Ex Parte Steele

Patent Trial and Appeal Board

Sep 27, 2012

11103976 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DARLENE STEELE
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Appeal 2010-003641
Application 11/103,976
Technology Center 2800
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Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE 1
The Invention
“The embodiments herein generally relate to separating a multiple
quantity print/copy job, and more particularly to a method and system that
produces a single output having all of the quantities of the print job
separated by separator sheets, without additional user interaction.” (Spec. ¶
[0001]).
Exemplary Claims
Independent claim 1 is representative of an aspect of the invention and
is reproduced below (emphasis added to contested limitations):
1. A method comprising:
receiving instructions from a user through a graphic user
interface to print a single print job;
while receiving said instructions from said user,
receiving from said user through said graphic user interface a
plurality of quantities of said single print job, wherein at least
some of said quantities of said single print job comprise
different numbers of copies of said single print job, and wherein
said receiving of said plurality of quantities comprises receiving
said different numbers of said copies of said single print job and
quantity identifiers that identify recipients and destinations of
said quantities of said single print job;
sequentially printing each of said quantities of said single
print job; and

1 Throughout this Decision, we refer to the Final Office Action (FOA)
mailed Mar. 11, 2009; Appeal Brief (App. Br.) filed July 28, 2009;
Examiner’s Answer (Ans.) mailed Oct. 22, 2009; Reply Brief (Reply Br.)
filed Dec. 21, 2009; and the original Specification (Spec.) filed Apr. 12,
2005.
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automatically inserting a separator sheet between each
of said quantities of said single print job.

Dependent claim 6 is representative of another aspect of the invention
and is reproduced below (emphasis added to contested limitations):
6. The method according to claim 1, wherein said separator
sheet comprises identifying information.

Independent claim 8 is representative of yet another aspect of the
invention and is reproduced below (emphasis added to contested
limitations):
8. A method comprising:
receiving instructions from a user through a graphic user
interface to print a single print job;
while receiving said instructions from said user,
receiving from said user through said graphic user interface a
plurality of quantities of said single print job, wherein at least
some of said quantities of said copies of said single print job
comprise different numbers of copies of said single print job,
wherein said receiving of said plurality of quantities of said
single print job comprises receiving said different numbers of
said copies of said single print job and quantity identifiers that
identify recipients and destinations of said quantities of said
single print job, and wherein said single print job comprises a
plurality of documents;
printing a first quantity of said quantities of said single
print job;
automatically inserting a separator sheet after said
printing of said first quantity; and
repeating said printing and said automatically inserting
of said separator sheet for all remaining quantities of said
single print job.
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Dependent claim 9 is representative of another aspect of the invention
and is reproduced below (emphasis added to contested limitations):
9. The method according to claim 8, wherein said printing
is performed utilizing a single printing engine.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
US 5,881,336 Sato Mar. 9, 1999
US 6,729,376 B1 Kakinuma May 4, 2004
US 7,095,513 B2 Stringham Aug. 22, 2006
Rejections on Appeal
A. The Examiner has rejected claims 1-5, 7, 15-18, and 20 under
35 U.S.C § 102(b) as being anticipated by Sato (Ans. 3-6).
B. The Examiner has rejected claims 8-14 under 35 U.S.C
§ 103(a) as being unpatentable over Stringham in view of Kakinuma (Ans.
7-8).
C. The Examiner has rejected claims 6 and 19 as being
unpatentable over Sato in view of Kakinuma (Ans. 9).
GROUPING OF CLAIMS
Based upon the various rejections and Appellant’s arguments, we
select representative independent claim 1 to decide this appeal for claims 1-
5, 7, 15-18, and 20 (App. Br. 16-21); representative independent claim 8 to
