Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Apr 15, 2020

15504045 - (D) (P.T.A.B. Apr. 15, 2020)

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.
15/504,045 02/15/2017 Laurel Lasslo 84596001 1087
22879 7590 04/15/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
ZHANG, FAN
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
04/15/2020 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
jessica.pazdan@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 LAUREL LASSLO, RAJESH NAIR, NOBUKO M NATHAN,
LAJESH DINESHKUMAR, and JAMES SHEPHERD
Appeal 2019-002011
Application 15/504,045
Technology Center 2600
Before LINZY T. McCARTNEY, BETH Z. SHAW, and
CARL L. SILVERMAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6 and 8–15. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP. Appeal Br. 1.
Appeal 2019-002011
Application 15/504,045

2
CLAIMED SUBJECT MATTER
The claims are directed to a cloud services activation for a printing
device. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A non-transitory computer-readable storage medium storing
instructions that, when executed by a processor, cause the
processor to:
concurrently perform a printing device activation process
to activate a printing device and a cloud credentials process to
receive a cloud authentication token; and
initiate a cloud services activation process to activate a
plurality of cloud services for the printing device.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kato US 2012/0200888 A1 Aug. 9, 2012
Newberg US 2013/0279375 Al Oct. 24, 2013
Iwasaki US 2015/0154484 A1 June 4, 2015
Jalan US 2017/0187793 A1 June 29, 2017

REJECTIONS
Claims 1–5, 8, 9, and 12–15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Iwasaki and Kato.
Claims 6 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Iwasaki, Kato, and Jalan.
Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Iwasaki, Kato, and Newberg.

Appeal 2019-002011
Application 15/504,045

3
OPINION
The Examiner finds Iwasaki teaches the disputed limitation of
“concurrently perform a printing device activation process to activate a
printing device and a cloud credentials process to receive a cloud
authentication token,” as recited in claim 1. Final Act. 6; Ans. 3, 4. In
particular, the Examiner finds that in Iwasaki, a mobile device activates a
printer through near field communication (NFC) as well as starts
communication with a cloud server for an access token acquisition function.
Ans. 3. The Examiner finds that in paragraph 55 of Iwasaki, communication
with the cloud server to obtain an access token is performed independently
and before activating or accessing the printer. Id. at 3, 4. The Examiner finds
that in paragraph 56 of Iwasaki, however, “communication with both the
printer and the cloud server is triggered by a single touch of the mobile
device on reader/writer unit of the printer.” Id. at 4. The Examiner concludes
that “the fact that the two processes are performed independently without
interference between each other and a single touch would accomplish both
processes suggests concurrent or parallel operation of the two processes.” Id.
Paragraph 56 of Iwasaki discusses a cloud print app. Iwasaki ¶ 56.
When a user touches a reader/writer unit of the image forming device 100
using the mobile terminal 500, a notification is transmitted from the image
forming device 100 to the mobile terminal 500 via NFC communication. Id.
“Upon receipt of the notification, an operating system (OS) of the mobile
terminal 500 starts the cloud print app (or the access token acquisition
function for the temporary printer settings).” Id. Then, the cloud print app or
another function implements process steps to acquire an “access token” from
the cloud print service 200. Id. At the end of paragraph 56, Iwasaki notes
Appeal 2019-002011
Application 15/504,045

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that “[i]n the illustrated example, the touch operation is performed twice to
start software such as the cloud print app and to transfer the access token.
However, those two operations may be executed during a single touch
operation.” Id.
Appellant argues that the printing activation process and the cloud
credential process described in Iwasaki are not concurrent. Appeal Br. 8–10;
Reply Br. 7, 8. In particular, Appellant argues that the two operations
mentioned in paragraph 56 of Iwasaki relate to: (i) the user placing the
mobile device a first time to receive a notification that the device is a printer
and upon receiving the notification, an operating system (OS) of the mobile
terminal 500 starts the cloud print app (or the access token acquisition
function for the temporary printer settings) and (ii) a second time to send the
access token from the mobile terminal to the image forming device. Reply
Br. 7, 8. Appellant argues that the single touch mentioned in paragraph 56 of
Iwasaki allows the user to place the mobile device near the reader/writer to
receive a notification that the device is a printer and upon receiving the
notification, an operating system (OS) of the mobile terminal 500 starts the
cloud print app (or the access token acquisition function for the temporary
printer settings). Id. Appellant argues that once this process has been
completed, during the same touch operation, the mobile device can send the
access token from the mobile terminal to the image forming device. Id.
On this record, we are unable to ascertain which part or parts of the
cited portions of Iwasaki describe the “printing device activation process to
activate a printing device,” as recited in claim 1. Although Iwasaki describes
that upon receipt of the notification that a device is a printer, a “cloud print
app” or “access token acquisition function” implements “process steps (1)
Appeal 2019-002011
Application 15/504,045

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and (2)” (Iwasaki ¶56), the Examiner has not explained sufficiently where
Iwasaki teaches a “printing device activation process to activate a printing
device” that is performed concurrently with the “cloud credentials process.”
Thus, on this record, we are persuaded of error. We therefore do not
sustain the rejection of independent claim 1. For the same reasons, we do not
sustain the rejection of claims 2–5, 8, 9, and 12–15. We also do not sustain
the rejection of claims 6, 10, and 11, because the record does not establish
that Jalan and Newberg cure the deficiencies explained above.

CONCLUSION
We reverse the rejection of claims 1–5, 8, 9, and 12–15.
We reverse the rejection of claims 6 and 11.
We reverse the rejection of claim 10.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 8, 9,
12–15
103 Iwasaki, Kato 1–5, 8, 9,
12–15
6, 11 103 Iwasaki, Kato,
Jalan
6, 11
10 103 Iwasaki, Kato,
Newberg
10
Overall
Outcome:
1–6, 8–15

REVERSED