Ex Parte Huang

Patent Trial and Appeal Board

Nov 28, 2012

09828856 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HSI-HSUN HUANG
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Appeal 2011-007494
Application 09/828,856
Technology Center 2600
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Before: MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges

KRIVAK, Administrative Patent Judge

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 3-8, 10, 11, 13-16, 18-25, 28, 30, 32-35, 37-40, and 42-45. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 20011-007494
Application 09/828,856

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STATEMENT OF THE CASE
Appellant’s claimed invention is directed to a network server enabling
a user to use a scanner by downloading a driver for the scanner (Spec. 1:8-
10).
Independent claim 25, reproduced below, is illustrative of the subject
matter on appeal.
25. A server for a network, the server configured to enable a
user at a computer to scan a document at a scanner to obtain
scanning data, the server comprising:

a database of scanner drivers;

a driver selection system configured to enable the user to
select a driver for the scanner from the database of scanner
drivers in response to one or more inputs provided to a browser
hosted at the computer, wherein the browser enables the user to
browse information received over a data transmission network,
and wherein the one or more inputs are received at the server
over the data transmission network; and

a destination selection system configured to enable the
user to select a location from the browser for saving the
scanning data, the location being selected from locations
including locations other than the computer; and further
configured to insert a destination address of the selected
location for saving the scanning data in a self-extracting
executable file, the self-extracting executable file also including
the selected driver,

wherein the server is configured to transfer the self-
extracting executable file to the computer.

Appeal 20011-007494
Application 09/828,856

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REFERENCES and REJECTIONS
The Examiner rejected claims 3, 4, 10, 11, 13, 14, 19-23, 25, 28, 30,
32-35, and 38-40 under 35 U.S.C. § 103(a) based upon the teachings of
Cantwell (US 6,594,690 B2, Jul. 15, 2003, filed Feb. 24, 1999) in view of
Tomat (US 6,459,499 B1, Oct. 1, 2002, filed Dec. 22, 1988).
The Examiner rejected claims 5-8, 15, 16, 18 and 37 under 35 U.S.C.
§ 103(a) based upon the teachings of Cantwell, Tomat, and House (US
6,785,805, Aug. 31, 2004, filed Oct. 30, 2000).
The Examiner rejected claim 24 under 35 U.S.C. § 103(a) based upon
the teachings of Cantwell, Tomat, and Schneider (US 5,587,533, Dec. 24,
1996).
The Examiner rejected claims 42-45 are rejected under 35 U.S.C.
§ 103(a) based upon the teachings of Cantwell, Tomat, and Matsuda (US
7,120,910 B2, Oct. 26, 2006, filed Mar. 28, 2001).

ANALYSIS
The Examiner finds Cantwell discloses “a server that transfers a self-
extracting executable file including a selected driver” and Tomat discloses
inserting a “destination address of the selected location for saving the
scanning data” (Ans. 18-19).
Appellant contends Cantwell does not disclose a self-extracting
executable file including a selected driver; rather “Cantwell downloads
executable code to a computer that, when executed, selects and downloads a
driver. (Cantwell at 2:45-50)” (App. Br. 13). Appellant states it is known in
the computer art that a “self-extracting file is ‘a program file that contains
one or more compressed text or data files’ and running the program file
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Application 09/828,856

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‘uncompresses the compressed files and stores them on the . . . hard drive.’
(Microsoft Computer Dictionary 471 (5th ed. 2002).)” (App. Br. 14).
Cantwell’s Figure 2 shows Cantwell requires downloading and
executing executable code, installing necessary software, communicating
information, selecting a driver, and downloading a driver. Cantwell does not
disclose a self-extracting executable file including a selected driver, within
the meaning of that term and as required by the claims.
Thus, we conclude independent claims 25, 28, 30, 38, and 42, which
all include this feature, in addition to the claims dependent therefrom, are
not obvious over Cantwell, or in combination with Tomat, which does not
cure the deficiencies of Cantwell.

DECISION
The Examiner’s decision rejecting claims 3-8, 10, 11, 13-16, 18-25,
28, 30, 32-35, 37-40, and 42-45 reversed.

REVERSED

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