Ex Parte Chatow et al

Patent Trial and Appeal Board

Oct 27, 2016

13383566 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/383,566 0111112012
22879 7590 10/31/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Ehud Chatow
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82853383 3519
EXAMINER
DIABY, MOUSTAPHA
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
10/3112016 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
barbl@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 EHUD CHATOW, STEVEN J. SIMSKE,
and BENJAMIN I. DEMPSTER
Appeal2015-006658
Application 13/383,566
Technology Center 2600
Before MICHAEL J. STRAUSS, JON M. JURGOV AN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-10, 12, 14--17, and 20-24.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse. 3
1 Appellants identify Hewlett-Packard Development Company, LLC as the
real party in interest. (App. Br. 3.)
2 Claims 11, 13, 18, and 19 are canceled.
3 Our Decision refers to the Specification filed Jan. 11, 2012 ("Spec."), the
Final Office Action mailed June 30, 2014 ("Final Act."), the Appeal Brief
filed Dec. 1, 2014 ("App. Br."), the Examiner's Answer mailed Apr. 28,
2015 ("Ans."), and the Reply Brief filed June 29, 2015 ("Reply Br.").
Appeal2015-006658
Application 13/383,566
CLAIMED INVENTION
The claims are directed to a system and method of sorting print jobs
for a plurality of print service providers. (Spec. Title.) Claim 1, reproduced
below with argued limitation shown in italics, is illustrative of the claimed
subject matter:
1. A method of sorting print jobs for assignment to a plurality of
print service providers, comprising:
receiving at a print server a plurality of print jobs having a
plurality of print parameters from a plurality of users, wherein
individual print jobs have multiple print parameters being
represented in a portion of the plurality of print jobs;
determining the print parameters of the received print jobs;
comparing the print parameters of the received print jobs
with each other to determine which of the print parameters are
common among the received print jobs;
selecting a prioritization factor;
grouping the received print jobs into a plurality of print job
groupings according to the common print parameters and the
prioritization factor;
identifying a plurality of print service providers having at
least partially different printing configurations;
assigning each grouping to a print service provider of the
plurality of print service providers; and
sending each of the plurality of print job groupings to the
assigned print service provider.
(App. Br. 20- Claims App'x.)
REJECTIONS
Claims 1-10, 12, 14--17, and 20-24 were rejected under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement. (Final Act. 5---6.) However, this rejection was withdrawn in
the Answer, and is thus no longer before us on appeal. (Ans. 17.)
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Appeal2015-006658
Application 13/383,566
Claims 1--4, 8, 9, 16, 21, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) based on Rai et al. (US 2007/0019228 Al, publ. Jan. 25, 2007) and
Harmon et al. (US 2007 /0236725 Al, publ. Oct. 11, 2007). (Final Act. 7-
13.)
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) based on Rai,
Harmon, and Chiarabini et al. (US 2002/0026379 Al, publ. Feb. 28, 2002).
(Final Act. 13-14.)
Claim 7 stands rejected under 35 U.S.C. § 103(a) based on Rai,
Harmon, Chiarabini, and Nakanishi et al. (US 2005/0147440 Al, publ. July
7, 2005). (Final Act. 14--15.)
Claims 10 and 17 stand rejected under 35 U.S.C. § 103(a) based on
Rai, Harmon, and Mirna (US 2006/0039707 Al, publ. Feb. 23, 2006).
(Final Act. 15.)
Claim 22 stands rejected under 35 U.S.C. § 103(a) based on Rai,
Harmon, and Katano (US 2010/0265529 Al, publ. Oct. 21, 2010). (Final
Act. 16.)
Claims 12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) based
on Gonzalez et al. (US 2002/0019786 Al, publ. Feb. 14, 2002) and Harmon.
(Final Act. 17-19.)
Claim 20 stands rejected under 35 U.S.C. § 103(a) based on Gonzalez,
Harmon, and Mirna. (Final Act. 19-20.)
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Appeal2015-006658
Application 13/383,566
ANALYSIS
Rejections under 35 U.S.C. § 103(a)
Claims 1, 12, and 16
Claim 1 recites "comparing the print parameters of the received print
jobs with each other to determine which of the print parameters are common
among the received print jobs." (App. Br. 20- Claims App'x.) Claims 12
and 16 recite similar limitations. (App. Br. 22-24-Claims App'x.)
'Print parameters' are described in the Specification as desired
printing characteristics, such as print media, inks, and coatings. (Spec. 3.)
According to the Specification, 'print parameters' also include additional
printing needs, such as the time to completion of a print job or the overall
print cost. (Id.) In the claimed invention, the common print parameters
resulting from the comparing are used to group similar print jobs together.
(See, e.g., claims 1, 12, and 16, Spec. 3--4.)
Appellants contend the argued claim limitation is not disclosed by
Harmon, the reference upon which the Examiner relies to show this feature.
(App. Br. 10-12 citing Harmon i-fi-162, 63, Fig. 9 [S901], Reply Br. 5---6, 10.)
Specifically, Appellants contend Harmon's system compares the received
print job to grouping criteria selected by the user, and argue this is not the
same as comparing the received print jobs to each other to determine which
parameters are common among them, as recited in the claimed invention.
(Id.)
We agree with Appellants' argument. As Appellants contend, the
cited parts of Harmon describe that particular job parameters are selected to
define grouping criteria. (Harmon i163, Fig. 9 [S904]). Incoming print jobs
are compared with the selected grouping criteria, and thus not to each other,
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Appeal2015-006658
Application 13/383,566
in order to group the received print jobs. (Id.) The Examiner provides
insufficient evidence to support the finding that job parameters of different
print jobs are compared with one another in Harmon. (See Ans. 17-19 citing
Harmon i-fi-162, 63.) Moreover, the Examiner provides insufficient evidence
to support the conclusion that the claimed limitation is inherent or implied
by Harmon. (See Ans. 18, MPEP § 2112.) Accordingly, on this record, we
do not sustain the Examiner's rejection.
Our decision on this argument is dispositive of the appeal. Therefore,
in the interests of expediency and economical use of Board resources, we do
not address Appellants' remaining arguments.
Remaining Claims
The remaining claims depend from claims 1, 12, and 16 and thus
incorporate their limitations. For the stated reasons, we do not sustain the
rejection of the remaining claims.
DECISION
We reverse the rejections of claims 1-10, 12, 14--17, and 20-24 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED
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