Ex Parte Reese et al

Patent Trial and Appeal Board

Mar 25, 2014

10454131 (P.T.A.B. Mar. 25, 2014)

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).
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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
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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.
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• 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.
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[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
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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.
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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
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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).
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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;
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• 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

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