Ex Parte Webb et al

Patent Trials and Appeals Board

May 15, 2019

13916459 - (D) (P.T.A.B. May. 15, 2019)

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.
13/916,459 06/12/2013 Rowdy K. Webb 83199173 9277
22879
HP Tnr
7590 05/17/2019 EXAMINER
3390 E. Harmony Road
Mail Stop 35
MORGAN, JEFFREY CHAD
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
05/17/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROWDY K. WEBB, DANIEL M. HOLCOMB,
PHILLIP A. MCOOG, JEAN-FREDERIC PLANTE,
JEFFERSON P. WARD, KERRY J. KILK, ERIK M. PETERSON, and
MICHAEL MULLOY
Appeal 2018-005722
Application 13/916,459
Technology Center 2800
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-005722
Application 13/916,459
The Applicant (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner’s final decision to reject claims 1—16, 19, and 20.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
I. BACKGROUND
The subject matter on appeal relates to: a method performed using a
computer to facilitate an efficient printing ink or printing cartridge
replacement for a printer; a non-transitory storage medium storing a
machine-readable program code used for performing such a method; and a
computer system including such a program code (Specification filed
June 12, 2013 (“Spec.”), 110; Claims Appendix). Representative claims 1,
14, and 16, which are the only independent claims on appeal, are reproduced
from the Claims Appendix to the Appeal Brief, as follows:
1. A method performed by a computer, comprising:
remotely communicating with a printer to receive data
indicating a cumulative consumption value for a printing fluid
consumed in the printer;
calculating a plurality of variable values including a first
variable value that represents a quantity of cumulative
consumption of the printing fluid that triggers a fulfilment event,
a second variable value that represents a quantity of the printing
1 The Appellant is the Applicant, “Hewlett-Packard Development Company,
L. P.” (“HPDC”), which is also listed as the real party in interest
(Application Data Sheet filed June 12, 2103, 6; Appeal Brief filed August 9,
2017 (“Appeal Br.”), 1). According to the Appellant, “HPDC ... is a
wholly-owned affiliate of HP Inc.” and “[t]he general or managing partner
of HPDC is HPQ Holdings, LLC” (Appeal Br. 1).
2 Appeal Br. 6—24; Reply Brief filed May 15, 2018 (“Reply Br.”), 1—13;
Final Office Action entered March 10, 2017 (“Final Act.”), 2—24;
Examiner’s Answer entered March 21, 2018 (“Ans.”), 2—8.
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fluid that is depleted at the printer for a given time interval, the
second variable value derived based on an estimated
evaporation quantity loss, and a third variable value that is a
statistically derived depletion quantity representing a cumulative
consumption of the printing fluid that causes depletion of a
printing fluid supply,
wherein one or more predefined relationships are defined
between the first variable value, the second variable value, and
the third variable value',
receiving a variation of the second variable value;
changing the first variable value based on the variation of
the second variable value and based on the one or more
predefined relationships;
triggering the fulfilment event in response to the computer
determining that the indicated cumulative consumption value
exceeds the changed first variable value; and
in response to the triggering, signaling a communication
across a network to initiate a supply of replacement printing fluid
to be shipped to the printer.
14. A non-transitory storage medium storing a machine-
readable program code, the program code to cause a computer
to:
remotely communicate with a printer to receive data
indicating a cumulative consumption value for a printing fluid
consumed in a printer;
calculate a plurality of variable values including a
threshold value that represents a quantity of cumulative
consumption of the printing fluid that triggers a fulfilment event,
a first variable value that represents a quantity ofprinting fluid
that is depleted at the printer for a given time interval, the first
variable value derived based on an estimated evaporation
quantity loss, and a second variable value that is a statistically
derived depletion quantity representing a cumulative
consumption of the printing fluid that causes depletion of a
specified percentage of a population ofprinting fluid supplies;
wherein one or more predefined relationships are defined
between the threshold value, the first variable value, and the
second variable value;
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receive a variation of at least one of the first variable value
or the second variable value;
change the threshold value based on the variation of at
least one of the first variable value or the second variable value
and based on the one or more predefined relationships;
trigger the fulfilment event in response to the indicated
cumulative consumption value exceeding the changed threshold
value; and
in response to the triggering, signal a communication
across a network to initiate a supply of replacement printing fluid
to be shipped to the printer.
16. A computer system comprising:
a non-transitory storage medium storing a machine-
readable program code;
a computer, the machine-readable program code
executable on the computer to:
remotely communicate with a printer to receive data
indicating a cumulative consumption value for a printing fluid
consumed in a printer;
calculate a plurality of variable values including a first
threshold variable value that represents a quantity of cumulative
consumption of the printing fluid that triggers a fulfilment event,
a second variable value that represents a quantity of the printing
fluid that is depleted at the printer for a given time interval, the
second variable value derived based on an estimated
evaporation quantity loss, and a third variable value that is a
statistically derived depletion quantity representing a cumulative
consumption of the printing fluid that causes depletion of a
printing fluid supply,
wherein one or more predefined relationships are defined
between the first threshold variable value, the second variable
value, and the third variable value',
receive a variation of at least one of the second variable
value or the third variable value;
change the first threshold variable value based on the
variation of at least one of the second variable value or the third
variable value and based on the one or more predefined
relationships;
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Application 13/916,459
trigger the fulfilment event in response to the indicated
cumulative consumption value exceeding the changed first
threshold variable value; and
in response to the triggering, signal a communication
across a network to initiate a supply of replacement printing fluid
to be shipped to the printer.
(Claims Appendix i, v—vi (emphases added)).
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, which are listed
as follows:
A. Claims 14—16, 19, and 20 under AIA 35 U.S.C. § 112(a) as
failing to comply with the written description requirement;
B. Claims 1—16, 19, and 20 under 35 U.S.C. § 101 as patent-
ineligible because the claimed subject matter is directed to a
judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without reciting significantly more; and
C. Claims 1, 5—7, 14, 16, 19, and 20 under 35 U.S.C. § 103 as
unpatentable over Hayward et al.3 4 5(“Hayward”) in view of
Therien.4,5
(Ans. 2—8; Final Act. 2—24.)
III. DISCUSSION
Rejection A (Written Description). The Examiner finds that “a
threshold value” (Claim 14) and “a first threshold variable value” (claim 16)
3 US 6,985,877 Bl, issued January 10, 2006.
4 US 6,382,762 Bl, issued May 7, 2002.
5 The Examiner states that the rejection of claims 2—4, 8—13, and 15 under
35 U.S.C. § 103 has been withdrawn (Ans. 2).
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lack written description in the Inventors’ disclosure as original filed (Final
Act. 2—3). Specifically, the Examiner states that although the originally-
filed disclosure describes “a fulfillment trigger” corresponding to a
cumulative consumption of printing fluid that triggers a shipment of a supply
of replacement printing fluid, the disclosure fails to describe “a fulfillment
trigger” to mean a “threshold,” which has a well-known meaning in the art
(id. at 3).
The Appellant contends that adequate written description in the
original disclosure exists as the claimed subject matter need not be described
in the original disclosure in haec verba in order to satisfy the written
description requirement (Appeal Br. 6). The Appellant argues that one
skilled in the relevant art would understand from the description in the
original disclosure (Spec. 19, 41) that “a fulfillment trigger” is a threshold
value with which a cumulative consumption value is compared (id. at 7).
We agree with the Appellant on this issue. The Examiner’s rejection
is based merely on a lack of literal support, which is not the correct standard
for measuring compliance with the written description requirement. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
banc);A? re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
As the Appellant points out (Appeal Br. 7), the originally-filed
Specification describes a “fulfillment trigger,” which is a variable value,
corresponding to a cumulative consumption of printing fluid that triggers a
shipment of a supply of replacement printing fluid—e.g., in the form of a
printing fluid cartridge (Spec. 119). The Specification further explains that
“if the present cumulative consumption of black ink ... is equal to or greater
than the corresponding variable value ‘FT’ [fulfillment trigger], then a
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shipment of a supply of replacement black ink to the printer . . . has been
triggered” (id. 141). Even if the claim term “threshold” is given the
meaning offered by the Examiner (Ans. 3), “a level, point, or value above
which something is true or will take place and below which it is not or will
not,” (as found in www.merriam-webster.com), we are of the opinion that
the above-identified descriptions in the originally-filed Specification
reasonably convey to a person skilled in the art that the Inventors had
possession of a threshold variable value representing cumulative
consumption that triggers a replacement ink fulfillment event. Ariad, 598
F.3d at 1351.
For these reasons, we do not sustain Rejection A.
Rejection B (Patent Eligibility). As for claim 1, the Examiner states
that the calculating step amounts to a concept that “is not meaningfully
different than the concept of collecting information, analyzing it, and
displaying (signaling) certain results of the collection an analysis, which [has
been] found by the courts to be an abstract idea” (Final Act. 3 4).
According to the Examiner, “[t]he claim does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to significantly
more than the abstract idea” (id. at 4). As for claims 14 and 16, the
Examiner states that although these claims contain additional elements
specifying a non-transitory storage medium storing a machine-readable
program code and a computer system, respectively, these additional
“elements are recited at a high degree of generality” that amount to
performing calculations on a generic computer with “no indication that the
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combination of elements improves the functioning of a computer or
improves any other technology” (id. at 5—6).
The Appellant disagrees, arguing that the Examiner’s position is based
on an overgeneralized reading of the claims (Appeal Br. 8—9). Specifically,
the Appellant contends that “[w]hen the ordered combination of the
elements as a whole is considered, claim 1 is directed to improving printer
functionality” (id. at 9). In particular, the Appellant points out that “the
Specification specifically explains how the printe[r] functionality can be
improved, namely by reducing an extended amount of downtime of the
printer” (id. at 10). In the Appellant’s words, “claim 1 recites a particular
solution to a problem or a particular way to achieve a desired outcome,
namely providing a technique to trigger the supply of replacement printing
fluid to a printer” (id. ). Furthermore, the Appellant argues that even if
claim 1 can properly be characterized as being directed to an abstract idea, it
recites additional features that are sufficient to transform the claimed subject
matter into a patent-eligible application (id. at 12—14). The Appellant urges
that the two other independent claims—namely, claims 14 and 16—are
similarly patent-eligible (id. at 14).
We agree with the Appellant. Our reasons follow.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. §101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Banklnt’l, 573 U.S. 208,
216(2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217—18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75—77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices {Alice, 573 U.S. at 219—20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594—95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” {Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” {id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267—68 (1854))); and manufacturing flour {Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract... is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requiring] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§101 with regard to the first step of the Alice/Mayo test (i.e., Step 2 A of the
USPTO’s Subject Matter Eligibility Guidance as incorporated into M.P.E.P.
§ 2106). USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance (“Revised Guidance”). 84 Fed. Reg. 50 (Jan. 7, 2019).
Thus, under Step 1 of the Guidance, as revised, we determine whether the
claimed subject matter falls within the four statutory categories: process,
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machine, manufacture, or composition of matter. Step 2A of the Guidance is
two-pronged, under which we look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)—(c), (e)—(h)).
See 84 Fed. Reg. at 54—55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then, under Step
2B, look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
We find, under Step 1 of the Guidance, that claim 1 is directed to a
process (i.e., a method performed by a computer) that specifies a series of
acts and claims 14 and 16 are directed to a machine or manufacture (i.e., a
non-transitory storage medium storing a machine-readable program code
and a computer system comprising such a non-transitory storage medium,
respectively) (Claims Appendix i, v—vi). Although each of these claims falls
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within one of the four categories of invention recited in the statute, that does
not end our inquiry.
