Ex Parte Benedicto et al

Patent Trial and Appeal Board

Jun 29, 2017

13480718 (P.T.A.B. Jun. 29, 2017)

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.
13/480,718 05/25/2012 Jordi Arnabat Benedicto 82976171 1812
22879
HP Tnr
7590 07/03/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
OSIFADE, IDOWU O
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
07/03/2017 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 JORDI ARNABAT BENEDICTO, JAN MOROVIC,
BENJAMIN JULES MILLNER, EVA BLAY LERIN, and
OSCAR MARTINEZ BAILAC
Appeal 2017-000655
Application 13/480,7181
Technology Center 2600
Before JAMES R. HUGHES, TERRENCE W. McMILLIN, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—5, 7—11, 13, 14, 16, and 22—28, which
constitute all claims pending in the application. Claims 2, 6, 12, 15, and 17—
21 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real parties in interest as Hewlett-Packard
Development Company, L.P., Hewlett-Packard Inc., and HPQ Holdings,
LLC. App. Br. 2.
Appeal 2017-000655
Application 13/480,718
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to a printer that takes into account the
medium on which the image is to be printed, by storing medium profile
information from an external resource. Spec. 1, 22—24. Claims 1,10, and
11 are independent. Claim 1 is illustrative of the invention and the subject
matter of the appeal, and reads as follows (with the disputed limitations
emphasized):
1. A printer comprising:
a storage section to store medium profile information; and
a communication section to:
obtain the medium profile information from an
external medium profde resource via a network,
communicate the medium profile information to an
image processing section; and
receive image data from the image processing
section, the image data formatted in accordance with the
medium profile information, wherein the medium profile
information is independent of a type of the image
processing section.
App. Br. 21 (Claims App.).
The Rejections on Appeal
Claims 1, 3—5, 7—9, 16, and 22—25 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Toda (US 2008/0181637 Al;
July 31, 2008) (“Toda ’637”), Galmes et al. (US 2007/0273920 Al; Nov. 29,
2007) (“Galmes”) and Kawamoto (US 2012/0147397 Al; June 14, 2012).
Final Act. 5—12.
2
Appeal 2017-000655
Application 13/480,718
Claims 10, 11, 13, 14, 26, and 28 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Toda ’637, Galmes, Kawamoto,
and Kuroshima (US 2012/0120445 Al; May 17, 2012). Final Act. 12—22.
Claim 27 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Toda ’637, Galmes, Kawamoto, and Masanari Toda (US
2009/0168096 Al; July 2, 2009) (“Toda ’096”). Final Act. 22-23.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are unpersuaded
the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Rejection of Claims 1, 3—5, 7—9, 16, and 22—25
Appellants argue the Examiner erred in finding the prior art teaches or
suggests “wherein the medium profile information is independent of a type
of the image processing section,” as recited in claim 1. App. Br. 10—11
(emphasis added); Reply Br. 4—7. Specifically, Appellants argue the
“independen[ce]” the Examiner finds taught in Galmes is merely physical
independence of elements, whereas Appellants’ claim limitation refers not to
physical separation, but rather, format compatibility. App. Br. 11; Reply Br.
5—6. We are not persuaded of error.
As the Examiner finds, Galmes teaches a printer system including
“medium profile information,” Galmes Fig. 1, || 26, 55; Ans. 4, and further
teaches “a type of image processing section,” Galmes Fig. 1 (Raster Image
3
Appeal 2017-000655
Application 13/480,718
Processor 50); Ans. 4. The Examiner finds, and Appellants do not dispute,
the medium profile information in Galmes is stored in a “media database”
which is separate from the Raster Image Processor. Ans. 4. Figure 1 of
Galmes, upon which the Examiner relies, is reproduced below.
