Ex Parte Panshin et al

Patent Trial and Appeal Board

Jun 27, 2016

12994445 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/994,445 11/23/2010
22879 7590 06/29/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Stephen D. Panshin
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.
82572482 3379
EXAMINER
WORKU, NEGUSSIE
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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 STEPHEN D. PANS HIN, JACOB GRUNDTVIG REFS TR UP,
and JEFFERSON P. WARD 1
Appeal2014-007614
Application 12/994,445
Technology Center 2600
Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-15. Claims 16-20 are withdrawn from consideration.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 2.
Appeal2014-007614
Application 12/994,445
fNVENTION
The invention on appeal relates to a replaceable printer component
including memory storing data defined by tags and sub-tags. Abstract.
Claim 1 is illustrative and reads as follows:
1. A replaceable printer component comprising:
a memory configured to store data in each of a plurality of
portions of the memory, each portion defined by a tag stored in
the memory, wherein within a first portion of the memory
defined by a first tag stored in the memory, the data within the
first portion is stored in a plurality of sub-portions of the first
portion, each sub-portion defined by a sub-tag stored in the
memory; and
a communication link configured to communicatively link
the memory to a printer controller when the replaceable printer
component is installed in a printing system.
REJECTIONS
Claims 1-7, 9, 10, 12, 14, and 15 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Helterline et al. (US 6,264,301 B 1; issued July 24,
2001) (hereinafter "Helterline").
Claims 8, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Helterline.
ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
rejections of the claims. We adopt as our own: (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 Answer in response to
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Application 12/994,445
arguments made in Appellants' Appeal Brief. (Ans. 2-7). We highlight and
address specific findings and arguments below.
Regarding the anticipation rejection of claim 1, Appellants contend
the cited portions of Helterline do not disclose the limitation "wherein within
a first portion of the memory defined by a first tag stored in the memory, the
data within the first portion is stored in a plurality of sub-portions of the first
portion, each sub-portion defined by a sub-tag stored in the memory," as
recited in claim 1. App. Br. 11. In particular, Appellants argue that
Helterline does not teach or suggest any type of tag/sub-tag hierarchy. Id. at
12. Appellants also argue that Helterline rigidly defines the length and
composition of the data and is, therefore, incompatible with the principle of
using sub-tags to define a data portion defined by a tag. Id. at 13.
In response, the Examiner explains that "TAG_ID-A" in Figure 2 of
Appellants' application corresponds to "a first tag stored in the memory,"
and any of the values (such as VAL UE_A 1, VAL UE_A2) correspond to "a
plurality of sub-portions of the first portion, each sub-portion defined by a
sub-tag stored in the memory," as recited in claim 1. Ans. 3. The Examiner
further explains that Figure 7 of Helterline is the same figure as Applicants'
Figure 2, but with different tag names. Thus, we understand the Examiner's
mapping as reading the "first tag" of claim 1 on TAG ID 1 of Helterline
Figure 7, and reading the "sub-tag[(s)]" on VALUE I and VALUE2. Id.
We agree with the Examiner's factual findings. The Examiner has
shown that Helterline discloses the recited "memory" and "portions of the
memory," and that each portion of memory is defined by a tag that is stored
in the memory. Final Act. 3 (citing Helterline col 4, 11. 18-22, col. 8, 11. 63-
66, Figs. 4, 6, 7). Appellants' arguments for novelty rely on distinguishing a
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Appeal2014-007614
Application 12/994,445
sub-tag from a data value stored in memory, but we do not find such
distinction persuasive. 2 3
The Examiner interprets "sub-tag" as encompassing VALUE 1 and
VALUE 2 of Figure 7 ofHelterline. Ans. 3. Appellants have not
persuasively shown this interpretation is overly broad, unreasonable, or
2 We note the informational content of the data to be stored in the memory
of claim 1, and the particular arrangement of the data among the recited
"first portion" and "plurality of sub-portions" (as defined by the recited "first
tag" and "sub-tag[(s)]" respectively), are not positively recited as actually
being used to change or affect any machine or "printing system" function.
Although the "memory" of claim 1 is temporally conditionally linked to the
printer controller, "when the replaceable printer component is installed," the
data contained in the memory is not positively recited as actually being read,
transferred, or otherwise communicated to the "printer controller" to
perform, change, or affect any "printing system" function, within the scope
of claim 1, under a broad but reasonable interpretation. Therefore, the
claimed arrangement and informational content of the data to be stored in
the "memory" does not distinguish the "replaceable printer component" of
claim 1 from the prior art component that is the same except for the contents
of the data stored in memory. The PTAB has provided guidance in
decisions on the appropriate handling of claims that differ from the prior art
only based on "non-functional descriptive material [(NFDM)]." See Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he
nature of the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process."). See
also MPEP § 2111.05 (9th Ed., Mar. 2014). In our analysis herein, we
consider the extrinsic MPEP descriptions regarding NFDM as underlying
subsidiary facts which inform our claim construction for all claims before us
on appeal.
3 The recited "a printing system" is completely outside the scope of the
"replaceable printer component" of claim 1; therefore, the installation of the
"replaceable printer component" in the "printing system" appears to be
merely an intended use of the claimed "replaceable printer component."
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Appeal2014-007614
Application 12/994,445
inconsistent with the Specification. 4 Appellants argue that Helterline
requires specific data lengths so that tags will always begin on a byte
boundary, and parameter values will not span more than one transaction.
App. Br. 13 (citing Helterline col. 8, 11. 63---67; col. 9, 11. 33-36); Reply Br.
6. In the Reply Brief, however, Appellants offer no persuasive explanation
or evidence to rebut the Examiner's findings that both Appellants'
Specification and Figure 7 of Helterline disclose the memory is padded with
zeroes to accommodate varying sizes of the data structure. See Ans. 4
(citing Spec. i-f 24, Fig. 2; Helterline Fig. 7).
For these reasons, we are not persuaded that the Examiner erred in
finding that Helterline discloses the limitations of claim 1.
With regard to the obviousness rejection of claim 13, Appellants
argue that "using an '8-bit value indicating both the type and length of data
stored in the associated sub-block' may not be compatible with the
requirements of Helterline" because Helterline teaches reading only tags.
App. Br. 18 (citing Helterline Figs. 7, 9). Appellants, however, present no
persuasive evidence or explanation to rebut the Examiner's finding that
Figure 7 of Helterline teaches or suggests that "the tag and data length
comprise of 8 bits (MSB 7 to LSB O)." See Ans. 7. Appellants merely state
that "the Answer has entirely misconstrued Helterline 's Fig. 7, which does
not teach or suggest any type of sub-block or an 8-bit value indicating both
the type and length of the data associated with the sub-block as recited in
claim 13." Reply Br. 11. We do not find Appellants' conclusory contention
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Application 12/994,445
without the support of arguments or evidence persuasive. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably
interpreted 37 C.F.R. § 41.37 (c)(l)(vii) as requiring "more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art").
Accordingly, we sustain the 35 U.S.C. § 102(b) rejection of
independent claim 1, as well as the 35 U.S.C. § 102(b) rejection of
independent claim 9 and dependent claims 4, 5, and 12, which Appellants
argue are patentable for similar reasons. App. Br. 14--17. We also sustain
the 35 U.S.C. § 102(b) rejection of dependent claims 2, 3, 6, 7, 10, 14, and
15, for which Appellants make no additional arguments. We also sustain the
35 U.S.C. § 103(a) rejection of dependent claim 13, and of dependent claims
8 and 11, not argued separately.
DECISION
We affirm the decision of the Examiner to reject claims 1-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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