Ex Parte Kim et al

Patent Trial and Appeal Board

Jun 30, 2016

12059916 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/059,916 03/3112008
29989 7590 07/05/2016
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
SeongKim
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.
49986-0653 5707
EXAMINER
SHAH, BHARA TKUMAR S
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEO NG KIM, SEIICHI KAT ANO,
and JAY ASIMHA NUGGEHALLI
Appeal2014-008536
Application 12/059,916
Technology Center 2600
Before JOSEPH L. DIXON, JAMES R. HUGHES, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008536
Application 12/059,916
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-18. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
The invention relates to authenticating a user at a printing device and
determining whether a user-provided password matches a password
associated with certain print data in order to print the print data (Spec. i-f 10).
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A printing device comprising:
a user interface configured to display information to users
and receive user input from the users; and
a locked print module configured to:
examine print data received by the printing device
and determine \vhether the print data should be processed
as locked print data based upon whether the print data
includes one or more password commands that indicate
that an electronic document represented in the print data is
a policy-enabled electronic document, a PDF password
protected document or a locked print document,
in response to determining that the print data should
be processed as locked print data based upon the print data
including one or more password commands that indicate
that an electronic document represented in the print data is
a policy-enabled electronic document, a PDF password
protected document or a locked print document, then cause
the print data to be stored at the printing device instead of
being processed for printing,
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Appeal2014-008536
Application 12/059,916
authenticate a user via the user interface and upon
successful authentication of the user, allow the user to
request, via the user interface, printing of the print data,
in response to detecting a user request to print the
print data, querying the user via the user interface for a
password for the print data,
if the password received from the user via the user
interface matches the password for the print data, then
determining one or more password command
types of the one or more password commands that
are contained in the print data and that indicate that
an electronic document represented in the print data
is a policy-enabled electronic document, a PDF
password protected document or a locked print
document,
processing the print data based upon the one
or more password command types of the one or
more password commands that are contained in the
print data and that indicate that an electronic
document represented in the print data is a policy-
enabled electronic document, a PDF password
protected document or a locked print document, and
causing the processed print data to be printed
at the printing device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kurozasa
Lester
US 6,614,546 B 1 Sept. 2, 2003
US 2008/0066185 Al Mar. 13, 2008
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Appeal2014-008536
Application 12/059,916
REJECTION
The Examiner made the following rejection:
Claims 1-18 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Lester and Kurozasa.
ANALYSIS
The Examiner finds the combination of Kurozasa and Lester discloses
all the limitations of claim 1, including "A printing device comprising: ... a
locked print module" (Final Act. 4---6). Appellants contend "there is no
teaching or suggestion that the system of Lester may be implemented on a
printing device" and "there is no teaching or suggestion in Lester of a
printing device with a locked print module that performs the functionality
recited in Claim 1" (App. Br. 6). We agree with Appellants.
Lester discloses an access management system for managing access to
electronic documents (Lester, i-f 18). The system includes a client machine
102 connected via network 105 to document distribution servers 106, which
are in tum connected to a document database 112 (Lester, i-f 18; Fig. 1 ). The
database contains documents generated by document generation machine
114 using applications such as Microsoft Word and Adobe Acrobat (Lester,
i-f 19). The document generation machine can "allow a document author to
assign permissions that specify a level of access to a specific document (e.g.,
restrictions or permissions with respect to printing ... " (Lester, i-f 21).
Accordingly, "document access application 104 may, prior to providing any
access to a particular document 115, also require user identification (e.g., a
usemame/password pair, biometric identification or single-use passwords,
tokens or smartcard)" (Lester, i-f 25).
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Appeal2014-008536
Application 12/059,916
The Examiner identifies Lester's document generation machine 114 as
the claimed "printing device comprising: ... a locked print module" (Final
Act. 4; Ans. 8-9). However, Lester's document generation machine merely
creates an electronic document (see Lester, ,-r 19). The Examiner has not
shown Lester's document generation machine is a "printing device" that can
print an electronic document through the use of a "locked print module," as
recited in claim 1. While Lester's document application 104 running on
client 102 performs an authentication function for access to an electronic
document (see Lester, ,-r 25}-providing at least some of the functionality of
the "locked print module"-the Examiner has not shown client 102 is a
"printing device." Thus, although Lester suggests an electronic document
can be printed---describing "restrictions or permissions with respect to
printing" (see Lester, ,-r 21 }-the Examiner has not shown Lester teaches a
"printing device" with a "locked print module" that can perform the
functions recited in claim 1, for example, "authenticate a user," "processing
the print data," and "causing the processed print data to be printed." 1
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claims 7 and 13 which
1 We make no findings and, in the event of further prosecution, we leave it to
the Examiner to consider whether it would have been obvious, in view of
Kurozasa's printer (see Kurozasa, Abstract), to combine Lester and
Kurozasa to create an access management system with a printer that
collectively meets the broadest reasonable interpretation of a "printing
device comprising: ... a locked print module." The Examiner has
specifically relied on Lester's document generation machine 114 to meet the
limitation of a "printing device," and as discussed above, we find this to be
in error. Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Appeal2014-008536
Application 12/059,916
recited commensurate limitations, and dependent claims 2---6, 8-12, and 14-
18 for similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 1-18 under 35 U.S.C.
§ 103(a).
DECISION
For the above reasons, the Examiner's rejection of claims 1-18 is
reversed.
REVERSED
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