Ex Parte Jahn et al

Patent Trial and Appeal Board

Mar 29, 2016

13590416 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/590,416 08/21/2012
50441 7590 03/31/2016
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
FIRST NAMED INVENTOR
Janeen E. Jahn
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BLD9-2006-0003-US2 8827
EXAMINER
HUNTSINGER, PETER K
ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
03/31/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@dbflaw.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JANEEN E. JAHN, SIMON P. JONES,
LINDA S. LIEBELT, KYLE P. MANNING,
DWIGHT R. PALMER, ERIC M. SIGLER,
MATTHEW M. W ALLI, and MARC A. WILLSON
Appeal2014-005310
Application 13/590,416
Technology Center 2600
Before JEFFREY A. STEPHENS, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Rejection of claims 1-20, which are all the claims
pending in the application.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 The real party in interest is identified as InfoPrint Solutions Company,
LLC. (Br. 3.)
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Application 13/590,416
We affirm.
Claimed Subject Matter
The claimed invention generally relates to a customer-configurable
workflow system. (Title.) Claim 1, reproduced below, is illustrative:
1. A method for managing a workflow processing system,
the method comprising:
storing job information in a database, wherein the job
information relates to one or more print jobs to be processed by
the workflow processing system based on a print workflow
model;
displaying a configurable template for defining phases,
processes, and steps in print workflow models;
receiving user input to modify the configurable template;
generating a new configurable template based on the user
input, wherein the new configurable template defines at least
one of a new processing phase for the print workflow model, a
new process of the print workflow model, and a new step of the
print workflow model, wherein a phase includes at least one
process, and wherein a process includes at least one step;
storing the new configurable template in the database;
generating the workflow model from the new
configurable template to process the one or more print jobs
relating to the job information in the database;
storing the workflow model in the database; and
processing the one or more print jobs using the workflow
model in the database and using the job information in the
database to implement the new configurable template.
2 Although the Office Action Summary lists claims 18 and 19 as objected to
(Non-Final Act. 1 (mailed July 18, 2013)), these claims are rejected under 35
U.S.C. § 112, second paragraph (id. at 5).
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Rejections3
Claims 1-20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. (Non-Final Act. 5; Ans. 2.)
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Noda (US 2005/0243365 Al, published Nov. 3, 2005); Saito et al. (US
6,578,006 Bl, issued June 10, 2003) ("Saito"); and Yu et al. (US 7,640,548
Bl, issued Dec. 29, 2009) ("Yu"). (Non-Final Act. 6-20; Ans. 2.)
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Noda, Saito, Yu, and Jam et al. (US 7,103,230 Bl, issued Sept. 5,
2006) ("Jam"). (Non-Final Act. 21-22.)4
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner erred (Br. 6-11). We note Appellants have not
filed a Reply Brief in rebuttal to the findings and conclusions of the
Examiner in the Answer. We are not persuaded by Appellants' arguments.
We adopt as our own the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and set forth in the Answer (see
Ans. 2--4 ). We highlight and address specific arguments and findings for
emphasis as follows.
3 The rejection of claims 11-14 under 35 U.S.C. § 101 is withdrawn in the
Answer. (Ans. 2.) Therefore, we do not consider it.
4 The Examiner's Answer does not include claim 20 in listed the grounds of
rejection under§ 103(a), but indicates all grounds of rejection from the Non-
Final Action are maintained except those withdrawn. (Ans. 2.) Because we
see no indication the rejection of claim 20 under 35 U.S.C. § 103(a) was
withdrawn, we consider the rejection to remain.
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Application 13/590,416
Rejection under 35 U.S. C. § 112, second paragraph
Appellants do not address the Examiner's rejection of claims 1-20
under 35 U.S.C. § 112, second paragraph, as being indefinite. Therefore, we
summarily sustain the rejection.
Rejections under 35 U.S.C. § 103(a)
Appellants argue the combination of Noda, Saito and Yu does not
teach configurable templates, and, therefore, does not teach generating a
new configurable template based on the user input, wherein the new
configurable template defines at least one of a new processing phase for the
print wodiflow model, a new process of the print wodiflow model, and a new
step of the print wodiflow model, wherein a phase includes at least one
process, and wherein a process includes at least one step ("the generating
step"), as recited in claim 1. (See Br. 7-9.) Regarding Yu in particular,
Appellants argue:
While Yu may be discussing modifying tasks previously
created for a project, Yu does not discuss that such
modifications result in templates which may be re-used by the
