Ex Parte Jenkins et al

Patent Trial and Appeal Board

Apr 13, 2017

13740368 (P.T.A.B. Apr. 13, 2017)

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.
13/740,368 01/14/2013 Jack Douglas Jenkins JR. 20120312USNP-XER2925US01 9429
62095 7590 04/14/2017
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
04/14/2017 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 JACK DOUGLAS JENKINS, JR., JAMES D. RISE,
JAMES PATRICK VANWINKLE, ROBIN YUEN WESSEL,
CHARLES R. CARLSON, SHANTI VILLARREAL, and
LEONARD GUAN
____________

Appeal 2015-003298
Application 13/740,3681
Technology Center 3600
____________

Before ANTON W. FETTING, BRADLEY B. BAYAT, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision to reject claims 1, 2, 4, 6–10, and 12–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellants, the real party in interest is Xerox
Corporation. Appeal Brief filed June 10, 2014, hereafter “App. Br.,” 1.
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BACKGROUND
The invention relates to the management of a document processing
device of a consumer, and, more particularly, the management of a managed
print service (“MPS”) plan. Specification, hereafter “Spec.,” ¶ 6. The
invention includes receiving data regarding the remaining life of a
consumable of the document processing device. Id.
Representative claim 1 is reproduced from page 18 of the Claims
Appendix of the Appeal Brief (Claims App.) as follows, with emphasis
added to relevant claim limitations:
1. A computer-implemented method for managing a document
processing device of a consumer, said method comprising:
associating by at least one computer one or more
managed print service (MPS) template plans with an account of
a retailer, each of the one or more MPS template plans
including a plurality of credits;
receiving by the at least one computer a registration
request for an MPS plan from the retailer, the retailer selling
the MPS plan to the consumer, and the MPS plan being an
instance of one of the MPS template plans;
associating by the at least one computer the MPS plan
sold to the consumer with an MPS account of the consumer in
response to the registration request;
associating by the at least one computer the document
processing device with the MPS plan;
receiving by the at least one computer data regarding a
remaining life of a consumable of the document processing
device or usage of the document processing device from the
consumer;
decrementing by the at least one computer the credits
based on the received data; and,
coordinating by the at least one computer the
provisioning of a replacement for the consumable to the
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consumer in response to the remaining life of the consumable
falling below a threshold and the MPS plan including credits.
In a Final Office Action, the Examiner rejects claims 1, 2, 4, 6–10,
and 12–22 under 35 U.S.C. § 102(e) as anticipated by VanWinkle.2 Final
Action, hereafter “Final Act.,” 15–19, mailed January 2, 2014; Answer,
hereafter “Ans.,” 2, mailed October 7, 2014.
DISCUSSION
The Appellants argue the rejection of claims 1, 6, 9, 15, 18, 21, and 22
on separate grounds, with dependent claims 2, 4, 7, 8, 10, 12–14, 16, 17, 19,
and 20 standing or falling with the claims they depend from. App. Br. 8–16.
We will address the claims in a similar manner.
Claim 1. The Appellants argue that VanWinkle fails to disclose
associating a managed print service (“MPS”) template to an account of a
retailer as required under a claim 1 limitation. App. Br. 9. More
particularly, the Appellants assert that VanWinkle does not pertain to
associating an MPS template to a retailer account. Id. The Appellants
contend that in VanWinkle, a request received from the retailer is for a
device, and not for an MPS plan that is a MPS template plan as claimed. Id.
at 10. The Appellants allege that VanWinkle discusses the association of
program provisions (e.g., discount incentives) to accounts before selling the
accounts to customers, but there is no discussion of templates, and it is the
pre-established account that is sold. Id. (citing VanWinkle ¶¶ 33, 38, 45,
53). The Appellants also contend that VanWinkle does not disclose a
reseller submitting a registration request for a MPS plan, which is equated to
the instance of a MPS template plan, to an account manager system, and

2 Publication No. 2011/0191197 A1, published August 4, 2011.
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associating the MPS plan sold to the consumer to an account of the
consumer. Id. Additionally, it is argued that the claimed MPS accounts can
have multiple MPS plans and VanWinkle’s pre-established account is not
equivalent. Id.
In response, the Examiner finds that VanWinkle discloses that a
customer purchases the document processing device and may register the
device and set up an automated purchase of credits (plan). Ans. 3–5 (citing
VanWinkle ¶¶ 4, 5, 38). Portions of paragraphs 4 and 38 of VanWinkle are
reproduced below.
[0004] Document processing device account management
systems and methods, and customer computer agents are
disclosed for managing document processing device usage in
which a customer initially purchases a document processing
device, such as a printer, scanner, copier, or a multi-function
device providing one or more of such document processing
functions such as a combination scanner-printer-copier
machine, where the device does not print until authorized by the
manufacturer by application of print units from a customer
account. The customer accesses a management system to setup
automated purchase of account credits, and automated
application of print units to specific managed devices by
conversion of account credits. The device consumes or expends
the applied print units in performing document processing
operations such as printing, scanning, copying, etc., for
preselected member computers and non-members may utilize a
given device on a job-by-job basis via an agent on the non-
member computer.
[0038] FIG. 7 illustrates exemplary operation of the
document processing device 320 in a process 400, in which the
device 320 is initialized or registered at 402 to one or more
customer accounts by the customer 300 or by a reseller 200,
and one or more print units are applied to the device 320 by the
customer via a customer agent 360. The example of FIG. 7 is
illustrated and described in the context of a printing operation,
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but similar operation is provided for any other form or type of
customer/user-requested document processing operation by a
device 320.
VanWinkle ¶¶ 4, 38 (emphases omitted).
As to the broadest reasonable interpretation of the terms “plan” and
“template plan” of claim 1, we look to the Specification, which states:
The retailer account can further include one or more
different MMPS [(micro managed print service)] plans defined
by the retailer. Each of the MMPS plans includes terms and
conditions which are displayed to the consumer during
registration and which the consumers must agree to. Further,
each of the MMPS plans includes one or more parameters,
including, for example, one or more of a mono page price, a
color page price, a page quantity, a staple price, a staple
quantity, an expiration date, and other like parameters. These
MMPS plans can serve as templates for the MMPS plans of the
MMPS accounts.
Spec. ¶ 59.
We do not find persuasive the Appellants’ argument that Van Winkle
discloses the use of “accounts” only, and not a “MPS plan” or “template” as
recited in claim 1.  App. Br. 10. There is no ipsissimis verbis test for
determining whether a reference discloses a claim element, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
The “plan” as described in the Specification is directed to the “terms” for
purchase of print services (Spec. ¶ 59), and claim 1 recites the use of “an
MPS plan” and “one or more” MPS template plans. VanWinkle discloses
the “purchase of account credits, and automated application of print units to
specific managed devices” (VanWinkle ¶ 4), which are the terms of the
purchase, i.e., paying a charge for print services for a specific device, and,
therefore, we find no reversible error with the Examiner’s finding that
VanWinkle discloses an equivalence of the “MPS plan” of claim 1.
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Additionally, consistent with the Specification (Spec. ¶ 59), the micro
managed print service (“MMPS”) plans themselves serve as “templates.”
With that, we agree with the Examiner that VanWinkle’s disclosure of the
use of “a management system to setup automated purchase of account
credits,” indicates the use of a pre-existing system which offers automated
purchasing, i.e., terms of purchase, and that serves as the equivalent of
“templates.” VanWinkle ¶ 4. Thus, we agree with the Examiner that the
claimed steps of “associating by . . . one computer one or more managed
print service (MPS) template plans,” “receiving . . . a registration request,”
and “associating . . . the MPS plan . . . with an MPS account,” are disclosed
by VanWinkle because therein a customer registers for automated
purchasing provided by an existing management system having MPS
templates (automated purchasing options), where account credits are
associated with customer accounts. See Ans. 3–5.
Additionally, we do not find the Appellants’ argument that MPS
accounts can have multiple MPS plans are not equivalent to VanWinkle’s
account to be persuasive. VanWinkle discloses a reseller negotiating
account parameters with the customer (VanWinkle ¶ 45), which is an
alternative MPS plan, that is, offering different terms or plans, associated
with the account.
We, therefore, sustain the Examiner’s rejection of claim 1.
Claim 6. Claim 6 recites the additional limitation of “messaging the
consumer with instructions to enable the associated MPS plan before
receiving the data,” and the Appellants assert that VanWinkle fails to
disclose that instructions are provided and also fails to describe how to
enable an MPS plan. App. Br. 11; Claims App. 19. The Appellants do not
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provide proposed claim construction of the term “instructions,” but suggest
it could involve training. See App. Br. 11 (“prior training could be
assumed”). We do not agree that “instructions” necessarily involves
training, but could simply consist of directions to do some acts. Therefore,
we find no reversible error with the Examiner’s findings because VanWinkle
discloses that the customer and other computers may use messages for
“requests, confirmations, authorizations” (VanWinkle ¶ 44), authorization
requests are used to enable printing (id. ¶¶ 10, 44), and “multiple messages”
are disclosed in association with the customer-initiated authorization
operation, and that would encompass instructions on the same. Ans. 6–7.
We, therefore, sustain the Examiner’s rejection of claim 6.
Claim 9. The Appellants contend that VanWinkle fails to disclose the
limitation of automatically determining a buyout price, and argue that
although VanWinkle discusses buying and applying credits and terminating
contracts, there is no disclosure that these are automatic. App. Br. 11. We
do not find the Appellants’ argument persuasive. Claim 9 recites that the
method step “automatically determining a buyout price for the MPS plan
based on the received data,” where the “data” appears to be related to the
remaining life of a consumable or the usage of the document processing
device (see claim 1). There is, however, no requirement in claim 9 that
terminating the contract is automatic. We find no reversible error in the
Examiner’s findings that VanWinkle discloses the use of pricing specifics
used in the automatic buy and application features, with prepayments under
customer-specific agreements, and these agreements may include how credit
balances (that reflect the usage of a device) are handled at the conclusion of
contracts, and this is equivalent to the “automatic[] determin[ation] [of] a
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buyout price” as recited in claim 9. Final Act. 9–12 (citing VanWinkle ¶¶ 4,
5, 38, 58) (discussing customer prepayment and related agreements,
updating customer accounts, and payment terms, and how to handle
customer credit balances at the conclusion of contracts).
We, therefore, sustain the Examiner’s rejection of claim 9.
Claim 21. Claim 21 recites the limitation “wherein the MPS account
is associated with a plurality of MPS plans, each of the MPS plans
associated with only one document processing device.” App. Br. 22, Claims
App. The Appellants allege that VanWinkle fails to disclose limiting MPS
plans to a single document processing device. Id. at 11–12. We do not find
the Appellants’ argument persuasive because the claim is directed to “each
of the MPS plans,” which can be one MPS plan (that is, one, among others),
that is associated with one document processing device, and VanWinkle
discloses this association. See Ans. 10–11 (citing VanWinkle ¶ 4 (directed
to associating a specific managed devices to the purchase of account credits,
which as discussed above for claim 1, is equivalent to an “MPS plan”)).
We, therefore, sustain the Examiner’s rejection of claim 21.
Claims 15 and 22. For claim 15, the Appellants allege that
VanWinkle fails to disclose the limitation that a “retailer” or reseller submits
registration information for an MPS plan, or the association of the MPS plan
with the consumer account. App. Br. 13–14. We are not persuaded by the
Appellants’ allegation because we find no reversible error with the
Examiner’s finding that VanWinkle discloses that a reseller may register the
device. Ans. 13–14 (citing VanWinkle ¶ 38 (“the device . . . is initialized or
registered . . . to one or to one or more customer accounts by the customer
300 or by a reseller 200” (emphasis omitted))). Although the Appellants
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argue that under this disclosure the registration is for a document processing
device, and not an MPS plan (id. at 14), we are not persuaded by this
argument for same reasons discussed for claim 1.
Additionally, the Appellants allege that VanWinkle fails to disclose
the determination of an automatic buyout price as required by claim 15.
App. Br. 14. We are not persuaded by the Appellants’ arguments for similar
reasons to those discussed for claim 9.
The Appellants allege that as to claim 22, which recites “wherein the
MPS plan is an instance of an MPS template plan associated with an account
of the retailer,” that VanWinkle fails to discuss template plans. Id. at 14–15.
We are not persuaded by the argument for same reasons discussed for claim
1.
We, therefore, sustain the Examiner’s rejection of claims 15 and 22.
Claim 18. The Appellants argue that VanWinkle fails to disclose 
“displaying a graphical user interface (GUI) to the consumer using the
software agent, the GUI relating variations of one or more parameters of a
managed print service (MPS) plan to average printing purchases of the
consumer over a predetermined period of time.” App. Br. 15–16. We find
no reversible error with the Examiner’s interpretation that VanWinkle
discloses information display to users that allows determination of average
overall usage and usage per job because VanWinkle discloses updates to the
customer network 302 of usage data. Final Act. 12–14 (citing VanWinkle ¶¶
35, 48); see also VanWinkle ¶ 40 (referring to user on-board display), ¶ 64
(referring to the display of account information on the individual devices).
We, therefore, sustain the Examiner’s rejection of claim 18.
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Remaining Claims 2, 4, 7, 8, 10, 12–14, 16, 17, 19, and 20. The
Appellants do not provide additional arguments related to dependent claims
2, 4, 7, 8, 10, 12–14, 16, 17, 19, and 20, arguing that they are allowable for
the same reasons as the claims they depend from. See App. Br. 12, 15, 16.3
Because the additional limitations of these claims fail to cure the
deficiencies of the claims they depend from, we sustain the Examiner’s
rejection of these claims for the same reasons as those for the claims from
which they depend.
SUMMARY
We affirm the Examiner's rejection of claims 1, 2, 4, 6–10, and 12–22
under 35 U.S.C. § 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

3 The Appellants fail to identify claim 2 as allowable for the same reasons as
independent claim 1, which it depends from. We presume that this was an
omission and inadvertent error, and we include claim 2 as a claim in this
Appeal, and address the same herein. See App. Br. 3.