Ex Parte McKinley et al

Board of Patent Appeals and Interferences

Oct 7, 2009

10452044 (B.P.A.I. Oct. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN E. McKINLEY, DAVID L. SMITH, and JAMES
CLOUGH
____________

Appeal 2009-003864
Application 10/452,044
Technology Center 2600
____________

Decided: October 7, 2009
____________

Before MAHSHID D. SAADAT, CARLA M. KRIVAK, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 5-14, 18-25, and 27-30, the only claims pending (App. Br. 2).1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appellants invented a crash recovery method and device for image
forming apparatuses such as printers. The method includes deleting an
imaging job upon re-intialization of the imaging forming apparatus if the
imaging status of the imaging job is in a predetermined imaging status.
(Abstract; Fig. 1).
Exemplary claim 1 follows:
1. A method of crash recovery for an image forming
apparatus,
comprising:
on the image forming apparatus, spooling an imaging job;
tracking an imaging status of the imaging job; and
deleting the imaging job upon re-initialization of the imaging forming
apparatus upon a determination that the imaging status of the imaging job is
a predetermined imaging status, wherein the predetermined imaging status is
one or more of an indication that an unsuccessful attempt has been made to
print the imaging job following a prior re-initialization, an indication that the
image forming device had been printing the imaging job prior to the re-
initialization, and an indication that printing of the imaging job has been
completed prior to re-initialization.

1 Appellants’ Brief (filed April 9, 2008) (“App. Br.”) and Reply Brief (filed
June 30, 2008) (“Reply Br.”), and the Examiner’s Answer (mailed Apr. 29,
2008) (“Ans.”), are referenced in this opinion.
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The Examiner relies on the following prior art references:
Valorose, III US 2002/0059265 A1 May 16, 2002
Kim US 2003/0095279 A1 May 22, 2003
Isshiki US 7,050,183 B2 May 23, 2006
(filed Feb. 26, 2002)

The Examiner rejected:
claims 1, 5, 6, 11, 13, 25, and 27-30 as anticipated under 35 U.S.C.
§ 102(e) based on Isshiki; claims 7-10 and 12 as obvious under 35 U.S.C.
§ 103(a) based on Isshiki and Kim; claims 14, 18, 19, 22 and 24 as obvious
under 35 U.S.C. § 103(a) based on Isshiki and Valorose, III; and claims 20,
21, and 23 as obvious under 35 U.S.C. § 103(a) based on Isshiki, Valorose
III, and Kim.
ISSUE
Appellants contend (App. Br. 6) that Isshiki does not disclose deleting
the imaging job upon a determination that the imaging status of the imaging
job is in a predetermined status. Appellants’ contention and the Examiner’s
findings raise the following issue: Have Appellants shown that the
Examiner erred in finding that Isshiki discloses that the “predetermined
imaging status is . . . an indication that an unsuccessful attempt has been
made to print the imaging job following a prior re-initialization” as set forth
in claim 1?

FINDINGS OF FACT (FF)
Isshiki
1. When an unprocessed print job file exists in a spooled memory,
Isshiki’s system regards it as the cause of an error, and deletes such
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unprinted spooled print jobs to avoid abnormal operation “every boot
processing, and subsequent boot processing” (Abstract; col. 3, ll. 38-44).
(See also Fig. 6; col. 6, ll. 37-42). This “[p]rint job file delete method in
boot processing [is] executed upon power-on or resetting . . . or abnormal
operation . . .” (col. 6, ll. 6-10).
2. “As a result, even if an HD [hard disk]-spooled print job file
includes the cause of reboot, the above processing prevents repetitive reboot
processing caused by the HD-spooled print job file” (col. 4, l. 46; col. 6, ll.
50-53).
3. Spooling is part of the normal print cycle. Print jobs are stored in
the spool memory for subsequent processing. (Figs. 2, 4; col. 5, ll. 55-66).

