Ex Parte Burke et al

Patent Trial and Appeal Board

Mar 18, 2013

11054551 (P.T.A.B. Mar. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL MICHAEL BURKE and SCOTT McGLASHAN
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Appeal 2010-009887
Application 11/054,551
Technology Center 2600
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Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4-12, and 14-20. App. Br. 3.1 Claims 3 and 13 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Throughout this opinion, we refer to: (1) the Appeal Brief (“App. Br.”)
filed March 22, 2010; (2) the Examiner’s Answer (“Ans.”) mailed May 11,
2010; (3) the Reply Brief (“Reply Br.”) filed June 25, 2010; and (4) the
Specification (“Spec.”) filed February 10, 2005 as amended January 16,
2009.
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STATEMENT OF THE CASE
Invention
Appellants’ invention relates generally to a printer portal comprising a
telephony system arranged to receive voice commands from a telephonic
device and comprising a printing device. The telephony system and printing
device are coupled through network connections with a processor, electronic
storage, and an access module for controlling access to portions of the
portal. The processor is configured to selectively enable and disable
functionality of the portal based on proximity of the telephonic device as
compared with stored physical location information for the portal. See
generally Abstract and Spec. paragraph 022.
Independent claim 1, which is illustrative of the invention, is
reproduced below with the key disputed limitations emphasized:
1. A printer portal, comprising:
a network connection arranged to transfer user voice command
input and printer portal output;
a telephony system arranged to receive said user voice
command input via the network connection from a telephonic device
used by a user of the printer portal and to generate a printer portal
output via said network connection;
a printing device arranged to print documents stored at the
printer portal or documents accessible via the network and responsive
to the printer portal output from said telephony system based on said
user voice command input;
an access module arranged to control user access to portions of
said printer portal;
electronic storage for storing physical location information for
the printer portal; and
a processor configured to compare a received location of the
telephonic device used by the user with the printer portal's physical
location information, configured to determine the proximity of the
telephonic device to the location of the printer portal and, based on at
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least the proximity of the telephonic device to the printer portal,
configured to selectively enable and disable particular functionality of
the printer portal.
The Examiner relies on the following as evidence of unpatentability:
Uppaluru US 2002/0080927 A1 Jun. 27, 2002
Prueitt
Wu
US 2002/0184302 A1
US 2004/0001217 A1
Dec. 5, 2002
Jan. 1, 2004
Ito US 2005/0174585 A1 Aug. 11, 2005
(filed Feb. 8, 2005)

The Rejections
The Examiner rejected claims 1, 4-11, and 14-19 under 35 U.S.C.
§ 103(a) as unpatentable over Prueitt, Wu, and Ito. Ans. 4-18.
The Examiner rejected claims 2, 12, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Prueitt, Wu, Ito, and Uppaluru. Ans. 18-22.
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants 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) (2010).

ISSUE
The issue presented by Appellants’ arguments is: Does the
combination of Prueitt, Wu, and Ito, teach a printer portal’s processor
configured to enable and disable functionality of the printer portal
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selectively based on proximity of the telephonic device to the printer portal’s
physical location as recited in claim 1 and similarly recited in claim 10?2
ANALYSIS
The Examiner finds that Prueitt teaches the recited elements of claim
1 except that:
Prueitt et al. do not explicitly disclose in specific words with regard to
the limitation of ‘a processor configured to compares [sic] a received
location of the telephonic device used by the user with the printer
portal's physical location information’ and ‘based on at least the
proximity of the telephone device to the printer portal, configured to
selectively enable and disable particular functionality of the printer
portal’

(hereinafter the “Disputed Limitation”). Ans. 4-6. The Examiner finds that
Wu teaches the Disputed Limitation at paragraph 0029 and provides a
rationale for the proposed combination. Ans. 6-7. The Examiner notes that
the combination of Prueitt and Wu still fails to show that the Disputed
Limitation is “carried out by a processor comprised in the printer portal” but
finds this taught by Ito at paragraphs 0002 and 0064 and provides a rationale
for the proposed combination. Ans. 7-9.
Appellants argue that the combination does not teach the Disputed
Limitation. App. Br. 9-10. We agree.
For purposes of our analysis, the Disputed Limitation includes two
key aspects – (1) functionality of the printer portal is selectively enabled and
disabled by the processor of the printer portal (2) based on proximity of the
telephonic device to the printer portal. Thus, the proximity of the telephonic

