Ex Parte Dehart

Board of Patent Appeals and Interferences

Apr 9, 2010

10659594 (B.P.A.I. Apr. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVE R. DEHART
____________________

Appeal 2009-006510
Application 10/659,5941
Technology Center 2400
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Decided: April 9, 2010
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Before JEAN R. HOMERE, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed September 10, 2003. The real party in interest is
Hewlett-Packard Development Co.
Appeal 2009-006510
Application 10/659,594

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 through 4, 6, 7,
14, 17 through 19, and 21 through 23 under authority of 35 U.S.C. § 134(a).
The Board of Patent Appeals and Interferences (BPAI) has jurisdiction
under 35 U.S.C. § 6(b). Claims 5, 8 to 13, 15, 16, and 20 are cancelled.

We affirm.

Appellant’s invention relates to a method of providing print quality
support to a user of a printer (Spec. 2, ll. 12-13). In the words of Appellant:
[A] device driver user interface contains a link to
support information regarding print quality issues.
. . . [A] link is provided at a location in the user
interface at which the user is most likely to see it
when seeking help for a print quality problem.
(Spec. 8, ll. 3-7).
In particular, information regarding proper usage
of the printing device as well as troubleshooting
information is presented to the user. . . . [T]his
support information can be presented in a
document, site, or page that is accessed via a
network and that can be viewed in a viewing
window of a network browser that executes on the
user computer.
(Spec. 8, ll. 13-17).

Claim 1 is exemplary, and is reproduced below:
1. A method for providing print quality support relative to a
printing device, the method comprising:

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executing a printing device driver on a computer so as to
present a printing device driver user interface to a user on the
computer, the printing device driver comprising a program
stored on the computer that is used to control operation of a
peripheral device separate from the computer;

presenting a link to print quality support in the printing
device driver user interface on the computer; and

providing print quality support information to the user in
a network browser separate from the printing device driver
interface on the computer when the link is selected by the user.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Venkatraman US 5,956,487 Sep. 21, 1999

REJECTION
The Examiner rejects claims 1 through 4, 6, 7, 14, 17 through 19, and 21
through 23 under 35 U.S.C. § 102(b) as being anticipated by Venkatraman .

Appellant contends that the claimed subject matter is not anticipated
by Venkatraman because the prior art reference fails to teach “executing a
printing device driver on a computer,” as recited in claim 1 (App. Br. 9,
bottom). The Examiner contends that each of the claims is properly rejected
(Ans. 18, middle).
The rejection will be reviewed in the order argued by Appellant. The
claims are grouped as per Appellant’s Briefs. We will only consider in this
opinion those arguments raised in Appellant’s Briefs. Arguments that
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Appellant could have made but chose not to are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The pivotal issue is before us whether Appellant has shown that the
Examiner erred in rejecting the claims under 35 U.S.C. § 102(b). The issue
specifically turns on whether Venkatraman teaches “executing a printing
device driver on a computer,” as recited in independent claim 1.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellant has invented a method, device, computer readable memory,
and system of executing a printing device driver on a computer so as to
present a printing device driver user interface to a user on the computer.
(See claim 1.) The claimed invention includes presenting a user with a
link displaying print quality information in a computer user interface
(id.). The user interface is separate from the printer (id.).
Venkatraman
2. The Venkatraman reference teaches executing a set of software for
communication and user interface to a peripheral device so that the
external computer system implements a screen-based user interface for
the device. (See col. 1, ll. 57-61.) Venkatraman also teaches presenting a
user with a URL showing print quality information in the computer user
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display via web browser (col. 7, ll. 5-22; col. 5, ll. 38-40). The display
and browser are separate from device 10. (See Fig. 2.) Device 10 is, for
example, a printer (col. 3, ll. 50-51).

PRINCIPLES OF LAW
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).

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

“This court has held in a number of decisions that a United States
patent speaks for all it discloses as of its filing date, even when used in
combination with other references.” In re Zenitz, 333 F.2d 924, 926 (CCPA,
1964) (internal citations omitted).

To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.
Cir. 1991).
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ANALYSIS
From our review of the administrative record, we find that the
Examiner presents his conclusions of unpatentability on pages 3 to 7 of the
Examiner’s Answer. In opposition, Appellant presents numerous arguments.