Appellants’ Disclosure
4. “[T]he phrase ‘image forming device’ is intended to encompass
devices capable of imaging an item on a media, such as laser printers, ink jet
printers, photocopiers, facsimile machines, etc” (Spec. ¶ 0007). “The
exemplary image forming device 120 includes a processor 122, a spooler
124, and an image rendering device 126” (Spec. ¶ 0010). (See Fig. 1).
5. Appellants’ system re-initializes the print process upon detection
of an error and “then deletes imaging jobs having a predetermined imaging
status . . . . By way of example, the image forming apparatus may delete, . . .
jobs that were completed, spooled, or imaging when the error occurred.”
(Spec. ¶ 0021) (emphasis supplied).
In a similar description, Appellants state that processor 122 (in image
forming device 120 (FF 4)) deletes “print jobs having a predetermined
imaging status. By way of example, the processor 122 may delete all print
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jobs that have not yet cleared out of the spooler 124, all print jobs currently
being spooled by the spooler124, and/or all print jobs currently being
imaged by rendering device 126 . . . ” (Spec. ¶ 0015) (emphasis supplied).
The “spooler 124 . . . schedules the print job for rendering by the image
rendering device 126” (Spec. ¶ 0011) (emphasis supplied).
In still another description, Appellants state that “the printer may
delete all print jobs that are spooled, printing, completed, or previously re-
tried . . .” (Spec. ¶ 0028) (emphasis supplied).
6. “Error step 410 may occur at any point in the method shown in
figure 3. An ‘error’ generally refers to any problem that may cause the
printer to hang or freeze, thereby preventing the printer from printing the
print job.” (Spec. ¶ 0025) (emphasis supplied).
7. The figure 3 (“method of crash recovery for a printer” (Spec. ¶
0022)) flowchart steps introducing error (as referenced above (FF 6))
include: “310” – “Generate a Print Job On A Computer,” “320” – “Transmit
The Print Job To A Printer,” “330” – “Spool The Print Job On The Printer,”
“360” – “Print Spooled Print Job,” and “370” – “Delete Printed Print Job.”

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants have the
burden on appeal to show reversible error by the Examiner in maintaining
the rejection. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On
appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
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facie case with evidence of secondary indicia of nonobviousness.”) (citation
omitted).
Under § 102, Appellants may sustain this burden by showing that the
prior art reference relied upon by the Examiner fails to disclose an element
of the claim. “It is axiomatic that anticipation of a claim under § 102 can be
found only if the prior art reference discloses every element of the claim.”
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). “A reference anticipates a
claim if it discloses the claimed invention ‘such that a skilled artisan could
take its teachings in combination with his own knowledge of the particular
art and be in possession of the invention.’” In re Graves, 69 F.3d 1147,
1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA
1962)) (emphasis omitted).
Under § 103, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l. Co., v. Teleflex Inc., 550
U.S. 398, 418 (2007).

