Ex Parte Albarran Moyo et al

Patent Trial and Appeal Board

Nov 16, 2016

12786841 (P.T.A.B. Nov. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121786,841 05/25/2010
22879 7590 11/18/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Manuel Angel Albarran Moyo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82263359 3361
EXAMINER
MCLEAN, NEIL R
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
11/18/2016 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
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANUEL ANGEL ALBARRAN MOYO,
PETER MOROVIC, and JAN MOROVIC
Appeal2015-006978
Application 12/786,841
Technology Center 2600
Before JOHNNY A. KUMAR, NORMAN H. BEAMER, and
ALEX S. YAP, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20. 1 We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. (App. Br. 2.)
Appeal2015-006978
Application 12/786,841
THE INVENTION
Appellants' disclosed and claimed invention is directed to managing
print workflow, via an add-on application interfacing with a printing-capable
application and hardware components of a printing device, to provide
additional printing functionality. (Abstract.) Claim 9, reproduced below, is
illustrative of the claimed subject matter:
9. A computing system comprising:
a processor; and
a memory communicatively coupled to said processor;
in which said processor:
causes an add-on application to interface with a
printing-capable application configured to be executed by
said processor;
causes said add-on application to interface with
hardware components of a printing device; and
causes said add-on application to provide additional
printing related functionality to said printing-capable
application.
REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Agronik et al. (US 2008/0209311 Al, pub. Aug. 28, 2008)
and Chang et al. (US 7,318,086 B2, iss. Jan. 8, 2008). (Final Act. 5-10.)
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Application 12/786,841
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
dispositive issues:2
Issue One: Whether the Examiner erred in finding the combination of
Agronik and Chang teaches or suggests the independent claim 9 limitations,
"said processor ... causes said add-on application to interface with hardware
components of a printing device; and causes said add-on application to
provide additional printing related functionality to said printing-capable
application," and the similar limitations recited in independent claims 1 and
17. (App. Br. 10-16.)
Issue Two: Whether the Examiner erred in finding the combination of
Agronik and Chang teaches or suggests the additional limitations of
dependent claims 10-12 and 14--16. (App. Br. 16-21.)
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner errs. As to claims 1-9, 11, 13, and 17-20, we
disagree with Appellants' arguments, and we adopt as our own ( 1) the
pertinent findings and reasons set forth by the Examiner in the Action from
which this appeal is taken (Final Act. 5-7) and (2) the corresponding reasons
set forth by the Examiner in the Examiner's Answer in response to
2 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed Aug. 25, 2014, corrected Apr.
16, 2015); the Reply Brief (filed July 17, 2015); the Final Office Action
(mailed Apr. 24, 2014); and the Examiner's Answer (mailed May 21, 2015)
for the respective details.
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Application 12/786,841
Appellants' Appeal Brief (Ans. 2-11, 13-14). We concur with the applicable
conclusions reached by the Examiner and emphasize the following.
Issue One
In finding Agronik and Chang teach or suggest the limitations at issue
for claim 9, the Examiner relies on the disclosure in Agronik of embedded
applications as objects in a markup-language code, running in a browser
program, used to overlay an image in a transparent editing window over the
browser window, and with the capability to edit the image. (Final Act. 6;
Agronik Abstract, Fig. 3B, i-fi-18, 28, 39, 47) The Examiner also relies on the
disclosure in Chang of an "information apparatus" such as an email terminal,
digital camera, or e-book, which allows users to install additional hardware
components or software including a "pervasive output client application" to,
inter alia, interface with a printer. (Final Act. 6-7; Chang col. 9, 11. 30-36,
col.10,ll.14-39,col.11,11.16-21.)
Appellants argue the embedded applications of Agronik do not
interface with hardware components of a printer, and do not provide
additional printing related functionality. (App. Br. 11-12.) Appellants
assert the Examiner concedes "Agronik does not disclose a processor that
'causes said add-on application to interface with hardware components of a
printing device.'" (App. Br. 12.) Appellants further argue Chang "says
nothing about any add-on application that is ancillary and adds functionality
to a principal application." (App. Br. 13.)
These arguments are unpersuasive because they mischaracterize the
Examiner's rejection and the cited references, and focus on the references
individually, whereas the Examiner's rejection is based on the combination
of Agronik and Chang. (Final Act. 7.) In re Merck & Co., Inc., 800 F.2d
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Application 12/786,841
