HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Jul 31, 2020

14913462 - (D) (P.T.A.B. Jul. 31, 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.
14/913,462 02/22/2016 Lenin FERNANDES 84449029 8629
22879 7590 07/31/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
GUILLERMETY, JUAN M
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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 LENIN FERNANDES, KUMARAVEL GANESAN,
RAJESH BHATIA, and RITESH JHA
____________________

Appeal 2019-003225
Application 14/913,462
Technology Center 2600
____________________

Before: ELENI MANTIS MERCADER, JUSTIN BUSCH, and
BETH Z. SHAW, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15, which constitute all the claims
pending. 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 “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real parties in interest as Hewlett-Packard
Development Company, L.P., a wholly owned affiliate of HP Inc. and whose
“general or managing partner” is HPQ Holdings, LLC. Appeal Br. 3.
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Application 14/913,462

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STATEMENT OF THE CASE
Introduction
The invention generally relates to using a mobile device as a bridge or
intermediary to a non-web-connected printer to allow the non-web-
connected printer to function as a web-connected printer. Spec. ¶ 12. More
specifically, the claimed subject matter provides methods and systems in
which a mobile device joins a wireless network associated with a printer
and, upon joining the network, downloads a print job from a different
computing device and delivers the print job to the printer via the wireless
network. Spec. ¶¶ 11, 12, 17, 27, Fig. 2B. Claims 1, 6, and 12 are
independent claims. Claim 1 is reproduced below:
1. A method to deliver a print job to a printer via a
mobile device, the method comprising:
joining, by the mobile device, a wireless network
associated with the printer, wherein the printer is a non-web-
connected printer; and
upon and in response to the mobile device joining the
wireless network associated with the printer,
automatically downloading, at the mobile device,
the print job from a computing device; and
automatically delivering the print job from the
mobile device to the printer via the wireless network to
cause the printer to function as a web-connected printer to
the computing device.

The Pending Rejections
Claims 1, 6, and 12 stand rejected under 35 U.S.C. § 103 as obvious
in view of Kondo (US 2010/0002262 A1; Jan. 7, 2010), and Kamath (US
2012/0140285 A1; June 7, 2012). Final Act. 3–7.
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Application 14/913,462

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Claims 2–4, 8–10, 13, and 15 stand rejected under 35 U.S.C. § 103 as
obvious in view of Kondo, Kamath, and St. Laurent (US 2012/0300251 A1;
Nov. 29, 2012). Final Act. 7–11; Ans. 4.2
Claims 5, 11, and 14 stand rejected under 35 U.S.C. § 103 as obvious
in view of Kondo, Kamath, St. Laurent, McCorkindale (US 2011/0216349
A1; Sept. 8, 2011), and Young (US 2014/0204403 A1; July 24, 2014). Final
Act. 11–14.
Claim 7 stands rejected under 35 U.S.C. § 103 as obvious in view of
Kondo, Kamath, and Hansen (US 2010/0309510 A1; Dec. 9, 2010). Final
Act. 14–15.
ANALYSIS
The Examiner finds the combination of Kondo and Kamath teaches or
suggests every limitation recited in independent claims 1, 6, and 12. Final
Act. 3–7. Of particular relevance to this Appeal, the Examiner finds Kondo
teaches a mobile device joining with a non-web-connected printer because
Kondo describes a mobile device connecting to a printer via a wireless
network and, upon joining the printer, downloading the print job from a
computing device. Final Act. 4 (citing Kondo ¶ 21 (describing a mobile
display terminal that “may be connected wiredly or wirelessly” with the

2 In the Final Action, the Examiner rejections claims 2 and 13 as obvious in
view of Kondo, Kamath, and Cloin (US 2014/0114782 A1; Apr. 24, 2014).
Final Act. 7–8. However, the Examiner agreed with Appellant’s argument
that Cloin does not teach the additional limitations recited in claims 2 and
13, which relate to receiving a notification. Ans. 5; see Appeal Br. 12–16.
However, the Examiner notes that claims 2 and 13 recite similar limitations
to claim 8 and finds claims 2 and 13, therefore, are obvious in view of the
Kondo, Kamath, and St. Laurent based on the same findings made with
respect to claim 8. Ans. 5; see Final Act. 10 (citing St. Laurent ¶ 45).
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Application 14/913,462

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printer)). The Examiner finds “the step of downloading [the] document or
file that occurs in Kondo before connecting (or joining) would be convenient
. . . so when the terminal is connected to the printer sequentially (without
user interaction) transmits print data (document file) to the printer.” Ans. 3
(emphases added). The Examiner finds that Kondo, “by functionality, still
broadly teaches/suggests the aforementioned limitations, disregarding the
order of the steps.” Ans. 3 (emphasis added).
Among other arguments, Appellant contends that the Kondo fails to
teach or suggest “upon and in response to the mobile device joining the
wireless network associated with the printer[], automatically downloading,
at the mobile device, the print job from a computing device,” as recited in
independent claim 1 and commensurately recited in independent claims 6
and 12. Appeal Br. 8–9; Reply Br. 4–6. Specifically, Appellant argues
Kondo does not teach that the display terminal automatically downloads a
print job (i.e., Kondo’s document file) upon and in response to the mobile
terminal joining the printer or a network associate with the printer. Appeal
Br. 9.
As a general rule, “[u]nless the steps of a method [claim] actually
recite an order, the steps are not ordinarily construed to require
one.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
1342 (Fed. Cir. 2001) (citation omitted). However, a claim “requires an
ordering of steps when the claim language, as a matter of logic or grammar,
requires that the steps be performed in the order written, or the specification
directly or implicitly requires” an order of steps. TALtech Ltd. v. Esquel
Apparel, Inc., 279 Fed.Appx. 974, 978 (Fed. Cir. 2008).
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Application 14/913,462

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Notably, Appellant’s intendent claims explicitly recite that the
automatically downloading and automatically delivering steps are performed
“upon and in response to the mobile device joining the wireless network
associated with the printer.” Therefore, we find error in the Examiner’s
finding that Kondo teaches the automatically downloading step
“disregarding the order of the steps.”
Because the Examiner has not made a finding that Kondo, alone or in
combination with Kamath, teaches or suggests performing the automatically
downloading step “upon and in response to the mobile device joining the
wireless network associated with the printer,” we are constrained by this
record to reverse the rejection of independent claims 1, 6, and 12 as obvious
under 35 U.S.C. § 103 in view of Kondo and Kamath. Each of the
dependent claims include the same limitation via their ultimate dependency
from one of claims 1, 6, and 12, and the Examiner does not find that any of
the additionally cited art cures this deficiency. Accordingly, we also reverse
the rejection of dependent claims 2–5, 7–11, and 13–15 as obvious under
35 U.S.C. § 103 in view of the cited prior art for the same reasons.
Appeal 2019-003225
Application 14/913,462

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 6, 12 103 Kondo, Kamath 1, 6, 12
2–4, 8–10,
13, 15
103 Kondo, Kamath,
St. Laurent
2–4, 8–10,
13, 15
5, 11, 14 103 Kondo, Kamath,
St. Laurent,
McCorkindale, Young
5, 11, 14
7 103 Kondo, Kamath,
Hansen
7
Overall
Outcome
1–15

REVERSED