Ex Parte Boldt et al

Patent Trial and Appeal Board

Mar 1, 2017

13776075 (P.T.A.B. Mar. 1, 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.
13/776,075 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.
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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
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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.
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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
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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
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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.
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REVERSED
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