Ex Parte Fritz et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10307680 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TERRY M. FRITZ and
DANA A. JACOBSEN
_____________

Appeal 2009-004795
Application 10/307,680
Technology Center 2600
______________

Decided: April 28, 2010
_______________

Before, ROBERT E. NAPPI, MARC S. HOFF, and
THOMAS S. HAHN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004795
Application 10/307,680

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 7-10, 12-19, 21-30.1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part, and we enter a new ground of rejection under 37
C.F.R. § 41.50(b) .

INVENTION
The invention is directed to a system that allows print jobs to be
accessed directly at the printer. In accessing the print job at the printer, the
user is able to preview a portion of the print job on the printer’s display in
the form of a thumbnail and select pages from the print job that the user
wishes to print. See Spec: 1-3. Claim 7 is representative of the invention
and reproduced below:
7. A system for printing a print job, said system comprising:
a printing device having a printing mechanism, a memory
storage device, and a display device housed together as a single
unit, the printing device being operative to receive information
corresponding to a print job from portable memory storage
devices temporarily placed in communication with the printing
device and to produce hardcopy corresponding to the print job,
the memory storage device being operative to store information
corresponding to the print job, and the display device being
operative as a user interface; and
a print preview system operative to receive information
corresponding to a request to preview at least a portion of the
print job and display a thumbnail graphical representation
corresponding to a designated page of the print job via the
display device, the thumbnail graphical representation
corresponding to the designated page being selectable such that

1 Claims 1-6, 11, and 20 were cancelled in an Amendment, filed April 30,
2007, in response to a Non-Final Office Action, mailed December 28, 2006.
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the designated page is printed without printing the entire print
job.
REFERENCES
Miyamoto US 20003/0197894 A1 Oct. 23, 2003
(filed Feb. 28, 2000)

Parulski US 7,027,172 B1 Apr. 11, 2006
(filed Aug. 15, 2000)

REJECTIONS AT ISSUE
Claims 26-30 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Ans. 3.2
Claims 7-10, 13-19, and 21-30 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Miyamoto. Ans. 4-11.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Miyamoto in view of Parulski. Ans. 11.

ISSUES
Rejection of claims 7-10, 13-19, and 21-30 under 35 U.S.C. § 102(e) as
being anticipated by Miyamoto
Appellants argue on pages 6-8 of the Appeal Brief that the Examiner’s
rejection of claims 7-10, 13-19, and 21-30 is in error. We select independent
claim 7 as representative of the group comprising claims 7-10, 13-19, and

2 Appellants do not mention or argue the § 101 rejection. Accordingly the
rejection of claims 26-30 under 35 U.S.C. § 101 is affirmed pro forma. See
MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”).
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21-30 since Appellants did not separately argue these claims with
particularity. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue that
Miyamoto does not disclose previewing an existing print job at the printer,
as recited in representative claim 7. App. Br. 6.
Thus, Appellants’ contentions with respect to claims 7-10, 13-19, and
21-30 present us with the issue: Did the Examiner err under § 102(e) in
finding that Miyamoto discloses previewing an existing print job at the
printer as recited in representative claim 7?
Appellants additionally argue on pages 8-9 of the Appeal Brief that
the Examiner’s rejection of claims 7-10, 13, 14 and 21-25 is in error. Again,
we select claim 7 as representative of the group comprising claims 7-10, 13,
14, and 21-25 since Appellants did not separately argue these claims with
particularity. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue that
Miyamoto does not disclose printing a page without printing the entire print
job. App. Br. 8.
Thus, Appellants’ contentions with respect to claims 7-10, 13, 14, and
21-25 present us with the issue: Did the Examiner err under § 102(e) in
finding that Miyamoto discloses printing a page without printing the entire
print job as recited in representative claim 7?
Lastly, Appellants argue on pages 9-11 of the Appeal Brief that the
Examiner’s rejection of claims 7-10, 13 and 14 is in error. Again, we select
claim 7 as representative of the group comprising claims 7-10, 13 and 14,
since Appellants did not separately argue these claims with particularity.
See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue that Miyamoto does not
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disclose integrating the print mechanism, memory, and display into one unit.
App. Br. 9.
Thus, Appellants’ contentions with respect to claims 7-10, 13 and 14
present us with the issue: Did the Examiner err under § 102(e) in finding that
Miyamoto discloses a printing mechanism, a memory storage device, and a
display device housed together as a single unit as recited in representative
claim 7?
Rejection of claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Miyamoto in view of Parulski
Appellants argue on page 11 of the Appeal Brief that the Examiner’s
rejection of claim 12 is in error. Appellants argue that this claim is
allowable based upon its dependency on independent claim 7. App. Br. 11.
Thus, Appellants’ arguments with respect to the Examiner’s rejection of
claim 12 present us with the issue: Did the Examiner err under § 103(b) in
finding that Miyamoto teaches or suggests the disputed limitations of claim
7?
FINDINGS OF FACT (FF)
Miyamoto
1. Miyamoto discloses an image processing apparatus that comprises an
image inputting device 1, an image display device 2, and a printer 9.
The image inputting device may be either a scanner or a CD-ROM.
The image display device includes Read Only Memory (ROM) 3,
Random Access Memory (RAM) 4, a microprocessor 5, and a screen
6. ¶¶ [0043]-[0044] and Fig. 1.
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2. Image data is inputted via the image inputting device and is stored in
the RAM as a print job. ¶ [0044] and Fig. 1.
3. The display screen displays a main screen image where the stored
images are displayed as thumbnails. Any or all of the images may be
selected by placing a check mark in the box associated with the
image. Once selected, the images may be displayed one at a time in a
preview pane. ¶¶ [0047]-[0048] and Fig. 4.
4. When the print button 15 is pressed, only the selected images are sent
to the printer to be printed. ¶ [0048] and Fig. 4.

PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).

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ANALYSIS
Rejection of claims 7-10, 13-19, and 21-30 under 35 U.S.C. § 102(e) as
being anticipated by Miyamoto
I
Appellants’ contentions (App. Br. 6-8) have not persuaded us of error
in the Examiner’s rejection of claim 7, nor for grouped claims 8-10, 13-19,
and 21-30.
Independent claim 7 recites “a print preview system operative to
receive information corresponding to a request to preview at least a portion
of the print job.” Appellants argue that Miyamoto does not disclose this
limitation because Miyamoto’s “print job” is not an existing print job that
was sent to the printer. App. Br. 6. However, the term “existing” is not
found in either the Specification or in claim 7. Additionally, Appellants’
Specification does not provide a specific definition for the term “print job.”
As such, we adopt the Examiner’s interpretation that a print job is “a file or
set of files that has been submitted for printing.” Ans. 12.
Miyamoto’s method and apparatus discloses image files that are
inputted into the random access memory of the apparatus. FF 1, 2. These
image files are the same as the print job required by claim 7 since they are
files that are submitted for printing. The images are then displayed as
thumbnails in a window on the display screen. FF 3. When any or all of the
images are selected, a preview system allows the user to display the images,
one at a time, in a preview pane. FF 3. When the user presses the “print”
button, the selected images are printed. FF 4. Thus, the user does not have
to print all of the image files that have been submitted for printing. Rather,
the user only selects those images which the user wishes to print and, prior
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to printing, the user may preview one or more of the selected images,
thereby previewing a portion of the print job.
Accordingly, for the reasons stated above, we agree with the
Examiner’s addressed findings for the rejection of claim 7.
II
Appellants’ additional contentions (App. Br. 8-9) do not persuade us
of error in the Examiner’s rejection of claim 7, nor for grouped claims 8-10,
13, 14, and 21-25.
Claim 7 additionally recites that “the designated page is printed
without printing the entire print job." Appellants argue that Miyamoto does
not indicate that the thumbnails are from a single print job and therefore
Miyamoto does not disclose printing only one page from an entire print job.
App. Br. 8-9. However, as noted above, Miyamoto discloses inputting
images, thereby a print job, into the system’s memory. FF 2. The user may
then select only one of the images from a plurality of thumbnails associated
with the print job. FF 3. When the user presses the print button, that one
particular image is printed onto one page and no other images are printed.
FF 4. Thus, Miyamoto does disclose selecting and printing one page of a
print job as required by claim 7.
Accordingly, for the reasons state above, we agree with the
Examiner’s findings for the addressed facts for the rejection of claim 7
As we agree with the Examiner’s findings for the first two issues and they
are the only issues presented with respect to the rejection of claims 15
through 19 and 21 through 30, we sustain the Examiner’s rejection of claims
15 through 19 and 21 through 30 under § 102(e).
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III
Lastly, Appellants’ contentions (App. Br. 9-11) persuade us of error in
the Examiner’s rejection of claim 7, and grouped claims 8-10, 13, and 14.
Claim 7 recites “a printing device having a printing mechanism, a memory
storage device, and a display device housed together as a single unit.”
Appellants argue that Miyamoto does not explicitly disclose this feature.
App. Br. 10. The Examiner finds that Miyamoto discloses an image
processing apparatus that includes a printer, memory, and a display. Ans.
15. However, even though the image processing apparatus discloses each of
the required components, Miyamoto does not disclose combining the
components in a single unit.
As such, we will not sustain the Examiner’s rejection under § 102(e)
of claim 7 and claims 8-10, 13, and 14 that have been grouped with
representative claim 7, and argued as covering an integrated print
mechanism, memory, and display not taught by Miyamoto.
Rejection of claim 12 under 35 U.S.C. § 103(a) as being unpatentable
over Miyamoto in view of Parulski
Appellants’ contentions do not persuade us of error in the Examiner’s
rejection of claim 12. Dependent claim 12 depends from base independent
claim 7, and, therefore, incorporates the claim 7 limitations. Included with
the incorporated limitations is recitation of “a printing device having a
printing mechanism, a memory storage device, and a display device housed
together as a single unit.”
Appellants’ arguments present the same issues discussed with respect
to independent claim 7. App. Br. 11. From these issues, as discussed supra,
we find that Miyamoto teaches all of the limitations of claim 12 except for a
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printing mechanism, a memory storage device, and a display device housed
together as a single unit. We find that Miyamoto discloses a printer (i.e., a
printing mechanism), a memory storage device (i.e., Random Access
Memory (RAM)), and a display device (i.e., image displaying device) as an
image processing apparatus. FF 1. We note that making elements of a
device integral or separable is considered to be an obvious design choice and
does not render an invention patentable. See In re Larson, 340 F.2d 965,
968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523 (CCPA 1961). Thus,
combining each of these elements into a single unit represents nothing more
than a combination of known devices, which when combined yield the
predictable result of an integrated image processing apparatus. KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”) (citation omitted).
Therefore, we will sustain the Examiner’s rejection under § 103(a) of
claim 12.
New Ground of Rejection for claims 7-10, 13, and 14
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection.
Claims 7-10, 13, and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miyamoto.
As discussed supra, we reverse the Examiner’s rejection of claims 7-
10 and 12-14 as we do not find that Miyamoto explicitly or inherently
teaches a printing mechanism, a memory storage device, and a display
device housed together as a single unit under 35 U.S.C. § 102(e). However,
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Miyamoto does disclose a printer (i.e., a printing mechanism), a memory
storage device (i.e., Random Access Memory (RAM)), and a display device
(i.e., image displaying device) as an image processing apparatus. FF 1. We
note that making elements of a device integral or separable is considered to
be an obvious design choice and does not render an invention patentable.
See Larson, 340 F.2d at 968; Dulberg, 289 F.2d at 523. Thus, combining
each of these elements into a single unit represents nothing more than a
combination of known devices, which when combined yield the predictable
result of an integrated image processing apparatus. KSR, 550 U.S. at 416.
Thus, as a new ground of rejection, claims 7-10, 13, and 14 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Miyamoto.

CONCLUSION
The Examiner did not err under § 102(e) in finding that Miyamoto
explicitly or inherently teaches previewing an existing print job at the
printer.
The Examiner did not err under § 102(e) in finding that Miyamoto
explicitly or inherently teaches printing a page without printing the entire
print job.
The Examiner erred under § 102(e) in finding that Miyamoto
explicitly or inherently teaches a printing mechanism, a memory storage
device, and a display device housed together as a single unit.
The Examiner did not err under § 103(a) in finding that Miyamoto
teaches or suggests a printing mechanism, a memory storage device, and a
display device housed together as a single unit.

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SUMMARY
The Examiner’s decision to reject claims 26-30 under 35 U.S.C. § 101
is affirmed.
The Examiner’s decision to reject claims 7-10, 13, and 14 under 35
U.S.C. § 102(e) is reversed.
The Examiner’s decision to reject claims 15-19 and 21-30 under 35
U.S.C. § 102(e) is affirmed.
The Examiner’s decision to reject claim 12 under 35 U.S.C. § 103(a)
is affirmed.
The decision of the Examiner is affirmed-in-part. Additionally, we
enter a new ground of rejection for claims 7-10, 13 and 14 under 35 U.S.C. §
103(a).
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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 C.F.R. § 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
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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. . . .

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
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).
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AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

ELD

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