Ex Parte Waller et al

Patent Trial and Appeal Board

Dec 20, 2016

12556742 (P.T.A.B. Dec. 20, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
8185P071 3163
EXAMINER
RODRIGUEZGONZALEZ, LENNIN R
ART UNIT PAPER NUMBER
2672
MAIL DATE DELIVERY MODE
12/556,742 09/10/2009
76073 7590 12/21/2016
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
Marquis G. Waller
12/21/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARQUIS G. WALLER, KYLE P. MANNING,
and LINDA SUE LIEBELT
Appeal 2016-001023
Application 12/556,7421
Technology Center 2600
Before ERIC S. FRAHM, JOHN D. HAMANN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—21. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellants’ claimed invention relates to “upgrading printing software
products.” Spec. 11. Claim 1 is illustrative of the subject matter of the
appeal and is reproduced below.
1 According to Appellants, the real party in interest is Ricoh Company, Ltd.
App. Br. 3.
Appeal 2016-001023
Application 12/556,742
1. A method comprising:
receiving a configuration file including names of user
selected print job attributes to be displayed in a print report to
provide information regarding a print job;
allocating locations for each of the selected attributes in
the print report;
receiving a stream of print data;
collecting data from the data stream associated with each
of the selected attributes by reading properties of attributes in the
print data indicated by the names included in the configuration
file; and
generating the print report by inserting the collected data
into each of the allocated locations.
REJECTION ON APPEAL
The Examiner rejected claims 1—21 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Miller (US 2005/0209892 Al;
published Sept. 22, 2005) and O’Brien (US 2003/0187939 Al; published
Oct. 2, 2003).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants.
We disagree with Appellants’ arguments and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in (1) the December 5, 2014 Final Office Action (“Final Act.” 2—
7), (2) the January 28, 2015 Advisory Action (“Adv. Act.” 2), and (3) the
August 25, 2015 Examiner’s Answer (Ans. 2—3). We highlight and address,
however, specific findings and arguments below for emphasis.
2
Appeal 2016-001023
Application 12/556,742
(1) A configuration file including names of print job attributes
Appellants argue the combination of Miller and O’Brien, and O’Brien
in particular, fails to teach or suggest “receiving a configuration file
including names of user selected print job attributes to be displayed in a print
report to provide information regarding a print job,” as recited in claims 1
and 17, and similarly recited in claim 9. App. Br. 9—10; Reply Br. 2—3.
Specifically, Appellants argue O’Brien instead teaches “an email system
configuration file that includes a parameter that may be set to instruct an
email program to automatically generate an error report.” App. Br. 10
(citing O’Brien 1133). Appellants contend “that such a parameter cannot
reasonably be construed as being equivalent to a configuration file that
includes names of user selected print job attributes to be displayed in a print
report.” Id.', Reply Br. 2—3.
The Examiner finds, and we agree, the combination, and O’Brien in
particular, teaches or suggests the disputed limitation. See Ans. 2; Adv. Act.
2. Specifically, the Examiner finds, and we agree, O’Brien teaches or
suggests an email system configuration file (i.e., a configuration file) having
user set parameters (i.e., print job attributes), named, for example, “Print
P-O-R error reply messages” or “Contact accepts P-O-R requests”, to be
displayed in a print report (e.g., error report, user interface) to provide
information regarding a print job (e.g., an email). Ans. 2 (citing O’Brien
1133, Fig. 7). Additionally, we find Appellants’ arguments largely state the
disputed limitation is not taught by O’Brien without sufficiently explaining
why O’Brien fails to disclose the disputed limitation. See 37 C.F.R. §
41.37(c)(l)(iv); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
3
Appeal 2016-001023
Application 12/556,742
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”).
(2) Reading properties of attributes indicated by the names
Appellants argue that the combination, and Miller in particular, fails
to teach or suggest “collecting data from the data stream associated with
each of the selected attributes by reading properties of attributes in the print
data indicated by the names included in the configuration file,” as recited in
claim 1 and 17, and as similarly recited in claim 9. App. Br. 10-11; Reply
Br. 3. Specifically, Appellants argue Miller instead teaches “extracting a
selected field based on location to a group signature.” App. Br. 11; Reply
Br. 3 (citing Miller 1159).
The Examiner finds, and we agree, the combination of Miller and
O’Brien teaches or suggests the disputed limitation. See Ans. 3. The
Examiner finds, and we agree, Miller teaches, or at least suggests, extracting
data (e.g., selected attribute values) from a data stream (e.g., print report)
using the extractable data field attribute names (e.g., “font”) — “in every
case a specific name for each font will be present.” See id. (citing Miller
11160-61); see also Miller || 160 (teaching parsing the report for every
extractable field), 161 (teaching each extractable field can include “standard
headings or other characters”). As to O’Brien, the Examiner finds, and we
agree, it teaches or suggests that the actual names of the attributes (e.g., Print
P-O-R error reply messages” or “Contact accepts P-O-R requests”) are
included in the configuration file. Ans. 3 (citing O’Brien Fig. 7).
4
Appeal 2016-001023
Application 12/556,742
CONCLUSION
Based on our findings above, we sustain the Examiner’s rejection of
claims 1, 9, and 17. We also sustain the Examiner’s rejection of claims 2—8,
10-16, and 18—21 for which Appellants did not provide separate arguments
for patentability.
DECISION
We affirm the Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—
21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
5