Ex Parte Salgado et al

Patent Trial and Appeal Board

Mar 24, 2016

12027556 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/027,556 02/07/2008
70537 7590 03/25/2016
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
FIRST NAMED INVENTOR
David Salgado
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.
056-0015 5084
EXAMINER
ONAT,UMUT
ART UNIT PAPER NUMBER
2194
MAILDATE DELIVERY MODE
03/25/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SALGADO, JONATHAN ALLAN EDMONDS,
MATTHEW FABRIZI, GREGORY FRUIN, ALAN K. ROBERTSON,
RAYMOND SABBAGH, RICHARD SCHWARTZ, and
GLENN K. SMITH
Appeal2014-003914
Application 12/027,556
Technology Center 2100
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003914
Application 12/027,556
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 7-12, 15-20, and 23-24, which constitute all
the claims pending in this application. 1 Claims 5-6, 13-14, and 21-22 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants' invention relates generally to a method of creating drivers
for use in a network, and corresponding apparatus and computer-readable
medium. Abstract.
Claim 1 is representative and reads as follows:
1. A method of creating drivers for use in a network, the
network including computers and devices, each of the drivers
created for one of the devices, comprising:
providing a platform, the platform including:
1) a plurality of selectable communication
components, each communication component relating to a type
of network communication associated with a type of device;
2) a plurality of selectable page description
language components, each page description language
component relating to a type of page description language
associated with a type of device;
3) a user interface component, the user interface
component having a plurality of selectable user interface
elements;
1 The real party in interest identified by Appellants is Xerox Corporation.
Appeal Br. 1.
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Application 12/027,556
4) a plurality of selectable workflow components,
each workflow component relating to a type of workflow to be
associated with a device; and
5) a plurality of selectable vertical feature
components;
determining a type of the device for which the driver is to
be created, the device being on the network;
determining device capabilities, device options, and
device constraints for the device;
based on the determined type of the device, selecting one
of the communication components, one of the page description
language components, and one of the workflow components;
based on the determined device capabilities, device
options and device constraints for the device, selecting particular
user interface elements from the user interface components; and
activating and instantiating each of the selected
components, thereby creating a driver suitable for the determined
type of device on the network,
wherein a plurality of different device-specific drivers are
individually created for a plurality of devices.
Appeal Br. 20 (App. A-Claims on Appeal).
References
Choi US 2005/0039193 Al Feb. 17,2005
Foehr US 2005/0246724 Al Nov. 3, 2005
Rejection on Appeal
Claims 1--4, 7-12, 15-20, and 23-24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Foehr and
Choi.
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Application 12/027,556
Issues on Appeal
Appellants' arguments in the Appeal Brief2 and Reply Brief present us
with the following issues:
1. Does Foehr teach "a plurality of selectable page
description language components, each page description
language component relating to a type of page
description language associated with a type of device," "a
plurality of selectable workflow components, each
workflow component relating to a type of workflow to be
associated with a device," and "a plurality of selectable
vertical feature components," as recited in claims 1, 9,
and 17?
2. Are Foehr and Choi combinable?
3. Is the rationale for combining Foehr and Choi legally
sufficient?
4. Does Foehr teach "wherein the one of the communication
components is selected further based on a type of
communication employed by the device," as recited in
claims 2, 10, and 18?
5. Does F oehr teach "wherein the one of the page
description language components is selected further
2 Our Decision refers to the Final Office Action (mailed July 19, 2013,
"Final Act."), Appellants' Appeal Brief (filed Oct. 21, 2013, "Appeal Br.")
and Reply Brief (filed Dec. 30, 2013, "Reply Br."), the Examiner's Answer
(mailed Nov. 14, 2013, "Ans."), and the original Specification (filed Feb. 7,
2008, "Spec.").
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Application 12/027,556
based on a page description language used by the
device," as recited in claims 3, 11, and 19?
