Ex Parte Parry et al

Patent Trial and Appeal Board

Mar 27, 2013

10615764 (P.T.A.B. Mar. 27, 2013)

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.
10/615,764 07/09/2003 Travis J. Parry 200207046-1 9903
7590 03/27/2013
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
EXAMINER
SMARTH, GERALD A
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
03/27/2013 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 TRAVIS J. PARRY, BRETT A. GREEN, and ROBERT SESEK
____________________

Appeal 2010-006650
Application 10/615,764
Technology Center 2400
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 7-16, 25-29, and 41-52. Claims 3 and 53 have been cancelled,
and claims 4-6, 17-24, and 30-40 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
Appellants’ disclosed invention relates to a printer ink/toner cartridge
(i.e., printing device consumable) that has a memory attached thereto and is
for use in a printing device, where the memory can store emails to be sent to
someone concerning the ink/toner running out (i.e., a condition relating to
the printing device). Spec. ¶¶ [0001]-[0006], [0008], and [0017]; Figs. 1-3;
claim 1.
Exemplary Claims
Exemplary independent claims 1, 7, 41, and 47 under appeal, with
emphasis added to the disputed portions of the claims, and bracketed
numbering added, read as follows:
1. A method of providing email messages to a printing device,
said method comprising:
[1] attaching a memory module storing said email messages to a
printing device consumable;
[2] uploading said email messages from the memory module of the
printing device consumable to the printing device; and
[3] transmitting said email messages from the printing device to a
recipient to indicate a condition relating to the printing device.

7. A method for providing email messages for email alerts from a
printing device, said method comprising:
[1] storing email messages on a memory module;
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[2] attaching said memory module to a printing device consumable;
[3] installing said printing device consumable with attached memory
module in a printing device; and
[4] interfacing said memory module with said printing device.
41. A consumable for use with a printing device, said consumable
comprising:
[1] a printing device consumable;
[2] a memory module attached to said printing device consumable;
and
[3] email messages stored on said memory module.
47. A printing device comprising:
[1] a printing device controller with an email engine for using email
messages provided by a memory module attached to a printing device
consumable;
[2] a printing device memory storing said email engine; and
[3] a printing device interface disposed and configured to interface
and communicate with said memory module attached to a printing device
consumable supplied to said printing device;
[4] wherein said printing device controller is configured to access
email messages in said memory module attached to said consumable, load
said email messages into said printing device memory and selectively
transmit said email messages using said email engine.

The Examiner’s Rejections
(1) The Examiner rejected claims 1 and 2 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Muto (US 2002/0116480 A1),
Tabb (US 6,735,399 B2), Kinoshita (US 2003/0107762 A1), and Kurz (US
2002/0075500 A1). Ans. 3-9.
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(2) The Examiner rejected claims 7-16, 25-28, 47, 51, and 52 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Muto, Tabb,
and Kinoshita.1 Ans. 9-24.

