Ex Parte Czyszczewski et al

Patent Trial and Appeal Board

Dec 31, 2012

10777575 (P.T.A.B. Dec. 31, 2012)

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.
10/777,575 02/12/2004 Joseph Stanley Czyszczewski BLD920030010US1 5992
50441 7590 12/31/2012
DUFT BORNSEN & FISHMAN, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
PILLAI, NAMITHA
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
12/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH STANLEY CZYSZCZEWSKI,
MICHAEL HALLER JR., RICHARD STEELE NICKELL JR.,
and IVAN WOEHR
____________________

Appeal 2010-007609
Application 10/777,575
Technology Center 2100
____________________

Before DAVID M. KOHUT, BRYAN F. MOORE, and
JOHN G. NEW, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a non-final
rejection of claims 1, 3, 5, 6, 9-12, 15-17, and 21-24. Claims 2, 4, 7, 8, 13,
14, and 18-20 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE, and enter a NEW GROUND of rejection in
accordance with 37 C.F.R. § 41.50(b).
Introduction
According to Appellants, the invention relates to multifunction
devices such as, but not limited to, devices that integrate facsimile, scanner,
copier, and printer function, and more particularly relates to multifunction
devices with self-contained scriptability and application integration. Spec.
¶ [0001].

STATEMENT OF THE CASE
Exemplary Claim
Claims 1 is an exemplary claim and is reproduced below:
1. A multifunction device comprising:
a communication module configured to communicate
with a server over a network;
a controller module configured to control the operation of
the multifunction device and to interface with a business
application executing on the server, wherein the server provides
a business application interface to the multifunction device for
interfacing to the business application;
a user interface module configured to present the
business application interface from the server on a display
integral to the multifunction device and to provide input and
output fields for the business application interface to a user for
user input;
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a source interface module configured to receive input
data from at least one document data source,
the controller module further configured to transmit the
input data from the at least one document data source and the
user input to the business application executing on the server;
and
a target interface module configured to output the input
data from the at least one document data source and the user
input as processed document data.

Prior Art
Hu US 5,361,134 Nov. 1, 1994
Hou US 7,180,638 B1 Feb. 20, 2007

Rejections
Claims 1, 3, 5, 6, 9-12, 15-17, and 21-24 stand rejected under 35
U.S.C. §101 as being directed to non-statutory subject matter. Ans. 3.
Claims 1, 3, 5, 6, 9-11, 15-17, and 21-24 stand rejected under 35
U.S.C. §102(e) as being anticipated by Hou. Ans. 4-8.
Claim 12 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Hou and Hu. Ans. 8-9.

ISSUES
1. Has the Examiner erred in finding that claims 1, 3, 5-6, 9-12, 15-
17, and 21-24 are directed to non-statutory subject matter under 35
U.S.C. § 101?
2. Has the Examiner erred in finding that Hou discloses “a user
interface module configured to present the business application
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interface from the server on a display integral to the multifunction
device” as recited in claim 1?
ANALYSIS
35 U.S.C. § 101: claims 1, 3, 5, 6, 9-12, 15-17 and 21-24
Claims 1, 3, 5, 6, 9-12, 15-17, and 21-24 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
Appellants present arguments regarding claims 1 and 15. Claim 1 is
directed to a multifunction device; the device comprising several modules.
The Examiner finds that these claimed modules could be directed to
unpatentable abstract software per se. See Ans. 3; also see Ans. 9.
Appellants contend that the Examiner erred because the claims are
directed to a statutory machine. See Br. 7-8.
Specifically, Appellants contend that the recitation of “a multifunction
device” must be implemented by a physical structure in order for the
multifunction device to perform the claimed functions. See Br. 7. We agree
with Appellants. Claim 1 recites hardware elements that include a “display
integral to the multifunction device.” We therefore cannot sustain the
Examiner’s decision to reject claim 1 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Similarly, we cannot sustain the
Examiner’s decision to reject claims 3, 5, 6, 9-12, 21, and 22 that depend
from claim 1. Claims 15-17, 23 and 24 contain essentially the same
limitation to “a display integral to the multifunction device,” therefore we
cannot sustain the Examiner’s decision to reject of those claims.
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35 U.S.C. § 102(e): claims 1, 3, 5-6, 9-11, 15-17, and 21-24
Claim 1 requires “a user interface module configured to present the
business application interface from the server on a display integral to the
multifunction device.” Appellants argue that Hou does not disclose this
limitation. Br. 9-10. We are persuaded by this argument. The Examiner
relies on Fig. 4 of Hou to disclose this limitation. Ans. 10. The Examiner
finds that “[f]igure 4 of Hou discloses a user interface that presents the
business application interface accessed from a server and displayed on a
client computer. The client computer is the multifunction device that
comprises the user interface of Figure 4. This display is clearly integral to
the multifunction device.” (Id.)
We find that if the client computer, for example WEB Client 104, is
the multifunction device, then this finding is inconsistent with the
Examiner’s finding that the Web Fax Server 102 is the multifunction device
(Ans. 4 (citing sections of Hou that discuss the fax server to show the
multifunction device)). In other words, given that the Examiner finds the
Web Fax Server 102 is the multifunction device, the Examiner must show
that there is a module in Hou configured to present the business application
interface from the server on a display integral to Web Fax Server 102. The
Examiner does not so show, and therefore we cannot sustain the Examiner’s
decision to reject claim 1 and claims 3, 5, 6, 9-11, 21, and 22 that depend
from claim 1 under 35 U.S.C. § 102(e). Claim 15 contains essentially the
same limitation. Thus, we cannot sustain the Examiner’s decision to reject
claim 15 and claims 16, 17, 23, and 24, which depend from claim 15 under
35 U.S.C. § 102(e).
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35 U.S.C. § 103(a): claim 12
The Examiner relies on the same section of Hou to show “a user
interface module configured to present the business application interface
from the server on a display integral to the multifunction device” for the
purpose of the §103 rejection as the Examiner relies on to show that
limitation for the purpose of the 102 rejection. Ans. 8-9.
1
Thus, we cannot
sustain the Examiner’s decision to reject claim 12, which depends from
claim 1 under 35 U.S.C. § 103(a).
NEW GROUND OF REJECTION - 37 C.F.R. § 41.50(b)
We enter the following new grounds of rejection for claims 1, 3, 5-6,
9-12, 15-17, and 21-24 pursuant to our authority under 37 C.F.R. § 41.50(b).
35 U.S.C. § 103(a) – Hou
Claims 1, 3, 5-6, 9-11, 15-17, and 21-24
With respect to claims 1, 3, 5-6, 9-11, 15-17, and 21-24, Hou fails to
explicitly disclose the limitation “present[ing] the business application
interface from the server on a display integral to the multifunction device” as
argued by the Appellants. Br. 9-10.
We find that it would have been obvious to one of ordinary skill in the
art to recognize that the information that is displayed at the WEB Client 104
of Hou can be displayed at the Fax Server 102. The motivation to do so
would be to permit access to the functions available at the client device at
the location of the fax server. One of ordinary skill in the art would

1
We note the Examiner did not respond to Appellants’ arguments regarding
the rejection under 35 U.S.C. § 103(a).
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recognize that Fax Server 102 would have a display to perform the
“traditional functions of a fax machine” as taught by Hou. Hou 3:67-4:7.
Thus, it would be obvious to one of ordinary skill in the art to use the display
of Fax Server 102 to present the “business application interface” which is
displayed on the WEB Client 104. Additionally, such a modification of
Hou’s teaching such that the display on the Fax Server is used to perform the
functions of the WEB Client 104 is merely a combination of familiar
elements according to known methods that does no more than yield
predictable results - an obvious improvement, see KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007), that can be implemented by a person of
ordinary skill, id. at 417.
For the reasons stated above, we enter a new ground of rejection of
claims 1, 3, 5-6, 9-11, 15-17, and 21-24 under 35 U.S.C. § 103 (a) as being
unpatentable over Hou.
35 U.S.C. § 103(a) – Hou and Hu
Claim 12
As to claim 12, given our finding that Hou teaches a display integral
to the multifunction device, as stated above, we also find that the remaining
limitations of claims 12 would have been obvious to one of ordinary skill in
the art, given the teachings of Hou and Hu, as shown by the analysis and
citations provided by the Examiner at pages 8-9 of the Answer. Ans. 8-9.

DECISION
The Examiner’s rejection of claims 1, 3, 5, 6, 9-12, 15-17, and 21-24
under 35 U.S.C. §101 as being directed to non-statutory subject matter is
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reversed. The Examiner’s rejection of claims 1, 3, 5, 6, 9-11, 15-17, and 21-
24 under 35 U.S.C. § 102(e) as being anticipated by Hou is reversed. The
Examiner’s rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hou and Hu is reversed.

We newly reject claims 1, 3, 5, 6, 9-11, 15-17, and 21, and 22-24
under 35 U.S.C. § 103 (a) as being unpatentable over Hou. We also newly
reject claim 12 under 35 U.S.C. § 103 (a) as being unpatentable over the
combination of Hou and Hu. 37 C.F.R. § 41.50(b) provides that “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .

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)(iv).

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REVERSED; 37 C.F.R. § 41.50(b)

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