Ex Parte Schell

Board of Patent Appeals and Interferences

May 16, 2011

10627110 (B.P.A.I. May. 16, 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.
10/627,110 07/25/2003 Harry Michael Schell 030089 (9400-31) 3761
39072 7590 05/17/2011
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
RIES, LAURIE ANNE
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
05/17/2011 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 HARRY MICHAEL SCHELL
____________

Appeal 2009-010110
Application 10/627,110
Technology Center 2100
____________

Before JOHN A. JEFFERY, CAROLYN D. THOMAS, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2-10 and 12-21. Claims 1 and 11 have been canceled.
App. Br. 13-14. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Appellant’s invention routes print files in a computer system. See
generally Spec. 1. Claims 6 and 21 are reproduced below with the key
disputed limitations emphasized:
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6. A method of routing print files in a computer system, the
method comprising:
evaluating content of at least one print file based on a routing
policy, wherein the print file is configured by an application for
printing on a printer device; and
selectively routing the print file based on the evaluated content of
the at least one print file to a non-printer device instead of to a printer
device in response to the evaluated content of the print file.

21. A method of routing print files in a computer system, the
method comprising:
searching content of a print file to identify one or more keywords
that are defined by a routing policy, wherein the print file is
configured by an application the printing on a printer device; and
selectively renaming the print file based on identifying the one or
more keywords in the print file instead of routing the print file to a
printing device.

The Examiner relies on the following as evidence of unpatentability:
Tanaka US 2004/0001223 A1 Jan. 1, 2004
(filed Apr. 25, 2003)

Madison US 2004/0083273 A1 Apr. 29, 2004
(filed Jan. 18, 2002)

Digate US 2004/0161080 A1 Aug. 19, 2004
(filed Feb. 14, 2003)

Berard US 6,906,817 B1 June 14, 2005
(filed June 23, 2000)

THE REJECTIONS
1. The Examiner rejected claims 2-4, 6, 7, 12-14, 16, and 17 under
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35 U.S.C. § 103(a) as unpatentable over Tanaka. Ans. 4-6.1
2. The Examiner rejected claims 5 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Tanaka and Madison. Ans. 6-7.
3. The Examiner rejected claims 8 and 18 under 35 U.S.C. § 103(a)
as unpatentable over Tanaka and Digate. Ans. 7-8.
4. The Examiner rejected claims 9, 10, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Tanaka and Berard. Ans. 8-9.
5. The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Berard, Tanaka, and Madison. Ans. 9-11.

THE OBVIOUSNESS REJECTION OVER TANAKA
Regarding independent claim 6, the Examiner finds that Tanaka
discloses all the recited limitations, except for evaluating the contents of a
print file based on a routing policy. Ans. 4-5. Specifically, the Examiner
finds that Tanaka’s discussion of (1) analyzing the setting file maps to
evaluating a print file’s contents, and (2) uploading data contained in the
setting file to a computer through a display maps to selectively routing the
file based on the evaluated content. Ans. 4-5, 11-12.
Appellant argues, among other things, that Tanaka’s print file is not
selectively routed to a non-printer device. App. Br. 8; Reply Br. 3-4.
The issue before us, then, is as follows:

1 Throughout this opinion, we refer to (1) the Appeal Brief filed January 5,
2009; (2) the Examiner’s Answer mailed February 5, 2009; and (3) the
Reply Brief filed April 3, 2009.
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ISSUE
Under § 103, has the Examiner erred in rejecting claim 6 by
finding that Tanaka would have taught or suggested selectively routing a
print file based on the evaluated print file’s content to a non-printer device?

