13459657 (P.T.A.B. Mar. 21, 2017)

Ex Parte Whitmarsh et al

Patent Trial and Appeal BoardMar 21, 2017

13459657 (P.T.A.B. Mar. 21, 2017)

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. 13/459,657 04/30/2012 Mike Whitmarsh 82964761 5919 22879 HP Tnr 7590 03/23/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 HARRIS, KEARAS FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2677 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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 y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKE WHITMARSH, CORNELIUS J. O’DONNELL, and WILLIAM E. HERTLING Appeal 2016-007981 Application 13/459,657 Technology Center 2600 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2016-007981 Application 13/459,657 CLAIMED INVENTION Claim 1 recites the following: 1. A method comprising: using at least one microprocessor to execute computer executable instructions stored on at least one non-transitory computer readable medium to perform the following acts: outputting an instruction to instruct a user to print a first object on a first side of a test sheet on a printing device; outputting an instruction to instruct the user to reinsert the test sheet in the printing device; outputting an instruction to instruct the user to print a second object on the test sheet; receiving location information indicating a location of the second object with respect to a location of the first object on the test sheet; and determining a printing path of the printing device based on the location information, wherein the printing path comprises a manner in which the printing device is to feed a sheet of paper through the printing device and affix an object onto the sheet of paper. App. Br. 14. REFERENCES AND REJECTIONS1 The Examiner rejected claims 1—15 under 35 U.S.C. § 103(a) as unpatentable over Kadota,2 Fujii,3 and Kurose4. Ans. 3—9. 1 Claims 16—21 have been canceled. See Reply Br. 3 (citing Response after Final Office Action 6 (filed Nov. 12, 2015); Adv. Act. 1 (mailed Dec. 18, 2015)). 2 Kadota (US 2008/0152375 Al; published June 26, 2008). 3 Fujii (US 2010/0165365 Al; published July 1, 2010). 4 Kurose et al. (US 2010/0225932 Al; published Sept. 9, 2010). 2 Appeal 2016-007981 Application 13/459,657 ANALYSIS Appellants contend Fujii does not teach or suggest “determining a printing path of the printing device based on the location information, wherein the printing path comprises a manner in which the printing device is to feed a sheet of paper through the printing device and affix an object onto the sheet of paper” as recited in claim 1. See App. Br. 9-10; Reply Br. 7—9. Appellants argue Fujii’s determination of whether the images to be printed on two sides of a sheet of paper line up correctly does not include determining the manner in which the printer feeds the sheet of paper. See App. Br. 10; Reply Br. 7—9. The Examiner found Fujii teaches or suggests the disputed limitation by judging whether the recording directions of respective recording surfaces are the same. See Ans. 4 (citing Fujii Fig. 3, item S104); Final Act. 3—4, 8. The Examiner explained that “the recording direction of the paper is needed to determine the ORIENTATION of the paper to be fed into the printer, which the examiner interprets as ‘a manner in which the printer feeds a sheet of paper.’” Ans. 13. We agree with Appellants that the Examiner erred. Fujii discloses a multi-function device including a central processing unit (“CPU”) that judges whether “a recording direction of one of the recording surfaces of the object recording medium and a recording direction of the other of the recording surfaces of the object recording medium are the same as each other or not.” Fujii 126; see also id. Fig. 3, item S104. Fujii’s CPU judges that the recording directions are the same “where a portion on a back side of an upper portion of the image of one of the recording surfaces coincides with an upper portion of the image of the other of the recording surfaces.” Id. 3 Appeal 2016-007981 Application 13/459,657 126. Fujii’s CPU then sets the coordinates and axes for the first and second images based on their respective recording directions. See id. Subsequently, Fujii’s CPU determines a recording order in which the image whose density has been made lower is recorded first on the recording medium, so as to reduce warping of the recording medium due to the soakage of the ink. See id. Fig. 3, item SI09; 139. In other words, prior to printing, the CPU of Fujii’s printer determines if a first image’s orientation and position on one side of a sheet of paper is the same as a second image’s orientation and position on the other side of the sheet of paper. See Fujii Fig. 3, item S104; 126. Based on this determination, the CPU sets the position and orientation of the first and second images. See id. Fig. 3, items SI 05, SI 06. Subsequently, the CPU determines the order in which to record the first and second images, where the image that has the lower density is recorded first. See id. Fig. 3, item S109; 139. But, contrary to the Examiner’s findings, we find no evidence that Fujii teaches or suggests “determining a printing path . . . comprising] a manner in which the printing device is to feed a sheet of paper through the printing device.” Instead, it appears that Fujii’s CPU orients and positions the images prior to printing, without regard to the printing path of Fujii’s multi-function device, i.e., the manner in which Fujii’s multi-function device is to feed through the sheet of paper. For the reasons stated above, Appellants have persuaded us the Examiner erred in the rejection of claim 1. Accordingly, we reverse the Examiner’s rejection of claim 1 and the rejections of independent claims 7 and 14 and dependent claims 2—6, 8—13, and 15, each of which recite a similar limitation. See App. Br. 14—18. 4 Appeal 2016-007981 Application 13/459,657 DECISION We reverse the Examiner’s rejection of claims 1—15. REVERSED 5