09879400 (B.P.A.I. Jan. 26, 2009)

Ex Parte Pochuev et al

Board of Patent Appeals and InterferencesJan 26, 2009

09879400 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DENIS A. POCHUEV, DAVID M. HALL, DANIEL REVEL, JEREMY BUNN, and DAVID STAAS _____________ Appeal 2009-0148 Application 09/879,400 Technology Center 2600 ____________ Decided: January 26, 2009 ____________ Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-0148 Application 09/879,400 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s non- final rejection of claims 1, 2, and 4-20.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION Appellants’ claimed invention is directed to a print processor 41 employing a virtual machine 42 to identify the native format of the received document, and to convert the document into a print-ready format (Fig. 4 and Spec. 4:18-25). The virtual machine behaves as a separate processor and can execute applications, modules, or programs written for the virtual machine, regardless of the printer hardware and printer software (Spec. 4:25-29). Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A printer, comprising, a print processor that is configured to employ a virtual machine to convert an electronic document from a native format to a print-ready format. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: French US 6,396,594 B1 May 28, 2002 (filed Mar. 31, 1999) 1 Claim 3 was canceled by Amendment on April 18, 2005. Appeal 2009-0148 Application 09/879,400 3 Lee US 6,628,413 B1 Sep. 30, 2003 (effectively filed May 14, 1996) Yamaguchi US 2003/0038963 A1 Feb. 27, 2003 (filed Dec. 22, 2000) The following rejections are before us for review: 1. The Examiner rejected claims 1, 2, 4-7, 9, 12, 17, 18, and 20 under 35 U.S.C. § 102(e) as being anticipated by French. 2. The Examiner rejected claims 8, 10, 13-15, and 19 under 35 U.S.C. § 103(a) as being unpatentable over French in view of Lee. 3. The Examiner rejected claims 11 and 16 under 35 U.S.C. § 103(a) as being unpatentable over French in view of Yamaguchi. Appellants argue independent claims 1-2, 4-7, 9, and 12 as a group with claims 1, 5, and 12 as representative (App. Br.2 7-9).3 Appellants also argue claims 17, 18, and 20 as a group with claim 17 as representative (App. Br. 9-10). However, since the arguments advanced for claims 17, 18, and 20 are the same as those advanced for claims 1, 5, and 12 (i.e., French not disclosing a “virtual machine” being a processor located at the printer), these claims also stand or fall with claims 1, 5, and 12. Appellants separately argue claims 8, 13-15, and 19 (App. Br. 15-16). Appellants also separately argue claim 10 (App. Br. 16). 2 Throughout this decision, we refer to the Appeal Brief filed on June 5, 2007, and the Reply Brief filed Jan. 2, 2008. 3 Only arguments made by Appellants have been considered in this decision. Arguments which Appellants could have made but did not make in the Briefs have not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). Appeal 2009-0148 Application 09/879,400 4 Appellants further argued separately claims 11 and 16 (App. Br. 17). See 37 C.F.R. § 41.37 (c)(1)(vii) (2004). ANTICIPATION ISSUE Claims 1, 2, 4-7, 9, 12, 17, 18, and 20 Appellants contend that French does not disclose document conversions in a print processor contained in a printer because French teaches watermark replacement on a client, server, or network computer--not at the printer (App. Br. 8-9). The Examiner responds that French teaches that print server 108 can be installed in printer 110 (Ans. 12) and that network server 112 can be a part of print server 108 (Ans. 12). The Examiner further states that French teaches queue 202 implemented within print server 108 to print watermarks (Ans. 12). The Examiner further states French teaches that the word processing document, which is in a native format is converted into printer specific data at the printer (Ans. 12), because as previously stated, the server 108 could be installed within printer 110 (Ans. 12). Furthermore, the Examiner states that French’s Figure 5B shows that the virtual machine (JVM) converts watermark data into printer ready data (Ans. 12), and execution occurs at the printer since as previously stated the print server 108 could be installed within printer 110 (Ans. 12). Appeal 2009-0148 Application 09/879,400 5 The issue before us, then, is as follows: Have the Appellants shown that the Examiner erred by determining that French teaches a printer including a print processor configured to convert an electronic document from a native format to a print-ready format as claimed? FINDINGS OF FACT The relevant facts include the following: 1. French teaches that print server 108 can be installed in printer 110 (col. 3, ll. 20-24) 2. French teaches that network server 112 can be a part of print server 108 (col. 3, ll. 33-35). 3. French teaches queue 202 implemented within print server 108 to print watermarks (col. 3, ll. 55-61). 4. French teaches that the word processing document and watermark data, which is in a native format is converted into printer specific data (col. 6, ll. 15-22). 5. French’s Figure 5B shows that the virtual machine (JVM) converts watermark data into printer ready data (col. 7, ll. 1-18). PRINCIPLES OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co. of Calif., 814 F.2d 628, 631 (Fed. Cir. 1987). Appeal 2009-0148 Application 09/879,400 6 ANALYSIS Claims 1, 2, 4-7, 9, 12, 17, 18, and 20 Have the Appellants shown that the Examiner erred by determining that French teaches a printer including a print processor configured to convert an electronic document from a native format to a print-ready format as claimed? French teaches that print server 108 can be installed in printer 110 (Finding of Fact 1) and that network server 112 can be a part of print server 108 (Finding of Fact 2). French teaches queue 202 implemented within print server 108 to print watermarks (Finding of Fact 3). French teaches that the word processing document and watermark data, which is in a native format is converted into printer specific data (Finding of Fact 4). French’s Figure 5B shows that the virtual machine (JVM) converts watermark data into printer ready data (Finding of Fact 5). Thus, execution of the conversion of the watermark data into printer specific data can occur at the printer because the print server 108 could be installed within printer 110. CONCLUSION Appellants have not shown that the Examiner erred by determining that French teaches a printer including a print processor configured to convert an electronic document from a native format to a print-ready format as claimed. Appeal 2009-0148 Application 09/879,400 7 OBVIOUSNESS ISSUES Claims 8, 13-15, and 19 Appellants contend that neither French nor Lee teaches or suggests converting an electronic document from native to print-ready format based on a retrieved, downloaded and executed translation module that is specific to a given native format (App. Br. 16). The Examiner responds that Lee discloses that printer 100, print server 102, and communication link 106 can be combined into a single network printer which is a Java printer 110 (Ans. 13). The Examiner further states that Lee discloses that Java printer 110 can utilize external communication link 104 to download fonts or updates to printer code and a repository, such as the Internet, is searched by Java printer 110 to obtain the correct font to allow appropriate document format translation (Ans. 13). The Examiner further states that the French and Lee combination teach converting a document from a native format to a print ready format as taught by French and searching a repository for a translation module (font or printer code), downloading and utilizing the translation module to aid in conversion of a document as taught by Lee. The issue before us, then, is as follows: Have the Appellants shown that the Examiner erred by determining that French in combination with Lee teach converting an electronic document from native to print-ready format based on a retrieved, downloaded and executed translation module that is specific to a given native format as claimed? Appeal 2009-0148 Application 09/879,400 8 Claim 10 Appellants contend that Lee does not teach retrieving, converting, and printing an HTML document (App. Br. 16). The Examiner responds that Lee shows in Figures 3-6 that the document is located by use of a URL and HTTP request (Ans. 14). The Examiner further states that Lee teaches that the document resides on a network and can be viewed using a WWW browser and therefore the document is an HTML document (Ans. 14). The issue before us, then, is as follows: Have the Appellants shown that the Examiner erred by determining that French in combination with Lee teach retrieving, converting, and printing an HTML document as claimed? Claims 11 and 16 Appellants contend that Yamaguchi does not teach wireless communication “‘to the printer,’” but rather wireless communication to an interface component (App. Br. 17). The Examiner responds that Yamaguchi discloses that a wireless device 112, such as laptop or cellular phone, (Ans. 14) that can send an electronic document, such as Word document, (Ans. 14) to an interface box 102 which is connected to a printer 106 through a communication interface, such as a USB, parallel, or serial port (Ans. 14) and the document may not be in print ready format (Ans. 14). Therefore, the Examiner concludes that Yamaguchi discloses sending a document, in a native format, to a printer via a wireless connection. Appeal 2009-0148 Application 09/879,400 9 The issue before us, then, is as follows: Have the Appellants shown that the Examiner erred by determining that Yamaguchi teaches communicating the electronic document to the printer via a wireless connection as claimed? FINDINGS OF FACT The relevant facts include the following: 6. Lee discloses that printer 100, print server 102, and communication link 106 can be combined into a single network printer which is a Java printer 110 connected to the external communication link 104 (col. 3, ll. 52-55). 7. Lee further discloses that Java printer 110 can utilize external communication link 104 to download fonts or updates to printer code and a repository, such as the Internet, is searched by Java printer 110 to obtain the correct font to allow appropriate document format translation (col. 5, ll. 18- 55). 8. Lee teaches that the document is located by use of a URL and HTTP request (Figs. 3-6). 9. Lee further teaches that the document resides on a network and can be viewed using a WWW browser and therefore the document is an HTML document (col. 3, ll. 52-65 and col. 4, l. 22-col. 5, l. 8). 10. Yamaguchi discloses a wireless device 112, such as laptop or cellular phone, (¶[0021]) that can send an electronic document, such as Word document, (¶[0022]) to an interface box 102 which is connected to a printer 106 Appeal 2009-0148 Application 09/879,400 10 through a communication interface, such as a USB, parallel, or serial port (¶[0023]) and the document may not be in print ready format (¶[0035]). PRINCIPLES OF LAW The Examiner’s articulated reasoning in the rejection must possess a rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court, citing Kahn, 441 F.3d at 988, stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). However, “the analysis need not seek out precise 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.” Id. “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). The transitional term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Appeal 2009-0148 Application 09/879,400 11 ANALYSIS Claims 8, 13-15, and 19 Have the Appellants shown that the Examiner erred by determining that French in combination with Lee teach converting an electronic document from native to print-ready format based on a retrieved, downloaded and executed translation module that is specific to a given native format as claimed? Lee discloses that printer 100, print server 102, and communication link 106 can be combined into a single network printer which is a Java printer 110 connected to the external communication link 104 (col. 3, ll. 52-55 and Finding of Fact 6). Lee further discloses that Java printer 110 can utilize external communication link 104 to download fonts or updates to printer code and a repository, such as the Internet, is searched by Java printer 110 to obtain the correct font to allow appropriate document format translation (col. 5, ll. 18-55 and Finding of Fact 7). As stated supra, French teaches converting a document from a native format to a print ready format (Finding of Fact 4). Thus, it would have been obvious to one skilled in the art at the time that the invention was made to use Lee’s teaching of searching a repository for a translation module, downloading and utilizing the translation module to aid in converting the French’s document from a native format to a print ready format. CONCLUSION Appellants have not shown that the Examiner erred by determining that French in combination with Lee teach converting an electronic document from Appeal 2009-0148 Application 09/879,400 12 native to print-ready format based on a retrieved, downloaded and executed translation module that is specific to a given native format as claimed. Claim 10 Have the Appellants shown that the Examiner erred by determining that French in combination with Lee teach retrieving, converting, and printing an HTML document as claimed? Lee teaches that the document is located by use of a URL and HTTP request (Finding of Fact 8). Lee further teaches that the document resides on a network and can be viewed using a WWW browser and therefore the document is an HTML document (Finding of Fact 9). Thus, Lee teaches retrieving an electronic HTLM document (Findings of Fact 8 and 9), and as stated supra, French in combination of Lee teach converting and printing the electronic document (Findings of Fact 4 and 6-7). As stated supra, one cannot show non-obviousness by attacking references individually where the rejection is based on the combination of French and Lee. Keller, 642 F.2d at 426. CONCLUSION Appellants have not shown that the Examiner erred by determining that French in combination with Lee teach converting an electronic document from native to print-ready format based on a retrieved, downloaded and executed translation module that is specific to a given native format as claimed. Appeal 2009-0148 Application 09/879,400 13 Claims 11 and 16 Have the Appellants shown that the Examiner erred by determining that Yamaguchi teaches communicating the electronic document to the printer via a wireless connection as claimed? Yamaguchi discloses a wireless device 112, such as laptop or cellular phone, that can send an electronic document, such as Word document, to an interface box 102 which is connected to a printer 106 through a communication interface, such as a USB, parallel, or serial port and the document may not be in print ready format (Finding of Fact 10). Therefore, Yamaguchi discloses sending a document, in a native format, to a printer via a wireless connection. As stated supra, the transitional term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements (i.e., an intervening interface box). Genentech., 112 F.3d at 501. CONCLUSION Appellants have not shown that the Examiner erred by determining that Yamaguchi teaches communicating the electronic document to the printer via a wireless connection as claimed. ORDER The decision of the Examiner to reject claims 1, 2, 4-7, 9, 12, 17, 18, and 20 under 35 U.S.C. § 102(e) as anticipated and claims 8, 10, 11, 13-16, and 19 under 35 U.S.C. § 103(a) as being obvious is affirmed. Appeal 2009-0148 Application 09/879,400 14 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 KIS HEWLETT-PACKARD COMPANY INTELLECTUAL PROPERTY ADMINISTRATION P. O. BOX 272400 FORT COLLINS, CO 80527-2400