Ex Parte Gibson et al

Patent Trial and Appeal Board

Jun 26, 2017

14029173 (P.T.A.B. Jun. 26, 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.
14/029,173 09/17/2013 George A. Gibson 20130271-US-NP 4188
41030 7590 06/28/2017
Xerox Corporation
c/o ORTIZ & LOPEZ, PLLC
P. O. BOX 4484
ALBUQUERQUE, NM 87196-4484
EXAMINER
MISHRA, RICHA
ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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 @ olpatentlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE A. GIBSON and MICHAEL R. FURST
Appeal 2017-004781
Application 14/029,173
Technology Center 2600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 41—60, which constitute all the claims pending
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-004781
Application 14/029,173
THE INVENTION
Appellants’ claimed invention is directed to establishing “a set of
criteria ... for ranking a group of rendering jobs in a rendering queue” in
which “[o]ne or more jobs among the group of rendering jobs can be
identified, which potentially constitutes a low value document” (Abstract).
Independent claim 41, reproduced below, is representative of the
subject matter on appeal:
41. A method for managing printing of a plurality of
documents in a printing queue, the method comprising:
establishing a set of criteria for identifying the
documents in the print queue, wherein a plurality of types
of document content comprise at least one of an email, a
contract, a travel document, a web page, a presentation, a
legal document, a medical record, a certificate of
compliance, and an inspection document, and wherein the
criteria are based at least in part on the types of document
content;
identifying, based on the criteria, a potentially low
value document among the documents in the printing
queue;
generating an alert indicating that the potentially
low value document has been identified; and
instituting a particular action with respect to the
potentially low value document if it is confirmed based on
the alert that the potentially low value document is a low
value document.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Meyerzon US 2006/0200460 A1 Sept. 7, 2006
Whitmarsh US 7,239,408 B1 July 3, 2007
Fukushima US 2007/0229920 A1 Oct. 4, 2007
Yamakawa US 2011/0164278 A1 July 7, 2011
Patoskie US 8,200,603 B1 June 12, 2012
Sandler US 2013/0163033 A1 June 27, 2013
THE REJECTIONS
The Examiner made the following rejections1:
Claims 41—43, 48, 49, 51, 52, and 57—59 stand rejected under
35 U.S.C. § 103 as being unpatentable over Sandler, Meyerzon, and
Yamakawa. Final Act. 3^4.
Claims 50 and 60 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sandler, Meyerzon, Yamakawa, and Patoskie. Final Act.
6.
Claims 45, 47, 54, and 56 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Sandler, Meyerzon, Yamakawa, and Fukushima.
Final Act. 7.
Claims 44, 46, 53, and 55 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Sandler, Meyerzon, Yamakawa, and Whitmarsh.
Final Act. 8.
1 The rejection of claim 42 under 35 U.S.C. § 112(a) was withdrawn by the
Examiner. See Ans. 16.
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Application 14/029,173
ISSUES
The issues are whether the Examiner:
1. appropriately combined Sandler, Meyerzon, and Yamakawa by
providing a rational underpinning to support the legal conclusion of
obviousness regarding claim 41;
2. the Examiner erred in finding the combination of Sandler, Meyerzon,
and Yamakawa teaches or suggests the “types of document content
comprise an email, a contract, a travel document, a web page, a
presentation, a legal document, a medical record, a certificate of
compliance, and an inspection document,” as recited in claim 42;
3. the Examiner erred in finding the combination of Sandler, Meyerzon,
and Yamakawa teaches or suggests “the particular action comprises
preventing printing of the low value document,” as recited in claim
48;
4. the Examiner erred in finding the combination of Sandler, Meyerzon,
Yamakawa, and Patoskie teaches or suggests “locating the rules
engine in a rendering path with respect to the printing queue,” as
recited in claim 50;
5. the Examiner erred in finding the combination of Sandler, Meyerzon,
Yamakawa, and Fukushima teaches or suggests “the particular action
comprises modifying the content of the low value document such that
the low value document is printed with reduced print magnification,”
as recited in claim 45; and
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6. the Examiner erred in finding the combination of Sandler, Meyerzon,
Yamakawa, and Fukushima teaches or suggests “the particular action
comprises changing the plex of the low value document,” as recited in
claim 47.
