Ex Parte Parry et al

Board of Patent Appeals and Interferences

Apr 27, 2010

09861991 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte TRAVIS J. PARRY
and ROBERT D. CHRISTIANSEN

________________

Appeal 2009-001617
Application 09/861,991
Technology Center 2600
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Decided: April 28, 2010
________________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-17, 19-22, and 24-43. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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STATEMENT OF THE CASE
Appellants claim an image forming device (e.g., printer) and a method
for maintaining a hard image forming consumable (e.g., toner, paper, etc.).
The image forming device includes processing circuitry configured to
prepare and address a search request for communication to a plurality of
network devices seeking information concerning a consumable. The
developed search request is forwarded to an interface for communication
from the image forming device to the network devices.1 Claim 1 is
illustrative:

1. An image forming device comprising:

an image engine configured to utilize a consumable to form hard
images;

an interface adapted to communicate with a network comprising a
plurality of network devices external of the image forming device;

processing circuitry coupled with the image engine and configured to
forward a search request, at a desired interval, to the interface for
communication to the network, to receive information regarding the
consumable from the plurality of network devices via the interface
responsive to the search request, to generate a message including
information received from at least one of the network devices, and to
control communication of the message; and

wherein the processing circuitry of the image forming device is
configured to address the search request for communication to the
network devices and to thereafter forward the search request to the
interface for communication to the network devices.

1 See generally Spec. ¶¶ [0016]-[0019], [0027]-[0029], and [0037]-[0044];
Figs. 2, 3.
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The Examiner relies on the following prior art references to show
unpatentability:2
Song US 5,850,583 Dec. 15, 1998
Wiens US 2002/0091689 A1 July 11, 2002
Arima US 6,714,744 B2 Mar. 30, 2004
1. The Examiner rejected claims 1, 4-6, 8-17, 19, 21, and 24-43 under
35 U.S.C. § 102(e) as being anticipated by Arima (Ans. 3-10).
2. The Examiner rejected claims 2, 3, and 22 under 35 U.S.C. § 103(a)
as being unpatentable over Arima and Wiens (Ans. 11-14).
3. The Examiner rejected claims 7 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Arima and Song (Ans. 14, 15).
Rather than repeat the arguments of Appellants or of the Examiner,
we refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments that Appellants could have made but did not make
have not been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii).

2 Effective filing dates for these documents precede Appellants’ earliest
effective filing date and are not at issue.
3 We refer throughout this opinion to (1) the Appeal Brief filed Sep. 17,
2007, (2) the Examiner’s Answer mailed Dec. 12, 2007, and (3) the Reply
Brief filed Feb. 12, 2008.
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ISSUES
The pivotal issues before us are whether the Examiner erred in
determining that:
1. Arima, under § 102(e), explicitly or inherently teaches
a) an image forming device having processing
circuitry configured to address a consumable
search request for communication to network
devices as recited in independent claim 1 (App. Br.
5-7; Reply Br. 1-4);
b) an image forming device having processing
circuitry configured to forward a search request to
the network at a predetermined time as recited in
dependent claim 4 (App. Br. 9; Reply Br. 6, 7);
c) an imaging forming device having a memory
storing network identifiers for network devices that
are used by the processing circuitry to address the
search request as recited in dependent claim 6
(App. Br. 10; Reply Br. 7);
d) an image forming device having processing
circuitry configured to generate and forward a
message including information received from an
network device to an interface for external
communication as recited in dependent claim 8
(App. Br. 11; Reply Br. 8, 9);
e) an image forming device having the interface
receiving consumable information directly from
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network devices as recited in dependent claim 25
(App. Br. 12, 13; Reply Br. 9, 10);
f) an image forming device wherein the network
devices comprise consumable retailers as recited in
dependent claim 32 (App. Br. 14, 15; Reply Br. 11,
12);
g) an image forming device having storage circuitry
containing identification information for network
devices prior to the processing circuitry
formulation of the search request as recited in
dependent claim 33 (App. Br. 15; Reply Br. 12,
13);
h) an image forming device having processing
circuitry configured to forward the search request
at a plurality of moments corresponding to a
desired interval as recited in dependent claim 36
(App. Br. 16; Reply Br. 14);
i) an image forming device wherein the
predetermined moment is determined independent
of consumable status as recited in dependent claim
38 (App. Br. 17; Reply Br. 14, 15);
j) an image forming device wherein the
predetermined moment is determined prior to
utilization of consumables for hard images as
recited in dependent claim 39 (App. Br. 17, 18;
Reply Br. 15);
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k) an image forming device wherein each network
device comprises an entity capable of supplying
consumables as recited in dependent claim 40
(App. Br. 18; Reply Br. 16); and
l) a maintenance method for image forming device
consumables comprising the imaging device
storing a plurality of network identifiers for
network devices as recited in independent claim 13
(App. Br. 7, 8; Reply Br. 4, 5).
2. The combination of Arima and Wiens under § 103(a) teaches
or suggests a maintenance method for printer consumables comprising
storing a plurality of network identifiers for consumable retailers
within the printer as recited in independent claim 22 (App. Br. 8;
Reply Br. 5, 6).
FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Arima discloses a printing apparatus and method for managing
printing expendables (e.g., ink, printing agent, paper sheets, and
printing medium) (col. 1, ll. 6-37).
2. Arima’s printing apparatus includes a CPU 1A processor and storage
unit 1B for controlling the printing apparatus, a print unit 1C for
performing printing processes (col. 4, ll. 53-56; Figs. 14 and 18), a
search unit 18A for developing printing expendables search
instructions (col. 8, ll. 55-59; Fig. 18), and a communications unit
15A connected to an external provider 15B for browsing the Internet
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(col. 7, ll. 20-26; Figs. 14 and 18) via connections to a plurality of
retailer terminals 18C (col. 11, ll. 2-4; Fig. 18).
3. A search process based on a developed search instruction is executed
by the Arima external provider 15B using retailer information stored
on a provider 15B database, which retailer information is transmitted
from retailer terminal devices 18C or an external server connected
outside the provider 15B (col. 10, ll. 52-60).
4. Search results are stored in an internal database of the Arima provider
15B, and “the printing apparatus is notified of only a URL [Uniform
Resource Locator] or the like for browsing the [provider 15B]
database which stores the search results” (col. 11, ll. 7-25).
5. Arima discloses that a “search timing” for sending a search request is
determined from an estimated period for when “expendables will
completely run out” (col. 9, ll. 15-19), and a “search cycle” can be set
for sending search requests at several times to sample for price
fluctuations, new retailers, etc. (col. 9, ll. 20-27).
6. Arima discloses a detection unit 18B for calculating a remaining
period prior to expendables running short, and a search request is sent
if the calculated period is less than the designated search timing or a
search request is sent at designated intervals if the calculated period is
equal to or longer than the search period (col. 10, ll. 15-25, 30-37; Fig.
20).
7. Arima discloses that external provider 15B can sort search results by
price and that the sorted data can be presented on a display unit of the
printing apparatus (col. 10, ll. 4-12; Fig. 21B).

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PRINCIPLES OF LAW
Analysis of claim rejections begins with a determination of claim
scope. We determine claim scope not solely on the basis of claim language,
but also on giving claims their broadest reasonable construction in light of
the specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
See also Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
(Fed. Cir. 2004) (“Though understanding the claim language may be aided
by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim.”).
Under 35 U.S.C. § 102, it is necessary for claims to "'read on'
something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or 'fully met' by it." Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
ANALYSIS
35 U.S.C. § 102(e) Rejection
Independent Claim 1
We agree with the Examiner’s finding that Arima teaches an image
forming device configured to forward a search request for printing
consumables to a plurality of retailer network devices (Ans. 3, 4; FF 1, 2).
Further, we agree with the Examiner’s finding Arima’s image forming
device includes a communications unit 15A (i.e., an interface) configured to
communicate to the plurality of retailer network devices that are external
from the image forming device (Ans. 3; FF 2).
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Appellants’ arguments focus on the contention that Arima teaches a
printer communications unit 15A for transmitting search requests to a
provider 15B that is external from the printing apparatus (App. Br. 5-7).
Specifically argued is that:
Applicants respectfully refer to paragraph 0028 of the specification
which provides that the search request is directed to a retailer,
supplier, or manufacturer of the consumable. To the contrary, Arima
merely teaches that the search instruction formulated by the printing
apparatus is only communicated to the external provider 15B to
initiate the search procedure by the external provider 15B which then
communicates with the retailers.
(Reply Br. 2). Appellants further argue that search results are received and
stored at the Arima external provider 15B, and that a URL for browsing the
provider 15B stored results is communicated to the Arima printer (App. Br.
5; see FF 3, 4). Then Appellants assert that Arima, by “sending a URL to
the printing apparatus so the printing apparatus may browse the search
results stored in the provider 15B fail[s] to teach the positively claimed
limitations of the processing circuitry of the image forming device
configured to address the search request” (App. Br. 5, 6).
Our analysis begins with determination of claim scope, which requires
our giving recited limitations their broadest reasonable construction in light
of the specification, while not importing any disclosure beyond what is part
of the claim. Superguide Corp., 358 F.2d at 875.
Disputed claim 1 limitations include an image forming device having
“processing circuitry . . . configured to address the search request for
communication to the network devices and to thereafter forward the search
request to the interface for communication to the network devices.”
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A reasonably broad construction based on plain meanings of recited
terms does not mandate that the claimed limitation exclusively cover
addressing a search request to specific multiple network devices, or exclude
addressing and forwarding a search request to a particular network circuit,
such as the Arima provider 15B, for directed communication from the
particular network circuit to other network devices. Accordingly, we do not
find Appellants’ argument commensurate with the broadest reasonable
construction for disputed limitations, because communicating a search
request to an addressed Arima provider 15B effects communication to a
plurality of retailer network devices, which is read on by the recited
limitations (see FF 2). We consequently also are not persuaded as to
Examiner error by Appellants’ argument premised on the Arima disclosed
provider 15B URL.
In view of the above discussion, we are not persuaded that the
Examiner erred in concluding that the claim 1 recited limitations are
anticipated by Arima. Accordingly, the Examiner’s 35 U.S.C. § 102(e)
rejection of independent claim 1, as well as not separately argued dependent
claims 5, 9-12, 24, 26, and 37, will be sustained. In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987); 37 C.F.R. § 41.37(c)(1)(vii).
Dependent Claim 4
Claim 4 depends directly from claim 1, and covers “processing
circuitry . . . configured to forward a search request to the network at a
predetermined moment in time.”
The Examiner finds Arima teaches communicating a search for
consumables “at a moment in time based on when the consumables are
estimated to be exhausted” (Ans. 18; see FF 5, 6). Appellants do not dispute
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this finding, but argue that “Arima teachings of searching based upon
consumable status [is] independent of time [and] fails to teach or suggest the
claimed limitations” (Reply Br. 6).
We are not persuaded by this argument because we find Arima
teaches a “search timing” for sending a search request, which is determined
from an estimated period of time for when “expendables will completely run
out” (FF 5). Accordingly, Arima’s determination of when to search is not
independent of time, but is a determined “search timing.”
In view of the above discussion, we find the Examiner did not err in
finding claim 4 anticipated by Arima (Ans. 4, 18), and we will sustain the
rejection.
Dependent Claim 6
Claim 6 depends directly from claim 1, and covers an image forming
device including a “memory configured to store network identifiers of the
network devices, and wherein the processing circuitry is configured to
address the search request using the network identifiers.”
The Examiner finds Arima teaches “URL’s., and thus the network
identifiers, of the retailers of the consumables (network devices) [being] . . .
stored within the printer, particularly within storage unit (1B)” (Ans. 18).
Appellants contend Arima teaches storage of a URL for search results and
not the claimed storage of network device identifiers (Reply Br. 7).
We find Arima teaches a search unit 18A for developing an
expendables search instruction that is communicated to an external provider
15B, which is configured to receive and store search results (FF 2-4). We,
as a result, agree with Appellants in finding that Arima teaches
communication from a provider 15B to a printer of an URL for the provider
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15B, and that by using this URL a provider 15B database can be browsed for
stored search results (FF 3, 4). We do not agree with the Examiner’s finding
under § 102(e) that Arima teaches a printing apparatus memory configured
to store network identifiers used to address a search request.
In view of the above discussion, we are persuaded that the Examiner
erred in finding claim 6 as anticipated by Arima (Ans. 4, 18), and we will
not sustain the rejection.
Dependent Claim 8
Claim 8 depends directly from claim 1. Appellants’ argument for
claim 8 references the base claim 1 antecedent recitation for processing
circuitry “to generate a message including information received from at least
one of the network devices.” Claim 8 further covers “processing circuitry . .
. configured to generate the message comprising an electronic message, and
to forward the message to the interface for communication externally of the
image forming device.”
The Examiner citing Arima column 11, lines 16-25, finds that the
Arima “processing circuitry generates a message including information
received from at least one of the network devices, and forwards the message
to the interface” (Ans. 18). Appellants contend that what the Examiner
relies on from Arima teaches displaying search results, and, therefore, fails
to teach forwarding a message to an interface for communication externally
of the image forming device as claimed (Reply Br. 8).
We find that Arima teaches an external provider 15B that can sort
search results and that such sorted data can be presented on a display unit of
the Arima printing apparatus (FF 7). We, as a result, agree with Appellants
in finding that Arima teaches displaying search results (id.). We do not
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agree with the Examiner’s finding under § 102(e) that Arima teaches
generation and forwarding external from the printing apparatus of a search
result message.
In view of the above discussion, we are persuaded that the Examiner
erred in finding claim 8 as anticipated by Arima (Ans. 5, 18), and we will
not sustain the rejection.
Dependent Claim 25
Claim 25 depends directly from claim 1, and covers “the interface
receiv[ing] the information regarding the consumable directly from the
network devices comprising retailers of the consumable.”
The Examiner finds Arima teaches “that the information regarding the
consumables, such as price, time of delivery, and so on, are received directly
from the external providers (retailers) of the consumables and automatically
organized [see column 10, lines 1-9 of Arima]” (Ans. 19). Appellants
contend that Arima teaches “use of the intermediate entity (external provider
15B) between the printing apparatus D and the retailers 18C shows that
Arima fails to teach or suggest the limitations of the interface of the image
forming device receives the information regarding the consumable directly
from the network devices comprising retailers of the consumable” (Reply
Br. 9).
We find that Arima teaches a provider 15B that is external of the
printer and intermediate between the printer and retailer terminals 18C (FF
2), and that provider 15B stores retailer terminal 18C provided search results
(FF 3, 4). We, as a result, agree with Appellants in finding Arima teaches
use of the intermediate entity (external provider 15B) between the printing
apparatus D and the retailers 18C. We, therefore, do not agree with the
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Examiner’s finding under § 102(e) that Arima teaches a printing apparatus
interface directly receiving information from network devices.
In view of the above discussion, we are persuaded that the Examiner
erred in finding claim 25 as anticipated by Arima (Ans. 8, 19), and we will
not sustain the rejection.
Dependent Claim 32
Claim 32 depends directly from claim 1, and recites “network devices
compris[ing] retailers of the consumable.”
The Examiner finds this claimed subject matter taught by Arima at
column 6, lines 20-26, and Figure 9, element 10A (Ans. 8). Appellants do
not dispute that Arima teaches consumable retailer network devices, but,
instead, argue that Arima fails to teach “processing circuitry . . . configured
to address a search request for communication to [Arima] retailers 18C”
(Reply Br. 11), which is a limitation incorporated into claim 32 from base
claim 1.
As is addressed supra for claim 1, we find this incorporated claimed
subject matter to be anticipated by Arima (see FF 2).
In view of the above discussion, we find the Examiner did not err in
finding claim 32 as anticipated by Arima (Ans. 8), and we will sustain the
rejection.
Dependent Claim 33
Claim 33 depends directly from claim 1, and covers “storage circuitry
of the image forming device comris[ing] identification information of the
network devices comprising retailers of the consumable prior to formulation
of the search request by the processing circuitry.”
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The Examiner finds this claimed subject matter taught by Arima at
column 10, lines 52-60, and column 11, lines 16-25 (Ans. 9) where
operation of the external provider 15B is described (FF 3, 4). Appellants
contend Arima teaches storage of search results and not the claimed storage
of network device identifiers (Reply Br. 12, 13).
As is addressed supra for claim 6, we find Arima teaching a search
unit 18A for developing an expendables search instruction communicated to
an external provider 15B that receives and stores search results from retailer
network devices (FF 2-4). We, as a result, agree with Appellants in finding
Arima fails to teach claimed subject matter. We do not agree with the
Examiner’s finding under § 102(e) that Arima teaches a printing apparatus
storing identification information for retailer network devices.
In view of the above discussion, we are persuaded that the Examiner
erred in finding claim 33 as anticipated by Arima (Ans. 9), and we will not
sustain the rejection.
Dependent Claim 36
Claim 36 depends directly from claim 1, and covers “processing
circuitry . . . configured to forward the search request to the network at a
plurality of moments in time corresponding to the desired interval.”
The Examiner finds Arima teaching this claimed subject matter by
disclosing that a search for consumables is made at regular intervals if
consumables have not run low or a search is made earlier if consumables are
estimated to run low prior to the designated period for searching (Ans. 21;
see FF 5, 6). Appellants argue that Arima “fails to teach limitations of
forwarding the search request at a plurality of moments in time” (Reply Br.
14).
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We are not persuaded by Appellants’ argument because we further
find Arima in the immediate preceding column 9, at lines 20-27, discloses a
“search cycle” that can be set for sending search requests at several times to
sample for price fluctuations or new retailers (FF 5). Accordingly, we find
the claim 36 recited forwarding of a search request at a plurality of moments
reads on the Arima taught “search cycle.”
In view of the above discussion, we find the Examiner did not err in
rejecting claim 36 as anticipated by Arima (Ans. 9, 21), and we will sustain
the rejection.
Dependent Claim 38
Claim 38 depends from claim 4 and base independent claim 1,4 and
recites that a search request is forwarded at a “predetermined moment in
time [that] is determined independent of status of the consumable.”
The Examiner finds this claimed subject matter taught by Arima as
disclosed at column 10, lines 15-21 (Ans. 9, 22; FF 6). Appellants argue
that “execution of a search instruction in Arima is implemented at a time
based upon status information of the expendable which fails to teach the
claimed limitation” (Reply Br. 14).
We agree with Appellants that Arima teaches determining expendable
status information at column 10, lines 15-21. However, we are not
persuaded by Appellants’ argument, because reading Arima’s preface
disclosures concerning sending search requests we find a “search cycle”
disclosed that can be set for sending search requests at several times to
sample for price fluctuations or new retailers (FF 5). Accordingly, we find

