Ex Parte Finnerty et al

Patent Trial and Appeal Board

Jun 12, 2014

10748352 (P.T.A.B. Jun. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/748,352 12/30/2003 Martin Finnerty SBL0029US 7797
60975 7590 06/13/2014
CAMPBELL STEPHENSON LLP
11401 CENTURY OAKS TERRACE
BLDG. H, SUITE 250
AUSTIN, TX 78758
EXAMINER
LEE, CHUN KUAN
ART UNIT PAPER NUMBER
2181
MAIL DATE DELIVERY MODE
06/13/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN FINNERTY, MINGTAO LIOU,
BLAIR T. WHEADON, XIA LIU, and YINGCHIEH LAN
___________

Appeal 2011-006630
Application 10/748,352
Technology Center 2100
____________

Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006630
Application 10/748,352

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This is an appeal
1
under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-5, 7-12, 14-19, 21-33, 35, 36, and 40-45. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to adding or supporting a device in an
enterprise data management application without the need to modify the
enterprise data management application to communicate with the
device. Spec. ¶ 0008. Specifically, the invention teaches simplifying the
addition of peripheral devices to a system by using a device manager, where
the device manager converts a received request to an appropriate language
used by the respective plurality of devices. Spec. ¶ 0009, ¶ 0036, Figure 1A.

Illustrative Claims
Independent claims 1 and 16 are illustrative of the recited invention,
and are reproduced below:
1. A method comprising:

receiving a first request to provide a requested service, wherein
the first request conforms to a request format defined in a first
language,
a module performing said receiving the first request is
configured to receive the first request from a plurality of source
types, and

1
Appellants represent that the Real Party-in-Interest is Oracle
Corporation. App. Br. 2.
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the plurality of source types comprises an applet executing on a
first remote network node, and a control module executing on a
second remote network node;

providing the first request to a language parser configured to parse the
first language;

obtaining results of parsing the first request from the language parser;

selecting a first device of a plurality of devices to provide the
requested service, wherein
each of the plurality of devices is configured to provide a
corresponding service,
at least two devices among the plurality of devices are
configured to provide the requested service, and
said selecting the first device is performed in response to said
obtaining the results of parsing the first request; and

converting the first request to a second request, wherein
the second request conforms to a request format defined in a
second language,
the first device is configured to provide the requested service in
response to receiving the second request, and
at least one of the plurality of devices is configured to receive
requests only in a format that is incompatible with the request
format defined in the second language.

16. A computer-readable storage medium
2
comprising:

receiving instructions to receive a first request to provide a requested
service, wherein
the first request conforms to a request format defined in a first
language,

2
We note that the broadest reasonable interpretation of claim 16, as
currently written, covers transitory computer-readable storage media.
Transitory embodiments of computer-readable storage generally are not
directed to statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007)
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the receiving instructions are further configured to receive the
first request from a plurality of source types, and
the plurality of source types comprises an applet executing on a
first remote network node, and a control module executing on a
second remote network node;

providing instructions to provide the first request to a language parser
configured to parse the first language;

obtaining instructions for obtaining results of parsing the first request
from the language parser;

selecting instructions to select a first device of a plurality of devices to
provide the requested service, wherein
each of the plurality of devices is configured to provide a
corresponding service,
at least two devices among the plurality of devices are
configured to provide the requested service, and
the selecting instructions are responsive to the obtaining the
results of parsing the first request; and

converting instructions to convert the first request to a second request
in a request format defined in a second language, wherein
the second request conforms to the second language, and
the first device is configured to provide the requested service in
response to receiving the second request, and

at least one of the plurality of devices is configured to receive requests
only in a format that is incompatible with the request format defined
in the second language.

Examiner’s Rejections
Claims 1-5, 7-12, 14-19, 21-33, 35-36, and 40-45 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Wakai et al. (U.S. Patent No.
6,587,126 B1) in view of Tso et al. (U.S. Patent No. 6,421,733 B1),
Iwamoto et al. (U.S. Patent No. 7,167,919 B2) and Toda (U.S. Pub. No.
2004/0030693 A1). Ans. 3.
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ISSUE 1
§ 103 Rejection of Claims 1-5, 7-12, 14-19, 21-33, 35-36, and 40-44
Appellants contend that the Examiner has failed to establish a prima
facie case of obviousness based on Wakai, Tso, Iwamoto, and Toda, because
the prior art fails to teach the limitations “selecting a first device of a
plurality of devices to provide the requested service, wherein each of the
plurality of devices is configured to provide a corresponding service,” and
“at least two devices among the plurality of devices are configured to
provide the requested service,” as recited in independent claim 1. App. Br.
10; Reply Br. 18-19.
Issue 1: Has the Examiner erred in finding that the combination of
Wakai, Tso, Iwamoto, and Toda teaches or suggests the invention as recited
in claims 1-5, 7-12, 14-19, 21-33, 35-36, and 40-44?