Figure 1 is a block diagram showing “an overview of a system for
printing according to an embodiment” of Galmes. Galmes 125. Figure 1
illustrates printer 10 including “media database 20” and “paper management
web service” 30. Galmes 126. Printer 10 is in communication with “user
workstation [printer utility] 40” by way of “communication link 60,” and
printer 10 is in communication with “Raster Image Processor (RIP) 50” by
4
Appeal 2017-000655
Application 13/480,718
way of “communication link 70.” Id. The Examiner finds, based upon the
foregoing, that the medium profile information (stored in the media database
20, in this embodiment) and type of image processing section (a raster image
processor, i.e., Raster Image Processor 50 in this embodiment) are
“independent” and therefore satisfy the disputed claim limitation. Ans. 4.
We assign claim terms their “their broadest reasonable interpretation
consistent with the specification.” In re Am. Acad, of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Appellants assert paragraph 23 of the
Specification gives the ordinarily broad phrase “independent of’ a narrower
meaning in claim 1, so as to exclude the teaching of separate elements as
shown in Galmes Figure 1 and described in the corresponding paragraphs of
Galmes. Paragraph 23 of Appellants’ Specification provides:
According to this example the medium profile information may
be independent of the type of image processing section 220. This
reduces or eliminates the need for different versions of the
medium profile information to be prepared for different types of
image processing section, which may improve interoperability,
and reduce costs and outlay of resources compared to providing
a plurality of medium profiles that are specific to the image
processing section 220. In addition, it may simplify obtaining
medium profile information from a user's point of view.
Although we acknowledge paragraph 23 of the Specification refers to
“interoperability” and versions of medium profile information, we are not
persuaded this passage defines (or redefines) “independent of’ so as to
differentiate the teachings in Galmes. See, e.g., E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (although we gave claims their
broadest reasonable interpretation in light of the specification, “limitations
from the specification are not to be read into the claims”). We discern no
error in the Examiner’s finding that Galmes Figure 1 and corresponding
5
Appeal 2017-000655
Application 13/480,718
paragraphs (including paragraphs 26 and 55) teach medium profile
information independent of a type of image processing section. Ans. 4.
Appellants further argue the Examiner erred in finding Galmes
teaches or suggests a communication section to “obtain the medium profile
information from an external medium profile resource via a network,” as
recited in claim 1. App. Br. 11—12 (emphasis added). As the Examiner
finds, however, Galmes teaches “user terminal 40” and “communication
links 60 and 70,” which correspond to the claimed “external medium profile
resource” and “network,” respectively. Ans. 5 (citing Galmes Tflf 35, 55, 60).
Galmes further teaches “data can be exchanged” between the foregoing
elements using the “paper management web service,” and such data includes
media information stored in the media database 20 and user terminal 40. Id.
We discern no error, on the record before us, in the Examiner’s findings.
Claim 3—5, 7—9, 16, 22, and 23 are not argued separately from
independent claim 1 (from which they depend), and therefore, we find no
error in the Examiner’s rejection of those claims. Appellants, however,
argue the rejection of dependent claims 24 and 25 separately.
Regarding claim 24, Appellants argue the Examiner erred in finding
Toda ’637 and Galmes teach or suggest “an incremental search” performed
at the external medium profile resource to provide “a number” of matching
media based on user-input medium parameters. App. Br. 13—14. As the
Examiner finds, however, Galmes teaches a user request that provides “all
available print media (user-defined and built-in)” Galmes 49-50; Final
Act. 12 (citing Galmes 35—51), and Toda ’637 further teaches “displaying
registered paper information” based upon user input, Toda ’637 H 121—22;
Final Act. 12. Accordingly, we are not persuaded of error.
6
Appeal 2017-000655
Application 13/480,718
Regarding claim 25, Appellants argue the Examiner erred in finding
Galmes teaches or suggests the printer receiving “updated medium profile
information.” App. Br. 14. Specifically, Appellants assert Galmes’ teaching
of “altering medium characteristics is not equivalent to updated medium
profile information.” Id. As the Examiner finds, however, Galmes teaches
“updating the print media data in the media database by communicating
between a user and the media database via a web service system of the
printer.” Galmes 119 (emphasis added); Ans. 19. Accordingly, on the
record before us, we are not persuaded of error.
For the foregoing reasons, we sustain the obviousness rejection of
claims 1, 3—5, 7—9, 16, and 22—25.
Rejection of Claims 10, 11, 13, 14, 26, and 28
Appellants argue the Examiner erred in finding the prior art teaches or
suggests “generat[ing]... a user-defined medium profile based on input
received from a user . . . based on a number of parameters associated with
the medium as defined by the user, and upload the user-defined medium
profile to the external medium profile resource,” as recited in independent
claim 10. App. Br. 15—16. Specifically, Appellants argue the Examiner
relies on Kuroshima for the disputed limitation, and Kuroshima is concerned
“exclusively” with “bookbinding,” and therefore cannot “describe a profile
of [the claimed] medium.” App. Br. 16.
The Examiner, however, relies not simply on Kuroshima, but on the
combination of Kuroshima with Toda ’637, Galmes, and Kawamoto. Final
Act. 13; see In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
7
Appeal 2017-000655
Application 13/480,718
combination of references.”). As further described above in the discussion
of claim 1, Toda ’637 and Galmes teach or suggest the claimed medium
profile and parameters associated with the medium. Ans. 7 (citing Galmes
H 35, 60). The Examiner does not rely on Kuroshima for any process
particular to bookbinding itself. Rather, as the Examiner finds, Kuroshima
teaches a user interface for setting paper information, including paper size
and paper type, and generating the corresponding print job data. Ans. 6—7
(citing Kuroshima 17, 39, 48). On the record before us, we discern no
error in the Examiner’s findings.
Appellants argue independent claim 11 separately, asserting the
Examiner erred in finding the prior art teaches “performing an incremental
search at the external medium profile resource and providing a number of
matching media based on user-input medium parameters.” App. Br. 16—17.
As the Examiner finds, however, Kuroshima teaches providing search results
to a user by means of a scroll-down menu, based on user-input parameters
regarding paper type (medium). Ans. 8 (citing Kuroshima Figs. 2, 8,1 83).
These results are not merely an all-inclusive list, as suggested by Appellants.
Rather, in the embodiment described in Kuroshima, “glossy paper” is not
displayed in the list “because, since the job ticket data [inputted by the user]
does not include any records that include ‘glossy paper,’ it is determined that
‘glossy paper’ cannot be used.” Kuroshima 1 83; see also Ans. 8 (noting
Appellants do not define “incremental search”). Furthermore, as discussed
above, Toda ’637 and Galmes teach or suggest the recited medium profile
and medium parameters.
Appellants also argue claim 28 (which depends from claim 10)
separately, arguing the Examiner erred in finding the prior art teaches or
8
Appeal 2017-000655
Application 13/480,718
suggests “medium profile information is independent of a type of the image
processing section.” App. Br. 18. The disputed limitation is identical to the
limitation of claim 1, discussed above. We discern no error in the
Examiner’s finding of the disputed limitation in Galmes, as further discussed
above. Ans. 10 (citing Galmes Fig. 1, || 26, 55).
Appellants do not argue the remaining claims, all of which are
dependent, separately. Accordingly, we sustain the rejection of claims 10,
11, 13, 14, 26, and 28 as unpatentable over Toda ’637, Galmes, Kawamoto,
and Kuroshima.
Rejection of Claim 27
Appellants argue the rejection of claim 27 is erroneous for “the same
reasons” as claim 1, from which claim 27 depends. App. Br. 19. Because
we find no error regarding the Examiner’s rejection of claim 1, we are
unpersuaded of error regarding claim 27. Accordingly, we sustain the
rejection of claim 27 as unpatentable over Toda ’637, Galmes, Kawamoto,
and Toda ’096.
DECISION
We affirm the Examiner’s rejections of claims 1, 3—5, 7—11, 13, 14,
16, and 22—28.
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
9