Ex Parte Simpson et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10053174 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

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

Appeal 2009-001207
Application 10/053,174
Technology Center 2600
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Decided: April 30, 2010
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Before ROBERT E. NAPPI, KENNETH W. HAIRSTON
and MARC S. HOFF, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3 to 8, and 10 to 28. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the 35 U.S.C. § 102(a) rejection of claims 1, 3 to 8,
and 10 to 28.
Appeal 2009-001207
Application 10/053,174

2
Appellants have invented a method and system for using a network-
accessible booklet making service to create a user interface on a client
device so that the client can select imaging data for use in making a booklet
(Figs. 1-6; Spec. 7, 11-14, 19, and 21; Abstract).
Claim 1 is illustrative of the claims on appeal, and it reads as follows:
1. A method comprising:
receiving, via at least one network service, imaging data that is to be
included in a booklet;
prior to receiving said imaging data, causing, via at least one network
service, a user interface to be presented on a client device, the user interface
being configured to enable a user to select imaging data for use in making a
booklet, and wherein said receiving imaging data comprises receiving user
selection of said imaging data;
receiving, via said at least one network service, user input for
incorporating the imaging data into the booklet;
building, via said at least one network service, a booklet incorporating
imaging data in accordance with said user input; and
printing the booklet on a network-accessible printer designated by
user input.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tonkin WO 01/031465 A1 May 3, 2001
The Examiner rejected claims 1, 3 to 8, and 10 to 28 under 35 U.S.C.
§ 102(a) based upon the teachings of Tonkin.
Appeal 2009-001207
Application 10/053,174

3
Appellants argue throughout the Brief that Tonkin neither discloses
nor suggests presenting via at least one network/Web service a user interface
on a client device/browser prior to receiving imaging data used in making a
booklet, and printing the booklet on a network/Web-accessible printer
designated by user input (Br. 9-25).

ISSUE
Did the Examiner err by finding that Tonkin describes presenting via
at least one network/Web service a user interface on a client device/browser
prior to receiving imaging data used in making a booklet, and printing the
booklet on a network/Web-accessible printer designated by user input?

FINDINGS OF FACT (FF)
(1) Tonkin describes a document production facility 60 that serves as
an interface between client terminals 31, 32 and document production
locations 71-73 to coordinate printing and assembly of documents (Fig. 1;
pg. 6, ll. 28-31; pg. 10, ll. 14-16).
(2) A graphical user interface for the client terminals 31, 32 is
presented by a printer driver portion of the document production facility 60
so that a user can select images for a booklet from images transmitted to a
client terminal 31, 32 via the Internet 50 or the Web (Figs. 4, and 7-9; pg. 7,
ll. 14, 15; pg. 11, ll. 1-4; pg. 13, ll. 13-17; pg. 15, ll. 1-9 and 24-28; pg. 16,
ll. 6-12, 16-18, and 22-31; pg. 17, ll. 1-5).
Appeal 2009-001207
Application 10/053,174

4
(3) The user of a client terminal 31, 32 has the option of printing the
booklet on a network/Web-accessible printer designated by the user (Figs. 5,
6; pg. 4, ll. 12-15; pg. 13, ll. 5-7; pg. 19, ll. 1-13 and 23-25).
PRINCIPLE OF LAW
Anticipation is established when the applied 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).

ANALYSIS
Appellants’ arguments throughout the Brief are not convincing of
error in the Examiner’s position because Tonkin describes a method and
system for presenting a user interface at a client device so that the client can
select image data from network/Web sources for assembly in a booklet (FF
1, 2). The booklet can be printed on a network/Web-accessible printer
designated by user input (FF 3).
In summary, the anticipation rejection of claims 1, 3 to 8, and 10 to 28
is sustained because Tonkin describes all of the limitations of these claims.
See Atlas Powder Co., 190 F.3d at 1347; Paulsen, 30 F.3d at 1478-79.

CONCLUSION OF LAW
The Examiner did not err by finding that Tonkin describes presenting
via at least one network/Web service a user interface on a client
device/browser prior to receiving imaging data used in making a booklet,
Appeal 2009-001207
Application 10/053,174

5
and printing the booklet on a network/Web-accessible printer designated by
user input.

ORDER
The decision of the Examiner rejecting claims 1, 3 to 8, and 10 to 28
under 35 U.S.C. § 102 (a) is affirmed.
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

KIS

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