Ex Parte Wu

Board of Patent Appeals and Interferences

Nov 14, 2011

10180764 (B.P.A.I. Nov. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ZHANBING WU
____________

Appeal 2010-000535
Application 10/180,764
Technology Center 2600
____________

Before ROBERT E. NAPPI, DENISE M. POTHIER, and
JEFFREY S. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11 and 33-42, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Invention
Appellants’ invention relates to a print service provided on a network,
such as the Internet or a corporate intranet, for mobile computing devices,
such as laptops, PDAs and Web cell phones, to print documents. When the
user of a mobile device wants to print a document, the mobile device is used
to access the print service and send a print request that specifies the location
the document on the network in terms of a Uniform Resource Locator
(URL). In response, the print service validates the print request, retrieves
the document, renders the document for printing, and prints the document as
requested by the user. Alternatively, the document may be directly provided
by the mobile device to the print service. Abstract.

Representative Claims
1. A computer-readable medium having computer-
executable instructions to perform steps for providing a print
service on a network, comprising:

presenting a service interface for a client communicating
with the print service over the network to enable entry of print
request data for a print request, the service interface including a
list of document formats supported by the print service and
enabling entry of:

data identifying a document to be printed but not
identifying the printer to be used to print the document;

a user selection of a document format from the list
of document formats to be used to print the document;
and

criteria for the printer;

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receiving the print request data having data identifying
the document to be printed and the criteria for the printer;

selecting the printer to be used to print the document
based on the criteria for the printer;

validating the print request and providing feedback to the
client;

obtaining the document to be printed;

rendering the document into a format selected by the user
for printing; and

printing the rendered document in accordance with the
print request.

33. A method comprising:

connecting to a network through a mobile computing
device, the mobile computing device: associated with a
particular user; not directly connected to a printer; and not
supporting an application and printer driver needed to print a
document on the printer;

accessing, through the network and using the mobile
computing device, a service interface hosted by the particular
user’s personal computer, the personal computer being
connected to the printer and having or capable of having the
application and the printer driver needed to print the document
to the printer;

entering, via the service interface, print request data for
printing the document, the print request data including data
identifying the document to be printed; and

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receiving a confirmation from the personal computer
acknowledging receipt of the print request data or an indication
that the document has been printed.

34. A method as in claim 33, wherein the act of entering
comprises selecting a location of or near the mobile computing
device and wherein the print request data does not indicate
which printer at which to print the document, and further
comprising receiving an indication of a location or identity of
the printer at which the document has or will be printed.

Examiner’s Rejections
Claims 1-11, 41, and 42 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Uchiyama (US 2002/0024686 A1), Yacoub (US
6,452,692 B1), and Pendlebury (GB 2342195 A).
Claims 33 and 36-38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama and Yacoub.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama, Yacoub, and Motamed (US 7,081,969 B1).
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama, Yacoub, and Savitzky (US 6,012,083).
Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama, Yacoub, Pendlebury, and Luman (US
2002/0075508 A1).
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama, Yacoub, Pendlebury, and Motamed.

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Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 33, and 34. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
(1) Did the Examiner err in finding that the combination of
Uchiyama, Yacoub, and Pendlebury teaches “a user selection of a document
format from the list of document formats to be used to print the document”
as recited in claim 1?
(2) Did the Examiner err in finding that the combination of
Uchiyama and Yacoub teaches “accessing, through the network and using
the mobile computing device, a service interface hosted by the particular
user’s personal computer” as recited in claim 33?
(3) Did the Examiner err in finding that the combination of
Uchiyama, Yacoub, and Motamed teaches “selecting a location of or near
the mobile computing device” as recited in claim 34?

PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). The Office must apply the broadest reasonable meaning to
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the claim language, taking into account any definitions presented in the
specification. Id.

ANALYSIS
Section 103 rejections of claims 1-11 and 39-42
Appellants contend that Figure 9 of Uchiyama does not teach a list of
document formats supported by a print service. App. Br. 11. The Examiner
finds that Figure 15 and paragraphs 98 and 126 of Uchiyama teach a list of
document formats supported by a print service. Ans. 15-16. Appellants
have not addressed this finding by the Examiner and as such have not
provided evidence or persuasive arguments to rebut the Examiner’s finding.
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
have not presented arguments for separate patentability of claims 2-11 and
39-42, which thus fall with claim 1.

Section 103 rejections of claims 33-35
Appellants contend that Figure 1 of Uchiyama shows a print server,
not a particular user’s personal computer. App. Br. 14. The Examiner finds
that a print server can be a personal computer. Ans. 18. Appellants have
insufficiently addressed this finding by the Examiner, such as by
demonstrating that the term, “personal computer,” as broadly as recited,
excludes a print server, and thus have not provided adequate evidence or
persuasive arguments to rebut the Examiner’s finding. We sustain the
rejection of claim 33 under 35 U.S.C. § 103. Appellants have not provided
arguments for separate patentability of claims 34 and 35, which thus fall
with claim 33.
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Section 103 rejection of claim 34
Appellants contend that Motamed teaches that a user may search for a
printer by domain name or by entering a specific Internet Protocol (IP)
address, but does not teach “wherein the act of entering comprises selecting
a location of or near the mobile computing device”1 as recited in claim 34.
App. Br. 15. The Examiner finds that a user with knowledge of the location
of the printers will enter the name of a printer by selecting a printer in close
proximity to the user’s location. Ans. 18-19. We concur with the Examiner
and additionally note that Yacoub teaches selecting a location near the user.
See Abstract; col. 11, ll. 16-32. Accordingly, Appellants have not
persuaded us of error in the Examiner’s findings.
We sustain the rejection of claim 34 under 35 U.S.C. § 103.

Section 103 rejection of claims 36-38
Appellants present arguments for patentability of claim 36 similar to
those presented for claim 33, which we find unpersuasive. Additionally,
Appellants argue that the Examiner has not cited to sections in the references
to teach various claim language in claim 36. App. Br. 16. We disagree. See
Ans. 10-11. We sustain the rejection of claims 36-38 under 35 U.S.C. § 103.

CONCLUSIONS OF LAW
(1) The Examiner did not err in finding that the combination of
Uchiyama, Yacoub, and Pendlebury teaches “a user selection of a document

1 Appellants have not identified, and we are unable to find, support for this
limitation in the Specification as originally filed.
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format from the list of document formats to be used to print the document”
as recited in claim 1.
(2) The Examiner did not err in finding that the combination of
Uchiyama and Yacoub teaches “accessing, through the network and using
the mobile computing device, a service interface hosted by the particular
user’s personal computer” as recited in claim 33.
(3) The Examiner did not err in finding that the combination of
Uchiyama, Yacoub, and Motamed teaches “selecting a location of or near
the mobile computing device” as recited in claim 34.

DECISION
The rejection of claims 1-11, 41, and 42 under 35 U.S.C. § 103(a) as
being unpatentable over Uchiyama, Yacoub, and Pendlebury is affirmed.
The rejection of claims 33 and 36-38 under 35 U.S.C. § 103(a) as
being unpatentable over Uchiyama and Yacoub is affirmed.
The rejection of claim 34 under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama, Yacoub, and Motamed is affirmed.
The rejection of claim 35 under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama, Yacoub, and Savitzky is affirmed.
The rejection of claim 39 under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama, Yacoub, Pendlebury, and Luman is affirmed.
The rejection of claim 40 under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama, Yacoub, Pendlebury, and Motamed is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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