Ex Parte Carroll

Board of Patent Appeals and Interferences

Aug 7, 2012

10632132 (B.P.A.I. Aug. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JEREMY JOHN CARROLL
______________

Appeal 2010-002452
Application 10/632,132
Technology Center 2600
______________

Before ROBERT E. NAPPI, MICHAEL R. ZECHER, and
JUSTIN BUSCH, Administrative Patent Judges.

NAPPI, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2010-002452
Application 10/632,132

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 14 and 18 through 23.
We affirm-in-part.
INVENTION
The invention is directed to a method to facilitate the reconfiguration
of printers on a computer based printing system. See Specification page 1.
Claim 1 is representative of the claimed invention under appeal and
reproduced below:
1. A method of printing at least one print job in a computer-
based printer system, the system comprising at least one printer
and at least one computer connected to said at least one printer,
wherein the at least one printer has a plurality of different
printing configurations at least one of which is manually
configurable and the at least one computer is capable of
generating said at least one print job, said at least one print job
having corresponding printing requirements, each printing
configuration being capable of satisfying one or more printing
requirements, the method comprising the steps of using the
printing system to:
i) create one or more print jobs;
ii) determine whether or not the print job or each print
job can be printed using said at least one printer by comparing
the printing requirements of the print job or each print job and
the current printing configurations of the at least one printer;
iii) when one or more of the print jobs cannot be
printed using said at least one printer on the basis of said
plurality of different printing configurations, automatically
determining at least one reconfiguration of the printer
configuration(s) that would be capable of satisfying the printing
requirement(s) of said one or more print job(s); and
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Application 10/632,132

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iv) performing such a reconfiguration of the printer
configuration automatically or providing information to enable
such a reconfiguration to be carried out manually.

REFERENCES
Van Oijen US 5,918,988 July 6, 1999
Owa US 6,348,971 B2 Feb. 19, 2002
Ueda US 7,046,383 B1 May 16, 2006

REJECTIONS AT ISSUE
The Examiner has rejected claim 14 under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
Answer 3.1
The Examiner has rejected claim 14 under 35 U.S.C. § 101 as drawn
to non-statutory subject matter. Answer 4.
The Examiner has rejected claims 1, 2, 5 through 14, and 18 through
23 under 35 U.S.C. § 103(a) as unpatentable over Owa in view of
Van Oijen. Answer 4-19.
The Examiner has rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Owa in view of Van Oijen and Ueda. Answer 19-22.

ISSUE
Appellant’s arguments directed to the rejection based upon 35 U.S.C.
§ 112 first paragraph, as failing to comply with the written description

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
September 11, 2009, the Appeal Brief dated June 22, 2009 and the Reply
Brief dated November 11, 2009.
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Application 10/632,132

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requirement, presents us with the issue: did the Examiner err in finding that
the Specification does not demonstrate that the Appellant had possession of
the claimed program stored on a computer readable medium?
Appellant’s arguments directed to the rejection based upon 35 U.S.C.
§ 101 present us with the issue: did the Examiner err in finding the claimed
program stored on a computer readable medium is drawn to non-statutory
subject matter?
Appellant’s arguments directed to the rejection based upon 35 U.S.C.
§ 103 present us with the issue: did the Examiner err in finding the
combination of the references teaches automatically determining at least one
reconfiguration of the printer configurations which would be capable of
satisfying the printing requirements as claimed?

ANALYSIS
Rejection under 35 U.S.C. § 112 first paragraph.
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s responses to Appellant’s arguments. We agree with Appellant’s
conclusion that the Examiner erred in finding that the Specification does not
demonstrate that the Appellant had possession of the claimed program stored
on a computer readable medium. Since Appellant’s Specification discloses
performing the method on a computer system, we consider that the skilled
artisan would recognize that the program to perform the method
implemented on such a computer system would be on some form of
computer readable medium. Accordingly, we consider the Appellant’s
Specification to demonstrate that Appellant had possession of a computer
Appeal 2010-002452
Application 10/632,132

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readable medium having stored thereon computer program code as recited in
claim 14. Thus, we will not sustain the Examiner’s rejection of claim 14
under 35 U.S.C. § 112 first paragraph.

Rejection under 35 U.S.C. § 101.
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s responses to Appellant’s arguments. We disagree with
Appellant’s conclusion that the claim recites statutory subject matter.
Appellant argues that the claim 14 is statutory as it is not directed to non-
functional descriptive material. We concur, however the claimed computer
readable medium is broad enough to encompass a transitory signal and thus
recites non-statutory subject matter.2 Accordingly, we sustain the
Examiner’s rejection of claim 14 under 35 U.S.C. § 101 as drawn to non-
statutory subject matter. However, as our finding relies upon a different
rationale than set forth by the Examiner, we designate our decision a new
ground of rejection.

2 The recitation in claim 14 of a computer readable storage medium is broad
enough to encompasses both non-transitory tangible media and transitory
propagating signals, i.e. the broadest reasonable interpretation includes
signals, which are not patent eligible under 35 U.S.C. § 101. In re Nuijten,
500 F.3d 1346, 1356-57 (Fed. Cir. 2007) and the Director’s Memo Subject
Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office
212 (Feb. 23, 2010).
Appeal 2010-002452
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Rejection under 35 U.S.C. § 103.
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s responses to Appellant’s arguments. We agree with Appellant
that the Examiner erred in finding the combination of the references teaches
automatically determining at least one reconfiguration of the printer
configurations which would be capable of satisfying the printing
requirements as claimed. The Examiner finds that Van Oijen teaches that
when a job size is larger than a certain criterion, a marker “c” appears in the
print job display so that the user will see that the job is not carried out. The
Examiner finds that this print display helps automatically determine if the
print criteria have been satisfied and, if not, gives the operator a chance to
select a suitable configuration. Answer 23-24. While we concur, we do not
find that this meets the limitations of claims 1, 12, 13, and 14, which recite
automatically determining at least one reconfiguration which would be
capable of satisfying the printing requirements. Rather, this teaching merely
identifies that a job did not meet the requirements. The Examiner has not
made any findings that this limitation is taught by any of the other references
of record. Accordingly, we will not sustain the Examiner’s rejection of
claims 1 through 14 and 18 through 23 under 35 U.S.C. § 103.

CONCLUSION
We affirm the Examiner’s rejection of claim 14 under 35 U.S.C.
§ 101. However, since our analysis pertaining to this rejection relies upon a
different rationale than set forth by the Examiner, we designate our decision
as a new grounds of rejection.
Appeal 2010-002452
Application 10/632,132

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We reverse the Examiner’s rejection of claim 14 under 35 U.S.C.
§ 112 first paragraph, and the Examiner’s rejections of claims 1 through 14
and 18 through 23 under 35 U.S.C. § 103.

DECISION
The Examiner’s rejection of claims 1 through 14 and 18 through 23 is
affirmed-in-part.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 CFR § 41.50(b) also provides that the appellant, 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) Reopen prosecution. 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. . . .

(2) Request rehearing. 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)

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