Ex Parte Simpson

Board of Patent Appeals and Interferences

Mar 6, 2009

09999037 (B.P.A.I. Mar. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHELL STERLING SIMPSON
____________________

Appeal 2008-3250
Application 09/999,037
Technology Center 2100
____________________

Decided:1 March 9, 2009
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 12-23. Claims 1-11 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).

A. INVENTION
According to Appellant, the invention relates to a print-to-mail device
which comprises hard copy generation hardware, a processing device, and
memory including an embedded network server, the server hosting a print-
to-mail service with which the arrangement of data to be printed can be
selected by a user (Spec., Abstract).

B. ILLUSTRATIVE CLAIM
Claim 12 is exemplary and is reproduced below:
12. A printing device configured for print-to-mail printing, the
printing device comprising:

hard copy generation hardware;

a processing device; and

memory including an embedded network server, the server hosting a
print-to-mail service that is configured to:

download content to a remote network browser that is browsed across
a network to the print-to-mail service;

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receive an identification of a location of data to be printed;

obtain the data to be printed;

receive a selection of an arrangement for the data to be printed; and

print print-to-mail formatted mailings from the obtained data.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Baker US 5,175,691 Dec. 29, 1992
Strobel US 5,583,970 Dec. 10, 1996
Nguyen US 5,737,592 Apr. 7, 1998
Bailey US 2002/0059278 A1 May 16, 2002
Girardi US 2002/0065951 A1 May 30, 2002

Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Girardi in view of Strobel.
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Girardi and Strobel in view of Baker.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Girardi and Strobel in view of Bailey.
Claims 18-23 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Girardi and Strobel in view of Nguyen.

We affirm.
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II. ISSUE
Has Appellant shown that the Examiner erred in finding that the
combination of Girardi and Strobel teaches or would have suggested a
“printing device” which comprises “an embedded network server” (claim
12)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Girardi
1. Girardi discloses mailpiece production systems whose purpose is to
utilize address lists, perform addressing hygiene through the use of
address correction techniques, and, download data to addressing
printers, collators, sealers, and the like for the purpose of producing a
mailpiece (p. 1, [0002]).
2. The file name is entered after the interface command (p. 4, [0050]).
3. The printer is directed to print data under the direction of the address
object (pp. 4-5, [0052]).
4. A set of rules for applying postal coding requirements with respect to
placement of data on the face of the mailpiece is included (p. 5,
[0053]).

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Strobel
5. Strobel discloses a system for printing images on a substrate
comprising a host computer which creates and then transmits printer
command sets and printing data, via transmitting means, which can
include: direct interface cabling; modem, download to a storage
medium for subsequent uploading; and, network devices (col. 3, ll.
41-49).
6. The subsystem of Strobel includes a microprocessor, and interface
cable for connecting the addressing subsystem which includes a
printer connected to the addressing subsystem by interface cable (col.
4, ll. 20-32; Fig. 1).

IV. PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
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One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," and discussed circumstances in which a patent might be determined to
be obvious. Id. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. The Court
noted that “[c]ommon sense teaches . . . that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 1742. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id.

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The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1739).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was "uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 127 S. Ct. at
1741).
To address obviousness questions involving combinations of known
elements, the Supreme Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007).
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V. ANALYSIS
Claims 12 and 13
A. The Combination of Girardi and Strobel Teaches and/or Suggests a
“Printing Device” Including an ‘Embedded Server”
Appellant contends that “Applicant explicitly claims a printing device
that contains its own ‘embedded’ network server” and that “Strobel’s
conventional arranagement of a printer and a separate PC does not even
approach a suggestion of the embedded arrangement explicitly claimed by
Applicant” (App. Br. 13). However, the Examiner finds that “a network
server (host computer) connected to a printing device via a network meets
the specification definition of a printing device including an embedded
network server” (Ans. 9-10). Thus, the issue we address on appeal is
whether the combination of Girardi and Strobel teaches and/or suggests a
“printing device” which comprises “an embedded network server” (claim
12).
We give the claims their broadest reasonable interpretation. See In re
Bigio, 81 F.3d at 1324. Furthermore, our analysis will not read limitations
into the claims from the specification. See In re Van Geuns, 988 F.2d at
1184.

