Ex Parte Simpson et al

Board of Patent Appeals and Interferences

Jun 15, 2009

09712308 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHELL S. SIMPSON, WARD S. FOSTER,
and KRIS R. LIVINGSTON
____________

Appeal 2009-001722
Application 09/712,308
Technology Center 2600
____________

Decided:1 June 17, 2009
____________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 and 4-23 (App. Br. 2).2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
According to Appellants, the invention dynamically provides printing
status. A computer/client 704 receives generic executable instructions 1220
from a printer/server 710 to cause the computer to 1) generate a print job and
2) display a print status page based upon input received from the printer
printing a print job received from the computer. (Spec. 1:7-15, 21:10-15;
Fig. 15).
Exemplary claim 1 follows:
1. In a computer, a method of providing a print status,
comprising:
(a) receiving a set of executable instructions from a
printer, the instructions executable by the computer to cause the
computer to display a print status page based upon dynamic
input received from the printer printing a print job received
from the computer; and
(b) executing the instructions so as to generate the print
status page.
The Examiner relies on the following prior art reference:
Maekawa US 6,903,832 B2 Jun. 7, 2005
(filed Aug. 11, 1997)
The Examiner rejected claims 1, 4, 7, 8, 10-15, and 17 as anticipated
under 35 U.S.C. § 102(e) based on Maekawa; and claims 5, 6, 9, 16, and 18-
23 as obvious under 35 U.S.C. § 103(a) based on Maekawa.

2 Appellants’ Brief (filed Nov. 30, 2006) (“App. Br.”) and Reply Brief (filed
May 7, 2007) (“Reply Br.”) and the Examiner’s Answer (filed Mar. 7, 2007)
(“Ans.”) detail the parties’ positions.
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ISSUES
Did Appellants demonstrate that the Examiner erred in finding that
Maekawa teaches receiving a set of executable instructions from a printer as
required by claim 1?
Did Appellants demonstrate that the Examiner erred in finding that
Maekawa teaches executing by a client a set of instructions to generate a
print job as required by claim 7?

FINDINGS OF FACT (FF)
Appellants’ Disclosure
1. Appellants’ “content” includes “WEB content,” which may include
a “non-exhaustive list” such as HTML code, JAVA script, JAVA Programs
and C-“Sharp” code (Spec. 4:4-9). Appellants define “content”: “Content.
A set of executable instructions that is served by a server to a client and
which is intended to be executed by the client so as to provide the client with
certain functionality” (Spec. 4:4-7). Appellants also state: “Currently, the
primary standard protocol for allowing applications to locate and acquire
Web documents is HTTP, and the Web pages are encoded using HTML”
(Spec. 4:28-30).
Maekawa
2. Maekawa states: “A printer controller unit 103 executes
communication with and reception of image data from a host computer . . .”
(col. 3, ll. 1-2). Similarly, Maekawa states: “The printer controller 103
effects communication with the host computer, reception of the image data .
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. .” (col. 4, ll. 55-56). External device 101 includes the host computer (col.
5, l. 67 to col. 6, l. 1).
3. Maekawa discloses sending status change signals from the printer
to the host computer. In response to the status change signals, the computer
101 executes a responsive operation and displays the printer status. (Col. 7,
ll. 9-27; col. 9, ll. 54-59).

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Under § 102, anticipation is established when a single prior art
reference discloses expressly or under the principles of inherency each and
every limitation of the claimed invention. Atlas Powder Co. v. IRECO Inc.,
190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).
Under § 103,
“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, 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.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). “‘On appeal to the Board, an applicant
can overcome a rejection by showing insufficient evidence of prima facie
obviousness . . . .’” Kahn, 441 F.3d at 985-86 (citation omitted).
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“It is the applicants’ burden to precisely define the invention, not the
PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“The problem
in this case is that the appellants failed to make their intended meaning
explicitly clear.”).

ANALYSIS
As Appellants state, the Examiner found that Maekawa’s printer
controller unit 103 in printer 102 executes communication with the computer
101 (see Reply Br. 3; Ans. 3-4). Further, Maekawa’s printer sends status
signal data to the computer (FF 2, 3). The Examiner reasoned as follows:
While the status signal data itself does not constitute
“executable instructions”, the effecting of communication of
this status signal data from the printer to the host computer as
described (column 3, lines 1-6; column 4, lines 55-61)
inherently requires that the printer send at least one instruction
(an instruction to begin receiving and processing data) which is
executed by the host computer (which receives and processes
the data).
(Ans. 5-6).
In response, Appellants state: “[S]uch an instruction is an instruction
that when executed by a computer causes the computer to receive the status
signal data” (Reply Br. 3) (emphasis added). Thus, Appellants do not
dispute that Maekawa’s computer executes at least one instruction (to
receive the status updates), generally as the Examiner reasoned. Such an
instruction to receive the status updates eventually “cause[s]” the computer
to respond by displaying a print status page - without the updates, no print
status display “response” will occur (see FF 2, 3).
Appellants do not argue specifically that such “at least one”
executable instruction as identified by the Examiner (Ans. 3-4) fails to
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constitute a “set” of such instructions. Additionally, Maekawa’s printer,
coordinating and thereby allowing the reception of different status data from
the printer to the computer (FF 2), confers “certain functionality” to the
computer, and thereby comports with Appellants’ disclosed use of the term
“executable instructions” as including protocol and code for communicating
(see FF 1).
“It is the applicants’ burden to precisely define the invention, not the
PTO’s.” Morris, 127 F.3d at 1056 (“The problem in this case is that the
appellants failed to make their intended meaning explicitly clear.”).
Moreover, Maekawa’s printer sends updates, each with an implied
executable instruction, to retrieve the updates, which are received by the host
computer to process the updates and generate the print status display (see FF
2, 3). As such, two of such instructions constitute a set. It follows that
Maekawa’s host computer “receiv[es] a set of executable instructions from a
printer . . . to cause the computer to display a print status page . . . and . . .
execut[es] the instructions so as to generate the print status page” as claim 1
requires.
Accordingly, Appellants have not demonstrated that the Examiner
erred with respect to claim 1, nor with respect to claim 4, not separately
argued. Appellants’ nominal arguments with respect to claim 13, and claims
14, 15, and 17 dependent therefrom, primarily rely on arguments presented
for claim 1, which is similar in scope with claim 13. Thus, Appellants have
also failed to demonstrate Examiner error with respect to claims 13-15 and
17.
With respect to claim 7, Appellants argue that “[t]he Examiner does
not contend nor does Maekawa teach or suggest that a printer send
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instructions to a computer such that when executed by the computer, the
instructions generate and transmit a print job to the printer” (App. Br. 7-8).
Claim 7 requires, in pertinent part: “transmitting, by the server, a set of
executable instructions to a client, where the set of executable instructions is
an agent of a particular printer . . . executing, by the client, the set of
instructions to: generate a print job; transmit the print job to the printer . . . .”
Appellants present a similar argument for claim 11, which is similar in scope
to claim 7 (App. Br. 7-8).
The Examiner does not address the above arguments apart from
merely reiterating the same position indicated with respect to claim 1 (Ans.
6-7) - a position that does not address the argued distinctions between claims
1 and 7. Further, the argued limitations are apparent neither in the
Examiner’s Answer nor in Maekawa’s disclosure. Thus, the Examiner has
not established a prima facie case of anticipation. As such, Appellants have
demonstrated that the Examiner erred with respect to claims 7 and 11, and
also claims 8-10 and 12 dependent therefrom.
With respect to the obviousness rejection of dependent claims 5, 6, 16,
and 18, Appellants rely on arguments presented for claims 1 and 13 (App.
Br. 8). Therefore, Appellants have not demonstrated error with respect to
these claims.
With respect to the obviousness rejection of claim 19, and claims 20-
23 dependent therefrom, Appellants rely on arguments for claim 1, repeat
the limitations of claim 19, and assert that Maekawa fails to teach the
limitations (App. Br. 8-9). Claim 19 appears similar in scope to claim 1.
Appellants’ nominal arguments do not constitute separate arguments for
patentability (see App. Br. 9). Therefore, based on our reasoning above with
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respect to claim 1, Appellants have failed to demonstrate Examiner error in
the rejection of claims 19-23.

CONCLUSION
Appellants did not demonstrate that the Examiner erred in finding that
Maekawa teaches receiving a set of executable instructions from a printer as
required by claim 1. Appellants did demonstrate that the Examiner erred in
finding that Maekawa teaches executing, by a client, a set of instructions to
generate a print job, as required by claim 7.

DECISION
We affirm the Examiner's decision rejecting claims 1, 4-6, and 13-23.
We reverse the Examiner's decision rejecting claims 7-12.
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-IN-PART

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