Ex Parte Reese et alDownload PDFPatent Trial and Appeal BoardMar 25, 201410454131 (P.T.A.B. Mar. 25, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte CURTIS REESE and GREGORY E. NUTT1 __________ Appeal 2011-010669 Application 10/454,131 Technology Center 2600 __________ Before TONI R. SCHEINER, ERIC GRIMES, and MELANIE L. McCOLLUM, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a device, system, computer-readable medium, and method related to hard imaging (e.g., printing or copying), which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Hewlett-Packard Development Company, LP (App. Br. 3). Appeal 2011-010669 Application 10/454,131 2 STATEMENT OF THE CASE “Hard imaging devices” are those that are “configured to form hard images and/or to manage virtual images” (Spec. 5, ¶ 20). “Hard imaging devices 16 may be implemented as laser printers, inkjet printers, impact printers, copiers, facsimile devices,” etc. (id.). The Specification states that imaging devices “may utilize programming, such as firmware, to implement various imaging operations. Occasionally, it may be desired to update programming of the devices. . . . [I]f the update process is implemented as firmware within read only memory (ROM), updating may necessitate replacement of the ROM devices.” (Id. at 1, ¶ 3.) The Specification discloses a “hard imaging system 10 [that] includes a hard imaging management device 12, a communications medium 14, and one or more hard imaging device 16” (id. at 4, ¶ 17). The hard imaging devices each include a storage device that comprises electronic files pertinent to the hard imaging operations of the devices (id. at 8, ¶ 32). “[M]anagement device 12 is configured to access, manage and/or modify file systems 38 of individual hard imaging devices 16” (id. at 9, ¶ 34). Claims 1, 3-9, 12-18, 20-29, 31, and 35-43 are on appeal. Claims 1 and 20 are illustrative and read as follows (emphasis added): 1. A hard imaging system comprising: a plurality of hard imaging devices individually comprising: a communications interface configured to communicate with a communications medium external of the respective hard imaging device; an image engine configured to form hard images using media; a file system configured to store a plurality of electronic files, wherein at least some of the electronic files are non-print-job files related to operations support programming; processing circuitry configured to access the electronic files of the file system during the formation of the hard images; and Appeal 2011-010669 Application 10/454,131 3 a management device comprising: a communications interface configured to communicate with the communications medium and the hard imaging devices; and processing circuitry configured to access and to modify the respective operations-support-programming-related, non-print-job files of the file systems of the respective hard imaging devices, wherein the processing circuitry is configured to mount the file systems of the respective hard imaging devices. 20. An article of manufacture comprising: a non-transitory, computer-readable medium storing computer executable programming configured to cause processing circuitry of a hard imaging device to perform processing, the programming including: outputting data regarding a file system comprising a plurality of electronic files externally of the hard imaging device, the electronic files including an operations programming support module; accessing a communication originating from externally of the hard imaging system; modifying the file system, including at least the operations programming support module, responsive to the accessed communication; and controlling a hard imaging operation of the hard imaging device for forming a hard image using the modified file system. The claims stand rejected under 35 U.S.C. § 103(a) as follows: • Claims 14, 18, and 37 based on Matsubayashi2 and Bretti3 (Ans. 14); • Claims 15-17 based on Matsubayashi, Bretti, and Ohishi4 (Ans. 17); • Claims 1, 3, 4, 6-8, 31, 35, and 40 based on Matsubayashi, Bretti, and Ohishi (Ans. 3); • Claims 20, 24, and 38 based on Matsubayashi and Gase5 (Ans. 21); 2 Matsubayashi et al., US 2003/0093670 A1, May 15, 2003. 3 Bretti, US 2003/0023625 A1, Jan. 30, 2003. 