Ex Parte Simpson et al

Board of Patent Appeals and Interferences

Mar 21, 2007

10007829 (B.P.A.I. Mar. 21, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

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 2006-2704
Application 10/007,829
Technology Center 2100
____________

Decided: March 21, 2007
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 3-5, 10-19, and 23-46. Claims 2, 6-9,
and 20-22 have been canceled.
We affirm.
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BACKGROUND
Appellants’ invention relates to a system and method for producing
business cards based on personal information according to arrangement
compositions stored and selected from a personal imaging repository
(Specification 2). An understanding of the invention can be derived from a
reading of exemplary independent claim 1, which is reproduced as follows:
1. A method for producing a business card, comprising:

downloading executable generic access instructions to a client
browser;

receiving personal information to be provided on the business card
with a web site of a business card service;

storing the personal information as at least one graphic in a personal
imaging repository;

receiving selection of an arrangement of the personal information on
the business card with the business card service web site; and

storing the arrangement as a composition in the personal imaging
repository;

wherein the personal imaging repository is accessed via an imaging
extension that forms part of the client browser, the imaging extension being
configured to receive calls from the executable generic access instructions to
access the personal imaging repository.

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The Examiner relies on the following prior art references:
Farros (‘810) US 5,930,810 Jul. 27, 1999
Farros (‘686) US 6,717,686 B1 Apr. 6, 2004
(filed Nov. 19, 1999)

Preston Gralla (Gralla), “How Internet Works,” 4th edition, Que
Corporation, 172-177, 266-271 (1998).

The following rejections are on appeal before us:
1. Claims 1, 3-5, 10-19, 23-26, 29, 30, 32-41, and 43-46 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Farros ‘810 in
view of Farros ‘686.
2. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Farros ‘686 in view of Farros ‘810.
3. Claims 31 and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Farros ‘810, Farros ‘686 in view of Gralla.
Rather than reiterate the opposing arguments, reference is made to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Briefs have not been considered (37 C.F.R.
§ 41.37(c)(1)(vii)).
OPINION
With respect to the rejection of claims 1, 3-5, and 10-15, the focus of
Appellants’ arguments is that the claimed steps of “downloading executable
generic access instructions to a client browser” and accessing a personal

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imaging repository “via an imaging extension” according to claim 1 is
neither taught nor suggested by the applied prior art (Br. 13). Appellants
further assert that Farros ‘686, although downloads “web pages,” includes
nothing about downloading executable instructions to call an “imaging
extension” that “forms part of a client browser” (Br. 14).
The Examiner responds by stating that the Web pages downloaded by
Farros ‘686 are available for the client to interact with via the user interface
shown in Figure 3A (Answer 23-24). Relying on Farros ‘810 for
functionalities such as “Screen Handlers” and “Printing,” the Examiner
argues that the claimed client interface activities are suggested by the
combination of the references (Answer 24). The Examiner concludes that
providing the functionalities described in Farros ‘810 in a network-based
environment would have been obvious to the ordinary skilled artisan as
suggested by Farros ‘686 discussing remote printing of a custom-designed
material (Id.). Therefore, the question before this panel is whether all the
claimed features, as argued above, are taught or suggested by the applied
references.
As a general proposition, in rejecting claims under 35 U.S.C. § 103,
the examiner bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955,
1956 (Fed. Cir. 1993) and In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). A prima facie case of obviousness is established
when the teachings of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See In re Bell, 991

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F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993); Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
293, 227 USPQ 657, 664 (Fed. Cir. 1985).
Upon a review of Farros ‘686, we agree with the Examiner that
generic access instructions are downloaded to a client’s browser, as shown
in Figure 2, which allow the client to access the stored images as a part of
the client browser. Farros ‘686 relates to processing remote printing for
electronically designed and transmitted print designs (col. 1, ll. 52-60) such
as business cards (col. 1, ll. 11-16) through downloaded Web pages in a
client browser and accessing the user information files residing on a remote
server (col. 2, ll. 8-16). Farros ‘686 further provides a graphical Web page
through the browser interface on the client’s system for client’s interaction
with the printing system (col. 4, ll. 13-19). Farros ‘686 also describes
imaging repositories that may be accessed by the client when a printing
order is to be placed (col. 4, ll. 29-34).
We also find that the Examiner has properly read the claims in light of
the Specification to determine the claimed terms such as “imaging
extension” which is taught by Farros ‘686 as discussed above. The instant
Specification describes “imaging extension” 310, depicted in Figure 3, as
application programming instructions or a gateway for interfacing with
system-wide standards an accessing the user’s repository (Specification 9-
10). To the extent disclosed, the user interface of Farros ‘686 discloses the
functionalities and the features of such imaging extension and provides the

