Ex Parte Parry et al

Patent Trial and Appeal BoardMay 18, 2016

10625241 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/625,241 07/22/2003 22879 7590 05/20/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Travis J. Parry 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. 82097213 8613 EXAMINER MILIA, MARK R ART UNIT PAPER NUMBER 2677 NOTIFICATION DATE DELIVERY MODE 05/20/2016 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 Exparte TRAVIS J. PARRY, BRETT GREEN, and GREGORY E. PERKINS Appeal2014-009481 Application 10/625,241 1 Technology Center 2600 Before JEAN R. HOMERE, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as Hewlett Packard Development Co. App. Br. 2. In an earlier appeal (2010-002851, decided April 25, 2012), we affirmed the Examiner's rejections of claims 1-6, 27- 37, and 53-58. On July 20, 2012, we denied Appellants' request for rehearing from the Decision. Appeal2014-009481 Application 10/625,241 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 53---65. Claims 1-52 have been canceled. App. Br. 4. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm in part. Appellants' Invention Appellants' invention is directed to a method and system for making available to a client web content (102) stored on a memory module (110) (e.g., flash drive) attached to a printing device consumable (120) (e.g., a disposable toner cartridge), which is inserted in a printing device (130). Spec. i-f 6, Fig. 1. In particular, when the consumable (120) is installed in the printer (130), the web content (102) stored in the memory module (110) is uploaded in the printer (130) such that a web server (135) embedded therein can transmit a requested web content (102) to a client in response to a request issued by the client. Id. i-fi-127-39, Fig. 3. Illustrative Claim Independent claim 53 further illustrates the invention as follows: 53. A method comprising: receiving, in a printing device, a printing device consumable that is storing web content on a memory module attached to the printing device consumable; 2 Appeal2014-009481 Application 10/625,241 uploading said web content from said memory module on said printing device consumable to a memory in said printing device when said consumable is installed in said printing device; and with said printing device, receiving a request via a network to which said printing device is connected for a web page about said printing device to be transmitted via said network to a client issuing said request; and, in response to said request, transmitting said web page to said client using an embedded web server that is embedded in said printing device, said web page comprising said web content provided to said printing device with said memory module attached to said printing device consumable. Prior Art Relied Upon The Examiner relies on the following prior art as evidence of unpatentability: Benjamin et al. Phillips et al. Richards et al. Ohara Ishizuka us 6, 113,208 US 6,332,062 B 1 US 6,532,351 B2 US 2003/0187922 Al US 2005/0240518 Al Rejections on Appeal Sept. 5, 2000 Dec. 18, 2001 Mar. 11, 2003 Oct. 2, 2003 Oct. 27, 2005 The Examiner rejects the claims on appeal as follows: 1. Claims 53, 59, and 63-65 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Benjamin and Ohara. 2. Claims 54 and 55 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Benjamin, Ohara, and Richards. 3 Appeal2014-009481 Application 10/625,241 3. Claims 56-58 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Benjamin, Ohara, Richards, and Ishizuka. 4. Claims 60 and 61 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Benjamin, Ohara, and Phillips. 5. Claim 62 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Benjamin, Ohara, Phillips, and Richards. ANALYSIS We consider Appellants' arguments seriatim as they are presented in the Appeal Brief 10-19, and the Reply Brief 4--14. Claims 53, 59, and 63-65 Appellants argue that the proposed combination of Benjamin and Ohara does not teach or suggest web content that arrives on a consumable of a printing device, and the web content is then output by the printing device in a web page requested by a client, as required by claim 53. App. Br. 10- 14, Reply Br. 4--8. Appellants do not dispute the Examiner's finding that Benjamin discloses a printer, upon inserting therein an ink cartridge with a memory chip containing the URL to a manufacturer's website, the printer's host processor can connect to the manufacturer's website in response to a client request. Reply Br. 5. Appellants argue, however, because Benajmin's URL is only used to access the manufacturer's webpage, and the URL is not included in the webpage, it does not qualify as web content recited in the 4 Appeal2014-009481 Application 10/625,241 claim. Id. Further, Appellants argue that Ohara does not cure the noted deficiencies in Benjamin. According to Appellants, although Ohara teaches a printer having stored in its ROM a web server program for accessing a webpage, Ohara does not teach that the web content of