KANG, Gyeong-min et al.

Patent Trials and Appeals Board

Dec 16, 2019

14729580 - (D) (P.T.A.B. Dec. 16, 2019)

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.
14/729,580 06/03/2015 Gyeong-min KANG 2546.1047 9996
22879 7590 12/16/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
GUILLERMETY, JUAN M
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
barbl@hp.com
ipa.mail@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 GYEONG-MIN KANG, WU-SEOK JANG,
HYUN-JUNG PARK, and HAK-JU LEE
____________

Appeal 2018-0090401
Application 14/729,580
Technology Center 2600
____________

Before JEAN R. HOMERE, JAMES B. ARPIN, and
MICHAEL M. BARRY, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a), the rejections of
claims 1–3 and 5–21, all of the pending claims. Final Act. 2. Claim 4 is

1 In this Decision, we refer to Appellant’s Appeal Brief (“App. Br.,” filed
April 26, 2018) and Reply Brief (“Reply Br.,” filed September 21, 2018);
the Final Office Action (“Final Act.,” mailed November 8, 2017), the
Advisory Action (“Adv. Act,” mailed February 8, 2018); and the Examiner’s
Answer (“Ans.,” mailed August 3, 2018); and the originally-filed
Specification (“Spec.,” filed June 3, 2015). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
2 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as S-Printing Solution Co., Ltd.
App. Br. 3.
Appeal 2018-009040
Application 14/729,580

2

canceled. App. Br. 25 (Claims App’x). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s claimed subject matter relates to methods, systems, and
image forming apparatus for “controlling an operation of an image forming
apparatus by using a wearable device.” Spec. ¶ 2. The Specification’s
Figure 3 is reproduced below.

Figure 3 depicts a second application installed in a wearable device and first
and third applications installed on a host device. Id. ¶ 15; see id. ¶¶ 7–11.
“The second application 330 obtains a user input of operating the image
forming apparatus 120. Then, based on information included in the user
input, the second application 330 generates a task performance request to be
transmitted to the third application 320.” Id. ¶ 46. Third application 320
Appeal 2018-009040
Application 14/729,580

3

then executes first application 310 and instructs image forming apparatus
120 to perform the task originating from wearable device 100.
As noted above, claims 1–3 and 5–21 are pending. Claims 1, 11, and
18 are independent. App. Br. 24, 26, 28–29 (Claims App’x). Claims 2, 3,
5–10 depend directly or indirectly from claim 1; claims 12–17 depend
directly from claim 11; and claims 19–21 depend directly from claim 18. Id.
at 24–29.
Claim 11 recites “[a] system for controlling an operation of an image
forming apparatus, the system comprising: a wearable device in which a
second application is installed; and a host device that is connectable to the
wearable device and the image forming apparatus,” which coordinate the
interaction of the applications according to methods recited in claim 1. Id. at
24, 26. Claim 18 recites “[a]n image forming apparatus that operates in
response to a request from a wearable device” which coordinates the
interaction of the applications according to methods substantially similar to
those recited in claim 1. Id. at 24, 28–29. The Examiner relies on the same
reference and substantially the same arguments in challenging claims 1, 11,
and 18. Final Act. 2–4, 6–7; see App. Br. 19–20. Therefore, we focus our
analysis on the disputed and overlapping limitations of these independent
claims.
Claim 1, reproduced below with disputed limitations emphasized, is
illustrative.
1. A method of controlling an operation of an image
forming apparatus by using a wearable device connected to a host
device, the method comprising:
converting, by an execution of a third application installed
in the host device, a task performance request requesting a task
to be performed by the image forming apparatus, which is
Appeal 2018-009040
Application 14/729,580

4

transmitted from a second application installed in the wearable
device via the wearable device, into an execution instruction of a
first application installed in the host device that controls the
operation of the image forming apparatus, wherein the second
application and the third application interoperate with each other;
executing the first application by the third application,
based on the execution instruction, and instructing the image
forming apparatus to perform the task; and
receiving, by the first application, information indicating
a task performance result related to the task from the image
forming apparatus.
Id. at 24 (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
pending claims:
Name3 Number Pub’d/Issued Filed
Kawano US 2009/0122342 A1 May 14, 2009 Nov. 12, 2008
Kato US 2014/0368849 A1 Dec. 18, 2014 Oct. 23, 2013
Hansen US 9,019,535 B1 Apr. 28, 2015 Dec. 6, 2012
Yu US 2015/0242168 A1 Aug. 27, 2015 Feb. 24, 2014
Claims 1–3, 5, 7, 10–13, 15, and 18–21 stand rejected as unpatentable
under 35 U.S.C. § 102 by Yu. App. Br. 2–8. Claims 6 and 14 stand rejected
as unpatentable under 35 U.S.C. § 103 over the combined teachings of Yu
and Hansen. Id. at 8–9. Claims 8 and 16 stand rejected as unpatentable
under 35 U.S.C. § 103 over the combined teachings of Yu and Kato. Id. at

3 All reference citations are to the first named inventor only.
Appeal 2018-009040
Application 14/729,580

5

9–10. Claims 9 and 17 stand rejected as unpatentable under 35 U.S.C. § 103
over the combined teachings of Yu and Kawano. Id. at 10–11.
Appellant contests the anticipation rejection of the independent claims
and relies on the alleged deficiencies in their rejection to overcome the
rejections of the dependent claims. Because we determine that the reversal
of the rejection of the independent claims is dispositive, except for our
ultimate decision, we do not discuss the merits of the rejections of claims 2,
3, 5–10, 12–17, and 19–21 further herein. We review the appealed rejection
of independent claim 1 for error based upon the issues identified by
Appellant, and in light of the arguments and evidence produced thereon. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Unless
otherwise indicated, we adopt the Examiner’s findings in the Final Action
and the Answer as our own and add any additional findings of fact for
emphasis. We address the rejection of claim 1 below.
ANALYSIS
1. Anticipation of Claim 1 by Yu
The Examiner rejects claim 1 as anticipated by Yu. “A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
The elements must be arranged as required by the claim, but this is not an
ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Moreover, “it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
Appeal 2018-009040
Application 14/729,580

6

reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968). Nevertheless,
unless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008);
accord In re Arkley, 455 F.2d 586 (CCPA 1972). For the reasons given
below, we sustain the Examiner’s rejection of claim 1.
The Examiner finds that Yu discloses each and every element of
claim 1. Final Act. 2–4, Adv. Act. 2. Yu’s Figure 1 is reproduced below.

Appeal 2018-009040
Application 14/729,580

7

“[Figure 1] is a system diagram of an environment in which embodiments of
the invention may be implemented.” Yu ¶ 5. In particular, Yu discloses that
printing device 110 and print server computer 114 may be joined over
network 108 to any one of a number of client devices 102–105, which may
include wearable devices. Id. ¶¶ 37–52, Fig. 4 (depicting printing device
400).
Moreover, the Examiner finds that Yu discloses the recited step of
converting, by an execution of a third application installed
in the host device, a task performance request requesting a task
to be performed by the image forming apparatus [(Yu ¶¶ 24, 25,
83)], which is transmitted from a second application installed in
the wearable device via the wearable device, into an execution
instruction of a first application installed in the host device that
controls the operation of the image forming apparatus [(id. ¶¶ 73,
82, 83)], wherein the second application and the third application
interoperate with each other [(id.)].
Final Act. 3; Adv. Act. 2; see App. Br. 24 (Claims App’x) (emphasis added).
In particular, Yu discloses that a client computer, e.g., a wearable device (Yu
¶ 41 (“wearable computing devices”)), may include applications 220, which
“may include computer executable instructions which, when executed by
client computer 200, transmit, receive, and/or otherwise process instructions
and data. . . . Further, Applications 220 may include document processing
application 222, viewing application 224, or the like.” Yu ¶ 73. Thus, an
application installed in the wearable device transmits a print request, e.g., a
task performance request, to a print server computer, e.g., a host device. Id.
¶¶ 52, 74.
Appeal 2018-009040
Application 14/729,580

8

Yu’s Figure 3 is reproduced below.

“[Figure 3] shows an embodiment of a network computer that may be
included in a system such as that shown in [Figure 1].” Yu ¶ 7. Network
computer 300, e.g., the print computer server, has print server
application 319 and print queue application 320 installed thereon. Id. ¶¶ 82,
83. As Yu explains, print server application 319 may be configured to
receive a document from a client computer, such as a wearable device, and
may forward documents to printing device 110 without converting the
document to an intermediate page description language. Id. ¶ 83. Further,
Appeal 2018-009040
Application 14/729,580

