10186057 (B.P.A.I. Jul. 12, 2012)

Ex Parte Sesek

Board of Patent Appeals and InterferencesJul 12, 2012

10186057 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ROBERT SESEK ____________________ Appeal 2010-004233 Application 10/186,057 Technology Center 2400 ____________________ Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and RAMA G. ELLURU, Administrative Patent Judges. ELLURU, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004233 Application 10/186,057 2 Appellant appeals under 35 U.S.C. § 134(a) (2002) from a non-final rejection of claims 1-16, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Introduction The present invention is directed to “document production, and more particularly, to automatically reconfiguring dynamically rerouted production requests.” (Spec. ¶ [0001]). STATEMENT OF THE CASE Exemplary Claim Claim 1 is an exemplary claim and is reproduced below: 1. A method, comprising: queuing a production request formatted for a primary production service; detecting a redirection event for the primary production service; identifying an available secondary production service; reverting the production request; and reformatting the production request for the secondary production service. Reference Perkins US 2003/0184782 A1 Oct. 2, 2003 Rejection Claims 1-16 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Perkins. Appeal 2010-004233 Application 10/186,057 3 ISSUE Whether the Examiner erred in finding that Perkins discloses the claim limitation, “reverting the production request,” as recited in claim 1, and similarly recited in the remaining independent claims. APPELLANT’S CONTENTIONS Appellant argues that Perkins does not disclose reverting “a production request” already formatted for one device so that it can be reformatted for a different device. (App. Br. 10-11). According to Appellant, Perkins’ enhanced print job is never reverted to a generic print job and then reformatted to include printer specific commands for another printer. (Id. at 11). ANALYSIS We find the Appellant’s argument persuasive. The Examiner has not set forth a reasonable prima facie case that Perkins discloses the claim element: “reverting the production request.” See Hyatt v. Dudas, 492 F.3d 1365, 1369-70 (Fed. Cir. 2007) (“In the prosecution of a patent, the initial burden falls on the PTO to set forth the basis for any rejection, i.e., a prima facie case.”). Specifically, for showing the disclosure of this limitation, the Examiner relies, in part, on Perkins’ teaching that “the printer driver is restored from the specialized state associated with the selected printer to the generic state, ready to be enhanced into a specialized state associated with another printer.” (Ans. 17 citing Perkins ¶ [0043]). The relied upon disclosure relates to the restoration of a printer driver from a specialized Appeal 2010-004233 Application 10/186,057 4 state to a generic state. (Id.). This disclosure, however, does not show that the “production request formatted for a primary production service” (as claimed (emphasis added)) is reverted. (See Reply Br. 3-4). Therefore, we reverse the rejection of claim 1. Because independent claims 3, 5, 6, 8, 10, 11, 12, 13, 15, and 16 recite the same or a similar claim limitation, and claims 2, 4, 7, 9, and 14 are dependent claims, we reverse the rejection of these claims for the same reason(s). Because we have reached the merits of this issue, we do not address any remaining arguments raised by Appellant. DECISION The Examiner’s rejection of claims 1-16 under 35 U.S.C. § 102 as being anticipated by Perkins is reversed. 1 REVERSED ELD 1 We have decided the appeal before us. However, should there be further prosecution of these claims; the Examiner's attention is directed to guidance from the Director as follows below in the citations to the Federal Register and Official Gazette. Should there be further prosecution of claims 6, 8, and 10, which recite a computer readable media, the Examiner's attention is directed to In re Nuijten, 500 F.3d 1346, 1356-57(Fed. Cir. 2007) and the Director’s Memo on Subject Matter Eligibility of Computer Readable Media dated January 26, 2010.