1 The Examiner inadvertently lists claims 41, 45, and 46 in the statement of
the obviousness rejection over the combination of Muto, Tabb, and
Kinoshita (see Ans. 9), even though claims 41, 45, and 46 are not discussed
on the merits in the body of the rejection (see Ans. 9-24), and claims 41, 45,
and 46 stand rejected over Tabb and Kinoshita as provided at pages 26-28
and 40-41 of the Answer. For purpose of this appeal, we consider only
claims 7-16, 25-28, 47, 51, and 52 to be rejected under § 103(a) over Muto,
Tabb, and Kinoshita. We consider the inclusion of claim 53 in the rejection
as harmless error, as no discussion of claim 53 is found in the rejection at
pages 9-24 of the Answer, and claim 53 has been canceled.
Separate patentability is not argued for claims 8, 10-16, 25-28, and
48-52 (App. Br. 18-25 and 27-28), and Appellants rely on (i) the arguments
presented for claim 7 with respect to claims 8 and 10-16 (depending from
claim 7), (ii) the arguments presented for claim 47 with respect to claims 48-
52 (depending from claim 47). We select claim 7 as representative of the
group of claims rejected under § 103(a) over Muto, Tabb, and Kinoshita
(claims 7, 8, and 10-16). We select claim 47 as representative of the group
of claims rejected under § 103(a) over Muto, Tabb, and Kinoshita (claims 51
and 52), and we will decide the appeal of (i) claim 48 rejected under
§ 103(a) over Muto, Tabb, Kinoshita, and Hatasa, and (ii) claims 49 and 50
rejected under § 103(a) over Muto, Tabb, Kinoshita, Hatasa, and Richards,
on the same basis as claim 47 from which claims 48-50 depend. Claims 25-
29 will be decided on the same basis as claims 7 and 9 from which claims
25-29 ultimately depend. Accordingly, our analysis regarding this group
will only address claims 7, 9, and 47.
Separate patentability is not argued for claims 42-46 (App. Br. 26-28),
and Appellants rely on the arguments presented for claim 41 with respect to
claims 42-44 (depending from claim 41). We select claim 41 as
representative of the group of claims 41, 45, and 46 rejected under § 103(a)
over Tabb and Kinoshita, and we will decide the appeal of (i) claim 42
rejected under § 103(a) over Tabb, Kinoshita, and Hatasa, and (ii) claims 43
and 44 rejected under § 103(a) over Tabb, Kinoshita, Hatasa, and Richards,
on the same basis as claim 41 from which claims 42-44 depend.
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(3) The Examiner rejected claim 29 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Muto, Tabb, Kinoshita, and
Narushima (US 6,831,755 B1). Ans. 25.
(4) The Examiner rejected claims 41, 45, and 46 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Tabb and Kinoshita. Ans.
26-28.
(5) The Examiner rejected claim 42 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Tabb, Kinoshita, and Hatasa (US
2003/0214546 A1). Ans. 29-30.
(6) The Examiner rejected claims 43 and 44 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Tabb, Kinoshita, Hatasa,
and Richards (US 6,532,351 B2). Ans. 30-32.
(7) The Examiner rejected claim 48 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Muto, Tabb, Kinoshita, and
Hatasa. Ans. 32-33.
(8) The Examiner rejected claims 49 and 50 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Muto, Tabb, Kinoshita,
Hatasa, and Richards. Ans. 33-34.
Appellants’ Contentions
(1) With regard to claims 1 and 2, rejected under 35 U.S.C. § 103(a)
over Muto, Tabb, Kinoshita, and Kurz, Appellants make numerous
arguments (see App. Br. 13-18, Reply Br. 2), including:

Accordingly, our analysis regarding this group will only address
representative claim 41.

