Ex Parte Prueitt et al

Board of Patent Appeals and Interferences

Feb 18, 2009

09870538 (B.P.A.I. Feb. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES K. PRUEITT, RICHARD A. PINEAU,
KEVIN F. BERNIER, TODD M. LYNTON, and
SCOTT D. WICKER
____________

Appeal 2008-2385
Application 09/870,538
Technology Center 2400
____________

Decided:1 February 19, 2009
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-2385
Application 09/870,538

A Patent Examiner rejected claims 1-5, 7-9, 11-15, 17-20, 22-28, and
30. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

I. STATEMENT OF THE CASE2
A. INVENTION
The invention at issue on appeal relates to the opportunity to obtain a
permanent record of the service rendered at the mobile device should be
available regardless of mode of operation. To achieve the object of this
invention for services originating at the mobile device and not related to the
location of the device, one aspect of the invention includes a method for
providing a service at a mobile device and generating, at the location of the
mobile device, a permanent record of the service, the service and the
permanent record being processed by at least one of many remote servers.
The method comprises the steps of (a) receiving at a receiving center, from
the mobile device, a request for the service, (b) providing, from the receiving
center, data for the request to a service server, the service server being one
of the at least one of many remote servers, (c) processing the request for
service at the service server, the processing generating the data for the

2 Procedurally, we note that two IDS statements have been filed after the
Reply Brief was filed and the Examiner has not considered either of them
prior to our decision on the merits. The Examiner should consider these IDS
statements.
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service, (d) providing the data for the service to a printing server, the
printing server being one of the at least one of many remote servers, (e)
processing, at the printing server, the data and other stored data to generate
input data for a specific printer, and (f) transmitting to the mobile device the
input data, the input being rendered by the specific printer at the location of
the mobile device as the permanent record of the service. (Spec. 4-5.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method of providing a service at a mobile device and generating,
at the location of said mobile device, a permanent record of said service, said
service and said permanent record being processed by at least one of a
plurality of remote servers, said method comprising the steps of:
(A) receiving at a receiving center, from the mobile
device, a request for the service and information identifying a
specific printer on which service related data is to be printed at
the location of the mobile device;
(B) providing, from the receiving center, data for the
request to a service server, said service server being one of said
at least one of a plurality of remote servers;
(C) processing the request for service at the service
server, said processing generating the data for the service;
(D) providing said data for the service to a printing
server, said printing server being one of said at least one of a
plurality of remote servers and including stored print data for
optimizing the quality of prints printed on various specific
printers;
(E) processing, at the printing server, said service data
and stored print data for the identified specific printer to
generate input data for the specific printer in a manner to
produce the optimal quality print for the specific printer;
(F) transmitting to said mobile device said input data,
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said input being rendered by the specific printer at the
location of said mobile device as the permanent record of said
service.

C. REFERENCES
The Examiner relies on the following references as evidence:
Cottrell US 5,694,484 Dec. 2, 1997
Klear WO 01/03040 Jan. 11, 2001
Ishizuka US 2002/0065873 A1 May 30, 2002
(filed Nov. 30, 2000)
Devarics US 6,553,240 B1 Apr. 22, 2003
(filed Dec. 30, 1999)
Fidler US 6,725,051 B1 Apr. 20, 2004
(filed Apr. 30, 2001)

D. REJECTIONS
The Examiner makes the following rejections.
Claims 1-3, 5, 7, 9, 11, 12, 17-20, 22-24, and 30 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Klear in view of Devarics and
further in view of Ishizuka.
Claims 4, 8, 13-15, and 25-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Klear in view of Devarics in view of Ishizuka as
stated in the claims above, and further in view of Fidler.
Claims 1-3, 5, 7, 9, 11, 12, 17-20, 22-24, and 30 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Klear in view of Devarics and
further in view of Cottrell.
Claims 4, 8, 13-15, and 25-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Klear in view of Devarics in view of Cottrell as
stated in the claims above, and further in view of Fidler.
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II. ISSUE
Have Appellants shown error in the Examiner’s initial showing of
obviousness and specifically whether it is appropriate to interpret
Appellants’ claimed invention in light of the three references incorporated
by reference in the Specification concerning “optimal quality print.”

III. PRINCIPLES OF LAW
35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," Id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John
Deere Co., 383 U.S. 1, 12 (1966)). The Court reaffirmed principles based
on its precedent that "[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." Id. The operative question in this "functional
approach" is thus "whether the improvement is more than the predictable use
of prior art elements according to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
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consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. 1727,
1739 (2007)). The Federal Circuit relied in part on the fact that Leapfrog
had presented no evidence that the inclusion of a reader in the combined
device was “uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art." Id. at 1162 (citing
KSR, 127 S. Ct. at 1740-41).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

IV. ANALYSIS
From our review of the Examiner’s initial showing of obviousness, at
pages 4-15 of the Answer, we find that the Examiner has set forth a
sufficient initial showing of obviousness. Therefore, we look to Appellants’
Briefs to show error in the Examiner's initial showing or the Examiner's line
of reasoning.
Additionally, we note that the Examiner at pages 2-3 of the Answer
identifies that the Appellants’ Brief is deficient with respect to the means-
plus-function limitations. Appellants attempt to remedy the deficiency by
filing the Reply Brief which identifies corresponding structure, acts, or
materials for independent claim 18, but Appellants do not address any of the
dependent claims which contain means-plus-function limitations and are
argued by Appellants. (For example, dependent claim 4 which contains a
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means-plus-function limitation which is separately argued by Appellants.)
Rather than remand the appeal, we will address Appellants' arguments with
respect to dependent claim 4 to the extent that we find any corresponding
structure, acts, or materials for the corresponding means limitation.
With respect to claim interpretation from Appellants’ Summary of the
Claimed Invention, we note that Appellants' Summary of the Claimed
Invention for independent claim 1 merely identifies pages 4, 5, 9, and 10 of
Appellants' Specification, but The Summary of the Claimed Invention for
independent claim 18 additionally identifies that the means for processing to
produce optimal quality print for the specific printer is disclosed in detail as
techniques at page 11, lines 11 to 24 of the Specification. In the
Specification, Appellants incorporate by reference the teachings of three
different references to teach the processing to produce optimal quality print
for the specific printer, but Appellants do not specifically discuss what is
taught by each reference. (Reply Br. 12 and App. Br. 8). Additionally, we
note that one of the references incorporated by reference is the Cottrell
reference which the Examiner has applied against all the claims in the third
and fourth stated rejections.
In view of the Examiner's reliance upon the same reference
incorporated by reference in the Specification, it would appear that a
rejection using the same reference as Appellants rely upon for support
should clearly teach and fairly suggest that portion of the claimed invention.
Additionally, the Examiner may desire to clarify with Appellants as to the
corresponding, structure, or acts for the means for processing since the
corresponding Specification sets forth only generalized discussions of the
detailed techniques which are incorporated by reference.
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Here, the Specification provides no guidance as to the specific
interpretation for those techniques. Since Appellants have not specifically
argued the details of independent claim 18 and have elected to group
independent claim 18 and most of its dependent claims with independent
claim 1, we need not address this matter. With this as background, we will
address Appellants' arguments in the Briefs with respect to representative
claim 1 and those dependent claims which are specifically argued.
With respect to independent claim 1, Appellants’ main contention is
that the Office has not established that the invention is prima facie obvious
since the Office has not established the required elements (2)-(5) of a proper
prima facie obviousness rejection. (App. Br. 8).
Appellants maintain that Klear, Devarics, and Ishizuka do not disclose
or suggest that the print data be processed in a manner to produce the
optimal quality print for the specific printer as required by independent
claim 1 and wherein information identifying a specific local printer is sent to
the remote servers at the service provider via the mobile device; a remote
printing server has stored print data for optimizing the quality of print
printed on a specific printer, and printing server processes service data and
stored print data for the identified specific printer in a manner to produce the
optimal quality print for the specific printer. (App. Br. 9-12).
Additionally, Appellants contend that since Devarics performs print
data processing locally in the limited resource cell phone, it is clear that the
phone does not have the capacity to do that type of print optimization
process required by Appellants’ claimed method and system. (App. Br. 11).
Additionally, Appellants contend that Devarics does not disclose, teach or
suggest the concept of doing computer intensive print optimization
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processing on high-capacity remote servers operated by the service provider.
(App. Br. 11). Here, we find no express support in the language of
independent claim 1 for Appellants' asserted "computer intensive print
optimization processing." Therefore, Appellants’ arguments thereto are not
persuasive of error in the Examiner's initial showing of obviousness.
Finally, Appellants argue that the teachings of Ishizuka concerning
printer drivers, which allows for print data to be formatted appropriately for
the type and size of printing on specific printers, is in error since Ishizuka
does not disclose, teach, or suggest producing "optimal quality print for the
specific printer" within the meaning of that language, as used in the present
claims. (App. Br. 12). Appellants opine that "optimal quality print" means
more than mere formatting as argued by the Office and that the three patents
disclosed at page 11of the Specification describes in detail techniques for
producing an image of optimal quality at a specific printer. Appellants
further contend that producing such optimal quality prints, as recited in the
claims, involves image processing and not merely formatting print data for a
specific printer, as is accomplished by a printer driver. (App. Br. 12).
Appellants further argue the combination of teachings is insufficient to teach
or suggest this “critical element” of producing optimal quality prints as
claimed and furthermore that the Examiner has relied upon impermissible
hindsight reconstruction. (App. Br. 13).
Here, we disagree with Appellants contentions and find that the
Examiner has set forth a proper showing in the rejection and provided a
reasoned statement for the combination of the teachings as to why it would
have been obvious to one of ordinary skill in the art to combine the
teachings in the manner advanced by the Examiner. Appellants’ generalized
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argument that the Examiner has relied upon hindsight reconstruction without
further explanation is not persuasive of the error in the Examiner's initial
showing of obviousness. Furthermore, the Examiner has shown how each of
the prior art teachings in combination teaches and fairly suggests the claimed
invention to optimize the print data for a specific printer wherein the
Examiner finds that a printer driver produces an optimal quality print.
Appellants rely upon the techniques incorporated by reference in the
Specification at page 11 to interpret how "optimal print quality" should be
interpreted. Appellants, at page 13 of the Reply Brief, admit that the phrase
by "optimal quality print" is not explicitly defined in the Specification, but
Appellants contend that the phrase would be construed by an ordinarily
skilled artisan to involve image processing and would be interpreted by an
ordinarily skilled artisan to be more than mere formatting as the Examiner
has maintained.
At page 14 of the Reply Brief, Appellants' rely upon the teachings of
column 3 of the Cottrell reference teaches that image quality is principally
defined by four image parameters. Cottrell additionally teaches that image
quality may also be subjective to in nature. (Cottrell col. 3, l. 41).
Therefore, since image quality may be deemed to be subjective, we find that
the Examiner's reliance upon the printer driver formatting to be one of the
most basic image quality factors to be considered by those skilled in the art
without which any other subjective or objective image processing would be
useless to improve the image quality.
Here, Appellants strain to interpret indirectly "optimal quality prints.”
Furthermore, Appellants' mere assertion, that the prior art techniques as
disclosed in the three patents which are incorporated by reference into the
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Specification, does not specifically differentiate the "optimal quality print"
from the printer driver formatting of Ishizuka.
Appellants further assert at page 15 of the Reply Brief that KSR
reiterates the five elements for a proper prima facie rejection of obviousness
and Appellants submit that all of the above five elements have not been
established and that the rejection is improper. We find Appellants' assertion
to be based on the asserted deficiency in the Examiner's reliance upon the
printer driver rather than optimal quality prints as determined by the
techniques disclosed at page 11 of the Specification. Therefore, Appellants'
argument is not persuasive of error in the Examiner's initial showing of
obviousness, as discussed above.
In the Reply Brief, Appellants reiterate those arguments set forth in
the Brief and contend that the combined teachings of the three references
relied upon by the Examiner do not teach and fairly suggest the claimed
"optimal print quality." (Reply Br. 11-20). Again, we do not find these
arguments persuasive of error in the Examiner's initial showing of
obviousness nor in the Examiner's line of reasoning for the combination of
teachings. Therefore, Appellants have not shown error in the Examiner's
initial showing of obviousness of independent claim 1. Therefore, we will
sustain the rejection of independent claim 1 and dependent claims 2, 3, 5, 7,
9, 11, 12, and 17 grouped therewith by Appellants. Additionally, Appellants
have elected to group independent claim 18 with independent claim 1.
(App. Br. 6, 13 and Reply Br. 11, 20). Therefore, we group independent
claim 18 and dependent claims 19, 20, 22-24, and 30 with independent claim
1.
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Additionally, it is unclear in Appellants’ asserted interpretation of
"optimal print quality" whether each of the three new references cited in the
Specification are required in a combination to achieve an "optimal print
quality" or if each reference alone teaches how to achieve a separate
"optimal print quality." Here, if we were to accept Appellants' asserted
interpretation of "optimal print quality," we would be left to speculate as to
what skilled artisans would glean from each reference to determine the
metes and bounds of "optimal print quality." Therefore, without an express
definition, we find it inappropriate for the Examiner to interpret "optimal
print quality" as narrowly as Appellants advocate. Therefore, we agree with
the Examiner that to interpret the claim language as Appellants advocate
would be to read limitations into claim language and to speculate as to which
limitations the skilled artisan would pick and choose from the three
references.
Hence, we find that the Examiner has not been unreasonable in the
interpretation of printer driver's to optimize the quality of prints for a
specific printer. Clearly, the prior art teachings of the three incorporated
references evidence that there are many facets to "optimal quality prints" for
a specific printer and that there is not a singular optimum. If there were a
single optimal quality, then Appellants should be capable of setting that
forth in the language of independent claim 1. Here, Appellants have chosen
to indirectly claim their "critical features" (App. Br. 9) of the claimed
invention and have not presented a persuasive showing of error by the
Examiner.
With respect to dependent claim 4, Appellants rely upon the same
reasons discussed with respect to the three reference combination and further
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contend that Fidler does not teach or suggest these "critical required
features" including "producing the optimal quality print for a specific
printer." (Reply Br. 22). Appellants argue that dependent claim 4 is
directed to an interactive service which the user requested location based
service from a service provider that needs the location of the mobile device
to provide the user with the appropriate location based service. Appellants
argue that the method of Fidler does not teach or even remotely suggest
providing the interactive dialogue between the user and the service provider
to obtain a location based service for the user and also to allow the user to
make an optimal quality printed record for the service at the location of the
mobile device. (Reply Br. 21).
First, we disagree with Appellants' contention that Fidler needs to
teach or suggest providing an interactive dialogue between a user and the
service provider to obtain location based service information for user. Here,
the language of dependent claim 4 merely recites receiving at the receiving
server data on the location of the mobile device, said data being generated
by means for determining the location of the device. Second, Appellants
argue a different portion of the reference than cited by the Examiner. Here,
teachings of Fidler, as applied by the Examiner, teach and fairly suggest
PDA's, portable personal computers, and the like may access
via wireless communications resources such as printers. For example,
a mobile user may wish to print an e-mail from his PDA, a photo from
his digital camera, a map for directions to a selected location, or the
like. The mobile user looking for local restaurants, for instance, may
wish to download menus from restaurants to his PDA, and then print
paper copies. To do so, the RTLS component determines the PDA
location, then may query a network service via wireless technology to
determine if a printer is close by.

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(Fidler col. 2, ll. 15-25 and cited at Ans. 8).
Therefore, we do not find Appellants' argument commensurate in
scope with the language of dependent claim 4, and Appellants do not rebut
the portion of the Fidler reference relied upon by the Examiner. Therefore,
Appellants have not shown error in the Examiner's initial showing of
obviousness of dependent claim 4. Therefore, we will sustain the rejection
of dependent claim 4 and dependent claims 8, 13-15, and 25-28 as grouped
therewith by Appellants.
With respect to the Examiner's second combination of references
applied against independent claim 1, Appellants contend that the claims are
patently distinguishable for the same reasons discussed with respect to the
first combination of references because the Cottrell patent does not disclose,
teach or suggest critical required features of Appellants' claimed method and
system including producing the optimal quality print for a specific printer.
(Reply Br. 22). Appellants further contend that the Office in essence has
taken one aspect of the teachings of Cottrell out of context of the overall
teachings of the reference to support the rejection and the rejection relies
upon only part of the disclosure and hence the Examiner has relied upon
hindsight reconstruction. (Reply Br. 22-23).
Appellants’ conclusory argument does not address the Examiner’s
combination of teachings and merely asserts that the teachings of Cottrell are
out of context. Appellants' argument is unpersuasive of error in the
Examiner's initial showing of obviousness of independent claim 1.
Furthermore, as discussed above, we find the teachings of Cottrell
concerning optimal quality print for a specific printer to be quite similar
since they are the same as Appellants incorporate by reference in the
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Specification. Therefore, we will sustain the rejection of independent claim
1 over the combination of Klear, Devarics, and Cottrell. We further sustain
the rejection of independent claim 18 since Appellants have grouped this
claim with independent claim 1.
With respect to dependent claim 4, Appellants set forth similar
arguments as advanced above which we found unpersuasive of error in the
Examiner's initial showing of obviousness of dependent claim 4. (App. Br.
17-19 and Reply Br. 23-25). Therefore, Appellants have not shown error in
the Examiner's initial showing of obviousness of dependent claim 4.
Therefore, we will sustain the rejection of dependent claim 4 and dependent
claims 8, 13-15, and 25-28 as grouped therewith by Appellants.

V. CONCLUSION
For the aforementioned reasons, Appellants have not shown error in
the Examiner’s initial showing of obviousness and we concluded that it is
inappropriate in this case to interpret/limit Appellants’ claimed invention in
light of the three references incorporated by reference in the Specification
concerning “optimal quality print.”

VI. ORDER
We affirm the obviousness rejections of claims 1-5, 7-9, 11-15, 17-20,
22-28, and 30.

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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