Paul Jeran

Patent Trials and Appeals Board

Sep 26, 2019

15458460 - (D) (P.T.A.B. Sep. 26, 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.
15/458,460 03/14/2017 Paul Jeran 84604881 8288
22879 7590 09/26/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
THIES, BRADLEY W
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
barbl@hp.com
ipa.mail@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL JERAN

Appeal 2018-005677
Application 15/458,460
Technology Center 2800
____________

Before LINDA M. GAUDETTE, MARK NAGUMO, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–15. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 In this Decision, we refer to the Specification filed Mar. 14, 2017
(“Spec.”), the Final Office Action dated Aug. 31, 2017 (“Final Act.”), the
Appeal Brief filed Jan. 13, 2018 (“Appeal Br.”), the Examiner’s Answer
dated Mar. 27, 2018 (“Ans.”), and the Reply Brief filed May 10, 2018
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Hewlett-Packard Development Company, LP is the applicant
and also identified as the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE3
The invention relates to a printer cartridge for toner, ink, and other
materials that also includes a memory enabling an information exchange
between the cartridge and the printer controller. Spec. ¶ 2. The
Specification describes ensuring that a printer will not print with an
unauthorized cartridge as a use of the memory on a printing material
cartridge. Id. ¶ 13.
Claim 2, reproduced below, together with claim 1 from which it
depends, is illustrative of the subject matter on appeal (emphasis added).4
1. An article for a printing material cartridge, comprising
a memory to prompt a printer controller to write a printer
identifier to the memory when a cartridge with the memory is
installed in a printer.
2. The article of Claim 1, where the memory includes a
first memory address and a second memory address, the first
memory address having information therein that when read by
a printer controller prompts the printer controller to write a
printer identifier to the second memory address.
Appeal Br. 10 (Claims Appendix).
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)

3 This appeal is related to Appeal Nos. 2018-005676, 2019-002174, and
2019-002214. See Appeal Br. 1 (identifying the Notice of Appeal filed for
Appeal No. 2018-005676).
4 Appellant does not appeal the rejection of claims 1, 6, and 7. Appeal Br. 1,
10. Accordingly, we summarily affirm the rejection of claims 1, 6, and 7.
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(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of reversible error in the
Examiner’s rejections.
Rejection 1: Anticipation
The Examiner rejects claims 1–3, 6–8, and 13 under 35 U.S.C.
§ 102(a) as anticipated by Johnson5 for the reasons provided on pages 3–10
of the Final Action.
Appellant separately argues claims 2, 8, and 13. App. Br. 3–7.
Therefore, claim 3 stands or falls with claim 2 from which it depends. See
37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends that the Examiner erred in finding that Johnson
discloses memory that “prompts [a] printer controller to write a printer
identifier to [a] second memory address” as recited in claim 2 and required
by claims 8 and 13. App. Br. 4–6. According to Appellant, Johnson’s
memory 21 includes a memory address at which printer identifier 14 is
stored, however “there is no other address in Johnson’s memory 21 with a
prompt to prompt the printer controller to write an identifier 14 to memory
21.” Id. at 4. Appellant notes that Johnson discloses that printer 21 queries
the component to determine whether printer identifier 14 stored in
component memory 21 matches the ID for printer 21 and, if the answer is
no, the printer queries the component a second time to determine whether
the component is new and then the printer writes its own ID to memory 21 if

