Ex Parte Kamath et al

Patent Trial and Appeal Board

Jun 13, 2017

13387029 (P.T.A.B. Jun. 13, 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.
13/387,029 01/25/2012 Harish B. Kamath 82938842 7753
22879
HP Tnr
7590 06/15/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
DEMETER, HILINA K
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARISH B. KAMATH, SRIDHAR SOLUR,
DAVID WILLIAM PITKIN, and VSS IYER
Appeal 2016-008531
Application 13/387,029
Technology Center 2600
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—5 and 16—30, which are all of the pending
claims.2 We have jurisdiction over these claims under 35 U.S.C. § 6(b).
We AFFIRM and designate this as new grounds of rejection under 37
C.F.R§ 41.50(b).
1 Appellants identify the real party in interest as Hewlett-Packard
Development Company, L.P. (App. Br. 3.)
2 Claims 6—15 have been canceled. (App. Br. 23 (Claims App’x).)
Appeal 2016-008531
Application 13/387,029
Introduction
According to Appellants, “[t]he present invention relates to a portable
electronic device that performs a print operation with a common user print
experience.” (Spec. 1:3—4.) Appellants’ Specification further describes:
Example embodiments provide users with a common or unified
print experience while performing a print operation to cloud
printers from different portable electronic devices running
different operating systems, print platforms, and associated print
applications. For example, a user printing from a laptop
computer will have a similar print experience to a user printing
from a small portable electronic device, such as a blackberry,
camera, or mobile phone.
(Spec. 4:3-8.)
Exemplary Claim
Claims 1, 8, and 24 are independent. Claim 1, reproduced below, is
exemplary of the claimed subject matter:
1. A method for performing print operations, the
method being performed by one or more processors of a server
computing system and comprising:
receiving, from a portable electronic device, a print
request to perform a print operation over a cloud computing
network;
receiving, from the portable electronic device, location
information corresponding to a current location of the portable
electronic device;
based on the current location of the portable electronic
device, automatically selecting, by the one or more processors of
the server computing system, a printer from a plurality of printers
to perform the print operation corresponding to the print request;
transferring the print operation to the selected printer; and
providing a notification, to the portable electronic device,
indicating a location of the selected printer.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ohta US 2006/0012828 A1 Jan. 19,2006
Aagesen US 2006/0028681 A1 Feb. 9, 2006
REJECTION
Claims 1—5 and 16—30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ohta and Aagesen. (Final Act. 5—11.)
ISSUES
(1) Whether the Examiner erred in finding the combination of Ohta
and Aagesen teaches or suggests the limitations recited in independent claim
1 and commensurately recited in independent claims 18 and 24.
(2) Whether the Examiner erred in finding Ohta teaches or suggests
“wherein the information about the plurality of printers further includes
location information corresponding to a respective location for each of the
plurality of printers,” as recited in dependent claim 5.
(3) Whether the Examiner erred in finding Ohta teaches or suggests
“based on the location of the selected printer being closest to the current
location of the portable electronic device, designating the selected printer as
being a default printer for the portable electronic device,” as recited in
dependent claim 17.
(4) Whether the Examiner erred in finding Ohta teaches or suggests
“determining, from a user account associated with a user of the portable
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electronic device, a plurality of preferred printers,” as recited in independent
claim 24.
ANALYSIS
We have considered Appellants’ arguments and contentions (App. Br.
7—20; Reply Br. 3—15) in light of the Examiner’s findings (Final Act. 2—11)
and explanations (Ans. 5—9). For the reasons set forth below, we AFFIRM.
However, pursuant to 37 C.F.R. § 41.50(b), we designate our affirmance of
the Examiner’s rejection of claims 1—5 and 16—30 as a new ground of
rejection because our reasons for affirming the Examiner’s rejection
materially differ from those expressed by the Examiner. See In re Leithem,
661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory
basis and the same prior art references, alone, is insufficient to avoid making
a new ground of rejection when the Board relies on new facts and rationales
not previously raised to the applicant by the examiner.”).
A. Claim 1
The Examiner finds Ohta in combination with Aagesen teaches or
suggests the limitations of claims 1 and 24. (Final Act. 5—8, 11.) Appellants
present several arguments challenging the Examiner’s rejection, which we
address in turn with regard to the disputed limitations as recited in claim 1.
