Ex Parte Simpson et al - Page 13

                Appeal 2007-0781                                                                               
                Application 10/003,150                                                                         

                      Basing printing costs on attributes of a document is also well known.                    
                The specification gives no particular definition to the term “attributes” as it                
                is used in the claims. The broadest reasonable construction of the term in                     
                light of the Specification as interpreted by one of ordinary skill in the art is               
                that it covers properties of the document, such as its color. It is common                     
                knowledge that the printing costs for a document in color is greater than if                   
                printed in black and white. Given this knowledge, determining printing costs                   
                for printing full-sized documents based upon its attributes, like color, would                 
                have been obvious to one of ordinary skill in the art.                                         
                      Finally, determining printing costs for a full size document given a                     
                scaled-down version is well within the knowledge of one having ordinary                        
                skill in the printing service field. Printing service shops commonly make                      
                these sorts of estimates for customers.                                                        
                      In our view, the claimed features of a network-based printing service                    
                retrieving a scaled-down version of a full-sized document to be printed from                   
                at least one store via a network and a printing service determining printing                   
                costs for printing the full-sized document based upon attributes of the                        
                scaled-down version appear to be a combination of the familiar elements of                     
                printers retrieving scaled-down versions of a full-sized document over a                       
                network, basing printing costs on attributes of a document, and determining                    
                printing costs for a full size document given a scaled-down version. The                       
                claimed method appears to be the result of combining these well known                          
                features with Garfinkle’s printing service. “The combination of familiar                       
                elements according to known methods is likely to be obvious when it does                       
                no more than yield predictable results.”  KSR Int'l Co. v. Teleflex Inc.,                      

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