Panshin, Stephen D. et al.

Patent Trials and Appeals Board

Jan 13, 2020

12994445 - (D) (P.T.A.B. Jan. 13, 2020)

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.
12/994,445 11/23/2010 Stephen D. Panshin 82572482 3379
22879 7590 01/13/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
WORKU, NEGUSSIE
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
01/13/2020 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 STEPHEN D. PANSHIN, JACOB GRUNDTVIG REFSTRUP,
and JEFFERSON P. WARD
Appeal 2019-000937
Application 12/994,445
Technology Center 2600
Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 5–11, 13–15, 21, 23, and 24.2 See
Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP. Appeal Br. 2.
2 Claims 4, 12, 16–20, and 22 were canceled previously. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The claims are directed to a replaceable printer component including
memory that stores data defined by tags and sub-tags. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A memory device to store data for a replaceable printing device
component comprising:
a non-volatile memory divided into a plurality of portions for
storing data, each portion defined by a tag stored in the memory,
wherein, within a first portion of the memory defined by a first tag,
data is stored in a plurality of sub-portions of the first portion, each
sub-portion defined by a sub-tag stored in the memory; and
an interface to provide communication between the memory
device and a printing device controller when the memory device is
installed in a printing system;
wherein each sub-tag indicates a type of the data and a length of
the data stored in the sub-portion defined by the sub-tag: and
wherein at least one sub-tag includes data indicating an unused
sub-portion.
REJECTIONS
Claims 1–3, 5–7, 9, 10, 14, 15, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Helterline et al. (US
6,264,301 B1; issued July 24, 2001) (“Helterline”) and Bergantino et al. (US
6,128,303; issued Oct. 3, 2000) (“Bergantino”). Final Act. 6–11.3
Claims 8, 11, 13, 23, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Helterline. Final Act. 11–13.

3 The Examiner’s rejection headings do not agree with the actual claims
rejected thereunder. See Final Act. 6, 11. We have made appropriate
corrections above.
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Application 12/994,445

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ANALYSIS
We disagree with Appellant’s contentions regarding the Examiner’s
rejections of the claims. 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 Answer in response to
arguments made in Appellant’s Appeal Brief. We highlight and address
specific findings and arguments below.
Regarding claim 1, Appellant contends that the cited references do not
teach or suggest the limitation “each sub-tag indicates a type of the data and
a length of the data stored in the sub-portion defined by the sub-tag.” Appeal
Br. 9. Appellant also argues that the Specification defines a “tag” as an
element that “identifies a predefined number and order of data fields
following the tag and the predefined length and meaning of each of the data
fields.” Id. at 9–10 (citing Spec. ¶ 20).
In response, the Examiner explained that “TAG_ID-A” in Figure 2 of
Appellant’s application corresponds to a first tag stored in memory and any
of the values (such as VALUE_A1, VALUE_A2) correspond to “a plurality
of sub-portions of the first portion, each sub-portion defined by a sub-tag
stored in the memory,” as recited in claim 1. Ans. 5. The Examiner further
explained that Figure 7 of Helterline is the same figure as Applicant’s Figure
2, but with different tag names. Thus, we understand the Examiner’s
mapping as reading the “first tag” of claim 1 on TAG ID1 of Helterline
Figure 7, and reading the “sub-tag[(s)]” on VALUE 1 and VALUE 2. Id.
We are not persuaded of error in the Examiner’s factual findings. The
Examiner has shown that Helterline discloses the recited “memory” and
“portions” of the memory, and that each portion of memory is defined by a
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tag that is stored in the memory. Non-Final Act. 6–7 (citing Helterline Fig.
4, col 4:33–36). The Examiner interprets the claim term “sub-tag” as
encompassing VALUE 1 and VALUE 2 of Figure 7 of Helterline. Ans. 3.
Appellant has not persuasively shown this interpretation is overly broad,
unreasonable, or inconsistent with the Specification.
Appellant’s reliance on paragraph 20 of the Specification as defining
the term “tag” does not alter our conclusion. See Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.”). Absent
an express intent to impart a novel meaning to a claim term, the words take
on the ordinary and customary meanings attributed to them by those of
ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334
F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
Here, the sentence of paragraph 20 cited by Appellant describes the
purpose of each tag in one embodiment of Appellant’s invention. The plain
language of claim 1 does not recite or require that the recited “tag” identify a
predefined number and order of data fields following the tag and the
predefined length and meaning of each of the data fields, as Appellant
argues. Thus, Appellant has not persuasively rebutted the Examiner’s factual
findings regarding the term “tag,” as recited in claim 1.
Appellant’s remaining arguments rely on distinguishing a sub-tag
from a data value stored in memory, but we do not find such distinction
persuasive. The informational content of the data stored in the memory of
claim 1, and the particular arrangement of the data among the recited “first
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portion” and “plurality of sub-portions” (as defined by the recited “first tag”
and “sub-tag[(s)]” respectively), are not positively recited as actually used to
change or affect any function(s) performed by the “memory,” “memory
device,” or “printing device component.”4
The data contained in the non-volatile memory is not positively
recited as actually being read, transferred, or otherwise communicated to the
“printing device component” to perform, change, or affect any “memory
device” or “printing device component” function, within the scope of claim
1, under a broad but reasonable interpretation.5,6 Therefore, the claimed
arrangement and informational content of the data to be stored in the
“memory" does not distinguish the “memory device” of claim 1 from the
prior art component that is the same except for the contents of the data
stored in memory.
The PTAB has provided guidance in decisions on the appropriate
handling of claims that differ from the prior art only based on “non-

4 We explained this in our decision in an earlier appeal (2014-007614)
involving Appellant’s application. Appellant’s subsequent amendment(s) to
claim 1 do not alter our analysis in this regard.
5 The recited “replaceable printing device component” is completely outside
the scope of the recited “memory device” of claim 1; therefore, the storage
of data in the “memory device” for the “replaceable printing device
component” appears to be merely an intended use of the claimed “memory
device.” “An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.”' Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
6 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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functional descriptive material [(NFDM)].” See Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information
being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”). See also MPEP § 2111.05 (9th
ed., Mar. 2014).7
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Helterline and Bergantino teaches or
suggests the disputed limitations of claim 1.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claim 9, not argued separately with particularity. See Appeal Br.
12. We also sustain the Examiner’s § 103(a) rejection(s) of dependent
claims 2, 3, 5–8, 10, 11, 13–15, 21, 23, and 24, not argued separately.
Appeal Br. 11–12, 13.
CONCLUSION
We affirm the decision of the Examiner rejecting claims 1–3, 5–11,
13–15, 21, 23, and 24.

7 In our analysis herein, we consider the extrinsic MPEP descriptions
regarding NFDM as underlying subsidiary facts that inform our claim
construction for all claims before us on appeal.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–7, 9,
10, 14, 15,
21

103(a) Helterline, Bergantino 1–3, 5–7,
9, 10, 14,
15, 21

8, 11, 13,
23, 24
103(a) Helterline 8, 11, 13,
23, 24

Overall
Outcome:
1–3, 5–11,
13–15, 21,
23, 24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED