Ex Parte Simpson

Board of Patent Appeals and Interferences

Oct 1, 2007

09940596 (B.P.A.I. Oct. 1, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHELL S. SIMPSON
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Appeal 2007-1602
Application 09/940,596
Technology Center 2100
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Decided: October 1, 2007
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Before LANCE LEONARD BARRY, MAHSHID D. SAADAT, and
JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1 through 14. We have jurisdiction under 35 U.S.C.
§ 6(b) to decide this appeal. We affirm.

Appeal 2007-1602
Application 09/940,596

The Invention
Appellant invented a method and system for launching a browser or
other service upon the occurrence of a predetermined event. Particularly,
upon determining that a device has reached a predetermined status, a
command is sent to a client resident service to launch the browser or service
to a particular network location indicating the status of the device.
(Specification 4).
An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. A method for launching a browser or other service, comprising the
steps of:
determining if a predetermined event related to activity of a web or
network service has occurred; and
sending a command to a system to launch the browser or service to a
particular network location if the predetermined event is to have occurred.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Tuchitoi US 6,906,813 B1 Jun. 14, 2005

The Examiner rejects the claims on appeal as follows:

A. Claims 1 through 14 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Tuchitoi.
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Regarding the above rejection, Appellant contends1 that Tuchitoi does
not fairly teach or suggest sending a command to a system to launch the
browser or service to a particular network location if a predetermined event
is determined to have occurred, as recited in claim 1. (Br. 4, Reply Br. 4.)
In response, the Examiner contends that Tuchitoi’s disclosure of launching a
pop-up message to indicate that a print job has reached a predetermined
status teaches Appellant’s claimed launching of a browser or service to a
network location upon the occurrence of a predetermined event. (Answer 3,
7 and 8.)
ISSUE
The pivotal issue in the appeal before us is as follows:
Has Appellant shown2 that the Examiner failed to establish that the
disclosure of Tuchitoi anticipates the claimed invention under 35 U.S.C.

1 This decision considers only those arguments that Appellant submitted in
the Appeal and Reply Briefs. Arguments that Appellant could have made
but chose not to make in the Briefs are deemed to have been waived. See 37
C.F.R. § 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354
F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
Appellant did not provide separate arguments with respect to the
rejections of claims 2 through 14 and as being anticipated by Tuchitoi.
Therefore, we select independent claim 1 as being representative of these
claims. Claims 2 through 14 consequently fall together with representative
claim 1. See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed.
Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

2 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When
that burden is met, the burden then shifts to the applicant to rebut. Id.; see
also In re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed.
Cir. 2005) (finding rebuttal evidence unpersuasive). If the applicant
produces rebuttal evidence of adequate weight, the prima facie case of
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§ 102(e)? Particularly, does Tuchitoi’s disclosure of launching a pop-up
message to indicate that a print job has reached a predetermined status teach
Appellant’s claimed launching of a browser or service to a network location
upon the occurrence of a predetermined event?

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.
The Invention
1. Appellant’s Specification, at page 61, paragraph 0175, describes the
invention as follows:
Referring now to FIG. 12, there is disclosed an invention for
launching a browser and directing it to browse to a web site or service
if a predetermined event is determined to have occurred. This method
could be used for monitoring the progress of the performance of a job
at a web service or network service. In a preferred embodiment, the
event could be the completion of a job, such as a print job or a fax job.
Alternatively or in addition, the event could be the occurrence of an
error, such as for example, an error that has stopped the forward
progress of the job. In the context of a print job or a fax job, that error
might be a paper jam, or a signal that the printer or fax is out of paper.
(See also Br. 5, Reply Br. 4.)

unpatentability is dissipated. Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Thereafter, patentability is determined in view of the entire record. Id.
However, on appeal to the Board it is an Appellant's burden to establish that
the Examiner did not sustain the necessary burden and to show that the
Examiner erred -- on appeal. We will not start with a presumption that the
Examiner erred.

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The Prior Art Relied Upon
2. Tuchitoi teaches a method and system for notifying a host computer
of the status of a print job upon the occurrence of a predetermined event
related to the print job. (Abstract.)
3. As depicted in Figure 1, Tuchitoi teaches a printing apparatus (150)
that communicates with a host computer (100) via a printing medium (180).
(Col. 1, ll. 43-45). Tuchitoi also indicates that the host can be connected to
the printing apparatus via a network (Col. 23, ll.16-18).
4. The host computer (100) includes inter alia a utility module (105) that
inquires from the host computer (100) about the status of submitted print
jobs. (Col. 1, ll. 51-67).
5. Tuchitoi also teaches as part of the printing apparatus, an information
manager (160) that receives status requests for print jobs from the utility
module (105), and provides the requested information to the host (100) via
the logic channel controller (151). (Col. 2, ll. 41-48).
6. Tuchitoi teaches that when a print job has been completed, the
information manager checks the job attributes in the print job database (305)
to determine whether a print job notification address had been set up for a
particular print job. If such notification address was previously established
for the print job, upon completing said print job, the information manager
sends a notification to the address via the utility module, which displays a
pop up dialog on the host computer to inform the user of said host computer
that such print job has been completed. (Col. 13, ll. 5-28).

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PRINCIPLES OF LAW
ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior
art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

ANALYSIS
35 U.S.C. § 102(b) REJECTION
As set forth above, representative claim 1 requires sending a
command to a system to launch the browser or service to a particular
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network location if a predetermined event is determined to have occurred.
We find that Tuchitoi reasonably teaches that limitation. As detailed in the
Findings of Fact section above, we have found that Tuchitoi teaches that,
upon the completion of a print job on a printing apparatus, an information
manager sends a notification of the completed print job to a utility module to
generate a pop up message to a user on a host computer on a network.
(Finding of Fact 6). One of ordinary skill in the art would readily recognize
that Tuchitoi’s disclosure of sending the notification to the utility module to
generate the pop up menu teaches Appellant’s sending of a command to a
browser or service. Particularly, the ordinarily skilled artisan would readily
appreciate that the pop up menu is only generated as a result of the
instructions that the information manager dispatched to the utility module to
forward a certain status of the print job to a particular address on the
network. Further, the ordinarily skilled artisan would also recognize that,
similarly to the claimed invention, Tuchitoi’s notification is sent to a host
from the printing apparatus to be displayed on the host, upon the occurrence
of the completion of a print job (a predetermined event). In light of these
findings, we conclude that Tuchitoi teaches the limitation of sending a
command to a system to launch the browser or service to a particular
network location if a predetermined event is determined to have occurred. It
follows that the Examiner did not err in rejecting claims 1 through 14 as
being anticipated by Tuchitoi. We affirm this rejection.

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CONCLUSION OF LAW
On the record before us, Appellant has not shown that the Examiner
has failed to establish that Tuchitoi anticipates claims 1 through 14 under 35
U.S.C. § 102(e).
DECISION
We have affirmed the Examiner’s decision rejecting claims 1 through
14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

eld

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