a webpage was delivered to the printer via an installed consumable. Id. at 7-8. Therefore, Appellants submit that the proposed combination would result, at best, in a printing device having a URL stored in a consumable inserted therein to facilitate access to a webpage associated therewith and an embedded server for serving up a webpage that provides status about the consumable of the printer. App. Br. 12-13. These arguments are not persuasive. At the outset, we reiterate our position in our earlier Decision that the URL stored in the ink cartridge memory inserted in the printer, as disclosed in Benjamin, qualifies as web content that arrives on a consumable of the printer, and that is then output by the printer in a web page requested by a client. Dec. 6. 2 As previously stated, "the URL of a webpage qualifies as content thereof because it is prominently displayed as part of the webpage." Id. Therefore, because the URL disclosed in Benjamin arrives to the printer via an installed consumable, and is also part of the manufacturer's webpage transmitted to a client in response to the client request, Benjamin's disclosure teaches or suggests the disputed limitations consistent with Appellants' Specification describing web content to include any information (e.g., link/URL) used as part of a web page. Spec. i-f 20. 2 See supra note 1. 5 Appeal2014-009481 Application 10/625,241 Alternatively, to the extent that the URL disclosed in Benjamin is insufficient to teach the claimed web content, we agree with the Examiner that Appellants' arguments are tantamount to an attack against the references individually, as opposed to the proposed combination thereof. Ans. 15. In particular, we agree with the Examiner that Ohara's disclosure of a printer having stored in its ROM an embedded web server program that makes a local CPU provide to a client, upon request, a stored webpage containing consumable information for the printer would complement the cited Benjamin disclosure to teach the disputed limitations. Id. at 7, Ohara i-f 46. One of ordinary skill in the art would have readily appreciated that only routine skill would be required to modify Benjamin's teaching by storing in the consumable memory the webpage associated with the link, as opposed to the link itself because such a modification would have expedited the client's access to the web content by eliminating the intermediate step of accessing the webpage through a URL, thereby providing the client with direct access to the web content. Accordingly, Appellants have not shown error in the Examiner's rejection of claim 53 over the combination of Benjamin and Ohara. Regarding independent claims 59 and 65, Appellants reiterate substantially the same arguments submitted for patentability of claim 53. App. Br. 14--16. As discussed above, those arguments are not persuasive. Accordingly, Appellants have similarly not shown error in the rejection of claims 59 and 65. Claims 60-63 (not argued separately) fall therewith. See 37 C.F.R. Â§ 41.37(c)(l)(vii). 6 Appeal2014-009481 Application 10/625,241 Regarding the rejection of claim 64, Appellants argue that the combination of Benjamin and Ohara does not teach or suggest storing on the memory module a web content interface for allowing access to web content stored on the memory module. App. Br. 16-17, Reply Br. 11-12. According to Appellants, although Benjamin discloses an interface for accessing a URL stored on the ink cartridge memory, the disclosed interface is not stored on the cartridge memory. Id. This argument is persuasive. Although the Examiner correctly finds some kind of interface must be provided to load to the printer the URL stored in the memory chip, the Examiner has not shown that such interface necessarily resides on the memory chip. Ans. 15. Appellants have therefore shown error in the Examiner's rejection of claim 64 over the combination of Benjamin and Ohara. Claims 54-58 Regarding the rejection of claim 54, Appellants argue the combination of Benjamin, Ohara, and Richards does teach or suggest storing purchaser- specified web content on the memory module attached to a printing device consumable. App. Br. 17-18, Reply Br. 12-13. In particular, Appellants argue that Richards' disclosure of storing performance-related data or user ID data on a memory module does not teach the disputed limitations. Id. This argument is persuasive. Although Richards' disclosure of user ID data helps identify the user, and the performance data helps identify the various states of the printer consumable, the Examiner has not shown that the stored data was in any way specified by the user. Ans. 9, 16. Accordingly, 7 Appeal2014-009481 Application 10/625,241 Appellants have shown error in the Examiner's rejection of claim 54, as well as claims 55-58 depending therefrom. DECISION We affirm the Examiner's rejections of claims 53, 59---63, and 65. However, we reverse the Examiner's rejections of claims 54--58, and 64. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 8