Under Step 2A(1), of the Revised Guidance, we find that claim 1, for
example, recites a judicial exception in the form of mathematical concepts or
mental processes (i.e., the “calculating” or “changing” steps in reproduced
claim 1 above). Specifically, the “calculating” step determines a “first
variable value that represents a quantity of cumulative consumption of the
printing fluid that triggers a fulfilment event,” “a second variable value” that
takes account of an estimated evaporation quantity loss over a given period
of time, and a “third variable value that is a statistically derived depletion
quantity representing a cumulative consumption of the printing fluid that
causes depletion of a printing fluid supply” (Claim Appendix i). The claim
further recites that the three variables have “one or more predefined
relationships” and that the first variable value is changed “based on the
variation of the second variable value and based on the one or more
predefined relationships” (id. ).
But the mere fact that the claim recites mathematical concepts or
mental processes does not automatically render the claim patent-ineligible.
Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.”).
Under Step 2A(2), as in Diehr (integrating concepts from the
Arrhenius equation to provide an improved rubber molding process), claim 1
recites additional elements (steps) that integrate the mathematical concepts
or mental processes into a practical application directed to a printer’s overall
operation in a network environment. As recited in claim 1, the method also
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includes the steps of “remotely communicating with a printer to receive data
indicating a cumulative consumption value for a printing fluid consumed in
the printer” and “signaling a communication across a network to initiate a
supply of replacement printing fluid to be shipped to the printer” when the
mathematical concepts or mental processes yield a first variable value that
triggers a fulfilment event. These additional steps, which occur both before
and after the mental processes, are physical acts that cannot be performed by
purely mathematical or mental processes. As explained in the Specification
(Spec. 19), the claimed subject matter viewed as whole including the
mathematical concepts or mental processes provides an improved network
printer operation because it avoids extended downtime and facilitates
efficient stocking of replacement printer cartridges. Diehr 450 U.S. at 187
(“[0]ne does not need a ‘computer’ to cure natural or synthetic rubber, but if
the computer use incorporated in the process patent significantly lessens the
possibility of ‘overcuring ’ or ‘undercuring, ’ the process as a whole does not
thereby become unpatentable subject matter.”) (emphasis added); but see
Flook, 437 U.S. at 595—96 (merely reciting a new and presumably better
method for calculating an alarm limit as part of a catalytic conversion
process with no improvement to the catalytic process itself rendered a claim
to such process patent-ineligible).
The Examiner’s statement that “[t]he concept described in claim 1 is
not meaningfully different than the concept of collecting information,
analyzing it, and displaying (signaling) certain results of the collection”
(Final Act. 4) is incorrect. Here, the claimed subject matter integrates the
judicial exceptions into a practical application that results in an overall
improvement in a network printer’s operation, and, therefore, amounts to
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more than mere collecting information, analyzing it, and displaying certain
results. Cf. Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (“[Mjerely selecting information, by content or source, for
collection, analysis, and display does nothing significant to differentiate a
process from ordinary mental processes.”).
Because our analysis under Step 2A of the Revised Guidance is
dispositive, we need not consider Step 2B of the guidance. As our analysis
for claim 1 is also pertinent to the two other independent claims (namely,
claims 14 and 16), which contain the same or similar limitations, we do not
sustain Rejection B.
Rejection C (Obviousness). The Appellant does not argue any claim
separately within the meaning of 37 C.F.R. § 41.37(c)(l)(iv) (Appeal
Br. 14—19, 21). Therefore, consistent with the manner in which the
Appellant’s arguments are presented, we confine our discussion to claim 14,
which we select as representative pursuant to the rule. Claims 1, 5—7, 16,
19, and 20 stand or fall with claim 14.
The Examiner finds that Hayward describes a method that includes
every limitation recited in claim 14 except for taking account of a variable
value derived from an estimated printing fluid evaporation quantity loss
(Final Act. 15—17). The Examiner finds further, however, that Therien
teaches an inkjet printer and system in which ink composition evaporation is
estimated over the lifetime of an ink supply and taken into account (id. at
17). Based on these findings, the Examiner concludes that “[i]t would have
been obvious to one of ordinary skill in the art... to use the rates of
evaporation in calculating the changes in the ink composition, as taught by
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Therien, to the method of Hayward ... in order to ‘more accurately predict
an upcoming out-of-ink condition’” {id. (quoting Therien col. 10,11. 27—29)).
