Ex Parte Plewnia

Board of Patent Appeals and Interferences

May 8, 2012

11799909 (B.P.A.I. May. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/799,909 05/03/2007 Boguslaw Ludwik Plewnia SLA1183.1 7726
55286 7590 05/08/2012
SHARP LABORATORIES OF AMERICA, INC.
C/O LAW OFFICE OF GERALD MALISZEWSKI
P.O. BOX 270829
SAN DIEGO, CA 92198-2829
EXAMINER
NGUYEN, PHUOC H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
05/08/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BOGUSLAW LUDWIK
____________

Appeal 2009-011951
Application 11/799,9091
Technology Center 2100
____________

Before JOSEPH L. DIXON, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Sharp Laboratories of America, Inc.
Appeal 2009-011951
Application 11/799,909

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2, 4-19, and 25-27, which are all the claims
remaining in the application. Claims 3 and 20-24 are cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates to a method for embedding a digital
document with instructions to be performed by networked document
processing devices. See Spec., 1:12-14.
Claim 1 is illustrative:
1. In a network of connected nodes, a method for automatic digital
document processing, the method comprising:
scanning an image to create a digital document at an
originating node scanning device node;
embedding a processing profile with the digital document;
sending the digital document to a network-connected first node;
extracting first node process instructions from the processing
profile at the first node; and,
processing the digital document in response to the process
instructions.

Appellant appeals the following rejections:

R1. Claims 1, 2, 5-17, 19, and 25-27 under 35 U.S.C. § 102(e) as
anticipated by White (US Patent Pub. No.: 2003/0079006 A1, Apr. 24,
2003); and
R2. Claims 4 and 18 under 35 U.S.C. § 103(a) as unpatentable over
White and Cherry (US Patent Pub. No.: 2003/0140185 A1, Jul. 24, 2003).
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Application 11/799,909

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ANALYSIS
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as noted below. See 37 C.F.R.
41.37(c)(1)(vii).
Claims 1, 2, 5-17, 19, and 25-27
Issue 1: Did the Examiner err in finding that White discloses
extracting first node process instructions from the processing profile at the
first node, as claimed?
Appellants contend that “White does not disclose processing a
document after extracting the processing instructions from the embedded
profile.” (App. Br. 9.)
The Examiner found that “White discloses in Figures 2 the workflow
definite 208 as the profile is embedded/incorporated with the initial file 202
as the digital document by the workflow engine 206 to form a processed file
for sending over the network 104 in Figure 1.” (Ans. 10.) We agree with
the Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
Specifically, White discloses “[o]ne common type of file processing
workflow is one that supports the printing of a file from a desktop computer
that is connected to a network along with a printing device. . . . The
resulting processed file may then be transferred over the network to a printer
or like device, which may further process the file to prepare the data for
printing.” (White, ¶[0016].) In other words, White discloses a system that
transfers a file to a printer (i.e., first node) for further processing. Appellant
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Application 11/799,909

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even concedes that “a print driver may send processing instructions along
with the job to be processed.” (see App. Br.8.) Therefore, we find that
White discloses extracting first node processing instructions from the
processing profile, as claimed.
We note that although Appellant argues that in White “instructions are
not sent in a separate processing file” or that White does not teach “ignoring
processing instructions directed to other node,” (see App. Br. 8), the
Appellant has chosen to draft the claims, claim 1 in particular, far more
broadly, as these limitations are simply not in the claims. “In the
patentability context, claims are to be given their broadest reasonable
interpretations. . . . [L]imitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citations omitted). Furthermore, we are not to read limitations from
examples in the specification into the claims. See In re Am. Acad. Of Sci
Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and similar independent claims 13 and 25 as they contain
commensurate limitations, for the reason set forth in the Answer, which we
incorporate herein by reference. Appellant has not presented separate
arguments for the dependent claims. Therefore, these claims fall with the
claims from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 4 and 18
Issue 2: Did the Examiner err in finding that the combination of
White and Cherry discloses creating a metadata section with the processing
profile written in the extensible markup language (XML), as claimed?
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Appellant contends that “Cherry never explicitly discloses a
processing profile that includes processing instructions and routing
instructions.” (App. Br. 11.) Appellant further contends that “no evidence
has been provided in the Office Action that modifications to White . . . are
suggested by what was well known at the time of the invention.” (App. Br.
13.)
The Examiner found that “Cherry clearly states in paragraph [0023]
that the XML format of the metadata would enhance the print job.” (Ans.
13.)

Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 4, essentially for the reasons
indicated by the Examiner.
Furthermore, Appellant’s arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is therefore ineffective to rebut the Examiner’s prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
1981)(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”) (citations omitted, emphasis added). This reasoning is
applicable here.
As noted supra, White discloses a printing process and the Examiner
has further found that Cherry discloses “combining . . . the meta-data with
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Application 11/799,909

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the print job to form an enhanced print job. . . . the print job may form the
body of an XML file.” (Cherry, ¶[0023].) As such, we find that the
combined teaching of White and Cherry discloses “creating a metadata
section with the processing profile written in the extensible markup language
(XML).”
In addition, the Examiner has found actual teachings in the prior art
and has provided a rationale for the combination. Further, the teachings
suggest that the combination involves the predictable use of prior art
elements according to their established functions. Accordingly, we find that
the Examiner has provided sufficient motivation for modifying White with
the teachings of Cherry, and we will sustain the obviousness rejection of
claims 4 and 18.

DECISION
We affirm the Examiner’s § 102(e) and § 103(a) rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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