Ex Parte Guddanti

Board of Patent Appeals and Interferences

Aug 21, 2012

10112195 (B.P.A.I. Aug. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte SRINIVAS GUDDANTI
________________

Appeal 2009-012407
Application 10/112,195
Technology Center 2600
___________________

Before THOMAS S. HAHN, BRADLEY W. BAUMEISTER, and
ANDREW CALDWELL, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 2, 7, 11, 12, and 14-16. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

Appeal 2009-012407
Application 10/112,195

2
STATEMENT OF THE CASE
Appellant claims a printing method and printers that receive print
media data, e.g., media weight, stiffness, smoothness, etc., which are used to
search printer configuration information stored in a database to determine
suitability of the identified media for a printer. See generally Spec. 2:18 –
3:13, 6:1-4; Fig. 3. Appealed independent claim 2 is exemplary and reads:
2. A printer comprising:
first means for receiving a media type;
second means responsive to the media type for providing
configuration information, said second means including a multi-
dimensional database and being configured to use the media type
received from the first means as a key for searching through the multi-
dimensional database for the configuration information, and wherein
the second means is further configured to search through the multi-
dimensional database to determine the suitability of the media for the
printer; and
third means for displaying a message relating to the suitability
of said media for said printer.
Rejection
Claims 2, 7, 11, 12, and 14-16 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Suzuki (US 5,757,393; issued May 26, 1998), Otokita
(US 2003/0016259 A1; published Jan. 23, 2003), and Maxwell
(US 5,675,784; issued Oct. 7, 1997) (Ans. 3-7).1

1 Effective filing dates for cited evidence precede Appellant’s earliest
effective filing date and are not at issue.
Appeal 2009-012407
Application 10/112,195

3
Issues
1. Has the Examiner erred under 35 U.S.C. § 103(a) in combining
Suzuki, Otokita, and Maxwell? See generally App. Br. 19-20 and 22-
24; Reply Br. 4-6.
2. Has the Examiner erred under 35 U.S.C. § 103(a) because Suzuki,
Otokita, and Maxwell, alone or in combination, fail to teach or
suggest using received print media data for searching through a multi-
dimensional database as recited in claims 2, 11, and 16? See
generally App. Br. 20, 23, and 24; Reply Br. 6-7 and 9-11.
3. Has the Examiner erred under 35 U.S.C. § 103(a) because Suzuki,
Otokita, and Maxwell, alone or in combination, fail to teach or
suggest a multi-dimensional database including manufacturer data as
recited in claim 7? See generally App. Br. 21; Reply Br. 7-8.

FINDINGS OF FACT (FF)
Suzuki
1. Suzuki describes an image recording apparatus such as a printer
(Title; column 2, lines 45-52, column 3, lines 18-24; Fig. 1, elements
22, 24, 27).
2. Suzuki’s image recording apparatus includes a coded data input unit
25 to enter a code number 26 that represents the type of available
recording media (column 3, lines 17-20; Fig. 1).
Appeal 2009-012407
Application 10/112,195

4
3. Suzuki’s image recording apparatus also includes a central processing
unit (CPU) 27 with memories for storing printer configuration and
printing media suitability information. The CPU “converts” input
recording media information to prepare recording conditions for the
corresponding recording medium (column 3, lines 17-21, column 5,
lines 42-44, column 7, lines 9-37; Fig. 1).
Otokita
4. Otokita describes a printing apparatus for controlling printing
according to printing media (Title).
5. Otokita’s printing apparatus includes a look-up table that is used to
determine printer configuration information and which print media
types are suitable for the printer (¶¶ [0069], [0071]; Figs. 3, 8, element
57).
6. Otokita’s printing apparatus displays information as to suitable media
for printing (¶ [0126]).
Maxwell
7. Maxwell teaches using a relational database system for storing and
classifying products information (column 1, lines 9-16, column 2,
lines 18-20, 30-39; Fig. 14A). The disclosed system allows unlimited
numbers of information components to be associated with products
information (column 3, lines 6-8; Fig. 14A).

Appeal 2009-012407
Application 10/112,195

5
PRINCIPLES OF LAW
Only an “analogous” reference qualifies as prior art for a
determination under 35 U.S.C. § 103 of obviousness. In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004).
Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent
to the particular problem with which the inventor is involved.

Bigio, 381 F.3d at 1325. “If a reference disclosure has the same purpose as
the claimed invention, the reference relates to the same problem, and that
fact supports use of that reference in an obviousness rejection.” In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992).
The U.S. Supreme Court has explained that:
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.

KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (citations omitted).

