Ex Parte Adkins et al

Board of Patent Appeals and Interferences

Jan 27, 2009

10334660 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CHRISTOPHER ALAN ADKINS, TIMOTHY STRUNK, and JOHN DENNIS ZBROZEK ____________ Appeal 2008-5354 Application 10/334,660 Technology Center 2600 ____________ Decided: January 27, 2009 ____________ Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and JOHN A. JEFFERY, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-117. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection under 37 C.F.R. § 41.50(b). Appeal 2008-5354 Application 10/334,660 STATEMENT OF THE CASE Appellants invented a licensing method for use with an imaging device (e.g., a printer, copier, etc.) and/or imaging media (e.g., a tank or cartridge that stores a supply of imaging substance, such as ink or toner). Specifically, a license monitoring mechanism tracks the amount of usage of the imaging media and prompts the user to acquire a new license from a vendor when the usage reaches a predetermined threshold. Once the new license is obtained, the user can renew an available supply of an imaging substance via an e-commerce transaction. Thus, the user can renew an available supply of imaging substance without leaving their home or place of business.1 Claims 1 and 2 are illustrative: 1. A licensing method associated with an imaging device that uses an imaging media in forming printed images on print media, said imaging media including an initial supply amount of an imaging substance, wherein a usage license is associated with at least one of said imaging device and said imaging media, said usage license defining a first usage threshold at which a consumer is prompted to acquire a new license; and a license monitoring mechanism communicatively coupled with said imaging device, said license monitoring mechanism performing the acts of: tracking an amount of usage of an imaging media by an imaging device; determining whether said amount of usage of said imaging media by said imaging device has reached a first usage threshold; and upon reaching said first usage threshold, then prompting said consumer to acquire a new license from a licensing vendor. 2. The licensing method of claim 1, wherein said prompting act further comprising determining whether said consumer wants to acquire said new license, and if said consumer wants to acquire said new license, then said license monitoring mechanism performing the act of establishing 1 See generally Spec. 2:2-6:5; Fig. 2. 2 Appeal 2008-5354 Application 10/334,660 communications with said licensing vendor for acquiring said new license from said licensing vendor. The Examiner relies on the following prior art references to show unpatentability: Pollocks, Jr. (“Pollocks”) US 6,351,618 B1 Feb. 26, 2002 Takemoto US 6,512,894 B2 Jan. 28, 2003 (filed Jun. 21, 2001) 1. The Examiner rejected claims 1-26, 29, 30, 32-40, 42-52, 97-102, and 105-107 under 35 U.S.C. § 102(e) as anticipated by Pollocks (Ans. 3- 5). 2. The Examiner rejected claims 74-96, 103, 104, and 113-117 under 35 U.S.C. § 102(e) as anticipated by Takemoto (Ans. 6-7). 3. The Examiner rejected claims 27, 28, 31, 41, 53-73, and 108-112 under 35 U.S.C. § 103(a) as unpatentable over Pollocks and Takemoto (Ans. 8-10). Rather than repeat the arguments of Appellants or the Examiner, we refer to the Briefs and the Answer2 for their respective details. In this decision, we have considered only those arguments actually made by Appellants. Arguments which Appellants could have made but did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). 2 Throughout this opinion, we refer to (1) the Appeal Brief filed Oct. 17, 2005 (supplemented June 7, 2007); (2) the Examiner’s Answer mailed Oct. 10, 2007; and (3) the Reply Brief filed Dec. 10, 2007. 3 Appeal 2008-5354 Application 10/334,660 THE ANTICIPATION REJECTION OVER POLLOCKS Regarding the Examiner’s anticipation rejection of representative claim 1,3 Appellants argue that Pollocks does not prompt the consumer to acquire a new license from a licensing vendor as claimed. Rather, Appellants contend, Pollocks merely discloses an end of life warning that provides time for the consumer to act accordingly (App. Br. 23-24; Reply Br. 4-8). The Examiner, however, contends that Pollocks’ warning message regarding license renewal fully meets the recited prompt (Ans. 10-11). Regarding claims 2, 8, and 26, Appellants argue that Pollocks does not disclose (1) determining whether the consumer wants to acquire a new license, and (2) establishing any communications with a licensing vendor, much less the licensing vendor establishing such communications as claimed (App. Br. 25, 29, 35) (Reply Br. 10-11). Regarding claims 3 and 4, Appellants argue that Pollocks does not disclose the usage license defines a licensed amount of an imaging substance that can be used during a term of the usage license where the initial supply amount is greater than the licensed amount of the imaging substance as claimed (App. Br. 26-27; Reply Br. 12-13). Regarding representative claim 6,4 Appellants argue that Pollocks does not disclose a memory storing (1) a first value representing an initial 3 Appellants argue claims 1, 5, 7, 10-15, 17-19, and 21 together as a group. See App. Br. 23-24. Accordingly, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii). However, since claim 7 depends from claim 6 (which is not in this grouping), we therefore group claim 7 with claim 6 and treat those claims separately in accordance with their appropriate grouping. 4 Claim 6 is representative of the group comprising claims 6 and 7. See n.3, supra, of this opinion. 4 Appeal 2008-5354 Application 10/334,660 amount of the imaging substance, and (2) a second value representing a licensed amount of the imaging substance as claimed (App. Br. 28). Regarding claims 9, 43-45, 47, 52, and 105, Appellants argue that Pollocks does not disclose tracking the consumption of the imaging substance as claimed, but rather merely counts the number of images (App. Br. 29-30, 40-41; Reply Br. 20-22). Regarding claims 16, 20, 46, and 50, Appellants argue that Pollocks does not disclose that the visual warning regarding license expiration is a gradual reduction of a density of the printed image as claimed (App. Br. 30- 32, 41-42) (Reply Br. 15-16). Regarding claims 22-25, 38-40, 48, and 49, Appellants argue that Pollocks does not disclose permitting use of the imaging device for a limited post-expiration amount as well as the various recited conditions associated with this limited post-expiration use. According to Appellants, once Pollocks’ license expires, no post-expiration printing is permitted (App. Br. 32-35, 38-40, 42-43; Reply Br. 16-18). Regarding claim 29, Appellants argue that while Pollocks mentions a “license,” Pollocks does not disclose that the usage license requires a combination of the imaging device with a particular one of the imaging media as claimed (App. Br. 36). Regarding independent claims 30 and 102, Appellants argue that Pollocks does not disclose a license monitoring mechanism facilitating acquisition of a new license as claimed, but merely displays a message that the cartridge should be replaced (App. Br. 36-37). 5 Appeal 2008-5354 Application 10/334,660 Regarding representative claim 97,5 Appellants argue that Pollocks does not disclose (1) prompting the consumer to acquire a new license upon reaching a first usage threshold, and (2) sending new license information associated with the new license as claimed (App. Br. 46-48). Regarding representative claim 100,6 Appellants argue that Pollocks does not disclose (1) receiving a request for a new license, and (2) sending new license values for receipt by the imaging device as claimed (App. Br. 48-49). The issues before us, then, are as follows: ISSUES Have Appellants shown that the Examiner erred in rejecting claims 1- 26, 29, 30, 32-40, 42-52, 97-102, and 105-107 under § 102 over Pollocks?7 This main issue turns on the following pivotal issues: 5 Appellants argue claims 97-99 together as a group. See App. Br. 46-48. Accordingly, we select claim 97 as representative. 6 Appellants argue claims 100 and 101 together as a group. See App. Br. 48 and 49. Although Appellants nominally argue claims 106 and 107 separately, the arguments presented for these claims are commensurate with those presented for claim 100 (App. Br. 49-50). Accordingly, we include claims 106 and 107 in this claim group and select claim 100 as representative. 