ANALYSTS
We are not persuaded by Appellants' arguments that the Examiner has
erred. Appeal Br. 8-18; Reply Br. 1-16. We agree with, and adopt as our
own, the Examiner's findings and reasons as set forth in the Final Action
from which this appeal is taken (Final Act. 2-10) and the Examiner's
Answer (Ans. 2-13). For emphasis, we highlight specific arguments and
findings as follows.
Issue 1
Appellants argue Foehr does not teach or suggest a plurality of
selectable page description language components because Foehr describes a
terminal filter that converts job information into a page description language
(PDL) format; and fails to teach the terminal filter is selectable. Appeal
Br. 10. Appellants further argue Foehr fails to teach or suggest the terminal
filter relates to any type of PDL associated with any particular target device.
Reply Br. 7. Instead, as argued by Appellants, Foehr teaches the terminal
filter converts a structured format for the job information into a non-
structured PDL format for a printer that accepts such a PDL format. Id. The
Examiner finds F oehr discloses selecting filters in order to provide device
driver functionality, and further discloses one of the selectable filters is
responsible for converting job information into a PDL format. Final Act. 3;
Ans. 5. The Examiner further finds Foehr teaches the PDL format provided
by the selectable filter is specific to a target printer because Foehr teaches
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the PDL format provided by the selectable filter is a PDL format that is
accepted by the target printer. Ans. 5.
We are not persuaded by Appellants' argument. We agree with the
Examiner that Foehr teaches the filters are selectable. Ans. 5; see also
Foehr i-f 54 ("the filter logic 232 can select and chain the filters (234, 236,
... 238) together in different ways to produce different net effects,"
emphasis added). We further agree with the Examiner that Foehr teaches
one of the selectable filters (i.e., the terminal filter) converts job information
into a PDL format that is accepted by a target printer, and thus, teaches a
selectable page description language component relating to a type of page
description language associated with a type of device. Final Act. 3; Ans. 5.
Appellants additionally argue it is improper for the Examiner to allege
Foehr's filters teach both of the claimed "plurality of selectable workflow
components," and the claimed "plurality of selectable vertical feature
components," because such a claim construction effectively reads one or the
other of the positively recited claim terms out of the claims. Appeal Br. 1 O;
Reply Br. 9. The Examiner finds Foehr teaches a specific combination of
filters forms a workflow associated with a device, and thus, Foehr's filters
teach the claimed "selectable workflow components." Final Act. 4; Ans. 6-
7. The Examiner further finds F oehr also teaches some of the filters provide
vertical features, such as a watermark or a color conversion, and thus, some
of F oehr' s filters also teach the claimed "selectable vertical feature
components." Final Act. 4; Ans. 7-8. In other words, as found by the
Examiner, all of Foehr's filters are "selectable workflow components," and
some of Foehr's filters are also "selectable vertical feature components."
Ans. 8.
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We do not find Appellants' argument persuasive. The claims do not
require the "selectable workflow components" be separate and distinct from
the "selectable vertical feature components." Thus, under the broadest
reasonable interpretation, the claimed "selectable workflow components"
and "selectable vertical feature components" can read on a single structure
despite the fact the aforementioned claim features are separately recited.
See, e.g., Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231-32 (Fed.
Cir. 2011) (holding the claim elements "cutting box" and "dust collection
structure" were not required to be wholly separate structures). Contrary to
Appellants' argument, such an interpretation does not read out either claim
element. Instead, both claim elements are accounted for, even though some
individual filters disclosed in Foehr meet both elements. Therefore, we
agree with the Examiner that F oehr teaches the aforementioned claim
elements.
Issue 2
Appellants argue Foehr and Choi are incompatible and, thus, not
combinable. Appeal Br. 13; Reply Br 10. More specifically, Appellants
argue Choi fails to teach the generation of a device driver in any manner that
is compatible with the rearranging of filters disclosed in Foehr. Appeal
Br. 13-14; Reply Br. 11-12. The Examiner finds Foehr discloses arranging
a plurality of filters to form a device driver specific to a device, but Foehr
does not explicitly teach the filters providing a plurality of user interface
elements and selecting particular user interface elements based on device
capabilities, device options, and device constraints. Final Act. 5. The
Examiner further finds Choi cures the deficiencies of Foehr, and also finds
Foehr and Choi are analogous art because they are in the same field of
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endeavor: generating device drivers based on device capabilities, device
options, and device constraints. Final Act. 5---6; Ans. 8. The Examiner
further finds there are no compatibility issues between Foehr and Choi.
