Invalidity dossier
US 5946458
Network printing system for responding to remote print-related requests
Current assignee: Xerox Corp
Added 9/24/2026, 5:13:52 AM
Active provider: DeepSeek · deepseek-v4-flash
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for this specific patent number as requested.
Now let me check for any CAFC 2026 docket activity involving this patent.
Search results for US 5946458
Important caveat up front: I found no Federal Circuit (CAFC) 2026 docket activity naming this patent, and no litigation, PTAB, or appeal records tying 5946458 to any 2026 proceeding. I cannot confirm the absence conclusively — I only searched publicly indexed sources and the searches returned nothing specific. Treat "no CAFC 2026 activity found" as a limitation of my search, not an authoritative negative.
I also want to flag a numerically-confusable but legally unrelated document so it is not mixed in: JP 5946458 B2 is a Japanese patent (Bestsens AG, "bearing characterization device/method," issued 2016-07-06, application PCT/EP2011/066245). That is a different patent with a coincidentally similar number format and is not the US patent you asked about. My summary below is strictly for US 5946458 A (I did not auto-correct across jurisdictions).
Bibliographic data — US 5946458 A
| Field | Value |
|---|---|
| Title | Network printing system for responding to remote print-related requests |
| Patent number | US 5946458 A |
| Application number | US 08/824,650 |
| Inventors | Paul R. Austin; Peter Cullen; Steven E. Haehn; Wendell L. Kibler; Jie Zhu |
| Original assignee / current assignee (as listed) | Xerox Corporation / Xerox Corp |
| Filing date | 1997-03-24 |
| Priority date | 1997-03-24 |
| Issue (publication) date | 1999-08-31 |
| Claims | 18 total (2 independent — claim 1 system, claim 10 method) |
| Status | Expired – Lifetime (anticipated expiration 2017-03-24) |
| Family | EP 0867799 B1; JP 4125414 B2; BR 9800949 A; DE 69815191 T2 |
| Primary classification | G06F 3/12 (digital output to print unit); among others G06F 3/1296, G06F 3/1285, G06F 3/1293 |
Sources: Google Patents US5946458A, USPTO.report grant page, and the EPO family record EP 0867799 A3.
Abstract (as published)
A printing system disposed in a local or wide area network in which one of a plurality of queries is transmitted from a client to a server for obtaining a set of information including both a file with static information and a subset of dynamic information is provided. The subset of dynamic information varies as a function of one or more print related characteristics of a document processing system with which the server communicates. The printing system includes a parsing subsystem, communicating with the client for receiving the one of the plurality of queries, the parsing subsystem facilitating the obtaining of the set of information by copying a portion of the file, in response to reading a first instruction, and communicating the copied portion at the server for storage thereat. The printing system further includes a query resolving subsystem, communicating with the parsing subsystem, for obtaining the subset of dynamic information from the document processing system in response to the parsing system reading a second instruction. In practice, the copied portion of the file and the subset of dynamic information are combined for output thereof at the client.
Independent claims — plain-language overview
Claim 1 (system). A printing system on a LAN/WAN where a client sends one of several queries to a server. The response is a "set of information" = a file containing static information plus a subset of dynamic information, and the dynamic part changes depending on print-related characteristics of the document processing system the server talks to. The system comprises:
- (a) a parsing subsystem that receives the client query and, upon reading a first instruction, copies a portion of the file and stores that copied portion at the server (i.e., static content is copied out of a pre-stored file rather than newly generated);
- (b) a query resolving subsystem that, upon the parser reading a second instruction, fetches the dynamic information from the document processing system; and
- (c) the copied portion and the dynamic subset are combined for output at the client.
- Core inventive idea: one generic template/parser driven by instructions and per-query files replaces writing a separate custom program for every query type.
Claim 10 (method). The method counterpart, performed in the same network printing environment, comprising:
- (a) transmitting the selected query from client to server;
- (b) in response to receiving the query, parsing a program that drives assembly of the information set, including (i) reading a first instruction → copy a portion of the file and store it at the server, and (ii) reading a second instruction → obtain the dynamic subset from the document processing system; and
- (c) transmitting the copied portion and dynamic subset to the client for output there.
Dependent-claim highlights (context only)
- Claims 2 / 11: a second portion of the file is copied after the dynamic information is obtained (ordering of static vs. dynamic content).
- Claims 3–6 / 12–15: a document manager fetches the dynamic data; parameters designate the type — e.g., job-queue state per job, or machine-setting values.
- Claims 7–8 / 16–17: a formatter formats the dynamic data for the server; the resolver uses a shorthand expression (e.g., a Fortran-like format statement) that is expanded into a much larger output set (claim 17's "second set of code substantially greater in size").
- Claims 9 / 18: the first and second instructions live in a template corresponded with a plurality of files, one of which is selected for copying.
Confidence / uncertainty notes
- Bibliographic fields above are corroborated by Google Patents, USPTO.report, and the EPO family record.
- I have high confidence in title, inventors, assignee, dates, abstract, and the two independent claims (the full specification and claim text were available and are internally consistent).
- I have low/no confidence regarding any litigation, PTAB, or CAFC involvement — no such records appeared. If you need a definitive check, query the CAFC docket system (PACER/CM-ECF) and the USPTO PTAB/PatentCenter by patent number directly; my web searches are not a substitute for those authoritative databases.
- The full Google Patents "Similar Documents" list (e.g., US 5,974,234; US 6,020,973) and "Cited By" lists are not evidence of this patent's own litigation history.
Generated 10/1/2026, 11:22:22 AM
Cases on file (0)
Specific litigation cases in our database that name US patent 5946458. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US patent 5946458 across patent litigation tracking sites.
Let me refine my searches with more targeted queries.
Litigation Search: US Patent No. 5,946,458 (Literal ID)
Patent identified: US 5,946,458 — "Network printing system for responding to remote print-related requests" (Application No. 08/824,650; filed 1997-03-24; granted 1999-08-31; original/current assignee: Xerox Corp; legal status: Expired – Lifetime, anticipated expiration 2017-03-24).
Result: No litigation found
Based on my searches of patent litigation resources (Google Patents legal-events data, USPTO records, Unified Patents portal material, Docket Alarm, and general litigation-report sources), I found no known litigation involving U.S. Patent No. 5,946,458.
There are no district-court infringement cases, no ITC Section 337 investigations, and no PTAB post-grant proceedings (IPR/PGR/CBM) returned for this patent number in the sources consulted. This is consistent with the Google Patents page for US5946458A, which shows no "Litigation" or "PTAB" events — only the standard prosecution, assignment, and security-interest reassignment entries (Bank One, 2002; JPMorgan Chase, 2003; release by secured party, 2022).
Important disambiguation (do not conflate these distinct IDs)
My searches surfaced several look-alike identifiers that are different patents — none of these should be reported as litigation against US 5,946,458:
- JP 5946458 B2 — a Japanese patent (特許第5946458号) owned by BestSens AG, titled "軸受の特性判定装置及び方法" (bearing-characteristics determination), filed 2011, registered 2016. Entirely unrelated subject matter and jurisdiction.
- US 5,946,647 — a different U.S. patent (Apple's "automatic link insertion" patent, asserted in Apple v. Samsung). Substituting this number would be an auto-correction error.
- US 7,657,594 and RE45,543 — different patents appearing in the Unified Patents search results.
Caveats and recommended verification steps
I should be explicit about the limits of this answer:
- "No litigation found" ≠ "no litigation exists." Absence of results in the sources I could reach is not definitive proof. Litigation can exist that is not indexed by open aggregators.
- Searches were constrained. Some targeted queries returned no usable results or were truncated, so coverage of PACER and the full Unified Patents case list was incomplete.
- To definitively confirm, verify directly against:
- USPTO Patent Center / Patent Assignment & "Legal Events" for US 5,946,458 — https://patents.google.com/patent/US5946458/en (Legal Events tab)
- Unified Patents Portal case list — https://portal.unifiedpatents.com/litigation/caselist (search by patent number)
- PACER / CourtListener (RECAP) — docket search on "5,946,458"
- PTAB — https://ptacts.uspto.gov (search patent number for IPR/PGR)
Bottom line: Interpreting the identifier literally as U.S. Patent No. 5,946,458, I found no known litigation. If you have a specific case number, plaintiff, or filing timeframe in mind, provide it and I can attempt a narrower confirmation; otherwise, the patent's public record shows only prosecution, assignments, and security interests, with no litigation docket.
Generated 10/1/2026, 11:22:30 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the structured-data finding against public sources before drafting.
The first searches surfaced only similarly-numbered patents (6,147,458 / 8,033,458 / 10,407,458). Let me run narrower checks on this specific patent.
No PTAB hits yet on this patent. Two more targeted checks to be safe — litigation/assertion history and any IPR number referencing it.
Proceedings overview
Zero AIA trial proceedings on file. US 5,946,458 ("Network printing system for responding to remote print-related requests," Xerox Corp., filed 1997-03-24, granted 1999-08-31) has never been the subject of an Inter Partes Review, Post-Grant Review, or Covered Business Method review — the USPTO ODP structured block reports no AIA trials, and no PTAB petition, institution decision, or Final Written Decision naming this patent surfaced in web searching. Claims 1–18 stand as issued: none canceled, none sustained-on-the-merits (they were never tested), all 18 claims untested. The bottom line for a defendant is unusual and cuts entirely against the patent owner: this is not a hardened patent that survived IPRs — it is a patent that expired on 2017-03-24 without ever attracting a validity challenge, and an expired patent cannot be infringed going forward.
(No proceedings to itemize)
There is no {PROCEEDING_NUMBER} to populate. I will not manufacture one. For completeness, here is what I ruled out and why the near-misses matter:
- Not this patent. Search results for "'458 patent" are dominated by four unrelated patents whose numbers merely end in 458: 6,147,458 (Koninklijke Philips v. Wangs Alliance, IPR2015-01289), 8,033,458 (Smartflash, CBM2015-00016), 10,407,458 (Columbia University v. Illumina), and JP 5946458 B2 (BestSens AG, a bearing-characterization patent). If opposing counsel or a demand letter refers loosely to "the '458 patent," confirm the full seven-digit number before responding.
- Not this patent, but adjacent art. The Xerox XNS prior-art system — the same body of art used to invalidate MPHJ's virtual-copier patents in MPHJ Technology Investments, LLC v. Ricoh Americas Corp., 847 F.3d 1363 (Fed. Cir. 2017) — is cited by (not against) the '458 patent's assignee lineage. XNS appears in this patent's own specification as background. That is a useful defensive exhibit trail, not a proceeding.
Verification trail:
- Google Patents, US5946458A — https://patents.google.com/patent/US5946458/en (no PTAB/reissue/reexam entries; "Expired – Lifetime"; anticipated expiration 2017-03-24)
- PTAB E2E / PTAB Decisions search portal — https://ptacts.uspto.gov/ptacts/ (no petition documents located for 5,946,458)
- CourtListener — https://www.courtlistener.com/ (no PTAB-originated appeal docketed for this patent located)
Strategic summary
Claim posture. All 18 claims are UNTESTED. Claims 1 and 10 are the two independent claims (system and method); claims 2–9 depend from claim 1 and claims 11–18 from claim 10. Nothing has been canceled, so there is no "claim 1 is dead" argument available. But there is a much stronger argument: the patent term ended 2017-03-24, and the statutory bar on pre-issuance damages plus the absence of any maintenance-fee lapse issue means the enforceable life of this patent is over. Its non-U.S. siblings — EP0867799B1, DE69815191T2, JP4125414B2, BR9800949A — are likewise expired. Any demand letter asserting current infringement of 5,946,458 is facially defective on its own face.
Estoppel landscape. § 315(e)(2) estoppel is inapplicable, because no petitioner ever filed. That means the full prior-art universe remains available to a defendant — but the more important point is that the IPR window itself is closed: AIA trials became available 2012-09-16, the patent's term ran to 2017-03-24, and no one petitioned during that roughly four-and-a-half-year window. There is no IPR left to file, and no IPR-based defense to build. A defendant's validity challenge today would have to be a § 282 district-court defense in the (unlikely) event of suit; the operative defense is non-infringement-by-expiration and, if the demand is pre-dated, a laches/statute-of-limitations analysis under § 286.
Pattern signals. None of the usual patterns are present: no repeat petitioner (there are no petitioners at all), no PTAB appeals by the patent owner on this patent, and no defensive aggregator such as Unified Patents in the chain. This is consistent with the patent's profile — a 1997-era Xerox internal-architecture patent (HTTP/CGI/EHIT query-parsing for a networked copier) that sat in a large portfolio and was never picked out for assertion. By contrast, Xerox did actively litigate a different, later family of patents against Meta, X Corp., and Snap (e.g., U.S. Pat. Nos. 7,043,475 and 8,489,599, IPR2021-01264 and IPR2021-01294, Federal Circuit Nos. 2023-1714/2023-1913 and 2023-1983/2023-1988, Xerox's challenges ultimately affirmed as unpatentable in 2025). That litigation activity did not touch 5,946,458.
Recommended next steps
- Do not spend budget on a PTAB strategy for this patent. There is no proceeding to join, no institution decision to distinguish, and no statutory path to a new IPR/PGR. Saying so plainly is the correct advice.
- If you receive a demand letter citing US 5,946,458, demand the full patent number and the asserted claims in writing. Confirm it is 5,946,458 and not 6,147,458, 8,033,458, or 10,407,458. If it is 5,946,458, the patent expired 2017-03-24; a claim for ongoing royalties is unsupportable. Any pre-expiration damages theory faces a § 286 six-year lookback measured from the date of suit.
- If you are defending on a related Xerox networking patent (the '475/'599/'584/'439/'781 family litigated against Meta, X, and Snap), the '"458 with no PTAB history" fact is not useful — those patents are separate and, per the joint status report filed 2025-08-04 in Xerox Corp. v. Meta Platforms, Inc., No. 2:20-cv-10753-AB-MBK (C.D. Cal.), several have been held unpatentable on claims affirmed by the Federal Circuit in 2025. Pull that docket directly rather than relying on this patent's file: https://www.action-intell.com/wp-content/uploads/2025/09/Xerox-v-Meta-Aug-25-status-report.pdf
- Preserve the XNS record. The Xerox XNS prior-art system is described in MPHJ v. Ricoh, 847 F.3d 1363 (Fed. Cir. 2017) — available at https://app.midpage.ai/case/mphj-technology-investments-v-ricoh-[4125551](/patent/4125551) — and is cited as background within the '458 specification itself. It is a reusable invalidity exhibit for any networked-copier/web-interface assertion, even though it was never deployed against this patent.
Confidence note. I have high confidence that no AIA trial proceeding exists on US 5,946,458: the ODP structured data says so, and independent searching surfaced only same-suffix different patents. I did not find the complete district-court assertion history for this patent, and I cannot affirmatively rule out a 1999–2012 pre-AIA inter partes reexamination or reissue — that data is not carried in the source block, and my searches did not return one. Treat "no post-issuance proceedings of any kind" as likely but verified only for the AIA-trial category.
Generated 10/1/2026, 11:22:39 AM
Ownership chain (4)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
1997-03-24 · recorded 1997-10-14 · Assignment
Austin, Paul R.; Cullen, Peter; Haehn, Steven E.; Kibler, Wendell L.; Zhu, JieXerox Corporation
? · recorded 2002-06-28 · Security Interest
Xerox CorporationBank One, NA, as Administrative Agent
securitization
2003-06-25 · recorded 2003-10-31 · reel 015134/0476 · Security Agreement
Xerox CorporationJPMorgan Chase Bank, as Collateral Agent (Texas)
securitization
2022-08-22 · recorded 2022-09-07 · reel 066728/0193 · Release
JPMorgan Chase Bank, N.A., as successor-in-interest administrative agent and collateral agent to JPMorgan Chase BankXerox Corporation (Connecticut)
securitization
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for US 5946458 across the sources you specified.
Key finding: the JPMorgan Xerox security agreement reel/frame surfaced from an INPADOC record. Let me pin down the specific reel/frame entries for US 5,946,458.
Ownership Reconstruction — US 5,946,458
Patent: US 5,946,458 B1 — "Network printing system for responding to remote print-related requests"
App. No.: 08/824,650 · Filed: 1997-03-24 · Issued: 1999-08-31 · Term ended: 2017-03-24 (anticipated expiration)
Assignee of record: Xerox Corporation · Current legal status: Expired – Lifetime
Sourcing note before anything else. Google Patents' legal-events panel for this patent shows four post-filing records. The USPTO Patent Assignment Search itself was not directly queryable in this session, so I could not read the reel/frame and correspondent fields off the record for this patent's own page. I recovered reel/frame data for the two bulk Xerox recordings from INPADOC legal-status records of sibling Xerox patents covered by the same recordings, and I mark those as cross-referenced rather than directly read. The 1997 inventor-to-Xerox recording and the 2002 Bank One security interest are confirmed to exist by date but their reel/frame was not captured — I will not invent one.
Inventors
| Inventor | Employer at filing | Notes |
|---|---|---|
| Paul R. Austin | Xerox Corporation (presumed — see below) | |
| Peter Cullen | Xerox Corporation (presumed) | |
| Steven E. Haehn | Xerox Corporation (presumed) | |
| Wendell L. Kibler | Xerox Corporation (presumed) | |
| Jie Zhu | Xerox Corporation (presumed) |
All five are named as assignors of the entire interest to Xerox Corporation in the assignment recorded 1997-10-14 (per Google Patents legal events: "Assignors: AUSTIN, PAUL R., CULLEN, PETER, HAEHN, STEVEN E., KIBLER, WENDELL L., ZHU, JIE"). The subject matter — an embedded HTTP server, CGI script, query parser/resolver and "extended HTML" templates operating against the ESS/Document Manager of a Xerox Document Centre multifunction device — is squarely Xerox's internal network-controller development (the specification expressly refers to Xerox DocuSP 1.0, the Document Centre 35, and SIR 5,579,447 to Salgado). Individual employment dates are not stated in the patent, so employer attribution is inferential from the assignment, not documentary.
Unusual-pattern check: No evidence of inventor departures near filing. The patent is a team invention by five Xerox engineers and there is no post-filing "all inventors left within 12 months" signature. Unclear / no data — I found no public records of these individuals' movements, and I am not going to characterize them either way.
Original assignee
Xerox Corporation (Stamford, CT). The entity named on the face of the patent and the original assignee of record.
- Business: The patent itself is an unusually good description of Xerox's core business at the time — a multifunctional digital copier (scanner + xerographic print engine) with a network service module running an HTTP server, positioned as a network print/document-processing device.
- Product embodiment: Yes, and specifically. The specification's own reference points are shipped hardware/firmware: the Xerox Document Centre 35 digital copier and DocuSP 1.0 print server. Xerox commercialized browser-based device status/job-queue/settings querying on this generation of products as CentreWare Internet Services, an embedded web server on the Document Centre family — an HTTP/CGI query interface rendering job-queue state and machine settings to a client browser, which is exactly claims 1, 5, 6 and 10 of this patent. I flag this as strong circumstantial embodiment rather than a verified product-teardown mapping.
- Current status: Operating. Xerox Corporation continues in business; since a 2019 holding-company reorganization it sits under Xerox Holdings Corporation (NASDAQ: XRX), with Xerox Corporation as the principal operating subsidiary. No bankruptcy — see the fire-sale signal below for why the 2002–2003 distress years matter but do not qualify.
- Family: EP 0867799 B1 (granted 2003-06-04), JP 4125414 B2 (granted 2008-07-30), DE 69815191 T2, BR 9800949 A (application discontinued).
Assignment timeline
Four recorded events. No ownership transfer after the original 1997 assignment. Two of the four are security encumbrances, and the fourth is the release of those encumbrances.
1997-03-24 (executed, approx.) / recorded 1997-10-14 — Reel/Frame not captured
- Conveyance: Assignment of Assignors' Interest
- Assignor: Austin, Paul R.; Cullen, Peter; Haehn, Steven E.; Kibler, Wendell L.; Zhu, Jie (all five, jointly)
- Assignee: Xerox Corporation
- Correspondent: not captured — I could not read the correspondent field for this recording. I will not name an attorney I did not actually see on the record.
- Context: Ordinary employment/invention assignment vesting title in the operating company. This is the only ownership transfer in the entire chain.
2002-06-28 (recorded) — Reel/Frame not captured
- Conveyance: Security Interest (see document for details)
- Assignor: Xerox Corporation
- Assignee: Bank One, NA, as Administrative Agent
- Correspondent: not captured
- Context: Securitization. Patent collateral pledged under Xerox's 2002 credit facility — an encumbrance, not a sale. Xerox retained title. (Record exists per Google Patents legal events dated 2002-06-28; reel/frame not retrievable in this session.)
2003-06-25 (executed) / recorded 2003-10-31 — Reel 015134 / Frame 0476
- Conveyance: Security Agreement
- Assignor: Xerox Corporation
- Assignee: [JPMorgan Chase Bank, as Collateral Agent (Texas)](/asserters/jpmorgan-chase-bank-as-collateral-agent-texas)
- Correspondent: not captured on the assignment record itself; the underlying transaction documents (Guarantee and Security Agreement dated 2003-06-25, JPMorgan Chase Bank as Collateral Agent; Deutsche Bank Securities as Syndication Agent; Citicorp North America, Merrill Lynch, UBS Securities as Co-Documentation Agents) were prepared in connection with the June 19, 2003 Credit Agreement and filed with the SEC — outside counsel on the Xerox side was Skadden, Arps, Slate, Meagher & Flom LLP and Blank Rome LLP (per the Xerox/Intelligent Electronics S-4/A exhibit index). This is transaction counsel, not an NPE recording agent. No recurrence signal.
- Context: Securitization / collateral-agent succession. Bank One's role as collateral agent for the Xerox credit facility gave way to JPMorgan Chase under the 2003 facility; the same bulk security agreement was re-recorded against the Xerox patent portfolio. Reel 015134/0476 is confirmed as the Xerox portfolio security-agreement recording — the identical reel/frame appears in INPADOC legal-status records for sibling Xerox patents US 5,790,146, US 5,608,023 and US 5,850,476, all with "SECURITY AGREEMENT;ASSIGNOR:XEROX CORPORATION."
- Correspondent-recurrence flag: Not a finding. The fact that one reel/frame covers thousands of Xerox patents means a single "correspondent" for that record is the bank's filing agent, not a shell-entity operator. I found no evidence of any attorney recurring on this chain in an NPE context.
2022-08-22 (executed) / recorded 2022-09-07 — Reel 066728 / Frame 0193
- Conveyance: Release by Secured Party
- Assignor: JPMorgan Chase Bank, N.A., as successor-in-interest administrative agent and collateral agent to JPMorgan Chase Bank (i.e., the secured party releases)
- Assignee: Xerox Corporation (Connecticut)
- Correspondent: not captured
- Context: Cleanup. The security interest is discharged and title is confirmed back in Xerox. Reel 066728/0193 is cross-referenced from the INPADOC legal-status record of sibling Xerox patent US 5,850,476 ("RELEASE BY SECURED PARTY; JPMORGAN CHASE BANK, N.A. AS SUCCESSOR-IN-INTEREST ADMINISTRATIVE AGENT AND COLLATERAL AGENT TO JPMORGAN CHASE BANK; REEL/FRAME:066728/0193"), which shares the bulk recording. Note the timing: this release post-dates the patent's 2017-03-24 expiration by five years — it is administrative housekeeping on an already-expired asset, not a value event.
Timeline diagram
timeline
title Ownership of US 5946458
1997 : Filed by five Xerox inventors
: Inventors assign rights to Xerox
: Assignment recorded 1997-10-14
1999 : Patent US 5946458 issues
2002 : Bank One NA security interest recorded
2003 : JPMorgan Chase security agreement
2017 : Patent term expires
2022 : Security interest released by JPMorgan
NPE / troll-pattern signals
- Shell-entity transfer — NOT PRESENT. There is no transfer to any entity bearing an "IP / Patents / Licensing / Holdings / Ventures" suffix. The only non-bank assignee in the entire chain is Xerox Corporation (1997-10-14), and the only other assignee entries are two banks acting as collateral agents (reel 015134/0476, recorded 2003-10-31; Bank One record dated 2002-06-28).
- Known asserter in the chain — NOT PRESENT. No assignee in this chain appears on the Acacia / Marathon / Intellectual Ventures / IPNav / Wi-LAN / Conversant / Vringo / Pendrell / Innovatio / MPHJ / Lumen View / Round Rock / Document Generation Corp lists. Bank One, NA and JPMorgan Chase Bank are commercial lenders holding collateral, not assertion vehicles — a security interest is not an assignment of title, and the secured party never took ownership (the 2022 release at reel 066728/0193 confirms this). I did not locate this patent in any RPX or Unified Patents high-frequency-plaintiff listing.
- Repeat correspondent across the chain — NOT PRESENT / UNCLEAR. I could not read the correspondent of record for the 1997 and 2002 recordings, so I cannot affirmatively rule out a recurring filing agent. What I can say is that the two records I could characterize involve a bank's collateral documentation and general corporate counsel (Skadden Arps; Blank Rome), not a plaintiff-side IP monetization firm. The signal requires recurrence by an NPE-side filer; nothing of that kind appears. Unclear, leaning not present on the basis of the records I have.
- Cascading transfers — NOT PRESENT. Exactly one ownership assignment in 27+ years, in 1997. There is no chain of LLC-to-LLC transfers, and no shared-address or shared-principal pattern to examine. The two bank records are encumbrances on the same record owner.
- Pre-litigation transfer — NOT PRESENT. No ownership assignment within 6 months before any suit; there is no post-1997 ownership assignment at all. I did not surface any infringement action naming this patent.
- Bankruptcy fire-sale — NOT PRESENT. This is the closest call on the facts, so I want to be explicit. Xerox was in acute financial distress in 2000–2002 and raised secured debt against its patent portfolio — the 2002 Bank One and 2003 JPMorgan recordings are the fingerprints of that distress, and the underlying 2003 credit facility documentation (executed 2003-06-25, JPMorgan Chase as Collateral Agent, filed on Xerox's 8-K of 2003-06-27) is real. But Xerox never filed Chapter 7 or Chapter 11, and no court-supervised patent sale occurred. The collateral was released in 2022 (reel 066728/0193), meaning the loans were satisfied rather than foreclosed. Distress ≠ fire-sale. Not present.
- Privateering — NOT PRESENT. No transfer to an assertion vehicle operating on Xerox's behalf, and no SEC or EFF/Patent Progress coverage indicating one.
- Defensive aggregator — NOT PRESENT. The chain terminates at the original operating company. There is no RPX, AST, LOT Network, Unified Patents or OIN entry.
Verdict
Insufficient data — for the specific NPE question the rubric asks about, and I want to be precise about why that label is being used rather than read as "I found nothing."
Justification: the only ownership record in this chain is the 1997-10-14 assignment from the five named inventors to Xerox Corporation. Every subsequent record is an encumbrance that never moved title — the Bank One security interest (recorded 2002-06-28, reel/frame not captured), the JPMorgan Chase security agreement (executed 2003-06-25, recorded 2003-10-31, reel 015134/0476), and the secured party's release back to Xerox (executed 2022-08-22, recorded 2022-09-07, reel 066728/0193). The patent expired 2017-03-24 and can no longer be asserted by anyone. There is therefore no NPE chain here to score: on the evidence, this is a clean single-assignee operating-company patent whose only interesting history is that it was swept into Xerox's 2002–2003 credit-facility collateral packages during its near-death liquidity crisis and then released five years after the term ended. The "Insufficient data" call reflects the absence of any post-1997 ownership record — not an absence of research; the affirmative finding is no NPE involvement detectable on the record.
Verification links:
- USPTO Patent Assignment Center (search patent number
5946458): https://assignmentcenter.uspto.gov/ - Legacy Assignment Search: https://assignment.uspto.gov/patent/index.html
- Google Patents legal events for this patent: https://patents.google.com/patent/US5946458/en
Gaps I could not close (stated rather than guessed): (i) reel/frame and correspondent for the 1997-10-14 inventor assignment; (ii) reel/frame and correspondent for the 2002-06-28 Bank One security interest; (iii) correspondent-of-record fields for the 2003 and 2022 recordings. A direct query of the Assignment Center by patent number, plus a correspondent-name search on the four recording dates above, would close all three — and specifically would confirm or refute signal #3, which is the one signal I am leaving formally open.
Generated 10/1/2026, 11:23:03 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research US 5,946,458 and each of its cited references. Let me start with parallel searches.
1. Patent identified
US 5,946,458 A — "Network printing system for responding to remote print-related requests"
- Application No. US 08/824,650; filed 1997-03-24; granted 1999-08-31; priority 1997-03-24
- Assignee: Xerox Corporation; Inventors: Austin, Cullen, Haehn, Kibler, Zhu
- Claims: 18 (claims 1–9 apparatus; claims 10–18 method)
- Legal status: Expired – Lifetime (anticipated expiration 2017-03-24)
- Family: EP 0867799B1; JP 4125414B2; DE 69815191T2; BR 9800949A
Source: https://patents.google.com/patent/US5946458/en (fetched 2026-09-24) and https://uspto.report/patent/grant/[5946458](/patent/5946458)
Important note on scope of this answer. The Google Patents/USPTO record for 5,946,458 lists exactly four "Patent Citations" (references cited against it), plus a separate short "Family Cites Families" table of two items. I restricted the analysis to those. The much larger "Cited By" tables (53 and 94 entries, e.g. US6094659, US6184996, US6289371, US6606525) are later documents that cite 5,946,458 — they are not prior art and I have excluded them. Likewise, the "Similar Documents" list is not a citation list.
2. The cited prior-art references
Reference 1 — US 5,493,634 A
- Title: Apparatus and method for multi-stage/multi-process decomposing
- Assignee: Xerox Corporation; Inventors: Bonk, Zell, Catapano, Bryant, Krist, Legg, Allen, Rulli, Harrington
- Filed: 1992-06-12; Granted: 1996-02-20
- § 102 basis: Granted more than one year before the 1997-03-24 filing date → 35 U.S.C. § 102(b) statutory bar.
- Description: A decomposer for a printing machine that receives first and second sets of information written in a page description language (e.g. Interpress). It parses the first set into image-related components during a first interval and the second set during a second interval, and performs image-related operations on the first set substantially concurrently with parsing of the second set. Includes a preparse scheduler, manager section and main section, database manager, and a "make ready" bitmap-processing stage.
- Claim relevance: This is the closest of the four to the parsing architecture. It supports the parsing subsystem recited in claim 1(a) and the "parsing a program … copying a portion of the file" step of claim 10(b) only at a generic "parse-a-document-into-components" level. It does not disclose the two distinct instructions of the invention (copy-static / fetch-dynamic), the template-plus-multiple-Q(i)-files arrangement of claim 9/18, or the dynamic-information resolving subsystem of claim 1(b). It is a § 103 / background reference, not a § 102 anticipator of claim 1 or claim 10.
- Note: 5,946,458 itself cites this patent in its Background ("U.S. Pat. No. 5,493,634 to Bonk et al."), which is why it appears on the citation list.
Reference 2 — US 5,465,322 A
- Title: Apparatus and method for parsing a stream of data including a bitmap and creating a table of break entries corresponding with the bitmap
- Assignee: Xerox Corporation
- Filed: 1993-01-04; Granted: 1995-11-07
- § 102 basis: Granted more than one year before 1997-03-24 → § 102(b).
- Description: A printing system that separates a compressed bitmap from a PDL stream and uses a Boundary Code Catcher (BCC) to create a table listing break entries of the bitmap; the bitmap and its break-entry table are stored in memory, and a plurality of imaging channels decompress selected segments in parallel. Uses a preparser that "takes apart" an input document so that the PDL is parsed into image-related components.
- Claim relevance: Relevant to the parsing subsystem of claim 1(a) and claim 10(b)(i) at the level of "parse a stream and copy selected contents into storage." Its parser acts on PDL/bitmap streams, not on an HTML template containing a static-copy instruction and a dynamic-marker instruction. Anticipates nothing; relevant as § 103 art for the "parsing" concept. The phrase "take apart … parsed into various image related components with a preparser" that appears in 5,946,458's own Background comes from this family of disclosures.
Reference 3 — US 5,504,843 A
- Title: Apparatus and method for processing a stream of image data in a printing system
- Assignee: Xerox Corporation
- Filed: 1993-01-04 (continuation of Ser. No. 08/000,072, filed 1993-01-04, now abandoned); Granted: 1996-04-02
- § 102 basis: Granted more than one year before 1997-03-24 → § 102(b).
- Description: An image-filtering arrangement that selectively removes images (e.g. bitmaps) from a PDL stream to form a modified stream, so parsing time is reduced. An input filtering section / stream utility reads a block, detects a token indicating a bitmap, strips the bitmap to raster memory, stores the modified stream in PDL memory, and performs these operations concurrently with parsing of another stream (multi-tasking). Claims recite a network connection between the printing machine and the I/O device.
- Claim relevance: Relevant to claim 3 (document manager in communication with the query resolving subsystem — here, a manager handing off image components) and to the general parsing/storing architecture of claim 1(a) and claim 10(b). The "token in a stream triggers a separate operation while parsing continues" idea has some structural analogy to the invention's "read a first instruction → copy static / read a second instruction → obtain dynamic," but the reference is directed to raster image stripping, not to a web-page template. Not a § 102 anticipator.
Reference 4 — US 5,649,186 A
- Title: System and method for a computer-based dynamic information clipping service
- Assignee: Silicon Graphics Incorporated; Inventor: Gregory J. Ferguson (Hunt Valley, MD)
- Filed: 1995-08-07; Granted: 1997-07-15
- § 102 basis: Filed before the 5,946,458 filing date but granted after it → 35 U.S.C. § 102(e) (post-AIPA terminology; the pre-AIA § 102(e) "before the invention by the applicant" / patent-effective-as-of-filing-date provision).
- Description: An end-user creates a template of topics of interest via a GUI (the "NewsEditor"); the template is transmitted to a central site and stored. At the central site, information is collected (via an "infobot"/Web-crawler and newsfeeds), parsed and indexed, and stored in an information repository. The template is processed by parsing it and collecting command-strings, the repository is queried to generate query results, results are sorted, and an HTML page is created from the sorted results and made available to the end-user (a "custom network-based newspaper"). Claim 1 recites the template-creation → transmission → parse → query → HTML-page-creation sequence; claims 4–5 recite key/command-string retrieval with a "master topics file" transparent to the end-user.
- Claim relevance: This is the most substantively relevant of the four. Its template-driven generation of an HTML page from parsed static content plus dynamically queried information closely parallels the "extended HTML" file arrangement of the invention. It is the reference most plausibly cited against claim 1 and claim 10 (and against claims 9/18, the template-corresponded-with-a-plurality-of-files concept) under § 102(e) or as § 103 art.
- Caveat: Even so, it is not a clean anticipation. US 5,649,186 does not disclose (i) a printing/document-processing system with print-related characteristics, (ii) a server-side "copy a portion of the file to the server for storage" instruction combined with a separate "obtain the subset of dynamic information from the document processing system" instruction, or (iii) the specifically claimed combination/sub-combinations of claims 2–8 and 11–17 (e.g. the document manager, job-queue-state and machine-setting parameters, and the shorthand/formatter retrieval). Its own claims are directed to a news-clipping service, not printing. A § 102 rejection on this reference alone against independent claim 1 would require reading "document processing system" and "print related characteristics" very broadly; it is better characterized as § 103 art against the generic template-plus-dynamic-query concept.
Family-cited references (from the "Family Cites Families" table)
Reference 5 — US 5,566,278 A
- Title: Object oriented printing system
- Assignee: Taligent, Inc.; Filed: 1993-08-24; Granted: 1996-10-15
- § 102 basis: Granted more than one year before 1997-03-24 → § 102(b).
- Description: An object-oriented print/print-job architecture. (I have only the citation-table metadata for this reference — title, assignee, filed/granted dates — plus the general subject-matter knowledge that it concerns object-oriented printing system organization; I did not retrieve its full text, so I am deliberately not mapping it to specific claims.)
- Claim relevance: Listed as family-cited art; on its face it relates to printing-system architecture generally, not to HTTP/CGI query parsing or template-driven HTML generation. Cannot establish a § 102 mapping for any claim 1–18 with confidence. Treat as general background.
Reference 6 — JP H08-292844 A
- Title: Device and method for printing (as rendered in the citation table)
- Assignee: Fuji Xerox Co., Ltd.; Priority/published: 1995-04-20 / publication 1996-11-05 (citation-table dates)
- § 102 basis: Published before 1997-03-24 → potentially § 102(a)/(b) (a printed publication), subject to the same §102(b)/§103 analysis.
- Description: Japanese-language document; I only have the citation-table metadata (title/assignee/dates) from the 5,946,458 record and did not retrieve the text. Do not rely on any characterization beyond that.
- Claim relevance: Cannot be assessed. I am flagging this explicitly rather than fabricating a mapping.
3. Honest bottom line
- Only four references are formally cited against US 5,946,458 in the USPTO/Google Patents record: US 5,493,634; US 5,465,322; US 5,504,843; US 5,649,186. Two more (US 5,566,278; JP H08-292844 A) appear in the family-citation table.
- None of these four is a clean § 102 anticipator of independent claim 1 or independent claim 10. Each reference is either (a) directed to PDL decomposing/parsing for printing images (US 5,493,634, US 5,465,322, US 5,504,843 — all Xerox, all § 102(b)), or (b) directed to a non-printing template-driven HTML content-assembly service (US 5,649,186, § 102(e)). The claimed invention's distinguishing feature — a single parsing program cooperating with a template/extended-HTML file that contains a first instruction to copy static content to the server and a second instruction that triggers a query resolver to pull a subset of dynamic information from a document processing system whose print-related characteristics determine that subset — is not shown in any one of them.
- Their probative value is therefore as § 103 obviousness art and as background art for the parsing/resolving/formatting sub-combinations, not as § 102 references. A § 102 rejection would most plausibly be attempted using US 5,649,186 alone against broad-claim features (template creation, parsing, querying, HTML generation — claims 1 and 10), but as noted it fails to teach the printing-specific and the "copy-static-portion-at-the-server" limitations.
- Claim-specific tentative notes (subject to the caveat that I did not retrieve the examiner's actual Office Action, only the citation list):
- Claim 1 / Claim 10 (independent): closest art = US 5,649,186 (template + parse + query + HTML), with US 5,493,634 / US 5,465,322 / US 5,504,843 supplying "parsing subsystem."
- Claims 3–6 / 12–15 (document manager, queue-state params, machine-setting params): not anticipated by any cited reference — these are printing-system-specific and the references are silent.
- Claims 8 / 17 (shorthand expression; code expansion): not anticipated.
- Claims 9 / 18 (parsing program corresponded with a plurality of Q(i) files): not anticipated; US 5,649,186's "master topics file" is the nearest analogue but is a command-string lookup, not a selectable per-query file of static content plus a dynamic marker.
If you need an actual § 102/§ 103 determination per claim, I'd need the examiner's citation mapping (the "Relevant to claim No." column in the front-page search report) and the full text of US 5,566,278 and JP H08-292844 A — I have flagged those two as not analyzed rather than guessing.
Generated 10/1/2026, 11:22:49 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground the reference disclosures before building the § 103 analysis.
Let me verify the remaining references cited on the face of the patent and in the Background.
Obviousness Analysis — US 5,946,458 under 35 U.S.C. § 103
Record note / flag: Two minor inconsistencies to note up front, per my operating rules. (1) The session header gives today's date as 2026‑10‑01 while this task states 2026‑04‑26; I use the task date. (2) The previously generated summary states it found "no CAFC 2026 docket activity" and characterizes that finding as search-limited — I adopt that characterization and do not treat it as an authoritative negative. Nothing in the prior sections contradicts the claim text or bibliographic data I rely on below.
Framing caveat: This is a hypothetical validity opinion built from the prior-art record on the face of the patent and the specification's own Background. US 5,946,458 expired 2017‑03‑24 (anticipated), so a live § 103 challenge is largely academic. I have not reviewed the USPTO file wrapper; I therefore cannot say whether a § 103 rejection was made and overcome. I also found no IPR/PGR challenging it.
1. Governing law (pre‑AIA, correctly applied here)
Filing/priority date is 1997‑03‑24, so pre‑AIA §§ 102/103 apply. Obviousness turns on the Graham factors as refined by KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007): (i) scope/content of the prior art, (ii) differences between prior art and claims, (iii) PHOSITA level, (iv) secondary considerations. The obviousness case may rest on an articulated rationale — MPEP 2143 rationales (A)–(G): combining known elements per known methods for predictable results; simple substitution; use of a known technique to improve a similar device in the same way; applying a known technique to a known device ready for improvement; "obvious to try"; design incentives/market forces; predictable variation.
Critical threshold point: the patent's own Background is an admission of much of the framework. It states that on the World Wide Web, "html specifies the display of information" and "http provides a neutral mechanism for transfer… from a 'server'… to a 'client,'" that transferred information "includes both static information defined in advance and dynamic information computed at the time that a client makes a request," and that "publicly available server software often includes the common gateway interface (CGI)… to generate information in response to a given query." Under MPEP 2129, applicant admissions in the specification are prior art usable in a § 103 rejection — no separate reference is needed for these elements.
The alleged point of novelty is narrow: one generic template/parser (extended HTML) driven by first/second instructions and per-query files, replacing a custom CGI program per query.
2. The prior-art section — references and their § 102 status
| Reference | Date(s) | § 102 hook | Teaching (verified) |
|---|---|---|---|
| US 5,649,186 — System and method for a computer‑based dynamic information clipping service (Silicon Graphics) — examiner‑cited | filed 1995‑08‑07; issued 1997‑07‑15 | 102(e) (granted on an application filed before the 1997‑03‑24 filing; "by another") | End‑user builds a template at a client; template is transmitted to a central site and stored as a file. The site parses the template; "each entry in the file contains a certain 'key' value"; keys are matched against a master topics file, from which "command strings" are retrieved; the command strings query an information repository to generate query results; results are sorted and assembled into an HTML "page" delivered to the end‑user for viewing through a browser. Claims 11–12 require page creation from sorted query results, in HTML. |
| US 5,220,674 — Local area print server for requesting and storing required resource data and forwarding printer status message to selected destination (Digital Equipment/Morgan) — cited in the patent's Background and incorporated by reference | filed 1987‑07‑17; issued 1993‑06‑15 | 102(b) | LAN print server connecting clients and printers; responds to status requests; status collector for printer status messages (resource faults, availability); configuration data storage determining destinations per event type; forwards printer status messages to selected network nodes. |
| US 5,504,843 — Apparatus and method for processing a stream of image data in a printing system (Xerox) — examiner‑cited | filed 1993‑01‑04 (cont. of 08/000,072); issued 1996‑04‑02 | 102(b) | Network printing system; input section reads a block of data to determine the presence of a token; "means responsive to the reading means determining the presence of the token, for initiating a selected operation in the printing system"; a parser parses the stream into image‑related components. Also teaches device characteristics — available font types and configurable finishing attributes — set up from information in a second data stream. Cross‑references US 5,493,634. |
| US 5,465,322 — Apparatus and method for parsing a stream of data including a bitmap and creating a table of break entries… (Xerox) — examiner‑cited | filed 1993‑01‑04; issued 1995‑11‑07 | 102(b) | Decomposer parses a PDL stream; a boundary‑code catcher (BCC) builds a table of break entries that "delineate segments" of compressed data; segments are then acted on separately. |
| US 5,493,634 — Apparatus and method for multi‑stage/multi‑process decomposing (Xerox/Bonk) — cited in patent text (and examiner‑cited on the face) | filed 1992‑06‑12; issued 1996‑02‑20 | 102(b) | Decomposing apparatus for a network printing machine: means for parsing a first set of information into image‑related components while parsing a second set, with concurrent image‑related operations. |
| US 5,566,278 — Object oriented printing system (Taligent) and JP H08‑292844 — Device and method for printing (Fuji Xerox, publ. 1996‑11‑05) | 1993‑08‑24 / 1995‑04‑20 filings | 102(b)/(a) | Appear in the family's "Family Cites Families" record. I could not verify their disclosure content in my searches and do not rely on them below. If JP H08‑292844 discloses classic form‑overlay (a stored static form merged with variable/dynamic data at output), it would be directly on point for the "copy a portion of the file + combine with dynamic subset" concept — but I will not assert that without verification. |
Caution on the cited‑by list: US 6,185,996 (HP, Network printer with remote print queue control procedure, filed 1997‑06‑18) and US 6,094,659 (3Com, filed 1997‑09‑26) appear in the "Cited By" table but have post‑1997‑03‑24 filing dates. They are not prior art to this patent and must not be used in the combination.
3. Element mapping — independent claim 1
| Claim 1 element | Best mapping |
|---|---|
| Printing system in LAN/WAN; client→server query | 5,220,674 (LAN print server answering client status requests); 5,504,843 ("network printing systems… client… sends electronic documents… over a LAN") |
| Set of information = file with static info + subset of dynamic info | Admitted art (static + dynamic web content via HTTP/CGI); 5,649,186 (template + query results combined into one HTML page) |
| Dynamic subset varies with print‑related characteristics of the document processing system | 5,220,674 (printer/job status, faults, configuration); 5,504,843 (available fonts, finishing attributes — machine settings) |
| (a) Parsing subsystem receives query; copies a portion of the file in response to a first instruction; stores copied portion at server | 5,649,186 (template parsed; key values looked up and command strings retrieved from master topics file — instruction‑driven file access at the server); 5,504,843 / 5,465,322 (token/break‑entry detection causing a defined operation during stream parsing) |
| (b) Query resolving subsystem obtains dynamic subset in response to a second instruction | 5,649,186 (command strings → query of information repository → results); 5,220,674 (status collector retrieves printer status on request) |
| (c) Copied portion + dynamic subset combined for output at client | 5,649,186 ("creating a page using said sorted query results"; HTML page made available to end‑user); admitted CGI art |
Claim 10 is the method mirror of the same elements (a) transmit query, (b)(i) copy on first instruction, (b)(ii) obtain dynamic on second instruction, (c) transmit combined output to client — same mapping).
Bottom line on scope: every element of claim 1 is met by 5,649,186 + 5,220,674, using the admitted HTML/HTTP/CGI background as the enabling bridge; 5,504,843/5,465,322 supply the token/instruction‑driven parsing mechanics and the "machine settings" flavor.
4. Three combinations that render the claims obvious
Combination A (primary) — 5,649,186 + 5,220,674, in view of admitted art
Take 5,220,674's LAN print server answering client status requests (dynamic print‑related information) and replace its bespoke status‑message machinery with 5,649,186's template‑driven mechanism: a template file at the server that is parsed, whose markers/keys direct retrieval of dynamic content from a data source, with static and dynamic content assembled into an HTML page returned to the browser. That yields claim 1 in full: template file (static) + dynamic subset varying with print state, parsed on instructions, resolved from the print server, combined at the client. Rationale: MPEP 2143 (C)/(D) — known technique (template‑driven page generation) applied to a known device (network print server of 5,220,674) ready for improvement, yielding predictable results.
Combination B — 5,504,843 (+ 5,465,322) + 5,649,186 + 5,220,674
Here the parsing subsystem is grounded in printing‑machine art: 5,504,843 already teaches a printing‑system input section that reads a block of data to detect a token and, on that detection, initiates a selected operation — i.e., an instruction embedded in a data file that causes a defined machine action — plus a parser, plus device‑characteristic/machine‑setting handling. 5,465,322 adds marker/break‑entry tables delineating segments for separate handling. Combine with 5,649,186's template and 5,220,674's status source, and the "first instruction → copy static portion; second instruction → fetch dynamic data" architecture is the predictable extension. Rationale: MPEP 2143 (A)/(B) — combination of known elements per known methods; substitution of a data‑driven template for hard‑coded status formatting.
Combination C — 5,649,186 + 5,493,634/5,465,322 + 5,220,674 (parsing‑centric)
If the examiner's original citations were aimed at the "parsing subsystem" language (which their content suggests, since three of four are PDL/bitmap‑parsing patents), the natural rejection would read 5,549/5,493,634‑style multi‑process parsing and 5,465,322‑style break‑entry/token tables onto the parser element, then rely on 5,649,186 + admitted art for the query/static‑dynamic/client‑output elements.
5. Dependent claims (all follow the same logic)
| Claim(s) | Mapping / rationale |
|---|---|
| 2 / 11 (second portion copied after dynamic data obtained) | 5,649,186 assembles a page from template + results; ordering of static/dynamic insertion is a mere rearrangement of parts with no new result (MPEP 2144.04). 5,504,843 teaches continuing stream operations after a token. |
| 3–4 / 12–13 (document manager; parameters designate type of dynamic info) | 5,220,674 (configuration data selects which status messages go where; server responds to typed requests); 5,649,186 (key values and command strings designate the query type); 5,504,843 (second stream carries information regarding a font requirement / finishing configuration). |
| 5 / 14 (job‑queue state per job) | 5,220,674 (job/queue status); plus the patent's own Background print‑queue references (US 5,436,730; US 5,164,842; US 4,947,345). |
| 6 / 15 (machine settings) | 5,504,843 — available font types and configurable finishing attributes set up from stream information. |
| 7 / 16 (formatter) | 5,649,186 — results "sorted" and turned into HTML; admitted CGI formatting of dynamic output. |
| 8 / 17 (shorthand expression; compact code expanded into "a second set of code substantially greater in size") | 5,649,186's command strings retrieved from a master topics file are precisely a compact code expanded into a larger output set. The specification itself concedes the technique: "a format statement, analogous to a format statement used in Fortran." A Fortran‑style format spec expanding into a large formatted body is an inherent, predictable consequence of the known format‑string technique (MPEP 2144.04; KSR). |
| 9 / 18 (instructions in a template corresponded with a plurality of files; selecting one) | 5,649,186 — a template store holding many users' templates, each with keys compared against a master topics file; selection among multiple files/templates. Also the admitted prior art itself describes "file 1… file n" per query type. |
6. Motivation to combine — articulated (what a petition would say)
- Same field, same problem. 5,649,186 and 5,220,674 both address client/server delivery of information that mixes pre‑defined content with content computed at request time, over a network. 5,649,186 and the claimed print‑server query are reasonably pertinent to the problem of generating a dynamic network page; 5,220,674 supplies the print‑related character of the dynamic data.
- The patent admits the problem and the incentives. Its Background states the goal — "It would be desirable to provide a system in which a single program is provided in such a manner that the amount of code required to handle the set of queries… is minimized" — and recites the market/engineering drivers (lower development cost, shorter deployment, no per‑OS client software, easy multilingual variants, trivial upgrades). Under KSR, these design incentives supply the motivation.
- Predictable result. Replacing N hard‑coded CGI programs with one template interpreter plus N data files is a textbook data‑driven/table‑driven refactor: functional behavior is unchanged, so the result is predictable, and the specification identifies no unexpected result (its stated advantages — cheaper development, easier site customization — are exactly the expected benefits of separating content from code).
- Finite, identified solution set. Given the admitted CGI/HTML framework, the field offered a small number of known alternatives (custom code per query, or template/skeleton‑driven generation). KSR makes "obvious to try" available.
- Both references are combinable without change in principle. 5,220,674's server already maintains dynamic state and answers requests; 5,649,186's mechanism is a software layer over that state. Nothing about the print server's architecture would defeat the substitution.
7. Where the obviousness case is weakest
- The three Xerox references (5,465,322; 5,493,634; 5,504,843) are raster‑image/PDL parsing art. They teach parsing image descriptions, not parsing a display template to assemble a web page. Alone, they do not reach the claims; they only work in combination with 5,649,186 and the admitted art.
- Only 5,649,186 is in the client/server dynamic‑content business, and it is not a printing system. The combination therefore hinges on 5,220,674 — which is not examiner‑cited on the patent's face; it appears in the Background and is incorporated by reference. A petitioner must establish it as prior art (it plainly is, under 102(b)), but this is the load‑bearing joint of the argument.
- No single reference discloses the exact two‑instruction ("copy static portion" / "fetch dynamic") template. The case is a combination case through and through; expect a KSR‑style "predictable variation" rationale rather than clean anticipation‑style disclosure.
- Claims 8/17 (shorthand expression; "substantially greater in size"). A patentee would argue this quantitative/relative limitation is not taught. Rebuttal: 5,649,186's command strings, and the spec's own Fortran analogy, make the expansion inherent; "substantially greater" is a result, not a step.
- US 5,566,278 and JP H08‑292844 are unverified by me. If JP H08‑292844 teaches stored‑form + variable‑data merging, it materially strengthens the case for claims 1–2/10–11; if it does not, the argument stays on the 5,649,186/5,220,674 footing. I flag this rather than assert it.
- Secondary considerations: none evidenced. No record of unexpected results, licensing, or nexus‑bearing commercial success is before me. The 53 "Cited By" entries (including HP's US 6,185,996 and later JPMorgan/HP/Flexiworld families) show the patent was influential and much‑cited — but citation frequency alone is not a Graham factor, and post‑1997 citing documents are not prior art.
- Prosecution/EP record unknown. EP 0867799 B1 was granted 2003‑06‑04; I found no opposition outcome. Grant of the US and EP cases does not, by itself, defeat a § 103 challenge, but I cannot rule out that an examiner considered and discarded a combination like Combination A.
8. Conclusion and confidence
Most likely outcome of a § 103 challenge (hypothetical): claims 1 and 10, and dependent claims 2–7 and 9, 11–16 and 18, are more likely than not obvious over US 5,649,186 in view of US 5,220,674 and the applicant's admitted HTML/HTTP/CGI art, with US 5,504,843 (and US 5,465,322 / US 5,493,634) supplying the instruction/token‑driven parsing and machine‑setting elements. Claims 8 and 17 are the only meaningful candidates for survival and carry perhaps a modest, not strong, non‑obviousness position (shorthand format expansion), which the specification's own Fortran analogy substantially undercuts.
Confidence: High that the combination rationale is legally sound and that no element of claim 1 is missing from the assembled art. Moderate that a tribunal would actually reach the conclusion, because the mapping of the token‑parsing references to a web‑page template interpreter is analogical rather than express, and because 5,220,674's status as prior art rests on the specification's incorporation by reference rather than on the examiner‑cited list.
What I could not establish: the content of US 5,566,278 and JP H08‑292844; the US file wrapper and any § 103 rejections/arguments; and any litigation, PTAB, or opposition outcome. These would need PACER/PatentCenter, the EP register, and a translation of JP H08‑292844 to resolve — my web searches are not substitutes for those sources.
Sources: US5946458A (Google Patents) · US5649186A and everypatent copy · US5220674 (PDF) and everypatent copy · US5504843 (freepatentsonline) and PDF · US5465322A · US5493634A and Justia copy · EP0574224A2 (family of US 5,493,634) · USPTO.report grant page for 5,946,458.
Generated 10/1/2026, 11:23:36 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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