Ex Parte Revel et al

Board of Patent Appeals and Interferences

Mar 22, 2012

09970496 (B.P.A.I. Mar. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DANIEL REVEL and JEREMY BUNN
_____________

Appeal 2009-012214
Application 09/970,496
Technology Center 2400
______________

Before, MAHSHID D. SAADAT, DEBRA K. STEPHENS, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 21-42.1,2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

1 Claims 1-20 were previously cancelled.
2 Appellants indicate in the Notice of Appeal, filed August 15, 2007, that
claims 21-42 are the subject of this appeal. Thus, we will consider all of
these claims. See Ex Parte Ghuman, 88 USPQ2d 1478 (BPAI 2008)
(precedential).
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INVENTION
The invention is directed to a method, computer readable media, and
system for mobile printing using a print service to encrypt the content to be
printed. Abstract. Claim 21 is representative of the invention and is
reproduced below:
21. A method, comprising:
a print service receiving from a mobile device a print
request that includes reference to content to be printed but does
not include the content to be printed;
in response to receiving the print request, the print
service encrypting the content to be printed referenced in the
print request; and
the print service transmitting the encrypted content to an
imaging device.

REFERENCES
Chan US 6,378,070 B1 Apr. 23, 2002
(filed Jan. 8, 1999)

Mazzagatte US 6,862,583 B1 Mar. 1, 2005
(filed Oct. 4, 1999)

REJECTIONS AT ISSUE3
Claims 26, 35, and 40 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 4-5.
Claims 21-42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Chan and Mazzagatte. Ans. 5-10.

3 The Examiner withdrew the 35 U.S.C. § 112, second paragraph, rejections
of claims 21, 22, 24, 26-31, 33, and 35-42. Ans. 10.
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ISSUES4
Did the Examiner err in rejecting claims 26, 35, and 40 under 35
U.S.C. § 112, second paragraph?
Did the Examiner err in finding that the combination of Chan and
Mazzagatte teaches or suggests:
(1) a print request that includes a reference to content to be printed but
does not include the content itself?
(2) the mobile device transmitting the print request to the imaging
device and the imaging device transmitting the print request to the
print service?
(3) the print request that includes an address for the mobile device and
the imaging device requesting a private key corresponding to the
public key from the mobile device at the address for the mobile
device included in the print request?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ conclusion. 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 Examiner’s Answer in response to Appellants’ Appeal Brief except with

4 We will not address Appellants’ arguments directed toward the Examiner’s
objection of claims 22, 31, and 42 (App. Br. 6) since we agree with the
Examiner that it is a petitionable matter and not an appealable matter. Ans.
12. See also MPEP §§ 706.01 and 1201 (8th ed., Rev. 8, July 2010); see also
Ex Parte Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential).
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respect to claims 29 and 38 as set forth below. We concur with the
conclusion reached by the Examiner. In addition, below we highlight and
address some specific findings and arguments relating to the 35 U.S.C. §§
112 and 103 rejections.
The Examiner finds that claims 26,5 35, and 40 are indefinite because
the Examiner cannot comprehend how “a print request can be received by
the print service from a mobile device if it is actually received from an
imaging device.” Ans. 11. Appellants contend that in one embodiment the
print request is received directly from a mobile device and in another
embodiment the print request is received indirectly from the mobile device
through an imagining device. App. Br. 5-6. We agree with Appellants.
Additionally, we note that even if the print request is sent from the mobile
device to an imaging device and then to the print service, the print service is
still receiving the request from the mobile device. It makes no difference
that the request goes through an intermediary because the claim does not
preclude an intermediary. Thus, we cannot sustain the Examiner’s rejection
of claims 26, 35, and 40 under 35 U.S. C. § 112, second paragraph.
Appellants argue that the combination of Chan and Mazzagatte does
not teach or suggest a print request that includes a reference to content to be
printed but not the actual content itself, as required by representative claim
21.6 App. Br. 7; Reply Br. 2. We disagree. The Examiner finds that Chan

5 The Examiner’s Answer mistakenly indicates claim 25 instead of claim 26.
Ans. 10. However, the original rejection found on page 4 indicates claim 26.
We find this to be harmless error and will address the rejection in regards to
claim 26.
6 Claim 21 is representative of claims 21-25, 27, 28, 30-34, 36, 37, 39, 41,
and 42, as Appellants have not argued these claims with particularity. 37
C.F.R. § 41.37(c)(1)(vii).
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discloses a system that receives requests for specific information that is to be
printed and searches for the specific information. Ans. 14. Therefore, when
the request is received, the request does not contain the actual content itself,
but rather contains information which is used to search for the actual
content. This is the same as that which is claimed. Thus, we agree with the
Examiner and sustain the Examiner’s rejection of claims 21-42.
Appellants also argue that none of the references teach or suggest
sending the print request through the imaging device to the print service as
required by claims 26, 35, and 40 because while a laptop may be considered
a mobile device, Mazzagatte does not disclose routing a print request from a
laptop, through a printer, and to the print node. App. Br. 10; Reply Br. 3.
However, the Examiner finds that Mazzagatte teaches or suggests using a
smart card at an imaging device. Ans. 22. The smart card is inserted in the
imaging device and queries a network device for specific documents. Ans.
22. Appellants have not persuasively responded to the Examiner’s specific
finding. Thus, we agree with the Examiner and sustain the Examiner’s
rejection of claims 26, 35, and 40.
Lastly, Appellants argue that none of the references teach or suggest a
print request that contains an address of the originating device, as required
by claims 29 and 38. App. Br. 10; Reply Br. 3-4. We agree. The Examiner
has not pointed to detailed factual findings that are supported by the
references of record that show the print request contains an address of the
originating device nor was the Examiner’s finding that the address was well-
known in the art based on any articulated reasoning. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, we cannot sustain the
Examiner’s rejection of claims 29 and 38.
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CONCLUSION
The Examiner erred in rejecting claims 26, 35, and 40 under 35
U.S.C. § 112, second paragraph.
The Examiner did not err in finding that the combination of Chan and
Mazzagatte teaches or suggests a print request that includes a reference to
content to be printed but does not include the content itself.
The Examiner did not err in finding that the combination of Chan and
Mazzagatte teaches or suggests the mobile device transmitting the print
request to the imaging device and the imaging device transmitting the print
request to the print service.
The Examiner erred in finding that the combination of Chan and
Mazzagatte teaches or suggests a print request that includes an address for
the mobile device and the imaging device requesting a private key
corresponding to the public key from the mobile device at the address for the
mobile device included in the print request.

SUMMARY
The Examiner’s decision to reject claims 26, 35, and 40 under 35
U.S.C. § 112, second paragraph, is reversed; claims 21-28, 30-37, and 39-42
under 35 U.S.C. § 103(a) is affirmed; and claims 29 and 38 under 35 U.S.C.
§ 103(a) is reversed.
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).
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AFFIRMED-IN-PART

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