Ex Parte Sewell et al

Patent Trial and Appeal Board

Mar 7, 2016

11847474 (P.T.A.B. Mar. 7, 2016)

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.
11/847,474 08/30/2007 Michael B. Sewell 20060539USNP-XER1427US01 2193
62095 7590 03/08/2016
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
MCLEAN, NEIL R
ART UNIT PAPER NUMBER
2676
MAIL DATE DELIVERY MODE
03/08/2016 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 MICHAEL B. SEWELL, MARCIN CHOLKOWSKI,
NATALIA VERSHININA, WAYNE RUDGE, REBECCA MALLABAND,
ASIF QURESHI, ERROLL ELLISTON, GREGORY C. SOSINSKI,
EDWARD J. SOLCZ, and CHRISTIAN G. MIDGLEY
_____________

Appeal 2013-008463
Application 11/847,474
Technology Center 2600
______________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2013-008463
Application 11/847,474

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of a final
rejection of claims 1–15 and 17–27. Claims 16 and 28 were canceled by
after final amendment (Advisory Act. mailed April 26, 2013, p.1 ¶ 14).
Therefore, only claims 1–15 and 17–27 are before us on appeal. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1. A printing system comprising:
a first printer including a first print engine and a first
processor which controls the operation of the first print engine;
a scanner which scans a hardcopy document and
generates image data therefrom, the scanner being associated
with the first printer for communicating the image data to the
first printer;
a second printer, operable independently of the first
printer, which is communicatively linked to the first printer, the
second printer including a second print engine and a second
processor which controls the operation of the second print
engine; and
the first printer including a graphical user interface,
through which user selections for scanning hardcopy documents
with the scanner and for printing the scanned images are
communicated to the first processor;
the first processor having a first mode of operation in
which a print job derived from the image data is printed on the
first print engine and a second mode of operation in which a
print job is exported to the second printer for printing on the
second print engine, at least one of the first and second modes
of operation being invoked at least in part by user interaction
with the graphical user interface.

Appeal 2013-008463
Application 11/847,474

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ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief (Appeal
Br. 7–14) and the Reply Brief (Reply Br. 7–16) that the Examiner’s rejection
(see Final Act. 4–13) of claims 1–15 and 17–27 under 35 U.S.C. § 103(a) as
being unpatentable over Watanabe (US 2005/0259287 A1; published Nov.
24, 2005) and Fujishige et al. (US 2005/0012953 A1; published Jan. 20,
2005) is in error, and the Examiner’s response to Appellants’ arguments in
the Appeal Brief (Ans. 2–6).
Although we agree with the Examiner that (i) Watanabe discloses first
and second printers with first and second processors and print engines (Ans.
4; Final Act. 4–5; Advisory Act. mailed April 26, 2013, p. 2); and (ii)
Fujishige discloses a graphical user interface (Fig. 4) and a scanning
application 415 in Figure 5A capable of sending data to a printer processor
10 (see Fujishige ¶ 50) (Ans. 2; Final Act. 5; Advisory Act. mailed April 26,
2013, p. 2), we concur with Appellants’ assertions (see Appeal Br. 7–8) that
the Examiner has not rationally articulated how/why one of ordinary skill in
the art at the time of Appellants’ invention would combine the collective
teachings and/or suggestions of Watanabe and Fujishige as claimed in order
to export a print job from the first printer to the second printer using a
graphical user interface as claimed.
Based on the foregoing, we find that the Examiner has not properly
established factual determinations and articulated reasoning with a rational
underpinning to support the legal conclusion of obviousness for independent
claims 1, 6, 15, and 27, resulting in a failure to establish a prima facie of
obviousness. We also agree with Appellants’ contention (Appeal Br. 4–6)
Appeal 2013-008463
Application 11/847,474

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that Watanabe and Fujishige, whether taken singly or in combination, fail to
disclose first and second printers each having corresponding print engines
and processors, wherein the first processor has first and second modes of
operation including exporting a print job from the first printer to the second
printer using a graphical user interface, as recited in each of independent
claims 1 (and claims 2–5 and 7–14 depending therefrom), 6, 15 (and claims
17–26 depending therefrom), and 27.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 6, 15, and 27, as well as corresponding dependent
claims 2–5, 7–14, and 17–26 depending respectively therefrom.

CONCLUSION
The Examiner erred in rejecting claims 1–15 and 17–27 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Watanabe
and Fujishige.

DECISION
The Examiner’s rejection of claims 1–15 and 17–27 is reversed.

REVERSED