Ex Parte Cherry

Board of Patent Appeals and Interferences

Jan 15, 2009

09804607 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DARREL D. CHERRY
_____________

Appeal 2008-3062
Application 09/804,6071
Technology Center 2400
______________

Decided: January 15, 2009
______________

Before JOHN C. MARTIN, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 6, 8, 9, 11-16, and 21, which are all of the pending
claims, We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Filed March 12, 2001.
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A. Appellant’s invention
Appellant’s invention relates generally to printing and, in particular,
to systems and methods for facilitating remote printing of documents via a
printer, which may be communicatively coupled to the Internet, for example.
Specification 1:5-7.

B. The claims
The independent claims are claims 11 and 21, which read:
11. A print system for use with an intranet, the intranet
being configured to store information corresponding to
documents available for printing, said print system comprising:
a document retrieval system communicatively coupled
with the intranet, said document retrieval system being
configured to receive document reference information
corresponding to a document to be printed and printer
information corresponding to a network printer that is coupled
to the intranet via the Internet and, in response thereto, provide
print information corresponding to the document to be printed
to the network printer via the Internet such that the network
printer prints the document; and
a remote print request system configured to
communicatively couple with said document retrieval system,
said remote print request system being further configured to
retrieve printer information corresponding to the network
printer, the printer information including a network address for
the network printer, to receive document reference information
corresponding to documents available for printing via the
intranet, store the document reference information remotely
from the intranet, enable selection by a user of a document to be
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printed, and provide the printer information and the document
reference information corresponding to a document selected to
be printed to said document retrieval system such that the
document retrieval system communicates the information
corresponding to the document to the network printer without
further use of the remote print request system.
21. A method for remotely printing a document, said
method comprising:
communicatively coupling a personal digital assistant
(PDA) to an intranet, the intranet providing access to document
reference information corresponding to documents available for
printing;
storing the document reference information with the
PDA;
retrieving printer information corresponding to a network
printer using the PDA, the network printer being configured to
communicatively coupled [sic] with the intranet via the Internet,
wherein the printer information includes a network address for
the network printer; and
communicating, from the PDA, the printer information
and the document reference information corresponding to a
document to be printed to a document retrieval system located
on the intranet such that, responsive thereto, information for
printing the document is communicated to the network printer
without further use of the PDA, the information for printing the
document being communicated from the document retrieval
system to the network printer via the intranet and the Internet
with the document being printed at the network printer.

C. The references and rejections
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The Examiner relies on the following references:
Wolff US 6,738,841 B1 May 18, 2004
(filed Aug. 25, 1999)

Jaynes et al. (Jaynes) US 2002/0085515 A1 Jul. 4, 2002
(filed Dec. 28, 2000)
Claims 6, 11-13, 15, 16, and 21 stand rejected under 35 U.S.C.
§ 103(a) for obviousness over Wolff. Answer 3.
Claims 8, 9, and 14 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Wolff in view of Jaynes. Id. at 9.
Appellant separately argues the merits of only independent claims 11
and 21.

THE ISSUE
Generally speaking, Appellant has the burden on appeal to the Board
to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).

Specifically, the issues are:
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(1) Whether Wolff’s client 210, on which the Examiner reads the
recited “remote print request system” of claim 11, is used (or obviously can
be used) “to retrieve” the network address of the desired printer;
(2) Whether claim 11 requires that the recited “document reference
information corresponding to documents available for printing” (claim 11)
be stored in the “remote print request system” (client 210); and
(3) If the answer to Issue 2 is yes, whether Wolff discloses or
suggests storing such document reference information in client 210.

ANALYSIS
A. Principles of law
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A rejection under
35 U.S.C. § 103(a) must be based on the following factual determinations:
(1) the scope and content of the prior art; (2) the level of ordinary skill in the
art; (3) the differences between the claimed invention and the prior art; and
(4) any objective indicia of non-obviousness. DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir.
2006) (citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).
“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
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Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007).
Discussing the obviousness of claimed combinations of elements of prior art,
KSR explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter “involve[s] more than
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,” id.,
it will be necessary . . . to look to interrelated teachings of
multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
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Id. at 1740-41. “To facilitate review, this analysis should be made explicit.”
Id. at 1741. That is, “there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” Id.
(quoting Kahn, 441 F.3d at 988. See also PharmaStem Therapeutics Inc. v.
ViaCell Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007) (proponent of
obviousness based on combination of references must show “that a person of
ordinary skill in the art would have had reason to attempt to make the
composition or device, or carry out the claimed process, and would have had
a reasonable expectation of success in doing so.”) (citations omitted).
A rationale for combining or modifying reference teachings can be
based on common knowledge or common sense rather coming from the
references themselves. “[T]he [obviousness] 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.” KSR, 127 S. Ct. at 1741.