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decide this appeal for claims 8-14 (App. Br. 22-25); and representative
dependent claim 6 to decide this appeal for claims 6 and 19. (App. Br. 25).
We have only considered those arguments raised by Appellant in the
Briefs. Arguments Appellant could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived.
ISSUES AND ANALYSIS
1. 35 U.S.C. § 102(b): Claims 1-5, 7, 15-18, and 20
Appellant’s Contentions
Appellant contends that the Examiner has failed to establish that Sato
anticipates claims 1-5, 7, 15-18, and 20 under 35 U.S.C. § 102(b). (App. Br.
16-21). More specifically, Appellant contends that Sato fails to disclose “a
separator sheet,” as recited in independent claims 1 and 15. (App. Br. 16).
Appellant further notes that Webster's New Universal Unabridged
Dictionary provides a definition of “separator” as “[a] person or thing that
separates,” and contends that Appellant’s Specification further clarifies this
definition by using the word “separator” to modify the noun “sheet,” and
that the separator sheet 200 can include identifying information, such as the
recipient or delivery location for that quantity of the print job, as well as the
number of copies that are within the quantity located below (or above) the
separator sheet. (App. Br. 17).
Appellant also contends that Sato describes how tape cutter 53
operates so as to cut a tape and stick it onto the top of printed sheets on the
printed sheet tray 52, such that “it is clear that Sato does not recite a separate
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sheet but rather a tape that adheres to the front sheet of a print job,” (Id.) and
therefore does not meet the claim limitation of “inserting a separator sheet
between each of said quantities of said single print job,” as recited in claim
1.
Appellant also contends that
the broadest reasonable interpretation of the term “separator
sheet” must be consistent with the context of Appellant’s claim
and the Published Application. In particular, Appellant’s
Published Application provides a description of a separator
sheet that is un-attached to the other sheets. (See for example,
Published Application, Fig. 2 and para. 20).
Reply Br. 4, ¶ [0004].
Appellant contends that the MPEP requires that the broadest
reasonable interpretation of the claims must be consistent with the
interpretation that those with skill in the art would reach and that the
Examiner’s Answer urges an interpretation that is inconsistent with that
requirement and is thus improper under MPEP § 2111. (Reply Br. 5,
¶ [0006]).
Appellant further contends in this regard that “even ignoring Sato’s
own characterization of the cut tape, once the cut tape is adhered to the ‘top
of printed sheet’ as described by Sato, it is no longer a separator sheet as
described in Appellant’s claims and further described in Appellant’s
Application, Fig. 2 and para. 20.” (Reply Br. 5, ¶ [0007]).
In addition, Appellant contends that Sato also fails to disclose at least
the limitations directed to “‘. . . while receiving said instructions from said
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users; receiving from said user through said graphical interface a plurality of
quantities of said single print job . . . .’” (App. Br. 18 (emphasis added)).
Appellant also contends that the Examiner failed to afford patentable
weight to the modifier “while”2 which begins the phrase “while receiving
said instructions from said user, receiving from said user through said
graphic user interface a plurality of quantities of said single print job,” and
the Examiner also failed to indicate how Sato addresses the limitations of
“receiving from said user,” “through said graphical interface,” and “a
plurality of quantities.” (App. Br. 18).
Finally, Appellant contends that Sato merely describes a system in
which previously entered class size information is retrieved and used to
submit a job to create stencils, but which does not provide a user interface
that is useful in more dynamic environments. (App. Br. 18-19).
Issue 1
Appellant’s arguments present us with the issue: Did the Examiner
err in finding that Sato discloses every limitation of Appellant’s claimed
invention, particularly that Sato discloses a method that includes steps
requiring, inter alia, “while receiving said instructions from said user,
receiving from said user through said graphic user interface a plurality of
quantities of said single print job . . . automatically inserting a separator
sheet between each of said quantities of said single print job,” as recited in
independent claim 1?

