Ex Parte Boldt et alDownload PDFPatent Trial and Appeal BoardMar 1, 201713776075 (P.T.A.B. Mar. 1, 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. 13/776,075 02/25/2013 Gerald Donald Boldt 4-078 FN201300223 9708 50447 7590 03/03/2017 DUFT BORNSEN & FETTIG, LLP 1526 SPRUCE STREET SUITE 302 BOULDER, CO 80302 EXAMINER ZONG, HELEN ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 03/03/2017 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): docketing @ dbflaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERALD DONALD BOLDT, PAUL HAMILTON, JANEEN E. JAHN, KUMAR V. KADIYALA, TISHA LEGGETT, RONALD J. LEMASTER, MICHAEL DAVID RAINES, and PATRICK SMYTH Appeal 2016-000701 Application 13/776,0751 Technology Center 2600 Before JOHN A. EVANS, CATHERINE SHIANG, and CARL L. SILVERMAN, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of Claims 1—18, all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.2 1 The Appeal Brief identifies the Inventors, under an obligation to assign their rights to Ricoh Company, LTD, as the real party in interest. App. Br. 3. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed Feb. 9, 2015, “App. Br.”), the Examiner’s Appeal 2016-000701 Application 13/776,075 STATEMENT OF THE CASE The claims relate to methods and systems to resume workflow processing of a print job at an intermediate step of a print workflow. See Abstract. INVENTION Claims 1,7, and 13 are independent. An understanding of the invention can be derived from a reading of exemplary Claim 1, which is reproduced below with some formatting added: 1. A system comprising: a control system operable to initiate processing of a print job based on steps in a print workflow, wherein the steps identify print shop activities to perform for the print job; the control system is further operable to identify an error in executing a step of the workflow, to identify an intermediate step in the workflow that has executed in processing the print job, to identify an updated file for the print job to correct the error, and to resume processing of the print job at the intermediate step using the updated file. Answer (mailed July 31, 2015, “Ans.”), the Final Action (mailed Aug. 2, 2014, “Final Act.”), and the Specification (filed Feb. 25, 2013, “Spec.”) for their respective details. 2 Appeal 2016-000701 Application 13/776,075 References and Rejections The Examiner relies upon the prior art as follows: Ryuutou Hayber, et al., US 2010/0168888 Al July 1, 2010 Oct 13,2011 Aug. 30, 2012 US 2011/0249290 Al Dumitrescu, et al., US 2012/0218590 Al “Dumitrescu ‘590” Dumitrescu, et al., US 2012/0243028 Al Sept. 27, 2012 “Dumitrescu ‘028” The claims stand rejected as follows: 1. Claims 1—6 stand rejected under 35 U.S.C. 112 (1st |), as failing to comply with the enablement requirement. Final Act. 2—3. 2. Claims 1, 4, 6, 7, 10, 12, 13, 16, and 18 stand rejected under 35 U.S.C. § 102(e), as anticipated by Dumitrescu ‘590. Final Act. 3—6. 3. Claims 2, 8, and 14 stand rejected under 35 U.S.C. § 103(a), as obvious over Dumitrescu ‘590 and Hayber. Final Act. 6—7. 4. Claims 3, 9, and 15 stand rejected under 35 U.S.C. § 103(a), as obvious over Dumitrescu ‘590 and Dumitrescu ‘028. Final Act. 8—9. 5. Claims 5,11, and 17 stand rejected under 35 U.S.C. § 103(a), as obvious over Dumitrescu ‘590 and Ryuutou. Final Act. 9-10. We have reviewed the rejections of Claims 1—18 in light of Appellants’ arguments that the Examiner erred. We are persuaded of error. ANAFYSIS 3 Appeal 2016-000701 Application 13/776,075 Claims 1-6: Single means Rejection Claim 1 recites, inter alia, “a system comprising: a control system operable to initiate processing .... the control system is further operable to identify an error..... ” The Examiner finds the recitation “control system” is the only “means” recited. Thus, the claims are overbroad under § 112(1st |). Final Act. 2. The Examiner finds a “single means claims covers every conceivable means for achieving the purpose of the claims and thus, fail to enable the entire scope of the claims. Id. Claim 1 does not recite “means,” nonetheless, the Examiner finds Claim 1 to be a “single means claim” because the Examiner finds the recited “system” is a generic term that covers every means of effectuating the claims. Final Act. 11. The Examiner finds where the claims cover every conceivable means, whereas the specification discloses only those means known to the inventor, the claims are non-enabling as overbroad, analogous to the claims of In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983). Id. (citing MPEP §2164.08(a)). Appellants contend Hyatt is inapt because that court did not comment on claims that do not recite “means-plus-fimction.” Br. 8. Appellants argue that where, as here, claims do not recite “means” or “step” a strong, rebuttable presumption is triggered that §112(f/6th 1) does not apply. Id. at 9. Appellants argue a “nonce word” triggers the presumption. Id. Appellants contend Claim 1 recites a “control system” that is operable to perform various functions, and thus, is recognizable to a person of skill in the art as a term of art. Id. The Examiner’s Answer re-iterates the findings regarding In re Hyatt. Ans. 14. The Examiner does not respond to Appellants’ argument that Hyatt does not apply. Appellants do not file a Reply Brief. 