5 US 2004/0212651 A1, published Oct. 28, 2004.
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the answer to the second query is yes. Id. at 5 (citing Johnson ¶¶ 48–50, Fig.
6, steps 304, 306, 308, 310). Appellant contends “it seems likely the printer
writes this ID to the same address queried in step 204 –– the address of
printer identifier 14 in memory 21” rather than another different memory
address. Id.
Appellant’s analysis for claims 2 and 8 is the same. Id. at 5.
Regarding claim 13, Appellant additionally argues that the first address of
the claimed memory has a prompt value or a no prompt value and a second
address has an identification value or a no identification value, which means
there are four possible value combinations claimed. Id. at 3–4. Appellant
contends that Johnson does not disclose any of these combinations because
Johnson’s printer identifier 14 “exists at a single memory address” and it
“cannot be both a prompt or no value at one address and an identification
value at a different address.” Id. at 4. Regarding whether Appellant’s
apparatus claims require merely a memory, Appellant contends that claims
2, 8, and 13 include functional limitations on the memory as to the content
of information at the first memory address. Id. at 6–7.
The Examiner responds to each of Appellant’s arguments directed to
claims 2, 8, and 13 that Johnson discloses a memory with multiple memory
addresses. Ans. 3–5 (citing Johnson 27, Fig. 2, memory 21). Johnson’s
Figure 2 is reproduced below.
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Figure 2 is a block diagram of a replaceable printer component system.
Johnson ¶ 7. As shown in Figure 2, printer component 20 comprises
memory 21 which includes at least one printer unique identifier (PUI) 14
and component unique identifier 22. Id. ¶ 27. According to Johnson, PUI
index 84 stores a list of printers for which use with printer component 20 is
authorized. Id.
The Examiner further explains that, even though Johnson does not
specifically state that a separate memory address is checked in response to
query 304 in Johnson’s Fig. 6, a separate memory location is deduced from
the subsequent query in step 308. Id. (citing Johnson ¶ 48, Fig. 6, steps 304,
308). Johnson’s Figure 6 is reproduced below.
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Figure 6 is a flow diagram of a method of managing replaceable printer
component tool. Johnson ¶ 11. According to Johnson, step 304 queries
whether a printer unique identifier 14 stored in memory 21 matches the
printer unique identifier of the printer into which printer component 20 was
installed. Id. ¶ 48. Johnson discloses that an affirmative response results in
permitting print jobs and other functions (step 306). Id. ¶ 49. Johnson
describes a negative response resulting in a further query (step 308) as to
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whether printer component 20 is a new component that has not been
installed previously on any printer. Id. As shown in Figure 6, regardless of
whether the response to the query of step 308 is affirmative or negative, the
controller is prompted to write to memory (shown as separate boxes 310 or
322).
The Examiner further finds that Johnson discloses writing a serial
number (S/N) onto the memory of the cartridge in step 322 of Figure 6 if the
step 304 and 308 queries are negative, thus Johnson discloses a first address
for a printer identification “prompt” and a second address for a printer
“identifier” as required by claim 13. Ans. 3. Regarding the structural
requirements of the apparatus claims, the Examiner states the function of
storing information at one memory address that prompts a printer controller
to write a printer ID to another memory address is a memory with multiple
addresses and a controller. Id. at 5. According to the Examiner, information
that “prompts” is any information or lack of information and how that
information is intended to be used. Id. at 5–6. The Examiner finds that
Johnson discloses that information stored in the memory is printer
identification information. Id. at 6.
In the Reply Brief, Appellant maintains that Johnson’s printer
identifier 14 exists at a single memory address and, therefore, cannot be both
a prompt or a no prompt value at one address and an identification value at
another address. Reply Br. 1. Appellant contends that the Examiner’s
finding that each query in Johnson “‘appears’ to have its own memory
address” is insufficient to establish anticipation. Id. Regarding Johnson’s
serial number being written to a second memory address different from the
memory address of printer identifier 14, Appellant contends that Johnson
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discloses that the printer serial number is one example of printer identifier
14 and Johnson’s paragraph 51 regarding writing a serial number into
memory 21 fails to mention the location in memory 21 where the serial
number is written. Id. at 2.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims as anticipated, and, more specifically,
finding that Johnson’s replaceable printer component comprises a first
memory address that prompts a printer controller to write a printer identifier
to the a second memory address, as each of claims 2, 8 and 13 requires. The
preponderance of the evidence in this appeal record supports the Examiner’s
finding that the claimed subject matter of claims 2, 8, and 13 is anticipated
within the meaning of Section 102 in view of Johnson. Accordingly, we
sustain the Examiner’s rejection for essentially those reasons expressed in
the Answer, including the Response to Argument section, and we add the
following primarily for emphasis.
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of section 102. In re Schaumann, 572
F.2d 312, 317 (CCPA 1978). It is well established that anticipation under
section 102 is not an ipsissimis verbis test, i.e., identity of terminology is not
required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). This is
particularly true when the features of an apparatus are claimed functionally
rather than structurally as are claims 2, 8, and 13. See In re Swinehart, 439
F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with
[defining something by what it does rather than what it is] in drafting patent
claims.”). Yet, choosing to define an element functionally, i.e., by what it
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does, carries with it a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). As stated in Swinehart, 439 F.2d at 213:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

