Ex Parte Blair et al

Board of Patent Appeals and Interferences

Sep 4, 2012

09992666 (B.P.A.I. Sep. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY P. BLAIR and
JAMES S. BOYCE
____________

Appeal 2010-009178
Application 09/992,666
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Timothy P. Blair, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-5 and 20-23. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

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Application 09/992,666

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SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for configuring data communication paths between a
central controller and a plurality of printing devices via a plurality of
appliances, the method comprising:
ensuring one or more appliances of the plurality of appliances
are active where an appliance is a computer remote from
the central controller configured to collect diagnostic data
from one or more of the plurality of printing devices and
to transmit the diagnostic data to the central controller;
for each of the printing devices, determining communication
capabilities with the one or more appliances to determine
communication paths between the plurality of printing
devices and the one or more appliances;
transmitting signals indicative of the communication
capabilities to the central controller; and
mapping respective communication paths between the central
controller and the printing devices via the one or more
appliances as a function of the communication
capabilities to obtain an automatic appliance failover to
allow diagnostic data to be collected from a selected
printing device by way of multiple appliances.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 13, 2009) and Reply Brief (“Reply Br.,” filed Apr. 14,
2010), and the Examiner’s Answer (“Answer,” mailed Feb. 23, 2010).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Basso
Blair

US 6,370,119 B1
US 2003/0097469 A1
Apr. 9, 2002
May 22, 2003
The following rejections are before us for review:
1. Claims 1, 4, and 5 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Blair.
2. Claims 20-23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Blair and Official Notice.
3. Claims 2 and 3 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Blair and Basso.
“‘Official Notice’ is taken that the concept and advantage of
automatic failover for devices is well known and expected in the art.”
Answer 6. [hereafter “Official Notice”]

ANALYSIS
The rejection of claims 1, 4, and 5 as being unpatentable over Blair.
Independent method claim 1 is drawn to a method for configuring
data communication paths between a central controller and a plurality of
printing devices via a plurality of appliances comprising a step of
“transmitting signals indicative of the communication capabilities to the
central controller.”
The Examiner found that Blair discloses the signal transmitting step.
Relying on the disclosure at paragraph [0003](see Answer 4), the Examiner
states that
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[Blair] teaches a monitoring process surveys the network to
identify all of the devices and the respective network addresses
of the identified devices. Mapping is performed for identifying
which of the devices are capable of communicating with each
other and certain devices are designated as data collection
devices, all based on device information obtained during the
monitoring process.
Answer 8-9.
We have reviewed the disclosure at paragraph [0003] of Blair,
reproduced below:
[0003] Conventionally, the monitoring process includes
surveying the network for identifying all of the devices and,
furthermore, the respective network addresses of the identified
devices. Since not all of the devices are capable of
communicating with each of the other devices in the network,
a mapping is then performed for identifying which of
the devices are capable of communicating with each other.
The mapping is transmitted to the central controller.
Importantly, the mapping is merely a manual process performed
by an operator and is based on the addresses of the devices
within the network. Therefore, the operator typically relies
on predetermined assumptions for determining which
devices are capable of communicating with each other. For
example, devices having similar addresses may be assumed
to communicate with one another. However, because such
assumptions are not always accurate, the mapping is often
incorrect.
Based on our review, we agree with the Appellants that the signal
transmitting step is not disclosed there. See, e.g., Reply Br. 3. Rather, Blair
there discloses manually transmitting to a central controller “a mapping for
identifying which of the devices are capable of communicating with each
other.” However, the claim calls for transmitting to a central controller
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signals indicative of the communication capabilities. In accordance with the
claim, “the communication capabilities” refers to a determination of the
communication path capabilities between a plurality of printing devices and
one or more appliances of each of the printing devices. “A determination is
made as to whether the identified device is capable of communicating with
the available intermediate collector.” Spec. [0011]. This is in contrast to
Blair’s method whereby “the operator typically relies on predetermined
assumptions for determining which devices are capable of communicating
with each other.” Para. [0003]. As Blair concedes, “such assumptions are not
always accurate, the mapping is often incorrect.” In our view, Blair’s
disclosure at paragraph [0003] does not disclose the signal transmitting step
as claimed.
For the foregoing reasons, we find that a prima facie case of
obviousness has not been made out in the first instance.

The rejection of claims 20-23 under 35 U.S.C. §103(a) as being
unpatentable over Blair and Official Notice.
Regarding the other independent claim – claim 20 – it is drawn to a
system comprising a “controller being configured to perform an automatic
appliance failover to a second appliance using the map of the
communication paths if the first appliance is disabled in order to receive the
diagnostic data relating to the selected printing device.”
The Examiner states that Blair fails to teach a controller performing
an automatic failover as claimed. Answer 5-6. However, according to the
Examiner,
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the concept and advantage of automatic failover for devices is
well known and expected in the art. It would have been obvious
to one of ordinary skill in the art to modify AAPA to include an
automatic failover because doing so would allow for diagnostic
data to be obtained from a different data collection device if a
failure occurs at the first data collection device.
Answer 6.
The Appellants disagree that the automatic failover feature as claimed
was well known at the time of the invention. App. Br. 15. The Examiner
responds by arguing, instead, that the automatic failover feature as claimed
amounts to an intended use and, apparently, need not be given patentable
weight. Answer 9.
We disagree that the automatic failover feature as claimed amounts to
an intended use. It describes, albeit in functional terms, the controller’s
configuration. Accordingly, to establish a prima facie case of obviousness,
the prior art would have to disclose or render obvious to one of ordinary skill
in the art a system comprising a “controller being configured to perform an
automatic appliance failover to a second appliance using the map of the
communication paths if the first appliance is disabled in order to receive the
diagnostic data relating to the selected printing device” (claim 20). In that
regard, notwithstanding the earlier position that automatic appliance
failovers are well known, one of ordinary skill would not be led to include
such a feature in the Blair system. This is so because, as explained above,
Blair’s system relies on “on predetermined assumptions for determining
which devices are capable of communicating with each other.” Blair, [0003].
Thus there is no active communication path such that “an automatic
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appliance failover to a second appliance using the map of the
communication paths [can be accomplished] if the first appliance is disabled
in order to receive the diagnostic data relating to the selected printing
device” (claim 20). Accordingly, we do not find that Blair discloses or
would render obvious to one of ordinary skill in the art a system comprising
a “controller being configured” to perform that function.
For the foregoing reasons, we find that a prima facie case of
obviousness has not been made out in the first instance.

The rejection of claims 2 and 3 under 35 U.S.C. §103(a) as being
unpatentable over Blair and Basso.
Claims 2 and 3 depend from claim 1. For the reasons stated above in
reversing the rejection of claim 1, we also do not sustain the rejection of
claims 2 and 3.

CONCLUSIONS
The rejections of claims 1, 4, and 5 under 35 U.S.C. §103(a) as being
unpatentable over Blair; claims 20-23 under 35 U.S.C. §103(a) as being
unpatentable over Blair and Official Notice; and claims 2 and 3 under 35
U.S.C. §103(a) as being unpatentable over Blair and Basso, are reversed.

DECISION
The decision of the Examiner to reject claims 1-5 and 20-23 is
reversed.
REVERSED
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Application 09/992,666

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