Ex Parte Hoarau et al

Patent Trial and Appeal BoardMar 8, 2016

12891395 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/891,395 09/27/2010 22879 7590 03/10/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Eric Hoarau 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82264952 1310 EXAMINER LY,TOANC ART UNIT PAPER NUMBER 2887 NOTIFICATION DATE DELIVERY MODE 03/10/2016 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 yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC HOARAU and JESSICA LIAO Appeal2014-004310 Application 12/891,395 1 Technology Center 2800 Before ERIC S. FRAHM, LARRY J. HUME, and JOHN P. PINKERTON, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1, 2, 4--7, and 9-22. Appellants have previously canceled claims 3 and 8. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP. App. Br. 1. Appeal2014-004310 Application 12/891,395 STATEMENT OF THE CASE2 The Invention Appellants' claimed invention relates to methods and devices for accessing a digital version of a file based on a printed version of the file. Abstract, and Title. Exemplary Claim Claims 1 and 7, reproduced below, are representative of the subject matter on appeal (emphasis added to contested limitations): 1. A computing device comprising: a processor to: receive a location identifier printed in association with a printed version of a file, wherein the location identifier uniquely identifies a digital storage location for which access rights are controlled by an owner of the file, provide the location identifier to a server computing device with access to the digital storage location, receive, from the server computing device, a listing of a plurality of files available on the digital storage location identified by the location identifier, wherein the listing of the plurality of files is generated based on the location identifier, display the listing of the plurality of files to a user of the computing device, receive, from the user, a selection of a particular file from the listing of the plurality of files, and 2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed Sept. 24, 2013); Reply Brief ("Reply Br.," filed Jan. 17, 2014); Examiner's Answer ("Ans.," mailed Nov. 20, 2013); Final Office Action ("Final Act.," mailed May 1, 2013); and the original Specification ("Spec.," filed Sept. 27, 2010). 2 Appeal2014-004310 Application 12/891,395 in response to the user selection, access a digital version of the particular file from the digital storage location via the server computing device. 7. A machine-readable storage medium encoded with instructions executable by a processor of a computing device, the machine-readable storage medium comprising: instructions for receiving a location identifier that identifies a digital storage location, wherein the location identifier is printed in association with a printed version of a file; instructions for providing the location identifier to a server computing device with access to the digital storage location; instructions for receiving, from the server computing device, a listing of a plurality of files available on the digital storage location identified by the location identifier, wherein the listing of the plurality of files is generated based on the location identifier; instructions for displaying the listing of the plurality of files to a user of the computing device; instructions for receiving, from the user, a selection of a particular file from the listing of the plurality of files; and instructions for, in response to the user selection, accessing a digital version of the particular file from the digital storage location. 3 Appeal2014-004310 Application 12/891,395 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Cheng et al. ("Cheng") US 2004/0202385 Al Oct. 14, 2004 Jackson et al.("Jackson") US 2009/0076964 Al Mar. 19, 2009 Rothschild US 2009/0171915 Al July 2, 2009 Serl et US 2009/0177748 Al July 9, 2009 Hvidtfeldt US 2010/0213251 Al Aug. 26, 2010 Rejections on Appeal RI. Claims 7, 9-11, 13, and 16 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Rothschild. Final Act. 2---6. R2. Claims 1, 2, 4, 14, 15, 18, and 19 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Rothschild and Jackson. Final Act. 7-14. R3. Claims 5, 6, and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Rothschild, Jackson, and Cheng. Final Act. 14-16. R4. Claims 12 and 17 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Rothschild and Serlet. Final Act. 16- 17. R5. Claims 1, 21, and 22 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Rothschild and Hvidtfeldt. Final Act. 17-21. 4 Appeal2014-004310 Application 12/891,395 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We agree with particular arguments advanced by Appellants with respect to claims 1, 2, 4--7, and 9-22 for the specific reasons discussed below. We highlight and address specific findings and arguments regarding claims 1, 7, 13, and 18 for emphases as follows. 1. Â§ 102(b) Rejection R 1 of Claims 7, 9-11, 13, and 16 Issue 1 Appellants argue (App. Br. 7-12; Reply Br. 1-7) the Examiner's rejection of independent claims 7 and 13 under 35 U.S.C. Â§ 102(b) as being anticipated by Rothschild is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a machine-readable storage medium encoded with, inter alia, "instructions for receiving, from the server computing device, a listing of a plurality of files available on the digital storage location identified by the location identifier, wherein the listing of the plurality of files is generated based on the location identifier," as recited in independent claim 7, and as similarly recited in independent claim 13? Analysis Appellants contend the Examiner erred in finding Rothschild discloses multiple limitations of claims 7 and 13. App. Br. 8 et seq. Of particular import to our Decision, Appellants assert "Rothschild only describes 5 Appeal2014-004310 Application 12/891,395 locating a digital image using information specific to a particular image ... [but] says nothing whatsoever about using a location identifier to generate a listing of a plurality of files available on the digital storage location identified by the location identifier." App. Br. 9. The Examiner relies upon Rothschild paragraphs 29, 65, and 66 as purportedly disclosing "a listing of a plurality of files," as variously recited in claims 7 and 13. Final Act. 3. We have reviewed the cited reference in its entirety, and disagree with the Examiner's findings, at least in connection with the contested "listing" limitation identified above. We also disagree with the Examiner's "Response to Argument" in which the Examiner states: Paragraph [0066] of Rothschild discloses "once the record is found, the computer will process any user request( s) regarding the digital image that was either transferred with the identifier or after the identifier located the appropriate record" and "depending on the request the image and associated information may be displayed or presented to the user". The display of the listing of images requires a generation of the listing of the images. The listing is acquired from the photo location as given by the identifier. As above, the file name and location and the unique identifier are synonymous, as either symbol ultimately serves the purpose of providing file names and file locations. Thus, the display of images comes from a list of a plurality of files available on the digital storage location identified by the location identifier. Ans. 3 (emphasis added). Our reviewing court guides, under Â§ 102(b ), the prior art reference "must not only disclose all elements of the claim within the four comers of the document, but must also disclose those elements arranged as in the claim." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 6 Appeal2014-004310 Application 12/891,395 2008) (internal citation and internal quotation marks omitted). "Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention." Id. at 1371 (emphasis added). We disagree with the Examiner because, to affirm the anticipation rejection of claims 7 and 13 would require our reliance upon impermissible speculation as to the teachings of Rothschild. We refuse to engage in such speculation and conjecture. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner ... invite[s] the [B]oard to examine the application and resolve patentability in the first instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). We decline to engage in such speculation and unfounded assumptions to make up for the deficiency in the Examiner's rejection that fails to set forth a prima facie case for rejecting claims 7 and 13 underÂ§ 102(b) pursuant to the requirements of 35 U.S.C. Â§ 132.3 Therefore, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner's reliance on the disclosure of the cited prior art to anticipate claims 7 and 13. Therefore, we cannot sustain the Examiner's anticipation rejection of independent claims 7 and 13, 3 Although not before us on appeal, we leave it to the Examiner to determine whether generation of a listing of a plurality of files would have been obvious under 35 U.S.C. Â§ 103(a). While the Board is authorized to reject claims under 37 C.F.R. Â§ 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) Â§ 1213.02 (9th Ed., Mar. 2014). 7 Appeal2014-004310 Application 12/891,395 and claims 9-11 and 16 which variously depend from claims 7 and 13, and which stand rejected on the same basis as claims 7 and 13. 2. Â§ 103(a) Rejection R2 of Claims 1, 2, 4, 14, 15, 18, and 19 Issue 2 Appellants argue (App. Br. 12-13) the Examiner's rejection of independent claims 1 and 18 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Rothschild and Jackson is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a computing device that includes a processor to, inter alia, "receive, from the server computing device, a listing of a plurality of files available on the digital storage location identified by the location identifier, wherein the listing of the plurality of files is generated based on the location identifier," as recited in independent claim 1 (emphasis added), and as commensurately recited in independent claim 18? Analysis Similar to Rejection RI of claim 7 in Issue 1, supra, Appellants contend, inter alia, the Examiner erred in relying upon Rothschild as teaching a listing of a plurality of files. App. Br. 13. Appellants further argue Jackson fails to make up for the identified deficiencies of Rothschild. Id. For the same reasons discussed, above, we agree with Appellants' arguments, and disagree at least with the Examiner's findings concerning the contested "listing" limitation, and legal conclusion of obviousness. 8 Appeal2014-004310 Application 12/891,395 Therefore, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to render claim 1 obvious. Therefore, we cannot sustain the Examiner's obviousness rejection of independent claim 1, and claim 18 which recites the contested limitation in commensurate form. For the same reasons, we cannot sustain Rejection R2 of claims 2, 4, 14, 15, and 18, and 19, which variously depend from claims 1, 13, and 18. 3. Â§ 103(a) RejectionR5 of Claims 1, 21, and22 Issue 3 Appellants argue (App. Br. 15-16) the Examiner's rejection of independent claim 1under35 U.S.C. Â§ 103(a) as being obvious over the combination of Rothschild and Hvidtfeldt is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a computing device that includes a processor to, inter alia, "receive, from the server computing device, a listing of a plurality of files available on the digital storage location identified by the location identifier, wherein the listing of the plurality of files is generated based on the location identifier," as recited in independent claim 1 (emphasis added)? Analysis Similar to Rejection RI of claim 7 in Issue 1, supra, Appellants contend, inter alia, the Examiner erred in relying upon Rothschild as teaching a listing of a plurality of files. App. Br. 15. Appellants further 9 Appeal2014-004310 Application 12/891,395 argue Hvidtfeldt fails to make up for the identified deficiencies of Rothschild. Id. For the same reasons discussed above, we agree with Appellants' arguments, and disagree at least with the Examiner's findings concerning the contested "listing" limitation, and legal conclusion of obviousness. Therefore, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to render claim 1 obvious. Therefore, we cannot sustain the Examiner's obviousness rejection of independent claim 1. For the same reasons, we cannot sustain Rejection R5 of claims 21 and 22, which variously depend from claims 1 and 13. 4. Rejections R3 and R4 of Claims 5, 6, 12, 17, and 20 For the same reasons discussed above with respect to the "listing" limitations of claims 1, 7, 13, and 18 discussed above, we cannot sustain obviousness Rejections R3 and R4 of claims 5, 6, 12, 17, and 20 under Â§ 103(a). CONCLUSIONS (1) The Examiner erred with respect to anticipation Rejection RI of claims 7, 9-11, 13, and 16 under 35 U.S.C. Â§ 102(b) over the cited prior art of record, and we do not sustain the rejection. (2) The Examiner erred with respect to obviousness Rejections R2 through R5 of claims 1, 2, 4---6, 12, 14, 15, and 17-22 under 35 U.S.C. 10 Appeal2014-004310 Application 12/891,395 Â§ 103(a) over the cited prior art combinations of record, and we do not sustain the rejections. DECISION We reverse the Examiner's decision rejecting claims 1, 2, 4-7, and 9-22. REVERSED 11