1. “receiving, from a portable electronic device, a print request to
perform a print operation over a cloud computing network”
Appellants argue “Ohta does not teach the print request being received
from a portable electronic device, such as the ‘portable digital device 11’ in
FIG. 2 [of Ohta].” (App. Br. 8; see also Reply Br. 3—7.) We disagree.
Appellants’ arguments regarding the teachings of Ohta focus exclusively on
a few paragraphs cited by the Examiner, wherein Ohta teaches an
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embodiment in which the personal digital device searches for nearby
printers. (App. Br. 8—9 (citing Ohta 138-40); Reply Br. 3—7.) Although not
relied on by the Examiner, Ohta teaches “alternative embodiments” in which
“the print server, the client, and each of the print stations wirelessly
communicate with each other.” (Ohta | 52.) Ohta further states “the
portable digital device in the alternative embodiment directly requests the
print server to transmit the print data from the print server to the selected
print station.” {Id. (emphasis added).) Ohta thus teaches or suggests the
server receiving a print request from a portable electronic device.
We find Ohta teaches or suggests the first “receiving” limitation as
recited in claim 1.
2. “receiving, from the portable electronic device, location
information corresponding to a current location of the portable
electronic device”
With regard to this limitation, Appellants acknowledge Ohta’s
teaching “the portable digital device 11 commenc[ing] a printer search
process by transmitting a first wireless signal,” but contend “[n]o indication
is provided in Ohta that the ‘print server 11 ’ receives this ‘first wireless
signal, ’ much less receives the current location of the ‘portable digital device
11.’” {Id. (emphases omitted).) We are not persuaded of error in the
rejection.
As an initial matter, we note Appellants’ arguments are not
commensurate with the scope of the claims. The claims do not require, as
Appellants contend, that the server “receives the current location” of the
portable electronic device; rather, the claims more broadly recite receiving
“location information corresponding to a current location” of that device.
(App. Br. 22 (Claims App’x) (emphases added).) See In re Self 671 F.2d
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1344, 1348 (CCPA 1982) (“[Ajppellanf s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
Affording this limitation a broad but reasonable construction, we
agree with the Examiner that Ohta’s teachings fall within the scope of this
limitation; however, in doing so, we rely on portions of Ohta not cited by the
Examiner. In particular, in at least one alternative embodiment, Ohta
teaches “the portable digital device 11-1 transmits a first wireless signal in a
predetermined area in search of a print station,” which signal “includes
information such as the print data pointer that has been sent in the e-mail
print notice.” (Ohta 157.) Ohta further teaches receipt of this wireless
signal causes the print stations in range of that signal to send to the print
server, via the network, their print characteristics. {Id. H 57—59.) Included
within those print characteristics, as Ohta further teaches, is the “measured
strength” of the wireless signal received at each print station so that the print
server may “select[] the most closely located print station based upon the
measured signal strength.” {Id. 1 59.) Ohta’s disclosure also confirms the
print server has the actual location of the printer because the server
ultimately sends an email to the portable digital device, upon completion of
the print job, “to notify the carrier of the portable digital device 11-1 as to
where the hard copy is available.” (Id. 158 (emphasis added).)
In view of this disclosure, we find Ohta’s print server receives
“location information corresponding to a current location of the portable
digital device,” as recited in claim 1, because Ohta’s print server receives, at
least, information (measured signal strength) from which the location of that
device relative to known printers may be determined by the print server. {Id.
58—59.) We also find Ohta’s print server receives this location
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information “from the portable electronic device,” as recited in claim 1,
because it is the portable electronic device that initiates the first wireless
signal, from which the relative distance of that device to nearby printers may
be determined by the print server based on the measured signal strength at
each printer in range. (See id. 57—59.)
3. “based on the current location of the portable electronic
device, automatically selecting, by the one or more processers
of the server computing system, a printer from the plurality of
printers to perform the print operation corresponding to the
print request ”
With regard to this limitation, Appellants argue the Examiner’s
findings are in error because “the Examiner has not identified where the
proposed combination of Ohta and Aagesen teaches receiving the current
location of the portable electronic device.” (App. Br. 11 (emphasis added).)
Similarly to Appellants’ arguments regarding the “receiving . . . location
information” limitation, Appellants’ argument is not commensurate with the
scope of the claims. The claims do not require that the server receives “the
current location of the portable electronic device,” but instead require the
server to select a printer “based on the current location of the portable
electronic device.” (App. Br. 22 (Claims App’x) (emphasis added).)
Affording this limitation a broad but reasonable construction, we
agree with the Examiner that Ohta’s teachings fall within the scope of this
limitation; however, in doing so, we rely on portions of Ohta not cited by the
Examiner. As noted above, Ohta teaches the print server selects a printer
“most closely located” to the personal digital device. (Ohta 1 59.) In
particular, Ohta teaches:
An alternative embodiment to the above described remote
printing system includes the print stations that each measures the
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strength of the first wireless signal that was received at the print
station from the portable digital device 11-1. The measured
strength indicates at least a relative distance between the
portable digital device 11-1 and the print stations. The measured
signal strength is transmitted to the print server 13-1 as a part of
the printer characteristics in the transmission S4. The print
server 13-1 in turn selects the most closely located print station
based upon the measured signal strength.
{Id. (emphases added).) In view of this disclosure, we find Ohta teaches or
suggests the server automatically selects a printer “based on the current
location of the portable electronic device,” as recited in claim 1. (See also
Final Act. 3 (“Based on the received print characteristic information, the
print server 13-1 selects the most appropriate print station for the pending
print-send command.”) (citing Ohta | 64).) The Examiner also relies on
Aagesen as teaching a server selecting a printer based on the current location
of the portable electronic device. (Final Act. 7 (citing Aagesen 122).) We
conclude the Examiner’s findings as to Aagesen are cumulative in light of
Ohta’s teachings.
4. “providing a notification, to the portable electronic device,
indicating a location of the selected printer ”
Appellants’ arguments regarding this limitation are premised on the
contention that the Examiner’s particular cited portion of Ohta (paragraph
54) does not teach this limitation. (App. Br. 12 (citing Final Act. 7).) This
argument disregards related and pertinent teachings in Ohta, as noted above,
not cited by the Examiner. In particular, Ohta states, with reference to
Figure 15B:
Simultaneously with or subsequently to the transmission S5, the
print server 13-1 also transmits another e-mail as indicated by
an arrow S6 to the portable digital device 11-1 via the access
point 16 to notify the carrier of the portable digital device 11-1
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as to where the hard copy is available and as to when the print
has been completed.
(Ohta 158.) We find Ohta teaches or suggests this disputed limitation.
For the foregoing reasons, we sustain the rejection of independent
claim 1 along with the rejection of claims 2-4, 16, 18—23, and 25—30, which
are not separately argued. (See App. Br. 13, 17, 19, 20.)
B. Claim 5
Claim 5 depends from claim 4, and recites “wherein the information
about the plurality of printers further includes location information
corresponding to a respective location for each of the plurality of printers.”
(App. Br. 23 (Claims App’x).)
Appellants’ arguments assigning error to the Examiner’s rejection of
claim 5 focus on the Examiner’s particular citation to paragraph 40 of Ohta,
which describes an embodiment in which the portable digital device scans
for available printers. (App. Br. 14.) Appellants then argue “[sjuch a
‘discovery of printers’ by the portable device precludes any teaching of the
server itself maintaining ‘location information corresponding to a respective
location for each of the plurality ofprinters,’ as recited in claim 5.” (Id.)
We are not persuaded of error in the rejection. Appellants’ argument
disregards related and pertinent teachings of Ohta not cited by the Examiner,
as noted supra in connection with claims 1 and 24, in which “[t]he print
server 13-1 . . . selects the most closely located print station” to the personal
digital device. (Ohta 1 59.) In order to select the most closely located print
station, Ohta’s server must maintain “location information corresponding to
a respective location for each of the plurality of printers,” as recited in claim
5. Further supporting this finding is Ohta’s teaching that, once the print job
has been completed, the print server will “notify the carrier of the portable
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digital device 11-1 as to where the hard copy is available.'1'’ (Ohta | 58
(emphasis added).) To be able to provide printer location information to the
users upon completion of a print job, the print server must maintain location
information for the printers.
For the foregoing reasons, we sustain the rejection of claim 5.
C. Claim 17
Claim 17 depends from claim 16, and recites “based on the location of
the selected printer being closest to the current location of the portable
electronic device, designating the selected printer as being a default printer
for the portable electronic device.” (App. Br. 23 (Claims App’x).)
The Examiner finds designating a desired printer as a “default” printer
is “well known.” (Ans. 8.) Appellants do not dispute this finding per se, but
take issue with the Examiner’s rejection of claim 17 on the grounds similar
to those raised for claim 5—namely, by focusing on the Examiner’s reliance
on Ohta’s teaching of an embodiment in which a user selects a printer
through a scan by a personal digital device. (Reply Br. 11; see Ohta 140.)
As noted above, however, such an argument disregards related and pertinent
teachings in Ohta of alternative embodiments, not expressly relied upon by
the Examiner, in which the server receives location information and selects
the printer closest to the portable electronic device. (E.g., Ohta Tflf 58—59.)
We agree with the Examiner’s finding that it was well-known to designate a
selected printer as being a default printer, and, therefore, we conclude it
would have been obvious to the ordinarily skilled artisan at the time of the
claimed invention, in light of Ohta, to have a server designate the selected
closest printer as the default printer for the portable electronic device, as
recited in claim 17.
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For the foregoing reasons, we sustain the rejection of claim 17.
D. Claim 24
With regard to independent claim 24, Appellants first argue “the
rejection of claim 24 suffers from similar deficiencies to those discussed
above with respect to claim 1.” (App. Br. 18.) Because, as noted above, we
sustain the rejection of claim 1, we are not persuaded of error with regard to
the limitations of claim 1 that are similarly recited in claim 24.
Claim 24 recites an additional limitation not recited in claim 1,
namely: “determining, from a user account associated with a user of the
portable electronic device, a plurality of preferred users.” (App. Br. 25
(Claims App’x).) Appellants argue “[t]he Examiner does not identify any
disclosure in Ohta of ‘a user account,’ much less ‘a user account’ that
specifies ‘a plurality of preferred printers’ of the user, as necessitated by
claim 24.” (App. Br. 18.)
We are not persuaded of error in the rejection. As an initial matter,
we note that Appellants’ argument, again, is not commensurate with the
scope of the claim. Claim 24 does not, as Appellants contend, require that
“a user account. . . specifies a plurality of printers.” (App. Br. 18
(emphasis added).) Rather, claim 24 recites “determining, from a user
account associated with a user of the portable electronic device, a plurality
of preferred printers.” (App. Br. 25 (Claims App’x) (emphasis added).) In
other words, the claims do not require the user account to specify particular
printers, but more broadly recite making a determination of preferred
printers from a user account associated with a portable electronic device.
Affording this limitation a broad but reasonable construction, we
agree with the Examiner that it is within the teachings or suggestions of
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Ohta. (Final Act. 8—9.) As the Examiner finds, and we agree, Ohta teaches
at least a user account associated with a portable digital device in the form of
an email address, which the print server uses to communicate with the
portable digital device by, for example, sending a notification confirming
completion of the print job and identifying the location of the printer that the
server selected for the job. (See Final Act. 8—9; Ohta Tflf 57—59.) Thus, the
Examiner finds, and we agree, Ohta teaches or suggests a print server
associating a user account, such as an email address, with a portable digital
device. In addition, as noted above, Ohta further teaches, in portions of Ohta
not cited by the Examiner, the server determines the relative location of the
personal digital device to a plurality of printers nearby that device—that is,
printers within range of a first wireless signal transmitted by that device.
(See Ohta Tflf 57—59.) Appellants’ Specification provides no definition of
“preferred,” nor do Appellants argue any special definition of this term. We
conclude that printers within a designated wireless range of the personal
digital device are reasonably within the scope of “preferred” printers. We,
therefore, find Ohta’s teaching of the server determining the identity of a
plurality of printers nearby a personal digital device, which is associated
with a user account also known to the server, falls within the scope of the
claimed “determining, from a user account associated with a user of the
portable electronic device, a plurality of preferred users,” giving that
limitation a broad but reasonable construction.
For the foregoing reasons, we sustain the rejection of claim 24.
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DECISION
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 1—5 and 16—30 is affirmed.
NEW REJECTION UNDER 37 C.F.R. § 41.50(b)
Notwithstanding our concurrence with the Examiner’s ultimate
obviousness conclusion over the cited prior art, we designate our affirmance
new grounds of rejection because we have relied on new facts and reasons in
support of the rejection.
Section 41.50(b) of 37 C.F.R. provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal 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 § 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)(l)(iv).
AFFIRMED
37 C.F.R, $ 41.50(b)
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