9

print queue application 320 may receive documents for print jobs and queue
them until they are printed. Id. A relevant definition of a “print queue” is
“[a] buffer for documents and images waiting to be printed. When an
application places a document in a print queue, it is held in a special part of
the computer’s memory, where it waits until the printer is ready to receive
it.” MICROSOFT COMPUTER DICTIONARY, 421 (5th ed. 2002). Thus, a
document may be queued for printing if there are other documents awaiting
printing. See Yu ¶ 171.
Claim 1 recites “executing the first application by the third
application, based on the execution instruction, and instructing the image
forming apparatus to perform the task.” App. Br. 24 (Claims App’x)
(emphasis added). The Examiner finds Yu discloses that, if a document is
sent by print server application 319 to the printing device, but other
documents are awaiting printing, the transmission of a print instruction
causes print queue application 320 to queue the document for printing. Final
Act. 3 (citing Yu ¶¶ 82, 83). In particular, the Examiner finds:
Yu generally teaches a method of controlling an operation of a
printer by using a wearable device (hereinafter ‘client’)
connected to a server, the method comprising: adapting, by
running a print server application 319 employed in the print
server computer 300, a print request to be forwarded and to be
performed (or printed) by a printing device 400. This mean[s]
that the server, by using a[] print server application 319, will
convert a request that is submitted from a client in order to
command the printer to read (to be instructed) in order to
perform the printing operation; and running a print queue
application 320 via the print server application 319 (e.g.,
because it’s receiving a document), and instructing the printer
400 to perform the document to be done (performed). The result
of printing is transmitted, via the server, to the user who
originated the print job. The “print request to be forwarded and
Appeal 2018-009040
Application 14/729,580

10

printed by the printing device 400” corresponds to the task
performance request requesting a task to be performed by the
image forming apparatus. The “running a print queue
application 320 via the print server application 319 (because it’s
receiving a document) in order to forward the document to the
printing device 400 so that the printing device 400 can print
corresponds to “executing the first application by the third
application, based on the instruction, and instructing the image
forming apparatus to perform the task.[”] The user receiving,
via print queue, a status report of a result of printing corresponds
to receiving information indicating a task performance result
related to the task from image forming apparatus.
Adv. Act. 2 (emphases added). Thus, the Examiner finds that Yu discloses
executing the first application, e.g., the print queue application, by the third
application, e.g., the print server application.
Appellant contends Yu does not disclose that print server application
319 “convert[s]” a task performance request into an execution instruction for
print queue application 320, and such an operation is not inherently or
necessarily performed by Yu’s system. App. Br. 16. Nevertheless, as noted
above, Yu clearly discloses that a print request may be received from a
wearable device by the print computer server and forwarded for printing by
print server application 319 to a printing device. Ans. 5 (citing Yu ¶¶ 21–
23, 73, 82, 83). Further, Appellant contends, “[t]here is no disclosure that
print queue application 320 receives a task performance request and converts
the task performance request into an execution instruction of the print server
application 319 (or vice versa).” App. Br. 16–17. However, print queue
application 320 queues documents for printing according to the instruction
received. Ans. 5–6 (citing Yu ¶¶ 82, 83, 96). Thus, we are persuaded that
Yu discloses the “converting” step, as recited in claim 1.
Appeal 2018-009040
Application 14/729,580

11

In addition, Appellant contends “conversion of a document to another
format as described by Yu does not disclose the features of ‘converting, by
an execution of a third application installed in the host device, a task
performance request ... into an execution instruction of a first application
installed in the host device’.” Reply Br. 2. In particular, Appellant contends
the following characterization of Yu by the Examiner is erroneous:
The wearable device, by using the 2nd application, request a task
to the host device in order to convert, by using 3rd application,
and “forward” said requested task to the image forming apparatus,
wherein said “forward” said requested task, by using a 1st
application, includes instructions (e.g., [page description
languages (PDLs)]) in order to force (instruct) the image forming
apparatus perform the task, in which is originally requested from
the wearable device . . . a method of controlling an operation of a
printer by using a wearable device (hereinafter ‘client’) connected
to a print server computer 300, the method comprising: adapting,
by running a print server application 319 employed in the print
server computer 300, a print request (¶0073) to convert and then
forward in order to make the printer understand the request and
perform the job (task performance).
Id. (italics added, ellipsis by Appellant) (quoting Ans. 3). Thus, we are
persuaded, although the first application may “include” instructions to
convert a document into another form, e.g., PDL, it is not limited to such a
form conversion.
Appellant further contends Yu fails to disclose that print server
application 319, i.e., the “third application,” executes print queue application
320, i.e., the “first application,” as recited in claim 1. App. Br. 18–19; Reply
Br. 3–5. Appellant does not interpret the term “execute,” but contends that
forwarding a document by print server application 319 is not an execution,
and there is no disclosure that print server application 319 executes print
queue application 320. Reply Br. 4; see App. Br. 18. Thus, Appellant
Appeal 2018-009040
Application 14/729,580

