Ex parte Murakami

Board of Patent Appeals and Interferences

May 15, 1998

08077505 (B.P.A.I. May. 15, 1998)

Application for patent filed June 17, 1993. According to appellant,1
this application is a continuation of application 07/794,047, filed November
19, 1991.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASAHIRO MURAKAMI
_____________
Appeal No. 95-3405
Application 08/077,5051
______________
HEARD: May 4, 1998
_______________
Before KRASS, BARRETT and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1, 3 and 5-12. Claims 2 and
4 have been canceled. No claim has been allowed.
References relied on by the Examiner
Steeves et al. (Steeves) 5,075,874 Dec. 24, 1991
Nelson 5,025,398 Jun. 18, 1991
Appeal No. 95-3405
Application 08/077,505
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Christopher et al. (Christopher) GB 2 220 286 Jan. 04, 1990
(British Patent)
The Rejections on Appeal
1. Claims 1, 3, 5-8 and 10-12 stand finally rejected under
35 U.S.C. § 102(e) as being anticipated by Steeves.
2. Claims 1, 3, 5-8 and 10-12 stand finally rejected under
35 U.S.C. § 102(a) as being anticipated by Nelson and Christopher
et al. (Answer at 3). In the discussion of this rejection, the
examiner did not refer to any combination of teachings from
Nelson and Christopher but applied, instead, Nelson and
Christopher individually, which is correct because in an
anticipation rejection all of the claimed elements must be found
within a single reference. It appears that a mistake was made
only in the identification of the rejection.
Accordingly, we will treat the anticipation rejection based
on Nelson and Christopher as if it were based on Nelson or
Christopher, in the alternative.
When a rejection is based on either reference A or reference
B, it is improper to identify the rejection as being based on "A
and B." Such a mistake tends to confuse both the appellants and
the Board and should not be repeated in the future.
3. Claims 1, 3, and 5-12 stand finally rejected under
35 U.S.C. § 103 as being unpatentable over Steeves, Nelson, and
Appeal No. 95-3405
Application 08/077,505
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Christopher. In the discussion of this rejection, the examiner
did not refer to any combination of teachings from Steeves,
Nelson and Christopher but appears to have applied, instead,
Steeves, Nelson and Christopher individually.
Accordingly, we will treat the obviousness rejection based
on Steeves, Nelson and Christopher as if it were based on
Steeves, Nelson or Christopher, in the alternative. The examiner
should take note that misidentifying the rejection causes
problems both for the appellant and the Board and more care
should be applied in stating the ground of rejection.
The Invention
The invention is directed to a printer for use with an
inputted emulation program which interprets the control code sent
from a host computer. The emulation program is stored in a back
up memory means so that it is not erased when the printer is
turned off. Claims 1, 11 and 12 are the only independent claims.
All other claims depend ultimately from claim 1. Representative
claim 1 is reproduced below:
1. A printer for receiving a control code and print data
from a host computer and for controlling a printing unit
according to the received control code to carry out printing
based on the print data, comprising:
input means for inputting an emulation program
used for interpreting the control code;
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Application 08/077,505
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first storage means for storing the emulation
program that has been inputted to said input
means, said first storage means comprising back up
memory means for backing up the first storage
means so as not to erase the stored emulation
program when the printer is powered off;
control means for controlling said input means,
said first storage means and said back up memory
means so that the emulation program inputted to
said input means is installed in said first
storage means; and
second storage means for storing a preselected
emulation program, wherein the emulation program
stored in said first storage means and the
preselected emulation program stored in said
second storage means are selectively used in
accordance with an identification code added to
the control code received from the host computer.
Opinion
We do not sustain the rejection of claims 1, 3, 5-8 and
10-12 as being anticipated by or obvious in view of Steeves.
We do not sustain the rejection of claims 1, 3, 5-8 and 10-
12 as being anticipated by or obvious in view of Christopher.
We sustain the rejection of claims 1, 3, 5-8 and 10-12 as
being anticipated by Nelson.
We sustain the rejection of claims 1, 3, 5-12 as being
obvious in view of Nelson.
Our opinion is based only on the arguments presented by the
appellants in their briefs. Arguments not raised in the briefs
are not before us, are not at issue, and are considered waived.
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Application 08/077,505
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The rejections based on Steeves
The rejections based on Christopher
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles of
inherency, each and every element of the claimed invention. In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990); RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed.Cir. 1984).
Each of independent claims 1, 11, and 12 requires that an
emulation program received through an input means is stored in a
backup memory means such that it will not be erased when the
printer is turned off. An emulation program is not just any
stored data or instructions. According to the specification, an
emulation program is defined as follows (spec. at 1):
There is known that a so-called emulation program
exists for reading the control codes that are
established for a certain printer and converting the
control codes into differently grouped control codes
established for another printer.
An emulation program gives a printer the flexibility of being
capable of responding to control signals from the host computer
which are intended for a different printer.
The appellant is correct that the examiner erroneously
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regarded Steeves’ configuration data downloaded from the host
computer as the emulation program required by the claims. As is
correctly described by the appellant, Steeves discloses a commu-
nication interface for a computer output printer. The interface
includes several input ports which can be "configured" to emulate
different manufacturer’s printers. In Steeves, configuration
data is stored in EEPROM 74 and is not erased when the printer is
turned off (column 3, lines 49-60), but the configuration data
merely defines which emulation program is assigned to or used for
which input port (column 4, lines 37-42) and is not itself the
emulation program. The emulation programs or modules are not
disclosed as being downloaded or inputted from the host computer,
nor are they disclosed as being stored in the disk drive. There
is no basis for the examiner’s incorrect finding that in Nelson
the emulation mode data must include emulation program data.
Further as to claims 1, 3 and 5-10, the examiner has failed
to point out where Steeves discloses the addition of an
identification code to the control code received from the host
computer. The string described in column 5, lines 36-40 of
Steeves is merely a command to switch the printer from emulation
mode to printer control mode. It is not any identification code
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Application 08/077,505
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added to the control code received from the host computer, in
response to which certain acts occur as is defined in claim 1.
For the foregoing reasons, we do not sustain the rejection
of claims 1, 3, and 5-10 as being anticipated by Steeves.
With regard to Christopher, the examiner states that in
Christopher, selected portions of EPROM memories 202 and 206 are
reconfigured by software alone, and that the reconfiguration
includes emulation program data "such as on-line downloading of
data, language, enabling formats and configuring formats" (answer
at 5-6). We agree with the appellant, however, that none of
these items referred to by the examiner equates to the
appellant’s claimed emulation program. The examiner has provided
no explanation as to why any of the above-referenced items can
reasonably be regarded as an emulation program in the appellant’s
claimed invention. The following points of the appellant remain
unanswered (Reply at 3):
Online downloading of data relates to downloading data
from a host computer and is unrelated to interpreting
control codes in the data. Similarly, enabling formats
and configuring formats relates to the interaction of
the hardware and its compatibility with the data,
similar to the configuration data of Steeves, discussed
above. These operations are also unrelated to an
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Application 08/077,505
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emulation program for interpreting control codes as
claimed.
For the foregoing reasons, we do not sustain the rejection
of claims 1, 3, 5-8 and 10-12 as being anticipated by
Christopher.
As for the obviousness rejection of claims 1, 3, and 5-12,
the examiner discussed only claim 9 and failed to address
anything concerning claims 1, 3, 5-8 and 10-12 (answer at 4). It
appears that the obviousness rejection of claims 1, 3, 5-8 and
10-12 is based solely on the anticipation rejection of those
claims over the same prior art reference. Anticipation has been
referred to as the ultimate or epitome of obviousness. In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
Accordingly, because we have not sustained the anticipation
rejection of claims 1, 3, 5-8 and 10-12 over Steeves, or over
Christopher, we do not sustain the obviousness rejection of those
claims over Steeves, or over Christopher, on the mere basis of
the corresponding anticipation rejection of the same claims.
As for claim 9, the examiner’s discussion does not account
for the deficiencies of the references with respect to the
features of claim 1 from which claim 9 depends. Accordingly, the
Appeal No. 95-3405
Application 08/077,505
9
rejection of claim 9 as being unpatentable over Steeves, or over
Christopher, cannot be sustained.
The rejections based on Nelson
Claims 1, 3, 5-8 and 10-12 stand rejected as being
anticipated by Nelson. The appellant argues that Nelson nowhere
discloses a back-up memory means which stores an inputted
emulation program such that it would not be erased when the
printer is turned off. The examiner, on the other hand, takes
the position that the character set definitions downloaded from
the host computer constitute just such an emulation program.
Nelson’s invention is directed to making an all points
addressable and nonimpact printer compatible with a host computer
which sends characters to be printed on a line printer. There
most certainly is an emulation program in Nelson. Note that
Nelson’s Abstract concludes with this description: "The
conversion apparatus emulates the operation of a high speed line
printer to the host processor while simultaneously emulating a
nonimpact printer programmed host processor to the nonimpact
printer." In column 3, lines 35-42 of Nelson, it is stated:
As the host processor transmits print control
information on a line by line basis, the conversion
apparatus in transparent fashion uses the retrieved
character set definition information to convert the
character identification and location data produced by
the host processor into the control signals required by
the all points addressable printer to print the
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corresponding character on the print media on a page
basis.
Thus, based on the stored character set definition, control
signals for line printers are converted into control signals used
to operate an all points addressable printer. This makes the
character set definitions an emulation program within the context
of the appellant’s claims. Additionally, the character set
definitions are created in the host computer and then downloaded
to the printer. Therefore, the character set definitions as an
emulation program is an inputted emulation program. See Nelson
at column 4, lines 39-49.
The downloaded program is stored in a disk drive memory 114
which holds its contents even after the printer is turned off
(Column 4, lines 45-49). Nelson also discloses an interface
control means which implements a diagnostic write channel command
to transfer information from the host computer to the disk drive
memory 114 associated with the printer (Column 5, lines 33-50).