B. The merits of the rejection of claims 11 and 21
Wolf discloses a printer coupled to and for use with a network
providing access to interconnected, on-line documents in response to
document requests. Wolf, col. 2, l. 65 to col., 3, l. 1. The printer includes a
printer server that handles requests from one or more browser clients and is
independent of the one or more browser clients. Id., col. 3, ll. 1-3.
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The printer may print a document requested by a user or render a print
view image or display a view page on a browser client. Id., col. 4, ll. 65-67.
In addition, the printer may arrange and print a compound document from
hypertext linked documents that are located within a received document. Id.,
col. 4, l. 1 to col. 5, l. 3.
Figures 2 and 9 show two different embodiments of Wolf’s printer.
Id., col. 3, ll. 15-16, 39-40.
Although the Examiner initially based the rejection of claims 11 and
21 on only the Figure 9 embodiment (Final Action 3-5), in the Answer the
Examiner principally relies on the Figure 2 embodiment. Answer 4-7.
Figure 2 of Wolf is reproduced below.

Figure 2 is a block diagram of one embodiment of a printer 250 in a
network 200. Id., col. 5, ll. 23-24.
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Network 200 also includes client 210 and servers 220 and 230 and, in
one embodiment, network 200 comprises the Internet. Id., col., 5, ll. 25-27.
However, other embodiments are not limited to retrieving and publishing
documents on the “World Wide Web” or the “Internet”; the disclosed
teachings may be applied to various networks, data and document storage
and archival facilities, or other types of client/server systems that have
documents or other information available upon request. Id., col. 5, ll. 27-32.
Client 210 may comprise a program (e.g., a browser) that permits a
user to access documents over network 200 that are located on servers 220
and 230. Id., col. 5, ll. 34-36.
If a user requests, via client 210 or otherwise, that an HTML
document be printed on printer 250, the user can send a request for the
document to printer driver 255 within printer 250. Id., col. 6, ll. 1-4. Printer
driver 255 then obtains the document from a server 220 or 230 and renders it
as it might appear on printer 250 (or a low-resolution version of the
rendering). Id., col. 6, ll. 4-6.
Alternatively, client 210 may transmit a document request directly to
server 220 or 230. Id., col. 6, ll. 64-65. Subsequently, server 220 or 230
transmits the document data to printer server 255, where the document
handling operations and formatting are implemented. Id., col. 6, l. 65 to
col. 7, l. 1. In other embodiments, document handling operations and
formatting may be implemented at other servers (e.g., server 220 or 230)
prior to being received at printer server 255. Id., col. 7, ll. 1-4. For
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example, requests from client 210 may be received at server 220 or 230,
wherein all of the document handling and formatting operations are
performed prior to transmitting the document data to printer 250 for
download. Id., col. 7, ll. 4-8.
Printer server 255 may handle configuration tasks such as having the
user select a printer by presenting the user with a network page showing
printer locations and including a hypertext map of the printers. Id., col. 6, ll.
28-31.
A user may specify that printer server 255 organize and print
compound documents (e.g., a book) received at printer server 255. Id.,
col. 6, ll. 56-59. A user may select a book format by specifying that
documents to be printed should be followed by one or more levels of linked
documents. Id., col. 6, ll. 59-61.
Wolff also explains that “[s]erver 255 may be a peripheral including a
camera, scanner, facsimile machine, Web Kiosk, storage device, video or
audio server, etc.” Id., col. 5, ll. 65-67.

(a) Claim 11
As Appellant does not separately argue the preambular language of
claim 11, we will give it no further consideration.
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After finding that “Wolff did not explicitly state wherein the client
210 and servers 220 and 230 are coupled via an Intranet” (Answer 4), the
Examiner concluded that such a modification would have been obvious
because Wolff’s “disclose[s] that the network as used in the present
invention is not just limited [to] the Internet but the teachings may be
applied to ‘various networks’ (Wolf, col. 5, lines 25-33).” Id. Appellant
does not deny that it would have been obvious to modify Wolff so as to
satisfy the recited “intranet” and “Internet” limitations.
The Examiner (Answer 5-6) reads claim 11 on the embodiment in
which client 210 (the recited “remote print request system”) sends a
document printing request to one of servers 220 and 230 (the recited
“document retrieval system”), which in turn sends the requested document
information to printer 250 (the recited “network printer”). Wolff, col. 6, l.
64 to col. 7, l. 1. Appellant denies that client 210 performs all of the
functions required of the remote print request system. The first function
argued by Appellant is the requirement that the remote print request system
be “configured to retrieve printer information corresponding to the network
printer, the printer information including a network address for the network
printer.”2 The Examiner, initially addressing the embodiment in which
client 210 communicates directly with printer 250, found that “[at] col. 6,