1091, 1097 (Fed. Cir. 1986); Jn re Keller, 642 F.2d 413, 425 (CCPA 1981)
(the test for obviousness is whether the combination of references, taken as a
whole, would have suggested the patentee's invention to a person having
ordinary skill in the art).
Appellants' reliance on the Examiner's statement, "Agronik does not
disclose a processor that 'causes said add-on application to interface with
hardware components of a printing device,"' is misplaced. (App. Br. 12.)
As the Examiner explains, this statement focuses on whether or not Agronik
discloses a processor that performs the claimed functions - the Examiner
finds that, while the disclosure of Agronik "greatly implies the use of a
processor" with the claimed functionality, the combination of Agronik and
Chang more directly teaches or suggests this limitation. (Ans. 6.)
Therefore, Appellants' characterization of the Examiner's alleged
concession is overly broad and not persuasive of error.
We are not persuaded the Examiner errs in relying on Agronik in
combination with Chang as teaching or suggesting the claim limitations at
issue. As the Examiner finds, Agronik discloses, for example, a
"Crop2Size" browser plug-in, which is an add-on application that interfaces
with the printing-capable browser program. (Final Act. 6; Ans. 2--4;
Agronik Fig. 3B, i-fi-18, 37, 39--41.) Crop2Size provides, for example, such
functions as image previewing, cropping, centering, flipping and tinting -
comparable to the "additional printing related functionality" examples
disclosed in the Specification. (Final Act. 6; Ans. 4--5; Spec. i-fi-123, 46;
Agronik i139.) Moreover, Chang at least teaches or suggests add-on
applications interfacing with printer components. (Final Act. 6-7; Ans. 6-7;
Chang col. 9, 11. 30-36, col. 10, 11. 14--39, col. 11, 11. 16-21.) In sum,
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Appellants have not persuaded the Examiners errs in finding these
disclosures, taken together, teach or suggest the independent claim
limitations at issue.
Issue Two
Dependent claim 10 requires use of an application programming
interface (API); claim 11 requires the add-on application to perform as a
printer driver; claim 12 requires use of an add-on manager; claim 14 requires
the add-on application to receive data from the printing device as the basis
for changing an image; and claims 15 and 16 require use of a color profile
for use in print jobs.
The Examiner relies on various disclosures in Agronik as teaching or
suggesting these limitations: the use of java applets and a software
development kit (SDK) to create flash objects as satisfying the API
limitation of claim 10 and the add-on manager limitation of claim 12; the
printing capabilities of the internet browser for the printer driver limitation
of claim 11 and the printer data limitation of claim 14; and the background
color adjustment capabilities for the color profile limitations of claims 15
and 16. (Final Act. 7-9; Ans. 12-19.)
Appellants argue none of these disclosures in Agronik teach or
suggest the additional limitations of these dependent claims: the applets and
SDK disclosures do not relate to APis or add-on managers; the fact that the
browser application has print capabilities does not mean that any add-on acts
as a printer driver; the receipt of printer data is not enough to teach or
suggest the claimed use of that data as the basis for image changes; and the
ability to adjust background color does not teach or suggest the claimed use
of a color profile. (App Br. 16-21.) As to claims 10, 12, and 14--16, we are
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persuaded by Appellants' arguments that the Examiner has failed to
establish a prima facie case that the references relied on teach or suggest, or
disclose, the dependent claim limitations at issue. "[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting aprimafacie case ofunpatentability." In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Therefore, on the record before us, we do not
sustain the Examiner's rejection of claims 10, 12, and 14--16.
We are not persuaded the Examiner errs in rejecting claim 11. The
Examiner correctly finds, "[t]his use of a printer driver is well known, as the
Applicant has disclosed." (Ans. 14.) This finding is sufficient support for
the Examiner's rejection, given the Examiner's correct finding, discussed
above, that the combination of Agronik and Chang teaches or suggests the
subject matter of claim 9, in which the add-on application provides
"additional printing-related functionality,"
CONCLUSIONS
For the reasons stated above, we sustain the obviousness rejection of
claims 1, 9, and 17. We also sustain the obviousness rejection of claims 2-
8, 11, 13, and 18-20, which are not argued separately with particularity.
Also for the reasons stated above, we do not sustain the obviousness
rejection of claims 10, 12, and 14--16.
DECISION
We affirm the Examiner's rejection of claims 1-9, 11, 13, and 17-20.
We reverse the Examiner's rejection of claims 10, 12, and 14--16.
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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)(l )(iv).
AFFIRMED-IN-PART
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