Ex Parte Mandaknale et al

Patent Trial and Appeal BoardAug 28, 2017

13789607 (P.T.A.B. Aug. 28, 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. 13/789,607 03/07/2013 Deepak Mandaknale 83150070 5270 22879 HP Tnr 7590 08/30/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 WALLACE, JOHN R FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 08/30/2017 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 DEEPAK MANDAKNALE, SUDHEER KARI, and RAJIESH KOMALA Appeal 2017-002273 Application 13/789,607 Technology Center 2600 Before ST. JOHN COURTENAY III, JOHN A. EVANS, and ALEX YAP, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of Claims 1, 3, 6, 8—13, 16, and 17. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.2 1 The Appeal Brief identifies Hewlett-Packard Development Company, LP, as the real party in interest. App. Br. 3. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed April 18, 2016, “Br.”), the Reply Brief (filed November 28, 2016, “Reply Br.”), the Examiner’s Answer (mailed October 21, 2016, “Ans.”), the Final Action (mailed June 19, 2015, “Final Act.”), and the Specification (filed March 7, 2013, “Spec.”) for their respective details. Appeal 2017-002273 Application 13/789,607 STATEMENT OF THE CASE The claims relate to systems and methods for securely printing an electronic document. See Abstract. INVENTION Claims 2, 4, 5, 7, 14, and 15 are cancelled; Claims 1, 6, and 10 are independent. Claims Appx. An understanding of the invention can be derived from a reading of exemplary Claim 19, which is reproduced below 1. A method for securely printing a document, the method comprising: receiving a print job at a secure print service system from a user device, the print job including the document to be printed; generating a job name and a job password for the print job by the secure print service system; transmitting an electronic message comprising the job name and the job password to an electronic address of an intended recipient over a network, the electronic message excluding the document; transmitting the document and the job name from the secure print service system to a rendering system to render the document into a format compatible with a network printer communicatively coupled to the secure print service system; transmitting, by the secure print service, the job name to the network printer; receiving the job name and the job password from the network printer in response to the transmitting of the job name to the network printer and the transmitting of the electronic message comprising the job name and the job password to the electronic address of the intended recipient; 2 Appeal 2017-002273 Application 13/789,607 comparing the job name and the job password received from the network printer with the job name and the job password generated by the secure print service system; and authorizing the rendering system to transmit the rendered document to the network printer for printing based on the comparing. References and Rejections Hata, et al., US 2004/0146327 Al July 29, 2004 Delaplace, et al., US 2005/0057766 Al Mar. 17, 2005 Imazu US 2006/0149970 Al July 6, 2006 Ferlitsch US 2009/0097054 Al Apr. 16, 2009 Anezaki, et al., US 2009/0316206 Al Dec. 24, 2009 Reddy, et al., US 2010/0027054 Al Feb. 4, 2010 Martin, et al., US 2011/0255112 Al Oct. 20, 2011 Viccari, et al., US 2012/0262753 Al Oct. 18, 2012 1. Claims 1 and 3 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hata, Reddy, Delaplace, and Anezaki. Final Act. 4—8. 2. Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hata, Reddy, Martin, and Anezaki. Final Act. 8— 12. 3. Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hata, Reddy, Martin, Anezaki, and Ferlitsch. Final Act. 13. 3 Appeal 2017-002273 Application 13/789,607 4. Claims 9 and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hata, Reddy, Martin, Anezaki, and Viccari. Final Act. 13—16. 5. Claims 10, 11, and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hata, Martin, Anezaki, and Viccari. Final Act. 16—22. 6. Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hata, Martin, Anezaki, and Imazu. Final Act. 23— 24. 7. Claim 16 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hata, Reddy, Delaplace, Anezaki, and Viccari. Final Act. 24—25. ANALYSIS We have reviewed the rejections of Claims 1,3,6, 8—13, 16, and 17 in light of Appellants’ arguments that the Examiner erred. We have considered in this decision only those arguments Appellants actually raised in the Brief. Any other arguments which Appellants could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 1 and 3: Obviousness over Hata, Reddy, Delaplace, and Anezaki Transmitting. . . the job name and the job password to an intended recipient. The Examiner finds the combination of Hata, Reddy, and Delaplace teaches or suggests all the limitations of Claim 1 except “transmitting an electronic message comprising the job name and the job password