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Appellant’s claims simply do not place any limitation on what the
term “embedded” is to be, is to represent, or is to mean, other than that the
“network server” is “embedded” in a printing device (claim 12). Thus, the
term “embedded network server” cannot be confined to a specific
embodiment when the claims do not recite a specific embodiment.
In fact, Appellant’s claims also do not place any limitation on what
the “printing device” is to be, represent or mean. We thus give the term
“printing device” its ordinary meaning of any device or system which
includes the printing function. The language of claim 1 does not distinguish
the “printing device” which comprises “an embedded network server” from
a device or system comprising a host computer provided therein connected
to a printer via a network. In fact, in the Reply Brief, Appellant admits that
it is well known that “an ‘embedded network server’ is a program embedded
within a device that serves user interface pages to requesting browsers over a
network” (Reply Br. 3).
Strobel discloses a system for printing images on a substrate which
comprises a host computer connected to a printer within the system for
transmitting data over a network (FF 5-6). We find the system of Strobel to
be a printing device.
Furthermore, we find the host computer within the system to be
embedded within the printing system/device. In fact, as the Examiner finds,
“[t]he applicant’s specification further discloses that the printing device and
the embedded network server are connected via one or more internal and/or
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externa buses” (Ans. 9). It is our view that one of ordinary skill in the art
would have reasonably considered such network host computer within the
printing system/device to be a network server embedded within the printing
system/device.
Although Appellant also argues that “Strobel does not even come
close to teaching or suggesting” the claimed features (App. Br. 12), the
Appellant appears to be arguing that Strobel alone fail to disclose the claim
limitations. However, the Examiner has rejected the claims based on the
combination of Girardi and Strobel, and nonobviousness cannot be shown by
attacking the references individually. See In re Merck, 800 F.2d at 1097. A
person having ordinary skill in the art uses known elements such as the host
computer of Strobel for their intended purpose. See Anderson’s-Black Rock,
Inc. v. Pavement Salvage Co., 396 U.S. 57.
Although Appellant contends that “Applicant explicitly claims a
printing device that contains its own ‘embedded’ network server” (App. Br.
13), nothing in claim 12 distinguishes such printing device from a printing
system comprising a host computer provided therein, as taught or suggested
by the combination of Girardi and Strobel. Further, even if claim 12 were to
require that the “embedded network server” be contained in a printer within
a printing system, putting the server in the same box as the printer appears to
be a simple arrangement of old elements, with each performing the same
function it had been known to perform, yielding no more than one would
expect from such an arrangement, and thus prima facie obvious. See KSR,
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127 S. Ct. at 1740. In addition, Appellant has not shown that providing the
server and printer in a single housing would be uniquely challenging or
difficult for one of ordinary skill in the art. See Leapfrog Enters., Inc., 485
F.3d at 1162 (citing KSR, 127 S. Ct. at 1741).

B. The Combination of Girardi and Strobel Teaches and Suggests a
“Printing Device Receiving an Identification of a Location of Data to be
Printed”
Appellant also argues that “the Girardi reference says nothing
whatsoever about a ‘printing device’ that ‘receives’ an ‘identification of a
location of data to be printed’” (App. Br. 14). However, the Examiner finds
that “a file name specifies the file and location to be printed” (Ans. 4). We
agree with the Examiner.
Girardi discloses a print to mail service, wherein the file name is
entered after the interface command (FF 1-2). We find an artisan would
have understood the step of receiving the entered file name to locate the file
within memory to be printed to be a step of receiving an identification of a
location of data to be printed. We thus agree with the Examiner that the
combined teachings of Girardi and Strobel teach and/or strongly suggest
locating receiving the file name (i.e. identification of a location) of data to be
printed by the printing system.
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Appellant has not shown in the Appeal Brief or in the Reply Brief any
argument to dispute that the Examiner has correctly shown where this
claimed element appears in the prior art.

C. The Combination of Girardi and Strobel Teaches and Suggests a
“Printing Device Obtaining Data to be Printed from the Identified
Location”
Appellant also argues that Girardi “do not actually teach a ‘printing
device’ configured to ‘obtain the data to be printed’ from a received location
identification” (App. Br. 14-15). However, claim 12 is rejected based on the
combination of Girardi and Strobel, and nonobviousness cannot be shown by
attacking the references individually.
The Examiner finds that, In Girardi, “data to be printed is obtained
through an interface” (Ans. 4). As the Examiner finds, “in order for data to
be printed by a printing device, such as the printing device disclosed in
Girardi, the data to be printed must be sent to a printing device for printing”
(Ans. 10). We agree with the Examiner.
Girardi discloses entering the file name after the interface command
(FF 2). As discussed above, an artisan would have understood the step of
receiving the entered file name in Girardi to be a step of receiving an
identification of a location of data to be printed. An artisan would have
found it obvious that the received file name is used to retrieve/obtain the file
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to be printed. We thus agree with the Examiner that the combined teachings
of Girardi and Strobel teach and/or strongly suggest obtaining the data to be
printed by the printing system.
Appellant has not shown in the Appeal Brief or in the Reply Brief any
argument to dispute that the Examiner has correctly shown where this
claimed element appears in the prior art.