The Appellant contends Hayward “refers to tracking consumption of
the consumable, and not to calculating the threshold value recited in
claim 14” (Appeal Br. 16—17). The Appellant argues:
Hayward refers merely to various example threshold
conditions, with nothing to indicate that the threshold value is
changed based on variation of a first variable value or a second
variable value and based on one or more predefined
relationships between the threshold value, the first variable
value, and the second variable value.
{Id. at 18.) The Appellant urges that because Hayward does not teach
calculating the threshold value and changing the threshold value based on
the factors expressly recited in claim 14, the Examiner’s rejection was
entered in error {id. at 19).
The Appellant’s arguments fail to identify any reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Hayward describes a method for ordering a part for an imaging
apparatus (e.g., a printer) including:
identifying electronically a condition in a consumable part (e.g.,
an ink cartridge), the consumable part having a first condition upon
installation, at least one intermediate condition after use, and a third
condition when a replacement of the consumable part is substantially
necessary, and
using a software and sensor system associated with the
apparatus for at least one of: (a) electronic monitoring of the condition
of the consumable part; (b) electronic predicting of the condition of
the consumable part; and after at least one of (a) and (b), (c)
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automatically launching an electronic communications to initiate at
least one inquiry and an offer to purchase a replacement for the
consumable part of an occurrence or prediction of at least one of the
first condition, intermediate condition, and third condition.
(Hayward col. 2,11. 12—29.)
Thus, Hayward teaches that “the [third] condition indicates when the
consumable has reached a threshold in time to reorder before the
consumable is completely exhausted” {id. at col. 7,11. 57—62; emphasis
added). According to Hayward, the threshold conditions of the consumable
component may include a measure, timing, or data such as: supply; wear;
usage; rate of depletion; rate of wear; predicted date of depletion supply;
predicted date of need of the consumable component; delivery schedule of
the consumable component; and statistical data of the consumable
component {id. at col. 8,11. 58—65). Furthermore, Hayward teaches that a
“monitor module causes an indication of a status condition to be displayed
when the consumables are expected to be below a threshold based on [an]
inventory sub-module,” and “[t]he user can then navigate through the
screens to the status screen and order more of the consumable by clicking [a]
‘Buy Now’ button” {id. at col. 8,11. 4—9). Additionally, Hayward teaches
that a modem, which is connected to the Internet, or a server may be used to
communicate electronic information from the apparatus to a remote output
device regarding the condition of the consumable component and
automatically initiate an electronic order for a replacement consumable
component {id. at col. 8,11. 53—58).
Thus, contrary to the Appellant’s position, a person having ordinary
skill in the art would have drawn a reasonable inference from Hayward’s
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teachings that when predicting a date of supply depletion or date on which a
replacement consumable is needed, certain calculations as to the threshold
(third) condition based on the first condition and intermediate condition of
the existing ink supply must be performed. In re Preda, 401 F.2d 825, 826
(CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”); KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of creativity, not an automaton.”).
Although Hayward does not teach taking account of ink evaporation,
Therien teaches the concept of determining and compensating for ink
evaporation “to more accurately predict an upcoming out-of-ink condition”
(Therien col. 10,11. 18—36). As Hayward contemplates predicting
replacement as well as considering statistical data, a person having ordinary
skill in the art would have been prompted to combine Therien with Hayward
by modifying Hayward’s system to take account of ink evaporation
statistical data gathered over time in order to improve the accuracy in
predicting an upcoming out-of-ink condition (i.e., determine a more accurate
threshold condition).
For these reasons and those given by the Examiner, we uphold the
Examiner’s rejection as maintained against claim 14.
IV. SUMMARY
Rejection A (claims 14—16, 19, 20) is not sustained.
Rejection B (claims 1—16, 19, and 20) is not sustained.
Rejection C (claims 1, 5—7, 14, 16, 19, and 20) is sustained.
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Therefore, the Examiner’s final decision to reject claims 1—16, 19, and
20 is affirmed as to claims 1, 5—7, 14, 16, 19, and 20 but reversed as to
claims 2-4, 8—13, and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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