Ex Parte Newell et al

Patent Trial and Appeal Board

May 24, 2013

10801189 (P.T.A.B. May. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BERT NEWELL and SEAN JONES
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Appeal 2011-001852
Application 10/801,189
Technology Center 2600
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Before JEAN R. HOMERE, JOHN A. JEFFERY, and MIRIAM L. QUINN,
Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/801,189

2

Appellants appeal under 35 U.S.C. § 134(a) (2002) from a rejection of
claims 1, 3, 5-8, 10, and 14-26. Claims 2, 4, 9, 11, 12, and 13 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to processing a print batch in a print device.
Spec. ¶ [0005].
1
Details of the appealed subject matter, with disputed claim
language emphasized, are recited in illustrative independent claim 1,
reproduced below from the Claims Appendix of the Appeal Brief:
2

1. A method of processing a print batch in a print device,
comprising:
storing on a memory storage device characteristics of a plurality
of print jobs contained in said print batch;
evaluating by a processor residing on said print device said
characteristics of said print jobs; and
independently determining by the processor a pick order,
independently determining a transfer order and independently
determining a delivery order based, at least in part, on said
characteristics to increase efficiency and adaptability of processing

1
References to Appellant’s Specification (“Spec.”) are directed to the
Specification filed on March 13, 2004.
2
References to the Appeal Brief (“App. Br.”) are directed to Appellant’s
Appeal Brief filed on June 5, 2010, and references to the Reply are directed
to the Reply Brief filed on October 9, 2010 (“Reply Br.”).
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each print batch, such that the picking order, the transfer order, and
the delivery order are each distinct from one another for a print
engine configured to form images on a plurality of media
corresponding to said print jobs; and
outputting said plurality of print jobs without having to reorder
the print jobs within the print batch.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at pages 3 to 29 of the Answer:
3

Pavlovic US 5,715,379 Feb. 3, 1998
Shah US 6,618,167 B1 Sept. 9, 2003
Mathieson US 2003/0227651 A1 Dec. 11, 2003
Ferlitsch I US 2004/0184106 A1 Sept. 23, 2004
Ferlitsch II US 2005/0102442 A1 May 12, 2005
Kageyama US 7,092,117 B2 Aug. 15, 2006
The Examiner provides the following grounds of rejection, of which
Appellants seek review:
(1) Claims 1, 3, 5-8, 10, 14-18, and 22-26 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant
regards as the invention (Ans. 4);