12

contends the Examiner finding that print server application 319 executes
print queue application 320 is based on unsupported speculation. Reply Br.
4 (citing Ans. 5–6). We disagree.
Generally, “to execute” means “to carry out,” “to perform,” or “to run
(a computer program) or process (a command).” RANDOM HOUSE
WEBSTER’S COLLEGE DICTIONARY, 460 (2nd Random House ed. 1999).
Another relevant definition of to “execute” is “[t]o perform an instruction.”
MICROSOFT COMPUTER DICTIONARY at 200. Appellant does not contend that
the Specification imposes a narrower interpretation on the term “execute.”
See In re Morris, 127 F.3d 1048, 1053 (Fed. Cir. 1997) (“[T]he PTO applies
to the verbiage of the proposed claims the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” (emphasis added)).
The Examiner finds Yu discloses that the mobile computer, e.g., the
host device, may provide the output document, prepared by the print server
application, directly to the print queue, run or processed by the print queue
application. Ans. 5 (citing Yu ¶¶ 73, 82, 83); see Yu ¶¶ 171, 173. In
particular, Yu explains:
In at least one of the various embodiments, the mobile
computer may provide the output document directly to the
printer rather than providing the output document to the print
queue. In such cases, the mobile computer may be arranged to
send a status message to the print queue to cancel or delete the
job, change the job status to completed.
Yu ¶ 171.
Appeal 2018-009040
Application 14/729,580

13

Further, Yu’s Figure 16 is reproduced below.

“[Figure 16] illustrates a flowchart for a process for a mobile printer
controller in accordance with at least one of the various embodiments.” Yu
¶ 17 (emphasis added). Yu explains:
At block 1610, in at least one of the various embodiments,
an output document may be generated and provided to a print
queue, or a printer device for printing. In at least one of the
various embodiments, the output document may be based on the
updated intermediate document [and] may include the edit infor-
mation that may have been added by the user during block 1608.
Appeal 2018-009040
Application 14/729,580

14

In at least one of the various embodiments, before
providing the output document to print queue or printer, the
mobile computer may generate an output document that may be
comprised of a particular PDL. In at least one of the various
embodiments, as described above, the output document may
comprised of a PDL that is compatible with the selected printer.
In some cases, the output document may be comprised of a
different PDL than the original document.
Id. ¶¶ 211, 212 (emphases added). Thus, we are persuaded Yu discloses that
print server application 319 executes print queue application 320. That is,
the print server application causes the print queue application to perform an
instruction, namely, to queue and eventually to print a document provided by
print server application 319 to print queue application 320.
Consequently, we are not persuaded that the Examiner erred in
rejecting claim 1, and we sustain the rejection of claim 1.
2. The Remaining Claims
As noted above, Appellant challenges the rejection of independent
claims 11 and 18 for the same reasons as claim 1. App. Br. 19–20; Reply
Br. 5. Claims 2, 3, and 5–10, 12–17, and 19–21 depend directly or indirectly
from the independent claims. Appellant does not challenge the rejections of
dependent claims separately from its challenge to independent claim 1. App.
Br. 20–22; Reply Br. 5–6. Because we are not persuaded that the Examiner
erred with respect to the anticipation rejection of claim 1, we also are not
persuaded that the Examiner erred with respect to the anticipation rejection
of claims 11 and 18 or with respect to the rejections of dependent claims 2,
3, and 5–10, 12–17, and 19–21; and, for this reason, we sustain those
rejections.
Appeal 2018-009040
Application 14/729,580

15

DECISIONS
The Examiner did not err in rejecting:
a. claims 1–3, 5, 7, 10–13, 15, and 18–21 as anticipated by Yu;
b. claims 6 and 14 as rendered obvious over the combined
teachings of Yu and Hansen;
c. claims 8 and 16 as rendered obvious over the combined
teachings of Yu and Kato; and
d. claims 9 and 17 as rendered obvious over the combined
teachings of Yu and Kawano.
2. Thus, on this record, claims 1–3 and 5–21 are unpatentable.
CONCLUSION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 1–3 and 5–21.
Claims
Rejected
35 U.S.C.
§
Reference(s) Affirmed Reversed
1–3, 5, 7,
10–13, 15,
and 18–21
102 Yu 1–3, 5, 7, 10–
13, 15, and
18–21

6 and 14 103 Yu and Hansen 6 and 14
8 and 16 103 Yu and Kato 8 and 16
9 and 17 103 Yu and Kawano 9 and 17
Overall
Outcome
1–3 and 5–21
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