Ex Parte BoldonDownload PDFPatent Trial and Appeal BoardMar 27, 201710342560 (P.T.A.B. Mar. 27, 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. 10/342,560 01/15/2003 John Leland Boldon 82094474 1059 22879 HP Tnr 7590 03/29/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 GENACK, MATTHEW W FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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 JOHN LELAND BOLDON Appeal 2015-002314 Application 10/342,560 Technology Center 2600 Before KRISTEN L. DROESCH, JASON V. MORGAN, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 12—21 and 28—39. App. Br. 3.1 Claims 1—11 and 22—27 were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6. We reverse. 1 All references to the Appeal Brief refer to the Appeal Brief filed on June 10, 2014. Appeal 2015-002314 Application 10/342,560 The Invention Appellant invented a method, non-transitory computer-readable medium, and apparatus that facilitates printing from a telephone. Spec. 1:23. According to Appellant, a telephone (e.g., mobile telephone) establishes communication with an imaging device (e.g., printer, photocopier facsimile device, etc.) in order to provide specifications regarding the telephone to the imaging device. Id. at 16:5—13. The imaging device uses these specifications to generate an interface that it communicates to the telephone, which, in turn, uses the interface to identify or select documents to be printed at the imaging device. Id. at 16:14—17:1. Related Appeal We previously decided an appeal in the present application on July 20, 2011. See Ex parte Boldon, No. 2009-007 111, available at https ://e- foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2009007 111 -07- 18-2011-1 (BPAI2011) (affirming-in-part the Examiner’s anticipation rejection, and entering a new ground of rejection). Illustrative Claim Claims 12, 17, 28, 32, 33, and 37—39 are independent. Claims 13—16 directly depend from independent claim 12; claims 18—21 directly depend from independent claim 17; claims 29—31 directly depend from independent claim 28; and claims 34—36 directly depend from independent claim 33. Independent claim 12 is illustrative of the claims at issue and is reproduced below: 12. A method for facilitating printing from a telephone comprising: receiving telephone specifications at a printing device relating to the capabilities of the telephone to receive a program executable to display a printing device-specific user-interface to 2 Appeal 2015-002314 Application 10/342,560 the telephone, wherein the printing device-specific user- interface includes printing selections that correspond to a number of capabilities of the printing device; exporting, from a printing device, the program executable to display the printing device-specific user-interface to be displayed on the telephone based on the received telephone specifications; receiving with the printing device printing selections entered by a user on the telephone using the exported user- interface displayed on the telephone; and printing with the printing device in accordance with the printing selections. App. Br. 20 (Claims App’x). Prior Art Relied Upon Yajima US 2002/0016833 A1 published Feb. 7, 2002 (filed Aug. 1, 2001) Aidinejad US 2004/0085573 A1 published May 6, 2004 (filed Oct. 31,2002) Rejection on Appeal Claims 12—21 and 28—39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Aidinejad and Yajima. Final Act. 2—9.2 Examiner’s Findings and Conclusions The Examiner finds that Aidinejad teaches all the limitations recited in independent claims 12, 17, 28, 32, 33, and 37—39, except receiving telephone specifications at a printing device relating to the capabilities of the telephone to receive a printing device-specific user interface, whereby said interface is to be displayed on the telephone based on the received telephone specification. Final Act. 3—8 (citing Aidinejad 40-42, 47 49, 52—55, 2 All references to the Final Action refer to the Final Rejection mailed on February 12, 2014. 3 Appeal 2015-002314 Application 10/342,560 Figs. 3, 4a—e). The Examiner turns to Yajima as teaching this limitation. Id. at 3, 5—7 (citing Yajima 59, 60, Figs. 1, 12). The Examiner also provides reasoning as to why one of ordinary skill in the art would have been prompted to combine or modify the teachings of Aidinejad and Yajima. Id. at 4, 6, 8 (citing Yajima 17). Appellant’s Contentions Appellant contends that Aidinejad’s disclosure of a user making selections on a user interface of a phone that communicates with a mobile printing accessory does not teach a program executable that creates a device specific user interface, as required by independent claims 12, 17, 28, 32, 33, and 37—39. App. Br. 14—15. According to Appellant, Aidinejad does not teach this particular feature required by independent claims 12, 17, 28, 32, 33, and 37—39 because it never uses a program executable to reflect the printing capabilities of the phone. Id. at 15. Appellant further contends that Yajima fails to cure this deficiency in Aidinejad. Id. at 15. Appellant argues that Yajima’s disclosure of a phone that allows a user to select certain print jobs available at a printer does not teach a program executable that displays a device-specific user interface on a phone, as required by independent claims 12, 17, 28, 32, 33, and 37—39. Id. at 16. According to Appellant, Yajima does not teach this particular feature required by independent claims 12, 17, 28, 32, 33, and 37—39 because it never uses a program that displays a device-specific user interface to reflect the printing capabilities of the phone. Id. at 16—17. 