Ex Parte Simpson et al

Board of Patent Appeals and Interferences

Jun 29, 2009

10033148 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHELL S. SIMPSON, WARD S. FOSTER
and KRIS. R. LIVINGSTON
____________

Appeal 2009-003209
Application 10/033,148
Technology Center 2600
____________

Decided: June 30, 20091
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

RUGGIERO, 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 C.F.R. § 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 Date (electronic delivery).
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 16 and 26. Claims 1-15, 17-25, and 27 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Appeal Brief (filed January 10, 2007), the Examiner’s Answer
(mailed May 17, 2007), and the Reply Brief (filed July 17, 2007).
Arguments which Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived (see 37 C.F.R.
§ 41.37(c)(1)(vii)).

Appellants’ Invention
The invention claimed on appeal relates to a printing system that
includes a personal computer and a printer having multiple output trays. The
personal computer transmits a document to be printed to the printer and also
displays an image of the printer while the printer is printing the document.
The displayed image indicates the particular printer output tray that is
receiving the document and further indicates the present capacity of the
document receiving output tray to receive additional media. (See generally
Spec. 1, ll. 18-28 and 9, ll. 5-22).
Claim 16 is illustrative of the invention and is reproduced as follows:
16. A server, comprising:

means for receiving a request from a client;

means for responding to the request by transmitting a program of
computer readable instructions to the client, the program for enabling
the client to:
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use a specific printer having a plurality of output trays to
print a document; and

display an indicator that indicates the identity of an
output tray from the plurality of output trays that receives the
document and the present capacity of the output tray that is
receiving the document to accept additional media;

wherein the server is the printer.

The Examiner’s Rejection
The Examiner relies on the following prior art reference to show
unpatentability:
Nozawa US 6,781,709 B2 Aug. 24, 2004
(filed Dec. 12, 2000)

Claims 16 and 26 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Nozawa.

ISSUE
The pivotal issue before us in making the determination as to whether
the Examiner erred in rejecting appealed claims 16 and 26 under 35 U.S.C. §
102(e), is whether Appellants have demonstrated that the Examiner erred in
determining that Nozawa discloses a printing system with display that
indicates the identity of an output tray that is to receive a printed document
along with an indication of the present capacity of the document receiving
output tray.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Nozawa discloses (Figs. 1-3, col. 8, l. 3-col. 9, l. 3 and col. 8, l.
25-col. 9, l. 65) a printing system that responds to a request by a client to
enable the client to use a specific printer having a plurality of output trays to
print a document.
2. Nozawa further discloses (Figs. 3, 18, and 19 and col. 9, l .66-
col. 10, l. 65) the display of an indicator that indicates the identity of an
output tray from the plurality of output trays that receives the printed
document.
3. Also disclosed (Fig. 10 and col. 14, ll. 31-56) by Nozawa is a
displayed “Output Paper Remains” indicator which indicates that paper
remains in a receiving output tray from a previous print job.
4. Nozawa further discloses (Fig. 12 and col. 15, ll. 28-43) a
displayed indicator of which output trays are allocated to specific users and
may not be available for selection by a particular user for a particular print
job.

PRINCIPLES OF LAW
It is well settled that in order for the Examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677 (Fed. Cir. 1988);
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Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d
1452, 1458 (Fed. Cir. 1984). “‘Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.’”
Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed.
Cir. 1991) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939).
The reference must teach each and every claim limitation, it must be
enabling, and it must describe the claimed subject matter sufficiently to have
placed it in possession of a person of ordinary skill in the field of the
invention. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir.
2000); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).

ANALYSIS
Appellants’ arguments in response to the Examiner’s anticipation
rejection, based on Nozawa, of appealed independent claims 16 and 26
assert that the Examiner has not shown how each of the claimed features is
present in the disclosure of Nozawa so as to establish a prima facie case of
anticipation. Appellants’ arguments (App. Br. 4-6; Reply Br. 2-5) focus on
the contention that, in contrast to the requirements of claims 16 and 26,
Nozawa provides no disclosure of a display that indicates the present
capacity of the output tray that is receiving the printed document.
We agree with Appellants. The Examiner makes reference (Ans. 8)
to the portion of the disclosure of Nozawa (col. 14, ll. 31-56) which
describes an “Output Paper Remains” indicator. Appellants have correctly
asserted (Reply Br. 2-4), however, that this displayed message merely
provides an indication that paper remains in an output tray from a previous
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printing job, not an indication of the present capacity of the output tray to
receive additional media as claimed.
The Examiner also directs attention to Figure 12 of Nozawa and the
accompanying description at column 15, lines 28-44 which discloses a
display that provides an indication of which printer output trays are available
to accept printed documents and which are not. According to the Examiner
(Ans. 8), Nozawa’s disclosed indication as to which output trays are capable
of accepting printed documents provides an indication of the “capacity” of
the trays to accept printed documents.
We are not persuaded by the Examiner’s stated position. We agree
with Appellants (Reply Br. 4-5) that the mere indication that an output tray
cannot be selected since it is assigned to other users, as disclosed by
Nozawa, cannot be reasonably interpreted as providing an indication of the
present capacity of an output tray that is receiving documents from a print
job as set forth in appealed claims 16 and 26.
We make the observation that the language of independent claim 26
does not contain the limitation of claim 16 which qualifies the claimed
output tray capacity as the capacity “to accept additional media.” As
previously discussed however, claim 26 does require that the indicated
capacity be that of the output tray that is presently receiving documents, a
feature which is not taught or suggested by Nozawa.
In view of the above discussion, since Appellants’ arguments have
demonstrated that the Examiner erred in determining that all of the claim
limitations are present in the disclosure of Nozawa, we do not sustain the
Examiner’s 35 U.S.C. § 102(e) rejection of appealed independent claims 16
and 26.
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CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellants have shown that the Examiner erred in rejecting claims 16 and 26
for anticipation under 35 U.S.C. § 102(e).

DECISION
The Examiner’s decision rejecting claims 16 and 26 under 35 U.S.C.
§ 102(e) is reversed.

REVERSED

bim

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