Ex Parte Tischler et al

Patent Trial and Appeal Board

Jul 19, 2016

12440678 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/440,678 10/01/2009
22879 7590 07/21/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Shmulik Tischler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82215590 5506
EXAMINER
DULANEY, BENJAMIN 0
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
07/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHMULIK TISCHLER, Y ARON HERSHMAN,
and URI GLAS
Appeal2014-006975
Application 12/440,678
Technology Center 2600
Before MAHSHID D. SAADAT, MELISSA A. HAAPALA, and
SCOTT E. BAIN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-14, 16-18, and 26-28, which are all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP (App. Br. 1 ).
2 Claims 15 and 19-25 have been canceled.
Appeal2014-006975
Application 12/440,678
STATEMENT OF THE CASE
Appellants' invention relates to methods and devices for detecting an
inconsistency in dual sided printing (Spec. 1 :6-7).
Exemplary claim 7 under appeal reads as follows:
7. In a printer having a first print unit and a second
print unit, each print unit to print a respective different side of a
given sheet in dual sided printing where print data of both sides
of the given sheet is received at both the first and second print
units, a method for detecting an inconsistency between printing
at said first print unit and at said second print unit, the method
compnsmg:
generating, by the first print unit, first identification data
from said print data for the given sheet,
independently generating, by the second print unit, second
identification data from said print data for the given sheet,
at a time of presumed printing of said given sheet at said
second print unit, comparing said first identification data with
said independently generated second identification data, and
verifying that said print data received by the first and
second print units is identical based on a result of the comparing.
REFERENCES and REJECTIONS
Claims 1--4, 7, 8, 10, 12-14, and 26-28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Warbus et al. (US 6,501,929 Bl; Dec. 31,
2002) ("Warbus") and Mongeon (US 2006/0268092 Al; Nov. 30, 2006) (see
Ans. 2---6).
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Warbus, Mongeon, and Parrish et al. (US 2002/0101601 Al; Aug. 1, 2002)
("Parrish") (see Ans. 6-7).
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Appeal2014-006975
Application 12/440,678
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Warbus and Parrish (see Ans. 7-9).
Claims 6, 9, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Warbus, Mongeon, and Emminizer (US 6,657,740 Bl;
Dec. 2, 2003) (see Ans. 9-10).
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Warbus, Parrish, and Kiwada (US 2005/0141009 Al; June 30, 2005)
(see Ans. 10-11).
ANALYSIS
Claims 1 and 7
The Examiner finds Warbus discloses the recited method steps of
claim 7 except for the step of "verifying that said print data received by the
first and second print units is identical based on a result of the comparing,"
for which the Examiner relied on Mongeon (Ans. 2-5). The Examiner
specifically finds Mongeon teaches the missing claim limitation as the
disclosed step of verifying that spread data is identical (Ans. 3 (citing
Mongeon i-fi-13, 4)). The Examiner further finds it would have been obvious
to one of ordinary skill in the art to combine the teachings of Mongeon with
Warbus "to add a duplex mode for printing identical data on both sides of a
sheet" in order to "ensure proper registration" (Ans. 4 (citing Mongeon i15)).
Appellants argue the proposed combination does not teach or suggest
"verifying that said print data received by the first and second print units is
identical based on a result of the comparing," as recited in claim 7, because
paragraphs 3 and 4 of Mongeon relate to printing identical data generated
from the same print data on the front and back of a sheet (App. Br. 7-8).
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Appeal2014-006975
Application 12/440,678
Citing to paragraphs 1-5 and 5 6 of Mongeon, Appellants contend Mongeon
is concerned with "ensuring that what is printed on one side of a sheet is
properly aligned to what is printed on the other side of the sheet" by
referring to "printing a registration test image on both the first and second
sides of a sheet" (App. Br. 8). Furthermore, Appellants argue there is no
reason for one of ordinary skill in the art to combine W arbus with Mongeon,
which relates to "ensuring proper alignment of images printed on the front
and back sides of a sheet" (App. Br. 9). Lastly, Appellants contend the step
of "comparing" disclosed in Warbus includes ensuring the data sent to the
first and second printer have different page numbers and, therefore, leads
away from the proposed combination (App. Br. 10).
We are not persuaded by Appellants' contentions that the Examiner
erred because the rejection is based on the combination of Mongeon with
Warbus (see also Reply Br. 2-7). That is, Warbus teaches comparing the
signature or the identification data that is produced by two printing units in
order to verify that the data received by each printing unit is identical (see
Ans. 12 (citing Warbus, col. 6, 11. 39--44)). The Examiner further relies on
Mongeon as disclosing duplex mode printing wherein identical spread data
is verified for printing on two pages (id. (citing Mongeon i-f 4)). In other
words, the teachings of Mongeon provide for lack of "verification of
identical spread data (or 'print data' of claim 7)" in Warbus (see id.).
We also agree with the Examiner that Mongeon was relied on for
disclosing a duplex mode to print identical data on both sides of a sheet,
whereas the recited steps of comparing the identification data and verifying
that the print data is identical is taught by Warbus (see Ans. 12).
Appellants' contentions focus on the references separately and ignore the
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Appeal2014-006975
Application 12/440,678
fact that the proposed rejection is based on the combination of Mongeon
with Warbus (see App. Br. 8-9). Each reference must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for
obviousness is not ... that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art."); see also In re Merck & Co. Inc., 800 F .2d 1091,
1097 (Fed. Cir. 1986).
Regarding the alleged absence of any reason for combining the prior
art references (see App. Br. 9-10), we also agree with the Examiner's
findings and adopt them as our own. In particular, the Examiner properly
finds modifying the page verification of Warbus with the duplex mode of
Mongeon, when considered together, would have suggested the disputed
limitation (Ans. 13). As to the asserted incompatibility of the references and
leading away from the proposed combination (see App. Br. 10), it is not
necessary that the features of one cited reference be directly insertable into
the other reference. In re Keller, 642 F.2d at 425. Furthermore, the skilled
artisan is "a person of ordinary creativity, not an automaton," and this is a
case in which the skilled artisan would "be able to fit the teachings of
multiple patents together like pieces of a puzzle." KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 420, 421 (2007).
For the above-stated reasons, we are not persuaded by Appellants'
arguments that the Examiner erred in finding the combination of W arbus and
Mongeon teaches or suggests the disputed features of claim 7.
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Appeal2014-006975
Application 12/440,678
Claim 16
Appellants contend the cited portion of Parrish does not disclose or
teach "in response to the comparing indicating that the identification data ...
is not identical ... , resending the first print element found not to be
identically received at both the first and second print units" (App. Br. 12).
In response, the Examiner explains that Parrish was relied on for teaching
how "to modify the error processing of Warbus to include the resending of
print data when an error is encountered (Parrish paragraph 25) instead of
simply stopping a print job" (Ans. 14).
We agree with the Examiner's findings and observe that, similar to
our analysis for claim 7, Appellants attempt to individually distinguish
W arbus and Parrish, rather than addressing the combined teachings of the
references (see Reply Br. 7-9). See In re Keller, 642 F.2d at 425. Thus,
Appellants' arguments that the Examiner erred in finding the combination of
W arbus and Parrish teaches or suggests the disputed feature of claim 16 is
not persuasive.
CONCLUSIONS
As discussed herein, Appellants' arguments have not persuaded us
that the Examiner erred in finding the combination of Warbus with Mongeon
or Parrish teaches or suggests the disputed limitations of claims 7 and 16.
We therefore sustain the 3 5 U.S. C. § 103 (a) rejections of claims 7 and 16,
independent claim 1 which is argued based on the same reasoning presented
for claim 7, as well as dependent claims 2-6, 8-14, 17, 18, and 26-28 which
are not argued separately (see App. Br. 6-13).
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Appeal2014-006975
Application 12/440,678
DECISION
We affirm the decision of the Examiner to reject claims 1-14, 16-18,
and 26-28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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