Ex Parte Simpson et al

Board of Patent Appeals and Interferences

Dec 22, 2010

09998996 (B.P.A.I. Dec. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte SHELL S. SIMPSON and WARD S. FOSTER
_____________

Appeal 2009-007545
Application 09/998,996
Technology Center 2400
______________

Before, ROBERT E. NAPPI, CARLA M. KRIVAK, and
THOMAS S. HAHN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007545
Application 09/998,996

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-4, 6, 8-14, and 20-43. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method and system of using a network
based printing service to print on a local printing device. See Spec: 2.
Claim 1 is representative of the invention and reproduced below:
1. A method for printing on a local printing device using a
network-based printing service associated with a local printing
device, the method comprising:
obtaining a network address of the network-based printing
service;
designating the network-based printing service address as
a default destination such that a user browser executing on a
client device is redirected directly to the network-based printing
service when a print command is received;
receiving a print command provided to an imaging service
with the user browser;
automatically redirecting the user browser to the network-
based printing service;
accessing image data from a personal imaging repository
with the network-based printing service and
initiating a print job on the local printing device with the
network-based printing service.

REFERENCE
Savitzky US 6,012,083 Jan. 4, 2000
2
Appeal 2009-007545
Application 09/998,996

REJECTION AT ISSUE
Claims 1-4, 6, 8-14, and 20-43 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Savitzky. Ans. 3-8.

ISSUE
Appellants argue on pages 19-25 of the Appeal Brief and pages 3-10
of the Reply Brief that the Examiner’s rejection of claims 1-4, 6, 8-14, and
20-43 is in error. Appellants argue that Savitzky does not disclose using a
network-based printing service to access image data from a personal
imaging repository as claimed in independent claims 1 and 10. App. Br. 20;
Reply Br. 7. Claims 2-4, 6, 8, 9, 11-14, and 20-43 depend from claims 1 and
10.
Thus, with respect to claims 1-4, 6, 8-14, and 20-43, Appellants’
contention presents us with the issue: Did the Examiner err in finding that
Savitzky discloses using a network-based printing service to access image
data from a personal imaging repository?2

ANALYSIS
Appellants’ pivotal argument has persuaded us that the Examiner
erred in rejecting claims 1-4, 6, 8-14, and 20-43. Claim 1 recites “accessing

2 Appellants make additional arguments regarding claims 1-4, 6, 8-14, and
20-43. App. Br. 11-12 and 15-21; Reply Br. 2-10. We do not reach these
additional arguments since the issue of whether Savitzky discloses using a
network-based printing service to access image data from a personal
imaging repository as claimed in independent claims 1 and 10 is dispositive
of the case.
3
Appeal 2009-007545
Application 09/998,996

image data from a personal imaging repository with the network-based
printing service.” Claim 10 recites a similar limitation. Appellants argue
that Savitzky does not disclose this limitation since obtaining a printing
service’s URL is not the same as accessing a user’s personal image
repository by a printing service. Reply Br. 7. We agree.
The Examiner finds that print requests are sent over a network to a
default printer agency wherein the printer agency acts as an imaging service.
Ans. 9. Upon receipt, the printer agency generates a preview of the original
website and sends this preview via a new URL to the user’s browser. Ans.
10. Therefore, the Examiner finds that the new URL is the claimed printing
service. Ans. 10. Additionally, the Examiner finds that the printing agency
comprises the personal image repository since the preview image is stored in
the printing agency. Ans. 12.
The Examiner’s interpretation of the reference is inconsistent with the
limitations of the claim. Claim 1 requires that the printing service access
image data from the personal image repository (emphasis added). Since the
Examiner finds that the new URL is the printing service, in order to meet the
claim, the new URL would have to access the personal image repository.
However, as indicated above, the Examiner finds that the printer agency, not
the URL, accesses its personal image repository and sends this information
to the user’s browser as a new URL. Ans. 12. As such, we cannot sustain
the Examiner’s rejection of claims 1-4, 6, 8-14, and 20-43.

4
Appeal 2009-007545
Application 09/998,996

CONCLUSION
The Examiner erred in finding that Savitzky discloses using a
network-based printing service to access image data from a personal
imaging repository.

SUMMARY
The Examiner’s decision to reject claims 1-4, 6, 8-14, and 20-43 is
reversed.

REVERSED

ELD

HEWLETT PACKARD COMPANY
P.O. BOX 272400
3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS, CO 80527-2400
5