Ex Parte Wei

Patent Trial and Appeal Board

Jun 29, 2016

13665197 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/665, 197 10/31/2012
29989 7590 07/01/2016
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
Ke Wei
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.
49986-0763 9817
EXAMINER
ZHENG, JACKY X
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KE WEI
Appeal2014-006367
Application 13/665,197
Technology Center 2600
Before MAHSHID D. SAADAT, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Ricoh Company, Ltd.
(App. Br. 2.)
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Application 13/665,197
STATEMENT OF THE CASE
Appellant's invention relates to methods and devices for "remotely
processing locked print jobs on other printing devices" wherein "[a] printing
device is configured to discover other printing devices on a network that
have locked print jobs stored on them" (Spec. i-f 7).
Exemplary claim 1 under appeal reads as follows:
1. A printing device comprising:
a user interface configured to exchange information
between one or more users and the printing device;
a network interface for communicatively coupling the
printing device to network;
a print job management module configured to store at the
printing device one or more print jobs received by the printing
device over the network;
a printing module configured to cause the printing device
to print electronic documents contained in the one or more print
jobs; and
a print job forwarding module configured to:
select, based upon at least printing device
capability data that indicates one or more currently-
installed options of one or more other printing devices, a
particular printing device from the one or more other
printing devices that has one or more currently-installed
options necessary to process a particular print job, and
cause the particular print job to be forwarded from
the printing device over the network to the particular
printing device for processing.
REFERENCES and REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Jansen (EP 1621994 Al; Feb. 1, 2006), Itoh (US
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Application 13/665,197
2004/0263870 Al; Dec. 30, 2004), and Lester (US 2003/0090697 Al; May
15, 2003) (see Ans. 5-17).
ANALYSIS
In rejecting claim 1, the Examiner relies on Jansen as disclosing the
recited elements of a printing device, on Itoh as disclosing the selection of a
printing device "based upon at least printing device capability data that
indicates one or more currently-installed options of one or more other
printing devices," and on Lester as disclosing forwarding the print job "from
the printing device over the network to the particular printing device for
processing" (Ans. 5-9). The Examiner further finds it would have been
obvious to one of ordinary skill in the art to combine the teachings of Itoh
and Lester with Jansen in order "to incorporate the limitation(s) discussed
and also taught by Itoh et al., thereby' ... providing a service for sharing a
printing environment' (see Itoh et al., i.e. para. 2), and such as to increase
the productivity" (Ans. 7-8) and to handle a print job which cannot be
handled by the network printer (Ans. 9).
Appellant argues the proposed combination does not teach or suggest
the recited "a print job forwarding module configured to select ... one or
more currently-installed options of one or more other printing devices, ... ,
and cause the particular print job to be forwarded ... to the particular
printing device for processing" (App. Br. 3--4). Appellant specifically
distinguishes the teachings of Jansen from the claimed features by stating:
In Jansen, a user's default printer does not itself select another
printer to process a print job. To the contrary, it is clear and
unequivocal that in Jansen, the user selects the printer where a
print job is to be printed. In the situation where a user selects to
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Application 13/665,197
print a print job at a printer other than the user's default printer,
the user's default printer merely supplies the print job to the
other printer in response to a request from the other printer.
(App. Br. 5). With respect to Itoh, Appellant argues "[t]here is no teaching
or suggestion in It oh that any of the printers 6 include a print job forwarding
module configured to select a target printer based upon printing device
capability data ... and then forwards a print job to the selected target
printer" (App. Br. 7). Lastly, stating Lester discloses a first contact printer
110 selects a Buddy Printer to print a print job based only upon the current
operational state, i.e., Ready or Not Ready, of the designated Buddy Printers,
Appellant contends Lester does not teach or suggest that "the first contact
printer 110 itself selects a Buddy Printer 'based upon at least printing device
capability data that indicates one or more currently-installed options of one
or more other printing devices'" (id.).
The Examiner responds by explaining the rejection is based on the
combination of Jansen with Itoh and Lester and providing detailed findings
supported by sufficient evidence based on the teachings of each reference
(see Ans. 18-28). The Examiner specifically finds Lester was relied on as
disclosing the selection of another printer, at the first printer, and sending the
print job from the first printer to the other printer (Ans. 18). Similarly, the
Examiner explains Itoh was relied on as disclosing how "printing device
capability data that indicate one or more currently-installed options of one or
more other printing device[s]" is determined and/or obtained (Ans. 21).
Finally, the Examiner finds the broadest reasonable interpretation of claim 1
does not specify whether determining and obtaining such printing device
capability data is internal or external to the printing device, as disclosed in
Lester and Itoh, respectively (see Ans. 24--25).
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Application 13/665,197
We agree with the Examiner's findings and adopt them as our own.
We further observe that Appellant attempts to individually distinguish
Jansen, Itoh, and Lester, rather than addressing the combined teachings of
the references (see App. Br. 4--8; Reply Br. 2-9). 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). 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 Appellant's
arguments that the Examiner erred in finding the combination of Jansen,
Itoh, and Lester teaches or suggests the disputed features of claim 1.
Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claim 1, as well as
claims 2-20, which are not argued separately or with sufficient specificity
(see App. Br. 8).
DECISION
We affirm the decision of the Examiner to reject claims 1-20.
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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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