FINDINGS OF FACT (FF)
1. Tanaka discloses the operations of personal computers 10 and 20
and the operations of a printer server 100 in a printing service system. Each
personal computer (e.g., 10 and 20) has an installed client application for
placing a printer order from the printer server 100. Tanaka, ¶¶ 0030-31,
0037-38; Figs. 1, 4, 5.
2. Tanaka teaches a personal computer (10 or 20) sends a setting file
(e.g., setting file A and B) to printer server 100 at S10. Setting file A
contains “magazine A” as the distribution route information, “privilege
service 1” as the privilege service name, and “Jan. 1 to 10, 2002” as the
privilege service’s effective period. Tanaka, ¶¶ 0039, 0042; Figs 1, 2, 4.
3. Tanaka analyzes the setting file using the setting file analysis unit
110 to obtain information at S50. The information includes the distribution
route of the client application installed in the personal computer, the content
of the privilege service(s) to the user, and the effective period of the
privilege service(s). Tanaka, ¶¶ 0040, 0044; Figs. 3, 5.
4. Tanaka’s service provision unit 130 selects the distribution route
service(s) and privilege service(s) according to the distribution route and
privilege information obtained by the setting file analysis unit 110. For
setting file A, the selected distribution route services include “1 free print
per 10 prints” and “displaying a banner advertisement of the magazine A”
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and the selected privilege service includes “5 free prints.” Tanaka,
¶¶ 0044-45; Figs. 2, 5.
5. Tanaka then displays the selected distribution route and privilege
service(s) on a web page at step S60. Tanaka, ¶¶ 0044-45; Figs. 5-6.

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 6 which calls for, in pertinent
part, selectively routing the print file based on the evaluated print file’s
content to a non-printer device. Tanaka discloses a personal computer’s (10
or 20) and the printer server’s (100) operations for a printing service system.
FF 1. Tanaka teaches a personal computer (e.g., 10) sends a setting file
(e.g., setting file A) to the printer server (e.g., 100) at S10, and the setting
file is analyzed at S50. FF 2-3. In particular, Tanaka analyzes the setting
file to obtain information, including the client application’s distribution
route, the content of the privilege service(s) to the user, and the effective
period of the privilege service(s). See FF3. A service provision unit then
displays the selected distribution route service(s) and the selected privilege
service(s) on a web page. See FF 5.
For example, Tanaka teaches a setting file A contains “magazine A”
as the distribution route information, “privilege service 1” as the privilege
service name, and “Jan. 1 to 10, 2002” as the privilege service’s effective
period. See FF 2. After analyzing this file (see FF 3), a service provision
unit selects the distribution route services (e.g., “1 free print per 10 prints”
and “displaying a banner advertisement of the magazine A”) and the
privilege service (e.g., “5 free prints”) and displays a web page that includes
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the content of the selected distribution route and privilege services (see FF
4-5). Notably, the content of the selected distribution route and privilege
services – not the setting file – is sent for display on or routed to the web
page. See id. Thus, even assuming, without deciding, that Tanaka’s setting
file is a print file, Tanaka does not teach or suggest routing this setting file to
a non-printer device based on the evaluated content as claim 6 requires.
Rather, at best, Tanaka teaches routing only a portion of the setting file’s
contents (e.g., “magazine A”) to a non-printer device. See id.
For the foregoing reasons, Appellant has persuaded us of error in the
obviousness rejection of: (1) independent claim 6; (2) independent claim 16
which recites commensurate limitations; and (3) dependent claims 2-4, 7,
12-14, and 17 for similar reasons.

THE OBVIOUSNESS REJECTIONS OF TANAKA AND MADISON,
TANAKA AND DIGATE, TANAKA AND BERARD

Claims 5 and 15 are rejected under § 103 over Tanaka and Madison;
claims 8 and 18 are rejected under § 103 over Tanaka and Digate; and
claims 9, 10, 19, and 20 are rejected over Tanaka and Berard. Ans. 6-9.
Claims 5, 8-10, 15, and 18-20 depend from claim 6 or 16. For the reasons
discussed above regarding claims 6 and 16, we are also persuaded that the
Examiner erred in rejecting claims 5, 8-10, 15, and 18-20. Additionally,
Madison, Digate, and Berard have not been relied upon to teach the
selectively routing step (Ans. 6-9) and do not cure the above-discussed
deficiencies. Since this issue is dispositive of our reversal of the Examiner’s
rejection, we need no address Appellant’s other arguments (App. Br. 9-10).