3
References to the Examiner’s Answer (“Ans.”) are directed to the Answer
mailed on August 19, 2010.
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(2) Claims 8, 10, and 14-21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Pavlovic (Ans. 5-17);
(3) Claims 1, 3, 5-7, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable Pavlovic and Kageyama (Ans. 17-23);
(4) Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable Pavlovic and Ferlitsch II (Ans. 23-24);
(5) Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable Pavlovic, Kageyama, and Mathieson (Ans. 24-26);
(6) Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable Pavlovic, Kageyama, and Ferlitsch I (Ans. 26-27); and
(7) Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable Pavlovic, Kageyama, and Shah (Ans. 28-29);
ISSUES
Based on Appellants’ arguments, the dispositive issues on appeal are:
(a) Whether the Examiner erred in rejecting independent claims 1, 8, and
15 under 35 U.S.C. § 112 as being indefinite because the term “to
increase efficiency and adaptability of processing each print batch”
would not apprise one of ordinary skill in the art of the scope of the
invention;
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(b) Whether the Examiner erred in finding that Pavlovic discloses
“independently determining” the orders recited in independent claims
1, 8, 15, and 19;
(c) Whether the Examiner erred in finding that Pavlovic discloses that
“the picking order, the transfer order, and the delivery order are each
distinct from one another,” as recited in claim 15 and similarly recited
in claim 19; and
(d) Whether the Examiner erred in finding that Pavlovic teaches
“outputting said plurality of print jobs without having to reorder the
print jobs within the print batch,” as recited in independent claim 1.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contention. Further, we have reviewed the Examiner’s response to
Appellants’ arguments. Appellants did not argue separate patentability of
the dependent claims 3-7, 10, 14, 16-18, 20, and 21, and, therefore, except
for our ultimate decision, these claims are not discussed further herein.
SECTION 112, SECOND PARAGRAPH REJECTION
Independent claim 1 recites a method where the step of
“independently determining by the processor” a pick order, a transfer order,
and a delivery order is said “to increase efficiency and adaptability of
processing each print batch.” Independent claims 8 and 15 recite similar
limitations. The Examiner finds that the disputed limitation is indefinite
because its scope depends solely on the subjective opinions of individuals
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practicing the invention. Ans. 4. The Examiner also notes that “about every
invention is created with intent to have units and processes that are used to
increase efficiency and adaptability to process print jobs.” Id.
Appellants argue that by independently determining the orders, the
method increases the efficiency and adaptability of the processing as would
be readily apparent to one having ordinary skill in the art. App. Br. 7. We
agree with Appellants’ conclusion.
The “efficiency” claim language in dispute is “functional”
terminology. Such language may render the claim broad, but that is an issue
different from determining whether the claim language is precise and
definite enough to provide a clear indication of the scope of the subject
matter embraced by the claim. See In re Swinehart, 439 F.2d 210, 213
(CCPA 1971). In light of the Specification, we do not find that the claim
language is so imprecise as to fail to give the clear indication required by 35
U.S.C. § 112, second paragraph. Nevertheless, we recognize that by reciting
“to increase efficiency,” Appellants’ claim simply expresses the intended
result of the positively recited steps of “independently determining.” As
such, the “efficiency” language on its face merely characterizes the desired
result, and is given no patentable weight. See Minton v. Nat’l Ass’n Sec.
Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003).
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For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1, 3, 5-8, 10, 14-18, and 22-26 under 35 U.S.C. § 112, second
paragraph.
4

SECTION 102(B) REJECTION: CLAIMS 8, 15, AND 19
Appellants contend the Examiner erred in rejecting claim 8 as being
anticipated by Pavlovic for two reasons. First, Appellants contend that the
claims require, and Pavlovic fails to disclose, “independently determining”
each of the orders recited in the claim. App. Br. 9-10. Second, Appellants
contend that the claim requires, and Pavlovic fails to disclose, that each of
the recited orders are independently determined “to increase efficiency.”
App. Br. 11-12.
With respect to Appellants’ first contention, we agree with the
Examiner that Pavlovic discloses the disputed limitation. The claim recites
three particular orders to be “independently determined,” i.e. a pick order, a
transfer order, and a delivery order. Before delving into the Examiner’s
specific findings regarding each of these orders, we first conclude that the

