Ex Parte Shah et al

Patent Trials and Appeals Board

Jun 17, 2019

14966272 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/966,272 12/11/2015
22879 7590 06/19/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Kirti Kuna! Shah
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.
84421907 2783
EXAMINER
SIDDO, IBRAHIM
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
06/19/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIRTI KUNAL SHAH and
SATISH BABUNATARAJAN
Appeal2018-001772
Application 14/966,272 1
Technology Center 2600
Before JOHN A. JEFFERY, ERIC S. FRAHM, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5, and 7-15, which constitute all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 This application on appeal has an effective filing date of Dec. 11, 2015.
Therefore, the Leahy-Smith America Invents Act (AIA) amendments to the
U.S. Code(§§ 102, 103) are applicable. See MPEP § 2159.02 (9th ed. 2018)
( the amended sections "apply to any patent application that contains ... a
claimed invention that has an effective filing date that is on or after March
16, 2013.").
2 Appellants identify Hewlett-Packard Development Company, L.P. as the
real party in interest. App. Br. 5.
Appeal2018-001772
Application 14/966,272
STATEMENT OF THE CASE
Introduction
Appellants describe the disclosed and claimed invention as follows:
Example implementations relate to print fluid selection. For
example, a system for print fluid detection may include a cloud-based
printing platform coupled to a plurality of printing devices. A print
fluid selection module may be implemented in the cloud-based
printing platform. The print fluid selection module may determine a
type of document to be printed by a printing device among the
plurality of printing devices, and select a print fluid setting among a
plurality of print fluid settings for printing the document, based on the
determined document type. The printing fluid selection may be
enabled only for printing devices that include authentic components,
as verified by a printing supply verification module.
Abstract. 3
Claim 1 is illustrative of the subject matter on appeal and reproduced
below:
1. A system for print fluid selection, comprising:
a cloud-based printing platform coupled to a plurality of
printing devices; and
a print fluid selection processor module implemented in
the cloud-based printing platform, the print fluid selection
processor module to:
determine a type of a document to be printed by a
printing device among the plurality of printing devices; and
3 Our Decision refers to the Final Office Action mailed Apr. 13, 2017
("Final Act."); Appellants' Appeal Brief filed June 27, 2017 ("App. Br.")
and Reply Brief filed Dec. 6, 2017 ("Reply Br."); the Examiner's Answer
mailed Oct. 24, 2017 ("Ans."); and the original Specification filed Dec. 11,
2015 ("Spec.").
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Application 14/966,272
select a print fluid setting among a plurality of
print fluid settings for printing the document, based on the
determined document type, wherein the selected print fluid
setting defines a change to the document based on the
determined type and wherein the change comprises at least one
of the following: replacing text in the document with a pre-
defined font type, replacing text in the document with a pre-
defined font size, replacing bold text in the document with a
pre-defined text format, and replacing solid lines in the
document with a predefined line format.
App. Br. 26 (Claims App'x).
Rejections on Appeal
Claims 1-5 and 7-15 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention. Final
Act. 3.
Claims 1 and 11-15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hanyu (US 2003/0047099 Al; published Mar. 13, 2003)
in view of Laughlin (US 2003/0076512 Al; published Apr. 24, 2003) and
further in view of Amarger et al. (US 7,084,992 B 1; issued Aug. 1, 2006)
("Amarger"). 4 Final Act. 4--8.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hanyu, Laughlin, Amarger, and Ward et al. (US 2005/0243116 Al;
published Nov. 3, 2005) ("Ward"). Final Act. 8-9.
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hanyu, Laughlin, Amarger, Ward, and Ignatchenko et al. (US
4 The Examiner withdrew the rejection of claims 11-15. Ans. 2.
3
Appeal2018-001772
Application 14/966,272
2014/0270813 Al; published Sept. 18, 2014) ("Ignatchenko"). Final Act. 9-
10.
Claims 4, 5, 7, and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Amarger, Hanyu, and Laughlin. Final Act. 10-14.
Claims 8 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Amarger, Hanyu, Laughlin, and Mischler (US
2008/0205751 Al; published Aug. 28, 2008). Final Act. 14--15.
ANALYSIS
Rejection of Claims 1-5 and 7-15 Under§ l l 2(b)
The Examiner finds that independent claims 1, 4, and 11 are indefinite
and, therefore, dependent claims 2, 3, 5, 7-10, and 12-15 are also indefinite.
See Final Act. 3. In particular, the Examiner finds claims 1, 4, and 11 lack
clarity because they do not specify that "the determined type" is referring
back to the "document" or "content." Ans. 3. Regarding claim 4, the
Examiner also finds that it does not appear to have a step of "determining
the content type of a document" before claiming "the determined type." Id.
Appellants argue that because there is only a single "type" ( either a
document in claim 1 or content in claims 4 and 11) in the first portion of the
claim before "the determined type" in a second portion of the claim, there is
no additional determined type referred to that could raise any ambiguity and,
therefore, the claim language would not be indefinite to a person or ordinary
skill in the art. Reply Br. 2; see also App. Br. 9-10.
We are persuaded by Appellants' arguments that the Examiner erred.
Under 35 U.S.C. § 112, second paragraph, the test for definiteness is
whether "those skilled in the art would understand what is claimed when the
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Application 14/966,272
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a
claim is unclear if, when given its broadest reasonable interpretation, it is
"ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention ... ," In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014), or if it is "is amenable to two or more plausible claim
constructions ... ," Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI
2008) (precedential). Because the language of 35 U.S.C. § 112(b) is
substantially the same as its predecessor, 35 U.S.C. § 112, second paragraph,
the same test for definiteness applies here.
In view of the language of claims 1, 4, and 11, we agree with
Appellants' arguments that there is no ambiguity or lack of clarity in these
claims as found by the Examiner. Regarding claim 1, it recites "determine a
type of a document" to be printed by a printing device, and then
subsequently recites "the determined type." Appellants argue, and we agree,
that a person of ordinary skill would understand the latter reference to "the
determined type" refers to the previously recited "type of a document."
App. Br. 10. Regarding claim 11, it recites "determining a content type for a
document" and then subsequently recites "the determined type." Appellants
argue, and we agree, that a person of ordinary skill in the art would
understand the latter recitation of "the determined type" refers to the
previously recited "content type." Id.
Regarding claim 4, it recites "assign a content type for a document,"
and then subsequently recites "the determined type." Appellants argue, and
we agree, that a person of ordinary skill in the art would understand that the
latter recitation of "the determined type" refers to the previously recited
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"content type." Id. Although the Examiner is correct that claim 4 does not
recite "determining" a content type for the document before claiming "the
determined type," this lack of antecedent basis does not render claim 4
indefinite. The failure to provide explicit antecedent basis for terms does not
always render a claim indefinite. If the scope of a claim would be
reasonably ascertainable by those skilled in the art, then the claim is not
indefinite. See Energizer Holdings Inc. v. Int 'l Trade Comm 'n, 435 F .3d
1366, 1371 (Fed. Cir. 2006) (holding that "anode gel" provided by
implication the antecedent basis for "zinc anode"); Ex parte Porter, 25
USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992) ("controlled stream of
fluid" provided reasonable antecedent basis for "the controlled fluid").
Here, we conclude that a person of ordinary skill in the art would understand
"the determined type" in claim 4 is the assigned "content type" for the
document because, as Appellants' argue, "the content type" is the only
"type" previously referred to in the claim.
Thus, we determine that claims 1, 4, and 11 are not indefinite because
for the reasons state supra, these claims are not ambiguous or unclear, and
the scope of these claims would be reasonably ascertainable, to a person of
ordinary skill in the art. Accordingly, we do not sustain the Examiner's
rejection of claims 1, 4, and 11, and dependent claims 2, 3, 5, 7-10, and
12-15, under 35 U.S.C. § 112(b).
Rejections of Claims 1-5 and 7-10 Under§ 103
Claims 1-3
The Examiner rejects claim 1 under 35 U.S.C. § 103 for obviousness
over the combination of Hanyu, Laughlin, and Amarger. Final Act. 4.
Appellants contend the Examiner has not established that Hanyu teaches or
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suggests "the print fluid selection processor module to: determine a type of
a document to be printed." 5 App. Br. 11-14; Reply Br. 2--4.
The Examiner finds that Hanyu teaches or suggests the disputed
limitation of claim 1. Final Act. 4 ( citing Hanyu, Fig. 1, ,r,r 3 2, 34 ). In
particular, the Examiner finds that Haynu teaches "an object identifying unit
4 of the printer driver 2 which identifies the types of objects included in the
supplied image data," and the Examiner "believes the types of objects
included in the supplied image data determines the type of a document."
Ans. 4 (citing Hanyu ,r 34). The Examiner also finds that paragraph 33 of
Hanyu "suggests that the types of objects are letters, marks, lines, graphics,
images, etc. in a print document." Id. The Examiner further finds that
paragraph 68 of Hanyu teaches that Hanyu "is not limited to objects but also
to selected document type," as paragraph 68 states that "the printer driver
allows a user to select a document type." Id. In addition, the Examiner
finds that paragraph 79 of Hanyu states that Figures 9 A and 9B show the
print settings that will be used if the user selects the document type "DTP
document" and "DTP document (toner saving)," respectively. Id.
We are persuaded by Appellants' arguments that the Examiner erred.
Appellants argue, and we agree, that Haynu does not teach determining a
type of document, but instead teaches that the object identifying unit 4 of the
printer driver 2 determines "a type of each individual object of a document."
App. Br. 12-13 (citing Hanyu ,r,r 33, 34) (emphasis omitted). As the
Examiner finds, paragraph 33 of Hanyu teaches that the "types of objects in
5 Appellants make other arguments in the Briefs with respect to claim 1, but
we do not address them because our decision of this issue is dispositive on
claim 1.
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a print document [are] such as letters, marks, lines, graphics, images, etc."
Thus, according to Appellants, in Hanyu, the document to be printed does
not have a type, but each of the objects in the document has a different type.
Id. at 13. Appellants also argue that "[c]laim 1, in contrast, determines a
type of the document." Id. As Appellants further argue, as disclosed in
paragraph 8 of the Specification, "document type refers to the type of a
broadly characterized type of content associated with the document, based
on a relative percentage of text, images, and superimposed images." Id. at
13-14. Thus, Hanyu's teaching of an object identifying unit 4 that
determines types of objects in a document does not teach or suggest the
broadest reasonable interpretation, in view of the Specification, of "the print
fluid selection processor module to: determine a type of a document to be
printed," because "types of objects" are different than, and do not
encompass, the claimed "type of a document."
We also are not persuaded by the Examiner's citation to paragraphs
68, 79, and Figures 9A and 9B of Hanyu as teaching determining a
document type. See Ans. 4--5. In that regard, Appellants argue, and we
agree that paragraphs 68 and 79 specifically teach "the document type is
selected by a user, rather than by a print fluid selection processor module of
the system. Reply Br. 2. Thus, Appellants argue, and we agree, "the Hanyu
reference fails to teach or suggest the limitation of 'a system for print fluid
selection' to 'determine a type of a document to be printed,' as required by
claim 1." Id.
Based on this record, we are persuaded the Examiner erred in finding
Hanyu, or the combination of Haynu, Laughlin, and Amarger, teaches or
suggests the disputed limitation of claim 1. Accordingly, we do not sustain
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the Examiner's rejection of claim 1 under§ 103. In rejecting dependent
claims 2 and 3, the Examiner also cites Ward and Ignatchenko, but does not
rely on either of them to teach the disputed limitation of claim 1. Thus, for
the reasons stated with respect to claim 1, we also do not sustain the
Examiner's rejections of dependent claims 2 and 3 under§ 103.
Claims 4, 5, 7-10
The Examiner rejects independent claim 4 under 35 U.S.C. § 103 for
obviousness over the combination of Amarger, Hanyu, and Laughlin. Final
Act. 10-12. In that regard, the Examiner finds that Amarger teaches "assign
a content type for the document based on an amount of text and an amount
of images in the document." Id. at 11 (citing Amarger, Figs. 3-5, 10:4--67,
11:1-51); see also Ans. 8-9 (citing Amarger 10:10-28, 64--66). Appellants
contend the Examiner has not shown that Amarger teaches or suggests the
limitation "assign a content type for the document based on an amount of
text and an amount of images in the document," as recited in claim 4. App.
Br. 21-22; Reply Br. 4--5.
We are persuaded by Appellants' arguments that the Examiner erred.
In particular, Appellants argue, and we agree, that although Amarger teaches
determining amounts of text, images, and/or graphics in a document,
Amarger does not teach or suggest "assigning a content type to the
document based on these elements." Reply Br. 5. As Appellants also argue,
and we agree, in the operation of Figure 4 of Amarger, individual
characteristics of previously printed documents in the database are compared
to characteristics of the present document to be printed, but there is no
comparison operation "based on any content type assigned to the entire
document as a whole." App. Br. 22.
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Thus, we do not sustain the Examiner's rejection of claim 4 under
§ 103. In rejecting dependent claims 5 and 7-10, the Examiner also cites
Hanyu, Laughlin, and Mischler, but does not rely on any of them to teach the
disputed limitation of claim 4. Thus, for the reasons stated with respect to
claim 4, we also do not sustain the Examiner's rejections of dependent
claims 5 and 7-10 under§ 103.
DECISION
We reverse the Examiner's rejection of claims 1-5 and 7-15 under 35
U.S.C. § 112(b).
We reverse the Examiner's rejections of claims 1-5 and 7-10 under
35 U.S.C. § 103.
REVERSED
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