It is implicit that the interface determines whether the incoming
information is the character set definition or other data to be
stored on the disk drive before sending it to the disk drive.
See, for example, Nelson in column 4, lines 45-49. The claims do
not require that the emulation program is the only item stored on
Appeal No. 95-3405
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the disk drive.
The claims are not so specific as to be limited to an
emulation of one printer by another printer of the same general
type, e.g., both being all points addressable nonimpact printers,
or both being line printers. Nelson’s conversion of control
signals for line printers into control signals for all points
addressable nonimpact printers is sufficient to meet the claimed
emulation.
The appellant further argues that the claim features are
written in means-plus-function format under 35 U.S.C. § 112,
sixth paragraph, and that Nelson lacks any structure which is
equivalent to the structures disclosed in the appellant’s
specification (Br. at 11-13). The argument, however, is not
supported by any specific comparison of structures except in
connection with the backup storage means. Accordingly, we need
to examine equivalence only with respect to that means.
The appellant argues (Br. at 13):
For example, a person of ordinary skill in the art
would not have recognized the interchangeability of RAM
32 and back-up memory 33 for backing up the RAM so as
not to erase a stored emulation program when the
printer is turned off with a ROM or EEPROM, as these
"read only" devices are difficult to replace and
require more time to access, whereas a RAM is easily
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accessed and modified.
The problem with the appellant’s argument is threefold.
First, the backup memory of Nelson as found by the examiner is
neither a ROM nor an EEPROM, but the disk drive memory unit 114.
Secondly, the appellant’s backup memory is not RAM unit 32 but
backup memory unit 33. Third, the structure of the appellant’s
backup memory unit 33 is not necessarily a RAM, based on written
described in the specification.
As is illustrated in the appellant’s Figure 1, the structure
of backup memory unit 33 is not specified. In the specification,
it is described that "[t]he memory unit 33 may be electrically
backed up by a battery or may be a non-volatile memory into which
data can electrically be written" (spec. at 4, lines 14-16).
Thus, according to the appellant’s own specification, backup
memory unit 33 can take on many different structures so long as
the information stored therein is not lost when the printer is
turned off. Consequently, the scope of the appellant’s backup
memory means is quite broad and literally covers Nelson’s disk
drive unit 114. For this reasons, the appellant’s non-equiv-
alence argument is misplaced and without merit.
At oral hearing, appellant’s counsel pointed out that even
assuming that in Nelson the character set definitions downloaded
from the host computer constitute an emulation program inputted
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to the printer through downloading, the inputted emulation
program is not additional to a preselected emulation program
already stored in a second storage means within the printer.
It is noted that each of the independent claims recites a second
storage means for storing a preselected emulation program and
requires that the preselected emulation program and the inputted
emulation program are selectively used. We agree with the
appellant that this feature appears not to be disclosed by Nelson
and the examiner has not addressed what constitutes this pre-
selected emulation program in a second storage means with respect
to which the inputted emulation program is additional. Evident-
ly, as is argued by the appellant’s counsel at the oral hearing,
there is only one emulation in Nelson, which converts from codes
for a line printer to codes for an all points addressable
nonimpact printer. Accordingly, we do not sustain the rejection
of claims 1, 3, 5-8 and 10-12 as being anticipated by Nelson.
Claims 1, 3, 5-8 and 10-12 also stand rejected under
35 U.S.C. § 103 as being unpatentable over Nelson. However, the
examiner provided no explanation beyond those supporting the
anticipation rejection of the same claims over Nelson. Since no
reason has been set forth by the examiner as to why it would have
been obvious to one with ordinary skill in the art to have a
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preselected emulation program as well as an inputted additional
emulation program which are selectively used and wherein the
inputted additional emulation program is put in a back-up memory
which holds its contents after the printer is turned off, we do
not sustain the obviousness rejection of claims 1, 3, 5-8, and
10-12 over Nelson.
Claim 9 stands rejected as being obvious over Nelson. Claim
9 depends from claim 1. Because we have not sustained the
obviousness rejection of claim 1 over Nelson, we also do not
sustain the obviousness rejection of claim 9 over Nelson.
Conclusion
The anticipation rejection of claims 1, 3, 5-8 and 10-12
under 35 U.S.C. § 102 over Steeves is reversed.
The anticipation rejection of claims 1, 3, 5-8 and 10-12
under 35 U.S.C. § 102 over Christopher is reversed.
The anticipation rejection of claims 1, 3, 5-8 and 10-12
under 35 U.S.C. § 102 over Nelson is reversed.
The obviousness rejection of claims 1, 3 and 5-12 under 35
U.S.C. § 103 over Steeves is reversed.
The obviousness rejection of claims 1, 3 and 5-12 under 35
U.S.C. § 103 over Christopher is reversed.
The obviousness rejection of claims 1, 3, and 5-12 under 35
Appeal No. 95-3405
Application 08/077,505
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U.S.C. § 103 over Nelson is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-3405
Application 08/077,505
16
Oliff & Berridge
P.O. Box 19928
Alexandria, VA 22320