Ex Parte Laughlin

Board of Patent Appeals and Interferences

Sep 27, 2010

09976302 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN DAVID LAUGHLIN
____________________

Appeal 2009-007020
Application 09/976,302
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, STEPHEN C. SIU, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
2-5, 11, 12, 18, 19, and 22-33. Claims 1, 6-10, 13-17, 20 and 21 have been
cancelled. (App. Br. 4). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Introduction
According to Appellant, the invention is a system and method for
“Defining Separate Print Quality Regions within a Print Job.” (Spec. 1,
¶ [02]). More specifically, the present invention relates to “generating a
print job with an application on a host computer, specifying characteristics
of that print job using a printer driver on the host computer and outputting
that print job to a printing device that produces a hard copy rendering of the
print job in accordance with the formatting provided by the printer driver.”
(Spec. 1, ¶ [04]). This allows a user to define the print quality setting for
regions within each page of a print job. (Id.).

STATEMENT OF CASE
Exemplary Claim
Claim 2 is an exemplary claim and is reproduced below:
2. A printer driver stored on a computer-readable medium
comprising:

an interface configured to receive print job data;

a print job formatting routine which notes one or more
regions within a print job derived from said print job data and
further specifies a particular print quality level at which each
such region is then printed;

a WYSIWYG display routine for generating a
WYSIWYG display of said print job; and
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a user input routine for receiving user input defining said
one or more regions within said print job using said
WYSIWYG display, wherein said user input can selectively
define any portion of said print job as a said region with an
independently-specified print quality level, said regions
including or excluding any particular element or elements of
said print job as desired by a user.

Prior Art
Naik
Nicoloff, Jr.
Terasaka
US 5,579,446
US 6,017,113
US 6,236,462 B1
Nov. 26, 1996
Jan. 25, 2000
May 22, 2001

Rejections
Claims 2-5, 11, 12, 18, 19, 25-27, and 29-33 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Naik and Terasaka (Ans. 4).
Claims 22-24 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Naik, Terasaka, and Nicoloff, Jr. (Ans. 20).

ISSUE
35 U.S.C. § 103(a): claims 2-5, 11, 12, 18, 19, 25-27, and 29-33
Appellant asserts the invention as recited in claim 2 is not obvious
over Naik and Terasaka because the combination of references does not
teach or suggest “a print driver, system or method in which a user can
specify different print quality levels for different user defined regions of a
print job.” (App. Br. 14). Specifically, Appellant contends Terasaka teaches
a system that allows previewing of a print job on a host system prior to
printing of the job. (Id.). Appellant further argues that although Terasaka
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teaches partial printing, this is related to printing on a page-by-page basis
(App. Br. 15-16 and Reply 3-4). Thus, Appellant contends it would be a
tremendous leap to take Terasaka’s partial print job printing on a page-by-
page basis as teaching specifying different print quality levels for different
user defined regions of a print job (id.).
The Examiner finds Terasaka teaches that a print preview is created
(Ans. 24). This, according to the Examiner, allows an operator to modify
the print setting and create a modified preview (id.). The Examiner further
finds that Terasaka teaches the print request processing and print setting
storing section have a terminal configured table and a print setting table for
each terminal that specifies the optimum print setting for each kind of form
(id.). Coupled with Terasaka’s teaching of partial printing, the Examiner
determines one of ordinary skill in the art would conclude the modifiable
print setting could be applied to a document or regions of the document
(Ans. 24-25).

Issue: Has Appellant shown the Examiner erred in finding that the
combination of references teaches a user input routine for receiving user
input to selectively define any portion of a print job as a region with an
independently-specified print quality level?

FINDINGS OF FACT (FF)
Terasaka
(1) Terasaka teaches a method and system for printing in a
computer system having a host computer and a terminal side. A host
computer predicts results of printing at a terminal side. Print settings at the
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terminal side can be changed from the host computer as the host computer
includes emulators that emulate the operations system of the terminal
equipment. This enables the printer driver loaded from the terminal
equipment to be run on the host computer and permits a preview of material
to be printed at the terminal equipment. (Abstract, col. 3, ll. 48-65; col. 4, ll.
7-11).
(2) The host computer has a WYSIWYG (What You See Is What
You Get) system that includes a preview creating section. (Col. 3, ll. 60-65).
“When a preview request is issued from the general application 8, the
preview creating section 12 creates a print preview of form data by using the
emulating environment corresponding to the terminal specified by the
preview request, and returns the created print preview to the general
application 8. The general application 8 displays the received print preview
on the display screen.” (Col. 4, ll. 28-34 and Fig. 3).
(3) The print settings at the terminal may be manually changed by
the printing processing section of the host computer, to generate a desired
print preview and once selected, the print settings may be stored. When a
preview request is received, the WYSIWYG system creates a print preview.
The operator of the host computer can then view the print preview and
determine if the print settings need to be modified (to change the format) or
saved. The operator can modify the print settings until the desired result is
achieved. When a print request is received, the WYSIWYG system sends
the print request, with the form data appended to it. (Col. 3, ll. 48-65; col. 4,
ll. 7-8 and 28-34; col. 6, ll. 9-14; col. 7, ll. 31-49; col. 8, ll. 29-31 and Fig.5).
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(4) The print settings and the print request are separately sent to the
terminal, or alternatively, the print settings may be included in the form data
appended to the print request. (Col. 7, ll. 45-49 and Fig. 6).
(5) The system allows for partial printing since the printed page
count matches between the host computer and the host terminal printer
emulator. (Col. 8, ll. 29-31).

ANALYSIS
We agree with Appellant that Terasaka does not teach or suggest a
user input routine for receiving user input to selectively define any portion
of a print job as a region with an independently-specified print quality level.
The Examiner relies on Terasaka’s teaching of a preview function allowing
modification of the print settings (FF 2 and FF 3); the system sending the
print settings to the terminal or including the print settings in the form data
appended to the print request (FF 4); and the system permitting partial
printing (FF 5). (Ans. 5). The Examiner then finds that this teaches a user
selectively defining a region within the print job and assigning that region an
independent-specified print quality level. (Id.).
We find that the gap between Terasaka’s teachings and the recited
limitation to be uncomfortably wide and such gap cannot be bridged with
theories or speculation. In particular, we find the Examiner has not
sufficiently shown how the ability to modify print settings using a print
preview function; send print settings in the form data; and partially printing
teaches or suggests that a user can selectively define a region and its print
quality level in a print job.
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The Examiner has not presented any persuasive arguments or
evidence that Naik cures the deficiencies of Terasaka. Accordingly,
Appellant has shown the Examiner erred in finding that the combination of
references teaches “a user input routine for receiving user input defining said
one or more regions within said print job using said WYSIWYG display,
wherein said user input can selectively define any portion of said print job as
a said region with an independently-specified print quality level” as recited
in independent claim 2 and commensurately recited in independent claims
11, 18, 25, 32, and 33. Therefore, Appellant has shown the Examiner erred
in rejecting independent claims 2, 11, 18, 25, 32, and 33 and dependent
claims 3-5, 12, 19, 26, 27, and 29-31 for obviousness over Naik and
Terasaka.
35 U.S.C. § 103(a): claims 22-24 and 28
Dependent claims 22-24 and 28 depend from claims 2, 11, 18, and 25
respectively. Appellant has shown the Examiner erred in finding the
combination of Naik and Terasaka, taken alone or in combination, teaches or
suggests the invention as recited in claims 2, 11, 18, and 25, as set forth
above. The Examiner has not presented any persuasive evidence or
argument that Nicoloff, Jr. cures the deficiencies of Naik and Terasaka.
Accordingly, Appellant has shown the Examiner erred in rejecting claims
22-24 and 28 for obviousness over Naik, Terasaka, and Nicoloff, Jr.

DECISION
The Examiner’s rejection of claims 2-5, 11, 12, 18, 19, 25-27, and
29-33 under 35 U.S.C. § 103(a) as being obvious over Naik and Terasaka is
reversed.
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The Examiner’s rejection of claims 22-24, and 28 under 35 U.S.C.
§ 103(a) as being obvious over Naik, Terasaka, and Nicoloff, Jr. is reversed.

REVERSED

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