Ex Parte Sorenson

Board of Patent Appeals and Interferences

Sep 28, 2011

10460494 (B.P.A.I. Sep. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DUSTIN SORENSON
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Appeal 2009-008896
Application 10/460,494
Technology Center 2600
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Before THOMAS S. HAHN, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. These claims stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Wang (US 6,615,372 B1; issued Sep. 2, 2003).
We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection under 35 U.S.C. § 102(e).

STATEMENT OF THE CASE
Appellant describes the present invention as follows:
Printers interfaced with a [Small Office Home Office]
SOHO network, such as a peer-to-peer network, are monitored
from a client of the SOHO network with a printer
administration tool of the client. A polling engine of the printer
administration tool periodically polls the network to find the
printers and retrieve each printer's status. An error detection
engine of the printer administration tool determines if a printer
has an error status, such as a paper jam status or low
consumable status, such as low ink, toner or paper. A printer
administration graphical user interface generates a table to
display the found printers and each found printer's status and
also displays notice of found printers having an error status.
For instance, the printer administration graphical user interface
displays each found printer as an icon within the generated table
to allow a user to selectively interact with the printers and
indicates determined errors with a color code or a separate
notice pop-up window.
(Abstract).
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Independent claim 1 is illustrative:
1. An information handling system comprising:
processing components operable to process information;
a network interface operable to communicate information
with a network as a client, the network having plural printers,
the printers having status information; and
a printer administration tool operating on the processing
components and communicating with the network through the
network interface, the printer administration tool operable to
find the printers interfaced with the network and retrieve the
status of the printers for display of the status of each printer at
the information handling system, the printer administration tool
further operable to display an error status retrieved from one or
more of the printers.

ARGUMENTS
Appellant contends that the rejection of claims 1-20 is improper
because “Wang fails to teach, disclose or suggest ‘the printer administration
tool operable to find the printers interfaced with the network and retrieve the
status of the printers for display of the status of each printer at the
information handling system,’” as required by claim 1 (App. Br. 3). Instead,
“Wang discloses retrieval of problematic information about a printer in
response to the printer being selected and before a print job is sent to the
printer” (id.). “Wang expressly teaches away from polling printers of a
network and therefore teaches away from querying printers for the status of
the printers except for the printer selected by an end user” (id.).

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FINDINGS OF FACT
The record supports the following Findings of Fact (Facts) by a
preponderance of the evidence:
1. Wang states the following in the BACKGROUND OF THE INVENTION
section:
Currently, there are available printer network
management software packages (such as the one sold under the
trademark HP JETADMIN), which continuously poll a
predetermined set of printers or a single printer to determine
whether or not the printer(s) are on-line (i.e., capable of being
printed to). For example, HP JETADMIN may display the
selected printer on the display of the user's computer in a color
green, indicating that the printer is connected to the host
computer. HP JETADMIN may also display, for example, one
of the paper trays of the printer in a color red, which indicates
that that particular paper tray is not operating. Based on results
from continuously polling the printer(s), HP JETADMIN
accordingly changes the color from red to green and vice versa.
Thus, the user is able to view the displayed printer icon and
determine whether or not to submit a print job to the selected
printer.
(col. 1, l. 66 – col. 2, l. 14).
2. Wang states the prior art printer network management software
packages possess the following problem:
However, a problem with HP JETADMIN and other
network management software applications is they must
continuously poll the printer(s). This increases the network
traffic on the network, and thus reduces the efficiency of the
network.
(col. 2, ll. 15-19).
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3. Wang summarizes his invention as follows:
[O]ne object of this invention is to solve the above-noted
and other problems.
Another object of the present invention is to provide a
novel method of notifying a user about a problem with a printer
prior to the print job being sent to the printer.
Yet another object of the present invention is to provide a
novel computer program product and corresponding graphical
user interface which retrieves and displays problematic
information about a printer when the user opts to print a file on
the printer. Also provided are alternative options from which
the user may choose if the printer is not functioning properly.
To achieve these and other objects, the present invention
provides a method of printing a document, for example, on a
recording medium of a printer selected by a user. Problematic
information is retrieved about the printer in response to the
printer being selected and before the print job is sent to the
printer. The retrieved problematic information is displayed to
the user. In addition, the problematic information may be
retrieved, for example, by transmitting Simple Network
Management Protocol (SNMP) commands to the printer, if the
computer is connected to the printer via a network, or by
transmitting printer job language commands if the computer is
connected to the printer via a parallel port.
(col. 2, ll. 30-54).

ANALYSIS
We agree with Appellant that Wang’s invention does not include
“find[ing] the printers interfaced with the network and retriev[ing] the status
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of [all of these] printers for display of the status of each printer at the
information handling system,” as required by claim 1. Wang instead
discloses that this disputed functionality was associated with the operation of
the prior art “printer network management software packages (such as the
one sold under the trademark HP JETADMIN)” (Fact 1). Wang’s invention
is intended to overcome some of the prior-art printer network management
software packages’ perceived drawbacks, such as the drawback of having to
continuously poll all of the printers in the network (Fact 2). Wang
overcomes this drawback by presenting problematic information only for a
printer selected for a print job – not every printer on the network (Fact 3).
For the foregoing reasons, Appellant has persuaded us that Wang’s
invention, the portion of Wang relied upon by the Examiner, does not
disclose every limitation of independent claim 1. Independent claims 10 and
18 recite similar limitations. See claim 10 (setting forth a method that
includes “retrieving the status from each found printer to the client”); see
also claim 18 (setting forth a printer administration tool that comprises “a
polling engine interfaced with the network and operable to find printers
interfaced with the network and to retrieve the status of each found printer”).
Accordingly, we will not sustain the Examiner’s rejection of independent
claims 1, 10, and 18, or the rejection of claims 2-9, 11-17, and 19-20, which
respectively depend from these independent claims.
However, as explained above, the prior art section of Wang, which the
Examiner did not rely upon, does disclose the claimed components and
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functionality of at least independent claim 1 (Fact 1). In particular, Wang
teaches that the printers of the network are polled continuously and
displayed icons of the printers are changed based on the polling (i.e.,
displayed status of printers) so that a user can identify printers which are not
operating and thereby not select them for printing (Fact 1). We therefore
exercise our authority pursuant to 37 C.F.R. § 41.50(b), rejecting
independent claim 1 under 35 U.S.C. § 102(e) as anticipated by the
technology disclosed in the background section of Wang. Because the
Board of Patent Appeals and Interferences is a review body, rather than a
place of initial examination, we have not also reviewed the remaining claims
2-20 to the extent necessary to determine whether these claims are also
unpatentable. The appropriateness of any further rejections is to be
determined by the Examiner.

DECISION
The Examiner’s decision rejecting claims 1-20 over Wang’s invention
is reversed.
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b), rejecting independent claim 1 under 35 U.S.C.
§ 102(e) as anticipated by the prior art technology disclosed in the
background section of Wang.

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FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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