Appeal 2009-012407
Application 10/112,195

6
ANALYSIS
We reviewed the Examiner’s rejection in light of Appellant’s
contentions and arguments as to Examiner error, and we disagree with
Appellant’s conclusions.
Claim 2
Appellant separately argues claim 2 (App. Br. 19-20; Reply Br. 4-7)
by contending that (i) Maxwell is “not similar enough” to Suzuki and
Otokita that one skilled in the art would combine the references as done by
the Examiner (App. Br. 19), and (ii) the references, even if combined, “fail
to teach using the media type as a key for searching through a multi-
dimensional database” (App. Br. 20).
I
Appellant, with respect to the first contention, acknowledges that
“Suzuki and Otokita are from the field of printing or image recording
apparatuses” (App. Br. 19) and we agree (FF 1, 4). Appellant next asserts
that “Maxwell is from the field of relational databases” (App. Br. 20). We
agree with the stated fact that Maxwell is from the field of relational
databases (FF 7), but we disagree with Appellant’s contention that the
Examiner improperly combined Maxwell with Suzuki and Otokita.
Appellant does not dispute that Suzuki and Otokita disclose electronic
memories and look-up tables (App. Br. 20; see FF 3, 5), but argues that:
[T]he relational databases of Maxwell are significantly more
complicated and intricate than the simple databases contemplated in
either Suzuki or Otokita. Furthermore, the one-dimensional databases
Appeal 2009-012407
Application 10/112,195

7
of Suzuki and Otokita are fully functional for the methods outlined in
their respective disclosures; however, the implementation of that
discussed in Maxwell would significantly complicate the designs of
Suzuki and/or Otokita. Such complication would be perceived by one
skilled in the art at the time of the present invention as one that would
translate into slower performance times, cost increases, increased
likelihood for error, increased production times, all for what would be
perceived as meeting the same end result as the one-dimensional
databases. Each of these perceptions alone would lead one skilled in
the art to refrain from the combination of references.
(App. Br. 20).
The Examiner, in response, finds that:
Both Suzuki and Otokita suggest using an input data to search and
verify various printing configuration parameters stored in a look-up
table. Maxwell teaches using a relational database for storing and
classifying products information (see Fig. 14A, Col. 1, Line 9-16,
Col.2, Line 18-20 and Col.2, Line 30-39), and allowing unlimited
number of information components to be associated with the products
information (see Fig. 14A and Col.3, Line 6-8). Here, Maxwell
suggests using a relational database for storing large amounts of data,
and increasing flexibility in terms of searching and associating a
stored item with various components (or keys).
(Ans. 8.). Based on these findings, the Examiner concludes that:
Incorporating Maxwell's relational database (or multi-function
database) would not complicate Suzuki's or Otokita's invention since
they both suggest using a look-up table for verifying printer
configuration information. Maxwell's relational database would
enhance the flexibility of Suzuki's and Otokita's inventions in terms of
storing and searching the printing configuration data.
(Ans. 9).
Appeal 2009-012407
Application 10/112,195

8
In the Reply Brief, Appellant repeats the contentions raised in the
Appeal Brief and additionally introduces a further contention that “there is
no good reason provided found in the references or otherwise for combining
Maxwell with Suzuki or Otokita” (Reply Br. 5).
First, we find Suzuki and Otokita are effective analogous art for an
obviousness rejection because they are from the same field of endeavor as
that of the claimed subject matter, namely printing and image recording
apparatuses. FF 1, 4; Bigio, 381 F.3d at 1325. Though not in the same field
of endeavor, we also find Maxwell is effective analogous art because its
teachings are pertinent to a particular problem addressed by Appellant,
namely use of a database system for storing, classifying, and searching data
that includes multiple elements (FF 7; Spec. 3:1-3). Accordingly, we
disagree with Appellant’s contention that the references are not analogous
art.
Second, the Examiner identified incorporating Maxwell’s relational
database system in Suzuki as being motivated “to provide mass data storage
for . . . printer configuration information and to enable a flexible search
mechanism for receiving . . . configuration data” (Ans. 4). We find this
identified motivation to be reasonable and to possess a rational underpinning
that is supported by identified findings (Ans. 4; see FF 3, 7). This identified
motivation is not rebutted with persuasive evidence other than with attorney
argument. See KSR, 550 U.S. at 417; see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
Appeal 2009-012407
Application 10/112,195

9
evidence.”). Accordingly, we conclude that the Examiner did not err under
35 U.S.C. § 103(a) in combining Suzuki, Otokita, and Maxwell.
II
Appellant acknowledges that “Maxwell teaches using [a] multi-
dimensional database for storing classifying products information” (App. Br.
20; accord FF 7), and next argues that “[a]s a result, the references, even in
combination, simply fail to teach using . . . media type as a key for searching
through a multi-dimensional database . . .” (id.).
The Examiner, with respect to claim 2, acknowledges that “Suzuki
fails to disclose a multi-dimensional database, using the media type
information as a key for searching through the multi-dimensional database
for the configuration information and determining the media suitability for
the printer . . .” (Ans. 3). The Examiner, though, finds and maps the
following claim 2 recited limitations to identified Suzuki disclosures:
[A] first means for receiving a media type (see Fig.1 (25), Fig.5 (19),
Col.3, Line 17-21 and Col.4, Line 62-67); and a second means
responsive to the media type for providing configuration information
(see Fig. 1 (25), Fig.5 (19), Col.5, Line 42-44 and Col.7, Line 9-37)
and determining the suitability of the media for the printer (see Fig. 1
(25), Fig.5 (19), Col.3, Line 17-21, Col.4, Line 62-67 and Col.7, Line
9-37).
(Ans. 3). The Examiner further identifies that Suzuki “teaches incorporating
a memory into the printer for storing information relating to the printer
configuration and the media suitability for the printer (see Fig. 1 (27) and
Col. 3, Line 17-21)” (id.; accord FF 3).
Appeal 2009-012407
Application 10/112,195

10
Appellant, in response, contends the Examiner incorrectly
characterized Suzuki (Reply Br. 6), and asserts that:
Suzuki discloses two types of embodiments: one in which a
user inputs a number assigned to a recording medium, creating one of
four stored configurations and then chooses one of the configurations
by manual selection (col. 5, lines 4-60); and another in which a bar
code is entered to create the print configuration to be used at that time
(col. 7, lines 9-37). Neither of these functions involves a means
responsive to media type that uses the media type as a key for
searching through a multi-dimensional database.
(Id.). Appellant continues that “Maxwell does not teach a means responsive
to the media type and configured to use the media type as a search key”
(Reply Br. 6-7).
We are not persuaded by Appellant’s arguments. The Examiner relied
on Maxwell for teaching a searchable multi-dimensional database, which
teaching Appellant acknowledges (App. Br. 20; accord FF 7). The
Examiner relied on Suzuki for teaching use of received media type
information for searching a database for printer configuration information
(see Ans. 3-4; accord FF 3).
As to Appellant’s contention that Suzuki fails to teach or suggest “a
means responsive to media type that uses the media type as a key for
searching through a multi-dimensional database” (Reply Br. 6), the record
establishes that the Examiner finds, and we agree, that a “multi-dimensional
database” is taught by Maxwell – not Suzuki (Ans. 3-4; FF 7).
Appeal 2009-012407
Application 10/112,195

11
Further, based on our review of Suzuki we disagree with Appellant’s
description as being exhaustive that “a user inputs a number assigned to a
recording medium, creating one of four stored configurations and then
chooses one of the configurations by manual selection (col. 5, lines 4-60)”
(Reply Br. 6). Instead, we find Suzuki’s described image recording
apparatus includes a CPU with associated memories that store printer
configuration and printing media information (FF 3). We also find Suzuki
teaches inputting recording media type data (FF 2) that the CPU uses to
identify recording conditions, i.e., printer configurations for corresponding
recording media (FF 3). Accordingly, we agree with and adopt the
Examiner’s finding that Suzuki teaches or fairly suggests use of received
media type for searching a database for printer configuration information
(see Ans. 3-4). In conclusion, Appellant’s arguments are unavailing as
being attacks on individual references as opposed to addressing the
identified combination of references. In re Keller, 642 F.2d 413 (CCPA
1981).
For the foregoing reasons, we disagree with Appellant’s conclusion
that the Examiner erred in rejecting claim 2 as being obvious under § 103(a),
and we will sustain the rejection.
Claim 7
Appellant separately argues claim 7 (App. Br. 21-22; Reply Br. 7-8).
Appellant initially relies by reference on the above addressed assertions that
the Examiner’s combination of Suzuki, Otokita, and Maxwell is improper
Appeal 2009-012407
Application 10/112,195