7 Although Appellants presented arguments pertaining to an alleged anticipation rejection of claim 56 over Pollocks (App. Br. 45-46), the Examiner did not reject this claim under § 102, but rather rejected the claim under § 103 over the collective teachings of Pollocks and Takemoto. Compare Ans. 3 with Ans. 8-10. Appellants’ arguments are therefore inapposite to the anticipation rejection. Nevertheless, we consider these arguments to the extent that they apply to the obviousness rejection. 6 Appeal 2008-5354 Application 10/334,660 (1) Does Pollocks’ system prompt the consumer to acquire a new license from a licensing vendor as claimed in claim 1? (2) Does Pollocks’ system determine whether the consumer wants to acquire a new license and establish communications with a licensing vendor as claimed in claims 2, 8, and 26? (3) Does Pollocks disclose a usage license that defines a licensed amount of an imaging substance usable during a term of the usage license where the initial supply amount is greater than the licensed amount of the imaging substance as claimed in claims 3 and 4? (4) Does Pollocks disclose a memory that stores (a) a first value representing an initial amount of the imaging substance, and (b) a second value representing a licensed amount of the imaging substance as claimed in claim 6? (5) Does Pollocks’ system track consumption of the imaging substance as claimed in claims 9, 43-45, 47, and 105? (6) Does Pollocks disclose a visual license expiration warning that gradually reduces density of the printed image as claimed in claims 16, 20, 46, and 50? (7) Does Pollocks (a) permit the imaging device to be used for a limited post-expiration amount, and (b) disclose the various recited conditions associated with this limited post-expiration use as claimed in claims 22-25? (8) Does Pollocks disclose a usage license that requires a combination of the imaging device with a particular one of the imaging media as claimed in claim 29? 7 Appeal 2008-5354 Application 10/334,660 (9) Does Pollocks disclose a license monitoring mechanism that facilitates acquisition of a new license as claimed in claims 30 and 52? (10) Does Pollocks disclose (a) prompting the consumer to acquire a new license upon reaching a first usage threshold, and (b) sending new license information associated with the new license as claimed in claim 97? (11) Does Pollocks disclose (a) receiving a request for a new license, and (b) sending new license values for receipt by the imaging device as claimed in claim 100? FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence: 1. Pollocks discloses a printing and reproduction machine with a security system that ensures “customer replaceable units” (CRUs) (e.g., replaceable toner, developer, and photoreceptor cartridges) are used within their effective lifespan and according to any existing warranty or license (Pollocks, col. 1, ll. 6-10; col. 4, ll. 13-16). 2. To this end, the cartridges include memory devices known as “customer replaceable unit monitors” (CRUMs) that contain data identifying the cartridge as the correct type of cartridge for use with the machine (Pollocks, col. 4, ll. 13-19). 3. CRUMs 90, 92, 94 store or log a count of the number of images remaining on each cartridge 12, 14, 16 via an addressable memory. Each cartridge’s CRUM is initially pre-programmed with a maximum count X12, X14, and X16 reflecting the maximum number of images (prints or copies) that can be produced by the corresponding cartridge. Alternatively, the 8 Appeal 2008-5354 Application 10/334,660 CRUM can be programmed with a maximum count reflecting a licensed quantity of prints or images (Pollocks, col. 4, ll. 26-35; col. 6, l. 64−col. 7, l. 10; col. 6, ll. 15-32; Figs. 1-4). 4. When a cartridge reaches a predetermined quantity of images Y12, Y14, or Y16 (corresponding to a stored warning count W12, W14, W16) that is less than the maximum number of images X12, X14, and X16, the machine’s display panel displays a warning that the cartridge is nearing the end of its useful licensed life (Pollocks, col. 4, ll. 36-41; col. 7, ll. 17-25; col. 8, ll. 23-33). 5. This warning allows the customer time to order a new cartridge, renew a license, call a service technician, or take any other required action (Pollocks, col. 4, ll. 41-44; col. 8, ll. 30-33). 6. Following the warning, the machine will continue to produce images until it reaches the preset maximum number of images X12, X14, X16 warranted or licensed for a given cartridge. At that point, (1) the cartridge is disabled; (2) a corresponding message is displayed; and (3) further operation of the machine is prevented (Pollocks, col. 4, ll. 44-49; col. 7, ll. 14-16; col. 7, l. 60−col. 8, l. 4). 7. To further operate the machine after reaching a cartridge’s preset maximum number of images X12, X14, X16, the expended cartridge must be removed from the machine and replaced with a new cartridge (Pollocks, col. 4, ll. 49-52). To this end, the operator must (1) install a replacement cartridge, or (2) renew a license by purchasing a new cartridge or calling a service technician (Pollocks, col. 7, ll. 25-30). 8. The cartridges in Pollocks are designed with a safety factor enabling a predetermined number of additional images over and above the 9 Appeal 2008-5354 Application 10/334,660 maximum image count (Pollocks, col. 8, ll. 52-56). See also Pollocks, col. 7, l. 66−col. 7, l. 3 (noting that an “End of Life” message is displayed when the current image count on a cartridge is equal to or greater than the maximum number of images warranted or licensed for that cartridge) (emphasis added); Id. at col. 8, ll. 33-40 (same). 9. Pollocks indicates that reduced print quality can result when a CRU is used beyond its useful life (Pollocks, col. 2, ll. 49-67). PRINCIPLES OF LAW Anticipation is established only when a single prior art reference discloses, expressly or under the principles of inherency, each and every element of a claimed invention as well as disclosing structure which is capable of performing the recited functional limitations. RCA Corp. v. Appl. Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983). ANALYSIS Claims 1, 5, 10-15, 17-19, and 21 We find no error in the Examiner’s anticipation rejection of representative claim 1 which calls for, in pertinent part, the license monitoring mechanism to prompt the consumer to acquire a new license from a licensing vendor. As noted in the Findings of Fact section, Pollocks’ system visually warns the user when the machine’s cartridge or license is nearing the end of its useful licensed life (FF 4). This visual warning allows time for the customer to order a new cartridge or renew a license (FF 5). Absent the customer’s license renewal, the cartridge will inevitably be 10 Appeal 2008-5354 Application 10/334,660 disabled and the machine rendered inoperative (FF 6-7). As such, Pollocks’ visual warning fully meets prompting the consumer to acquire a new license from a licensing vendor as claimed. That Appellants readily admit that Pollocks’ warning is in the form of a “general prompt” (App. Br. 24; emphasis added) only bolsters our conclusion. In this regard, Appellants’ arguments regarding the generalized nature of this prompt (Id.; Reply Br. 5) are unavailing. Pollocks’ warning the consumer of the impending end of a cartridge’s licensed life (and the inevitable inoperability of the machine without a license renewal (FF 7)) effectively prompts the customer to acquire a new license from a licensing vendor. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 1. Therefore, we will sustain the Examiner’s rejection of that claim, and claims 5, 10-15, 17-19, and 21 which fall with claim 1. Claims 2, 8, and 26 We will not, however, sustain the Examiner’s rejection of claims 2, 8, and 26 which call for, in pertinent part, that the license monitoring mechanism establishes or facilitates communications with the licensing vendor for acquiring the new license. While Pollocks at least implicitly indicates that communications are established with a licensing vendor to acquire a new license by purchasing a new cartridge or calling a service technician (FF 5, 7), these communications are facilitated by the customer or the technician-not the license monitoring mechanism. 