Ex Parte Salgado et al

Patent Trial and Appeal Board

Sep 10, 2013

11273132 (P.T.A.B. Sep. 10, 2013)

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.
11/273,132 11/14/2005 David L. Salgado 056-0169 2798
70537 7590 09/10/2013
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
EXAMINER
AUGUSTIN, MARCELLUS
ART UNIT PAPER NUMBER
2674
MAIL DATE DELIVERY MODE
09/10/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAVID L. SALGADO, BRADLEY W. SMITH,
VIBHAKER MOUDGIL, JOHN Y. ZHANG, and LIKANG GUO
__________

Appeal 2011-008583
Application 11/273,132
Technology Center 2600
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
printing system. The Examiner rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Party in Interest as Xerox Corporation (see
App. Br. 1).
Appeal 2011-008583
Application 11/273,132

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Statement of the Case
Background
The Specification teaches “operating the features that are available to
an electronic device and more particularly, to an electronic device driver that
makes information about a device feature available where the settings
associated with the feature are entered at the user interface” (Spec. 1 ¶
0001).
The Claims
Claims 1, 2, 4-9, 11-15, and 18-20 are on appeal. Claim 1 reads as
follows:
1. A system, comprising:
a printer having a plurality of printer options and
having a printer feature related to at least two current
conditions of the plurality of printer options;
a printer driver configured to communicate with the
printer to determine the at least two current printer option
conditions and to use the at least two printer option current
conditions to provide information about the related printer
feature; and
one or more status buttons located on a printer user
interface, each of the one or more status buttons when
selected prior to a print job being initiated causes the printer
driver to display a status user interface window that shows
status information concerning the printer feature, the status
information being at least one of the at least two current
printer option conditions related to the printer feature.

The Issue
The Examiner rejected claims 1, 2, 4-9, 11-15, and 18-20 under 35
U.S.C. § 102(a) as anticipated by Roztocil2 (Ans. 3-11).

2 Roztocil et al., US 2001/0043346 A1, published Nov. 22, 2001.
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Application 11/273,132

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The Examiner finds that “Roztocil discloses a system, comprising: a
printer having a plurality of printer options and having a printer feature
related to at least two current conditions of the plurality of printer options”
(Ans. 3). The Examiner finds that Roztocil teaches “a printer driver
configured to communicate with the printer . . . wherein a printer driver
queues or spools proper output devices wherein determining printer
conditions including hole punching, stapling, stacking and the like through a
user interface” (id. at 3-4). The Examiner finds that
Roztocil discloses a graphical user interface comprising one
or more status buttons wherein when selected displays status
indication wherein if a feature and options selected by a user
can not [sic] be handled or unavailable, a message is
displayed to the user, the user to intervene manually to
modify selected options based on current options availability
before a job is completed, the user interface has status
buttons when pressed displayed a menu of available options.

(Id. at 4.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Roztocil anticipates claim 1?
Findings of Fact
1. The Specification teaches that a
“device option” is a single parameter element of an electronic
device, whose operation is controlled by modifying a setting.
For example, one printer option may be modified to select
media type, while another printer option is modified to select
media size and still another printer option is modified to select
media orientation

(Spec. 5 ¶ 0020).
Appeal 2011-008583
Application 11/273,132

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2. The Specification teaches that a “‘feature’ is an integrated tool
that provides enhanced functionality by controlling combinations of
electronic device elements. For example, a ‘landscape print’ feature may
combine a paper size selection with one or more image adjustment options”
(Spec. 5 ¶ 0021).
3. Figure 4 of Roztocil is reproduced below:

“FIG. 4 depicts a representation of a graphic user interface display”
(Roztocil 2 ¶ 0018).
4. Roztocil teaches that
The workflow management software is also
preferably programmed with data about the different
production output devices 122 in the print shop . . . . The
software provides tools which allow the operator to set page
features/formatting which are made possible by those
specific capabilities. Such page features include the plex of
the document such as duplex or simplex (double sided or
single sided output), binding options, such as stapling or
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Application 11/273,132

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hole punching and the availability and control settings for
handling tab stock or ordered media

(Roztocil 6 ¶ 0047).
5. Roztocil teaches that “page features can be set by selecting or
pointing to a visual representation of one or more pages and selecting from a
menu of options, where the selection of a particular option causes the
associated feature to be applied to the selected pages” (Roztocil 7 ¶ 0047).
6. Roztocil teaches that “a palate of options may be displayed
from which the user may choose an option to apply to selected pages.
Further, the interface may provide for a dialog box or other visual control for
inputting control values for the feature such as the type of tab stock”
(Roztocil 7 ¶ 0047).
7. Roztocil teaches that “[s]etting page features for specific pages
encodes instructions to the production output device 122 for implementing
those features within the ready for printer formatted file. When the
production output device 122 receives the file for printing, it will interpret
those instructions to implement the desired feature” (Roztocil 7 ¶ 0047).
8. Roztocil teaches that the
[P]rint server engine performs the automated processes of
the print server. These processes include spooling and
queuing jobs and job content (i.e. the document), directing
the jobs to specific production output devices based on the
attributes of the print job and how these attributes are
satisfied by the print engine, load balancing jobs among the
various production output devices to keep all printers fully
utilized, e.g. to split color from black and white jobs, and
acting as a communication gateway where it can accept
multiple input communication and print protocols translating
them to the communication and print protocol the
production output device 122 understands.
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Application 11/273,132

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(Roztocil 4 ¶ 0034.)

Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
Analysis
Appellants contend that:
Roztocil does not disclose or suggest “one or more status
buttons located on a printer user interface, each of the one or
more status buttons when selected prior to a print job being
initiated causes the printer driver to display a status user
interface window that shows status information concerning
the printer feature, the status information being at least one
of the at least two current printer option conditions related to
the printer feature

(App. Br. 5). Appellants contend that the “Office Action improperly ignores
Applicants’ definition of ‘feature’ in Applicants’ specification and equates
Roztocil’s ‘features’ with Applicants' claimed ‘printer feature.’” (Id. at 7.)
The Examiner finds that the “printer 122 has a plurality of features
such as duplex/simplex printing, page layout, binding and the like including
current available options such as stapling, punching and the like wherein if a
feature and options selected by a user can not be handled or unavailable, a
message is displayed to the user” (Ans. 13). The Examiner finds that “the
Examiner is not limited to Applicants’ definition which is not specifically set
forth in the claims. In re Tanaka et al., 193 USPQ 139, (CCPA) 1977” (id.
at 14).
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Application 11/273,132

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We find that Appellants have the better position. As an initial matter,
the Examiner’s reliance on Tanaka is misplaced. Tanaka states that the
“question before us is the propriety of . . . the examiner’s rejection of the
appealed claims for obviousness under § 103. In considering this issue we,
of course, give the claims their broadest reasonable interpretation.” In re
Tanaka, 551 F.2d 855, 860 (CCPA 1977). That is, Tanaka does not state that
claim terms are not limited by definitions in the Specification, but rather
addresses whether a claim would have been obvious or not given its broadest
reasonable interpretation. Id. The instant rejection, however, is based on
anticipation, not obviousness.
Where, as here, Appellants have specifically defined a term in the
Specification, that definition controls the interpretation of the claim. See
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (“[O]ur cases
recognize that the specification may reveal a special definition given to a
claim term by the patentee that differs from the meaning it would otherwise
possess. In such cases, the inventor’s lexicography governs.”)
The term “feature” is specifically defined as “an integrated tool that
provides enhanced functionality by controlling combinations of electronic
device elements” (Spec. 5 ¶ 0021; FF 2). Thus, in the context of the instant
case, the term “feature” has the special definition of controlling a
combination of elements, where a combination is minimally interpreted as
two different elements.
The Examiner does not identify, and we do not find, a teaching of a
single “feature” which controls two different components, such as those
shown in figure 4 of Roztocil. In addition, the claim requires a “status user
interface window that shows status information concerning the printer
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Application 11/273,132

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feature” and the Examiner has not provided a showing of a “status user
interface window” which shows information on a printer feature; i.e., a tool
that controls two different components. In figure 4 of Roztocil, each
different element is shown as a different feature, with no integrated tool that
controls “combinations of electronic device elements” as required by the
claims as interpreted in light of the definition in the Specification (FF 2).
Further, while Roztocil teaches control of the electronic device elements (FF
5-7), Roztocil does not teach a single tool which can control multiple
elements as required.
We are therefore constrained to reverse this anticipation rejection
since there is no teaching of the final clause including the “printer feature”
required by claim 1. See Karsten Manufacturing Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) (“Invalidity on the ground of
‘anticipation’ requires lack of novelty of the invention as claimed … that is,
all of the elements and limitations of the claim must be shown in a single
prior reference, arranged as in the claim.”).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Roztocil anticipates claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1, 2, 4-9, 11-15, and
18-20 under 35 U.S.C. § 102(a) as anticipated by Roztocil.

REVERSED
cdc