Ex Parte Kamath et al

Patent Trial and Appeal Board

Sep 6, 2017

13174197 (P.T.A.B. Sep. 6, 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.
13/174,197 06/30/2011 Harish B. Kamath 82748118 1467
22879
HP Tnr
7590 09/08/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
KY, KEVIN
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
09/08/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARISH B. KAMATH and RAJESH BHATIA
Appeal 2015-006650
Application 13/174,1971
Technology Center 2600
Before DEBRA K. STEPHENS, BRUCE R. WINSOR, and
AMBER L. HAGY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—3, 5, and 7—20, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 4 and 6
are cancelled.2 See Amendment under 37 C.F.R. § 1.111 at 3, July 18, 2014.
We affirm.
1 The real party in interest identified by Appellants is Hewlett-Packard
Development Company, LP, which is a wholly owned affiliate of Hewlett-
Packard Company and is managed by HPQ Holdings, LLC. App. Br. 3.
2 The Final Office Action erroneously identifies claims 4 and 6 as pending.
See Final Act. 1 (item 5).
Appeal 2015-006650
Application 13/174,197
STATEMENT OF THE CASE
Appellants’ disclosed invention relates to personalized identifiers for
printers. Spec. Title. Claim 1, which is illustrative, reads as follows:
1. A method to create a personalized identifier for a
network-connected printer, comprising:
receiving, at a computer system, data associated with a
user of the network-connected printer;
parsing, from the data, profile information for the user of
the network-connected printer;
generating a personalized identifier for the network-
connected printer, including incorporating at least a portion of
the profile information of the user into the personalized
identifier of the network-connected printer, wherein print jobs
sent to the personalized identifier over the network are provided
to the network-connected printer; and
registering the personalized identifier of the network-
connected printer with a registry of computing device
identifiers.
The Examiner relies on the following prior art in rejecting the claims:
Kinoshita et al. US 2003/0107762 Al June 12, 2003
Shozaki et al. US 2006/0099947 Al May 11,2006
Stumbo et al. US 7,483,179 B2 Jan. 27, 2009
Fu US 2011/0270909 Al Nov. 3,2011
McCann, JR. US 2012/0084365 Al Apr. 5, 2012
Claims 1—3 and 12 stand rejected under 35 U.S.C. § 103(a)3 as being
unpatentable over Shozaki et al. (hereinafter “Shozaki”) and Kinoshita et al.
(hereinafter referred to as Kinoshita). See Final Act. 2—6.
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011. Final Act 2.
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Application 13/174,197
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shozaki, Kinoshita, and Stumbo et al. (hereinafter
“Stumbo”). See Final Act. 6.
Claims 7—11 and 13—15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shozaki, Kinoshita, and McCann, JR. (hereinafter
“McCann”). See Final Act. 6—9.
Claims 16—19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shozaki, Kinoshita, and Fu. See Final Act. 9-11.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shozaki, Fu, and Kinoshita. See Final Act. 11—14.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Feb. 18, 2015; “Reply Br.” filed June 29, 2015) and the
Specification (“Spec.” filed June 30, 2011) for the positions of Appellants
and the Final Office Action (“Final Act.” mailed Sept. 26, 2014) and Answer
(“Ans.” mailed Apr. 29, 2015) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUES
The issues presented by Appellants’ arguments are as follows:
Does the Examiner err in finding the combination of Shozaki and
Kinoshita teaches or suggests “generating a personalized identifier for the
network-connected printer, including incorporating at least a portion of the
profile information of the user into the personalized identifier of the
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Application 13/174,197
network-connected printer” (the “generating limitation”) as recited in claim
1?
Does the Examiner err in finding the combination of Shozaki and
Kinoshita teaches or suggests “print jobs sent to the personalized identifier
over the network are provided to the network-connected printer” (the
“providing limitation”) as recited in claim 1?
ANALYSIS
The Generating Limitation
The Examiner finds Shozaki teaches the generating limitation. Final
Act. 2—3 (citing Shozaki 131, Figs. 2A—B (items SI 12, SI 16), 4); see also
Ans. 14—15 (additionally citing Shozaki || 25—26, Fig. 1 (items 10, 32)).
The Examiner maps the recited “network connected printer” to Shozaki’s
Multi-Functional Peripheral (MFP) 10 (Ans. 3; see Shozaki 15) and the
recited “personalized identifier of the network connected printer” to
Shozaki’s “abbreviated key” (Final Act. 2; Ans. 14—15).
Appellants argue Shozaki’s “user ID” does not teach or suggest the
recited “personalized identifier of the network connected printer.” See App.
Br. 10-11. Appellants’ argument is unpersuasive because it is not
commensurate with the rejection articulated by the Examiner. The Examiner
relies on Shozaki’s “abbreviated key” to teach or suggest the “personalized
identifier of the network connected printer.” See Final Act 2—3. Appellants
do not identify, in their Appeal Brief, any error in the Examiner’s finding
that Shozaki’s “abbreviated key” teaches or suggests the “personalized
identifier of the network connected printer.”
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Application 13/174,197
Appellants assert, for the first time in the Reply Brief, that Shozaki
teaches a user accessing Shozaki’s network system 10, and not Shozaki’s
printer 30. See Reply Br. 4. We are not persuaded of error. Shozaki’s
network system is “a multi-functional peripheral (MFP) 10, which is a
network device and has many functions to be operated as a printer, a
copying machine, a scanner, a facsimile apparatus and the like.” Shozaki
122 (describing Fig. 1). Appellants’ Specification provides the following
definition: “‘Printer’ or ‘printing device’ refers to any electronic device that
prints and includes multifunctional electronic devices that perform
additional functions such as scanning and/or copying.” Spec. 114
(emphasis added). Clearly, Shozaki’s MFP 10 falls within the Appellants’
express definition of a “printer.”
Also for the first time in the Reply Brief, Appellants mention
Shozaki’s “abbreviated key,” but do so clustering it with the Shozaki’s “user
name” and “password.” See Reply Br. 5. Appellants contend “the
abbreviated key ... in Shozaki [is] not generated for the printer 30 in Fig. 1.
In fact, the system in Shozaki does not generate any particular identifier for
the printer 30 in Fig. 1.” Id.
As discussed above, Appellants’ definition of a printer is not limited
to Shozaki’s printer 30, but rather encompasses all of Shozaki’s MFP 10.
Shozaki teaches “[i]n the MFP 10, an abbreviated key . . . [is] automatically
. . . created for the new user, and the new user is registered.” Shozaki 134.
Thus, Shozaki teaches that the “abbreviated key” is created by the Shozaki’s
MFP 10, i.e, the “network-connected printer” (claim 1), and one of ordinary
skill in the art would understand that an abbreviated key created by the
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“network-connected printer” to grant access to the “network-connected
printer” would be for, and would identify, the “network-connected printer.”
Appellants contend “the system in Shozaki does not generate ... a
personalized identifier for the printer that incorporates a portion of the user’s
profile information, as recited in independent claim 1.” Reply Br. 5.
Appellants’ conclusory argument is unpersuasive because Appellants do not
address the Examiner’s reliance on Shozaki’s Fig. 4. See Final Act. 3.
Furthermore, Shozaki teaches “[a] user name, . . . [is] transmitted to the
MFP 10 (S208)” (Shozaki 134), and “[t]he name of the abbreviated key is
automatically created from the input user name” {id. 136 (emphasis added)).
The Providing Limitation
Appellants contend that
even if Kinoshita disclosed sending print jobs to a personalized
identifier of a printer, as alleged by the Examiner, the proposed
combination of Shozaki and Kinoshita would not have been
obvious because of the fact that the user ID created in Shozaki is
for a user at a user terminal and not for the printer 30.
App. Br. 12. In other words, Appellants’ argument regarding the providing
limitation is based on the contention that Shozaki’s “user ID” does not teach
or suggest the recited “personalized identifier of the network connected
printer.” We find this argument unpersuasive for the same reasons as
discussed above for the generating limitation.
Appellants contend “there is no motivation for one skilled
in the art to utilize the user ID created for the user, as discussed in Shozaki,
into the email address of the printer in Kinoshita.” Reply Br. 7. We are not
persuaded of error because the argument misstates the rejection articulated
by the Examiner. Rather than incorporating Shozaki’s user ID into
Kinoshita’s email address, the combination articulates using Shozaki’s
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Application 13/174,197
abbreviated key in the same manner that Kinoshita uses its email address,
i.e., as an “address” to which print jobs may be directed. See Final Act. 2—3.
CONCLUSION
On the record before us, we find no error in the rejection of claim 1.
Accordingly, for the reasons discussed above, we sustain the rejection of
claim 1. Appellants argue that none of Stumbo, Fu, and McCann cure the
alleged deficiencies in the combination of Shozaki and Kinoshita but
otherwise argue the patentability of claims 2, 3, 5, and 7—20 based on their
similarity to, or dependency from, claim 1. See App. Br. 13—17.
Accordingly, for the same reasons as articulated for claim 1, we also sustain
the rejections of claims 2, 3, 5, and 7—10.
DECISION
The decision of the Examiner to reject claims 1—3, 5, and 7—20 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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).
AFFIRMED
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