As applied to Johnson, the issue is whether Johnson’s structure is
capable of performing the function without further programming. Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3 1376, 1380 (Fed. Cir. 2011)
(discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc.,
520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is
associated with programming or some other structure required to perform
the function, that programming or structure must be present in order to meet
the claim limitation. Id. In some circumstances generic structural
disclosures may be sufficient disclosure of the structure that performs the
work. See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361,
1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612
F.3d 1365, 1376–77 (Fed. Cir. 2010)).
Appellant does not dispute the Examiner’s finding (Ans. 3) that
Johnson discloses a printer cartridge comprising memory with multiple
memory addresses. Appellant does not dispute the Examiner’s finding
(Final Act. 5) that Johnson’s printer controller queries the memory of the
cartridge and is prompted to write a printer identifier to the memory when a
cartridge with the memory is installed in a printer. Appellant does not
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dispute the Examiner’s finding (Ans. 3) that Johnson discloses multiple
queries are made by Johnson’s controller. Appellant also does not rebut the
Examiner’s determination (Ans. 5) that the structure functionally claimed by
claims 2, 8, and 13 to perform the function of storing information at one
memory address that prompts a printer controller to write a printer ID to
another memory address is a memory with multiple addresses and a
controller.
The record supports the Examiner’s finding (Ans. 3) that Johnson
discloses a printer controller query whether the printer has a unique
identifier. Johnson 48, Fig. 6, 304. The record also supports the Examiner’s
finding that a further query in step 308 (Johnson Fig. 6, 308) indicates the
query is independent subsequent to the query in step 304 and therefore has
its own memory location. Appellant’s position (Reply Br. 1) that the
Examiner’s finding is insufficient to establish anticipation by Johnson is not
persuasive of error because it does not adequately show that Johnson’s
printer controller is not set up to write a printer ID to another memory
address, particularly in view of Johnson’s memory having multiple memory
addresses.
The record also supports the Examiner’s finding (Ans. 3) that Johnson
discloses writing a serial number into the memory of the cartridge in
response to a negative prompt that is separate from the identifier located at a
unique address in the memory. Johnson ¶ 51. Appellant asserts that,
because Johnson’s paragraph 20 identifies a printer serial number as an
example of a printer identifier, the query described in Johnson’s paragraph
51 prompts the printer to write a serial number into the same memory
address as the printer identifier. Reply Br. 2. However, Johnson’s
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paragraph 51 discloses that printer 12 writes a serial number into the
memory of the printer component at a negative response prompt (because
the printer component had been previously installed elsewhere) in order to
save the information in printer 12 for tracking the presence of printer
component 20 (shown in box 322 of Fig. 6) and a travel/use history of
printer component 20 can be obtained from the memory of printer
component 20 as well. Appellant does not adequately explain why the same
memory location for printer identifier 14 would have been used for tracking
the travel/use history of printer component 20.
Accordingly, we affirm the Examiner’s rejections of claims 1–3, 6–8,
and 13 under 35 U.S.C. § 102(a) as anticipated by Johnson.

Rejection 2: Obviousness
The Examiner rejects claims 4, 5, 9–12, 14, and 15 under 35 U.S.C.
§ 103 over the combination of Johnson and Ehrhardt6 for the reasons
provided on pages 11–14 of the Final Action.
Appellant does not provide separate arguments for this rejection.
App. Br. 8. Therefore, we select claim 4 as representative and claims 5, 9–
12, 14, and 15 stand or fall with claim 4. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends that the Examiner erred because the claims require
that the information in the first memory address includes a single bit value,
however Johnson does not teach or suggest a single bit value for a printer
identifier 14 and “Ehrhardt does not teach or suggest that a single bit could
or should be used for a memory prompt in general, and specifically not a

6 US 2007/0081842 A1, published Apr. 12, 2007.
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prompt as recited in claims 4, 9, and 14.” App. Br. 8. Appellant asserts that
Ehrhardt’s general teaching that some types of memory information might
be formed with a single bit, does not render obvious the claimed single bit
memory limitations. Id. Appellant further argues that the Examiner’s
reason for combining Ehrhardt and Johnson “to properly store the
information” is not supported or explained because neither Johnson nor
Ehrhardt discloses how to properly store memory information in general and
specifically not as a memory prompt. Id.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims over the cited prior art references. As
the Examiner finds and the record supports, Johnson discloses memory
information being used as a prompt. Ans. 7; Johnson Fig. 6. The
Examiner’s finding that Ehrhardt discloses the use of single bit memory for
printer identifiers specifically is also supported by the record. Ans. 7;
Ehrhardt ¶¶ 47, 48. Ehrhardt’s explicit teaching to use “any single electronic
data bit, or any combination of electronic data bits of a form as is known in
the art to be of the type typically stored on such a memory component”
(Ehrhardt ¶ 47) supports the Examiner’s determination that it would have
been obvious to combine Ehrhardt’s teaching in Johnson’s memory
information and printer component. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007) (“in many cases a person of ordinary skill will be able to fit
the teachings of multiple patents together like pieces of a puzzle.”). In KSR,
the Supreme Court instructed that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” 550 U.S. at 416. The Court stated that “[i]f a person of
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ordinary skill can implement a predictable variation [of a prior art reference
with other prior art components], § 103 likely bars its patentability.” Id. at
417. Here, including a single bit value for a printer identifier memory as
taught by Ehrhardt in the memory information used as a prompt by
Johnson’s printer component would have yielded a predictable result: the
information in the first memory address includes a single bit value that when
read by a printer controller prompts the printer controller to write a printer
identifier to the second memory address—the invention claimed.
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 4, 5, 9–12, 14, and 15 under 35 U.S.C. § 103
as obvious over the cited prior art references.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–3, 6–8, and 13 § 102(a)(1) Johnson 1–3, 6–8, and 13
4, 5, 9–12, 14,
and 15
§ 103 Johnson and
Ehrhardt
4, 5, 9–12, 14,
and 15

Overall
Outcome
1–15

AFFIRMED