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THE OBVIOUSNESS REJECTION OVER BERARD, TANAKA, AND MADISON
Independent claim 21 differs in scope from independent claim 6. The
Examiner finds that Berard teaches all the recited limitations in claim 21,
except for searching the content of the file to identify keywords defined by a
routing policy and selectively renaming the file based on the identifying
keyword. Ans. 10. The Examiner relies on Tanaka to teach searching files
to identify keywords and Madison to teach renaming the file based on the
identified keywords. Ans. 10
Appellant acknowledges that Madison teaches renaming files but
argues, among other things, that Madison’s renaming is not in response to
what the file contains or to identifying keywords in the print file as required
by claim 21. App. Br. 11; Reply Br. 6.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 21 by finding
that Berard, Tanaka, and Madison collectively would have taught or
suggested selectively renaming the print file based on identifying a keyword
in a print file?

ADDITIONAL FINDINGS OF FACT
6. Madison teaches moving a media file from a file transfer protocol
(FTP) ingest server 108 to a repository server 106. Based on whether the
file is successfully uploaded, the system provides the client 102 with one of
two Extensible Markup Lanaguage (XML) strings. For example, when a file
is successfully uploaded, the system returns an XML string that includes
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“scode=‘0’” and “scode_description=‘Success.’” The system then renames
the file and updates the appropriate fields in the Content Management (CM)
database 118. Madison, Abstract; ¶¶ 0085-88; Fig. 1.
7. Berard teaches a document recognition system that sets up rules
related to how to extract destination data, such as a facsimile telephone
number or the intended recipient’s identity, from a document. Berard,
Abstract; col. 6, ll. 50 – col. 7, l. 9; Fig. 1.

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of claim 21 which calls for, in pertinent part,
selectively renaming a print file based on identifying a keyword in the print
file. As the Examiner states (see Ans. 10) and we agree, neither Berard nor
Tanaka teaches renaming a print file based on identifying a keyword in the
print file. Thus, such a teaching must be found in Madison for claim 21 to
be obvious.
Appellant admits that Madison discusses renaming a file based on
whether the file was successfully uploaded. See App. Br. 11; see also FF 6.
Additionally, one skilled in the art would have recognized based on
Madison’s teachings (see FF 6) that Madison’s successfully-uploaded file
determination is made by identifying the XML string’s success code field
and/or description (e.g., scode=“0” and scode_description=“Success”).
Madison therefore suggests renaming a media file based on identifying a
keyword (e.g., “0” or “Success”). See id. However, Madison fails to teach
or suggest this file that is renamed (e.g., a media file) has the XML string
used to identify whether the file was successfully uploaded (i.e., the
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identified keywords). See id. Rather, Madison’s renaming is based on
identifying keywords in a separately-returned XML script that is not taught
or suggested to be part of the media file being renamed. See id. We
therefore find that Madison, contrary to the Examiner’s position (Ans. 10-
11), does not teach or suggests renaming the file based on identifying a
keyword in the print file as recited in claim 21.
Also, combining Madison’s teaching with Berard and Tanaka does not
cure this deficiency by suggesting or teaching selectively renaming a file
based on identifying a keyword in the print file. While Tanaka and Berard
both teach searching the contents of a file to identify words (e.g., specific
contents of the setting file or the recipient’s name in a document) (see FF 2,
3, 7), these references fail to suggest renaming these file – let alone
renaming a file based on identifying a keyword. See id. Also, as discussed
above, Madison does not cure this problem of renaming a print file based on
identifying keywords in that file. Thus, absent impermissible hindsight, we
fail find that Berard, Tanaka, and Madison collectively teach or suggest
selectively renaming the print file based on identifying a keyword in the
print file as claim 21 requires. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (internal citations omitted).
For the foregoing reasons, Appellant has persuaded us of error in the
obviousness rejection of independent claim 21.

CONCLUSION
The Examiner erred in rejecting claims 2-10 and 12-21 under § 103.

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DECISION
The Examiner’s decision rejecting claims 2-10 and 12-21 is reversed.

REVERSED

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