Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Aug 3, 2020

2019002607 (P.T.A.B. Aug. 3, 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.
14/718,602 05/21/2015 Sandeep Matti Prabhu 84255664 4256
22879 7590 08/03/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
PACHOL, NICHOLAS C
ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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 SANDEEP MATTI PRABHU, RAJESH BHATIA, and
VAIBHAV MISRA1
_____________

Appeal 2019-002607
Application 14/718,602
Technology Center 2600
______________

Before JAMES R. HUGHES, JOHN A. EVANS, and
JASON J. CHUNG, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of Claims 1, 4–7, 9–12, 16, 17, and 19–21.
Appeal Br. 1. Claims 2, 3, 8, 13–15, and 18 have been canceled. Appeal Br.
7. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicants” as defined in
37 C.F.R. § 1.42(a). The Appeal Brief identifies Hewlett-Packard
Development Company, L.P., as the real party in interest. Appeal Br. 4.
Appeal 2019-002607
Application 14/718,602
2

INVENTION
The invention is directed to a method of printing. See Abstract.
Claims 1, 7, and 16 are independent. Claim 1, reproduced below, is
illustrative of the invention.
1. A print system comprising:
a processor; and
a memory storing instructions that, when executed by the
processor, cause the print system to:
generate a plurality of unique email addresses for
printing to a single printing device, each of the plurality
of unique email addresses indicative of an untrustworthy
print request source and associated with a unique printing
configuration to handle print requests from the
untrustworthy print request source;
receive a print request, addressed to an email
address, from a print request source;
if the email address is an original email address
that provides unlimited printing access to the printing
device, print the print request without reference to any of
the unique printing configurations; and
if the email address is one of the plurality of
unique email addresses, determine whether the received
print request satisfies at least one condition of the unique
printing configuration associated with the respective
unique identifier, and
if the received print request satisfies the at least
one condition, print the received print request in
accordance with the unique printing configuration
associated with the respective unique identifier.

Appeal 2019-002607
Application 14/718,602
3

PRIOR ART
Name Reference Date
Dowling US 2010/0141993 A1 June 10, 2010
Otaka US 2011/0157630 A1 June 30, 2011
St. Laurent US 2012/0300251 A1 Nov. 29, 2012
Nuggehalli US 2013/0021643 A1 Jan. 24, 2013

REJECTIONS AT ISSUE2
1. Claims 1, 2, 5, and 6 stand rejected under pre-AIA 35 U.S.C. 103(a)
as being unpatentable over St. Laurent and Nuggehalli. Final Act. 3–
7.
2. Claim 4 stands rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over St. Laurent, Nuggehalli, and Otaka. Final Act. 8.
3. Claims 7, 9, 11, 12, 16, 17, and 19–21 stand rejected under pre-AIA
35 U.S.C. 103(a) as being unpatentable over St. Laurent, Nuggehalli,
and Dowling. Final Act. 8–19.
4. Claim 10 stands rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over St. Laurent, Nuggehalli, Dowling, and Otaka. Final
Act. 19–20.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s

2 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
October 10, 2018, the Reply Brief (“Reply Br.”) filed February 13, 2019, the
Final Office Action (“Final Act.”) mailed July 25, 2018, the Examiner’s
Answer mailed December 27, 2018, and the Specification (“Spec.”) filed
May 21, 2015.
Appeal 2019-002607
Application 14/718,602
4

arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejections.
CLAIMS 1, 2, 5, AND 6: OBVIOUSNESS OVER ST. LAURENT AND NUGGEHALLI.
Independent Claim 1 recites, inter alia, “generate a plurality of unique
email addresses for printing to a single printing device.”

Claim Construction
Independent Claims 1, 7, and 16 each recite, inter alia, “generate a
plurality of unique email addresses for printing to a single printing device.”
The Examiner finds St. Laurent “explicitly discloses that multiple
printers can have their own unique identifier.” Final Act. 4 (citing St.
Laurent, ¶ 26. Thus, the Examiner finds “St. Laurent discloses ‘a plurality
of unique email addresses for printing to a single printing devices’ as each
one of the unique identifiers is for a single printing device (i.e. Identifier X
is for Printer A, identifier Y is for Printer B, identifier Z is for printer C).”
Id.
Appellant contends the “Specification consistently discloses the
interpretation that Appellants contend, that the generated plural unique email
addresses are for printing to the same printing device.” Appeal Br. 11
(quoting Spec., ¶ 14) (“A plurality of identifiers may be generated and
associated with the same printing device such that each identifier has its own
unique configuration. The identifiers may act as aliases for the printing
device.”). Appellant argues the Specification equates identifiers and email
addresses:
Referring now to FIG. 4, RSS/ATOM feed 404, public
facebook/twitter groups 406, and discussion forum 408 may be
untrustworthy sources. Each of these sources may be associated
Appeal 2019-002607
Application 14/718,602
5

with identifier 1-3 respectively. In the example of FIG. 4, each
identifier is further associated with one configuration 424.
However, it is understood that each identifier may be associated
with its own unique configuration. The identifiers may be unique
e-mail addresses or aliases that may be made public.
Appeal Br. 11 (quoting Spec., ¶ 20). Referring to Figure 4, Appellant
further discloses:
printing device 426 may print content from RSS/ATOM feed
404, public facebook/twitter groups 406, and discussion forum
408 in accordance with configuration 424.
Id. at 12 (quoting Spec., ¶ 21). Appellant reproduces Specification Figure 4.

Specification Figure 4 depicting three, unique identifiers passing through a
configuration server and thence to a single printer.

Because Appellant and the Examiner differ as to the meaning of the
claimed term, we first construe the claims. Claim construction is an
Appeal 2019-002607
Application 14/718,602
6

important step in a patentability determination. Medichem, S.A. v. Rolabo,
S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and
obviousness under § 103 are two-step inquiries. The first step in both
analyses is a proper construction of the claims. . . . The second step in the
analyses requires a comparison of the properly construed claim to the prior
art.” (internal citations omitted)). A determination of anticipation, as well as
obviousness, involves two steps. First is construing the claim, a question of
law, followed by, in the case of anticipation or obviousness, a comparison of
the construed claim to the prior art. This comparison process involves fact-
finding. See Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed.
Cir. 1998).
Appellant and the Examiner differ in their interpretation of the
claimed “single printing device.” The MPEP makes clear that the
intrinsic record (e.g., the specification) must be consulted to identify which
of the different possible definitions is most consistent with the invention’s
use of the terms. See MPEP § 2111.01 (III) quoting Brookhill-Wilk 1, 334
F.3d 1294, 1300 (Fed. Cir. 2003) (“Where there are several common
meanings for a claim term, the patent disclosure serves to point away from
the improper meanings and toward the proper meanings.”).
Claim 1 recites, inter alia, “generate a plurality of unique email
addresses for printing to a single printing device.” Appellant discloses a
“plurality of identifiers may be generated and associated with the same
printing device.” Spec., ¶ 14. Moreover, Figure 4 shows an “original
identifier” and Identifiers 1–3 are each associated with a single printer 426.
In contrast to Appellant’s construction, the Examiner’s construction of
the claimed “a single printing device,” relies upon the prior art, St. Laurent,
but does not refer to Appellant’s Specification. See Final Act. 2 (“Paragraph
Appeal 2019-002607
Application 14/718,602
7

[0026] of St. Laurent explicitly discloses that multiple printers can each have
their own unique identifier; therefore, St. Laurent discloses ‘a plurality of
unique email addresses for printing to a single printing device’ as each one
of the unique identifiers is for a single printing device (i.e. Identifier X is
only for Printer A, identifier Y is only for Printer B, identifier Z is only for
printer C).” “Above all, the broadest reasonable interpretation must be
reasonable in light of the claims and specification.” PPC Broadband, Inc. v.
Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016)
(emphasis in original). See In re Abbott Diabetes Care Inc., 696 F.3d 1142,
1149–50 (Fed. Cir. 2012) (vacating Board decision due to Board’s
unreasonably broad claim interpretation).
In view of our claim construction, we find the cited art fails to teach
“printing to a single printing device,” as claimed. Each of independent
Claims 7 and 16 contain commensurate limitations. Because we find the
independent claims to be nonobvious, we similarly find the dependent
claims to be nonobvious. Dependent claims are nonobvious under section
103 if the independent claims from which they depend are nonobvious. In
re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988); In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.”).

CONCLUSION

Appeal 2019-002607
Application 14/718,602
8

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, and
6
103 St. Laurent and
Nuggehalli
-- 1, 2, 5, and
6
4 103 St. Laurent,
Nuggehalli, and
Otaka
-- 4
7, 9, 11, 12,
16, 17, and
19–21
103 St. Laurent,
Nuggehalli, and
Dowling
-- 7, 9, 11, 12,
16, 17, and
19–21
10 103 St. Laurent,
Nuggehalli,
Dowling, and
Otaka
-- 10
Overall
1, 4–7, 9–
12, 16, 17,
and 19–21
-- 1, 4–7, 9–
12, 16, 17,
and 19–21

REVERSED