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evidence in support of the Examiner’s position. As such, we remain
unconvinced by Appellants’ arguments (Reply Br. 3-5) that the claimed
functions and the manner of accessing the imaging repository are not taught
by the references. Specifically, we disagree with Appellants and find that
the claimed browser imaging extensions or generic access instructions, to the
extent disclosed in the Specification, reads on the user interaction with the
downloaded Web pages in Farros ‘686.
Based on the presented arguments, the weight of evidence in support
of each side and our findings above, we find the Examiner’s case of prima
facie obviousness to be reasonable and sustain the 35 U.S.C. § 103 rejection
of claims 1, 3-5, and 10-15 over Farros ‘810 and Farros ‘686.
With respect to the rejection of claims 16-19, 23, and 24, Appellants
essentially repeat the same arguments addressed above with respect to claim
1 and further point out that neither references discloses a “printing facility”
or a “web site” hosted by the printing facility (Br. 15-17). For the same
reasons we sustained the rejection of claim 1 and the fact that the Examiner
identifies a printing web site in Figure 2 of Farros ‘686 (Answer 26), we
sustain the 35 U.S.C. § 103 rejection of claims 16-19, 23, and 24 over Farros
‘810 and Farros ‘686.
Turning now to the rejection of claims 25 and 26, we note that
Appellants focus on similar arguments addressed above with respect to
claim 1 and further point to the limitation of “application programming
instructions” in claim 26 as absent in the prior art. As discussed above, we
find that to the extent disclosed, the recited functionalities are taught by the

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references. We also agree with the Examiner that the options shown in
Figures 2 and 3A of Farros ‘686 related to selecting and saving work, are
indeed imaging extensions that require receiving calls in order to interact
with the browser and use all of the available functions. Accordingly, we
also sustain the 35 U.S.C. § 103 rejection of claims 25 and 26 over Farros
‘810 and Farros ‘686.
With respect to claims 27 and 28, Appellants challenge the
Examiner’s position by relying on the same arguments presented for claim 1.
For the same reasons addressed above regarding the rejection of claim 1, we
sustain the 35 U.S.C. § 103 rejection of claims 27 and 28 over Farros ‘686
and Farros ‘810.
Turning next to the rejection of claims 29, 30, and 32-39, in addition
to relying on the same arguments discussed above, Appellants argue that the
“authentication service,” recited in claim 31, is not obvious based on known
security techniques (Br. 21). Although this argument belongs to the
rejection of claims 31 and 42 over Farros ‘810 and Farros ‘686 in view of
Gralla (Br. 23), we point to the Examiner’s reliance on Gralla and observe
that the Examiner properly presented Gralla as the evidence supporting the
obviousness of the use of authentication service. Therefore, we sustain both
the rejection of claims 29, 30, and 32-39 over Farros ‘810 and Farros ‘686
and the rejection of claims 31 and 42 over Farros ‘810 and Farros ‘686 in
view of Gralla.
Similarly, in addressing the rejection of the remaining claims,
Appellants rely on the same arguments addressed above with respect to

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claim 1 and make general assertions regarding the novelty of the claims (Br.
21-23; Reply Br. 14-15). Therefore, based on the teachings of the references
outlined supra, and to the extent claimed, we find ourselves persuaded by
the Examiner’s reasoning and sustain the 35 U.S.C. § 103 rejection of claims
40, 41, and 43-46 over Farros ‘810 and Farros ‘686.

CONCLUSION
In view of the foregoing, the decision of the Examiner rejecting
claims 1, 3-5, 10-19, and 23-46 under 35 U.S.C. § 103 is affirmed.
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).
AFFIRMED

KIS

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