Ex Parte Parry et al

Board of Patent Appeals and Interferences

Jul 18, 2012

10625241 (B.P.A.I. Jul. 18, 2012)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/625,241 07/22/2003
22879 7590 07/20/2012
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528
FIRST NAMED INVENTOR
Travis J. Parry
UNITED STA TES 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.
82097213 8613
EXAMINER
MILIA, MARK R
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
07/20/2012 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):
JERRY.SHORMA@HP.COM
ipa.mail@hp.com
brandon.serwan@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex Parte TRAVIS J. PARRY,
BRETT GREEN, and
GREGORY E. PERKINS
Appeal2010-002851
Application 10/625,241
Technology Center 2600
Before JEAN R. HOM:ERE, THU A. DANG, and JAM:ES R. HUGHES,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal2010-002851
Application 10/625,241
STATEMENT OF THE CASE
In papers filed June 18, 2012, Appellants request a rehearing under
37 C.F.R. § 41.52 from the Decision on Appeal (Decision) of the Board of
Patent Appeals and Interferences (Board), dated April 25, 2012. In the
Decision, we reversed the Examiner's rejections of claims 1-6, 27-37, and
53-58. (Dec. 8.)
Appellants allege that the Board erred by misconstruing the claimed
invention (Req. Reh' g. 1-5). In particular, Appellants allege that the Board
misconstrued the printing device as a browser recipient of the webpage,
whereas the claim requires the printer to be the server of the webpage.
Therefore, Appellants submits that the Board incorrectly found that the
combination of Benjamin and Phillips teaches the disputed limitations. (Id.
at 4-5.)
We have carefully reviewed the Decision in light of Appellants'
allegation of error. However, we find without merit Appellants' afore-cited
allegation. Initially, we reiterate the finding of the Decision that the web
content is non-functional descriptive material, which is accorded no
patentable weight. (Dec. 6.) Thus, the claim actually requires only the
storing of data (web content) in a flash drive, attaching the flash drive to a
printing device consumable, and serving up (rendering) the web content
loaded therein to the printer. (Dec. 2.)
Our reviewing court instructs PTO personnel to give claims their
broadest reasonable interpretation consistent with Appellants' disclosure. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zletz, 893
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Appeal2010-002851
Application 10/625,241
F.2d 319, 321 (Fed. Cir. 1989) (stating that "claims must be interpreted as
broadly as their terms reasonably allow.").
As noted in the Decision, the claim recites "a method of providing
web content to a printing device ... web content comprises content that is
included in a web page that is served up by the printing device using an
embedded web server." (Dec. 2.) We note at the outset that the recitation of
a "method of providing web content to a printing device," as set forth in the
preamble of the claim, indicates that the claim is directed to using the printer
as a recipient of the web content, and not as a provider thereof. Thus, upon
construing the body of the claim in light of the overall direction set forth in
the preamble, we conclude that the recitation of the "webpage served up by
the printing device using an embedded server" can be reasonably interpreted
as the printing device rendering the content of the webpage obtained from an
embedded server. (See Dec. 2, 5-6.) To the extent the claim recites an
embedded server, it does not necessarily indicate that the server itself is
embedded in the printer. Rather, it merely requires that the printer include
the capabilities of a server to serve up the webpage - i.e., the printer
includes the capability of translating the data (web content) into printable
form. Additionally, we conclude that serving up the webpage can be
broadly but reasonably construed as rendering or printing the webpage,
which is a function that is more consistently aligned with the ordinary use of
a printer. Besides, construing the printer as a server that provides the
webpage would not be consistent with the method set forth in the preamble
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Appeal2010-002851
Application 10/625,241
(i.e. providing the webpage to the printer), nor would it qualify as the
broadest reasonable interpretation of the disputed claim language.
Therefore, we reiterate our initial position that, under the broadest
reasonable interpretation, this claim merely requires storing in a flash drive
web content obtained from server, and upon inserting the flash drive in the
printer cartridge, the printer is able to render the web content loaded therein.
(Dec. 2.) We consequently maintain our position that because the
combination of Benjamin and Phillips teaches a URL stored in a memory
module, whereupon being inserted in the printer, causes the printer to render
the webpage teaches the disputed limitations, as recited in independent claim
1. (Dec. 5-6.)
CONCLUSION
In view of the foregoing discussion, we decline to modify our
Decision. Consequently, we deny Appellants' Request for Rehearing.
REQUEST FOR REHEARING-DENIED
Vsh
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