Ex Parte Kassan

Board of Patent Appeals and Interferences

Apr 28, 2010

10671194 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte PETER KASSAN 8
___________ 9
10
Appeal 2008-002078 11
Application 10/671,194 12
Technology Center 3600 13
___________ 14
15
Decided: April 28, 2010 16
___________ 17
18
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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2
STATEMENT OF THE CASE 1
Peter Kassan (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2
a final rejection of claims 1-27 and 29-52, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a way of reproducing Internet web site content 10
on printed media (Specification 1:¶ 0002). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. A method for providing printed pages of web hosted 15
information in response to an electronic request received over a 16
communication network, the method comprising: 17
[1] providing add-in software operable with a web site, 18
the add-in software enabling 19
a visitor of the web site 20

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 14, 2007) and Reply Brief (“Reply Br.,” filed October 1,
2007), and the Examiner’s Answer (“Ans.,” mailed July 31, 2007).
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to submit a request 1
for receiving a printed copy of web hosted information 2
that is displayable as web pages; 3
[2] receiving electronic order information representing the 4
request; 5
[3] processing the electronic order information 6
to provide electronic production information 7
representing instructions for fulfilling the request; 8
[4] transmitting the electronic production information to a 9
fulfillment facility; 10
and 11
[5] providing to the visitor 12
the requested web hosted information from the 13
fulfillment facility in the form of printed pages. 14
THE REJECTIONS 15
The Examiner relies upon the following prior art: 16
Freedman US 4,839,829 Jun. 13, 1989
Fischer US 2002/0010638 A1 Jan. 24, 2002
Arledge US 6,535,294 B1 Mar. 18, 2003
Ximenes US 2003/0069811 A1 Apr. 10, 2003
Mulvey US 2003/0208718 A1 Nov. 6, 2003
Examiner cited References from PTO form 892, mailed May 23, 2006: 17
Libby Estell. Mixed Media. Incentive, Vol. 176, Iss. 11; p.17. Nov. 18
2002, 19
http://proquest.umi.com/pqdweb?did=236548131&sid=7&Fmt=4&cli 20
entld=19649&RQT=309&VName=PQD. (Heretofore Reference U). 21
22
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Robert C. Higgins. Analysis for Financial Management, Sixth edition. 1
The McGraw-Hill Companies, Inc. 2001. (Heretofore Reference V). 2
Samantha Oller. Faster finishing for quick printers. American Printer. 3
Vol. 227, Iss. 5; p. 28-32. Aug 2001. 4
http://proquest.umi.com/pqdweb?did=79130192&sid=2&Fmt=4&clie 5
ntld=19649&RQT=309&VName=PQD. (Heretofore Reference X). 6
Snapfish. 7
http://web.archive.org/web/20021115080630/http://www.snapfish.com. 8
(last visited Nov 15, 2002). (Heretofore Reference UU) 9
Nancy Rouse. How to get the most out of reprints. Folio: The Magazine 10
for Magazine Management. Vol. 24, Iss. 19; p. 232. 11
http://proquest.umi.com/pqdweb?did=7750920&sid=4&Fmt=3&clien 12
tld=l9649&RQT=309&VName=PQD. (Heretofore Reference VV). 1996 13
Claims 1, 2, 8, 12, 13, 15, 18-20, 23, 24, 29, 40, 44, 46, 47, 50, and 51 14
stand rejected under 35 U.S.C. § 102(e) as anticipated by Ximenes. 15
Claims 3-6, 41-43, and 45 stand rejected under 35 U.S.C. § 103(a) as 16
unpatentable over Ximenes and Freedman. 17
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 18
Ximenes and reference X. 19
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable 20
over Ximenes and Mulvey. 21
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 22
Ximenes, Mulvey, and Fischer. 23
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 24
Ximenes and reference UU. 25
Claims 16, 17, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as 26
unpatentable over Ximenes and reference VV. 27
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Claims 21, 22, and 30-39 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Ximenes and Arledge, Jr. 2
Claims 27, 48, and 49 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Ximenes and reference UU. 4
Claim 52 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 5
Ximenes and reference VV. 6
7
ARGUMENT 8
The only claims argued are independent claims 1 and 29, which are 9
argued together. Thus the remaining claims stand or fall with those claims. 10
The Appellant argues that Ximenes fails to disclose printing web hosted 11
information displayable as web pages. Appeal Br. 7; see also Reply Br. 2. 12
13
ISSUE 14
The sole issue in this appeal is whether Ximenes describes software 15
enabling a visitor of the web site to submit a request for receiving a printed 16
copy of web hosted information that is displayable as web pages and 17