4
In the event of further prosecution, we leave it to the Examiner to evaluate
claim 19 for compliance with 35 U.S.C. § 112, second paragraph for reciting
“means,” under 35 U.S.C. § 112, 6th paragraph, for program instructions
executed by a processor (see Spec. ¶ [0024]) and to consider whether the
specification discloses sufficient algorithms to transform the general purpose
microprocessor disclosed in the specification under Aristocrat Techs.
Australia Pty Ltd. V. Int’l Game Tech., 521 F.3d 13285, 1333 (Fed. Cir.
2008); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir.
2008); WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed.
Cir. 1999).
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Examiner’s interpretation of “independently determining” is reasonable in
light of the Specification: for example, that the “system does not require the
picking order determination result to determine the transfer order.” Ans. 29.
As for whether Pavlovic discloses the recited “independently
determined” pick order, the Examiner points to column 6, lines 4-55 where
we find, in particular, that Pavlovic describes that the marker interacts with
the buffer manager to coordinate the operation of the printer hardware to
draw the proper paper stock for printing a particular page, and directing the
printed page to the correct finisher. Pavlovic, col. 6, ll. 42-46; Ans. 5-6.
This determination is not dependent on any other order determination, but on
the desired specifications derived, by the system control, from the job
description. Pavlovic, col. 4, ll. 1-3, col. 6, ll. 37-40; Ans. 5-6.
Concerning the transfer order determination, the Examiner finds that
Pavlovic discloses the transfer of print jobs to the buffer manager’s storage
devices, such as the common image pool or the spooler, and eventually to
the marker. Ans. 30 (citing Pavlovic, col. 9, ll. 20-51). This transfer order is
“independently determined” because it is based on the job description (not
on the determined pick order or delivery order) and based on factors such as
“decomposing rates of the decomposing engines, priority of tasks or jobs
within the combined job or image complexity.” Ans. 31.
Finally, with regard to the independent determination of the delivery
order, the Examiner points to Pavlovic’s function of delivering a certain job
output to a specified tray. Ans. 30 (citing Pavlovic, col. 6, ll. 4-55). In
particular, Pavlovic describes that the delivery order is “independently
determined” by stating that the output destination is based on evaluation of
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the job description (Pavlovic, col. 6, ll. 26-30), and, thus, is not based on the
outcome of the pick order or the transfer order.
Appellants nevertheless argue that because the determinations are
based on the job description, Pavlovic teaches against “independently
determining.” App. Br. 9-10. This argument fails for two reasons. First, it
relies on an interpretation of “independently determining” that is not
commensurate with the broadest reasonable interpretation of the claim
language and is contrary to Appellants’ Specification. See, e.g., Spec.
¶ [0015] (stating that “the pick order, the transfer order, and the delivery
orders may be independent from one another and may be determined
according to the specific characteristics of each print job”). Second, the
argument that Pavlovic teaches against the disputed limitation is
unpersuasive. “[T]he question whether a reference ‘teaches away’ from the
invention is inapplicable to an anticipation analysis.” Celeritas Techs., Ltd.
v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).
Appellants further argue that Pavlovic’s transfer and delivery order
are dependent on one another. App. Br. 10; Reply Br. 5. We are not
persuaded. The example Pavlovic describes in column 9, lines 20-51 does
not change the fact that the determinations are independent from one another
as they are based on the job description, as stated supra. That Pavlovic
prints pages in reverse order because the job description specifies that the
document will be stapled does not change the fact that the transfer of the
image to the spool is based on the job description and the factors outlined
supra, not on the picking order or the delivery order. In fact, Figure 3 of
Pavlovic illustrates that pages are transferred, with the assistance of the
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stream handlers, to the spool as they are decomposed, and not in the order in
which they will be printed or delivered to the output tray.
With respect to Appellant’s second contention – that Pavlovic does
not disclose independent determination of the orders “to increase efficiency”
– we do not agree with Appellants’ conclusion. As stated supra, with
respect to the § 112, 2
nd
paragraph rejection, the “efficiency” phrase is
merely a desired result and given no patentable weight. As such,
Appellants’ arguments cannot distinguish the claim scope over the Pavlovic
reference. Furthermore, Appellants’ argument – that the “efficiency” is
increased by printing jobs that “do not need to be reassembled or reordered
for printing” (App. Br. 11) – is not commensurate with the broadest
reasonable interpretation of the term “increase efficiency.” To the extent the
“efficiency” language imparts any limitation on claim scope, the Examiner
correctly finds that the efficiency of the Pavlovic system is increased
through jobs, either of the same or different formats, being processed as if
they are part of the same job and by changing job transfer locations based on
job conditions. Ans. 33.
Based on the foregoing, Appellants’ arguments fail to point out error
in the Examiner’s findings that the disputed limitations in claim 8 are met by
Pavlovic. Accordingly, we sustain the Examiner’s rejection of claim 8 as
being anticipated over Pavlovic.
Claims 15 and 19
Under the anticipation rejection, in addition to the arguments
addressed supra concerning claim 8, Appellants contend that the Examiner’s
findings concerning independent claims 15 and 19 are in error. Specifically,
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Appellants argue that because Pavlovic determines the orders based on the
job description, it fails to disclose that “the picking order, the transfer order,
and the delivery order are each distinct from one another,” as recited in
claims 15 and 19. We are not persuaded by Appellants’ argument.
First, it is unclear from Appellants’ argument, why Pavlovic’s
determinations based on the job description yield the conclusion that the
determinations are not distinct from one another. Appellants provide, thus,
insufficient evidence to show error in the Examiner’s findings. To be sure,
the Examiner finds that picking “a certain type of media is not the same as
transferring a job to the buffer manager and a certain storage device,” and is
not the same as “transferring this output to an output tray.” Ans. 33. As
such, the Examiner reasons, it is clear that “the different procedures
regarding picking media, transferring a job to different parts of the printing
system and placing a job in an output tray are all distinct from one another.”
Ans. 33-34. This finding is reasonable and is unrebutted by Appellants in
the Reply Brief.
Accordingly, for all the foregoing reasons, we sustain the Examiner’s
rejection of independent claims 15 and 19 as being anticipated by Pavlovic.
SECTION 103 REJECTION: CLAIM 1
Appellants contend that the Examiner erred in rejecting independent
claim 1 for obviousness over Pavlovic because: (1) it fails to disclose
“independently determining;” and (2) it fails to teach “outputting said
plurality of print jobs without having to reorder the print jobs within the
print batch” (hereinafter “the reorder limitation”). Because we have decided
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the first argument in the previous section, we now turn to the argument
concerning “the reorder limitation.”
Appellants argue that Pavlovic “reassembles or reorders the separately
processed portions of each print job before printing or Pavlovic would not
output the desired print jobs.” App. Br. 15. In contrast, Appellants argue,
the invention is “not concerned with reassembling anything because the print
jobs are distinct within the print batch.” Id.
First, Appellants argument is not commensurate with the scope of the
disputed claim language. The claim requires that the print jobs are not
reordered within the print batch – it does not require that portions of the
print job are not reordered.
5
Therefore, the fact that Pavlovic decomposes
the print jobs such that the pages of each job are separately processed does
not teach that the print jobs themselves are reordered within the print batch.
Second, we agree with the Examiner’s findings and conclusions that the
print jobs in Pavlovic are not reordered, as stated in page 34 of the Answer,
and hereby adopt these findings and conclusions as our own.

