Ex Parte Thero et al

Patent Trial and Appeal Board

Sep 23, 2013

11742518 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte DANIEL THERO, MATTHEW D. HAINES,
WILLIAM G. McCOLLOM, PHILIP M. WALKER, and
GREGORY J. LIPINSKI
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Appeal 2011-000196
Application 11/742,518
Technology Center 2400
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Before ROBERT E. NAPPI, HUNG H. BUI, and BARBARA A. PARVIS,
Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Application 11/742,518

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STATEMENT OF THE CASE
Appellants’ invention relates to multiple clients sharing a printer
through a network. Spec. ¶ [0010].

Claim 1 is illustrative:
1. A system, comprising:
at least one client computer;
a server computer coupled to the at least one client
computer via a network; and
a printer coupled to the server computer and shared by
the at least one client computer, wherein the printer is perceived
by each client computer to be a local printer.

REJECTIONS
Claims 18–22 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Ans. 3.
Claims 1–22 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Ferlitsch (U.S. 7,190,477 B2; Mar. 13, 1997). Ans. 3-9.

ISSUES
35 U.S.C. § 102(e) Rejection
Claims 1, 2, 5–12, 16, and 17
Did the Examiner err in finding that Ferlitsch discloses “wherein the
printer is perceived by each client computer to be a local printer,” as recited
in independent claim 1, and similarly recited in independent claim 10?
For claim 2, Appellants argue that Ferlitsch does not disclose “to
maintain each client computer’s perception that the printer is a local printer.”
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App. Br. 12. Additionally, dependent claims 5–9, 11, 12, 16, and 17 are not
separately argued (App. Br. 12, 14). Thus, the issue presented for claims 2,
5–9, 11, 12, 16, and 17 is the same as the issue presented for claims 1 and
10.

Claims 3, 15, and 18
Did the Examiner err in finding that Ferlitsch discloses “a virtual local
printer address,” as recited in claim 3, and similarly recited in claim 15 and
independent claim 18?

Claim 19, 21, and 22 depend from claim 18 and are not separately
argued (App. Br. 15). Thus, the issue presented for claims 19, 21, and 22 is
the same as the issue presented for claims 3, 15, and 18.

Claim 4
Did the Examiner err in finding that Ferlitsch discloses “the printer
tunnel application is part of a Universal Serial Bus (USB) stack,” as recited
in claim 4?

Claims 13, 14, and 20
Did the Examiner err in finding that Ferlitsch discloses “simulating a
. . . delay,” as recited in claim 13, and similarly recited in claims 14 and 20?

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Application 11/742,518

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35 U.S.C. § 101 Rejection
Claims 18–22
Did the Examiner err in finding that claims 18–22 are directed to non-
statutory subject matter?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions in the Appeal Brief presented in response to the Final Office
Action and the Reply Brief presented in response to the Examiner’s Answer.
We agree with Appellants’ conclusion that the Examiner erred in finding
that Ferlitsch discloses the invention recited in claim 4. We disagree with
Appellants’ remaining conclusions and highlight and address specific
findings and arguments for emphasis as follows.

Claims 1, 2, 5–12, 16, and 17
We are not persuaded by Appellants’ arguments that Ferlitsch fails to
disclose the claimed local printer because the IP address of Ferlitsch’s
printer is indicative of a network printer rather than a local printer (App. Br.
11). The USPTO gives claims their broadest reasonable interpretation
consistent with the specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). The Examiner’s interpretation of claim 1 is reasonable.
We agree with the Examiner’s finding that Ferlitsch describes a printer
having characteristics of a local printer including, for example, being able to
directly receive spooled print jobs (Ans. 11-12 (citing Ferlitsch col. 9, ll. 26-
33; col. 10, l. 61-col. 11, l.10; Fig. 5)). Appellants’ arguments are not
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commensurate with the scope of claim 1. Therefore, as the Examiner
correctly finds, Ferlitsch discloses the claimed local printer of claim 1.
With respect to Appellants’ arguments relating to claim 10,
Appellants’ arguments substantially parallel those made with respect to
claim 1. See generally App. Br. 13-14; compare App. Br. 11-12. Thus,
Appellants have not persuaded us of error in the Examiner’s rejection of
independent claims 1 and 10 under 35 U.S.C. § 102(e), and dependent
claims 5–9, 11, 12, 16, and 17, not separately argued (App. Br. 12, 14).
Accordingly, we sustain the Examiner’s rejection of independent claims 1
and 10, and their respective dependent claims 5-9, 11, 12, 16 and 17.
With respect to Appellants’ arguments relating to claim 2, Appellants’
arguments substantially parallel those made with respect to claim 1. See
generally App. Br. 12; compare App. Br. 11-12. Thus, for the reasons
discussed supra with respect to claim 1, Appellants have not persuaded us of
error in the Examiner’s rejection of claim 2 under 35 U.S.C. § 102(e).
Accordingly, we sustain the rejection of claim 2.

