Ex Parte Miller et al

Patent Trial and Appeal Board

Jul 11, 2016

13310254 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/310,254 12/02/2011 Howard A. Miller
63975 7590 07112/2016
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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.
APL-Pl3061US1 3970
EXAMINER
GUILLERMETY, FRED
ART UNIT PAPER NUMBER
OPQA
MAILDATE DELIVERY MODE
07/12/2016 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 HOW ARD A. MILLER and MICHAEL R. SWEET1
Appeal2015-003427
Application 13/310,254
Technology Center 0000
Before DEBRA K. STEPHENS, BRUCE R. WINSOR, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application is related to facilitating communication between a
portable electronic device and a printer. Abstract. Claim 1 is representative
and reproduced below with the key limitations emphasized:
1 According to Appellants, the real party in interest is Apple, Inc. Br. 1.
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Application 13/310,254
1. A computer-implemented method for facilitating
communication between a portable electronic device connected
to a structured network and a printer, comprising:
using a peer-to-peer connection between the portable
electronic device and the printer to acquire, at the portable
electronic device, printer attributes from the printer, wherein a
direct connection between the printer and the portable electronic
device via the structured network is not established when the
printer attributes do not match the print job;
when the printer attributes match the print job:
using the peer-to-peer connection to confirm use of
the structured network for subsequent communication
between the portable electronic device and the printer;
enabling use of the structured network for the
communication by transmitting credentials for the
structured network from the portable electronic device to
the printer, wherein the transmitted credentials are used by
the printer to connect to the structured network; and
transferring the communication from the peer-to-
peer connection to a direct connection between the
portable electronic device and the printer on the structured
network.
Rejections
Claims 1-3, 6-10, 13-17, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Kato (US 2009/0066998 Al;
Mar. 12, 2009), Okigami (US 2010/0231958 Al; Sept. 16, 2010), Oshima et
al. (US 2009/0036056 Al; Feb. 5, 2009), and Strittmatter et al. (US
7 ,272,407 B2; Sept. 18, 2007). Final Act. 2.
Claims 4, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Kato; Okigami; Oshima; Strittmatter;
Howard Forums, http://www.howardforums.com/showthread.php/152 l 885-
3G-First-Priority-Revert-to-2G; and Kim et al. (US 2011/0216353 Al; Sept.
8, 2011). Final Act. 12.
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Application 13/310,254
Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Kato, Okigami, Oshima, Strittmatter, and
Chun et al. (US 2011/0164175 Al; July 7, 2011). Final Act. 14.
ISSUE
Did the Examiner err in finding the combination of Oshima and
Strittmatter teaches or suggests "to acquire, at the portable electronic device,
printer attributes from the printer" and a direct connection is not established
"when the printer attributes do not match the print job," as recited in claims
1 and 15, and commensurately recited in claim 8?
ANALYSIS
Claims 1-21
All three independent claims (1, 8, and 15) recite a method or system
"to acquire[, at the portable electronic device,] printer attributes from the
printer" and "a direct connection between the printer and the portable
electronic device via the structured network is not established when the
printer attributes do not match the print job." The Examiner relies upon
Strittmatter for the former recited limitation and Oshima for the latter. Final
Act. 3--4.
Appellants dispute only the latter limitation in contending Oshima's
"portable terminal device sends information to the MFP [multi-function
printer] indicating ... a function that the portable terminal device would
like to perform ('function ID')." Br. 9-10 (citing Oshima i-fi-137, 49, 66-
69). We agree with that characterization of Oshima:
The function ID is the information showing the function of the
MFP 100 of which use the portable terminal device 200 requests
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Application 13/310,254
(function information). For example, when the printer function
of the MFP 100 is used, a "printer ID" is set as the function ID.
When the scanner function of the MFP 100 is used, a "scanner
ID" is set as the function ID.
Oshima i-f 37. According to Appellants, Oshima describes an "authentication
operation" that does not connect if a user is not allowed to perform the
function, which Appellants contend is different than not connecting "when
the printer attributes do not match the print job." Br. 10-11.
We find Appellants have not sufficiently addressed the basis of the
Examiner's rejection. "Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. Thus, [a reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here,
Appellants attack Oshima individually yet the Examiner also relies upon a
second reference (Strittmatter) for the claimed printer attributes as well as
how one of ordinary skill would have applied Oshima to printer attributes.
We agree with the Examiner that "Strittmatter addresses the portable
electronic device acquiring printer attributes from the printer and that
Appellant has not challenged this." Ans. 3 n.1; Final Act. 4. Specifically,
claim 20 of Strittmatter recites "wirelessly receiving, by a mobile phone,
information about imaging capabilities of a printer." For example, upon an
inquiry from a mobile device, the printer provides a "basic printing profile
(BPP)" that "describes the use of a page description language (e.g. XHTML-
Print) and an image encoding standard (e.g. JPEG)." Strittmatter at 7:1-12.
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Application 13/310,254
The present application expressly states that identifying a printer's file
format (e.g., JPEG) is one example of a "printer attribute." Spec. i-f 29.
Turning to Oshima, the Examiner finds a "fundamental teaching ...
of not establishing a structured connection when a user is not able to print."
Ans. 3 (citing Oshima FIG. 6). In particular, Oshima teaches that "[w]hen it
is determined that the assigned function cannot be used (NO at step S608 [in
Figure 6]), the process ends." Oshima i-f 66.
However, the Examiner does not apply Oshima in a vacuum. Rather,
when finding Oshima teaches " ... when the printer attributes do not match
the print job," the phrase "the printer attributes" refers to the earlier
limitation taught by Strittmatter (i.e., "acquire, at the portable electronic
device, printer attributes from the printer"). That is, Oshima's "fundamental
teaching ... of not establishing a structured connection when a user is not
able to print" is applied to Strittmatter's teaching of providing printer
attributes. "Accordingly, when printer attributes don't match those of a print
job (e.g., a duplex print job and a printer that cannot handle duplex), then it
follows to reason, based on the teachings of Oshima, to not establish the
structured connection since the print job cannot be transmitted and properly
executed." Ans. 4.
Here, Appellants have not persuaded us of any error in combining
these teachings, particularly given that "[ s ]uch an arrangement
advantageously saves a user time." Final Act. 4; Strittmatter 6:5-6. "A
person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). We
are not persuaded that anything more than ordinary creativity is required in
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combining Strittmatter's printer attributes with Oshima's fundamental
teaching of not connecting when a user is not able to print. The Examiner
even cited a portion of Strittmatter that states, "it would be helpful to filter
the located server devices that are most likely capable of printing a
photograph" (Strittmatter 6: 19-23; Final Act. 4), which is exactly what the
Examiner has relied on Oshima for teaching.
Therefore, we sustain the Examiner's rejection of claim 1, and claims
2-21, which Appellants argue are patentable for similar reasons. See App.
Br. 9, 11; 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner rejecting claims 1-21.
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).
AFFIRMED
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