Ex Parte Manjunath et al

Patent Trial and Appeal Board

Mar 21, 2016

13157313 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/157,313 06/10/2011
22879 7590 03/23/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Geetha Man junath
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.
82745724 6933
EXAMINER
HUSSAIN, TAUQIR
ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEETHA MANJUNATH and THARA SUBRAMONI
Appeal2014-005941
Application 13/157,313
Technology Center 2400
Before ALLEN R. MacDONALD, JEFFREYS. SMITH, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-005941
Application 13/157,313
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The application is directed to internet printing. (See Abstract.) Claim
1, reproduced below, is illustrative:
1. A method for providing print ready content to a printing
device, comprising:
a server system providing a uniform resource identifier (URI)
to a client device, the URI to be associated with a client-gener-
ated script file that captures semantics of a task as performed by
a client user via a browser;
the server system maintaining the script file and the associ-
ated URI, which were both received from the client;
the server system accessing the URI, which triggers executing
the script file to reproduce the task in response to a request for
print ready content associated with performing the task;
the server system converting content obtained from reproduc-
ing the task into print ready content; and
the server system providing the print ready content via a net-
work connection to a printing device.
1 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. (See App. Br. 1.)
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Appeal2014-005941
Application 13/157,313
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Williamson et al. US 2003/0154289 Al Aug. 14, 2003
Holmstead et al. US 2004/0020389 Al Feb. 5, 2004
Whitmer et al. US 2005/0091536 Al Apr. 28, 2005
Morris US 2006/0143684 Al June 29, 2006
THE REJECTIONS
1. Claims 1, 2, 4--10, and 12-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Williamson and Holmstead. (See Final
Act. 2-7.)
2. Claims 3 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Williamson, Holmstead, and Whitimer. (See Final
Act. 7.)
APPELLANTS' CONTENTION2
Appellants argue that the rejections were improper because "the
asserted combination of Williamson and Holmstead fails to teach 'the server
system accessing the URI, which triggers executing the script file to
reproduce the task in response to a request for print ready content associated
with performing the task," as recited in claim 1, and similar limitations in the
other independent claims. (See App. Br. 6-7, 11-13.)
2 Although Appellants raise additional contentions of error, we do not reach
them, as our resolution of this issue is dispositive.
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Appeal2014-005941
Application 13/157,313
ANALYSIS
In connection with claim 1, Appellants argue that "Williamson
provides no teaching or hint of a server system accessing the URI associated
with a client-generated script file, which triggers executing the script file to
reproduce the task in response to a request for print ready content
associated with performing the task." (App. Br. 7.)
The Examiner explains that Williamson was relied upon to disclose all
the limitations except the printing functionality, and that Holmstead teaches
the printing functionality. (See Ans. 2 (citing i-fi-129-30 of Williamson and
Figs. 4 and 5 and i-fi-124 and 39 of Holmstead); see also Final Act. 3--4
(additionally citing i139 of Williamson and Fig. 2 and i-fi-14, 34, and 44--45 of
Holmstead).) According to the Examiner, "it would have been obvious ...
to incorporate the teachings of 'Holmstead' into those of [Williamson]. .. in
order to provide a flexible printing operation" because "[ s ]uch a system will
give the user an option to carry out [a] previous print job already stored on
the server database without the limitation of having to find a document and
send it to printer repeatedly (Holmstead [0004])." (Final Act. 4.)
We agree with Appellants. In the cited passages, Williamson
describes how a user may interact with a Web site via a Web browser, obtain
a "Web session document" containing navigational data, and then forward
that document to a second user. (See Williamson i129.) The document
contains hyperlinks to pages of the navigation undertaken by the first user
and "[t]he second user may look at pages of the navigation by clicking on
the hyperlinks and thereby establishing an on-line connection to the server."
(See id.) Holmstead describes how a printer may include a cache memory
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Appeal2014-005941
Application 13/157,313
that retains elements used in print jobs to avoid having to retrieve the
elements again. (See Holmstead i-f 34.)
We find the record insufficient to establish that it would have been
obvious to execute a script (or, in the combination, Williamson's "Web
session document") to reproduce the first user's browsing in response to a
request for print ready content. In particular, neither the Final Action nor the
Answer identifies any request for print ready content in the references or
explains why it would have been obvious to trigger executing a script to
reproduce the task in response to a request for print ready content. (See
Final Act. 3--4; Ans. 2-3.) Moreover, we find the Examiner's stated
motivation to combine both internally inconsistent (it is unclear how one
might carry out a previous print job already stored on the server without
sending it to the printer repeatedly) and contrary to Holmstead's teachings,
in which print elements are cached locally for the specific purpose of
avoiding repeated trips to the network. We further fail to see how
"incorporat[ing] the teachings of Holmstead into those of Williamson"
would "give the user an option to carry out [a] previous print job already
stored on the server database without the limitation of having to find a
document and send it to printer repeatedly."
For these reasons, we do not sustain the Examiner's§ 103 rejection of
claim 1 or the § 103 rejections of claims 2-20, each of which similarly
requires execution of a script in response to a request for print ready content.
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Appeal2014-005941
Application 13/157,313
DECISION
The rejections of claims 1-20 are reversed.
REVERSED
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