5
We leave it to the Examiner, in the event of further prosecution, to evaluate
the negative limitation of “without having to reorder the print jobs within the
print batch” for compliance with the written description requirement of 35
U.S.C. § 112, first paragraph in light of Appellants’ Specification (see Spec.,
fig.6) and the guidance of Santarus v. Par Pharm., Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012) (“Negative claim limitations are adequately supported when
the specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.” (emphasis added)).
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Accordingly, Appellants have not provided sufficient facts to show
error in the Examiner’s findings and conclusions that Pavlovic teaches the
disputed limitations recited in claim 1.
CONCLUSION
We conclude that the Examiner erred in rejecting claims 1, 3, 5-8, 10,
14-18, and 22-26 under 35 U.S.C. § 112, second paragraph. Therefore, we
do not sustain that rejection.
We further conclude that Appellants have not shown error in the
Examiner’s findings and conclusions concerning the anticipation of
independent claims 8, 15, and 19 by Pavlovic and the obviousness of
independent claim 1 over Pavlovic. Therefore, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) over Pavlovic and Kageyama, and we
group dependent claims 3, 5-7, and 22-26 with representative claim 1. See
37 C.F.R. § 41.37(c)(1)(vii). Furthermore, we sustain the rejection of
independent claims 8, 15, and 19 under 35 U.S.C. § 102(b) over Pavlovic,
and group therewith dependent claims 10, 14, 16-18, 20, and 21. See 37
C.F.R. § 41.37(c)(1)(vii).
DECISION
We reverse the Examiner’s decision to reject claims 1, 3, 5-8, 10, 14-
18, and 22-26 as being indefinite. However, we AFFIRM the Examiner’s
prior art rejections of claims 1, 3, 5-8, 10 and 14-26, as set forth above.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD