Ex Parte Benedicto et alDownload PDFPatent Trial and Appeal BoardJun 29, 201713480718 (P.T.A.B. Jun. 29, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation