Ex Parte Burget et al

Board of Patent Appeals and Interferences

Mar 30, 2012

10652010 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ART H. BURGET, BRENNEN W. STOLLFUS,
and STEVEN D. THORNE
____________

Appeal 2010-002853
Application 10/652,010
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
JENNIFER S. BISK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002853
Application 10/652,010

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from Examiner’s
rejections of claims 1-4, 6-38, and 40-46:
Claims 13-18, 30-38, and 40-46 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Slick (US 7,305,556 B2; Dec. 4, 2007 (filed Dec.
5, 2001)).
Claims 1-4, 6-12, and 19-29 stand rejected under 35 U.S.C. § 103(a)
as obvious over Slick in view of Imbrie (US 2002/0169002 A1; Nov. 14,
2002).1
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to controlling the use of a printer on a
network using keys that are provided on a per-client or per-user basis. See
Spec. ¶¶ [0007, 0017].
Appellants argue that the cited prior art fails to disclose every
limitation of the claims. In so doing, Appellants argue claims 13-18 as a first
group (App. Br. 10-11); claims 30-37 as a second group (App. Br. 12);
claims 38 and 40-46 as a third group (App. Br. 12-14); claims 1-4 and 6-12
as a fourth group (App. Br. 14-17); and claims 19-29 as a fifth group (App.

1 The “Grounds of Rejection” section on page 9 of Appellants’ Revised
Appeal Brief filed April, 23, 2009 (“App. Br.”) and the heading on page 14
of the “Arguments” section omit claims 11 and 12. The “Status of Claims”
section, however, states that claims 1-4, 6-38, and 40-46 stand finally
rejected and that Appellants appeal all of these claims. App. Br. 5. The
Examiner’s Answer states that “the status of claims contained in the brief is
correct.” Ans. 2. Thus, we assume the omission of claims 11 and 12 in the
noted sections is a clerical error, and we treat claims 11 and 12 along with
the rest of the claims that depend from independent claim 1.
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Br. 18-19). Appellants also separately argue claims 6 and 15, which
ultimately depend from independent claims 1 and 13, respectively (App. Br.
14).

CLAIMS 13-18 AND 30-37
Independent claim 13 is illustrative of the first and second claim
groups. Claim 13 is reproduced below with key disputed language
emphasized:
13. A method of controlling a user’s ability to cause a
client to send a print job to a printer, said method comprising
providing said client with a key specifically configured for said
user, wherein said client will refuse to submit a print job to said
printer for a particular user unless said key associated with that
user has been provided to said client.
Appellants assert that the Examiner erred in rejecting independent
claims 13 and 30 because Slick does not disclose that the client will ever
refuse to submit a print job. App. Br. 10-12. Instead, in the Slick system, the
user may still submit the print job without encrypting the print data or may
obtain a new copy of the printer public key and submit the print job. App.
Br. 11-12. The Examiner disagrees, pointing to several excerpts of Slick’s
specification and stating that “[w]ithout the user specific keys, a user will
not be able to decrypt the printer public key and submit print jobs.” Ans. 13-
14.
We agree with Appellants. When encountering a missing or incorrect
key, Slick describes the printer driver generating an error message “to
prompt the user to re-obtain a new, authenticated copy” of the public key.
Slick col. 9, ll. 44-47. The Examiner does not point to any language in Slick,
however, indicating that the client ever refuses to submit a print job.
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Accordingly, we will not sustain the Examiner’s rejection of independent
claims 13 and 30, or of claims 14-18 and 31-37, which depend from claims
13 and 30.

CLAIMS 38 AND 40-46
Claim 38, illustrative of the third claim group, is reproduced below
with the key disputed language emphasized:
38. A system controlling use of a printer on a network,
said system comprising:
a client connected to said network for generating a print
job for said printer;
means for providing a key to said client, wherein said key
is specific to a user of said client and is used to encrypt a print
job from said client to said printer; and
means on said client for encrypting said print job using
said key to produce an encrypted print job for transmission to
said printer.
Appellants assert that the Examiner erred in rejecting independent
claim 38 because Slick does not disclose using a user-specific key to encrypt
a print job. App. Br. 13; Reply Br. 7. The Examiner responds that without
the user-specific keys, a user of the Slick system will not be able to submit
encrypted print data to the printer. Ans. 14.
Appellants’ arguments are unpersuasive. Slick discloses the use of
two types of keys: a public key that is not specific to a particular user, and a
user-specific private key that is used only to access the public key. Slick col.
9, ll. 18-47. Because the user-specific key in Slick is used to decrypt the
public key, which, in turn, is used to encrypt the print data, the user-specific
key is used, albeit indirectly, to encrypt a print job. Claim 38 merely requires
that “said key is specific to a user of said client and is used to encrypt a print
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job.” The claim does not require that the user-specific key be the only key
used to encrypt the print data or that the user-specific key be used to directly
encrypt the print data. Accordingly, we sustain the Examiner’s rejection of
independent claim 38, as well as dependent claims 40-46, which are not
separately argued.

CLAIMS 1-4, 6-12, AND 19-29
Independent claim 1 is illustrative of the fourth and fifth claim groups.
Claim 1 is reproduced below with key disputed language emphasized:
1. A system controlling use of a printer on a network,
said method comprising:
with a print server, generating a key for a specific client
of said print server;
embedding said key in a printer driver;
providing said key to said specific client on said network
by installing said printer driver on said specific client, wherein
said key is used to submit a print job from said client to a
printer on said network.
Appellants assert that the Examiner erred in rejecting independent
claims 1 and 19 because Slick does not disclose generating a user-specific
key with a print server. App. Br. 14-19. In response, the Examiner states
that: (1) “Slick discloses that Microsoft CAPI generates a user-specific key
pair”; (2) “[p]rinter public key 25 is created and maintained by the
manufacturer of printer 20”; and (3) “[p]rinter private key 23 . . . is also
created by the creator of printer public key 25.” Ans. 16 (citing Slick col. 6,
ll. 26-36, 59-62). The Examiner adds that Imbrie was not used to teach this
feature in the rejection. Ans. 17.
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We agree with Appellants. The Examiner does not point to any
disclosure in the asserted references that teaches or suggests that the user-
specific key is generated by the print server. Accordingly, we will not
sustain the Examiner’s rejection of independent claims 1 and 19, or of
claims 2-4, 6-12, and 20-29, which depend from claims 1 and 19.

DECISION
The Examiner’s decision rejecting claims 38 and 40-46 is affirmed.
The Examiner’s decision rejecting claims 1-4 and 6-37 is reversed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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