2 Being “configured” to perform a function means being capable of
performing that function.
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lines 55-60, Wolff disclosed the client having the ability to communicate
with the printer, which would require the client to contain the network
address of the printer, otherwise, it would not be able to communicate with
the printer.” Answer 6. Then, addressing the embodiment in which client
210 sends the print request to server 220 or 230, the Examiner found that
“[at] col. 6, lines 64-67, Wolff disclosed the client having the ability to
communicate through server 220 or 230 to transmit document printing
request, which, as explained above, would require the printer information to
be communicated along with the request in order for the server to interpret
the request.” Answer 7. Appellant, addressing the embodiment in which
client 210 sends the print request directly to printer 250, argues that
the fact that Wolff's client (210) can communicate with the
printer does not mean that the client (210) is capable of
retrieving printer information that includes a printer's network
address. Wolff mentions nothing of how the client becomes
aware of an address for communicating [with] printer (250).
Based on Wolff's teachings, one can only presume that the
network address of the printer (250) is provided to the client
(210).
Reply Br. 4. This argument is unpersuasive. Appellant’s assertion that
Wolff mentions nothing of how the client becomes aware of an address for
communicating with printer 250 apparently fails to take into account Wolf’s
above-noted disclosure that printer server 255 may have the user select a
printer by presenting the user with a network page showing printer locations
and including a hypertext map of the printers. Wolff, col. 6, ll. 28-31.
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Selection of a printer at a particular location will necessarily involve
identifying that printer’s network address. Appellant’s assertion that
Wolff’s system is not “capable of retrieving printer information that
includes a printer's network address” (Reply Br. 4) is unconvincing because
the term “retrieve” is not defined in Appellant’s Specification and therefore
must be given its broadest reasonable interpretation, In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997), and Appellant has not demonstrated that the
broadest reasonable definition precludes that term from being read on Wolff.
To the contrary, the term “retrieve” as used in Appellant’s Specification
appears to be broad enough to include even the technique of manually
entering the printer’s network address into the remote print request system:
In block 506, retrieval of network printer information is
facilitated. For instance, network printer information may be
obtained by communicatively coupling the PDA and, in
particular, the remote print request system, with the printer that
is to facilitate printing of the selected document(s).
Communicative coupling may be accomplished with various
methodologies, including, for example, infrared
communication, physically coupling the PDA to a port of the
printer, Ethernet, the Internet, etc. In other embodiments,
network printer information required to facilitate the desired
printing may be directly provided to the remote print request
system, such as by the user manually inputting the IP address of
the printer into the PDA. Other network printer information
that may be utilized may include model number, print options,
and printer capabilities, among others.
Specification 13:10-19 (emphasis added).
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For the foregoing reasons, we are also unpersuaded by the similar
arguments Appellant directs at the embodiment on which the rejection is
based, in which client 210 sends the print request to server 220 or 230 rather
than to printer 250. Regarding that embodiment, Appellant argues:
Wolff does NOT disclose that the client (210) has the
ability to communicate through server 220 or 230 to transmit
document printing request. Instead, Wolff, col. 6, lines 64-67
plainly states that the client (210) may transmit print requests
directly to (not through) a server (220 or 230). As discussed
above that server (220 or 230) then transmits the document,
formatted or not, to the printer (250). Wolff mentions nothing
of how the server (220 or 230) becomes aware of an address for
communicating printer (250). Based on Wolff's teachings, one
can only presume that the network address of the printer (250)
is manually provided.
Reply Br. 5. We understand the last sentence in the above-quoted paragraph
to mean that the network address of the printer is manually provided to
server 220 or 230.
Although Wolff does not specifically describe using client 210 to
obtain the printer’s network address and send it to server 220 or 230, which
then sends the requested document information to that printer, we agree with
the Examiner’s analysis that such is necessarily the case. Answer 7. Client
210 is the only means through which the user can designate the desired
printer. Furthermore, for the reasons given above the “retrieve” language
appears to be broad enough to read on any manner of entering the printer’s
network address into client 210, including manual entry. Alternatively, in
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view of Wolff’s above-quoted discussion (column 6, lines 28-31) of using
client 210 to select the desired printer from a list of available network
printers provided to client 210 by a printer server to permit when client 210
sends print requests directly to the printer, it would have been obvious to
permit client 210 to select the desired printer in a similar manner when client
210 sends print requests to the printer via servers 220 or 230.
As explained below, Appellant further argues that Wolff fails to
disclose or suggest using the remote print request system to store document
reference information corresponding to documents available for printing, as
called for in the “receive” and “store” limitations in the following claim
language:
a remote print request system configured . . . to receive
document reference information corresponding to documents
available for printing via the intranet, store the document
reference information remotely from the intranet, enable
selection by a user of a document to be printed, and provide the
printer information and the document reference information
corresponding to a document selected to be printed to said
document retrieval system such that . . . .
Claim 11 (emphasis added).
The Examiner, addressing the “receive” and “enable” requirements,
explained that “[at] col. 6, lines 55-64, Wolff disclosed the user may specify
that the printer server organize and print compound documents, by allowing
the user to specify documents to be printed in a specific order, i.e. levels of
linked documents.” Answer 6-7. Regarding the “store” requirement, the
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Examiner explained that “[at] col. 5, lines 65-67, Wolff disclosed that the
print server may be used as storage, therefore storing the documents for
reference.” Answer 7. Discussing the “provide” limitation, the Examiner
explained that “[at] col. 6, lines 64-67, Wolff disclosed the client having the
ability to communicate through server 220 or 230 to transmit document
printing request, which, as explained above, would require the printer
information to be communicated along with the request in order for the
server to interpret the request.” Answer 7.
Appellant does not deny that client 210 is capable of receiving (e.g.,
for viewing) document reference information corresponding to documents
available for printing via the intranet. Instead, Appellant argues that client
210 does not store document reference information corresponding to
documents available for printing via the intranet:
Claim 11 recites that the remote print request system (not
the printer) is configured to receive and store document
reference information remotely from the intranet. That
document reference information corresponds to documents
available for printing. The fact that Wolff's print server can be
used for storage is irrelevant. Wolff makes no mention or
suggestion that the client (210) stores document reference
information corresponding to documents available for printing.
Reply Br. 4.3