12
(App. Br. 21). This contention is unavailing for the reasons identified supra.
Alternatively, Appellant contends that the Examiner’s “combination of
references fails to disclose the multi-dimensional database including
manufacturer data, as claimed in claim 7” (id.).
Claim 7 depends directly from claim 2 and solely recites “wherein
said multi-dimensional database includes manufacturer data.” Appellant
does not address claim 7 in the Summary of Claimed Subject Matter section
of the Appeal Brief (see App. Br. 7-9), nor does Appellant address in the
Argument section of the Appeal Brief how to construe claim 7 recited
“manufacturer data” (see App. Br. 21-22).
The Examiner acknowledges that Suzuki, Otokita, and Maxwell “fail
to expressly disclose including manufacturer data in the multi-dimensional
database” (Ans. 4). The Examiner finds “Suzuki, however, teaches using a
standard specification for the media type to be used, which is set at the
manufacturer of the image forming device (see Col. 4, Line[s] 62-67)” (id.).
From our review of Suzuki, we agree with and adopt this finding. Based on
these findings, the Examiner concludes that it would have been obvious for a
skilled artisan to include manufacturer data in a database (Ans. 3-4). This
essentially taking of Official Notice by the Examiner, we find is proper in its
being reasonable and consistent with Suzuki’s teaching that an image
recoding apparatus includes memories that store data for printing media (FF
3).
Appeal 2009-012407
Application 10/112,195

13
Based on the Examiner’s findings and reasoning, and the bald
recitation in claim 7 that a “multi-dimensional database includes
manufacturer data,” we conclude that the Examiner did not err in the
rejection because as claimed “manufacturer data” is only included in a
database without any claimed structural or functional relationship to other
recited subject matter. Consequently, on this record for claim 7, the recited
“manufacturer data” is non-functional descriptive material. The Examiner
need not give patentable weight to such material absent a new and
unobvious functional relationship between the descriptive material and the
substrate, i.e., storage media, which has not been established with persuasive
evidence. See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). See also
In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d
1579, 1583-84 (Fed. Cir. 1994).
For the foregoing reasons, we disagree with Appellant’s conclusion
that the Examiner erred in rejecting claim 7 as being obvious under § 103(a),
and we will sustain the rejection.
Claim 11
Appellant separately argues claim 11 (App. Br. 22-23; Reply Br. 9-
10). Appellant initially relies by reference on the above addressed assertions
that the Examiner’s combination of Suzuki, Otokita, and Maxwell is
improper (App. Br. 22). This contention is unavailing for the reasons
identified supra. Alternatively, Appellant contends that the Examiner’s
Appeal 2009-012407
Application 10/112,195

14
combination of references . . . fails to disclose . . . including
manufacturer data in the multi-dimensional database, acquiring media
weight and manufacturer information from a bar code, using a multi-
dimensional database for ascertaining whether media weight
information is within specification, and using manufacturer
information as a key for searching through a multi-dimensional
database
(App. Br. 23).
The Examiner responds with identified mappings from Suzuki,
Otokita, and Maxwell disclosures to claimed elements with reasoning and
underpinning rationale for combining reference teachings and suggestions
(Ans. 15-17). Based on our review of the Examiner’s identifications and
reasoning, we agree and adopt them as our own (see FF 1-7). We further
find that Appellant has not rebutted the Examiner’s identifications and
reasoning with persuasive evidence or arguments. Accordingly, we will
sustain the rejection of claim 11.
Claim 16
Appellant separately argues claim 16 (App. Br. 23-25; Reply Br. 10-
11). Appellant initially relies by reference on the above addressed assertions
that the Examiner’s combination of Suzuki, Otokita, and Maxwell is
improper (App. Br. 23-24). This contention is unavailing for the reasons
identified supra. Alternatively, Appellant contends that the Examiner’s
combination of references . . . fails to disclose certain elements . . .
such as using data pertaining to media weight and manufacturer
information obtained from reading a bar code as a key to search[ing]
through a multi-dimensional database to determine the suitability of
the media for a printer, and displaying a message regarding media
Appeal 2009-012407
Application 10/112,195

15
suitability in response to manufacturer information, wherein the
message includes media characteristics obtained from the multi-
dimensional database for selection by an operator, and wherein
selection by the operator is configured to vary a printer operation
(App. Br. 24).
The Examiner responds with identified mappings from Suzuki,
Otokita, and Maxwell disclosures to claimed elements with reasoning and
underpinning rationale for combining reference teachings and suggestions
(Ans. 15-17). Based on our review of the Examiner’s identifications and
reasoning, we agree and adopt them as our own (see FF 1-7). We further
find that Appellant has not rebutted the Examiner’s identifications and
reasoning with persuasive evidence or arguments. Accordingly, we will
sustain the rejection of claim 16.
Claims 12, 14, and 15
These dependent claims are not separately argued, and we,
accordingly, sustain their rejection.

ORDER
The Examiner’s decision rejecting claims 2, 7, 11, 12, and 14-16 is
affirmed.

Appeal 2009-012407
Application 10/112,195

16
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
rwk