Claims 3 and 15
We are not persuaded by Appellants’ arguments that instead of using
a virtual local printer address, Ferlitsch’s system and method use a printer
device’s IP address (App. Br. 13). The Examiner reasonably interprets the
term “virtual local printer address,” recited in claim 3 (Ans. 12-13).
Therefore, we agree with the Examiner’s finding the IP address of Ferlitsch
corresponds to the claimed virtual local printer address and Ferlitsch
discloses this limitation of claim 3. (Ans.12-13 (citing Ferlitsch col. 16, ll.
1-9))
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Thus, Appellants have not persuaded us of error in the Examiner’s
rejection of claims 3 and 15 under 35 U.S.C. § 102(e). Accordingly, we
sustain the rejection of claims 3 and 15.

Claim 4
The Examiner finds that Ferlitsch describes a USB architecture to
connect input components. Ans. 13. The Examiner also finds that the
printer driver is inherently part of a USB stack. Ans. 13. Appellants argue
that Ferlitsch simply mentions typical components with no discussion of a
printer tunnel application that is part of a USB stack. App. Br. 13. We agree
with the Examiner to the extent that the Examiner states that Ferlitsch
describes connecting input devices via a USB (Ans. 13). However, Ferlitsch
does not refer to or explicitly disclose a printer tunnel application that is part
of a USB stack. We do not agree with the Examiner that a printer tunnel
application that is part of a USB stack is inherent in the disclosure of
Ferlitsch. Accordingly, we are constrained to reverse the rejection of claim
4 under 35 U.S.C. § 102(e) based on Ferlitsch.

Claims 13 and 14
We are not persuaded by Appellants’ arguments that Ferlitsch
mentions a delay, but does not disclose simulating a delay or a delay
message (App. Br. 14). As the Examiner correctly finds, Ferlitsch discloses
simulating a delay, such as a warm-up delay, by, for example, queuing jobs
in a buffer (Ans. 14 (citing Ferlitsch col. 11, ll. 38-66; col. 12, ll. 45-50)).
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Thus, Appellants have not persuaded us of error in the Examiner’s
rejection of claims 13 and 14 under 35 U.S.C. § 102(e). Accordingly, we
sustain the rejection of claims 13 and 14.

Claims 18–22
We are not persuaded by Appellants’ arguments that the Examiner’s
rejection of claims 18 through 22 as being directed to non-statutory subject
matter is improper (App. Br. 10-11; Reply Br. 2-3). As the Examiner
correctly finds, the broadest reasonable construction of claims 18 through 22
covers both non-transitory and transitory media (Ans. 10).
We are not persuaded by Appellants’ arguments that Appellants’
Specification does not expressly state that the term “computer-readable
medium” includes non-transitory subject matter, such as signals (App. Br.
10-11). We agree with the Examiner’s finding that Appellants’
Specification does not expressly limit the term “computer-readable medium”
to statutory subject matter (Ans. 10). The broadest reasonable construction
of a claim drawn to computer readable medium covers both non-transitory
and transitory media where the specification is silent. Ex parte Mewherter,
No. 20123-007692 (PTAB May 8, 2013 (precedential), available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd2012007692.pdf.
Transitory, propagating signals are not patentable subject matter under
35 U.S.C. § 101. In re Nuijten, 500 F. 3d 1346, 1353-54 (Fed. Cir. 2007).
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A claim drawn to such a computer readable medium that covers
both transitory and non-transitory embodiments may be
amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. §101 by
adding the limitation “non-transitory” to the claim.
See David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
Thus, Appellants have not persuaded us of error in the Examiner’s
rejection of independent claim 18 and its dependent claims 19-22 under 35
U.S.C. § 101. Accordingly, we sustain the rejection of claims 18-22.
With respect to the Examiner’s rejection of claim 18 under 35 U.S.C.
§ 102(e), for the reasons discussed supra with respect to claim 3, we are not
persuaded by Appellants’ arguments that Ferlitsch fails to disclose a virtual
local address (App. Br. 15). Accordingly, we sustain the rejection of claim
18 under 35 U.S.C. § 102(e), and dependent claims 19, 21, and 22, not
separately argued (App. Br. 15).
With respect to the Examiner’s rejection of claim 20 under 35 U.S.C.
§ 102(e), for the reasons discussed supra with respect to claim 13, we are
not persuaded by Appellants’ arguments that Ferlitsch fails to disclose
“simulating a . . . delay” (App. Br. 15). Accordingly, we sustain the
rejection of claim 20 under 35 U.S.C. § 102(e).

DECISION
We AFFIRM the rejection of claims 1–3 and 5–22 under 35 U.S.C.
§ 102(e) as being anticipated by Ferlitsch.
We REVERSE the rejection of claim 4 under 35 U.S.C. § 102(e) as
being anticipated by Ferlitsch.
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We AFFIRM the rejection of claims 18–22 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

ELD