4 As discussed supra, we will sustain the rejection of claims 1 and 4 as being
anticipated by Arima.
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the claim 38 recited limitation reads on Arima’s “search cycle,” which is set
independent of consumable usage.
In view of the above discussion, we find the Examiner did not err in
rejecting claim 38 as anticipated by Arima (Ans. 9, 22), and we will sustain
the rejection.
Dependent Claim 39
Claim 39 depends from claim 4 and base independent claim 1,5 and
recites that a search request is forwarded at a “predetermined moment in
time [that] is determined prior to any utilization of the consumable to form
hard images.”
The Examiner finds this claimed subject matter reads on Arima’s
teaching for setting search timing “based on amount of expendables left”
(Ans. 10), and that the Arima “search timing is set . . . based on the amount
of time estimated before the expendables run out [see column 9, lines 15-19
of Arima]” (Ans. 22). Appellants argue that “in Arima, a search is initiated
based upon status of the expendable as the expendable is used which fails to
teach determination of the predetermined amount of time prior to any
utilization of the consumable” (Reply Br. 15).
The Examiner reasons that “at the beginning of [the Arima] operation,
and before hard images are formed, the predetermined time is set based on
how much expendables are provided in the image forming system” (Ans.
22). Based on this record, we agree with the Examiner because at the