ANALYSIS
Appellants contend that “Toda would fail to disclose that ‘at least two
devices’ among the plurality of devices are ‘configured to provide the
requested service’.” App. Br. 12. Appellants explain that “Toda provides a
digital multifunctional apparatus (MFP). . . . Toda’s MFP purportedly
includes printer engine 31, scanner engine 32, and facsimile communication
unit 28, all connected via system bus 29.” Id. at 10, citing Toda at Figure 2.
According to Appellants, Toda does not teach or suggest that MFP includes
at least two print elements that each provide a printing service or that MFP
includes at least two scanning elements that each provide a scanning service.
Id. at 11. Appellants conclude that Toda’s elements 31 and 32 do not add up
to two that provide the same requested service. Id. at 12.
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Contrary to Appellants’ contentions, the Examiner finds that Toda
does teach the limitation “at least two devices among the plurality of devices
are configured to provide the requested service,” because Toda discloses two
devices (printer application 203 and scanner application 205) that can be
used in combination to provide a requested service (of copying). Ans. 22,
citing Toda at ¶¶ 0004-0016 and 0045-0077, Figures 1 and 2. The Examiner
reaches this finding because the claims do not require two devices that
provide the “same” requested service. Id. As noted by the Examiner,
“appellant’s claim requires ‘requested service’ and not the ‘same request
service . . . .’” Ans. 22. The Examiner concludes that Appellants’
arguments appear to be premised on limitations not recited in the claims. Id.
Appellants’ Specification does not support Appellants’ position that
the recitation in the claims that “each” of the plurality of devices is
configured to provide “a corresponding service” indicates that “at least two
devices” are each one configured to provide the “same” requested service.
Ans. 10-12. Appellants cite to ¶¶ 0011, 0062, 0073, and original claim 1 as
support for the claim limitation “at least two devices among the plurality of
devices are configured to provide the requested service.” App. Br. 3. We
note, however, these passages in the Specification only disclose (i) the
connection of a plurality of devices to a computer system (Spec. ¶ 0073),
and (ii) the conversion of a request to a second request in a second language,
wherein the second language is used for communication with one device
(Spec. ¶ 0011). Thus, Appellants have not pointed out sufficient disclosure
in the Specification to support an interpretation of “corresponding service”
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as the “same requested service.”
3
The broadest reasonable construction of
the claims is a construction that includes two devices acting together to
provide the requested service.
Under the broadest reasonable interpretation consistent with the
Specification, we agree with the Examiner that Toda teaches the recited
claim limitations at issue. Toda discloses two devices that can function
together to provide a requested service. Appellants have failed to adequately
explain why such disclosure does not fall within the scope of the claims as
currently written. Thus, Appellants have not persuaded us the Examiner
erred in finding Toda discloses the invention as recited in the claims.
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103(a). Appellants have not presented any substantially
different arguments for independent claims 9, 16, 23, and 30, which recite
similar limitations as claim 1. Accordingly, we sustain the rejection of
independent claims 9, 16, 23, and 30 under 35 U.S.C. § 103(a). Claims 2-5,
7, 8, 10-12, 14, 15, 17-19, 21, 22, 24-29, 31-33, 35, 36, and 40-44 depend,
directly or indirectly, from recited independent claims 1, 9, 16, 23, and 30.
Appellants have not presented any substantive arguments with respect to
dependent claims 2-5, 7, 8, 10-12, 14, 15, 17-19, 21, 22, 24-29, 31-33, 35,

3
Even if we construe the claims as argued by Appellants, so that the term
“requested service” means that two devices of the plurality must perform the
“same requested service,” the Examiner finds that Wakai reads on such a
construction. Ans. 21. Wakai discloses a plurality of devices coupled to the
computer system, wherein at least two devices are configured to perform the
same service. Id., citing Wakai at col. 15, l. 58-col. 16, l. 60, Fig. 7.
Specifically, Wakai discloses the use of printer 702, scanner 704, and multi-
function apparatus 705 that can function as a printer and/or a
scanner. Wakai at col. 15, l. 58-col. 16, l. 60, Fig. 7.

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36, and 40-44, thus, these claims fall with their respective independent
claims. Therefore, the Board also sustains the rejection of claims 2-5, 7, 8,
10-12, 14, 15, 17-19, 21, 22, 24-29, 31-33, 35, 36, and 40-44 under
35 U.S.C. § 103(a).
ISSUE 2
§ 103 Rejection of Claim 45
Appellants contend that the Examiner has failed to establish a prima
facie case of obviousness of claim 45 based Wakai, Tso, Iwamoto, and
Toda, because the prior art fails to teach the limitations “adding a new
device to the plurality of devices” (as recited in intervening claim 44) and
“the first device is the new device” as recited in dependent claim 45. App.
Br. 14-15; Reply Br. 21-22.
Issue 2: Has the Examiner erred in finding that the combination of
Wakai, Tso, Iwamoto, and Toda teaches or suggests the invention as recited
in claim 45?