4 Appeal 2015-002314 Application 10/342,560 II. ISSUE The dispositive issue before us is whether the Examiner erred in determining that the combined teachings of Aidinejad and Yajima account for “a program executable to display . . ., wherein the printing device specific user-interface includes printing selections that correspond to a number of capabilities of the printing device [and]. . . exporting, from a printing device, the program executable . . . device-specific user interface . . . based on the received telephone specifications,” as recited in independent claim 12, and similarly recited in independent claims 17, 28, 32, 33, and 37-39? III. ANALYSIS Claims 12, 17, 28, 32, 33, and 37—39 We discern error in the Examiner’s obviousness rejection of independent claim 12, which recites, amongst other things, “a program executable” based on “telephone specifications.” We also discern error in the Examiner’s obviousness rejection of independent claims 17, 28, 32, 33, and 37—39, each of which recites a similar limitation. The Examiner takes the position that Aidinejad’s mobile printing accessory 110 that provides an interface to mobile client device 100 capable of displaying various options relating to the functionality of printer 120, such as color printing, two-sided printing, portrait printing, landscape printing, the number of pages printed per sheet, etc., teaches the claimed “program executable.” Final Act. 2—3 (citing Aidinejad ^fl[ 53, 54, Fig. 4d). In the Answer, the Examiner finds that Figure 4d of Aidinejad illustrates mobile printing accessary 110 that amounts to a program that executes on a 5 Appeal 2015-002314 Application 10/342,560 wireless phone. Ans. 9—10.3 According to the Examiner, the interface illustrated in Figure 4d depends on the knowledge of the functionality of printer 120 being controlled by the wireless phone (i.e., mobile client device 100) on which said interface is displayed. Id. at 10. For instance, the Examiner finds that, if printer 120 was incapable of color printing or two- sided printing, then those respective options would not appear in the interface displayed on the wireless phone. Id. The Examiner’s obviousness rejection is predicated on the notion that Aidinejad’s mobile printing accessory 110 teaches a program that executes on a wireless phone and, therefore, accounts for the claimed “program executable.” See Ans. 9—10. We do not agree with the Examiner in this regard. Figures 1 and 2 of Aidinejad clearly illustrates that mobile printing accessory 110 is a physical device located between mobile client device 100 and printer 120. Indeed, Aidinejad discloses that mobile printing accessory 110 is designed specifically to provide an interface between mobile client device 100 and printer 120, and, preferably, is a small, lightweight, and portable device. Aidinejad 157. Aidinejad further explains that mobile printing accessory 110 is limited in functionality and is not intended to provide the functionality of a general purpose computer. Id. 1 58. Given the aforementioned description of Aidinejad’s mobile printing accessory 110, we fail to see how this physical device could quality as a program that executes on a wireless phone, as asserted by the Examiner. To the extent the Examiner is arguing that the interface provided by mobile printing accessory 110 to mobile client device 100 amounts to a program that executes on a wireless phone, we are unable to discern how 3 All references to the Examiner’s Answer refer to the Answer entered on October 29, 2014. 6 Appeal 2015-002314 Application 10/342,560 this particular interface is based on the specifications of the mobile client device 100, as required by independent claims 12, 17, 28, 32, 33, and 37—39. In other words, although Aidinejad discloses that a wireless phone is capable of displaying the interface provided by mobile printing accessory 110 (e.g., interface illustrated in Figure 4d) (see Aidinejad 1 54), the Examiner does not direct us to, nor can we find, a disclosure in Aidinejad that explains adequately how mobile printing accessory 110 generates this interface based on phone specifications it received from the wireless phone. We recognize that the Examiner relies on Yajima’s disclosure of portable phone 1 transmitting information to printer 3 to teach the claimed “telephone specifications.” See Final Act. 3. Yajima, however, only discloses transmitting “identification data” specific to portable phone 1 to printer 3. Yajima | 59. The Examiner does not explain how Yajima’s “identification data” specific to portable phone 1 amounts to phone specifications that enable printer 3 to ascertain the interface capabilities of the phone. Without such an explanation, we are not persuaded that Yajima’s “identification data” transmitted between portable phone 1 and printer 3 necessarily qualifies as the claimed “telephone specifications.” It follows that the Examiner has erred in determining that the combination of Aidinejad and Yajima renders independent claims 12, 17, 28, 32, 33, and 37—39 unpatentable. Claims IS—16, 18—21, 29—31, and 34—36 The Examiner has erred in rejecting dependent claims 13—16, 18—21, 29-31, and 34—36 for the same reason set forth above in our discussion of independent claims 12, 17, 28, and 33, because each of these dependent claims include the same program executable limitation as their underlying base claim. 7 Appeal 2015-002314 Application 10/342,560 IV. CONCLUSION OF LAW The Examiner has erred in rejecting claims 12—21 and 28—39 as being unpatentable under § 103(a). V. DECISION We reverse the Examiner’s decision to reject claims 12—21 and 28—39. REVERSED 8 Copy with citationCopy as parenthetical citation