ANALYSIS
Claim 41
Appellants argue the Examiner erred because “[t]here is no suggestion
anywhere, except in this application’s prosecution history” to make any
combination of Sandler and Meyerzon (Br. 9). Appellants contend the
combination “renders Sandler’s invention unsuited for its intended purpose”
(Br. 10) and “[t]he proposed modification would change Sandler’s principal
of operation” (Br. 10). Appellants further contend “Sandler’s invention
would be unsatisfactory for its intended purpose” if it were modified by
Yamakawa because “the proposed combination would have to wait for users
to respond (delaying printing of all jobs)” (Br. 12).
We do not agree with Appellants’ arguments. The Examiner finds,
and we agree, that “the combination is a substitution to yield [predictable]
results- (optimized ranking), obvious to try (for e.g. instead to print
characteristics, try the type of document to assign priority) to yield
predictable result[s] (which is optimized ranking for the type of document)'1'’
(Ans. 12). Here, Sandler teaches a reordering of printing based on a print
characteristic. Sandler 111. Meyerzon teaches reordering of documents
based on file type (Meyerzon | 5) and teaches document properties such as
“file type” can be used to affect the rank of a document (Meyerzon 17).
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Yamakawa teaches prompting the user to alert when an event (such as a
discrepancy in a printing time) is apparent (Yamakawa 86—87).
The substitution of the teaching of Meyerzon’s ranking by document
type into the teaching of Sandler’s reordering is “the simple substitution of
one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement,” and because the
combination does no more than yield predictable results, the claim is
unpatentable under 35 U.S.C. § 103(a). KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 401 (2007). We agree with the Examiner that the addition of
Yamakawa’s prompting to alert the user “based on user desires [] make it
convenient for the user” (Final Act. 5) and are not persuaded that such a
prompt would “delay[] all printing jobs” as Appellants contend.2
Accordingly, we sustain the Examiner’s rejection of independent
claim 41, and independent claims 51 and 57 not separately argued, and
claims 43, 44, 46, 49, and 59 not separately argued. See Br. 8, 13—16.
Claim 42
Appellants argue the Examiner erred because “Meyerzon does not
consider a contract, a travel document, a presentation, a legal document, a
medical record, a certificate of compliance, or an inspection document” (Br.
2 Further, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead,
the relevant issue is “what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Id. “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In reNievelt, 482 F.2d 965, 968 (CCPA 1973).
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13). We are not persuaded by Appellants’ argument. In an obviousness
analysis, it is not necessary to find precise teachings directed to the specific
subject matter claimed because inferences and creative steps that a person of
ordinary skill in the art would employ can be taken into account. See KSR,
550 U.S. at 418. In this regard, “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” Id. at 421. Additionally, we note
Appellants’ arguments are not commensurate with the scope of the claim;
claim 42 does not recite “considering]” a document type. See Br. 13.
Accordingly, we sustain the Examiner’s rejection of dependent claim
42, and dependent claims 52 and 58 not separately argued (see Br. 13), as
well as dependent claims 53 and 55 also not separately argued. See Br. 14-
lb.
Claim 48
Appellants argue the Examiner erred because “[t]he office action
ignores the plain meaning of the word prevent but is stretching beyond any
reasonable bounds to mean rescheduled or delayed” (Br. 13). Appellants
further submit a dictionary definition of “prevent” (Br. Appendix A).
We do not agree with Appellants’ argument. The Examiner finds, and
we agree, that the claimed “preventing printing” means "'preventing from
execution ’ and if the jobs are rearranged, it will be prevented from
executing ‘at [the] present time ”’ (Ans. 16). Here, Appellants do not point
to any definition of “prevent” or “preventing” in their Specification;
however, we find the following use of “preventing” in Appellants’
Specification in which
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[s]uch a particular action can involve, for example, rendering
(e.g., printing) the identified job(s), modifying the identified
job(s), preventing rendering of the identified job(s), etc. The
process can then terminate, as shown at block 32
(Spec. 134, emphasis added). Here the Examiner’s definition of
“preventing printing” as “prevented from executing at [the] present time” is
reasonable, and does not conflict with the Specification, because the
Specification does not conclusively state that the process terminates while a
job is prevented from rendering, only that it “can then terminate.”
Accordingly, we sustain the Examiner’s rejection of dependent claim
48.
Claim 50
Appellants argue the Examiner erred because “[s]tring searching
Patoskie reveals that the strings ‘render’ ‘print’ or even ‘rend’ are not
present” (Br. 13) and “[t]here is no support for locating a rules engine in a
rendering path” (Br. 14).
We do not agree with Appellants’ argument. The Examiner finds, and
we agree, that “[i]t would have been obvious having the teachings of Sandler
modified by Meyerzon and Yamakawa at [the time of Appellants’ invention]
to include the concept of locating the rendering rule of Patoskie to find the
most [effective rule set for the specified goal” (Final Act. 6, citing Patoskie
2:29—35, 4:5—20) and “Patoskie teaches locating rules which [are] used by
the agent for [the] execution environment, wherein the execution
environment is rendering in a print queue, as taught by the combination”
(Ans. 16, Patoskie 4:5—20) (emphasis omitted). Appellants argue Patoskie
separately and do not consider the combination of the references. “[0]ne
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cannot show non-obviousness by attacking references individually where . . .
the rejections are based on combinations of references.” In re Keller, 642
F.2d at 426.
Accordingly, we sustain the Examiner’s rejection of dependent claim
50, and dependent claim 60 not argued separately. See Br. 13—16.
Claim 45
Appellants argue the Examiner erred because “Fukushima is teaching
document scanning, not printing” (Br. 15). Appellants contend “scan
resolution does not affect print magnification” and “[t]he content of
Fukushima’s document is not altered in response to the alert such that it is
printed at a lower magnification” (Br. 15).
We do not agree with Appellants’ arguments. The Examiner finds,
and we agree, that Fukushima teaches that print magnification is “based on
the kind of original resolution” (Final Act. 7 citing Fukushima Fig. 4,177)
(emphasis omitted) and further that
based on the type of document[,] resolution can be set, hence
the user can set resolution value based on criteria (low value).
In terms of print magnification vs. scanning resolution, it’s
known in the art that they both are values that can be set based
on the user criteria
(Ans. 17, citing Fukushima Fig. 4,177). Appellants’ argument that scan
resolution does not affect print magnification is unsupported attorney
argument. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(attorney arguments or conclusory statements are insufficient to rebut a
prima facie case). Appellants do not address and rebut the Examiner’s
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findings regarding user criteria similarities between print magnification and
scanning resolution.
Accordingly, we sustain the Examiner’s rejection of dependent claim
45, and dependent claim 54 not argued separately. See Br. 16.
Claim 47
Appellants argue the Examiner erred because “[t]he office action
provides no support for equating ‘plex’ to ‘pixel’ or ‘resolution’” (Br. 16).
Appellants submit Wikipedia pages in support of their argument that “[i]n
printing, ‘plex’ is the number of pages printed on a sheet” (Br. 16, citing
Appendices B, C).
The Examiner finds that “resolution [plex = pixel] would be different
depending on the kind of document” (Final Act. 7) (emphasis omitted).
Assuming, arguendo, that Appellants correctly define “plex” as the number
of pages printed on a sheet, we agree with the Examiner that changing the
plex is functionally equivalent to changing the resolution; we note that
Appellants’ cited usage example in the Specification of “duplex rather than
simplex” (Spec. 13) is equivalent to the “reduced print magnification” of
claim 45. Further, Appellants citation to Wikipedia pages (which are open
source and do not positively state plex is not a pixel) is insufficient to show
the Examiner erred in finding one of ordinary skill would understand the
recited term “plex” to refer to pixel resolution. See Ans. 17.
Accordingly, we sustain the Examiner’s rejection of dependent claim
47, and dependent claim 56 not argued separately (Br. 16), for the same
reasons as the rejection of claim 45 above.
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CONCLUSION
The Examiner:
1. appropriately combined Sandler, Meyerzon, and Yamakawa by
providing a rational underpinning to support the legal conclusion of
obviousness regarding claim 41;
2. did not err in finding the combination of Sandler, Meyerzon, and
Yamakawa teaches or suggests the “types of document content
comprise an email, a contract, a travel document, a web page, a
presentation, a legal document, a medical record, a certificate of
compliance, and an inspection document,” as recited in claim 42;
3. did not err in finding the combination of Sandler, Meyerzon, and
Yamakawa teaches or suggests “the particular action comprises
preventing printing of the low value document,” as recited in claim
48;
4. did not err in finding the combination of Sandler, Meyerzon,
Yamakawa, and Patoskie teaches or suggests “locating the rules
engine in a rendering path with respect to the printing queue,” as
recited in claim 50;
5. did not err in finding the combination of Sandler, Meyerzon,
Yamakawa, and Fukushima teaches or suggests “the particular action
comprises modifying the content of the low value document such that
the low value document is printed with reduced print magnification,”
as recited in claim 45; and
6. did not err in finding the combination of Sandler, Meyerzon,
Yamakawa, and Fukushima teaches or suggests “the particular action
comprises changing the plex of the low value document,” as recited in
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claim 47.
DECISION
The Examiner’s decision rejecting claims 41—60 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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