Ex Parte Taylor et al

Board of Patent Appeals and Interferences

Sep 5, 2008

09390954 (B.P.A.I. Sep. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte F. DEVON TAYLOR, BART DAHNEKE, DALE J. BETHERS,
and BRAD P. CHRISTENSEN
____________

Appeal 2008-2958
Application 09/390,954
Technology Center 3600
____________

Decided: September 5, 2008
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
F. Devon Taylor, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-17. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention relates to “printer services that are available on a
computer network and, more specifically, to a method and apparatus for
efficiently providing accounting support for such network-based print
services.” (Specification 1:2-4.) “A typical service provided by a server is
a conventional queue-based printing service.” (Specification 1:24-25.)
“While this complicated queue-based printing system works well, it is rather
time consuming and inefficient in terms of resource consumption.
Specifically, the accounting service software on the print server must
examine the data stream of a print job in order to perform the appropriate
accounting function.” (Specification 2:11-14.) “The invention comprises an
application-to-application communication interface between an accounting
service application and a printer agent application residing on a computer
network. The interface is preferably embodied as novel application
programming interface (API) functions or calls between the applications that
provide accounting support for print services, including tracking the
production of print jobs and the resources consumed by those jobs. The
accounting support services provided by the novel API communication
interface facilitate computing of charges by the accounting application for

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed mar. 21, 2007) and Reply Brief (“Reply Br.,” filed Nov. 26, 2007), and
the Examiner’s Answer (“Answer,” mailed Sep. 26, 2007).
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print services and materials used by print clients.” (Specification 2:20-27.)
This is shown schematically in Fig. 3. See also (Specification 8:8-18.) In
one embodiment, “the accounting application and printer agent preferably
reside on a print server of the network …. The accounting application
registers with the printer agent to provide the agent with, e.g., addresses for
the API print service call. A print client on the network submits print jobs
directly to the printer agent rather than into queues as in the conventional
queue-based printing system. The novel APIs allow the accounting service
application to discover and obtain information about the print jobs as they
are created and processed by the printer agent. Such information enables the
accounting application to leverage use of functions directed to acquiring and
setting attributes for these print jobs, thereby extending the utility of those
functions for the accounting application.” (Specification 2:28-3:9.)
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A communication interface between an
accounting application and a printer agent
application executing on a computer network, the
interface comprising:
application programming interface (API)
functions exchanged and bound between
applications that provide accounting support
services, wherein the accounting support services
are directed to a print job, and the print job is
directly received by a printer agent from a print
client, the printer agent and the accounting support
services reside on a server within a network, and
wherein the accounting support services include
tracking production of the print job and computer
resources consumed by the job, the API functions
comprising a first print service API that is called
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by the printer agent before the print job is created
and sent to a printer and that enables the
accounting application to one of reject the print
job, accept the print job and instruct the printer
agent to place an accounting hold on the print job,
and wherein the accounting support services are
separate and apart from the printer agent and the
printer agent is separate and apart from the printer.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Bennett US 5,146,344 Sep. 8, 1992

The following rejection is before us for review:
1. Claims 1-17 are rejected under 35 U.S.C. §102(b) as being anticipated
by Bennett.

ISSUES
The issue before us is whether the Appellants have shown that the
Examiner erred in rejecting claims 1-17 under 35 U.S.C. §102(b) as being
anticipated by Bennett.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
We begin by commending the Examiner for including a claim map
(attached to the Answer) showing where in Bennett the Examiner finds each
limitation of claim 1 to be described. Implicit in the claim map is the
Examiner’s construction of the claim that led the Examiner to equate
elements of the claimed interface with those described in Bennett to reach
the conclusion that Bennett anticipates the claimed subject matter.
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997). Anticipation is determined by first construing the claims
and then comparing the properly construed claims to the prior art. In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002). Cf.
Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997) (“Implicit in our
review of the Board's anticipation analysis is that the claim must first have
been correctly construed to define the scope and meaning of each contested
limitation.”)
That being said we will not sustain the rejection. We agree with the
Appellants that the subject matter of claim 1 requires the presence of a
network as is commonly understood by those of ordinary skill in the art and
that such a network is not expressly or inherently described in Bennett.
We are faced here with a rejection under §102, not §103.
Accordingly, the question is whether Bennett anticipates the claimed subject,
not whether it would render the claimed subject matter obvious to one of
ordinary skill in the art. For Bennett to be an anticipatory reference, “[t]here
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must be no difference between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field of the
invention.” Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576 (Fed. Cir. 1991). There is no dispute that a network is not
expressly described in Bennett, as that term is understood by those of
ordinary skill in the art. Accordingly, for Bennett to be anticipatory, Bennett
must inherently disclose a network. Under principles of inherency, when a
reference is silent about an asserted inherent characteristic, it must be clear
that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991).
Bennett describes a printing system unconnected to any other
computer. A “network” in the context that it is used in claim 1 would be
understood by one of ordinary skill in the art to refer to a network that
connects computers and not, as Bennett describes, a system of
interconnected printed wiring boards (PWBs) (Bennett, col. 5, ll. 31-32).
The claimed subject matter is drawn to a communication interface
comprising application program interface (API) functions. The claimed API
functions comprise a first print service API that is called by a printer agent
residing on a server within a network. Accordingly, the claimed first print
service API has a function which is to be able to be called by a printer agent
on a server within a network. This is what Bennett must describe to
anticipate the claimed subject matter.
The Examiner (claim chart) points to the controller 7 in Bennett as
representing a server and PWB 70-9 as representing a printer agent. See
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Figs. 2 and 5A of Bennett, respectively. However, we do not see any
indication that PWD 70-9 resides on a server in a network. PWB 70-9 is
part of the system control (element 54) of the controller section 7 of a laser
based printing system 2. As we stated, this is a rejection under §102 where
principles of inherency apply. "Inherency, however may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient," Id. (citing In re Oelrich,
666 F.2d 578, 581 (CCPA 1981)). The missing descriptive matter must,
necessarily, be present in the reference and recognized as such by persons of
ordinary skill. Id. We do not see from Bennett’s system that a server within
a network is necessarily involved. Nor do we find that one of ordinary skill
in the art would recognize the Bennett arrangement as one necessarily
involving a server and a network.
Accordingly, we do not find that a printer agent on a server within a
network is inherently disclosed in Bennett. Because Bennett does not
inherently disclose a printer agent on a server within a network, it follows
that Bennett does not inherently disclose the claimed first print service API
with a function to be able to be called by a printer agent on a server within a
network. That in turn means Bennett does not anticipate the claimed
communication interface.

CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1-17 under 35 U.S.C. §102(b) as being anticipated by
Bennett.

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DECISION
The decision of the Examiner to reject claims 1-17 is reversed.

REVERSED

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LV:

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