D. The Combination of Girardi and Strobel Teaches and Suggests a
“Printing Device Receiving a Selection of an Arrangement for the Obtained
Data”
Appellant also argues that Appellant “cannot locate any teaching or
suggestion of a printing device receiving a selection of an arrangement for
data to be printed in them” (App. Br. 16). However, the Examiner finds that,
in Girardi, “formatting rules are used to specify the format and layout of data
to be printed” (Ans. 10). We agree with the Examiner.
Girardi discloses that the printer is directed to print data under the
direction of an address object, wherein a set of rules with respect to the
placement of data for printing is included (FF 3-4). An artisan would have
understood the receipt of the set of rules for the placement of data and
direction for printing to be receiving a selection of an arrangement for data
to be printed. We thus agree with the Examiner that Girardi when
combined with Strobel teaches, and/or strongly suggests, receiving a
selection of an arrangement for the data to be printed by the printing system.
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Appellant has not shown in the Appeal Brief or in the Reply Brief any
argument to dispute that the Examiner has correctly shown where this
claimed element appears in the prior art.
Accordingly, we conclude that the subject matter as a whole of claim
12 would have been prima facie obvious over the teachings of Girardi and
Strobel. That is, as the Examiner finds, the combination of Girardi and
Strobel teaches or at the least suggests printing device which comprises “an
embedded network server” (claim 12).
Thus, we conclude that the Appellant has not shown that the Examiner
erred in rejecting claim 12, and claim 13 falling with claim 12, under
35 U.S.C. § 103(a).
Claims 14 and 15
As to claims 14 and 15, depending from claim 12, Appellant adds the
argument that “Baker does not remedy the deficiencies of the Girardi
reference” (App. Br. 17). However, we find no deficiencies with respect to
the combined teachings of Girardi and Strobel as applied above regarding
claim 12. Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claims 14 and 15, as unpatentable over Girardi,
Strobel and Baker under 35 U.S.C. § 103(a).
Claims 16 and 17
As to claims 16 and 17, depending from claim 12, Appellant adds the
argument that “Bailey does not remedy the deficiencies of the Girardi and
Strobel references” (App. Br. 17). However, we find no deficiencies with
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respect to the combined teachings of Girardi and Strobel as applied above
regarding claim 12. Accordingly, we find that the Appellant has not shown
that the Examiner erred in rejecting claims 16 and 17, as unpatentable over
Girardi, Strobel and Bailey under 35 U.S.C. § 103(a).
Claims 18-23
As to claims 18-23, depending from claim 12, Appellant adds the
argument that “Nguyen does not remedy the deficiencies of the Girardi and
Strobel references” (App. Br. 18). However, we find no deficiencies with
respect to the combined teachings of Girardi and Strobel as applied above
regarding claim 12. Accordingly, we find that the Appellant has not shown
that the Examiner erred in rejecting claims 14 and 15, as unpatentable over
Girardi, Strobel and Nguyen under 35 U.S.C. § 103(a).

CONCLUSION OF LAW
(1) Appellant has not shown that the Examiner erred in concluding
that claims 12 and 13 are unpatentable under 35 U.S.C. § 103(a) over the
teachings of Girardi and Strobel.
(2) Appellant has not shown that the Examiner erred in concluding
that claims 14 and 15 are unpatentable under 35 U.S.C. § 103(a) over the
teachings of Girardi, Strobel, and Baker.
(3) Appellant has not shown that the Examiner erred in concluding
that claims 16 and 17 are unpatentable under 35 U.S.C. § 103(a) over the
teachings of Girardi, Strobel, and Bailey.
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(4) Appellant has not shown that the Examiner erred in concluding
that claims 18-23 are unpatentable under 35 U.S.C. § 103(a) over the
teachings of Girardi, Strobel, and Nguyen.
(5) Claims 12-23 are not patentable.

DECISION
We affirm the Examiner’s rejection of claims 12-23 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).

AFFIRMED

pgc

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