ANALYSIS
With respect to the anticipation rejection of claim 1, Appellants (App.
Br. 7) contend that Isshiki’s indication that a print job remains in the
spooling status after a re-boot does not constitute an indication of an
unsuccessful print attempt. Appellants state (App. Br. 7): “At best, the
presence of a print job in Isshiki’s spool directory is an indication that the
print job has not yet been printed.”
Appellants distinguish Isshiki’s spool directory indication by stating
“[i]t is NOT an indication that any attempt has yet been made to print the
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print job” (id.). This argument is without merit. A print job in Isshiki’s
spooling directory indicates that “the print job has not yet been printed”
according to Appellants (id.). It follows that such a spooled job also
constitutes an indication that a prior attempt was made to print that job
because Isshiki’s spooler, like Appellants’ spooler, is part of the printer or
printing process (FF 1-3 with FF 4-8).
Therefore, contrary to Appellants’ related argument (Reply Br. 4) that
“[t]he Specification also distinguishes between printing and spooling” and
therefore “[t]he particular status of being spooled is not part of Claim 1”,
Appellants’ claim 1 requires no such distinction as reasonably interpreted in
light of Appellants’ disclosure. That is, as stated above, Appellants disclose
a spooler or spooling as part of a generic printer or printing method (FF 4-8).
Specific disclosed examples by Appellants of the spooler as part of
the printer or printing process include, inter alia: “print jobs having a pre-
determined imaging status” including “all print jobs that have not yet cleared
out of the spooler” (FF 5); and “Spool the Print Job On The Printer” (FF 7).
Appellants also state that “[t]he exemplary image forming device 120
includes a processor 122, a spooler 124, and an image rendering device 126”
(FF 4). Appellants also describe an error as including a spooling error (or
any other error) during the print process (FF 6, 7), “thereby preventing the
printer from printing the print job” (FF 6).
In any case, the claim 1 limitation in dispute, i.e., the “predetermined
imaging status is . . . an indication that an unsuccessful attempt has been
made to print the imaging job following a prior re-initialization,” does not
recite “printing” or otherwise refer in any manner to a more limited meaning
of “print” or “printing” as occurring only in the final stage of printing (i.e.,
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to preclude spooling in earlier stages). Hence, Appellants’ arguments
attempting to distinguish “spooling” from “printing” are not commensurate
in scope with the claim.
Moreover, Appellants carry the burden to define their invention.
However, Appellants do not define the disputed phrase. In one description,
Appellants state that “the printer may delete all print jobs that are spooled,
printing, completed, or previously re-tried . . .” (FF 5). Appellants’
disclosed phrase “previously re-tried,” untied as it is to any single disclosed
print stage and reasonably related to the disputed claimed phrase
“attempt . . . to print . . . following a prior re-initialization,” in claim 1,
bolsters the interpretation that the disputed claimed phrase does not
distinguish spooling from printing or otherwise limit the claimed phrase to
the final “printing” stage of the “printing” process.
Further, Appellants variously refer to this final print process stage in
their Specification as “imaging,” “being imaged,” “rendering, or “printing”
(FF 5). Given the various synonyms, Appellants could have recited
“rendering” or “imaging” to distinguish “spooling” in a clear fashion.
Instead, Appellants employed the more generic and undefined phrase
“attempt . . . to print,” thereby reasonably encompassing all printing
attempts, including those in the spooling stage of printing.
In light of the broad terms recited and arguments presented,
Appellants’ have failed to clearly define their invention. “The problem in
this case is that the appellants failed to make their intended meaning
explicitly clear.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). “It is
the applicants’ burden to precisely define the invention, not the PTO’s.” Id.
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Accordingly, Appellants have not met their burden on appeal of
demonstrating error.
It follows that Isshiki’s process of booting and subsequent re-booting
(i.e., re-intialization) and deleting a print job found in the spooling directory
after a prior boot or re-boot (i.e., following a prior re-initialization) (FF 1-3),
constitute “an indication that an unsuccessful attempt has been made to print
the imaging job following a prior re-initialization,” thereby meeting the
argued limitation of claim 1, as the Examiner found (Ans. 3, 17-18).
Therefore, we will sustain the anticipation rejection based on Isshiki of
claim 1, and of claims 5, 6, 11, 13, 25, and 27-30 which were not separately
argued (App. Br. 5) and fall with claim 1. Appellants’ arguments (App. Br.
8-9) against the obviousness rejections of claims 7-10 and 12 based on
Isshiki and Kim, and claims 14, 18, 19, 22, and 24 based on Isshiki and
Valorose III, rely on their arguments presented for claim 1. Appellants do
not present any arguments for claims 20, 21 and 23 and therefore waive any
such arguments. Accordingly, for the reasons explained above, we will
sustain the rejections of all claims on appeal. See 37 C.F.R.
§ 41.37(c)(1)(vii); In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

CONCLUSION
Appellants did not show that the Examiner erred in finding that Isshiki
discloses that the “predetermined imaging status is . . . an indication that an
unsuccessful attempt has been made to print the imaging job following a
prior re-initialization” as set forth in claim 1.

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DECISION
We affirm the Examiner's decision rejecting claims 1, 5-14, 18-25,
and 27-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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