providing requested web hosted information in the form of printed pages. 18
(claim 1: Limitations [1] & [5]). 19
20
FACTS PERTINENT TO THE ISSUES 21
The following enumerated Findings of Fact (FF) are believed to be 22
supported by a preponderance of the evidence. 23
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Facts Related to the Prior Art - Ximenes 1
01. Ximenes is directed to on-demand, high quality reproduction of 2
visual images selected from a computer-accessible library of 3
visual images. Ximenes ¶ 0001. 4
02. Ximenes uses a catalog server and ordering server, in 5
communication with ordering portals and in communication with 6
one or more print facilities. Users search available images and 7
order a reproduction including a reproduction format. The user 8
does this over computer networks such as the internet and the 9
order server can communicate with the print facility in similar 10
manner. Ximenes ¶ 0007. 11
03. The on-demand reproduction of visual images afforded by 12
Ximenes enables reproductions in a wide range of formats. A 13
single print file can accommodate a range of sizes for the 14
reproduction and reproductions on a variety of substrates. Various 15
other format choices are also available, including, for example, 16
aspect ratio (if the visual image is amenable to changing aspect 17
ratio), post reproduction treatments (e.g., canvas stretching, 18
framing options), colors (e.g., a reproduction of an exotic car can 19
be produced in a variety of colors). Ximenes ¶ 0043. 20
04. An order specifying the information required to produce the 21
desired reproduction can be transmitted from the portal using a 22
local or centralized catalog server. An order server accepts the 23
order information and transmits to a print facility where the order 24
is printed. The print file associated with the order can be 25
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transmitted to the print facility, or can be stored at the print 1
facility. Ximenes ¶ 0045. 2
PRINCIPLES OF LAW 3
Anticipation 4
"A claim is anticipated only if each and every element as set forth in the 5
claim is found, either expressly or inherently described, in a single prior art 6
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 7
631 (Fed. Cir. 1987). "When a claim covers several structures or 8
compositions, either generically or as alternatives, the claim is deemed 9
anticipated if any of the structures or compositions within the scope of the 10
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 11
Cir. 2001). "The identical invention must be shown in as complete detail as 12
is contained in the... claim." Richardson v. Suzuki Motor Co., 868 F.2d 13
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 14
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 15
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 16
ANALYSIS 17
The two claims argued recite enabling a visitor of the web site to submit 18
a request for receiving a printed copy of web hosted information that is 19
displayable as web pages. The remaining limitations are conventional order 20
processing and fulfillment elements and there is no contention regarding 21
whether Ximenes describes those. 22
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The Appellant argues that Ximenes fails to disclose printing web hosted 1
information displayable as web pages. Appeal Br. 7; also Reply Br. 2. The 2
Appellant elaborates on this that 3
the individual visual images displayed on Ximenes' catalog that 4
are available for reproduction are not web hosted information 5
displayable as web pages as required by claims 1 and 29. They 6
are merely images displayed on a web page via the internet. 7
Appeal Br. 9. The Examiner found that in Ximenes, 8
the catalog/library is hosted on the web, displayed to a user via 9
a webpage through the web browser, and is printed at the print 10
facility as a result of a purchase order by a user 11
Ans. 22. We see that the Appellant and the Examiner are interpreting 12
the scope of claim limitation [1] differently. So the issue appears to be that 13
of the scope of limitation [1] of claim 1. To determine this, we must first 14
construe this limitation. 15
Claim 1 limitation [1] recites 16
providing add-in software operable with a web site, 17
the add-in software enabling 18
a visitor of the web site 19
to submit a request 20
for receiving a printed copy of web hosted information 21
that is displayable as web pages; 22
The first thing to note is that this limitation is to software that enables a 23
visitor to submit a request, which there is no argument that Ximenes has. 24
The request is to receive a printed copy. Again, there is no contention as to 25
Ximenes anticipating this. 26
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The issue is what the printed copy is to be. The next phrase is “web 1
hosted information.” Clearly Ximenes prints copies of information that its 2
web system hosts. That is to say, a customer sends an order for a print of a 3
visual image found on a catalogue server web site. FF 02 - 04. 4
So now we come to the critical phrase “that is displayable as web 5
pages.” The Appellant argues that this phrase modifies the printed copy, 6
whereas the Examiner found that this phrase modified web hosted 7
information. Perhaps more accurately, that Appellant argues that the phrase 8
“that is displayable as web pages” modifies the manner in which the copy of 9
web hosted information is printed. 10
Since the phrase “web hosted information” is closest to the displayable 11
limitation at issue, we agree that web hosted information is being modified. 12
Although the manner in which each of the phrases “of web hosted 13
information” and “that is displayable as web pages” can be interpreted a 14
number of different ways to modify the phrase “receiving a printed copy,” 15
this is the simplest and straightest forward and therefore what would be the 16
plain meaning of the entire phrase. During examination of a patent 17
application, pending claims are given their broadest reasonable construction 18
consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05 19
(CCPA 1969). In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. 20
Cir. 2004). 21
So the scope of limitation [1] is any add-in software that enables one to 22
request a printed copy of an image that is displayable, as evidenced by being 23
displayed, on a web page. We note that limitation [5], which requires that 24
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the request be carried out, simply requires that the web hosted information 1
be printed, which Ximenes does. FF 04. 2
No other claims were argued, and so the rejections of the remaining 3
claims stand with those of claims 1 and 29. 4
5
CONCLUSIONS OF LAW 6
The Examiner did not err in rejecting claims 1, 2, 8, 12, 13, 15, 18-20, 7
23, 24, 29, 40, 44, 46, 47, 50, and 51 under 35 U.S.C. § 102(e) as anticipated 8
by Ximenes. 9
The Examiner did not err in rejecting claims 3-6, 41-43, and 45 under 10
35 U.S.C. § 103(a) as unpatentable over Ximenes and Freedman. 11
The Examiner did not err in rejecting claim 7 under 35 U.S.C. § 103(a) 12
as unpatentable over Ximenes and reference X. 13
The Examiner did not err in rejecting claims 9 and 10 under 35 U.S.C. 14
§ 103(a) as unpatentable over Ximenes and Mulvey. 15
The Examiner did not err in rejecting claim 11 under 35 U.S.C. § 103(a) 16
as unpatentable over Ximenes, Mulvey, and Fischer. 17
The Examiner did not err in rejecting claim 14 under 35 U.S.C. § 103(a) 18
as unpatentable over Ximenes and reference U. 19
The Examiner did not err in rejecting claims 16, 17, 25, and 26 under 20
35 U.S.C. § 103(a) as unpatentable over Ximenes and reference V. 21
The Examiner did not err in rejecting claims 21, 22, and 30-39 under 22
35 U.S.C. § 103(a) as unpatentable over Ximenes and Arledge. 23
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The Examiner did not err in rejecting claims 27, 48, and 49 under 1
35 U.S.C. § 103(a) as unpatentable over Ximenes and reference UU. 2
The Examiner did not err in rejecting claim 52 under 35 U.S.C. § 103(a) 3
as unpatentable over Ximenes and reference VV. 4
5
DECISION 6
To summarize, our decision is as follows. 7
• The rejection of claims 1, 2, 8, 12, 13, 15, 18-20, 23, 24, 29, 40, 44, 8
46, 47, 50, and 51 under 35 U.S.C. § 102(e) as anticipated by 9
Ximenes is sustained. 10
• The rejection of claims 3-6, 41-43, and 45 under 35 U.S.C. § 103(a) as 11
unpatentable over Ximenes and Freedman is sustained. 12
• The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable 13
over Ximenes and reference X is sustained. 14
• The rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as 15
unpatentable over Ximenes and Mulvey is sustained. 16
• The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable 17
over Ximenes, Mulvey, and Fischer is sustained. 18
• The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable 19
over Ximenes and reference UU is sustained. 20
• The rejection of claims 16, 17, 25, and 26 under 35 U.S.C. § 103(a) as 21
unpatentable over Ximenes and reference VV is sustained. 22
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• The rejection of claims 21, 22, and 30-39 under 35 U.S.C. § 103(a) as 1
unpatentable over Ximenes and Arledge is sustained. 2
• The rejection of claims 27, 48, and 49 under 35 U.S.C. § 103(a) as 3
unpatentable over Ximenes and reference UU is sustained. 4
• The rejection of claim 52 under 35 U.S.C. § 103(a) as unpatentable 5
over Ximenes and reference VV is sustained. 6
No time period for taking any subsequent action in connection with this 7
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 8
9
AFFIRMED 10
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