2 In the Reply Brief, Appellant subsequently clarified that the modifier
“while” should have been addressed, and not “when” as stated in the Appeal
Brief (Reply Br. 5-6).
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Analysis
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claims 1-5, 7, 15-18, and 20. We adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons and rebuttals set forth by
the Examiner in the Examiner’s Answer (Ans. 3-6, 9-12) in response to
Appellant’s Arguments (App. Br. 16-19; Reply Br. 3-6). However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
We concur with the conclusions reached by the Examiner. In
particular, we find that the Examiner’s position that Sato’s “cut tape”
discloses the claimed “separator sheet” is a reasonable claim construction
under the broadest reasonable interpretation standard. During prosecution,
“the PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Further in this regard, we note that, to the extent disclosed by
Appellant, the claimed separator sheet could be the same size and shape as a
printed sheet, but the recitations in claim 1 do not preclude using a
differently sized or shaped separator. Appellant has not pointed out any
special description that would require defining or interpreting the size/shape
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of the separator shape differently, i.e., Appellant’s have not provided any
specialized definition of “sheet” that would preclude or replace the
Examiner’s dictionary definition (Ans. 9). For example, we note that
Appellant’s Specification merely states that “[t]he separator sheet is
distinguishable from sheets used for the printing, and can include identifying
information, such as the recipient or delivery location for that quantity of the
print job.” (Spec. p. 3, ¶ [0007]). We find that Sato’s cut tape is not
inconsistent with Appellant’s Specification in this regard, and therefore we
also find that Sato’s cut tape discloses Appellant’s recited separator sheet.
We also concur with the Examiner’s finding that Sato discloses “while
receiving said instructions from said user, receiving from said user through
said graphic user interface a plurality of quantities of said single print job,”
as recited in representative claim 1, and find that the Examiner did not
ignore the modifier “while” as asserted by Appellant. (See Ans. 3-4 (citing
the example in Sato at col. 6, ll. 27-34 and ll. 38-41)).
In addition, with respect to dependent claim 2 and independent claim
15, we agree with the Examiner that Sato Fig. 7 discloses a (single) printing
engine. (Ans. 4-5).
Accordingly, Appellant’s arguments have not convinced us of any
error in the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s anticipation rejection of
claim 1, and claims 2-5, 7, 15-18, and 20 falling therewith.
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2. 35 U.S.C. § 103(a): Claims 8-14
Appellant’s Contentions
Appellant contends that the Examiner has failed to establish that
Stringham in combination with Kakinuma renders claims 8-14 unpatentable
under 35 U.S.C. § 103(a). (App. Br. 22-25).
More specifically, Appellant contends that claim 8 recites “a single
print job” but, in contrast, Stringham describes “‘[a] method and apparatus
for language translation of production job output,’” i.e., Stringham describes
translation jobs rather than print jobs. (App. Br. 22).
Appellant further contends that, “[i]n translation, the second
translation is transformed into a different set of words, characters fonts and
the like. . . . [T]he second translation is clearly not the same print job as the
first. . . . [Appellant therefore contends that] the multiples entries described
in Stringham relate to a translation and are not for the same print job.” (Id.).
Finally, Appellant contends that neither Stringham nor Kakinuma
teaches or suggests a separator sheet, and that Kakinuma merely describes
the use of conventional adhesive tape which is attached to the front sheet of
the print job. (Id.). Further in this regard, Appellant contends that
Kakinuma’s use of adhesive tapes teaches away from the separator sheet
recited in claim 8. (App. Br. 23).
Issue 2
Appellant’s arguments present us with the issue: Did the Examiner
err in finding that Stringham in combination with Kakinuma teaches or
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suggests every limitation of Appellant’s claimed invention, particularly the
steps of “while receiving said instructions [to print a single print job] from
said user, receiving from said user through said graphic user interface a
plurality of quantities of said single print job . . . automatically inserting a
separator sheet after said printing of said first quantity; and repeating said
printing and said automatically inserting of said separator sheet for all
remaining quantities of said single print job,” as recited in independent claim
8?
Analysis
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claims 8-14. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 7-8, 11-12) in response to Appellant’s
arguments (App. Br. 22-23). However, we highlight and address specific
findings and arguments regarding claim 8 for emphasis as follows.
We concur with the conclusions reached by the Examiner. In
particular, we agree with the Examiner’s finding that Stringham teaches or
suggests “a single print job,” as recited in representative claim 8. In support
of the Examiner’s position, we note that Appellant’s Specification provides a
definition of by stating that “the ‘single print job’ comprises one or more
documents, each of which can be a single page or multiple pages that are
bound or unbound . . . [and] the method sequentially prints each of the
quantities of copies.” (Spec. p. 2, ¶ [0006]).
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Consistent with the Examiner’s findings (Ans. 11) and Appellant’s
definition, we find that Stringham’s teaching regarding providing copies of
document translations meets this limitation.
Similar to the analysis of Sato’s teaching of a separator sheet that is
differently sized and shaped from the pages being printed, discussed supra,
Kakinuma teaches marker 47 which meets the definition of “separator sheet”
as set forth by the Examiner (Ans. 11). We do not find Appellant’s
argument (App. Br. 23) that Kakinuma’s use of adhesive tape teaches away
from the separator sheet recited in claim 8 to be persuasive given the
definition of “separator sheet” discussed above.
Accordingly, Appellant’s arguments have not convinced us of any
error in the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s unpatentability rejection
of claim 8, and claims 9-14 falling therewith.
3. 35 U.S.C. § 103(a): Claims 6 and 19
Appellant’s Contentions
Appellant contends that the Examiner has failed to establish that Sato
in combination with Kakinuma renders claims 6 and 19 unpatentable under
35 U.S.C. § 103(a). (App. Br. 25).
More specifically, Appellant contends that the combination of Sato
with Kakinuma does not make up for the alleged deficiencies of Sato with
respect to the anticipation rejection of independent claim 1 and, “since the
combination lacks any suggestion of a separator sheet, it cannot disclose ‘. . .
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wherein said separator sheet comprises identifying information.” (Ans. 25-
26).
Based upon Appellant’s argument, we find that the patentability of
claims 6 and 19 turns on Issue 1, discussed supra with respect to the
anticipation rejection of claim 1 and 15. Further, we agree with the
Examiner by noting that Kakinuma teaches the use of separator sheets with
identifying information such as color or shape. (Ans. 8).
Accordingly, Appellant’s arguments have not convinced us of any
error in the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s unpatentability rejection
of claims 6 and 19.
CONCLUSIONS
1. The Examiner did not err in rejecting claims 1-5, 7, 15-18, and
20 under 35 U.S.C. § 102(b) as being anticipated by Sato.
2. The Examiner did not err in rejecting claims 8-14 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Stringham in
view of Kakinuma.
3. The Examiner did nor err in rejecting claims 6 and 19 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Sato in view
of Kakinuma.
DECISION
1. The decision of the Examiner to reject claims 1-20 is affirmed.
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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

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