3 Appellant does not separately argue the “remotely from the intranet”
language.
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We agree that the “document reference information” that the claim
specifies is stored remotely from the intranet corresponds to documents
available for printing. The Examiner did not hold otherwise. However, we
do not agree with Appellant’s assertion that “[t]he fact that Wolff's print
server can be used for storage is irrelevant.” Id. Although the claim requires
that the remote print request system be configured to receive document
reference information that corresponds to documents available for printing,
it does not require that such information be stored in the remote print request
system. Instead, the claim language is broad enough to permit the document
reference information to be stored, under the control of the remote print
request system, in a location other than the remote print request system,
provided that the other location is remote from the intranet. Appellant does
not deny that Wolff’s printer server when implemented as a storage device
constitutes such a location.
Furthermore, assuming for the sake of argument that claim 11 requires
storage of document reference information corresponding to documents
available for printing in the remote print request system, Appellant has not
explained why that limitation is not satisfied by client 210. As noted above,
client 210 may comprise a browser that permits a user to access documents
over network 200 that are located on servers 220 and 230. Id., col. 5, ll. 34-
36. While the browser in client 210 is being used to display a list of the
documents available on server 220 or 230, client 210 will inherently be
storing data that is being used to generate the displayed list of documents.
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Alternatively, Appellant has not explained why the Examiner erred in
finding that the “store” limitation is satisfied when client 210 is being used
to organize and print compound documents by allowing the user to specify
documents to be printed in a specific order. Wolff, col. 6, ll. 54-61. When
used for that purpose, client 210 will (or obviously can) store document
reference information identifying the selected documents until at least such
time as client 210 sends the print request to server 220 or 230. Appellant
has not explained why the claimed “documents available for printing”
cannot be read on the compound documents that have been selected for
printing.
The rejection of claim 11 is therefore affirmed.

(b) Claim 21
Regarding the rejection of claim 21, Appellant repeats the arguments
made regarding the rejection of claim 11, which have been answered above.
The rejection of claim 21 is therefore affirmed.

C. The rejection of dependent claims 6, 12, 13, 15, and 16
The rejection of dependent claims 6, 12, 13, 15, and 16 for
obviousness over Wolff is affirmed because Appellant has not separately
argued the merits of those claims. 37 C.F.R. § 41.37(c)(1)(vii) (2006).

D. The rejection of dependent claims 8, 9, and 14
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The rejection of dependent claims 8, 9, and 14 for obviousness over
Wolff in view of Jaynes is affirmed because Appellant has not separately
argued that rejection with respect to either of those claims, with the result
that those claims fall with independent claims 11 and 21. In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987).

DECISION
The rejection of claims 6 and 11-13, 15, 16, and 21 under
35 U.S.C. § 103(a) for obviousness over Wolff is affirmed, as is the § 103(a)
rejection of claims 8, 9, and 14 for obviousness over Wolff in view of
Jaynes.
The Examiner’s decision that claims 6, 8, 9, 11-16, and 21 are
unpatentable for obviousness over the prior art is therefore affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§§ 41.50(f) and 41.52(b).

AFFIRMED

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