administrator for creating new workflows. Rather, Yu
discusses that an admin user has already created a list of tasks
for the particular project.
In Yu, the user lacks the option of modifying workflow
templates to create new templates. The user can manually enter
new steps and phases using the admin screen (see FIG. 8), but
can't select a template as a starting point.
(Br. 8.)
Yu relates generally to a facility for the definition of processes by
allowing users to specify tasks, steps, and instructions relating to the
processes. (Yu Abstract.) As the Examiner finds, Yu teaches "the admin
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user may modify an existing process by entering in new values into the text
fields and menus provided." (Yu 10:3-5 (cited at Non-Final Act. 8; Ans.
3).) This passage provides additional detail related to Yu's teaching that the
administrative user has the option of "modifying an existing process by
running a query 604 to retrieve an already-defined process that is stored in a
facility-accessible storage device" (Yu 9:55-57), which is an alternative to
defining a new process (see Yu 9:49-54). The Examiner also finds (Ans. 3),
and we agree, Yu's administrative user "may define a process by adding
tasks from a list of existing tasks" (Yu 10:40-41 ), and that "[b ]y recycling
tasks, the admin user avoids having to create an entirely new set of
instructions for a step" (Yu 10:41--43). Moreover, Yu teaches a specific
interface by which "the admin user may input or modify details associated
with existing tasks." (Yu 10:56-58; Ans. 3.)
We agree with the Examiner (see Non-Final Act. 8; Ans. 2-3) that Yu
teaches the generating step of claim 1. In particular, we do not agree with
Appellants that modifications to tasks in Yu do not result in templates that
may be re-used by the administrator for creating new workflows (Br. 8)
because, as discussed above, Yu specifically teaches the administrative user
can modify an existing process (Yu 10:3-5), including modifying details
associated with existing tasks (Yu 10:56-58). These modifications result in
a new configurable template based on the user input, as recited in claim 1.
Appellants also argue the Examiner relies on impermissible hindsight
(Br. 9) and that Yu and Saito constitute non-analogous art (Br. 9-10). The
Examiner finds one of ordinary skill in the art would have been motivated to
include phases, processes and steps in a workflow, as taught by Saito, to
improve the integral management of a job within a workflow system. (Non-
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Final Act. 8.) As to Yu, the Examiner finds one of ordinary skill in the art
would have been motivated to use configurable templates, as taught by Yu,
to save time. (Id.) Appellants do not challenge these findings specifically,
but argue Saito and Yu discuss processes that are performed by people and
do not suggest that the processes could be applied to print workflows. (Br.
8.) Based on these same arguments, Appellants contend Saito and Yu
constitute non-analogous art because they are from a different field of
endeavor and neither reference would have "logically commend[ed] itself to
the inventors['] attention in considering the problem of how to help users
create and manage complex print workflows." (Br. 10.)
We are not persuaded that, because Saito and Yu discuss processes
performed by people, one of ordinary skill would not look to these
references for teachings of using configurable templates (see Yu) that
include phases, processes, and steps (see Saito) to create print workflows as
in Noda. Appellants do not persuasively explain why one of ordinary skill
in the art would not recognize that the benefits identified by the Examiner
related to the teachings of Saito and Yu would apply also in the context of
print workflows that may be processed by a machine. Cf KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007) ("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."). We agree with
the Examiner that Noda, Saito, and Yu "each concern a graphical user
interface for generating workflow" (Ans. 4), and Appellants do not rebut this
finding with persuasive argument or evidence. We also find, based on
Appellants' Specification, that the claimed invention broadly "relates to the
field of workflow systems" (Spec. 1:9) and that "[a] wide variety of systems
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entail processes that process information through a sequence of steps" (Spec.
1:14--15). Appellants' arguments (see Br. 9-10) thus define the field of
endeavor and problem to be solved too narrowly.
In view of the foregoing, we sustain the rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Noda, Saito, and Yu. For the same
reasons, we sustain the rejection under 35 U.S.C. § 103(a) of claims 2-17,
which are not argued separately.
Appellants present no additional arguments relating to claim 20 (see
Br. 10). Thus, for the same reasons as claim 1, we sustain the rejection of
claim 20 under 35 U.S.C. § 103(a) as unpatentable over Noda, Saito, Yu,
and Jam.
DECISION
We affirm the Examiner's decision to reject claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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