ANALYSIS
Appellants contend that the multi-function apparatus disclosed in
Toda teaches elements that are combined in a single device, and therefore, a
new device cannot be added to the apparatus. App. Br. 14-15; Reply Br. 21-
22.
The Examiner, however, relies on the disclosure in Wakai for this
limitation. Ans. 23. Specifically, the Examiner finds that Wakai teaches a
network comprised of a plurality of devices, including a multifunctional
device, a printer, and a scanner. Id., citing Wakai Fig. 7. According to the
Examiner, when the multifunctional device is newly connected to the
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network (e.g., when the multifunction device is initially purchased/acquired
and connected), the multifunction device is a new device added to the
plurality of devices connected to the network. Id., citing Wakai at col. 13, l.
21- col. 16, l. 60; Fig. 1-2; Fig. 4; Fig. 7.
Neither intervening claim 44, nor claim 45, recites a temporal
limitation on when the first device must be added to the network to qualify
as a new device. Therefore, we agree with the Examiner’s findings.
Accordingly, we sustain the rejection of dependent claim 45 under 35 U.S.C.
§ 103(a).
ISSUE 3
The Combined References Are Incompatible
Appellants contend that the Examiner has failed to establish a prima
facie case of obviousness, because the teachings of the references are
inconsistent and one of skill in the art would not combine the
references. App. Br. 15-17.
Issue 3: Has the Examiner erred in finding that the combination of
Wakai, Tso, Iwamoto, and Toda teaches or suggests the invention as recited
in claims 1-5, 7-12, 14-19, 21-33, 35-36, and 40-45

ANALYSIS
Appellants contend that “a person having ordinary skill in the art
would not make the combination of references as proposed . . .” by the
Examiner, (App. Br. 15) because “Toda’s CPU 21 would need to be
modified so that it operates in response to actions by Tso’s language parser
22, among other modifications.” Id.; see App. Br. 15-17. Appellants
explain that (i) Toda’s CPU 21 gives commands to a plurality of devices
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(e.g., elements 28, 31, and 32) from Toda’s PC 1, and (2) Tso’s language
parser 22 is not suitable for operation with a plurality of devices, in which at
least one device is “configured to receive requests only in a format that is
incompatible with the request format defined in the second language.” App.
Br. 16. According to Appellants, in order to meet the claim limitations of
“selecting the first device . . . in response to said obtaining the results of
parsing the first request,” the CPU 21 of Toda would need (among others) to
be modified so that it operates in response to actions by the cited language
parser 22 of Tso, instead of Toda’s CPU 21. Id. Appellants contend,
however, that a person having ordinary skill in the art would see no need to
modify CPU 21, because Toda teaches that CPU 21 is functionally adequate
for the operations of communicating with and controlling Toda's elements
28, 31, and 32. Id. Appellants further contend that the additional modules
used with Tso’s parser 22, such as Tso’s transcode service provider 24,
would add unnecessary and unwieldy overhead to Toda’s CPU 21 and
overall design. Id. at 17.
The Examiner, to the contrary, finds that one of skill in the art would
have reason to look to the teachings of the cited references, because one
could combine Toda’s processing of different device commands via the CPU
into Wakai, Tso and Iwamoto’s multi-functional device. Ans. 24. Thus, the
Examiner’s rational is based on modifying Wakai, Tso and Iwamoto’s multi-
functional device to include Toda’s processing, and not modifying Toda
with Tso’s disclosure, as indicated by the Appellants. Id. The Examiner
concludes that Toda’s CPU would bring the benefit of more efficient control
and improved compatibility to Wakai, Tso and Iwamoto’s multi-functional
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device. Id., citing Toda at ¶¶ 0011, 0015. We agree with the Examiner’s
findings and rationale.
Furthermore, we are unpersuaded by Appellants’ contentions that the
Examiner erred in combining the teachings of Wakai, Tso, Iwamoto, and
Toda, because:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413 (CCPA 1981); see also In re Mouttet, 686 F.3d
1322, 1332 (Fed. Cir. 2012).
Accordingly, we sustain the rejection of claims 1-5, 7-12, 14-19, 21-
33, 35-36, and 40-45 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 1-5, 7-12, 14-19, 21-33, 35,
36, and 40-45 is 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)(1)(iv).

AFFIRMED

ELD