2 Appellants’ contentions regarding the claims present additional issues.
Because we are persuaded of error with regard to the identified issue, which
is dispositive as to claims on appeal, we do not reach the additional issues.
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device is determined relative to the printer portal and the printer portal
modifies its own functionality based on that proximity.
The Examiner maps the Disputed Limitation to Wu’s paragraph 0029
as follows:
... It presents the top five choices [of print centers] in the order
of increasing distance from her current location (or “proximity
of the telephonic device to the location of the printer portal”).
From this list (“based on at least the proximity”), Jane picks a
print center 124 with the franchise name of, for example,
“ABC,” by clicking on the link for that print center (“selectively
enable and disable particular functionality of the printer
portal”). She is then connected to ABC's Web server 120 (or
now “enabled”) and is presented with ABC's Web page 122 to
enter her request (“based on at least the proximity, configured
to selectively enable and disable particular functionality of the
printer portal”). She then enters her print request and payment
information via the ABC Web page.
Ans. 32 (discussing ¶ 0029). We disagree. We find that Wu fails to show
aspect (1) above in that Wu’s selected print center (i.e., mapped to the
printer portal) does not enable and disable its own functionality (i.e., by
operation of a processor of the print center). Rather, Wu at best teaches the
cell phone may enable/disable the cell phone’s functionality to provide a
print request to the printer portal.
Further, even assuming arguendo that Wu’s print center enables and
disables its own functionality, the particular functionality is not
enabled/disabled based on proximity of the cell phone (i.e., telephonic
device) relative to the print center (i.e., printer portal) as required in aspect
(2) above. In other words, the selected print center in Wu does not
enable/disable its own functionality (if at all) based on how near or far the
requesting cell phone is from the print center (i.e., not based on proximity).
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See ¶ 0029. Rather, the telephonic device enables printing to a specific print
center (e.g., a printing functionality) based on Jane’s selection of a print
center from a list. The selected print center (i.e., printer portal) does not
enable/disable its own functionality based on proximity of the requesting cell
phone to the print center. See id. In like manner, Wu’s Web server does not
enable/disable its own functionality (if at all) based on proximity of the
requesting cell phone relative to the location of the Web server. See id.
Further, concerning claim 1, as correctly noted by the Examiner’s
rejection, the combination of Prueitt and Wu fails to show that the
processing to compare the location of the cell phone (i.e., telephonic device)
to the location of the print center (i.e., printer portal) to determine the
relative proximity is performed by a processor of the cell phone—not a
processor of the print center (i.e., not by the processor of the printer portal as
claimed). Ans. 7-8. The Examiner suggests this deficiency of Prueitt and Wu
is cured by combining teachings of Ito at paragraph 0064. Ans. 8-9. We
disagree. Ito’s paragraph 0064 reads in pertinent part (emphasis added):
Therefore, in the case where the camera-embedded mobile
phone 1 has such a function described above, the mobile phone
1 may detect the position thereof and send the information on
the position to the print server so that the print server can send
to the mobile phone 1 the information on the store closest to the
position. The information on the store is then displayed in the
recipient store selection screen 55 after reception of the
information from the print server.
Thus, Ito’s print server receives the mobile phone’s location and returns
information regarding stores that are closest to (proximate) the mobile phone
rather than determining proximity of the mobile phone (i.e., telephonic
device) relative to the print server (i.e., printer portal). Therefore, Ito does
not teach aspect (2) above—i.e., Ito does not teach a processor printer
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portal’s (i.e., print server) configured to enable/disable its own functionality
based on proximity of the telephonic device (i.e., mobile phone) relative to
the printer portal.
In view of the above discussion, we find that Prueitt, Wu, and Ito,
alone or in combination, fail to teach the Disputed Limitation
(enabling/disabling functionality of the printer portal based on proximity of
the telephonic device relative to the printer portal). Additionally, Uppaluru
has not been relied upon to cure the above-discussed limitations that are
found to be missing. See Ans. 18-22. We are therefore persuaded of error in
the Examiner’s rejection of independent claim 1 and dependent claims 2 and
4-9 not separately argued with particularity. Reply Br. 14, 19-20.
Independent claim 10 includes limitations commensurate with claim 1 and
was rejected for similar reasons. Ans. 11-16. We are therefore persuaded of
error in the Examiner’s rejection of claim 10 and dependent claims 11, 12,
and 14-20 not separately argued with particularity. Reply Br. 18-20.

DECISION
The Examiner’s decision rejecting claims 1, 2, 4-12, and 14-20 is
reversed.

REVERSED

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