4 Ohishi et al., US 2203/0133136 A1, July 17, 2003. Appeal 2011-010669 Application 10/454,131 4 • Claims 9, 12, 13, and 36 based on Matsubayashi, Gase, and Ohishi (Ans. 37); • Claims 21-23 based on Matsubayashi, Gase, and Ohishi (Ans. 24); • Claims 25, 29, and 39 based on Matsubayashi, Gase, and Bretti (Ans. 27); • Claims 5, 26-28, and 43 based on Matsubayashi, Gase, Bretti, and Ohishi (Ans. 32); • Claim 42 based on Matsubayashi, Gase, Bretti, and Kido6 (Ans. 31); and • Claim 41 based on Matsubayashi, Gase, Ohishi, and Kido (Ans. 42). I. The Examiner has rejected claims 1, 3-8, 14-18, 25-29, 31, 35, 37, 39, 40, 42, and 43 as obvious based on Matsubayashi and Bretti, by themselves or combined with additional prior art. The same issue is relevant to all of the rejections based on Matsubayashi and Bretti. The Examiner finds that Matsubayashi discloses a hard imaging system meeting most of the limitations of claim 1, and that Bretti disclosed a file system configured to store a plurality of electronic files, wherein at least some of the electronic files are non-print-job files related to operations support programming (paragraph [0032], lines 1-2; note that an electronic form document is stored) and processing circuitry configured to access and to modify the respective operations-support- programming-related, non-print-job-related files of the file systems of the respective hard imaging devices (paragraph 5 Gase, US 6,184,996 B1, Feb. 6, 2001. 6 Kido, US 6,675,358 B1, Jan. 6, 2004. Appeal 2011-010669 Application 10/454,131 5 [0032], lines 3-5; note that the electronic form is accessible and modifiable by user. Also, see abstract 1-4). (Ans. 5.) The Examiner concluded that it would have been obvious to combine Matsubayashi’s hard imaging system with Bretti’s electronic files “in order to enable an author to create new and customize electronic forms” (id.). Appellants argue that the Specification lists different types of files that can be stored in the file system of a hard imaging device and “the different types of files listed in Appellants’ specification (see lines 6-11 of Paragraph 32) are not equivalent to each other” (App. Br. 13). Appellants argue that the rejection is based on an improperly asserted equivalence between files that are “electronic forms” and those that are related to “operations support programming” (id.). We agree with Appellants that the Examiner’s rejection is based on an unreasonably broad interpretation of the claim language. Claim 1 requires hard imaging devices that comprise a file system configured to store electronic files, “wherein at least some of the electronic files are non-print- job files related to operations support programming,” and a management device that includes processing circuitry to access and modify the operations-support-programming-related, non-print-job files (claim 1). The Specification states that an exemplary hard imaging device includes a storage device (Spec. ¶ 27) that is configured to store a file system comprising a plurality of electronic files (id. at ¶ 32). The Specification states that “exemplary files include fonts, electronic forms having modifiable fields, signature files, executable applications, programming supporting operation of the device 16 (e.g., . software modules, firmware modules, etc.), virtual images,” etc. (id.). The Appeal 2011-010669 Application 10/454,131 6 Specification therefore distinguishes between “electronic forms having modifiable fields” and “programming supporting operation of the device.” Bretti discloses “an apparatus and method for enabling an author to create new and customize old business forms” (Bretti 1, ¶ 3). Bretti states that its method “enables a document, such as a business form, once created, to be stored in the memory of the author’s personal computer as a selectable template, and the software allows the author/user to easily use and revise the document so saved” (id. at 2, ¶ 32). The Examiner cites Bretti’s modifiable forms as the “non-print-job files related to operations support programming” that are required by claim 1. However, as discussed above, the Specification makes clear that “electronic forms having modifiable fields” are a different category of files from “programming supporting operation of the device” (Spec. ¶ 32). In summary, the Examiner has not pointed to a disclosure of hard imaging devices including a file system storing non-print-job files related to operations support programming, nor has the Examiner provided a sound basis for concluding that this limitation would nonetheless have been obvious to a person of ordinary skill in the art. We therefore conclude that the Examiner has not established a prima facie case of obviousness for the rejections based on the combination of Matsubayashi and Bretti. We reverse the rejections of claims 14, 18, and 37 based on Matsubayashi and Bretti; the rejection of claims 15-17 based on Matsubayashi, Bretti, and Ohishi; and the rejection of claims 1, 3, 4, 6-8, 31, 35, and 40 based on Matsubayashi, Bretti, and Ohishi. Appeal 2011-010669 Application 10/454,131 7 II. The Examiner has rejected claims 5, 9, 12, 13, 20-29, 36, 38, 39, and 41-43 as obvious based on Matsubayashi and Gase, by themselves or combined with additional prior art. The same issue is relevant to all of the rejections based on Matsubayashi and Gase. The Examiner finds that Matsubayashi discloses outputting data regarding a file system comprising a plurality of electronic files externally of the hard imaging device, the electronic files including an operations programming support module (357, figure 3; paragraph [0064], lines 1-11; note that other files and/or programs are disclosed for the operation of the printer, also, the printer and external server are outputting files in the FTP/HTTP client paragraph [0066]). (Ans. 22.) The Examiner finds that Matsubayashi does not disclose “to modify the file system, including at least the operations programming support module” (id.) but Gase discloses to modify the file system, including at least the operations programming support module . . . (column 4, lines 12-14, note that the received job from printer could be altered/modified, also see column 3, lines 51-53 and column 4, lines 22-28; note that the job queue controlled by queue manager that controls the modified/altered entry). (Id. at 22-23.) Appellants argue that “the Gase Patent is directed to enable remote client processors to control print jobs that are queued for printing on a network printer. . . . [T]his arrangement which focuses on print job queues does not address an operations programming support module, as recited in Applicants’ claim 20.” (App. Br. 20.) Appellants argue that neither of the cited references teaches outputting data regarding a file system that includes Appeal 2011-010669 Application 10/454,131 8 an operations programming support module and modifying the file system, including the operations programming support module (id. at 21). We agree with Appellants that the Examiner has not provided adequate evidence to support the finding that Gase discloses “modifying the file system, including at least the operations programming support module,” as recited in claim 20. The Examiner finds that Gase discloses this limitation at column 3, lines 51-53; column 4, lines 12-14; and column 4, lines 22-28 (Ans. 22-23). These passages read as follows: • “Upon receiving the home page from printer 14, a user at a client processor may wish to view the jobs that are presently listed on job queue 28” (Gase, col. 3, ll. 51-53); • “More specifically, by clicking one of the entries on the job detail page, an entry can be highlighted and altered” (id. at col. 4, ll. 12-14); • “For instance, if it is desired to change the number of copies, the ‘copies’ line is highlighted, followed by a clicking on ‘change’ button 60, after which the number of copies can be altered. Change button 60 may also be used to modify the queue position of a job listed on job queue 28.” (id. at col. 4, ll. 22-28). Thus, each of the passages cited by the Examiner relates to changing the details of a print job in a print job queue. Claim 20, however, requires modifying at least the operations programming support module. As the Examiner noted, Matsubayashi discloses “other files and/or programs . . . for the operation of the printer” in its paragraph 66 (Ans. 22). Specifically, Matsubayashi states that “[o]ther files 416 contains other files or programs necessary to operate server 40 and/or to provide additional functionality to server 40” (Matsubayashi 5, ¶ 66). Appeal 2011-010669 Application 10/454,131 9 Significantly, the same paragraph states that the server also includes “queue 415,” which “is utilized to store numerous print jobs for output on one or more image forming devices, such as printer 50” (id.). Matsubayashi’s Figure 4 shows “OTHER FILES” as element 416 and “QUEUE” as the separate element 415 of server 40. Matsubayashi’s Figure 3 shows the same separation of “queue” (element 315) from “other files” (element 357) for printer 50. See also id. at 5, ¶ 64 (“Other files 357 contain other files and/or programs for the operation of printer 50”). Matsubayashi therefore supports Appellants’ position that print jobs in a print queue are not an operations programming support module. The Examiner has not pointed to evidence supporting a contrary position. The Examiner’s reliance on Gase’s teaching to modify print jobs in a print queue therefore does not support the Examiner’s position that the cited references disclose “modifying the file system, including at least the operations programming support module,” as recited in claim 20. Nor has the Examiner provided a sound basis for concluding that this limitation would nonetheless have been obvious to a person of ordinary skill in the art. Thus, the Examiner has not established a prima facie case of obviousness for the rejections based on the combination of Matsubayashi and Gase. We reverse the rejections of: • claims 20, 24, and 38 based on Matsubayashi and Gase; • claims 9, 12, 13, and 36 based on Matsubayashi, Gase, and Ohishi; • claims 21-23 based on Matsubayashi, Gase, and Ohishi; • claims 25, 29, and 39 based on Matsubayashi, Gase, and Bretti; • claims 5, 26-28, and 43 based on Matsubayashi, Gase, Bretti, and Ohishi; Appeal 2011-010669 Application 10/454,131 10 • claim 42 based on Matsubayashi, Gase, Bretti, and Kido; and • claim 41 based on Matsubayashi, Gase, Ohishi, and Kido. SUMMARY We reverse all of the rejections on appeal. REVERSED lp Copy with citationCopy as parenthetical citation