Ex Parte Salgado et alDownload PDFPatent Trial and Appeal BoardMar 24, 201612027556 (P.T.A.B. Mar. 24, 2016) Copy Citation 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. 2 Appeal2014-003914 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. 3 Appeal2014-003914 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."). 4 Appeal2014-003914 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 5 Appeal2014-003914 Application 12/027,556 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. 6 Appeal2014-003914 Application 12/027,556 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 7 Appeal2014-003914 Application 12/027,556 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 8 Appeal2014-003914 Application 12/027,556 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 9 Appeal2014-003914 Application 12/027,556 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). 10 Appeal2014-003914 Application 12/027,556 AFFIRMED 11 Copy with citationCopy as parenthetical citation