Ans. 9-10.
We do not find Appellants' argument persuasive. "[A] determination
of obviousness based on teachings from multiple references does not require
an actual, physical substitution of elements." In re Mouttet, 686 F. 3d 1322,
1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness
whether a secondary reference's features can be bodily incorporated into the
structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. Id. Thus,
Appellants' argument, even if correct, is not persuasive of Examiner error,
as we agree with the Examiner that the combination of Foehr and Choi
teaches all of the claimed features of claims 1, 9, and 17. Final Act. 3---6.
Issue 3
Appellants argue the Examiner's rationale for combining Foehr and
Choi is legally insufficient because: (a) the Examiner's rationale does not
support a random combination of the widely disparate teachings ofFoehr
and Choi and (b) the Examiner's rationale does not present proper evidence
proving the combination would have any reasonable expectation of success.
Appeal Br. 15-17; Reply Br. 13-15. The Examiner finds it would have been
obvious to one of ordinary skill in the art, at the time the claimed invention
was made, to modify Foehr based on Choi, and further finds the motivation
would be to reduce the development costs associated with the device drivers
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by further enhancing the selectable functions provided by Foehr's filters.
Final Act. 6; Ans. 10.
We do not find Appellants' argument persuasive. The Examiner has
provided a sufficient rationale for combining the cited references, and
Appellants have failed to rebut the Examiner's proffered rationale.
Therefore, for at least the reasons described above, we sustain the
Examiner's rejection of claims 1, 9, and 17, as well as claims 4, 7-8, 12, 15-
16, 20, and 23-24, which are not argued separately.
Issue 4
Appellants argue Foehr fails to teach a selection of a communication
component based on a type of communication employed by the device
because Foehr simply teaches any type of communication link may be used,
and Foehr fails to teach a selection of a communication component in the
process of creating a device driver using Foehr's filters. Appeal Br. 17-18;
Reply Br. 15. The Examiner finds Foehr teaches selecting a communication
filter based on the type of communication employed because Foehr teaches
device port logic implemented as a selectable filter responsible for
communication with target devices, and further teaches different
communication types are associated with different target devices. Final
Act. 6-7; Ans. 11.
We do not find Appellants' argument persuasive. Contrary to
Appellants' argument, we agree with the Examiner that Foehr teaches: (a)
different target devices utilizing different communication channels; (b)
device port logic sending the final output result to the target device; and ( c)
implementing the device port logic as a selectable filter. Ans. 11 (citing
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Foehr if 47). Accordingly, we sustain the Examiner's rejection of claims 2,
10, and 18.
Issue 5
Appellants argue Foehr fails to teach a selection of a PDL component
based on a PDL used by a device because Foehr simply teaches a conversion
to a PDL format may be used, and Foehr fails to teach a selection of a PDL
component in the process of creating a device driver using Foehr's filters.
Appeal Br. 18; Reply Br. 15. The Examiner finds Foehr teaches a selectable
filter converts job information into a PDL format. Final Act. 7; Ans. 12.
The Examiner further finds Foehr teaches the PDL format provided by the
selectable filter is specific to a target printer because Foehr teaches the PDL
format provided by the filter is a PDL format that is accepted by the target
printer. Ans. 12.
We do not find Appellants' argument persuasive for the reasons
previously described with respect to issue 1, and, specifically, with respect
to the element "a plurality of selectable page description language
components, each page description language component relating to a type of
page description language associated with a type of device," recited in
claims 1, 9, and 17. Accordingly, we sustain the Examiner's rejection of
claims 3, 11, and 19.
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 7-12, 15-20,
and 23-24 under 35 U.S.C. § 103(a).
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).
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AFFIRMED
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