HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals BoardJul 31, 2020

2019003225 (P.T.A.B. Jul. 31, 2020)

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. 14/913,462 02/22/2016 Lenin FERNANDES 84449029 8629 22879 7590 07/31/2020 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER GUILLERMETY, JUAN M ART UNIT PAPER NUMBER 2674 NOTIFICATION DATE DELIVERY MODE 07/31/2020 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 jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LENIN FERNANDES, KUMARAVEL GANESAN, RAJESH BHATIA, and RITESH JHA ____________________ Appeal 2019-003225 Application 14/913,462 Technology Center 2600 ____________________ Before: ELENI MANTIS MERCADER, JUSTIN BUSCH, and BETH Z. SHAW, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–15, which constitute all the claims pending. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Hewlett-Packard Development Company, L.P., a wholly owned affiliate of HP Inc. and whose “general or managing partner” is HPQ Holdings, LLC. Appeal Br. 3. Appeal 2019-003225 Application 14/913,462 2 STATEMENT OF THE CASE Introduction The invention generally relates to using a mobile device as a bridge or intermediary to a non-web-connected printer to allow the non-web- connected printer to function as a web-connected printer. Spec. ¶ 12. More specifically, the claimed subject matter provides methods and systems in which a mobile device joins a wireless network associated with a printer and, upon joining the network, downloads a print job from a different computing device and delivers the print job to the printer via the wireless network. Spec. ¶¶ 11, 12, 17, 27, Fig. 2B. Claims 1, 6, and 12 are independent claims. Claim 1 is reproduced below: 1. A method to deliver a print job to a printer via a mobile device, the method comprising: joining, by the mobile device, a wireless network associated with the printer, wherein the printer is a non-web- connected printer; and upon and in response to the mobile device joining the wireless network associated with the printer, automatically downloading, at the mobile device, the print job from a computing device; and automatically delivering the print job from the mobile device to the printer via the wireless network to cause the printer to function as a web-connected printer to the computing device. The Pending Rejections Claims 1, 6, and 12 stand rejected under 35 U.S.C. § 103 as obvious in view of Kondo (US 2010/0002262 A1; Jan. 7, 2010), and Kamath (US 2012/0140285 A1; June 7, 2012). Final Act. 3–7. Appeal 2019-003225 Application 14/913,462 3 Claims 2–4, 8–10, 13, and 15 stand rejected under 35 U.S.C. § 103 as obvious in view of Kondo, Kamath, and St. Laurent (US 2012/0300251 A1; Nov. 29, 2012). Final Act. 7–11; Ans. 4.2 Claims 5, 11, and 14 stand rejected under 35 U.S.C. § 103 as obvious in view of Kondo, Kamath, St. Laurent, McCorkindale (US 2011/0216349 A1; Sept. 8, 2011), and Young (US 2014/0204403 A1; July 24, 2014). Final Act. 11–14. Claim 7 stands rejected under 35 U.S.C. § 103 as obvious in view of Kondo, Kamath, and Hansen (US 2010/0309510 A1; Dec. 9, 2010). Final Act. 14–15. ANALYSIS The Examiner finds the combination of Kondo and Kamath teaches or suggests every limitation recited in independent claims 1, 6, and 12. Final Act. 3–7. Of particular relevance to this Appeal, the Examiner finds Kondo teaches a mobile device joining with a non-web-connected printer because Kondo describes a mobile device connecting to a printer via a wireless network and, upon joining the printer, downloading the print job from a computing device. Final Act. 4 (citing Kondo ¶ 21 (describing a mobile display terminal that “may be connected wiredly or wirelessly” with the 2 In the Final Action, the Examiner rejections claims 2 and 13 as obvious in view of Kondo, Kamath, and Cloin (US 2014/0114782 A1; Apr. 24, 2014). Final Act. 7–8. However, the Examiner agreed with Appellant’s argument that Cloin does not teach the additional limitations recited in claims 2 and 13, which relate to receiving a notification. Ans. 5; see Appeal Br. 12–16. However, the Examiner notes that claims 2 and 13 recite similar limitations to claim 8 and finds claims 2 and 13, therefore, are obvious in view of the Kondo, Kamath, and St. Laurent based on the same findings made with respect to claim 8. Ans. 5; see Final Act. 10 (citing St. Laurent ¶ 45). Appeal 2019-003225 Application 14/913,462 4 printer)). The Examiner finds “the step of downloading [the] document or file that occurs in Kondo before connecting (or joining) would be convenient . . . so when the terminal is connected to the printer sequentially (without user interaction) transmits print data (document file) to the printer.” Ans. 3 (emphases added). The Examiner finds that Kondo, “by functionality, still broadly teaches/suggests the aforementioned limitations, disregarding the order of the steps.” Ans. 3 (emphasis added). Among other arguments, Appellant contends that the Kondo fails to teach or suggest “upon and in response to the mobile device joining the wireless network associated with the printer[], automatically downloading, at the mobile device, the print job from a computing device,” as recited in independent claim 1 and commensurately recited in independent claims 6 and 12. Appeal Br. 8–9; Reply Br. 4–6. Specifically, Appellant argues Kondo does not teach that the display terminal automatically downloads a print job (i.e., Kondo’s document file) upon and in response to the mobile terminal joining the printer or a network associate with the printer. Appeal Br. 9. As a general rule, “[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (citation omitted). However, a claim “requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires” an order of steps. TALtech Ltd. v. Esquel Apparel, Inc., 279 Fed.Appx. 974, 978 (Fed. Cir. 2008). Appeal 2019-003225 Application 14/913,462 5 Notably, Appellant’s intendent claims explicitly recite that the automatically downloading and automatically delivering steps are performed “upon and in response to the mobile device joining the wireless network associated with the printer.” Therefore, we find error in the Examiner’s finding that Kondo teaches the automatically downloading step “disregarding the order of the steps.” Because the Examiner has not made a finding that Kondo, alone or in combination with Kamath, teaches or suggests performing the automatically downloading step “upon and in response to the mobile device joining the wireless network associated with the printer,” we are constrained by this record to reverse the rejection of independent claims 1, 6, and 12 as obvious under 35 U.S.C. § 103 in view of Kondo and Kamath. Each of the dependent claims include the same limitation via their ultimate dependency from one of claims 1, 6, and 12, and the Examiner does not find that any of the additionally cited art cures this deficiency. Accordingly, we also reverse the rejection of dependent claims 2–5, 7–11, and 13–15 as obvious under 35 U.S.C. § 103 in view of the cited prior art for the same reasons. Appeal 2019-003225 Application 14/913,462 6 DECISION SUMMARY Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 6, 12 103 Kondo, Kamath 1, 6, 12 2–4, 8–10, 13, 15 103 Kondo, Kamath, St. Laurent 2–4, 8–10, 13, 15 5, 11, 14 103 Kondo, Kamath, St. Laurent, McCorkindale, Young 5, 11, 14 7 103 Kondo, Kamath, Hansen 7 Overall Outcome 1–15 REVERSED