to an intended recipient, the electronic message excluding the document.” Final 4 Appeal 2017-002273 Application 13/789,607 Act 7. The Examiner finds Anezaki teaches this limitation by transmitting an electronic message comprising a job name and a job password to an intended recipient. Id. The Examiner makes this finding by finding Anezaki’s disclosed PIN as the claimed password. Id. Appellants contend Anezaki does not transmit a PIN code to the user and thus does not teach or suggest “transmitting an electronic message comprising the job name and the job password to an intended recipient,” as recited in the independent claims. App. Br. 10. Appellants argue a user, the “intended recipient,” enters a PIN code into a portable terminal where the PIN code is displayed on a printer’s display panel. Id. Thus, Appellants argue the PIN code is never transmitted to the intended recipient. Id. The Examiner finds the user is the claimed “intended recipient.” Ans. 25. The Examiner concludes “transmitting” can be broadly defined as merely requiring a communication of information without a requirement that the data be in an electronic form. Id. Thus displaying the PIN on the printer panel meets the claim limitation. Id. Appellants note Claim 1 recites, inter alia, “transmitting an electronic message comprising the job name and job password to an intended recipient.” Reply Br. 6. Appellants re-allege that Anezaki’s PIN is displayed on a printer panel, but is not transmitted to the user. The Examiner alternatively finds the printer’s panel controller transmits electronic data to the printer panel to cause the panel to display the PIN such that the user, the intended recipient, can view the PIN. Ans. 27. We agree with Appellants. Displaying a PIN on a printer panel may communicate the PIN to a user. However, the PIN is not transmitted to the user, the “intended recipient,” in an electronic message, as claimed. We therefore, decline to sustain the rejections of Claims 1 and 3. 5 Appeal 2017-002273 Application 13/789,607 Claim 6: Obviousness over Hata, Reddy, Martin, and Anezaki Independent Claim 6 recites, inter alia, “at least one module coupled to the processor to: . . . transmit an electronic message comprising the job name and the job password to an electronic address of an intended recipient over a network, the electronic message excluding the document.” For reasons similar to the ones argued above in connection with Claim 1, Appellants argue Anezaki, in particular, and the remaining references generally, fail to teach or suggest this limitation. App. Br. 16. The Examiner finds Appellants arguments regarding whether Anazaki teaches the claimed transmission step were answered with respect to Claim 1. Ans. 29. For the reasons discussed above, we decline to sustain the rejection of Claim 6. Claim 8: Obviousness over Hata, Reddy, Martin, Anezaki, and Ferlitsch Claim 8 depends from Claim 6 and further recites “wherein the electronic message is transmitted to the intended recipient using a short message service.” Appellants contend the cited portion of Ferlitsch disclose transmitting a lost printout alert to a user, but do not teach the deficiencies as alleged above. App. Br. 17; Reply Br. 14. The Examiner finds Ferlitsch discloses a print status message is sent as a text message, which is an electronic message using a “short message service,” as claimed. Ans. 30. We agree with the Examiner.3 3 In the event of further prosecution, the Examiner may wish to consider the 6 Appeal 2017-002273 Application 13/789,607 Claims 9 and 17: Obviousness overHata, Reddy, Martin, Anezaki, and Viccari The Examiner stands by the findings made in respect of Claim 1. Ans. 30. For the reasons discussed above in regard to Claim 1, we decline to sustain the rejection of Claims 9 and 17. Claims 10,11, and 13: Obviousness overHata, Martin, Anezaki, and Viccari The Examiner stands by the findings made in respect of Claim 1. Ans. 31. For the reasons discussed above in regard to Claim 1, we decline to sustain the rejection of Claims 10, 11, and 13. Claim 12: Obviousness over Hata, Martin, Anezaki, and Imazu The Examiner stands by the findings made in respect of Claim 1. Ans. 32. For the reasons discussed above in regard to Claim 1, we decline to sustain the rejection of Claim 12. Claim 16: Obviousness over Hata, Reddy, Delaplace, Anezaki, and Viccari The Examiner stands by the findings made in respect of Claim 1. Ans. 33. For the reasons discussed above in regard to Claim 1, we decline to sustain the rejection of Claim 16. application of Ferlitsch to the other claims. 7 Appeal 2017-002273 Application 13/789,607 DECISION The rejections of Claims 1, 3, 6, 9—13, 16, and 17 under 35 U.S.C. § 103 is REVERSED4. The rejection of Claim 8 under 35 U.S.C. § 103 is AFFIRMED. AFFIRMED-IN-PART 4 In the event of further prosecution, the Examiner may wish to consider the application of Ferlitsch to these claims. 8