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(a) claim 1 requires email messages to be stored on the memory
module before the memory module is attached to the printing device
consumable and installed in the printing device (App. Br. 13); and
(b) the combination of Muto, Tabb, and Kinoshita fails to teach
or suggest uploading email messages from a printing device
consumable to a printer, as recited in claim 1 (App. Br. 16).
(2) With regard to the remaining rejections of claims 7-16, 25-29, and
41-52, rejected under 35 U.S.C. § 103(a) over various combinations of
references, Appellants make numerous arguments (see App. Br. 18-28;
Reply Br. 3) including:
(a) no printing device consumable in Kinoshita stores email
messages as recited in claim 7 (App. Br. 19);
(b) the combination of Muto, Tabb, and Kinoshita fails to teach
or suggest a print cartridge that stores email messages (App. Br. 19);
(c) the combination of Muto, Tabb, and Kinoshita fails to teach
or suggest that a print cartridge stores email messages and uploads
emails to a printing device, as recited in claim 9 (App. Br. 20);
(d) Tabb teaches a Customer Replaceable Unit (CRU) that
stores software code upgrades, and not email messages, as recited in
claim 47 (App. Br. 21-22);
(e) Kinoshita fails to teach a printing device consumable that
stores email messages, as recited in claim 47 (App. Br. 24);
(f) Tabb fails to store email messages as recited in claim 41,
and instead stores software code updates on the CRU (App. Br. 21 and
22);
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(g) Kinoshita’s memory card is not attached to a print cartridge,
as recited in claim 41 (App. Br. 22);
(h) Kinoshita fails to disclose a printing device consumable that
stores email messages, and the combination of Muto, Tabb, and
Kinoshita fails to teach or suggest a print cartridge that stores email
messages (App. Br. 22);
(i) “no printing device consumable in [the] combination of
Tabb and Kinoshita stores email messages” (Reply Br. 3) (emphasis
omitted).
Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 11-28)
and the Reply Brief (Reply Br. 1-3), the following issues are presented on
appeal:
Did the Examiner err in rejecting claims 1 and 2 as being obvious
because the combination of Muto, Tabb, Kinoshita, and Kurz fails to teach
or suggest the method of providing email messages to a printing device by
including storing the email message on the memory module of the printing
device consumable (limitation [1] of claim 1) before it is attached to the
printing device consumable as recited in claim 1, and installed in the printing
device as recited in claim 2?
Have Appellants adequately shown that the Examiner erred in
rejecting claims 7-15, 25-29, and 41-52 as being obvious because the various
combinations of Muto, Tabb, Kinoshita, Narushima, Hatasa, and Richards
fail to teach or suggest the limitations at issue in claims 7, 9, 41, and 47, as
well as claims 8, 10-16, 25-29, 42-46, and 48-52 which respectively depend
from claims 7, 9, 41, and 47?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 11-28) and the Reply Brief (Reply
Br. 1-3) that the Examiner has erred. We agree with Appellants’
Contentions (1)(a) and (1)(b) specifically enumerated above (see App. Br.
13-18, Reply Br. 2), because claim 1 requires a specific order to the recited
steps. “[A]lthough a method claim necessarily recites the steps of the
method in a particular order, as a general rule the claim is not limited to
performance of the steps in the order recited, unless the claim explicitly or
implicitly requires a specific order.” Baldwin Graphics Systems, Inc. v.
Siebert, Inc., 512, F.3d 1338, 1345 (Fed. Cir. 2008); see also Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001).
We determine that claim 1 implicitly requires the email message to be
stored on the memory module before it is attached to the printing device
consumable (as recited in claim 1) and installed in the printing device (as
recited in claim 2) because claim 1 recites that the memory module which is
attached to a printing device consumable in limitation [1] of the claim
already has email messages stored thereon. Then, limitation [2] uploads the
email messages from the memory module of the printing device consumable
to the printing device. Accordingly, we are persuaded by Appellants’
arguments that rely on the assumption that the email messages must be
stored in the memory of the printer cartridge prior to attaching the memory
to the cartridge, and we will not sustain the Examiner’s rejection of claims 1
and 2.
However, with regard to claims 7-15, 25-29, and 41-52, we disagree
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with Appellants’ conclusions, and specifically Contentions (2)(a)-(i)
enumerated above. With regard to representative claims 7, 9, 41, and 47, we
concur with the conclusions reached by the Examiner, and 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 the Appellants’ Appeal
Brief (Ans. 9-35 and 38-43). We highlight and amplify certain teachings
and suggestions of the references, as well as certain ones of Appellants’
arguments as follows.
As stated above, method claims are “not limited to performance of the
steps in the order recited, unless the claim explicitly or implicitly requires a
specific order.” Baldwin Graphics Systems, 512 F.3d at 1345; see also
Interactive Gift Express, Inc., 256 F.3d at 1342-43. With regard to claim 7,
the attaching step does not require that the email messages must be stored on
the memory module prior to attaching the memory module to the printing
device consumable because the wording of the different claim steps does not
limit the storing step from happening first (i.e., the storing step could occur
after the attaching step, thus the references would read on the claim).
As to the remainder of Appellants’ arguments, they are either based
on (i) assertions regarding the failings of individual references when a
combination of references has been relied upon by the Examiner, or (ii) the
premise that the references do not teach or suggest storing email messages
on a memory of a printer cartridge (i.e., printer device consumable).
We are not persuaded by the first argument (i) because each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
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800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references) (citation omitted).
We are not persuaded by the second argument (ii) because the email
messages recited in claims 7, 9, 41, and 47 are just data, or non-functional
descriptive material.2 Because Tabb teaches storing information on a
memory of a printer cartridge, and the other references teach the remaining
elements of the claims, the various combinations of references teach or
suggest all of the features recited by independent claims 7, 41, and
47. Appellants’ arguments urging patentability of claims 7, 41, and 47 are
predicated on non-functional descriptive material, i.e., the content of
messages that are sent and received, and are therefore unpersuasive.
As to claims 7, 9, 41, and 47, we agree with the Examiner that (i)
Muto teaches emailing a user (Ans. 9-10); (ii) Tabb teaches uploading data
(Ans. 10); and (iii) Tabb provides motivation for emailing a user/repair
person by avoiding unnecessary field calls to the printers (Ans. 12).

2 The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). The
informational content of non-functional descriptive material, such as email
messages, is not entitled to weight in the patentability analysis. See In re
Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely
the information content of a memory. . . Nor does he seek to patent the
content of information resident in a database.”). See also Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).

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Appellants admit that Muto, Tabb, and Kinoshita teach a print
cartridge for a printer that stores data (i.e., software code upgrades), and
receives email messages (App. Br. 24; Reply Br. 3), and that Kinoshita
teaches a printer with a memory card for storing email and an attached file
(App. Br. 14, 19, and 24). Therefore, based on our interpretation of the
email messages as just non-functional descriptive material, Appellants admit
the various combinations of Muto, Tabb, Kinoshita teach or suggest the
recited features of claims 7, 9, 41, and 47 as per our interpretation that the
claims recite email messages that are just data, non-functional descriptive
material, the same as the software upgrades taught by the combination of
Tabb and Kinoshita (and as admitted by Appellants as being taught or
suggested by Tabb and Kinoshita, see Reply Br. 3).
Claims 41 and 47 are apparatus claims that are drawn to a consumable
(the cartridge with the memory on it) and a printing device which has a
printer consumable in it. Because the email message are just data (non-
functional descriptive material), we sustain the Examiner’s rejections of
representative claims 41 and 47, as well as claims 42-46 and 48-52
depending respectively therefrom.
Although Appellants admit (App. Br. 14, 19, 20, and 24) that
Kinoshita teaches a printer with a memory card for storing emails and
attached files, this is incorrect. Nowhere does Kinoshita teach storing emails
on the card 5 (Fig. 9A; ¶ [0227]). The emails in Kinoshita are stored in a
buffer 53 (¶ [0238]). In addition, the Examiner never asserts that the emails
are stored on the card (only header information and metadata is stored on the
card 5). The Examiner only finds that emails are stored in a memory
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somewhere in the printer, or in buffer 53 (Ans. 12, 13, 22, 26, 39, 41, and
43).
We agree with the Examiner’s findings with respect to the individual
references, and with the Examiner’s determination that it would have been
obvious to combine the references based on the rationale set forth by the
Examiner (Ans. 9-35 and 38-43).
With regard to representative claims 7 and 9, Appellants have not
shown that Muto, Tabb, and Kinoshita do not teach or suggest the
limitations recited because we agree with the Examiner (Ans. 9-14 and 39-
40) that: (i) Muto discloses email messages (Ans. 9-10); (ii) Tabb uploads
email messages (Ans. 10); and (iii) Tabb avoids field calls (Ans. 12).
With regard to claim 41, we also agree with the Examiner (Ans. 41)
that it would have been obvious to store email messages on a cartridge for
the reasons articulated by the Examiner. In addition, Appellants admit
(Reply Br. 3) that the combination of Tabb and Kinoshita teaches a printer
and a print cartridge with a memory module that stores software code
upgrades.
With regard to claim 47, we agree with the Examiner (Ans. 41-43)
that it would have been obvious to upload email messages in view of Tabb’s
teaching of uploading (col. 6, ll. 16-20 discloses installing software from the
Customer Replaceable Unit Monitor (CRUM) 30 in print cartridge 1 to the
CPU 41 and its memory 42 of the printing device 100 as shown in Fig. 4).
As shown in Tabb’s Figures 1 and 3, memory chip 30 (i.e., memory module)
is attached to a CRU 1 (i.e., printing device consumable) which is inserted
into printing device 100 (see col. 4, ll. 26-36).
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We sustain the rejections of claims 7, 9, 41, and 47, as well as the
rejections of claims 8, 10-16, 25-28, 45, 46, 51, and 52 grouped therewith
under § 103(a) over the various combinations of Muto, Tabb, and Kinoshita
for the reasons provided by the Examiner (Ans. 9-24, 26-28, and 38-43).
We sustain the rejections of claims 14 and 29 for the reasons provided by the
Examiner with regard to claims 7 and 9 from which claims 14 and 29
ultimately depend (Ans. 25 and 38-40). We sustain the rejections of claims
42-46 for the reasons provided by the Examiner with regard to claim 41
from which claims 42-46 depend (Ans. 26-32). We sustain the rejections of
claims 48-52 for the reasons provided by the Examiner with regard to claim
47 from which claims 48-52 depend (Ans. 32-34 and 42-43).
In view of the foregoing, we conclude that the inventions recited in
claims 7-16, 25-29, and 41-52 have not been shown to be patentably
distinguishable from the combined teachings of the various combinations of
applied prior art.

CONCLUSIONS
(1) The Examiner has erred in determining that the combination of
Muto, Tabb, Kinoshita, and Kurz teaches or suggests the method of
providing email messages to a printing device, including storing email
messages in a memory module of a printing device consumable of a printing
device prior to attaching the memory module to the printing device
consumable, as recited in claims 1 and 2.
(2) Appellants have not adequately shown that the Examiner has erred
in determining that the various combinations of Muto, Tabb, Kinoshita,
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Narushima, Hatasa, and Richards teach or suggest the subject matter of
claims 7-15, 25-29, and 41-52.

DECISION
(1) The Examiner’s rejection of claims 1 and 2 under
35 U.S.C. § 103(a) over the combination of Muto, Tabb, Kinoshita, and
Kurz is reversed.
(2) The Examiner’s remaining rejections of claims 7-16, 25-29, and
41-52 under 35 U.S.C. § 103(a) are 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-IN-PART

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