Ex Parte Lozano

Patent Trial and Appeal Board

Feb 26, 2013

10377438 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROSA AURORA LOZANO
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Appeal 2010-008852
Application 10/377,438
Technology Center 2600
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Before JEAN R. HOMERE, JOHNNY A. KUMAR, and BRYAN F.
MOORE, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008852
Application 10/377,438

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-18 and 20-28. Claim 19 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellant, the invention relates to an automated method
for determining an Internet Protocol (IP) address of printers that are in
communication with a computer. See Abstract.

STATEMENT OF THE CASE
Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. An automated method of detecting the internet protocol
(IP) address of a network printer that is in communication with
a computer having a registry, the computer not serving as an
actual or virtual print server, and of using that internet protocol
(IP) address to test the printer, comprising the following steps
performed by a printer test program running on the computer:
generating a list of at least some printers the computer’s
registry indicates have been installed on the computer,
including at least one network printer;
using the computer’s registry, generating at least one
vector including, when available, any IP or UNC address, port
name, and/or printer name associated with the network printer
or its port and also associated by the computer’s registry with a
print server or port monitor;
retrieving the internet protocol (IP) address of the
network printer by retrieving that address directly from the
vector or by retrieving it from a domain name server after
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submitting to the domain name server all or a part of a printer’s
name, port name, or UNC address found in the vector; and
using the retrieved internet protocol (IP) address to test
the printer, bypassing any printer driver software.

Rejections1
The Examiner rejected claims 1, 2, 7, 10, 11, 16, 20, 25, and 28 under
35 U.S.C. § 103(a) as being unpatentable over Carney (US 7,016,060 B1,
Mar. 21, 2006) and Schlonski (US 7,187,461 B2, Mar. 6, 2007). Ans. 3-10.
The Examiner rejected claims 3, 12, and 21 under 35 U.S.C. § 103(a)
as being unpatentable over Carney, Schlonski, and Danknick (US 6,021,429,
Feb. 1, 2000). Ans. 10-11.
The Examiner rejected claims 4, 5, 13, 14, 22, and 23 rejected under
35 U.S.C. § 103(a) as being unpatentable over Carney, Schlonski, and
Furukawa (US 6,711,623 B1, Mar. 23, 2004). Ans. 11-13.
The Examiner rejected claims 9, 18, and 27 under 35 U.S.C. § 103(a)
as being unpatentable over Carney, Schlonski, and Sistanizadeh (US
5,790,548, Aug. 4, 1998). Ans. 13-14.
The Examiner rejected claims 6, 7, 15, 16, 24, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Carney, Schlonski, and French (US
6,654,794 B1, Nov. 25, 2003). Ans. 14-16.
The Examiner rejected claims 8, 17, and 26 under 35 U.S.C. § 103(a)
as being unpatentable over Carney, Schlonski, and Aoki (US 2002/0041394
A1, Apr. 11, 2002). Ans. 16.

1 Independent claims 10 and 28 recite similar subject matter. Separate
patentability is not argued for claims 2-18 and 20-28. Except for our
ultimate decision, these claims are not discussed further herein.
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APPELLANT’S CONTENTIONS
1. Appellant contends that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because Carney and Schlonski do
not teach or suggest:
a) “the computer not serving as an actual or virtual print server”
(App. Br. 11);
b) “using the computer’s registry, generating at least one vector
including, when available, any IP or UNC address, port name,
and/or printer name associated with the network printer or its
port and also associated by the computer’s registry with a print
server or port monitor” (id.); and
c) “retrieving the [internet protocol] (IP) address of the network
printer by retrieving that address directly from the vector” (id.).
2. Appellant also contends that the Examiner erred in rejecting
independent claim 1 under 35 U.S.C. § 103(a) because Carney and
Schlonski do not teach or suggest “using the retrieved internet
protocol (IP) address to test the printer, bypassing any printer driver
software.” Id. at 11-12. In particular, Appellant contends that
“Schlonski does not teach anything about how to ping devices that lie
beyond the bounds of a local area network”. Id. at 12.
3. Appellant contends that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because Carney and Schlonski do
not teach or suggest:

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a) the claimed method which “is performed after a network printer
has already been associated with a port monitor, which
association is read from the registry” (Reply Br. 5); and
b) “that components of a ‘vector’ listed in claim 1 are assembled
into a vector” (id. at 6).
4. Appellant contends that the Examiner erred in rejecting independent
claim 10 under 35 U.S.C. § 103(a) because the “subject matter [of
claim 10] is simply beyond the scope and content of the cited prior
art.” Reply Br. 8.
5. Appellant contends that the Examiner erred in rejecting independent
claim 28 under 35 U.S.C. § 103(a) because the “subject matter [of
claim 28] is simply beyond the scope and content of the cited prior
art.” Reply Br. 9.
6. Appellant contends that the Examiner erred in rejecting claim 2 under
35 U.S.C. § 103(a) because “[t]here is no teaching or suggestion in the
cited prior art of generating a port monitor vector with the recited
elements after a printer and port monitor have been paired.” Reply Br.
10.

ISSUE
Did the Examiner err in rejecting claims 1-18 and 20-28 as being
obvious because the cited references fail to teach or suggest the argued
limitations?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We agree with (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. We concur with the conclusions reached by the
Examiner.
As to Appellant’s contentions 1, 4, 5, and 6 we begin our analysis by
observing that Appellant responds to the Examiner’s final rejection of claims
1-18 and 20-28 by merely reciting the language identified supra in the
claims and asserting that the aforementioned limitations are not disclosed in
Carney and Schlonski. See App. Br. 11; Reply Br. 8-10. In addition, we find
Appellant has failed to traverse the specific factual findings the Examiner
has set forth in the rejection of claims 1-18 and 20-28. See Ans. 3-16.
We note that Appellant’s arguments amount to no more than reciting
the claim features and generally alleging that Carney and Schlonski are
deficient. Merely pointing out certain claim features recited in independent
claim 1 and nakedly asserting that Carney and Schlonski fail to disclose such
features does not amount to a separate patentability argument. See Ex parte
Belinne, No. 2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10,
2009) (informative); see also 37 C.F.R. § 41.37(c)(iv) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
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brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
With regard to Appellant’s argument that the Examiner provides no
motivation for combining Carney and Schlonski (App. Br. 11-12), we agree
with the Examiner’s conclusion that one of ordinary skill in the art would
have found it obvious to modify Carney’s system to use the retrieved
Internet Protocol (IP) address to test the printer, thereby bypassing any
printer driver software, as suggested by Schlonski because “it is desirable to
provide a method that can verify the status of the printer due to questionable
behavior or any other reason.” Ans. 5 (citing Schlonski, col. 8, ll. 19-21).
On this record, we find Appellant has failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitations in contentions 1, 4, 5, and 6.
As to Appellant’s contention 2, we find that Appellant’s arguments
are not commensurate with the scope of the claims. Claim 1 does not recite
“ping[ing] devices that lie beyond the bounds of a local area network.”
Finally, Appellant contends, in the Reply Brief, but not the Appeal
Brief, that claim 1 is distinguishable from the cited art for the reasons listed
in contention 3. These arguments are untimely as they are presented for the
first time in the Reply Brief. See In re Borden, 93 USPQ2d 1473 (BPAI
2010) (informative). Even if they were timely, they are unpersuasive
because they are not commensurate with the scope of claim 1, which does
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not recite “after a network printer has already been associated with a port
monitor” or “assembled into a vector.”

DECISION
The Examiner did not err in rejecting claims 1, 2, 7, 10, 11, 16, 20, 25,
and 28 under 35 U.S.C. § 103(a) as being unpatentable over Carney and
Schlonski.
The Examiner did not err in rejecting claims 3, 12, and 21 under 35
U.S.C. § 103(a) as being unpatentable over Carney, Schlonski, and
Danknick.
The Examiner did not err in rejecting claims 4, 5, 13, 14 22, and 23
rejected under 35 U.S.C. § 103(a) as being unpatentable over Carney,
Schlonski, and Furukawa.
The Examiner did not err in rejecting claims 9, 18, and 27 under 35
U.S.C. § 103(a) as being unpatentable over Carney, Schlonski, and
Sistanizadeh.
The Examiner did not err in rejecting claims 6, 7, 15, 16, 24, and 25
under 35 U.S.C. § 103(a) as being unpatentable over Carney, Schlonski, and
French.
The Examiner did not err in rejecting claims 8, 17, and 26 under 35
U.S.C. § 103(a) as being unpatentable over Carney, Schlonski, and Aoki.
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)(iv) (2011).

AFFIRMED
msc