Ex Parte Wegeng et al

Patent Trial and Appeal BoardDec 28, 2012

11312802 (P.T.A.B. Dec. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/312,802 12/20/2005 Donald Leo Wegeng 20051157USNP-XER2688US01 4153 62095 7590 12/28/2012 FAY SHARPE / XEROX - ROCHESTER 1228 EUCLID AVENUE, 5TH FLOOR THE HALLE BUILDING CLEVELAND, OH 44115 EXAMINER CAMMACK, DAVID S ART UNIT PAPER NUMBER 2675 MAIL DATE DELIVERY MODE 12/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DONALD LEO WEGENG and ROBERT ALLEN KOONTZ ____________________ Appeal 2010-007849 Application 11/312,802 Technology Center 2600 ____________________ Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007849 Application 11/312,802 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1 - 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a device setup by scanning a configuration sheet and generating configuration data useable by the device. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for configuring a device comprising: imaging a document; extracting configuration data from the imaged document; determining if the extracted configuration data is substantially equivalent to configuration data corresponding to the device; processing the extracted configuration data to generate substantially equivalent configuration data corresponding to the device if the extracted configuration data is not equivalent to configuration data corresponding to the device; and setting configuration parameters of the device to configure the device using at least one of the extracted configuration data and the substantially equivalent configuration data. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ozaki Wang US 5,729,350 US 5,848,426 Mar. 17, 1998 Dec. 8, 1998 Nelson US 2003/0236973 A1 Dec. 25, 2003 Appeal 2010-007849 Application 11/312,802 3 REJECTIONS 1 The Examiner made the following rejections: Claims 1-6, 2 8-12, 14-18, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nelson and Wang. Ans. 3. Claims 7, 13, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nelson, Wang, and Ozaki. Ans. 12. APPELLANTS’ CONTENTIONS 1. With respect to claim 1, “the Wang et al. reference merely discloses a direct translation of identical data” into “a different organization or format” (App. Br. 9, 11) instead of “processing the extracted configuration data to generate substantially equivalent configuration data corresponding to [a target] device if the extracted configuration data is not equivalent to configuration data corresponding to the [target] device” as per claim 1 (App. Br. 11) and claim 7 (App. Br. 19.) 2. Further with respect to claim 1, “one of ordinary skill in the art would not look to the Wang et al. reference in combination with the Nelson et a1. reference to perform a method [according to claim 1.]” App. Br. 13. 1 Based on Appellants’ arguments, we will decide the appeal of claims 1-6, 8-12, 14-18 and 20 based on claim 1 and the appeal of claims 7, 13 and 19 based on claim 7. See 37 C.F.R. § 41.37(c)(1)(vii). 2 The omission of claim 4 from both the statements of claim rejections (see Final Office Action (FOA) of July 21, 2009 at pages 7 and 16 and Ans. 8 and 16) and reasons for rejection appears to be a clerical oversight, both Appellants (see, e.g., App. Br. 2, 5, and 15) and the Examiner (see, e.g., FOA Office Action Summary sheet, FOA at page 4 and Ans. 21) elsewhere includes claim 4 within the range of claims rejected. Appeal 2010-007849 Application 11/312,802 4 3. Ozaki discloses service data and not print job output configuration data as required by claim 7. App. Br. 19-20. 4. Ozaki fails to disclose “generating substantially equivalent configuration data for setting configuration parameters of the another device using the substantially equivalent configuration data” as required by claim 7. App. Br. 21 5. “[O]ne of ordinary skill in the art would not look to the Nelson et al. reference in combination with the Wang et al. reference and further in combination with the Ozaki reference to perform a method [according to claim 7.]” App. Br. 25. ISSUES ON APPEAL Based on Appellants’ arguments in the Appeal Brief (App. Br. 5-26) the issues presented on appeal are whether the Examiner erred in (i) combining Wang, Nelson and, in the case of claim 7, Ozaki in formulating the rejections, and (ii) finding that the combination of Wang and Nelson teaches or suggests (a) “processing the extracted configuration data to generate substantially equivalent configuration data corresponding to the device if the extracted configuration data is not equivalent to configuration data corresponding to the device” as per claim 1, or (b) generating substantially equivalent configuration data for setting configuration parameters of the another device using the substantially equivalent configuration data as required by claim 7. Appeal 2010-007849 Application 11/312,802 5 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions as to all rejections. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following arguments for emphasis. Claim 1 In connection with contention 1, Appellants argue that “the Wang et al. reference merely discloses a direct translation of identical data” (App. Br. 9) in “a different organization or format” (App. Br. 11) instead of “processing the extracted configuration data to generate substantially equivalent configuration data corresponding to the device if the extracted configuration data is not equivalent to configuration data corresponding to the device” as per claim 1 (App. Br. 11) and claim 7 (App. Br. 19.) We disagree with Appellants. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004). Furthermore, limitations appearing in the specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily.) Appeal 2010-007849 Application 11/312,802 6 We therefore agree with the Examiner that the claims only require the extracted information be processed so that the configuration data is useable by a target device for configuring purposes. Ans. 16. As pointed out by the Examiner, Appellants’ Specification describes scanning sheets having information defining configuration data used “to generate substantially equivalent configuration data corresponding to the device, i.e., configuration data useable by the device for configuring purposes.” Ans. 16 citing to Spec. [0006] (emphasis added.) That is, “if the extracted configuration data is not equivalent to configuration data corresponding to the device” then claim 1 requires “processing the extracted configuration data to generate substantially equivalent configuration data corresponding to the device.” Therefore, consistent with description at paragraph [0006] of Appellants’ Specification, the claimed processing need only generate “configuration data useable by the device for configuring purposes.” Accordingly Appellants’ arguments that Wang only discloses direct translation of “identical data” into a different organization or format (App. Br. 9-11) is not commensurate with the scope of claim 1 (or of claim 7 dependent therefrom) and is therefore not persuasive of error. In contrast, the Examiner argues that “Wang discloses the editing of a string to truncate such string in order to place the string in a format acceptable to the target system.” Ans. 16 citing to Wang col. 13, ll. 6-65. The Examiner further argues that “[s]uch editing or reformatting of the data before it is acceptable for import into the target system thus suggests that Wang performs more than a direct translation of identical data, but rather performs processing upon the data to create substantially equivalent data.” We agree and therefore find that the combination of Nelson and Wang Appeal 2010-007849 Application 11/312,802 7 teaches or suggests the subject disputed limitations of claim 1 and thereby of dependent claim 7. In connection with contention 2 Appellants argue “one of ordinary skill in the art would not look to the Wang et al. reference in combination with the Nelson et al. reference to perform a method [according to claim 1.]” App. Br. 13. However, Appellants provide no persuasive evidence in support of their conclusion. Instead, we find that the Examiner has provided an articulated reasoning with a rational underpinning to substantiate the obviousness rejection. See Ans. 5-6 and 20. Accordingly a conclusion of obviousness is proper. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We therefore find that Appellants do not provide persuasive evidence or argument to rebut the motivation for combining provided by the Examiner and conclude that there is no error. For the reasons above we will sustain the rejection of claim 1 and of claims 2-6, 8-12, 14-18, and 20 not separately argued. Claim 7 In connection with contention 3 Appellants argue that Ozaki discloses service data and not print job output configuration data as required by claim 7. App. Br. 19-20. The Examiner responds that Appellants’ arguments are not commensurate in scope with claim 7 which does not require “print job output configuration data” (Ans. 22); and, absent any definition provided by Appellants’ Specification, a broad but reasonable interpretation of “configuration data” and “configuration parameters” is met by the configuration data of Ozaki (Ans. 22-23.) We agree. Furthermore, Appellants’ contention does not persuade us of error on the part of the Appeal 2010-007849 Application 11/312,802 8 Examiner because the Appellants are responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references, i.e. the combination of Nelson, Wang, and Ozaki, not Ozaki standing alone (see Ans. 24-25.) Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore we find Appellants contention 3 unpersuasive of Examiner error. In connection with contention 4 Appellants argue that Ozaki fails to disclose “generating substantially equivalent configuration data for setting configuration parameters of the another device using the substantially equivalent configuration data” as required by claim 7. App. Br. 21. We disagree for the reasons set forth by the Examiner. The Examiner found that references in claim 7 to “another device” are in the alternative to “the device” such that setting the configuration of either meets the language of the claim (see Ans. 25-26.) Furthermore, we note that Appellants’ arguments are not commensurate in scope with the claim. Still further, even if there were a requirement for “another” device, we agree that Wang teaches or suggests such limitation; “given the explicit objective of Wang of translating data from one system to another there is still a suggestion of using the configuration data for programming another device” (Ans. 26.) Therefore, Appellants have not persuaded us of error. In connection with contention 5 Appellants argue that “one of ordinary skill in the art would not look to the Nelson et al. reference in combination with the Wang et al. reference and further in combination with the Ozaki reference to perform a method [according to claim 7.]” App. Br. Appeal 2010-007849 Application 11/312,802 9 25. We disagree. Again we find that the Examiner has provided an articulated reasoning with a rational underpinning to substantiate the obviousness rejection. See Ans. 13-14 and 28. We therefore find that Appellants do not provide persuasive evidence or argument to rebut the motivation for combining provided by the Examiner and conclude that the Examiner has not erred. Thus, for the reasons given above, we will sustain the rejection of claim 7 and of claims 13 and 19 not separately argued. CONCLUSIONS On the record before us, we conclude that the Examiner did not err in rejecting independent claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Nelson and Wang or in rejecting claims 2-6, 8-12, 14-18, and 20, not separately argued. Likewise, we conclude that the Examiner did not err in rejecting claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Nelson, Wang, and Ozaki or in rejecting claims 13 and 19, not separately argued. Appeal 2010-007849 Application 11/312,802 10 DECISION The decision of the Examiner to reject claims 1-20 is affirmed. 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