5 As discussed supra, we will sustain the rejection of claims 1 and 4 as being
anticipated by Arima.

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beginning, i.e., before hard images are formed, Arima would set search
timing based on reference to amounts of available expendables (see FF 5).
In view of the above discussion, we are not persuaded that the
Examiner erred in rejecting claim 39 as anticipated by Arima (Ans. 10, 22),
and we will sustain the rejection.
Dependent Claim 40
Appellants separately argue claim 40, which depends from claim 6
and base independent claim 1. As discussed supra, we will not sustain the
rejection of claim 6 as being anticipated by Arima. Consequently, we will
not sustain the rejection of claim 40 for the reasons discussed supra because
the claim 6 limitations are incorporated in claim 40.
Independent Claim 13
This claim covers a method for maintenance of image forming device
consumables that includes the image forming device communicating a
search request to a network having a plurality of network devices, and also
having “the image forming device storing a plurality of network identifiers
of the network devices.”
Appellants contend, inter alia, that “Arima fail[s] to teach the claimed
limitations of the image forming device storing a plurality of network
identifiers of a plurality of network devices” (App. Br. 7). In contradiction,
the Examiner indicates that “as shown in column 11, lines 15-25 of Arima,
the URL’s of the network devices are stored in the image forming device”
(Ans. 17). Appellants relying on their contention as to Arima deficiency
assert:
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[A]s clearly disclosed by Arima, there is only a single URL which
corresponds to the external provider 15B which performed the
searching and the single URL is used by the printing apparatus to
browse the search results stored in the external provider 15B. The
single URL may not be fairly interpreted to teach the claimed
limitations regarding a plurality of network identifiers of a plurality of
network devices as positively claimed.
(Reply Br. 4).
Based on the record, we are persuaded the Examiner erred, because
we find Arima teaches a printing apparatus receiving and storing a single
provider 15B URL (FF 4). As such, we do not find under § 102(e) that the
claim 13 recited limitation for an image forming device storing a plurality of
network identifiers for network devices reads on Arima teachings.
In view of the above discussion, we find the Examiner erred in
concluding that the claim 13 recited limitations are anticipated by Arima.
Accordingly, the Examiner’s 35 U.S.C. § 102(e) rejection of independent
claim 13, as well as identically rejected dependent claims 14-17, 19, 21, 27-
31, 34, 35, and 41-43 that incorporate claim 13 limitations, will not be
sustained.
35 U.S.C. § 103(a) Rejections
Claim 22
Independent claim 22, rejected under § 103(a) as unpatentable over
Arima and Wiens, covers a method for maintaining printer consumables that
includes having the printer formulating a search request regarding the
consumable, “storing a plurality of network identifiers of retailers of the
consumable within the printer[, and] . . . communicating the search request
comprising using the network.”
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Appellants contend that Arima teaches a provider 15B that is external
of the printer for obtaining and storing search results, and, therefore, fails to
teach the claimed limitation for a printer communicating a search request to
a network using stored network identifiers (App. Br. 8). The Examiner finds
Arima teaches storing retailer identifiers, i.e., URLs, in printer storage unit
1B and using these identifiers to communicate a search request (Ans. 17).
Appellants counter that what Arima teaches is use of a provider 15B stored
database that is external to the printer (Reply Br. 5).
Based on the record, we agree with the Examiner because we find
Arima teaches a printing apparatus communicating search instructions to a
provider 15B for browsing a plurality of retailer terminals 18C (FF 2). As
such, the Arima printer stores provider 15B identifier for communicating
search instructions from provider 15B to a plurality of retailer terminals
18C. Consequently, we agree with the Examiner that under § 103 the
provider 15B identifier effectively stores the retailer identifiers in the Arima
printer, which rearranges old elements and yields no more than what an
ordinary skilled artisan would expect. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 418 (2007) (“[A]nalysis need not seek out specific teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).
In view of the above discussion, we agree with the Examiner in
rejecting claim 22 as obvious over Arima and Wiens. Accordingly, the
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Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 22 will be
sustained.
Claims 2 and 3
These claims are rejected under § 103(a) as unpatentable over Arima
and Wiens (Ans. 11, 12). Appellants do not argue these claims.
Claims 2 and 3 ultimately depend from base independent claim 1,
which is rejected as anticipated by Arima, and that rejection as discussed
supra we will sustain. Therefore, we will also sustain the rejection under
§ 103 of these claims.
Claims 7 and 20
These claims are rejected under § 103(a) as unpatentable over Arima
and Song (Ans. 14, 15).
Claim 7 depends from base independent claim 1, which is rejected as
anticipated by Arima, and that rejection as discussed supra we will sustain.
Appellants have not argued claim 7. Therefore, we will also sustain the
rejection of this claim.
Claim 20 depends from base independent claim 13, which is rejected
as anticipated by Arima, and that rejection as discussed supra we will not
sustain. The Song teachings do not make up for the noted Arima
deficiencies. Since claim 20 incorporates the limitations of claim 13, we
will not sustain the rejection under § 103 of claim 20.
ORDER
The Examiner’s decision rejecting claims 1-5, 7, 9-12, 22, 24, 26, 32,
and 36-39 is affirmed. The Examiner’s decision rejecting claims 6, 8, 13-17,
19-21, 25, 27-31, 33-35, and 40-43 is reversed.

Appeal 2009-001617
Application 09/861,991

22
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

KIS

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P. O. Box 272400
Fort Collins, CO 80527-2400