Ex Parte Ward et alDownload PDFPatent Trial and Appeal BoardDec 30, 201613911453 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 9503P014 3207 EXAMINER PACHOL, NICHOLAS C ART UNIT PAPER NUMBER 2672 MAIL DATE DELIVERY MODE 13/911,453 06/06/2013 76073 7590 01/03/2017 InfoPrint Solutions/ Blakely 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 David Ward 01/03/2017 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 DAVID WARD, JOHN THOMAS VARGA, and THOMAS GEORGES CYRILLE KOOH Appeal 2016-003204 Application 13/911,453 Technology Center 2600 Before THU A. DANG, ELENI MANTIS MERCADER, and ADAM J. PYONIN, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-003204 Application 13/911,453 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 4—12, and 14—20, which constitute all the claims pending in this application. Claims 3 and 13 have been cancelled We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellants’ claimed invention is directed to “printing a first print job, suspending the first print job to print a second print job” and after completion of printing the second print job, “generating a segment separator page corresponding to the first print job . . . and resuming printing of the first print job” (Abstract). CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is representative of the claimed subject matter: 1. An article of manufacture comprising a non-transitory machine-readable medium including data that, when accessed by a machine, cause the machine to perform operations comprising: printing a first print job; suspending the first print job to print a second print job; determining if the first print job is to be resumed upon completion of printing of the second print job; generating a first segment separator page corresponding to the first print job if the first print job is to be resumed; and resuming printing of the first print job; 2 Appeal 2016-003204 Application 13/911,453 suspending the first print job to print a third print job after resuming printing of the first print job; and determining if the first print job is to be resumed upon completion of printing of the third print job; generating a second segment separator page corresponding to the first print job if the first print job is to be resumed; and resuming printing of the first print job. REFERENCES and REJECTIONS ON APPEAL Claims 1, 10, 11, and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kutsuwada et al. (US 5,729,791; Mar. 17, 1998) (“Kutsuwada”) in view of Simpson et al. (US 2003/0084086 Al; May 1, 2003) (“Simpson”). Final Act 3. Claims 2 and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kutsuwada, in view of Simpson and Mima (US 2007/0177890 Al; Aug. 2, 2007). Final Act 8. Claims 4, 5, 14, and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kutsuwada, in view of Simpson and Bhogal et al. (US 2003/0020944 Al; Jan. 30, 2003) (“Bhogal”). Final Act 10. Claims 6 and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kutsuwada, in view of Simpson and Pandit et al. (US 2009/0217268 Al; Aug. 27, 2009) (“Pandit”). Final Act 12. Claims 7 and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kutsuwada, in view of Simpson and Mantell (US 2002/0075497 Al; June 20, 2002). Final Act 14. 3 Appeal 2016-003204 Application 13/911,453 Claims 8, 9, 18, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kutsuwada, in view of Simpson and Mantell, and further in view of ordinary skill. Final Act 15. ISSUE The pivotal issue is whether the Examiner erred in finding the combination of Kutsuwada and Simpson discloses or suggests “generating a first segment separator page corresponding to the first print job if the first print job is to be resumed” and “generating a second segment separator page corresponding to the first print job if the first print job is to be resumed,” as recited in claim 1. ANALYSIS We adopt the Examiner’s findings in the Answer, Advisory Action, and Final Action and we add the following primarily for emphasis. Appellants argue the Examiner erred in finding the combination of Kutsuwada and Simpson discloses or suggests the two “generating” steps, as recited in claim 1 (App. Br. 9). Appellants first contend that “nowhere in Kutsuwada is there a disclosure, or reasonable suggestion, that the use of bins is integrally implemented in the disclosed interruption process” (App. Br. 10). We are not persuaded by Appellants’ argument. We note that such contention is not commensurate with the scope of claim 1 because claim 1 does not recite any use of the “bins” that is “integrally implemented in the disclosed interruption process” (id.). Nevertheless, the Examiner finds, and we agree, that in Kutsuwada, “if there is an interruption of a current print job by a new print job, each job would go into a separate bin” (Ans. 17—18, 4 Appeal 2016-003204 Application 13/911,453 citing Kutsuwada 1:51—2:25). Appellants fail to address and rebut this finding in the Reply Brief (see Reply Br. 2—3). Appellants further argue that “[sjince Kutsuwada explicitly discloses an implementation that uses output bins, there would be no motivation to use separator pages” and “one skilled in the art would recognize that such separation processes are disparate processes that are not necessarily interchangeable” (App. Br. 10). We are not persuaded by Appellants’ argument. The Examiner finds, and we agree, that “Simpson teaches the substituted step of separating the jobs by using the separator sheets and their functions were known in the art to enable documents to be clearly identifiable when separating the documents without the use of separate discharge trays” (Final Act. 5) and incorporating Simpson’s separator sheets into Kutsuwada “would have been predictable and resulted in a user being able to clearly identify the different jobs on one output tray” (Final Act. 5). Appellants have not persuasively provided arguments or technical evidence to rebut the Examiner’s findings. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory statements are insufficient to rebut a prima facie case). Appellants further argue that even if the references were combinable, “Kutsuwada and Simpson would continue to fail to disclose or suggest a process of generating multiple separator page segments for same print job’'’ (App. Br. 10; Reply Br. 2—3). We are not persuaded by Appellants’ argument. We note Claim 1 recites the mere duplication of the suspension of a first print job, in which a separator page is generated prior to resumption of printing the first print job. See, e.g., MPEP § 2144.04(VI)(B) (citing In Re Harza, 274 F.2d 669 (CCPA I960)). Here, we discern no new or 5 Appeal 2016-003204 Application 13/911,453 unexpected result from the use of multiple suspensions of the first print job in which a separator page is generated prior to resumption of printing the first print job, and Appellants do not argue a new or unexpected result. Thus, we do not find such duplication of steps to be non-obvious in view of the cited references. Appellants further argue that “Kutsuwada discloses a process in which operation of a printer unit is interrupted to perform a copying operation,” meaning that “there is no disclosure or suggestion of suspending a print job to print another job” (App. Br. 11, citing Kutsuwada Fig. 5). We are not persuaded by Appellants’ argument. The Examiner finds, and we agree, that while the interruption can be another print job (Ans. 19, citing Kutsuwada 3:45—52), even if the interruption were a copy job, “it is known that a copy job would involve utilizing the printer unit” and “the interruption would occur as a result of printing” (Ans. 19). Appellants fail to address and rebut this finding in the Reply Brief (see Reply Br. 2—3). Accordingly, we sustain the Examiner’s rejection of independent claim 1 and independent claim 11 commensurate in scope, as well as dependent claims 10 and 20 (see App. Br. 7, 11), and claims 2, 4—9, 12, and 14—19 not separately argued (see App. Br. 7, 11). CONCLUSION The Examiner did not err in finding the combination of Kutsuwada and Simpson discloses or suggests “generating a first segment separator page corresponding to the first print job if the first print job is to be resumed” and “generating a second segment separator page corresponding to the first print job if the first print job is to be resumed,” as recited in claim 1. 6 Appeal 2016-003204 Application 13/911,453 DECISION The Examiner’s decision rejecting claims 1, 2, 4—12, and 14—20 is affirmed. 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 7 Copy with citationCopy as parenthetical citation