Arguments with respect to the rejection
of claims 1 to 4, 6, 7, 14, 17 to 19, and 21 to 23
under 35 U.S.C. § 102(b) [R1]

Appellant argues that Venkatraman fails to teach the single limitation
“executing a printing device driver on a computer,” as recited in claim 1
(App. Br. 9, bottom). Instead, Appellant argues that Venkatraman discloses
a system in which a device 10 serves web pages to a computer that can be
used to access device functions (id.).
In reply, the Examiner points out in the Answer that Venkatraman
teaches execution of a driver where a web browser is executed on a
computer connected to a peripheral device (Ans. 3, middle). For example,
Venkatraman’s peripheral device is a printer (FF#2).
After carefully considering the entire record before us, we agree with
the Examiner’s conclusion of unpatentability for the following reasons.
We find that Appellant has invented a method, device, computer
readable memory, and system of executing a printing device driver on a
computer so as to present a printing device driver user interface to a user on
the computer (FF#1). The claimed invention includes presenting a user with
a link displaying print quality information in a computer user interface (id.).
The user interface, as claimed, is separate from the printer (id.). In
comparison, Venkatraman teaches executing a set of software (Appellant’s
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claimed “printing device driver”) for communication and user interface to a
peripheral device (the “printer,” as claimed) so that the external computer
system (Appellant’s claim limitation “on a computer”) implements a screen-
based user interface (Appellant’s claimed “driver user interface”) for the
device (Appellant’s claimed “printer”) (FF#2). Venkatraman also teaches
presenting a user with a URL (Appellant’s claimed “link”) displaying print
quality information in a computer user display via a web browser (id.). The
display and browser (collectively Appellant’s claimed “interface”) are
separate from device 10 (Appellant’s claimed “printer”) (id.).
We find that Appellant’s claim limitation “executing a printing device
driver on a computer” is no different from a teaching in Venkatraman for
“execut[ing] a set of software for communication and user interface to the
device” (col. 1, ll. 58-59). Venkatraman teaches Appellant’s claim
limitation “executing a printer device driver” where the patent says: “The
external computer system usually executes a set of software for
communication and user interface to the device. The external computer
system may implement a screen-based user interface for the device.” (Col.
1, ll. 57-61.) More specifically, the “printing device driver,” as recited in
claim 1, reads on Venkatraman’s “set of software” since the software is for
communication and user interface to a device (col. 1, l. 59) that is a printer
(col. 1, l. 19). Accordingly, we find sufficient teachings in Venkatraman to
support the rejection [R1].
Appellant further argues that a “device driver,” as claimed, is not the
equivalent of a web browser that downloads pages served by a device, such
as Venkatraman’s printer (App. Br. 10, middle).
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We find unpersuasive Appellant’s argument that the claimed device
driver is not the same as Venkatraman’s web browser (id.). As we stated
above, Venkatraman teaches Appellant’s claim limitation “executing a
printer device driver” at column 1, lines 57 to 61 (FF#2). Since Appellant’s
claim limitation “executing a printer device driver” reads on Venkatraman’s
teaching for executing a set of software for communication and user
interface to a peripheral device (id.), such as a printer (see col. 1, l. 19), we
are not persuaded by Appellant’s argument regarding Venkatraman’s web
browser. We note that the predecessor to our guiding court stated: “This
court has held in a number of decisions that a United States patent speaks for
all it discloses as of its filing date.” In re Zenitz, cited above.
Next, Appellant contends that Venkatraman does not teach
“presenting a link to print quality support in the printing device driver user
interface on the computer,” as recited in claim 1 (App. Br. 13, middle).
Appellant contends that “[A]lthough Venkatraman may be said to generally
teach presenting a link in a user interface served by the device 10, such a
link is not provided ‘in the printing device driver user interface.’” (Id.).
In reply, the Examiner states in the Answer that Appellant’s claim
limitation “presenting a link to print quality support in the printing device
driver user interface on the computer” is taught in Venkatraman at column 7,
lines 5 to 22 (Ans. 6, bottom). Indeed, the patent says “hyperlinks defined in
the HTML file shown above direct the web browser to other web pages for
various printer support functions.” (Col. 7, ll. 5-7). In addition, we note
Venkatraman teaches that the “web browser includes a selection device that
enables a user to select objects and URL links rendered on the display 42.”
(Col. 5, ll. 38-40). We thus find that Appellant’s claim limitation
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“presenting a link to print quality support in the printing device driver user
interface on the computer” reads on Venkatraman’s display and web
browser (collectively Appellant’s claimed “user interface”), which present
URL links (Appellant’s claimed “link to print quality support”) to a user
(FF#2). Accordingly, we find no error.
Dependent claim 4 recites, in relevant part, “presenting a link in
association with a color tab.”
Regarding claim 4, Appellant argues: “Venkatraman does not even
discuss device driver user interfaces. [Venkatraman’s focus is] web pages
served by a printer to a computer browser. . . . Venkatraman says nothing
whatsoever about a ‘color tab’ . . . . Venkatraman also fails to literally
disclose a color tab . . . . Venkatraman’s … ‘user friendly interfaces’ [are
not] ‘color tabs,’ [as claimed].” (App. Br. 14, top). .
In reply, the Examiner finds that the patent teaches Appellant’s
claimed “color tab” at column 3, lines 35 to 41 (Ans. 4, middle). The
Examiner finds that the link displayed on a screen inherently has colors (id.).
We find unconvincing Appellant’s argument that Venkatraman fails to
literally teach a “color tab,” as claimed. We note that the reference
explicitly teaches web page links being illustrated by a representation of at
least one color: black. (See Fig. 3.) That is, since the reference may be
printed in black ink, a representation of the color black in the links of
Venkatraman’s Figure 3 suffices to meet Appellant’s claim limitation
“presenting a link in association with a color tab.” We thus find
unconvincing Appellant’s argument that “Venkatraman fails to literally
teach a color tab.” Accordingly we find no error in the rejection [R1] of
claim 4.
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Dependent claim 7 recites, in relevant part, “wherein providing print
quality support information comprises presenting information regarding at
least one of proper printing device operation and troubleshooting tips.”
Appellant further argues that “status information” and “printer service
contracts” are not the same as Appellant’s claimed “presenting information
regarding at least one of proper printing device operation and
troubleshooting tips,” as in claim 7 (App. Br. 14, middle).
The Examiner finds that Venkatraman’s teachings for presenting
printer manuals inherently include information and instructions regarding
proper printing device operation or troubleshooting tips (Ans. 10, bottom).
To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference and that it would be so recognized by persons of ordinary skill.
Continental Can Co. USA Inc. v. Monsanto Co., cited above.
In light of Continental Can Co. USA Inc., cited above, we find no
error in the Examiner’s user of inherency regarding printer manuals and their
contents. A person of ordinary skill in the art would have recognized that
printer manuals, such as the ones taught by Venkatraman, typically and
necessarily include “troubleshooting tips,” as claimed, for dealing with
printer errors that commonly arise. That is, Venkatraman’s teachings for
presenting printer manuals meet Appellant’s limitation “presenting
information regarding at least one of proper printing device operation and
troubleshooting tips” (claim 7) because Venkatraman’s teaching of
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presenting manuals inherently includes the presentation of troubleshooting
tips for printer device users. Accordingly, we find no error.
Next, Appellant contends that Venkatraman does not describe a
device driver that is stored on a computer (App. Br. 15, middle); that
Venkatraman “only describes web pages served by a printer to a computer
web browser” (id. at 17, middle); and that “Venkatraman does not teach ‘a
computer’ in communication with a printing device” (id. at 18, top).
We find unconvincing Appellant’s arguments above for at least the
above-stated reasons. (See supra.) In particular, we refer Appellant to our
analysis of the claimed “printing device driver” for further details (id.).
Finally, regarding claim 23, Appellant argues that “Venkatraman does
not teach a computer comprising a resident device driver” (App. Br. 18,
middle).
By merely reciting the claim language (id.), Appellant makes general
allegations of patentability regarding claim 23. Such general allegations fail
to demonstrate the Examiner’s error. Accordingly, we find no error
regarding the analysis of claim 23.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 4, 6, 7, 14, 17 to 19, and 21
to 23.

DECISION
We affirm the Examiner’s rejection [R1] of claims 1 to 4, 6, 7, 14, 17
to 19, and 21 to 23.
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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

peb

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528
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