11 Appeal 2008-5354 Application 10/334,660 We reach this conclusion emphasizing that a “license monitoring mechanism” is a system component which, according to claim 1, is communicatively coupled with the imaging device. Pollocks simply fails to disclose that a system component, such as a license monitoring mechanism,8 facilitates communications with a vendor to acquire a new license. For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s anticipation rejection of claims 2, 8, and 26. Claims 3 and 4 We will, however, sustain the Examiner’s rejection of claim 3 which calls for, in pertinent part, that the usage license defines a licensed amount of imaging substance that is less than an initial supply amount. The cartridges in Pollocks are designed with a safety factor enabling a predetermined number of additional images over and above the maximum image count (FF 8). By virtue of this safety factor, Pollocks system therefore provides an “initial supply amount” of imaging substance that exceeds the licensed amount (i.e., corresponding to the maximum image count) to enable the additional images to be produced over and above the maximum image count. We therefore find Pollocks fully meets claim 3. We reach the opposite conclusion, however, with respect to claim 4. Although we find that the initial supply amount would be greater than the 8 Whether a “license monitoring mechanism” is construed as a means-plus- function limitation under § 112, ¶ 6, cf. Welker Bearing Co. v. PHD, Inc., __ F.3d __, 2008 WL 5205639 (Fed. Cir. 2008) at *4-5 (discussing the term “mechanism” with respect to functional claiming), is a question we need not reach because even a broader construction of “license monitoring mechanism” would exclude the customer or technician in Pollocks. 12 Appeal 2008-5354 Application 10/334,660 licensed amount as noted above, there is simply nothing in Pollocks that discloses that such an initial supply amount is at least two times greater than the licensed amount. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s anticipation rejection of claim 3, but have persuaded us of error in the Examiner’s anticipation rejection of claim 4. Claims 6 and 7 We will also sustain the Examiner’s rejection of representative claim 6 which calls for, in pertinent part, a memory that stores (a) a first value representing an initial amount of the imaging substance, and (b) a second value representing a licensed amount of the imaging substance. As we noted above in connection with claim 3, Pollocks’s safety factor enables the cartridges to produce a predetermined number of additional images over and above the maximum image count (FF 8). This predetermined number would have to be stored to perform the requisite comparison with the image count to produce the additional images. As such, the memory would store a “first value” representing an initial amount of imaging substance (i.e., the amount of imaging substance corresponding to the maximum image count plus the predetermined number of additional images (the safety factor)). The memory would also store a “second value” representing a licensed amount of imaging substance (i.e., the amount of imaging substance corresponding to the maximum image count). For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 6. Therefore, we will 13 Appeal 2008-5354 Application 10/334,660 sustain the Examiner’s rejection of that claim, and claim 7 which falls with claim 6. Claims 9, 43-45, 47, and 105 We will also sustain the Examiner’s rejection of claim 9 which calls for, in pertinent part, tracking imaging substance consumption. When images are produced in Pollocks, a certain amount of imaging substance (e.g., toner, developer, etc.) is consumed for that particular cartridge and machine. See FF 1. In view of this correlation, the respective image counts in Pollocks (FF 3-4, 6, 8) would, in effect, track imaging substance consumption. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 9. Therefore, we will sustain the Examiner’s rejection of that claim, and claims 43-45, 47, and 105 which fall with claim 9. Claims 16, 20, and 46 We will not, however, sustain the Examiner’s anticipation rejection of claims 16, 20, and 46 which call for, in pertinent part, that the warning is a gradual reduction in density of the printed image. As we noted previously, Pollocks’ warning that the cartridge is nearing the end of its useful life is displayed on the machine’s display panel (FF 4). Although Pollocks does indicate that reduced print quality can result when a CRU is used beyond its useful life (FF 9) as the Examiner indicates (Ans. 12), this passage hardly means that the specific warning noted above would necessarily include a gradual reduction in density. At best, Pollocks’ 14 Appeal 2008-5354 Application 10/334,660 reference to reduced print quality pertains to some point after reaching the preset maximum number of images X12, X14, X16 for a given cartridge. See FF 6. Pollocks’ warning, however, is before that count is reached. Indeed, the very purpose of the warning is to warn the user before reaching the maximum count (FF 4-5). To the extent that the Examiner’s position is predicated on the assumption that Pollocks’ imaging process would inherently consume imaging substance so as to cause a visually-perceptible reduction in density of the printed image before the maximum image count is reached (or even in the limited post-expiration “safety factor” period), the Examiner has provided no evidence on this record to prove that such a visually-perceptible reduction would necessarily occur in these periods. For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s anticipation rejection of claims 16, 20, and 46. Claims 22-24, 48, and 49 We will, however, sustain the Examiner’s rejection of claims 22-24, 48, and 49 which call for, in pertinent part, a limited post-expiration use of the imaging device. We find that Pollocks’ teaching that a predetermined number of additional images can be produced over and above the maximum image count (FF 8) fully meets the recited limited post-expiration use of claims 22-24, 48, and 49. Our previous discussion in connection with claim 3 applies equally here and we therefore incorporate that discussion by reference. Regarding claim 24, we add that, unlike claims 2 and 30, the license monitoring mechanism need not perform the recited step of determining 15 Appeal 2008-5354 Application 10/334,660 whether the consumer wants to acquire a new license. As such, the limitation is fully met by the customer’s act of renewing a license (FF 5, 7). Certainly, if the customer renews a license, it was determined that they wanted to acquire a new license. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of claims 22-24, 48, and 49. Claim 25 We will not, however, sustain the Examiner’s rejection of claim 25 which calls for, in pertinent part, disallowing imaging device operation when exceeding the duration associated with the limited post-expiration use. As we indicated previously, Pollocks’ post-expiration use is limited to a predetermined number of additional images over and above the maximum image count to provide a safety factor (FF 8). But there is nothing in Pollocks that indicates any duration associated with this post-expiration use. Simply put, time is not a factor with respect to Pollocks’ post-expiration use. Rather, this post-expiration use based solely on a predetermined number of images. For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s anticipation rejection of claim 25. Claims 50 and 51 We will also not sustain the Examiner’s rejection of claims 50 and 51 which call for warning the consumer via a gradual reduction of a density of the images for the reasons indicated previously with respect to claims 16, 20, and 46. 16 Appeal 2008-5354 Application 10/334,660 Claim 29 We will, however, sustain the Examiner’s rejection of claim 29 which calls for, in pertinent part, a usage license that requires a combination of the imaging device with a particular one of the imaging media. Pollocks teaches that the usage license is associated with a particular cartridge to provide a preset number of images from that cartridge (FF 3), and that the license is renewed by buying a new cartridge (FF 7). Significantly, Pollocks also notes that the cartridge’s CRUM contains data identifying the cartridge as the correct type of cartridge for use with the machine (FF 2; emphasis added). Thus, since (1) the usage license is associated with the cartridge, and (2) the cartridge indicates whether it is the correct type of cartridge for use with the machine, then the usage license would require a combination of an imaging device (machine) with a particular one of the imaging media (i.e., the “correct” cartridge). For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s anticipation rejection of claim 29. Claims 30, 32-40, 42, and 102 We will not, however, sustain the Examiner’s rejection of independent claim 30 which calls for, in pertinent part, a license monitoring mechanism that determines whether a consumer wants to acquire a new license and, if so, facilitates acquisition of a new license from a licensing vendor. Pollocks’ license monitoring mechanism counts the number of images produced by a cartridge and warns the user when the cartridge is nearing the end of its useful licensed life (FF 4). While this warning allows the 17 Appeal 2008-5354 Application 10/334,660 customer time to order a new cartridge, renew a license, call a service technician, or take any other required action (FF 5), it is simply a warning. It does not determine whether a consumer actually wants to acquire a new license. To make such a determination, some sort of user input would be required to inform the license monitoring mechanism of this desire so that, in response, the license monitoring mechanism could take the appropriate action, namely facilitate acquisition of the new license. Standing alone, issuing a warning in Pollocks does not determine whether the consumer actually wants to acquire a new license. Indeed, the user could very well not want a new license upon expiration. Although we find that Pollocks’ warning would, at least in part, facilitate acquisition of a new license since the alert would effectively initiate the renewal process (FF 5), we nonetheless fail to see how such a warning would determine whether the consumer actually wants to acquire a license. Apart from the warning itself, all subsequent actions in acquiring the license would be on the consumer’s part. Therefore, we cannot sustain the Examiner’s anticipation rejection of independent claim 30. We will also not sustain dependent claims 32-40 and 42 and independent claim 102 for similar reasons. Claim 52 We will, however, sustain the Examiner’s rejection of claim 52 which calls for the license monitoring mechanism to facilitate acquisition of a new license. As we indicated above with respect to claim 30, Pollocks’ warning would, at least in part, facilitate acquisition of a new license since the alert would effectively initiate the renewal process (FF 5). Although the renewal 18 Appeal 2008-5354 Application 10/334,660 process would thereafter be performed by the consumer and/or technician, the warning would at least be an initial step of this license acquisition process. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s anticipation rejection of claim 52. Claims 97-99 We will also sustain the Examiner’s rejection of representative claim 97 which calls for, in pertinent part, (1) prompting the consumer to acquire a new license upon reaching a first usage threshold, and (2) sending new license information associated with the new license. First, for the reasons previously indicated with respect to claim 1, we find the disputed prompting step in claim 97 to be fully met by Pollocks’ warning. Our previous discussion in that regard applies equally here and we incorporate that discussion by reference. Second, the scope of the second disputed limitation calling for sending new license information does not preclude renewing a license in Pollocks (FF 7). Simply put, the license renewal process in Pollocks would involve sending new license information associated with the new license. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 97. Therefore, we will sustain the Examiner’s rejection of that claim, and claims 98 and 99 which fall with claim 97. 19 Appeal 2008-5354 Application 10/334,660 Claims 100, 101, 106, and 107 We will also sustain the Examiner’s rejection of claim 100 which recites, in pertinent part, (1) receiving a request for a new license, and (2) sending new license values for receipt by the imaging device. As we indicated previously with respect to claim 97, the license renewal process in Pollocks (FF 7) would involve sending new license information associated with the new license. Furthermore, this process would also involve receiving a request for a new license notwithstanding the customer’s or technician’s involvement in providing such a request to the appropriate vendor. See FF 5 and 7. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 100. Therefore, we will sustain the Examiner’s rejection of that claim, and claims 101, 106, and 107 which fall with claim 100. THE ANTICIPATION REJECTION OVER TAKEMOTO Regarding representative claim 74,9 Appellants argue that since Takemoto allows 70% of the initial toner supply to be used without a license, the reference does not disclose that the supply amount is usable only after issuance of a license as claimed (App. Br. 51-52; Reply Br. 24-25; 9 Appellants argue claims 74-76, 78, 79, 82, and 114 together as a group. See App. Br. 51-52. Although Appellants nominally argue claim 115 separately, the arguments presented for this claim are commensurate with those presented for claim 74 (App. Br. 60-61). Accordingly, we include claim 115 in this claim group and select claim 74 as representative. However, since claim 82 depends from claim 81 (which is not in this grouping), we therefore group claim 82 with claim 81 and treat those claims in accordance with their appropriate grouping. 20 Appeal 2008-5354 Application 10/334,660 emphasis added). The Examiner responds that the term “supply amount” can be broadly interpreted as 100% of the imaging substance (i.e., the full cartridge). With this interpretation, the Examiner contends that this full “supply amount” in Takemoto is useable only after licensing (Ans. 13). Regarding claims 77, 80, and 116, Appellants argue that Takemoto does not disclose determining whether an imaging media identification (ID) is new to the imaging device as claimed (App. Br. 52-53, 61; Reply Br. 26- 27). Regarding claims 81, 82, 103, and 104,10 Appellants argue that Takemoto’s license is a not a new license, but rather an initial license for a previously unlicensed cartridge that is in use (App. Br. 53-54, 59; Reply Br. 33-34). Appellants also argue with respect to claim 81 that Takemoto does not disclose binding the imaging media with the imaging device as claimed (App. Br. 53-54). Regarding representative claim 83,11 Appellants argue that Takemoto does not disclose the following recited limitations: (1) determining that an imaging media has been installed in an imaging device; (2) determining 10 Although Appellants argue claim 81 separately from claims 103 and 104 (see App. Br. 53-54 and 59), the arguments presented for claim 81 are commensurate with those presented for claims 103 and 104. Moreover, claim 82 depends from claim 81 as we indicated previously. Accordingly, we group claims 81, 82, 103, and 104 together and select claim 81 as representative. 11 Appellants argue claims 83-86, 90, 91, 93-96, and 117 together as a group. See App. Br. 54-55. Accordingly, we select claim 83 as representative. However, since (1) claim 90 depends from claim 89 (which is not in this grouping), and (2) claims 93-96 depend directly or indirectly from claim 92 (also not in this grouping), we therefore group (1) claim 90 with claim 89, and (2) claims 93-96 with claim 92, and treat those claims separately in accordance with their appropriate grouping. 21 Appeal 2008-5354 Application 10/334,660 whether an imaging media identification (ID) is new to the imaging device; and (3) reading imaging media usage data stored in an imaging media memory of the imaging media (App. Br. 54-55; Reply Br. 27-29). Regarding claim 87, Appellants argue that Takemoto does not disclose formatting an allocated portion of an imaging device memory as claimed (App. Br. 56). Regarding claim 88, Appellants argue that Takemoto does not disclose writing a first use expiration code to the imaging media memory when the first use has expired as claimed (App. Br. 57; Reply Br. 29-31). Regarding claims 89 and 92, Appellants argue that Takemoto does not determine whether the imaging media is not enabled, but rather determines if the cartridge is licensed (App. Br. 58). Regarding claim 113, Appellants argue that Takemoto does not leave a limited post-expiration mode and return to a normal imaging mode (App. Br. 59-60). The issues before us, then, are as follows: ISSUES Have Appellants shown that the Examiner erred in rejecting claims 74-96, 103, 104, and 113-117 under § 102 over Takemoto? This main issue turns on the following pivotal issues: (1) Does Takemoto disclose that a supply amount of an imaging substance is usable only after issuance of a license as claimed in claim 74? (2) Does Takemoto determine whether an imaging media identification (ID) is new to the imaging device as claimed in claims 77, 80, 83, 89, and 116? 