Ex Parte Tate

Patent Trial and Appeal Board

Dec 4, 2013

11408435 (P.T.A.B. Dec. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARIA DEL CARMEN TATE1
__________

Appeal 2011-011017
Application 11/408,435
Technology Center 2600
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims related to a
photo printer, which have been rejected for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Hewlett-Packard
Development Company, LP (Appeal Br. 3).
Appeal 2011-011017
Application 11/408,435

2
STATEMENT OF THE CASE
“[H]ome/office photo-quality printers allow users to print digital
images on photo paper” (Spec. 1:8). However, “a user may often consider it
expensive or time-consuming to print a large number of prints from a
home/office printer 10. As such, the [printer] software can be configured to
determine if a memory card 12 contains more than a triggering, predefined
number of photographic images.” (Id. at 5:23-24.) If a memory card
contains more than the predefined number of images, “the operating
software can prompt the user to selectively transfer the photos to an alternate
printing device” such as an online printing service (id. at 4:22-25, 5:27-30).
Claims 1-21 are on appeal. Claim 1 is illustrative and reads as follows
(emphasis added):
1. A home/office printer for selectively printing and transmitting
photographs as recorded on a memory card, the printer comprising:
a printer configured for printing photographs, the printer having a
read-slot configured to receive a memory card;
said printer further including a network coupling configured to couple
the printer to a communication network, the network coupling useful for
transferring photographic image data; and
an operating software for use with the printer and operable
independently of an additional processing device, configured to determine if
the memory card contains more than a triggering, predefined number of
photographic images and to enable a user to print photographic images
recorded on the memory card from the printer and to alternatively transfer
the photographic image data automatically from the memory card to an
online printing service, as an online print order, via the network coupling.

Claims 5 and 16, the only other independent claims on appeal, also
require determining whether a memory card “contains more than a
triggering, predefined number of photographic images.”
Appeal 2011-011017
Application 11/408,435

3
DISCUSSION
The Examiner has rejected claims 1-21 under 35 U.S.C. § 103(a) as
obvious based on Parulski2 and McAfee3 (Answer 4). The Examiner finds
that Parulski discloses a printer comprising a memory card interface and
operating software (id. at 4-5), but not “software . . . configured to determine
if the memory card contains more than a triggering, predefined number of
photographic images” (id. at 5).
The Examiner finds that McAfee discloses a printing system in which
“the printer driver compares the user-defined print job to the set of print
rules to determine whether to send the print job to the local printer or a
remote printer” (id. at 6), where, “[f]or example, a print job with a quantity
over 500 pages, or 500 printed photos with each photo [ ] printed on 1 page,
should be directed to a remote printer” (id.). The Examiner concludes that it
would have been obvious to modify Parulski, based on McAfee, “to provide
[a] user the option of using the printer driver having rules that help
automatically selecting an alternate printer best performing the user’s print
job” (id. at 7).
Appellant argues that “[n]either Parulski nor McAfee disclose
operating software for a printer which is operable independently of an
additional processing device to determine if the memory card contains more
than a triggering, predefined number of photographic images” (App. Br. 18).
Appellant argues that

2 Parulski et al., US 7,027,172 B1, issued Apr. 11, 2006.
3 McAfee et al., US 2003/0206312 A1, published Nov. 6, 2003.
Appeal 2011-011017
Application 11/408,435

4
[t]he information used by the McAfee printer driver is obtained
from user input. McAfee fails to teach any way for determining
any information from a memory card. . . . Therefore, McAfee
fails to disclose operating software which determines whether a
memory card contains more than a triggering, predefined
number of photographic images.
(Id. at 19.)
We agree with Appellant that the Examiner has not shown that
McAfee discloses a printer comprising “software . . . configured to
determine if the memory card contains more than a triggering, predefined
number of photographic images,” as required by the claims. McAfee
discloses a “printer driver . . . that integrates local and remote printing. . . .
Using the printer driver, a user can send print jobs either to the local printer
or a remote printer.” (McAfee 1, ¶ 11.)
McAfee’s printer driver
contains, or has access to, a set of print rules. . . . Once the user
has selected one or more characteristics of the print job (e.g.,
media type, paper size, quantity, etc.), the printer driver
compares the user-defined print job to the set of print rules to
determine whether to send the print job to a local printer or
remote printer.
(Id. at 1, ¶ 12.) “Such rules may address various concerns such as the
quantity of the pages to be printed, the desired quality of the print, whether
the print is to be black and white or color, the type of media, etc.” (id. at 4,
¶ 41).
McAfee states that
[e]ach rule addresses a particular set of printing conditions. For
example, rule 204 is directed to a print job in which the user has
specified a plain paper media type, 8½x11 inch paper, black
Appeal 2011-011017
Application 11/408,435

5
and white print, and a quantity of less than or equal to 100. The
associated destination 206 is the local printer.
(Id. at 4, ¶ 42.) “Print rules 208, 210 and 212 are directed to different sets
of criteria which, if met by a user’s print job, would result in the remote print
rules code 118 directing the print job to a remote printer” (id. at 4, ¶ 43).
Thus, as Appellant has pointed out, McAfee’s print rules determine
whether a print job should be sent to a local printer or a remote printer based
on parameters, such as paper size and number of copies, that are input by a
user. The Examiner has pointed to no disclosure in McAfee of a print rule
that determines local versus remote printing based on the number of data
files recorded on a source medium. Therefore, even though McAfee
discloses that print job types include photographs (McAfee 3, ¶ 36), the
Examiner has not provided an evidentiary basis for finding that it discloses
or would have suggested printer “software . . . configured to determine if the
memory card contains more than a triggering, predefined number of
photographic images,” as required by the claims.
SUMMARY
We reverse the rejection of claims 1-21 as obvious based on Parulski
and McAfee.

REVERSED

cdc