4 Appeal 2016-000701 Application 13/776,075 One of ordinary skill in the art would understand “control system” to refer to a specific type of circuitry, and “circuitry” has been found in other cases to connote structure. See The Massachusetts Institute of Technology and Electronics for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1355— 56 (Fed. Cir. 2006) (stating that “circuit” combined with a description of the function of the circuit connotes sufficient structure). The claim language does not merely describe a “control system,” but adds further structure by describing the operation of the controller. Therefore, we reverse the Examiner’s rejection of claim 1 under 35 U.S.C. § 112. Claims 1,4,6,7,10,12,13,16, and 18: Anticipation by Dumitrescu ‘590 Appellants argue these claims as a group in view of the limitations of Claim 1. See Br. 8. Appellants contend Dumitrescu ‘590 does not teach a control system that identifies an executed intermediate step in a workflow process and resumes processing of a print job at the identified intermediate step using an updated workflow file as recited in Claim 1. Br. 6. The Examiner finds Dumitrescu ‘590 “teaches” a “print job system” which, inter alia, is capable of identifying an error in executing a step of a workflow. Final Act. 3^4. The Examiner finds Dumitrescu ‘590 identifies an executed, intermediate step, halts processing, and recommences execution using a revised workflow, as claimed. Id. at 4. Appellants contend Dumitrescu fails to identify an executed intermediate step in the partially-completed workflow and, using an updated file, fails to resume processing at that identified step. Br. 7. Appellants argue that instead, Dumitrescu starts a new workflow that may not include 5 Appeal 2016-000701 Application 13/776,075 previously-completed activities from the partially-completed workflow. Id. The Examiner acknowledges Dumitrescu ‘590 discloses that the unfinished job of a first workflow is resumed in a second workflow. However, the Examiner finds “Claim 1 recite [s] resume the processing of the print job, does not recite resume the same workflow.” Ans. 13. Thus, the two workflows of Dumitrescu ‘590 are consistent with the claims. Id. Claim 1 initially recites “a print workflow,” where the indefinite article “a” does not limit the claim to a single workflow. Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (“[tjhis court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’”). However, Claim 1 subsequently recites “in the workflow,” where (“[subsequent uses of the definite articles ‘the’ or ‘said’ in a claim refers back to the same term recited earlier in the claim”). Id. Thus, the recitation “the workflow” limits the claims to the workflow introduced by the indefinite article. Therefore, the second workflow, disclosed by Dumitrescu, fails to anticipate the claims. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of claim 1, and claims 4, 6, 7,10,12,13,16, and 18. Claims 2,3,5, 8,9,11,14,15, and 17: Obviousness over Dumitrescu ‘590 and secondary references The Examiner applies the teachings of Dumitrescu ‘590 against these 6 Appeal 2016-000701 Application 13/776,075 dependent claims similarly as they were applied against Claim 1. Final Act. 6, 8, and 9. Because we decline to sustain the rejection of the independent claims under §102, we decline to sustain the rejection of claims dependent therefrom. Trintec Industries, Inc. v. Top-US.A. Corp., 295 F.3d 1292, 1296, 63 USPQ2d 1597 (Fed. Cir. 2002) (noting that if an independent claim is not anticipated by prior art, then its dependent claims, which necessarily include the limitations of the independent claim, are not anticipated either). In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[Dependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). Further, the dependent claims are not unpatentable for at least the reason that these claims depend from and include the elements of independent Claim 1. See In re Fine, 837 F.2d 1071 (Fed. Cir. 1988); Minnesota Mining andMfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1299 (Fed. Cir. 2002). Therefore, we reverse the Examiner’s rejection of claims 2, 3, 5, 8, 9, 11,14,15, and 17. DECISION The rejection of Claims 1—6 under 35 U.S.C. 112 (1st |), is REVERSED The rejection of Claims 1, 4, 6, 7, 10, 12, 13, 16, and 18 under 35 U.S.C. § 102(e) IS REVERSED. The rejection of Claims 2, 3, 5, 8, 9, 11, 14, 15, and 17 under 35 U.S.C. § 103 is REVERSED. 7 Appeal 2016-000701 Application 13/776,075 REVERSED 8 Copy with citationCopy as parenthetical citation