22 Appeal 2008-5354 Application 10/334,660 (3) Does Takemoto acquire a new license as claimed in claims 81, 103, and 104? If so, does the new license bind the imaging media with the imaging device as claimed in claim 81? (4) Does Takemoto (1) determine that an imaging media has been installed in an imaging device, and (2) read imaging media usage data stored in an imaging media memory of the imaging media as claimed in claim 83? (5) Does Takemoto format an allocated portion of an imaging device memory as claimed in claim 87? (6) Does Takemoto write a first use expiration code to the imaging media memory when the first use has expired as claimed in claim 88? (7) Does Takemoto determine whether the imaging media is not enabled as claimed in claim 89 and 92? (8) Does Takemoto leave a limited post-expiration mode and return to a normal imaging mode as claimed in claim 113? FINDINGS OF FACT The record supports the following additional findings of fact (FF) by a preponderance of the evidence: 10. Takemoto discloses an image forming apparatus that is controlled based on a comparison between a process cartridge’s identification information and license information (Takemoto, Abstract). 11. In one embodiment, the image forming apparatus is a printer. In that embodiment, “[w]hen the process cartridge 51 is loaded onto the printer 50, image forming functions are automatically activated and the printer main body 100 is connected to a license server 81” via a network (Takemoto, col. 25, ll. 12-21; Figs. 5 and 6). 23 Appeal 2008-5354 Application 10/334,660 12. In Takemoto, the cartridge’s identification information (i.e., the manufacturing serial number and manufacturer’s cartridge information) is stored in the cartridge’s built-in memory. After the cartridge is loaded in the printer, the printer transmits the cartridge’s identification information to the license granting server 81 where it is compared with the license presence/absence judgment information in the server. Then, the server transmits the appropriate license information back to the printer (Takemoto, col. 25, ll. 22-37; Fig. 6). 13. After receiving the license information from the server, the printer determines whether a license is available.12 If not, the printer initiates various procedures involving, among other things, payment of usage fees to make such a license available. If, however, the user does not pay these fees, then the printer indicates that the cartridge is not licensed and informs the user that some functions will be restricted (Takemoto, col. 25, l. 38−col. 26, l. 46; Figs. 6-8). 14. One key restricted function resulting from the cartridge’s unlicensed status is shown in Figure 9. As shown in that figure, if (1) the license information associated with the cartridge indicates that it is “not licensed yet,” and (2) the user does not consent to pay the usage fee, then printer operation is stopped when the residual toner detecting means 52 detects the remaining toner to be 30%. A message is also displayed warning the user to obtain a license immediately or exchange the cartridge (Takemoto, col. 27, ll. 23-49; Fig. 9). 12 Takemoto explains that this status means that the cartridge is licensed (Takemoto, col. 12, ll. 53-55). 24 Appeal 2008-5354 Application 10/334,660 15. In various embodiments, Takemoto indicates that the residual toner detecting means 5213 is part of the cartridge 51. See Takemoto, Figs. 1, 3, and 5 (depicting arrow associated with cartridge 51 pointing towards boxes containing residual toner detecting means 52). PRINCIPLES OF LAW Claim terms are “generally given their ordinary and customary meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). And “the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art.” Id. at 1313. To determine the ordinary meaning of commonly understood words, it is entirely appropriate to cite a dictionary definition. Agfa Corp. v. Creo Products, Inc., 451 F.3d 1366, 1376 (Fed. Cir. 2006) (noting that general purpose dictionaries may be helpful when claim construction involves “little more than the application of widely accepted meaning of commonly understood words”). ANALYSIS Claims 74-76, 78, 79, 114, and 115 We will sustain the Examiner’s rejection of representative claim 74 which calls for, in pertinent part, that a supply amount of an imaging substance is usable only after issuance of a license. While Appellants are 13 Takemoto uses the term “residual toner detecting means” and “remaining toner detecting means” interchangeably to denote numeral 52. Compare col. 27, l. 31 with Figure 5. For consistency and clarity, we refer to numeral 52 as the “residual toner detecting means” throughout this opinion. 25 Appeal 2008-5354 Application 10/334,660 correct that Takemoto enables operation of the printer without a license for 70% of the toner within that unlicensed cartridge (FF 14), we nevertheless find no error in the Examiner’s interpretation of the term “supply amount” as corresponding to 100% of the toner in the cartridge (i.e., a full toner cartridge). In short, nothing in the claim precludes this interpretation of a full “supply amount.” As such, by stopping printer operation when the cartridge’s toner reaches 30% (id.), the full “supply amount” (i.e., the full cartridge) would not be usable without a license. In this situation, the disputed limitation of claim 74 is fully met by Takemoto. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 74. Therefore, we will sustain the Examiner’s rejection of that claim, and claims 75, 76, 78, 79, 114, and 115 which fall with claim 74. Claims 77, 80, and 116 We will also sustain the Examiner’s rejection of claims 77, 80, and 116 which call for, in pertinent part, determining whether an imaging media identification (ID) is new to the imaging device. We first construe the key term in the claim: “new.” At the outset, we note that the term “new” is not specifically defined in Appellants’ Specification. Accordingly, we construe the term in light of its ordinary and customary meaning. Phillips, 415 F.3d at 1312. Since the term “new” is a commonly understood word, we therefore rely on a general purpose dictionary in ascertaining its meaning. Agfa, 451 F.3d at 1376. Referring to 26 Appeal 2008-5354 Application 10/334,660 such a dictionary, the term “new” is defined, in pertinent part, as “recently obtained or acquired.”14 With this construction in mind, we turn to the prior art. In Takemoto, when the cartridge is loaded onto the printer, image forming functions are automatically activated and the printer is connected to a license server via a network (FF 11). Then, the cartridge’s identification information (i.e., the manufacturing serial number and manufacturer’s cartridge information) is transmitted to the server to ultimately obtain the appropriate license information (FF 12). Since this automatic functionality is (1) responsive to loading the cartridge in the printer (FF 11) and (2) based in part on the cartridge’s identification information (FF 12), this functionality effectively determines whether the cartridge’s ID is “new” to the imaging device (printer). In reaching this conclusion, we emphasize that by loading the cartridge in the printer (along with its associated identification information), the printer would then process that cartridge’s identification information. In so doing, the printer would effectively determine that the loaded cartridge and its associated identification information was “new” to the imaging device (i.e., it would determine whether the cartridge and its associated identification information was recently obtained or acquired) in automatically executing the functionality noted previously. Even if this cartridge was the same cartridge that was used previously (i.e., the same cartridge was reloaded in the printer), we would still reach the same conclusion. In that case, Takemoto’s printer would still determine that 14 The American Heritage® Dictionary of the English Language, 4th ed., 2000, available at http://www.bartleby.com/61/59/N0075900.html. 27 Appeal 2008-5354 Application 10/334,660 the cartridge was “new” to the printer (i.e., it would determine whether the reloaded cartridge’s identification information was recently obtained or acquired) in automatically executing the functionality noted previously. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of claims 77, 80, and 116. Therefore, we will sustain the Examiner’s rejection of those claims. Claims 81, 82, 103, and 104 We will also sustain the Examiner’s rejection of representative claim 81 which calls for, in pertinent part, acquiring a new license that binds the imaging media with the imaging device. Our previous discussion pertaining to our interpretation of the term “new” with respect to claims 77, 80, and 116 applies equally here and we incorporate that discussion by reference. We also find Appellants’ contention (App. Br. 54) that Takemoto’s license is not a new license, but rather an initial license, unavailing. Even if Takemoto’s license is an “initial” license as Appellants argue, it still fully meets our interpretation of a “new” license (i.e., a license that is recently obtained or acquired) given the broadest reasonable interpretation of the term “new” noted previously. We also find that this “new” license would effectively “bind” the cartridge’s identification with the printer since the license obtained would permit the user to use that printer for the remaining 30% of the toner remaining in the identified cartridge (i.e., the license would permit printing using the full amount of toner in the identified cartridge). See FF 14. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of claim 81. Therefore, we will sustain the 28 Appeal 2008-5354 Application 10/334,660 Examiner’s rejection of that claim, and claims 103 and 104 which recite commensurate limitations. We are also not persuaded of error in the Examiner’s rejection of claim 82 for these reasons as well as those previously discussed in connection with claim 74. Claims 83-86, 91, and 117 We will also sustain the Examiner’s rejection of representative claim 83 which recites, in pertinent part, (1) determining that an imaging media has been installed in an imaging device; (2) determining whether an imaging media ID is new to the imaging device; and (3) reading imaging media usage data stored in an imaging media memory of the imaging media. First, our previous discussion in connection with claims 77, 80, and 116 pertaining to Takemoto’s determining whether an imaging media ID is “new” to the imaging device applies equally here and we incorporate that discussion by reference. Second, the fact that image forming functions are automatically activated when the cartridge is loaded onto the printer and the printer is connected to a license server via a network under this condition (FF 11) fully meets the recited step of determining that an imaging media (cartridge) has been installed in the imaging device (printer). That is, but for loading the cartridge in the printer, the automatic license information acquisition functionality noted in Findings of Fact 11 through 14 would not occur. Therefore, to achieve this functionality, the installation of the cartridge in the printer would be determined. Even if we assume, without deciding, that printers can operate without determining whether a cartridge is installed as Appellants contend (App. Br. 29 Appeal 2008-5354 Application 10/334,660 55), Appellants have simply not provided evidence on this record that this would be the case in Takemoto. Rather, as noted above, we find that there is a causal connection between loading the cartridge in Takemoto and implementing the automatic functionality associated with that loaded cartridge. We also find the second recited step of claim 83 fully met by Takemoto since both the printer and the server read “usage data” that is stored in the cartridge. As noted previously, after the cartridge is loaded in the printer, the printer transmits the cartridge’s identification information to the license granting server where it is compared with the license presence/absence judgment information in the server (FF 12). For the printer to transmit the cartridge’s identification information to the server, it must extract that data from the cartridge’s memory (i.e., read that data) prior to transmission. Likewise, upon receipt, the server must read that transmitted data for further processing. While this data pertains to the cartridge’s stored identification information, this information nonetheless fully meets “imaging media usage data” in light of the term’s scope and breadth. First, the term essentially relates to the content of the data and therefore constitutes non-functional descriptive material. Such non-functional descriptive material, however, does not further distinguish the term structurally or functionally over prior art that otherwise renders the claims unpatentable.15 15 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte Nehls, No. 2007-1823, 2008 WL 258370 (BPAI 2008) (precedential), at *6- 10 (discussing cases pertaining to non-functional descriptive material). 30 Appeal 2008-5354 Application 10/334,660 Nevertheless, we note that the cartridge’s identification information in Takemoto includes the manufacturing serial number and the manufacturer’s cartridge information (FF 12). At a minimum, this information would provide some data related to usage of the cartridge, at least with respect to its capabilities. Furthermore, we disagree with Appellants (App. Br. 55) that Takemoto’s detecting the amount of residual toner in the toner detecting means 52 is not reading stored imaging media usage data as claimed. First, we note that Takemoto indicates that the residual toner detecting means is part of the cartridge (FF 15). Second, although we agree with Appellants that the residual toner detecting means detects the amount of residual toner, this detection would also involve reading stored data to implement its functions. We reach this conclusion emphasizing that numeral 52 is not merely a detector as Appellants seem to suggest, but rather it is a residual toner detecting means-a system component with the capability to determine the amount of toner remaining in the cartridge. To make these determinations (e.g., determining whether the cartridge has 30% toner remaining (FF 14)), the residual toner detecting means must be able to compare the detected amount of toner with a fixed standard (e.g., data representing a fixed amount of toner (100%)). As such, the residual toner detecting means would have to read stored cartridge “usage data” to make this determination. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 83. Therefore, we will 31 Appeal 2008-5354 Application 10/334,660 sustain the Examiner’s rejection of that claim, and claims 84-86, 91, and 117 which fall with claim 83. Claim 87 We will also sustain the Examiner’s rejection of claim 87 which calls for, in pertinent part, formatting an allocated portion of an imaging device memory if the imaging media ID is not new to the imaging device. First, our previous discussion with respect to claims 77, 80, and 83 applies equally here and we incorporate that discussion by reference. Irrespective of whether the cartridge was new or not, for Takemoto’s printer to transmit the cartridge’s identification information to the server (see FF 12), it must extract that data from the cartridge’s memory (i.e., read that data) prior to transmission as we indicated previously. Transmitting this data from the printer to the server would involve copying that data to an allocated portion of the printer’s memory (even if temporary). Furthermore, to enable copying this data-data that would have a particular format-to this memory would likewise involve formatting the memory so that it could accommodate this data. The disputed limitations are therefore fully met by Takemoto. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of claim 87. Therefore, we will sustain the Examiner’s rejection of that claim. Claim 88 We will also sustain the Examiner’s rejection of claim 88 which calls for, in pertinent part, writing a first use expiration code to the imaging media 32 Appeal 2008-5354 Application 10/334,660 memory when the first use has expired. As we indicated previously in connection with claim 83, for Takemoto’s residual toner detecting means in the cartridge to determine the amount of toner remaining, it must be able to compare the detected amount of toner with a fixed standard (e.g., data representing a fixed amount of toner (100%)). As such, for the residual toner detecting means to determine that the cartridge has 30% toner remaining (i.e., when printer usage expires with an unlicensed cartridge) (FF 14), data would be written to memory to perform the requisite comparison as part of this determination. Notwithstanding the fact that the term “first use expiration code” constitutes non-functional descriptive material since it merely pertains to data content, we nonetheless find that the data indicating that the cartridge has 30% toner remaining in Takemoto fully meets such an “expiration code” as this data would correspond to the point of printer usage expiration. Additionally, the term “first use” is fully met by Takemoto since each time a cartridge is installed that triggers the license acquisition functionality (see FF 11-14), it is a “first use” at least with respect to that installation. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of claim 88. Therefore, we will sustain the Examiner’s rejection of that claim. Claims 89, 90, and 92-96 We will also sustain the Examiner’s rejection of representative claim 89 which calls for, in pertinent part, determining whether the imaging media is not enabled if the imaging media ID is new to the device. First, our previous discussion with respect to determining if the imaging media ID is 33 Appeal 2008-5354 Application 10/334,660 new to the device in connection with claims 77, 80, and 116 applies equally here and we incorporate that discussion by reference. Second, the scope and breadth of the claim language does not preclude Takemoto’s determination of whether the cartridge is capable of printing beyond the detected 30% toner amount (see FF 14). At this point, the system would determine that the cartridge is unlicensed and therefore unable to print beyond this point (absent acquiring a license or changing the cartridge). Therefore, the system would determine at this juncture that the unlicensed cartridge is not enabled to print using the entire amount of toner. Takemoto therefore fully meets the claim. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 89. Therefore, we will sustain the Examiner’s rejection of that claim, and claims 90 and 92-96 which fall with claim 89. Claim 113 We will not, however, sustain the Examiner’s anticipation rejection of claim 113. Claim 113 depends from independent claim 112. Claim 112 was not rejected under § 102, but was instead rejected under § 103 based on the collective teachings of Pollocks and Takemoto (Ans. 8-10). For this reason alone, we cannot sustain the Examiner’s anticipation rejection of claim 113. THE OBVIOUSNESS REJECTION We now consider the Examiner’s obviousness rejection of claims 27, 28, 31, 41, 53-73, and 108-112 over Pollocks and Takemoto. The Examiner finds that Pollocks discloses all of the claimed subject matter except for (1) 34 Appeal 2008-5354 Application 10/334,660 acquiring a new license via an e-commerce transaction, (2) an encryption key storage module; and (3) a license authentication system. The Examiner, however, relies on Takemoto for teaching these features and concludes that the claims would have been obvious in light of the collective teachings of the references (Ans. 8-10). Regarding claims 27, 28, 31, 41, 53-55, 109, 110, and 112, Appellants essentially reiterate their position regarding Takemoto’s failure to disclose acquiring a new license and the recited information or values associated with a new license (App. Br. 62-66, 73-75). Regarding representative claim 56,16 Appellants argue that the cited prior art does not teach or suggest the following limitations: (1) a licensed amount of the imaging substance; (2) storage locations in the imaging media memory for storing a first value representing a licensed amount of the imaging substance; (3) a communications interface for facilitating communications with an imaging device driver; (4) an imaging recording unit interface communicatively coupled to each of (a) an embedded processor; (b) an image recording unit; and (c) a memory; (5) an encryption key storage module and embedded license authentication system (ELAS) communicatively coupled to each of (a) the communications interface; (b) a counter; (c) the imaging recording unit interface; and (d) an encryption key storage module (App. Br. 66-69; Reply Br. 34-35). 16 Appellants argue claims 56-60 together as a group. See App. Br. 66-69. Accordingly, we select claim 56 as representative. 35 Appeal 2008-5354 Application 10/334,660 Regarding representative claim 61,17 Appellants argue that the cited prior art does not teach or suggest: (1) an ELAS sending a message to an imaging driver that a usage license is expiring, and indicating to the imaging driver an amount of imaging substance remaining in an imaging media; and (2) the ELAS initiating a limited post-expiration use provision permitting limited post expiration use of the imaging device (App. Br. 69- 71). Regarding representative claim 64,18 Appellants argue that the cited prior art does not teach or suggest: (1) an ELAS of an imaging device setting an license ID number corresponding to a usage license associated with the imaging media; and (2) during the limited post-expiration use, a gradual reduction of a density of printed images occurs (App. Br. 71-73). The issues before us, then, are as follows: 17 Appellants argue claims 61-63 together as a group. See App. Br. 69-71. Although Appellants nominally argue claim 108 separately, the arguments presented for this claim are commensurate with those presented for claim 61 (App. Br. 73). Accordingly, we include claim 108 in this claim group and select claim 61 as representative. 18 Appellants argue claims 64-73 together as a group. See App. Br. 71-73. Although Appellants nominally argue claim 111 separately, the arguments presented for this claim are commensurate with those presented for claim 64 (App. Br. 74). Accordingly, we include claim 111 in this claim group and select claim 64 as representative. 36 Appeal 2008-5354 Application 10/334,660 ISSUES Under § 103, have Appellants shown that the Examiner erred in combining the teachings of Pollocks and Takemoto to arrive at the invention of claims 27, 28, 31, 41, 53-73, and 108-112? The issue turns on the following pivotal issues: (1) Have Appellants shown that the Examiner erred in finding the collective teachings of Pollocks and Takemoto teach or suggest (a) acquiring a new license, and (b) information or values associated with a new license recited in claims 27, 28, 31, 41, 53-55, 109, 110, and 112? (2) Have Appellants shown that the Examiner erred in finding the collective teachings of Pollocks and Takemoto teach or suggest the five disputed limitations of claim 56 noted above? (3) Have Appellants shown that the Examiner erred in finding the collective teachings of Pollocks and Takemoto teach or suggest: (a) an ELAS sending a message to an imaging driver that a usage license is expiring, and indicating the imaging driver an amount of imaging substance remaining in an imaging media; and (b) the ELAS initiating a limited post-expiration use provision permitting limited post expiration use of the imaging device as claimed in claim 61? (4) Have Appellants shown that the Examiner erred in finding the collective teachings of Pollocks and Takemoto teach or suggest: (a) an ELAS of an imaging device setting an license ID number corresponding to a usage license associated with the imaging media; and 37 Appeal 2008-5354 Application 10/334,660 (b) during the limited post-expiration use, a gradual reduction of a density of printed images occurs as claimed in claim 64? PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Discussing the question of obviousness of claimed subject matter involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727 (2007) explains that if the claimed subject matter cannot be fairly characterized as involving the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement, a holding of obviousness can be based on a showing that “there was an apparent reason to combine the known elements in the fashion claimed.” Id. at 1740-41. Such a showing requires some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). If the Examiner’s burden is met, the burden then shifts to the Appellants to overcome the prima facie case with argument and/or evidence. 38 Appeal 2008-5354 Application 10/334,660 Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). ANALYSIS Claims 27, 28, 31, 41, 53-55, 109, 110, and 112 We are not persuaded that the Examiner erred in rejecting claims 27, 28, 31, 41, 53-55, 109, 110, and 112 over the collective teachings of Pollocks and Takemoto. For the reasons indicated previously with respect to claims 77, 80, 81, 103, 104, and 116, we find Takemoto amply teaches (a) acquiring a new license, and (b) information or values associated with a new license. We further find no error in the Examiner’s findings regarding Takemoto’s teaching of an e-commerce transaction-a transaction that is reasonably suggested by the network-based printer-server relationship in Takemoto. See FF 11. Regarding claims 31 and 41, we also find that Takemoto reasonably suggests a license monitoring mechanism that determines whether a consumer wants to acquire a new license and therefore cures the previously- noted deficiencies of Pollocks with respect to independent claim 30. We also find no error in combining these teachings with those of Pollocks. Such a combination is tantamount to the predictable use of prior art elements according to their established functions-an obvious improvement. See KSR, 127 S. Ct. at 1740. For the foregoing reasons, we will sustain the Examiner’s obviousness rejection of claims 27, 28, 31, 41, 53-55, 109, 110, and 112. 39 Appeal 2008-5354 Application 10/334,660 Claims 56-60 We will not, however, sustain the Examiner’s rejection of independent claim 56. The Examiner’s position regarding the disputed limitations of these claims noted above is not a model of clarity. The Examiner, however, has identified various aspects of the references that are said to correspond to the disputed limitations of claim 56, namely with respect to the encryption key storage module and license authentication system (Ans. 14). While we can envision various components of Takemoto’s system (FF 10-15) as broadly constituting an “image recording unit interface” communicatively coupled to each of (a) an embedded processor; (b) an image recording unit; and (c) a memory, we fail to see how the cited prior art teaches or suggests the specific combination of these features along with the other limitations of the claim. Significantly, in addition to the above coupling of three elements, the claim further recites an embedded license authentication system (ELAS) communicatively coupled to each of (a) a communications interface; (b) a counter; (c) the imaging recording unit interface; and (d) an encryption key storage module. Simply put, the claim recites multiple limitations having specific interconnections of elements that the Examiner has simply failed to address with particularity. The Examiner has therefore failed to establish a prima facie case of obviousness for the disputed limitations of claim 56. For us to glean the Examiner’s position from the record before us would require us to resort to speculation. That we will not do. For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s rejection of independent claim 56. Therefore, we will not 40 Appeal 2008-5354 Application 10/334,660 sustain the Examiner’s rejection of that claim, and dependent claims 57-60 for similar reasons. Claims 61-63 and 108 We will, however, sustain the Examiner’s obviousness rejection of representative claim 61 which recites, in pertinent part, (1) an ELAS sending a message to an imaging driver that a usage license is expiring, and indicating the imaging driver an amount of imaging substance remaining in an imaging media; and (2) the ELAS initiating a limited post-expiration use provision permitting limited post-expiration use of the imaging device. Regarding the first disputed limitation, we find that Takemoto’s functionality regarding the restricted function which stops printer operation for an unlicensed cartridge when the residual toner detecting means detects the remaining toner to be 30% (FF 14) reasonably suggests the recited ELAS functionality. Although the cartridge itself is unlicensed in this condition, there is nonetheless a general “usage license” to print with 70% of the cartridge’s toner. This general “usage license” expires when the toner reaches 30%. Upon reaching this level of toner, the residual toner detecting means would indicate to the printer’s control system (i.e., the “imaging driver”) to stop the printer. We further note that Pollocks, too, teaches or suggests this feature of an ELAS. As we indicated with respect to claim 9, in view of the correlation between image counts and imaging substance consumption, the respective image counts in Pollocks (FF 3-4, 6, 8) would, in effect, track imaging substance consumption. Thus, the messages associated with these counts 41 Appeal 2008-5354 Application 10/334,660 sent to the machine’s control system (i.e., “imaging driver”) would be correlated with the amount of remaining imaging substance. We also find that Pollocks’ safety factor, which enables a predetermined number of additional images over and above the maximum image count (FF 8), reasonably teach or suggests the second disputed limitation pertaining to a limited post-expiration use. Our previous discussion in connection with claims 3, 4, 6, and 7 applies equally here and we incorporate that discussion by reference. Since this feature is merely a predictable use of prior art elements according to their established functions, we find no error in combining Pollocks’ teaching with Takemoto to arrive at the claimed invention. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner’s rejection of representative claim 61. Therefore, we will sustain the Examiner’s rejection of that claim, and claims 62, 63, and 108 which fall with claim 61. Claims 64-73 and 111 We will not, however, sustain the Examiner’s obviousness rejection of independent claim 64 which recites, in pertinent part, during the limited post-expiration use, a gradual reduction of a density of printed images occurs. For the reasons indicated with respect to claims 16, 20, 46, 50, and 51, we do not find any evidence on this record that a gradual reduction of a density in printed images would occur in the limited post-expiration use mode. Nor has the Examiner established a prima facie case of obviousness for such a feature. 42 Appeal 2008-5354 Application 10/334,660 For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s rejection of independent claim 64. Therefore, we will not sustain the Examiner’s rejection of that claim, and dependent claims 65-73 and independent claim 111 for similar reasons. New Ground of Rejection Under 37 C.F.R. § 41.50(b) Claim 113 is rejected under 35 U.S.C. 103(a) as being unpatentable over Pollocks and Takemoto. The collective teachings of Pollocks and Takemoto teach or suggest all limitations of independent claim 112. See Ans. 8-10; see also p. 39, supra, of this opinion (affirming the obviousness rejection of claim 112). The claim differs from the cited prior art in calling for leaving the limited post-expiration mode and returning to a normal imaging mode. Pollocks, however, teaches providing a safety factor for a cartridge that enables a predetermined number of additional images over and above the maximum image count (FF 8). This safety factor corresponds to the limited post-expiration mode. Pollocks further teaches that to further operate the machine after reaching a cartridge’s preset maximum number of images X12, X14, X16, the expended cartridge must be removed from the machine and replaced with a new cartridge (FF 7). This replacement would, in effect, return the machine to a normal imaging mode. In view of these collective teachings, ordinarily skilled artisans would therefore understand that following the limited post-expiration mode, replacing the cartridge would return the machine to a normal imaging mode. 43 Appeal 2008-5354 Application 10/334,660 CONCLUSIONS Under § 102, Appellants have not shown that the Examiner erred in rejecting claims 1, 3, 5-7, 9-15, 17-19, 21-24, 43-45, 47-49, 52, 74-101, 103- 107, and 114-117. Appellants have, however, shown that the Examiner erred in rejecting claims 2, 4, 8, 16, 20, 25, 26, 30, 32-40, 42, 46, 50, 51, 102, and 113 under § 102. Under § 103, Appellants have not shown that the Examiner erred in rejecting claims 27, 28, 31, 41, 53-55, 61-63, and 108-112. Appellants have, however, shown that the Examiner erred in rejecting claims 56-60 and 64-73 under § 103. We have also entered a new ground of rejection under § 103 for claim 113. ORDER The Examiner’s decision rejecting claims 1-117 is affirmed-in-part. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). That section provides that “[a] new ground of rejection... shall not be considered final for judicial review.” Section 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . 44 Appeal 2008-5354 Application 10/334,660 (2) Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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 37 C.F.R. § 41.50(b) ELD LEXMARK INTERNATIONAL, INC. INTELLECTUAL PROPERTY LAW DEPARTMENT 740 WEST NEW CIRCLE ROAD BLDG. 082-1 LEXINGTON, KY 40550-0999 45