GUI) for receiving user input (Spec. [0006]), neither does claim 1 recite a GUI nor will we import such a limitation into the claim. Furthermore, although Appellant proffers a definition of API that does not mention an input (App. Br. 10), we find that one skilled in the art would have appreciated and understood that an API supports communication between programs2 thereby including the exchange or input of data from one to another. Therefore, giving the claim language its broadest reasonable interpretation consistent with the Specification3 and in the absence of sufficient evidence or argument to the contrary, we find no reversible error in the Examiner’s reliance on Oppenlander’s teaching that the API receives Form Types to be printed as disclosing the disputed step of receiving user input. Appellant further contends that Oppenlander’s mapper sub-system does not perform variable information process but only provides normalization of field names among document. App. Br. 10. Appellant further argues that the “mapper sub-system cannot satisfy the claimed requirement that ‘[s]aid node is exclusively dedicated to only performing 2 Application program interface: A language that enables communication between computer programs, in particular between application programs and control programs. McGraw-Hill Dictionary of Electrical and Computer Engineering. New York: McGraw-Hill, 2004. 3 See In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Appeal 2011-003213 Application 11/749,822 6 variable information processing . . . ’ since the mapper sub-system of Oppenlander also provides the functions of normalizing field names.” App. Br. 11. The Examiner responds that Oppenlander teaches that mapper subsystem 22, i.e., a “node”, converts uploaded forms in file management sub-system 40. Ans. 7. Since Oppenlander’s sub-system mapper uses variable data overlaid onto a fixed file, the Examiner finds that the sub- system mapper performs the function of, and thereby discloses, variable information processing. Id. We agree with the Examiner’s findings that Oppenlander discloses a node performing variable information processing. Appellant further argues that the mapper sub-system also normalizes field names and therefore is not “exclusively dedicated to only” performing variable information processing. App. Br. 11. However, because Appellant has failed to provide sufficient evidence or explanation addressing why normalization of field names cannot be part of variable information processing, we find no reversible error based on this contention. Therefore, we find no error in the Examiner’s finding that Oppenlander discloses the disputed limitation of wherein said node is exclusively dedicated to only performing variable information processing. For the reasons supra we find that the Examiner did not err in rejecting claim 1 under 35 U.S.C. § 102(e) as being anticipated by Oppenlander. Because Appellant’s additional contentions of error in connection with independent claims 6, 11, 16, and 20 (App. Br. 11-13) are mere general allegations that the respective claims define a patentable invention without specifically pointing out how the language of the claims Appeal 2011-003213 Application 11/749,822 7 patentably distinguishes over Oppenlander4, for the same reasons we find no error in the rejection of these claims. Claims 2, 7, 12, and 17 Appellant contends that Oppenlander’s API does not disclose action by a user. However, the subject claims do not require action by a user, only that “user input” comprise an inquiry. App. Br. 13. Because Appellant’s argument is not commensurate in scope with the claims, it is not persuasive of Examiner error. Furthermore, as discussed supra, Appellant fails to show error in the Examiner’s finding that Oppenlander’s Form Types are equivalent to and therefore disclose user input. Therefore, Appellant’s arguments of Examiner error are unpersuasive. Claims 3, 8, 13, and 18 Appellant contends that the Examiner’s failure to provide evidence that “[o]pen document format is just XML based documents . . .” renders the rejection of claims 3, 8, 13, and 18 improper. App. Br. 14. We disagree. Claim 3 recites that the “fixed data file comprises one of a portable document format (PDF) and an open document format (ODF) file.” That is, the fixed data file is either a PDF or an ODF file. Therefore, Appellant’s argument that the rejection is improper because Oppenlander fails to disclose an ODF file is, absent a showing that Oppenlander also fails to 4 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”) Appeal 2011-003213 Application 11/749,822 8 disclose a PDF file, incomplete and therefore not commensurate in scope with the claim. Furthermore, in rejecting claim 3 the Examiner cites Oppenlander [0061] (Ans. 5-6) which further teaches that “forms can be uploaded in electronic format (e.g. .pdf),” thereby disclosing that the fixed data file may be a PDF. Therefore, absent sufficient evidence or argument to persuade us that Oppenlander fails to disclose both PDF and ODF files as a fixed data file, we find no reversible error in the rejections of claims 3, 8, 13, and 18. Claims 4, 9, 14, and 19 Appellant contends that the “[t]here is no indication of a text string much less an XML file being taught by the applied prior art reference.” App. Br. 14-15. Appellant’s contention is unpersuasive of error because it amounts to no more than a naked assertion that the corresponding elements were not found in the prior without explaining why these teachings fail to disclose the disputed limitations. In rejecting claim 1 the Examiner finds that Oppenlander’s file opening step 212, processing step 214 and retrieval step 216 disclose the claimed text string. Furthermore, the portion of Oppenlander cited by the Examiner in rejecting the subject claims teaches an “XML document” as an example of a valid Forms request to the server. Oppenlander [0056.] Therefore, in the absence of sufficient evidence or argument to the contrary, we find the Examiner’s analysis to be reasonable and agree that Oppenlander discloses the disputed limitations of claims 4, 9, 14, and 19. Appeal 2011-003213 Application 11/749,822 9 CONCLUSIONS 1. Oppenlander discloses the disputed claim limitations. 2. The Examiner has not erred in rejecting claims 1-4, 6-9, 11-14, and 16-20 under 35 U.S.C. § 102(e) as being anticipated by Oppenlander. DECISION The Examiner’s decision to reject claims 1-4, 6-9, 11-14, and 16-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation